This is an appeal under section 76 of the Trade Marks Act, 1940, against the decision of the Registrar of Trade Marks, refusing the application of the appellants for the registration op a trade mark which had been opposed by the respondent No. 2, which is the Seven-Up Company of United States of America.
2. The facts which have given rise to this appeal are that on the 27th of April 1967, the appellant applied to the Registrar of Trade Marks for the registration of the Trade Mark '7 Up' in Class 30. The application was duly numbered in the Registrar's office as 47327. The reference to the class number is based upon rule 11 of the Revised Trade Marks Rules, 1963, made by the Government of Pakistan, in pursuance of the rule making power conferred upon it by the Act; that rule provides that for the purposes of the registration of Trade Mars, goods shall be classified in the manner specified in the Fourth Schedule to these rules. The goods enumerated in the class are "coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread biscuits, cakes, pastry and confectionary ices; honey, treacle, yeast, baking powder; salt, mustard, pepper, vinegar, sauces; spices; ice." The application of the appellant was, however, limited to "hard boiled sweets, candies and drops"; it is unnecessary for the to examine whether these would come under any of the goods enumerated in Class 30 since the Registrar and both the parties before me have assumed that it does. In accordance with the procedure prescribed under the rules the application was duly advertised and the respondents gave notice or opposition. The respondents are and were, at that time, the proprietors of two trade marks both in Class 32, the first being >even U p Registration No. 1583 and the second being 7 Up libel registration No. 28680. Class 32 enumerates the following goods :- "Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages."
The actual registrations, however, namely, registrations No. 1583 and 28680, are for "Carbonated, non-alcoholic, non-cereal, maltless beverages sold as soft drinks and preparations for making such beverages" and "Soft drink beverages and syrups favour and extracts for making soft drink beverages all being goods included in Class 32" respectively. Subsequently, however, that is as from the 22nd October 1967, the respondents have also been granted registration in respect of all goods covered by Class 30 for the Trade Marks 7 Up and Seven Up by registration numbers 46715 and 46716 respectively.
3. It is an admitted position in this case that the respon--dents are a world-wide known company and that in Pakistan, particularly, over a long number of years they have manufactured and sold flavoured non-alcoholic carbonated water under the Trade Marks in question bur. Have not yet manufactured or sold candies despite the fact that they have obtained registration in respect of goods mentioned in Class 30. On the other band the appellants claim to have sold boiled sweets, candies and drops under various names even before the application for registration of trade mark and these include such goods under the name "Montgomery 7 Up Candies" but the respondents say, that there is no evidence of this and in any case vehemently deny that such sales have been either for along period or of any considerable volume. Upon this point the Registrar has held in favour of the respondents holding that, although the appellants have obtained the use of their mark since 1965, they have led no evidence upon the point.
4. Upon the objections raised by the respondents under section 8(a) and section 14(1) of the Trade Marks Act, the Registrar held in favour of the appellants. Finally, however, holding that the objection of the respondents under section 10(1) was valid inasmuch as the Trade Marks applied for by the appellants were identical with those registered in favour of the respondents and both were used on goods of the same description, hg rejected the application of the appellants and refused registra-- petition. The appeal is directed against this decision.
5. Learned counsel for the appellant Mr. Sharif Hussain, who has appeared before me in this appeal has argued first that the Registrar was wrong in holding that there was no evidence that the appellants have used the mark in question since 1965. He points out, among other things, to the affidavit of Shaikh Muhammad Shafi, Managing Director of the appellants which states that the appellants have been using the Trade Mark 7 Up since 1965 and that, by virtue of long and continuous use, the mark has become distinctive of the goods manufactured and sold by the appellants and denotes the goods of the appellants. Certain vouchers and accounts were also produced to show sales of sweets which were described as Seven Up. Mr. Fateh A.I Vellani, learned counsel for the respondent, on the other hand, points out that this affidavit and the other documents mentioned were filed by the appellants at the stage when they had only filed their application for registration and not after notice for opposition was given In order to appreciate the force of Mr. Vellani's contention it is necessary to refer to the procedure laid down by the rules for the determination of such matters before the Registrar of Trade Marks. Rule 22 provides that ail applications for the registration of a Trade Mark shall on receipt be acknowledged by the Registrar.
After provision is then made for search for made Marks in respect of a goods already registered, rule 24 provides that if, on consideration of the application and of any evidence of use or distinctiveness or of am: other matter which the applicant may or may be required to furnish the Registrar, has any objection to the acceptance of the application or proposes to accept it subject to certain conditions, he shall communicative such objection or proposal in writing to the applicant. It is to be noted, therefore, that at this stage, long before any body has appeared in opposition to the application for registration, provision is made for evidence to be taken. The Registrar then after hearing the applicant makes his decision under rule 25. (I am not quoting the rules in extenso nor even referring to every thing which they provide for but only so much as is material for my present purposes). Now these rules, namely, rules 22 to 25 are all contained under the heading "procedure on receipt of application for registration of a Trade Mark"; then follows rule 26 which is irrelevant for our present purposes and thereafter begins a number of rules under the heading "advertisement of application". These provide for the manner in which an application for trade mark required or permitted to be advertised by section 15 of the Act, itself is to be advertised.
