The appellants, Jamia Industries Limited, applied to the, Registrar of Trade Marks for registration of a mark containing the word "JAMIA" with the device of a five pointed star inside; a crescent, in class 4, for lubricating oils. This application was opposed by Caltex Oil (Pakistan) Limited on the ground that they were proprietors of two trade marks, one with the word: "CALTEX" and star device, which bears registration No. 20665 and was registered en 21-9-1953 for goods in class 4, and the other mark containing the device of star and letter 'T' and the word "TEXACO", bearing Registration No. 3029 and registered on 30th--December 1548, again for goods in class 4. The contention of the respondents namely, Caltex Oil (Pakistan) Limited, is that the device of star bad been associated with their goods for a long time and had been in use in the South Asian Sub-continent since 1937, and. Since 1948 in Pakistan itself. It was, therefore, contended by the respondents that the appellants' proposed trade mark containing, in effect, the same device, as that contained In the respondents" trade marks, would create confusion and deception and, therefore, the respondents' opposition should be accepted and the appel--lants' application should be rejected under sections 6 (a) and 10(1)--of the Trade Marks Act No. V of 1940, particularly when the appellants propose to use the trade mark for the same class of goods for which the respondents' trade marks were registered. The Deputy Registrar recorded the evidence of both the parties, and, after taking into consideration their arguments, made an order on 27-4-1967, whereby he accepted the opposition of Caltex Oil (Pakistan) Ltd., under sections 6 (a) and 10(1) of the Trade Marks Act and refused the registration of the appellants' trade mark. Hence, Jamia Industries Limited have come in appeal to this Court under section 76 of the Trade Marks Act, 1940.
2. Before dealing with the arguments of the parties, it would be useful to refer to the relevant sections of the Trade Marks Act. The fire; provision, which attracts notice, is section 8 of the Act, which, in effect, provides, as far as the present case is concerned, that no trade mark or part of a trade mark shall be registered: which consists of, or contains, any matter the use of which would, by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice. The next provision is section 10, subsection (1), according to which no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and which is already on register in respect of the same goods or description of goods or which so nearly resembles such trade marks as to be likely to deceive or cause confusion. An exception is made to this rule in subsec--petition (2) of section 10 in cases of honest and concurrent user d trade marks which are Identical or resemble each other. However in this case, the question of honest and concurrent user is not ilk issue at all.
The other relevant provision is contained its section 21 of the Act, which provides that, subject to the pro. Visions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any good; shall give to that person the exclusive right to the user of the trade mark in relation to those goods, and that such rights shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either (a) as being used as a trade mark ; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person is connected in the course of trade. Mr. S. K. Hassan Rizvi, the learned Advocate for the appellants, did not take any stand before me on sections 22, 25 and 26, and rightly so, as, in terms, these exceptions are not applicable to the present case.
3. The first contention of Mr. S. K. Hassan Rizvi, the learned Advocate for the appellants, Is that the appellants' pro--posed trade mark, containing the word "JAMIA" and the device of a five pointed star in a crescent, is neither identical with, nor similar to the respondents' two trade marks referred to above, and that, therefore, there was no likelihood of any deception or confusion being caused by the registration of the appellants' trade mark and, consequently, there would not be any infringement of section 8 (a), section 10(i) and section 21 of the Trade Marks --Act. This contention is based on a further contention put forth by the appellants that their trade mark is distinguishable from the trade marks of the respondents by the word "JAMIA". In other words, the appellants' case is that their proposed trade mark contains the word "JAMIA", whereas, in the case of the respondents, one trade mark bears the word "CALTEX", and the other trade mark bears the letter "T" along with the word "TEXACO", and that these are sufficient distinguishing features to avoid deception and confusion between the goods of the appellants and the respondents. But the contention of Mr. S. K.
Hassan Rizvi ignores the rule, now established by judicial con--sensus, that in making comparison of two marks, emphasis should be laid on their leading features, and that, in doing so, it should be determined as to what are the leading characteristics of each of the competing trade marks. The same rule has been stated in different words, that is, what would be the impression left on the mind, whether there is any likelihood that, by adoption from a registered trade mark of one of its leading characteristics, the proposed trade mark may create the impression that goods under both the trade marks originated from the same source. Thus, In Orr Ewing v. Johnson ((1882)7AC219) the two competing trade marks had, in common, one device, that is, the picture of two elephants with a banner between them. In other respects, the device in each trade mark was differently arranged. It was held that the leading characteristic of the two marks was the picture of the elephant and, consequently, notwithstanding the fact that the device in each mark was differently arranged, confusion or deception was likely to be caused, as the distinctive and characteristic symbol, that is, the picture of two elephants remained the same in the two competing marks. In another case, In re : Curie & Co's Application ((1896) 13 R P C 681) the two competing marks had the common device of a fighting cock and the words "COCK O'THE NORTH", though, in other respects, the marks were dissimilar to each other. The applicant's trade mark was refused to registration on the ground that it included, in a central position, the leading feature of the opponents' trade mark, and therefore there was likelihood of creation of confusion and deception. In Boord & Son v. Huddart ((1904) 2 R P C 149) one trade mark, under which liquors and spirits were sold, contained the device of a cat with one paw uplifted standing on a barrel, and the other trade mark, under which gin was sold, contained the device of a cat looking out of a barrel. It was held that confusion would be caused, as both the trade marks closely resembled each other.