It is only thereafter that we have a set of rules which are headed "opposition to registration", these rules provide for any interested party giving notice of opposition to the registration of a Trade Mark and rules 30 and 31, having providers for the time within which such notice of opposition is to be given and the form in which it is to be given including the particulars therein to be stated, rule 32 provides for a counter-statement to be made by the applicant in which he is required to state what facts, if any, alleged in the notice of opposition are admitted by him. It is only thereafter that under rule 33 is the opponent required to leave with the Registrar such evidence by way of affidavit as be may desire to adduce or to intimate to the Registrar in writing that he does not desire to adduce any such evidence. Role 34 then requires that within two months of the receipt by the applicant of the copies of the affidavit in support of the opposition the applicant shall leave with the Registrar similar evidence and deliver to the opponent copies thereof. There are other rules under this heading but none that are material for my present purpose. Mr. Vellani therefore, argues that the evidence that is required in question is the evidence which is to be given after notice of opposition is given To adopt his own language the rules envisage two different stages, one of which might be called the pre-trial stage and the other the actual trial of the case. The pre-trial stage is a matter which is entirely between the Registrar and the applicant and it is only when the Registrar has not refused to grant the trade mark or the applicant has accepted the limitations under which he will grant it that the question arises of any body else interested in opposing the grant of the application to be heard. Admittedly in this case such affidavits as has been filed by the appellant were filed in what might be called the pre-trial stage and there is no question of the respondent No. 2 having been given any copies thereof or making any answers thereto. On the other hand after notice of opposition actually is given it is the person who objects to give evidence first and the appellant then gives evidence, of course both being by affidavit. In this case admittedly the respondent No. 2 filed three affidavits; these are of John T. Tabor, Taj M. Yahya and Noor Elahi. The first of these is by an American citizen in the employment of respondent No. 2 and, starting with the fact that the company sold its present products for the first time under the Trade Mark 7 Up and Seven Up in 1928, proceeds to set out the volume of business which they have done not only in the United States of America but in various other countries, including Pakistan, and lists also a number of Trade Marks that it owns in the United States Trade Marks Registrations and it is worthwhile noticing that, with a few exceptions, all of these Trade Marks which number as many as 20, the word "Up" is a part of the Trade Mark. Neither by counter- affidavit nor in argument before me have the facts stated in this affidavit been disputed. The next affidavit is that of Taj M. Yahya, a Director of Messrs A & B Beverages Ltd., and be states that in the year 1962 his company entered into an arrangement with respondent No. 2 for a license to bottle and market a non-alcoholic beverage under the Trade Mark of respondent No. 2 that is to say 7 Up and Seven Up in the city of Karachi and then goes on to give some figures of the sales which are substantial amounting to over Rs. 80,00,000. Finally the affidavit of Noor Elahi is to the effect that he is a Director of Seven Up Bottling Company Limited, which appears to be a Pakistani company, and that this company is the appointed bottler and registered user in respect of the respondents' Trade Marks 7 Up and Seven Up in Pakistan and then goes on to give the sale figures during the various years from 1962 to 1968, the lowest figure in any particular year being over Rs. 23,00,000 and the highest being over Rs.
44,00,000. These affidavits also have not been controverted either before the Registrar or before me. Mr. Fateh All Vellani, therefore, argues that what the Registrar meant when he said that no evidence had been adduced by the appellants as to the use of the mark since 1965 by themselves referred to the evidence at that stage of the matter before the Registrar and, indeed, he argued that in the case of an opposition it is only this kind of evidence. That is to say evidence given after notice of opposition has been given. That can be regarded as evidence in the matter at all. I think Mr. Vellani is clearly right both upon the language of the rules in question and on general principles.
I have already quoted the material portions of the rules and clearly they do envisage this evidence at a time when both the parties are before the Registrar and the Registrar is not dealing with the applicant alone. Even on general principles it is obvious that evidence must mean evidence given in the presence of the opposite side who is aware of the evidence being given and who is, therefore, in a position to counter it by cross-examination or any other method known to and permitted by the law. Certainly it seems clear that the Registrar understood the requirement of the evidence is this sense. The question is of course one of law and I am not bound by the Registrar's view of it but if there was any ambiguity, and I am far from holding that there was, I should certainly be inclined to give great weight, as has been given in the English cases to the views of the Registrar, whose daily work, it is to deal with matters of this kind. I, therefore, hold that the Registrar was quite right in finding that the appellants had not led evidence of user since 1965 or at all.
6. In this view of the matter learned counsel for the appellant suggested that I should remand the case for enabling the appellants to lead evidence but I do not think that that would be the proper course to persue in this case. In the first place it is not the appellants who are making a grievance of not having been allowed to lead evidence and indeed there is no question of the Registrar having refused any opportunity to the appellants of leading evidence. It is rather the appellant company itself which failed to lead the evidence in question. Cases can and should be remanded to the trial Courts for allowing a party to lead evidence when he has not had a proper opportunity to do so and when the failure to give him such an opportunity has materially affected the case.
Here it. Is not even the appellants' grievance that he was not given an opportunity or an adequate opportunity to lead evidence. Besides this question is not tae real controversy between the parties and for me to remand the case when, in my opinion, upon other and more important questions the entire case can be decided, would only mean protracting the proceedings to no real purpose. I, therefore, see no reason for remanding the case in order to allow the appellants to give further evidence. Before the Registrar of Trade Marks.
7. Reliance is placed by learned counsel for the appellants upon section 8(a) of the Trade Marks Act and he argues that there can be no question of any likelihood of deception or confusion and, on this point, indeed, the Registrar has held in favour of the appellant upon the ground that the goods covered by the registered mark are yet to be offered for sale in the market meaning thereby that, although the respondent No. 2 has obtained a registration mark in respect of all goods covered by the enumeration in Class 30 they have yet to manufacture goods of that kind or to put them in the market. The Registrar gives no further reasoning on this point and I am not in entire accord with his finding. The expression "Trade Mark" is defined in section 2(b) of the Act in the following language :- " `Trade Mark' means a mark used or proposed to be used lit relation to goods for the purpose of indicating or so as to indicate a connection in the course of trace between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person;".
It will be seen that the definition is so worded as to indicate a connection in the course of trade between the goods and some person having the right to use the mark and not merely a person having the right to use the mark in respect of goods of that particular kind. Section 8 of the Act itself is in the following language :- "Prohibition of registration of certain matter.--No Trade-, Mark nor part of a Trade Mark shall be registered which consists of, or contains, any scandalous design, or any matter, the use of which would-
(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice ; or
(b) be likely to hurt the religious susceptibilities of any class, of (the citizens of Pakistan); or
(c) be contrary to any law for the time being in force or to morality."
It is obvious that clauses (b) and (c) are not attracted and indeed there has been no argument before me or before the Registrar based on these clauses; the only clause in question is (a). It seems to me that the deception which is sought to be avoided by Clause (a) is deception to the effect that a person might assume in buying particular goods that they have been manufactured by a company having the right to use the Trade Mark and no the description that the goods are certain other goods which are in fact manufactured by that company. In this view I think I am supported by the decision of Mr. Justice Waheeduddin Ahmed, then a Judge of the High Court, in S. M. Taufiq v. National Biscuit Company (PLD 1962 Kar. 355). In that case the appellants had been manufacturing biscuits since 1951 under the name "Nabisco" and applied for registration of the Trade Mark "Nabisco" but, during the pendency of this application, the respondent, namely, the National Biscuit Company, also filed an application for the registration of the same Trade Mark in respect of the same kind of goods; it was an admitted position in that case that the respondents had for a long time been using the Trade Mark all over the world including undivided India but never in Pakistan. On the other hand there was no question but that the appellant had been using the word Nabisco at least since 1951 in Pakistan and one of the questions that arose, and Indeed the principal question upon which the case was decided, was, whether by reason of the world-wide user of the Trade Mark in question by the respondent, the application of the appellant for registration ought to be refused. In holding in favour of the appellants his Lordship was pleased to observe :- "Thus the evidence of the parties disclose that whereas the respondents have not established any user or reputation of Trade Mark of Nabisco in Pakistan from 1947 onwards, the appellants have established the reputation and user of their Trade Mark in the territories of Pakistan, particularly in East Pakistan from 1951 onwards. In my opinion, if the appeals were to be decided on question of user or prior user the appellants should have succeeded.
"But the question for consideration in these appeals is whether the Trade Mark "Nabisco" sought to be registered on behalf of the appellants is likely to deceive or cause confusion or otherwise be disentitled "to protection in a Court of justice in Pakistan. The utmost, and of that I have no doubt, the respondents have established is that the Trade Mark "Nabisco" has acquired international character of trade and that this Trade Mark is registered in neighboring India and several countries of the world on behalf of the respondents. But can this fact be taken into consideration for refusing registration of this Trade Mark in favour of the appellants? I have heard the learned counsel for the parties on this question at length and in my opinion unless it is proved that "Nabisco" Trade Mark sought to be registered on their behalf is likely to cause-deception or confusion in the local market it cannot be refused registration in Pakistan. This question was considered by the Rouse of Lords in Boord & Son (Incorporated) v. Bagots, Hutton and Co., Ltd., Earl Loreburn at p. 393 In this connection expressed himself in the following terms :- "In any case there can be no ground for saying that a Trade---Mark otherwise appropriate for registration here should be dented registration because it may be unfairly used some where else."
"It seems to me that the whole contention rests on a mis--apprehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard.
For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manu--facturer having a mark abroad has made goods and supported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be Identified in the market of this country hi such a way as to be identified with a manufacturer who manufactures in a foreign country. That. I venture to think, is the basis of the decision in the Appollinaris' case."
This view was also expressed in a later English case in Gainses Animal Foods Ltd's Application Lloyd-Jacob. J., stated at page 179 that for the purpose of seeing whether a mark is distinctive or likely to deceive or not it is to the market of this country alone that one has to have regard.
"In the light of the above discussion, the question arises whether a different view of the law should be adopted in construing the provisions of section 8 of the Trade Marks Act. Mr. Ibadat Yar Khan, the learned counsel for the respondents, has not been able to satisfy me why the above-- mentioned principles should not be followed in this country. It therefore appears to ire that for the purposes of registration under the Act, the Tribunal should ordinarily consider the user in this country to which the Act applies. If the case of the appellant is considered on this view of the law, there is not, a shred of evidence on the record to establish that the public or a common man in this country will In any way be deceived or confused while purchasing goods under the Trade Mark "Nabico" manufactured by the appellants.
The respondents have no market of this Trade Ma-k In respect of any goods in this country. They have no reputation and as such there can possibly be no deception or confusion in the mind of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondents had not established a reputation for their mark upon which an opposition could be founded. The learned Deputy Registrar therefore was not justified in refusing registration of "Nabisco" Trade Mark in favour of the appellants.
" So far as the applicant of the respondents for the regis--tration of Trade Mark "Nabisco" is concerned, it is bound to cause confusion and deception in the markets of Pakistan. There is ample evidence on the record to establish that from 1951 up to 1957, the appellants have sold goods of sizable value under the Trade Mark "Nabisco" in this country. Thus, the Trade Mark "Nabisco" has acquired reputation by sufficiently long user in Pakistan for the goods of the appellants. If the respondents' application is granted, it is bound to cause confusion and deception in repeat of a Trade Mark which 13 in long use on behalf of the appellants. In my opinion, therefore, the learned Deputy Registrar was not justified in granting the application of the respondents for the registration of "Nabisco" Trade Mark merely on the ground that this Trade Mark had acquired an international character or has been registered by the respondents in the "neighbouring country of India or in other parts of the world. The real question in such cases is always the position in the local market and the question before me is, always to be decided after taking into consideration this fact."
8. It is true, of course, that in this particular case the goods were in fact of the same kind, namely biscuits, but the principle upon which the learned Judge proceeded was not a question of a reputation established or a Trade Mark used in connection with particular kinds of goods. On the contrary the learned Judge was looking at the matter from the point of view of seeing whether the Trade Mark had been used and had acquired for the respondent a reputation in Pakistan as distinct from a reputation outside Pakistan. Not only did his Lordship not base his decision upon the identity of the goods in question but there are passages in the judgment which show clearly that that would have made no difference to his Lordship's decision.
For instance, in the passage that I have quoted his Lordship observed "the respondents have no market of this Trade Mark in respect of any goods in this country. They have no, reputation and as such there can possibly be no deception or confusion in the minds of the public of this country that goods manufactured by the appellants belonged to the respondents". If the matter had depended upon the question of the reputation of the respondents in respect of biscuits in connection with that particular Trade Mark I do not think this his Lordship would have used the expression "any goods" and then gone on to say that there would be "no deception or confusion in the minds of the public of this country that the goods manufactured by the appellants belonged to the respondents". This view of the learned Judge, if I may say so with the utmost respect, is in accordance with the definition of "Trade Mark" which I have already quoted which emphasised a question between the goods and the person having the right to use the mark and not an Indication that the goods are the goods which are in fact manu--factured by the person having such right.
9. The next argument of learned counsel for the appellants is based upon section 14(1) which reads thus :- "Application for registration. (1) Any person claiming to be the proprietor of a Trade Mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit."
Here again the Registrar upheld the appellant but the language in which he did so can hardly be said to give any real reason. He merely observed "similarly objection under section 14(1) also fails as it has not much substance and tribunal should not hesitate to reject opposition in exercise of his discretion if it is found that it cannot be sustained", the whole question, however, was whether the objection raised by the opposition could be sustained and there was little point, therefore, in saying that the discretion ought to be exercised in favour of the appellant if the opposition is unable to substantiate the objection without saying why the objection is not sustainable.
10. Upon this question Mr. Vellani's argument before me was merely to the effect that there is no absolute right to regis--tration and he asked me to contrast the language in section 14(1) which says that "the Registrar may refuse the application" with several sections in the Trade Marks Act like section 6, section 8 and section 10 where in clear terms the legislature is prohibiting the Registrar from registering certain kinds of Trade Marks. Now I cannot read the expression which I have quoted in section 14(1) as meaning merely that, while in certain cases the Registrar is bound to refuse registration, in other cases, that is covered by section 14, he may without any specific reason refuse registration. I read the word "may" as empowering the Registrar to refuse registration with the necessary corollary that it is also a section which empowers him to grant a registration. Neither his grant of a registration nor his refusal to grant a registration is over than discretionary; it is not an absolute power to grant or a refuse but, like all enabling statutory provisions at least in judicial or quasi-judicial matters a power which has to be exercised upon a due considera--petition of the merits of the case. Indeed it is not Mr. Vellani's case either that merely because he could have refused registration, therefore, he should have refused it, or that, having refused it, the matter ends there and an appellate Court must necessarily refrain from interfering here is really, therefore, no such controversy between the parties upon section 14 as will decide the present case. It will have to be upon a consideration of the other and more important questions in this case that it can be decided whether registration ought or ought not to have been refused.