In another case, In re : Murphy & Co's Trade Mark ((1890) 7 R P C 163) registration of a trade mark, containing the device of a lion rampant carrying a sheet with certain words and surrounded by an oval, bearing the applicant's name, was refused on the ground that this trade mark resembled the trade mark of the opponents which consisted of the device of a lion rampant carrying a crown with the words "WHITE-HALL" on a scroll. In Huxley's Application ((1924) 41 R P C 423) registration of a trade mark, which consisted of four distinct pictures, with a certain amount of scroll work between the four pictures having behind them the general idea of depicting pictorially the passage of oil from the well to the consumer, and containing the pictures of an oil well, the refining apparatus, a Diesel engine and an oil driven ship, was refused on the ground that it resembled another registered trade mark consisting of or containing as a conspicuous feature thereof the representation of a ship and also another trade mark consisting of the words ""SHIP BRAND".
4. Another useful case to be considered is that of the application of Pomril Limited ((1901) 18 R P C 131). In this case, the applicants were the proprietors of a trade mark "POMRIL" for cider. They applied for registration, again for cider, of a mark consisting of a representation of the cut side of half an apple, cut vertically, with the word "POMRIL" across it. The registration was refused on the ground that this trade mark was likely to be confused with a registered trade mark consisting of the device of an apple with the words "APPLE BRAND".
5. In the same context, it will be useful to take note of some further decisions, which have also been referred to in the order impugned in the present appeal. There is the well known case, De Cordova v. Vick Chemical Company (68 R P C 103). The two compet--ing trade marks in this case were "VAPO ROB" and "VAPOUR RUB". It was held that the two marks were very similar to each other, and accordingly confusion and deception will be caused in the trade. Likewise, in 68 R P C 271, there were two devices, both having one feature in common, that is, motor lamps being represented in the shape of a cat's head and eyes. One device was accompanied by the word "TAW" and the other was accompanied by the word "NOETK". It was held that the essential and characteristic feature was the representation of motor lamps in the shape of a cat's head and eyes, and this feature being common between the two devices, there was likeli--hood of confusion and deception being caused with regard to the origin of the goods marketed under each device.
6. The cases, reviewed above, show that though ordinarily totality of the two marks should be seen to ascertain whether they are similar to each other or distinctive from each other, but where a dominant feature of a registered trade mark is incor--porated in the competing trade mark, then there is not only possibility, but also probability, of deception and confusion beings caused, and therefore the rule has been accepted that a trade mark is infringed if a person other than the registered proprietor or authorised user incorporates in his trade mark one or more of the essential or characteristic features of the registered trade mark.
7. Now, in the case before me, the proposed trade mark consists of the device of a five pointed star in outline within a crescent, but the crescent is so made as to appear a circle, and this device is accompanied by the word "JAMIA". In my view, the dominant features of this trade mark are (i) the live pointed star, and (ii) the crescent in the shape of a circle around this five pointed star. Both these features are present in the respondents' trade marks. However, Mr. S. K. Hassan Rizvi contended that the respondents' Trade Mark No. 20665, which is accompanied by the word "CALTEX", shows the five pointed star to be solid, that is, it is not merely in outline, but the whole is coloured, whereas the appellants' trade mark consists of a five pointed star in outline only, and therefore the two marks, according to Mr. S. K. Hassan Rizvi, do not bear any resemblance with each other. In this connection, Mr. S. K. Hassan Rizvi referred to the decision in the Application of Texas Company Limited ((1914) 31 R P C 53). The mark offered for registration in this case was a five pointed star in red with the word "TEXAS" in black and the letter 'T' in the centre of the star in green and was proposed to be used for goods in class 47, that is, oils for heating, lighting and lubricating, motor spirits, and other products of petroleum. There were two marks already on the register for the same class of goods, one of which contained the device of an eight pointed star and the other of two intersecting triangles, which, in effect, formed a six pointed star within a broken line circle with certain lettering. The Registrar refused the registration of the trade mark proposed by Taxes Company. But, in appeal, Warrington, J., took the view that since the Texas Company's proposed trade mark consisted of the red star and was accompanied by the word "TEXAS" and the letter "r", these features, therefore, made the proposed trade mark distinc--tive from the two marks already on the register, and accordingly the registration could not be refused. Mr. S. K. Hassan Rizvi laid considerable emphasis on this judgment and contended that the respondents' trade mark bearing No. 0665, consists of the device of a solid five pointed star, that is, the star is not in outline only, but is coloured and is accompanied by the word "CALTEX", as against the appellants' proposed mark, which consists of a star in outline only within a crescent and is accom--panied by the word "JAMIA". Perhaps, if the competition was between these two marks only, the view might have been taken that the two marks were quite dissimilar, and therefore did not compete with each other.