11. The final argument of the learned counsel for the appellant is that, having considered the provisions of section 10(1), the Registrar refused the application of the appellant without taking into consideration the provisions of subsection (2). Now not only is the main basis of the Registrar's decision the first subsection but the main burden of Mr. Vellum's argument before me also is premised upon that very subsection. It would, therefore, be useful to reproduce the entire section :- "Prohibition of registration of identical or similar trade mark.-(1) Save as provided in subsection (2), 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 (either already on the register or already registered in any (Acceding State or a non-Acceding State) to which section 82-A for the time being applies) in respect of the same goods or description of goods or which so nearly resembles such Trade Mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of Trade Marks which are identical or nearly resemble each other in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
(3) Where separate applications made by different persons are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court"
Now a large number of cases have been cited before me upon this section or rather its equivalent in the corresponding English Act, which is section 12 of the Trade Marks Act, 1938 and which is subject to certain minor variations, which are not material, 9n terms identical with section 10 of our Act. Some cases of our own Courts also have been cited upon section 10. In considering section 10 and in particular the expression "same goods or description of goods" occurring in subsection 1 I think it right to have regard generally to the purposes of the legislation in question, which 1 think it correctly enunciated by the openings paragraph of the first chapter Kerly on Trade Marks. Eighth Edition, in which the learned author states "the foundation upon which the law relating to Trade Marks and trade names developed is that the deception of the public by the offer for sale of goods as possessing some connection with a particular trader, which they do not in fact possess, is a wrong in respect of which the trader has a cause of action against any parson who is the author of, or is responsible for the deception" but, as he remarks a little later "the statutory rights conferred by registration are now more extensive then is necessary merely for the purpose of pre-venting deception, and do confer something in the nature of a limited monopoly, the terms of which must be ascertained from the words of the relevant provisions. The leading principle cited above remains of importance in determining the rights of parties where the specific provisions extending tee general rights do not apply. While of course the Courts will give full meaning to every section and every word in every section of the law, I think it would be right to say that the Courts ought, in construing the provisions of the Trade Marks Act, have regard both to public and to private rights, the first consisting of protecting the unwary customer from purchasing gouts in the belief that they are manufactured by a company or firm on the quality of whose goods he has acquired confidence and the latter consisted of protecting the proprietors of registered Trade Marks against the infringement thereof and against the use of the Trade Mark by other persons wishing to capitalise upon the reputation of the owner of the Trade Mark.
12. Now for the purposes of this appeal Mr. Vellani relied not only upon the registrations which his clients have acquired under Class 30 that is numbers 46715 and 46716 but also and especially upon the ones which they had acquired much earlier, that is to say In the years 1948 and 1958, in Class 32 In respect of "Carbonated, non-alcoholic, non-cereal, maltless beverages sold as soft drinks and preparations for making the such beverages" ap d "Soft drinks beverages and syrups, flavour and extracts for raking soft drink beverages all being goods included in Clays 32." The goods which they are actually marketing under this Trade Mark is a soft drink of flavoured and carbonated water and the main question, therefore, is whether there goods and the bard boiled sweets and candies manufactured by the appellants can be said to be "goods of the same description". Before I go on to discuss this question it would be convenient; to notice an argument of the appellants which, according to him, would dispose of the matter entirely. Admittedly the Trade Marks relied upon by respondent No. 2 are registered in Class 32 while those of the appellant were refused registration under Class 30. According to learned counsel since they fall in different classes they cannot be Described as being "goods of the same description". I regret my entire inability to accept this argument. In the first place the word used in the statute is "description" and not "class". But even if I were to regard the two words as synonymous, the argument really comes to this: that I should interpret the words of t a statute by inference to words used in the rules made thereunder. Now the rules themselves are made under the rule making authority given by the statute and, in the event of any conflict between the rules and the statute, it is obvious that it is the statute and not the rule which must prevail. It would, therefore, be under-- stand able, particularly if it was necessary to reconcile a rule with the statute, that language used in a rule should be Interpreted by reference to language used In the statute but learned counsel for the appellant 1s asking me to do the exact reverse. If I were to accept his argument it would amount to subordinating the statute to the rules and allowing the latter to control the meaning of the stature.
For the purposes of this point, therefore, I propose to pay no attention whatever to the fact that the registration of the respondent No. 2 upon which he relies is in Class 32 while the appellant had applied under Class 30.
13. Now it is to be observed that the significant word in the statute is "description" and not "definition"; of the several meanings given in the dictionary the two which are relevant of the word "description" are (1) "tae action of setting forth in words by mentioning characteristics; verbal representation or portraiture" and (2) "the combination of qualifies or features that marks out or describes a particular class". The word "definition--" on the other hand, is a word of more precise connotation and the relevant dictionary meaning is "the action of defining" and the word "define" itself means "to determine the boundary or limits of" "to make definite in outline or form" "to limit, confine" "to state precisely" and "to set-forth the essential nature of". In logic the word "definition" is always soused as to make it possible to say of any given thing whether it does or does not fall within the definition. On the other hard the expression "description" somewhat leas precise and things may fall within the same description though not necessarily within the same definition. But even as to "description", much could depend upon how a thing is described or rather how narrowly or how widely it is described. It would be possible by formulating a sufficiently wide description to classify together two different articles, which in common parlance it would not occur to anybody to think of as being of the same description. Under the description "things made by artificial means" one could bring together things so widely dissimilar as copper---vases, cigarettes and pencils On the other hand, by narrowing the description, one could exclude more and more articles until probably one could reach a point where not more than one or two articles could come under the description formulated. The narrower, however, the description the closer it would come to the concept of a definition; definitions, too, can be wide or narrow and often are differently formulated particularly for scientific purposes in the context of the requirement of the defini--petition in question. It seems to me, therefore, that the expression would have to be understood, as indeed many Judges whose eminence I cannot hope to emulate, have thought it must be understood by reference to various tests, none of them by itself conclusive but all of greater or less weight and the cumulative effect of such tests.
14. One such test that was canvass, d at the Bar was to see whether the two different goods could be bought or would ordinarily be bought at the same shop. I am far from denying that this test would be of some value but I really cannot attach much weight to it and of course, as I have already said, no one test can tae conclusive. In the modern world land I am of course restricting myself to conditions in oar country for, as emphasized by Waheeduddin Ahmad, J. In the case which T have already cited it is registration in Pakistan which is in question) there are such places as super markets where almost any kind of goods that are available in the country at all are displayed for sale. Again by reason of short supply of imported goods, several shops formerly known to specialize in a particular kind of goods, have now found it convenient to add to their store almost anything else. If one goes into the interior of the country there are places which might have only one or two shops and these would be expected to stock almost anything that an ordinary resident of that place would expect to buy in his own place without venturing to even a nearby town. It is difficult, therefore, to say that the fact that the two different goods are available at the same shop is a real test. The maximum extent to which I could go towards adoption of this test is to ask the question: if the one goods are available at a particular shop is it likely that the same shop would be stocking the other ?
15. Upon this particular point, which was indeed the main point and upon which the Registrar mainly based his order refusing the appellant's application, I regret to say that his finding is not of any great help. All that he says on the question is the following two paragraphs :-- "Since the Trade Mark 7 Up in application No. 47,327 is identical with- registered Mark 7 Up 9n the registered applica--petition No. 46,175 of the Opponents and both these marks are used on the goods of the description, therefore, the above section bars registration of the applicants' mark.
Besides the Opponents have yet another registered mark viz. Seven Up which also is in the same class and in respect of the same goods as the Applicants propounded mark 7-Up in application No. 47327 and the claim of the Applicants for registration of their marks also come under the mischief of section 10(1) on account of the above registered mark of the Opponents also."
It is clear from these paragraphs that the Registrar was treating the application of the respondent No. 2 made under class 30 for the Trade Marks 7 Up and Seven Up and it is on that basis that he is rejecting the application of the appellant Now, quite apart from the fact that Mr. Vellani made it clear that he was not relying merely upon these registrations, but also upon the earlier registrations in Class 32 and that, indeed, before me he argued mainly upon the earlier registrations the paragraphs which I have reproduced give no reasoning at all unless the reason is to be inferred from the use that he has made in the second of these paragraphs of the words "which also is in the same class". If that be the reason then clearly he is equating goods registered in the same class according to the rules with "goods of the same description" referred to section 10 and in effect interpreting section 10 by reference to the Fourth Schedule and that, as I have already held, is not permissible.
16. Before me Mr. Vallani, though indeed he did not give up the argument that the registration in Class 30 was a bar to the appellant's application, relied in the main upon his registration in Class 32, and almost the entirety of his argu--ment was taken up in an effort to persuade me that the soft drink that his clients are now manufacturing and marketing are of the same description as the candies and hard boiled sweets in respect of which the appellants have made the application to the Registrar of Trade Marks. It is not clear from the order of the Registrar but it does seem to be implied that before him reliance was placed by respondent No. 2 only upon the registration in Class 30. Even if this be so, however, it is in law open to a successful respondent to attempt to support the judgment appealed against upon a point different from that which was the basis of the impugned order.
17. Turning again to the tests to be applied to decide whether goods are or are not of the same description Kerly on Trade Marks states at page 154 that the test would seem to be supplied by the question "are the two sets of goods so commonly dealt in by the same trader that his customers, knowing his mark in connection with one set and seeing it upon the other, would be likely to suppose that it was used upon them also to indicate that they were his goods ?" He does go on to say that the matter should be looked at from a business and commercial point of view. I am in entire agreement with these propositions for which indeed the learned author quotes high authority. Relying upon a case decided by Romer, J., (1946) 63 R P C 59 he classifies the various matters to be taken into account thus: (a) the nature and composition of the goods (b) the respective uses of the articles, (c) the trade channels though which the commodities respectively are bought and sold.
18. I accept these -tests as they have been accepted in a large number of cases but the difficulty still remains of applying them in a given case and there, as has so often been said each case must depend upon its own facts. In turning now, as I do, to a consideration of some of the cases I am not attempting to look for a case in which the identical goods were in question and, indeed, learned counsel on both sides assured me that, despite their researches, they could find none such, but for guidance on the approach that has been made by Judges before to this question.
19. I might note, however, in passing, that the manner in which Kerly formulates the test makes it plain that what is sought to be avoided is the purchaser believing that the goods are made by a certain manufacturer even though that manufacturer has not, so far to the knowledge of the customer, manufactured that kind of goods and not any question of confusion of the goods which he is purchasing with goods known by him to be manufactured by a particular manufacturer and having been previously bought by him. As I have emphasized before, a Trade Mark indicates merely the connection of the goods in the course of trade with a person who has the right to use the mark and not an indication that they are the goods in fact manu--factured by that person.
20. The first of the cases to which I was referred is the one decided by the Court of Appeal in England and reported in 1959 R. P. C. 120 which might, for the sake of convenience, be referred to as the Hostess case. The respondent in that case had a Trade Mark "Hostess" In respect of "substances used as food or as ingredients in food but not including cordials (non-alcoholic) and not including any goods of a like kind to cordials anon-alcoholic)". The appellant had applied that the mark be cancelled for "ice cream and goods of the sane descrip--petition" though later in Court they limited their request to ice cream only. The goods of the appellants themselves were jellies or rather tablets from which jellies could be made. Now in this particular case it appears from the judgment that neither the Assistant Comptroller nor the learned Judge of the High Court before whom the matter went on appeal had reached any definite finding that Ice cream and table jellies were goods of the same description but they were apparently of that opinion and the Court of appeal was therefore not prepared to differ from them. Even so, however, the tribunal had a discretion in the matter and since neither the tribunal nor the learned Judge of the High Court had exercised their discretion in the matter the Court of Appeal itself did exercise its own discretion and, allowing the appeal, made an order rectifying the register by excluding ice cream from the goods for which the respondents were registered. The vital question in the case, therefore, was whether ice creams and jellies could be described as 'teeing goods of the same description and there are passages in the judgment which, In my respectful opinion, afford some guidance in the search for a principle end it is these passages that I mean to quote. At page 125 Lord Evershed, Master of the Rolls, observed :- "There is one last matter of fact to which I should refer in regard to the goods themselves with which we are mostly concerned, namely, ice creams and jellies. In speaking of jellies sold by the respondents, what is in truth meant are concentrated cubes or tablets from which, after dissolution in water and setting, the jellies served on the table are male. Jelly tablets such as those sold by the respondents under name "Hostess" are commonly sold in grocers' shops. Ice creams need, I apprehended, no further description. As regards the places where they are commonly sold and the method of their preservation for the table, they, clearly do not closely correspond with jellies; but it does appear that ice creams may be made from ice cream powders, and that such powders at any rate would commonly be offered at the same counters in grocers' shops as jelly tablets; and the same is shown to be to some extent true even of ice creams in their ordinary form. Are. Then, ice creams and jellies ''goods of the same description", within the meaning of the subsection 7"
Now here of course the learned Master of the Rolls is not yet recording any finding of law; indeed, he expressly, says, he is still reciting the facts of the case. Nevertheless there is an implication in the paragraph that the fact that the goods in question would be offered at the same counters in grocers' shops General would be a relevant consideration.