However, the respondents have another trade mark, bearing Registration No. 3029, which con-- sists of the device of a star in outline only and is accompanied by the word "TEXACO" and the letter "T". In this device, the star is not solid, that is. It is not coloured, but is in outline only. Therefore, even if the appellants' proposed trade mark does not compete with the trade mark bearing No. 20665, in which the five pointed star is shown in colour, then there is the second trade mark of the respondents, that is, the one bearing No. 3029, in which the five pointed star is shown in outline only.
If we take this trade mark and compare it with that of the appellants, then the irresistible conclusion would be that the dominant and essential feature of the two marks is the five pointed star in out--line and, this being so, there is every probability that the two marks will be confused with each other, as also the goods marketed under each mark. Even with regard to the first trade mark of the respondents, that is, the one bearing No. 20665, in which the whole star is coloured, the view may be taken, in the circumstances of the present case, that this mark bears resem--blance to the proposed mark of the appellants, in that, in both the devices the five pointed star is shown surrounded by a circle. I have already stated that the appellants' five pointed star is within a crescent, but this crescent is, in effect, a circle. One feature, therefore, would be common between the respondents' trade mark No. 20665 and that proposed by the appellants, that is, in each case, the five pointed star is surrounded by a circle, and, as I have said earlier, in the present circumstances, there may even be confusion between these two marks, and with respect to these marks, the case reported in 31 R P C 53 may be distinguish--able, as the mark offered for registration was not surrounded by a circle and was limited to colours stated in the application, whereas of the two marks already on register, one was an eight pointed star in outline only, and the other formed a six pointed star by intersection of two triangles within a broken line circle. Mr. S. K.
Hassan Rizvi then referred to the case of Wills' and Dexter's Trade Marks ((1893) 10 R P C 269). In this case, Wills were the proprietors of a trade mark containing the device of an eight pointed star, and another trade mark containing the word "STAR", which they used for tobacco. Dexter applied to the Registrar, also for tobacco, for a label containing the words "SCAR OF HOPE" and the representation of a small star. Mr. S. K. Hassan Rizvi laid emphasis on the observations of Wright, J., in this decision that Wills' claim to the exclusive use of the word "STAR" and the figure of a star in relation to the sale of tobacco was too wide, as the word "STAR" as well as the figure of star were in universal use. But in the same decision. Wright, J., made an exception with regard to cases in which the word "STAR" and the figure of star were used in some special manner, or were so combined with other matters that the word and the device assumed a special form, and applied this exception to Wills' trade mark which contained the device of an eight pointed star, and accordingly held that this trade mark was a distinctive and definite form of a star, which had a peculiar property of catching the eye, and therefore was a legitimate trade mark. In the instant case, the respondents do not claim every form of star as their exclusive trade mark, but only a distinctive form, that ia, a five pointed star, which device, as the evidence discussed by the Deputy Registrar would show, is distinctive of the respondents' goods. Thus, Wills' and Dexter's case is of no assistance to Mr. S. K. Hassan Rizvi at all.
8. Mr. S. K. Hassan Rizvi then contended that the device of star was common to the trade and referred to the Indo-Burma Petroleum Co. Ltd.'s Trade Mark No. 9047, published on page 8 (No. 19), of the Trade Marks Journal for 1952. This device consists of a five pointed star and a crescent.
However, though the star in this device is a five pointed star, it is distinguishable from the respondents' star, in that, in Info-Burma Petroleum Co. Ltd.'s device, the central point of the star is surrounded by three small circles and the crescent remains crescent only and does not form a circle, whereas in the case of the respondents' trade mark, one device of star is without any circle and the other has a circle on the circumference of the star. Further, Indo--Burma Petroleum Co.
Ltd.'s trade mark was registered under the Trade Marks (Invalidation and Summary Registration)
Act 4XXXVII of 1950) without any advertisement or notice, and therefore the respondents cannot be deemed to have become pre--cluded from making opposition to the proposed trade mark of the appellants.
9. The appellants, for the reasons stated above, have failed to satisfy me that their proposed trade mark is in any way dis--tinctive from those of the respondents, or that the use of their trade mark is not calculated to cause confusion or deception with regard to the origin of the goods marketed by the appellants and the respondents. For reasons I have discussed in detail, this appeal has no merit and is accordingly dismissed with costs.