21. At page 128 there is passage in his judgment which, while not attempting to lay down one or more specific tests that can be regarded as conclusive in any given case, does indicate the proper approach. This passage is :- "To all these cases the oft-quoted proposition that each was decided on its own particular facts is to my mind, peculiarly applicable. In all cases of this kind regard will be had to such matters as the nature and composition of the to their respective uses and functions, and to the trade channels through which respectively they ore marketed or sold and in different cases as Mr. Levy observed one not always the same one of these characteristics may have greater significance or emphasis than the others. The mater falls to be judged, as Lindley, L. J., observed in the case already quoted, "in a business sense"; and this is to my mind made clear by considering the legislative background against which the problem has to he judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the good, and the restriction contemplated by section 26 is an incident of the general legislative purpose. The question whether goods are not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited, and particularly tic Dowell's case and the Australian Wine case, land some support to the view that the phrase "goods of the soma "description" ought not to be given too restrictive a construct not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."
22. Incidently immediately after this passage, after having stated that the two things in question, namely, ice creams and jellies are riot in the same classes under the rules for registration of trade marks, the learned Master of the Rolls remarks that this admittedly irrelevant. This I think supports my view that any attempt to discover the meaning of the phrase "of the same description" from the classes enumerated in Schedule IV to the Act is unjustified.
23. Finally at page 130 his Lordship makes the following .Observations:- "Further, the discretion in the proviso should, in my judgment, be exercised as a matter of common sense "in a business sense" (to cite again Lindley, L. J .'s, phrase) In the light of all the circumstances of the case, which will, of course, include the mature of the mark itself and the relevant business history of the applicants and the registered proprietor respectively. Again, however, regard must in my view be had to the legislative purpose of the Act, as I have earlier attempted to define it. In other words, the tribunal, bearing in mind all the circumstances of the case, will have to ask itself the question, whether the grant of the application would unfairly or unjustly restrict or invade the statutory monopoly acquired for its trade by the registered proprietor?"
This last passage I think in emphasizing one of the two main considerations which I have earlier mentioned, namely, the right of the proprietor of the trade mark in question.
24. Romer, L. J., in a concurring judgment observed at page 133:- "As to the first of these matters, both Mr. A1doLS and Mr. Levy were in agreement in suggesting that in order that two kinds of goods may be treated as being goods of the same description there must at least be some expression or known description which is applicable to each kind. The Assistant-- Comptroller thought that table jellies and ice creams are both comprised within the expression "dessert", by which I under-- stand him to mean the sweet course of a meal. It is true that; each of the two commodities do appear on the table as a sweet course, though probably embellished or accompanied by something else as well, but so might a Christmas pudding or suet roll, and it would be difficult to say that either of these delicacies could be regarded for that reason alone as being goods of the same description as ice cream. However, from a narrower aspect it is fair to say that both jellies and ices are commonly provided at such functions as children's parties.
For the purposes of such parties they could both be fairly described as "confections", and if a would-be hostess were unable to procure a sufficient quantity of one she might well make good the deficiency by ordering more of the other. In this regard the two kinds of goods might be considered ay alternatives to one another, awhich seems to have appealed to Byrne, J., in re: Leiner's Apolication (1905) 20 R P C 253. But both that and other cases show that other matters have to be taken into consideration in inquiries of this nature, for example the nature of the two kinds of goods, their user and the channels of trade. As to this, "nature" means composition in a business rather than in a scientific sense; for example. Two weather proof garments might, as Mr. Aldous conceded in argument, be rightly regarded as being of the same nature although one was made of real, whilst the other was made of synthetic, rubber. Up to a there is a similarity in the "nature" of table jellies and ice creams in that they both contain the common ingredients of sugar, water and materials for inducing colouring and flavour. However, I do not think that this aspect of the matter carries the respondents very far. As to the user of the two goods there is considerable identity, for, as I have already pointed out, both would normally appear among a fairly limited list - of comestibles at such affairs as children's parties and In a sense might be regarded as alternatives to each other. The trade channels of the two kinds of goods are not dissimilar, and it was conceded before the learned Judge "that both table jellies (in the form of packed ingredients for conversion by hot water and subsequent cooling and ice cream could find their way to the public through the medium of grocers' shops."
As I understand the passage, the learned lord Justice is first emphasizing that there must be at least some expression or known description which is applicable to both the kinds of goods. Even accepting -a formulation of a narrower kind, by implication though not expressly, the learned lord Justice would appear to be inclined to regard the goods as being of the same description If one could be used as an alternative to the other so that a deficiency in one could be made up by supplying more of the other. He does not, however, regard this as by any means, a conclusive test for he expressly holds that "nature" of the goods would refer to their composition in a business rather than in a scientific sense and finally he has some regard to the fact that the trade channels through which the goods are bought and sold are not dissimilar.
25. But although so far no reference has been made to what might be called the public interest, the final paragraph in his judgment would clearly indicate that the possibility of the deception of the public is a factor which he had ail the time in mind for he states: "In my opinion neither the respondents nor the public will suffer any hardship or disadvantage at all if the registration of the respondents' trade mark were to be rectified by excluding ice cream from the specification of goods in respect of which it is registered, whereas it would be an unwarranted inconveni--ence to Lyons to refuse their application for rectification in that regard. I would accordingly allow the appeal."
26. Finally Ormerod, L. H., also concurring, observed that "it is necessary to consider all the circumstances and to decide whether as a matter of business and fair dealing it would be proper to take from the respondents some part of their monopoly".
27. The case of Ernest Marshall, reported in volume 64 R P C 147 was also quoted to me. Here the competition was between the word "Honomol" applied for as a trade mark in respect of "semi- liquid food preparations of honey and malt" and the word "Honyol" which had been registered as a trade mark in respect of "substances used as food or as ingredients in food", at page 149 the learned Comptroller-General observed:- "The use of the expression "goods of the same description" in a specification of goods, however, tends to make the scope of the specification obscure. And if a registration including the registration of a similar mark under section 12(1) of the Act, the question for the registration of a similar mark under section 12(1) of the Act, the question of the goods in respect of which it could be effectively quoted against the application would be more difficult still, since such a quotation can be properly made, not only where the goods of the registration and of the application are the same, but where they are goods of the same description. The enquiry might thus have to extend to the question what goods can be said to be goods of the same description as goods which are themselves described only as being of the same description as certain named goods --in the present case, edible fat emulsions. The question of the specification of goods for which Crimony's mark should be left on the Register was discussed hearing, and it was suggested that, if I found it necessary to cut down Crimony's registration at all, it should be allowed to retain "Sweetmeats and preparations for use in the manufacture of bread and confectionery". It does not appear to me that Crimony are entitled to retain sweetmeats is in their specification of goods, and I think that in view of the considerations I have just set out, my proper course is to limit their specification to "Edible fat emulsions, gingerbreads and preparation for use in the manu--facture of bread and confectionery."
28. This passage really does no more that state the question rather than to answer it. On page 150, however, Ire proceeds to say:- "In the light of the numerous decisions, it seems to me clear that Marshall's semi-liquid food preparations of honey and malt are goods of the same description as Crimony's edible fat emulsions or some of them. Both substances contain or may contain honey and both are or may be used by bakers and confectioners in making bread and confectionery. They would thus both be purchased by and used by the same class of persons, and no doubt they are, or in the future might be, distributed through similar trading channels. In these circum. Stances, Marshall's goods are included in the goods for which, as I say, Crimony are in strictness alone entitled to retain that registration, namely, gingerbreads and edible fat emulsions and goods of the same descriptions as edible fat emulsions. Equally they are included in the actual specification of goods to which I have decided to limit Crimony's registration namely, "Edible fat emulsions, gingerbreads, and preparations for use in th3 manufacture of bread and confectionery."
29. It seems to me that the decision has proceeded partly upon the nature of the goods and partly upon the criterion that they are purchased by w id used by the same class of persons and probably distributed through similar trading channels. Considera--tions of the public interest, rather than monopoly rights. Were I think the basis of this decision.
30. I turn next to a case. In 7 R P C 311 where the decision was to refuse au application made for the purpose of registering a label for baking powder containing conspicuously the words "fruit-salt baking powder" on the ground that the word "fruit salt" was already registered as a trade mark and had acquired considerable reputation. Incidently a feature in common between that case and the case which I am now considering is that in both cases of the two words which together constituted the trade mark were words known to the English language bat in combination had no particular meaning. Both the words "fruit" and "salt" are common words in the English language but the combined expression does not mean anything at all unless as is suggested in the judgment it might be an implication that the preparation has in some way been derived from fruit. In the present case the words "7" and "Up" are also, each of them, words of common use in the English language and neither can be said to be an invented word but in combination, they have no intelligible meaning and might therefore, in such combination, be described as an invented expression. The decision of the House of Lords was rendered by a majority consisting of Lords Watson, Herschell and Macnaghtan while the Lord Chancellor and Lord Morris, were of the contrary view. The following passage in the speech of Lord Watson, is I think relevant to my present purpose :- "These prohibitory clauses cast upon the applicant the duty of satisfying the Comptroller, or the Court, that the trade marl which he proposes to register does not come within their scope. In an inquiry like the present, he does not had the same position which he would have occupied if he had been defending himself against an action for infringement. There, the 'onus of showing that his trade mark was calculated to mislead, rests, not on him, but upon the party alleging infringement ; here, he is in petition, and must justify the registration of his trade mark by showing affirmatively that it is not calculated to deceive. It appears to me to be a necessary consequence that, in dubio, his application ought to be disallowed.
I think the present case roust be dealt with under the provisions of the 73rd section. If the use of the words "Fruit Salt" in the trade mark, which the respondent asserts his right to register, would be calculated to deceive the public, such use is expressly forbidden by that clause. Whether it would or would not have a misleading effect is, according to my apprehension the only question arising for decision.
I do not think it necessary to refer to the evidence in detail. It appears to me to establish conclusively that although the words "fruit" and "salt" are in common use wherever the English tongue is spoken, they have in combination no technical air scientific meaning, and, before the respondent entered the field, were never applied in popular language, to any known substance other than the article manufactured and sold by the appellant under the name of "Eno's Fruit-Salt".
That circum--stance does not give the appellant a right of property in the words "Fruit-Salt" or entitle him to use them, by themselves, in a registered trade mark; but it is, nevertheless, a material circumstance in considering whether the use which the respon--dent proposes to make of them in his trade mark would be calculated to mislead.
I have come to the conclusion that the proposed use of the term "Fruit-Salt" by the respondent might, and in many Instances probably would, have the effect of deceiving the public. It to no doubt said that the respondent's trade mark is for a baking powder, to be used in the manufacture of bread, whereas the appellant's mark is for a powder to be used in producing an effervescing drink ; and that there can be no risk of any member of the public confounding the two things. To a certain extent the criticism is well-founded. I do not suppose that persons intending to bake would invest in Dunn's Fruit-Salt Baking Powder. But I do think that there would be a supposed connection between the two articles in the minds of many persons, who would naturally assume that the baking powder had been manufactured with the appellant's Fruit-Salt, and purchase it in that belief; so that a batch of badly made baking powder might seriously injure the credit of the effervescing powder. Having regard to the uncandid statements made by the respondent with respect to his selection of the words. I cannot avoid the conclusion that he adopted then as they now stand in his trade mark, with the deliberate purpose of obtaining pecuniary advantage from the wide reputation of the appellant's manufacture, and the probability of purchasers connecting it with his own baking powder. I do not for a moment suggest that everybody would be misled. Skilled chemists and persons of intelligence who gave heed to the matter might incur no risk of error, but I cannot assume that these are the only classes who may be expected to purchase packets of baking powder and Eno's Fruit-Salt."
31. It will have been noticed of course that the judgment is not upon the provision of the English Act corresponding to section 10 but rather to the one corresponding to our section 8.
32. Lord Herschel also decided the question upon the basis that the proposed trade mark was calculated to deceive. To the same effect was the speech of Lord Machaghten but I am tempted to reproduce from his speech a passage which brings out lucidly what I have earlier endeavoured to say in regard to what I have described as the public interest:-- "Unfortunately in the competition for business a trader not unfrequently endeavours to attract custom by representing that the goods which he offers for sale are different in origin, composition, or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another. It is riot, as has been observed, the province of the Court to protect speculations of this kind. Between rival traders the application of the principle is necessarily a matter of extreme difficulty. But as between the innocent public and a trader seeking registration of a proposed trade mark, there is, I think, no- room for hesitation or doubt. The statute allows any person to oppose an application for registration, whether he has or has not a personal interest in the result. It declares that it is not lawful to register as part of or in combination with, a trade mark, any words, the exclusive use of which would, by reason of their being calculated to deceive, be deemed disentitled to protection in a Court of Justice. It seems to me that in registering trade marks the principle to which the enactment so plainly refers ought to be applied without any qualification whatever, and that the Comptroller, to whom in the first instance is committed the "discretionary power", as it is termed, in the Act, of registering a trade mark, ought to reject words which involve a misleading, allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood."
33. Now it is true that two of the noble Lords, including the Lord Chancellor, came to a different conclusion but it is clear from their speeches that it was not the principle which they were doubting but its applications to the case before them. Although therefore the decision is by a majority, so far as the operative part of the judgment is concerned, inasmuch as ft lays down any principles of law It has I think the same weight as a unanimous judgment and the judgment is in any case of great authority as being that of the highest tribunal in England, namely, the House of Lords.
34. I am nest referred to the Player's Trade mark case, 1965 R P C 363 where the competition was between the Trade Mark "players" already registered in respect of manufactured Tobacco and an application to register the same to confectionery cigarettes; the following passage on page 365 is relevant.
"The opponents' goods are tobacco cigarettes and the applicants' goods are imitation cigarettes made of confectionery. The uses of the goods are clearly different, the one being smoked and the other eaten. The nature of the goods are also In my opinion quite different in spite of the fact that their appearance is the same. They are undoubtedly sold through the same trade channels. In view of the fact that the nature and the use of the goods are so different I have come to the conclusion that tobacco cigarettes and confectionery cigarettes are not goods of the same description. In view of this conclusion the opponents' case under section 12(1) fails."
It would be seen here that regard being had to the fact that the nature of the goods was wholly different, though similar in appearance, the test of their being sold through the same trade ,channels was not accepted.
35. The case reported in 15 R P C 105 which may be conveniently called the Kodak case, has an interesting set of facts. The Eastman Photographic Materials Company Ltd. And one associated Company had for a long time been manufacturing cameras under the name "Kodak" while the opposite party had obtained registration of the word "Kodak" as a trade mark in Class 22, In which the Eastman Company had no registered trade mark, for bicycles. The case arose by way of art action for infringement and for passing off and therefore the main question in the case one whether the continued use of the trade mark by the company which was manufacturing bicycles would be calculated to deceive. There were some special facts involved. The Camera Manufacturing Company had not indeed ever manufactured bicycles but had manufactured cameras of a special kind which were intended to he used by bicyclists and that "Bicycle Kodaka" had been extensively advertised. The crux of the matter nevertheless, was whether a person would be induced to believe that the goods had been manufactured by the Company which manufactured Kodak cameras and upon this question Romer, J., as he then was, observed at page 111 as follows:- "On the findings of fact above-mentioned, it is clear that if the application for registration had been known to the plaintiff Company and had been opposed, no registration ought to have been made, and if an application had been made to the Court by the de"endant Company when applying to register the word "Kodak". I think that application would have been refused on the same grounds which form the decision in the case of word "Kodak" as the Trade was likely to deceive. If the public into the supposition were the same as a Trade Mark, as the title of Company, except for purpose of connecting themselves in some way with the plaintiff Company and its business; and, as I have said, I think the facts show that that was their real and sole object."
36. I was next referred to a case from the Indian jurisdiction reported as Sunder Parmanend Lalwani v. Caltex (India) Ltd. (AIR 1969 Bom. 24). The judgment is a long one but the two passages which I am quoting below, both parts of paragraph 49 of that judgment, are I think of considerable help on the facts of the case before me. The material facts sufficiently appear from the passages which I am reproducing,-- "In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on adver--tisements. The goofs in respect of which they use the trade mark "Caltex" are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registra--petition is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor literate or illiterate. The goods of the applicant are different to nature. But they are watched. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word "Caltex" is concerned, it 13 common to the opponent's mark as also to the opponents' name. To mention the mark "Caltex" is also to mention the name of the owner. The mark is up like the 'Lion' or the "Stag" mark and the name of its owner. The opponents are a large company known try many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason there in a greater probability of the public believing that any goods with the mark "Caltex" on them would be the goods of the opponents." "But, un--fortunately for the applicant, it is also his evidence that Degoumors & Co, had other marks in respect of their watches. As a matter of fact, on the first order which dated 60 April 1955, the make originally selected by him in respect of the categories of watches covered thereby was "Sandy", which also was a mark of Degoumois & Co. He got the mark "Sandy" changed to "Caltex" only subsequently. Why he made the change has Clot been explained. It would be legitimate to infer that be selected the mark "Caltex" to take advantage of the reputation of that mark as used by the opponents in connection with their goods. The applicants selection of the mark was made, to use the words of Lord Denning in 1962 R P C 265 (H L) with intention to deceive and cause confusion, and he must, therefore, be given credit for success in his intention and we should no; hesitate to hold that the use of that mark is likely to deceive or cause confusion."
It will be observed that in the Bombay case as in the present case the goods in respect of which registration was sought were not goods manufactured at all by the registered owner of the trace mark and were indeed as different as they possibly could be Nevertheless the learned Judges of the Bombay High Court pointed out that the articles in Question, like those manufactured by the owners of the registered trade mark, were used by people all over the country in different walks of life rich or poor, literate or illiterate and that therefore the potential market for them was similar to that of the existing market of the owners of the registered trade mark in the sense that the goods of both the parties were not special goods. It was not, and indeed it could nor be claimed that the goods were of the same description. There could be no question also that they would be normally old at the same kind of shops. Emphasis was however, ibid upon the fact the of the registered trade mark were a large company known to have large resources and therefore capable of starting any new Industry or trade. The position in the case before me is much the same except that in one registration, respondent No. 2 stands upon an even better footing than Caltex did in the Bombay case ; it is much more probable that a company manufacturing non-alcoholic beverages would also go into the business of manufacturing and selling candies than that a company engaged in manufacturing petroleum, kerosene and lubricants would branch out into manufacturing and selling watches. Of course the learned Judges were considering section 8(a) and the learned Judges were not considering section 10. It does not seem to me that merely because they described the potential market of the two different goods as being the same they implied teas they were goods of the same description.
37. There are then some cases of our own Court which are of help upon the question and the first of these is the case of Bandenawaz Ltd. v. The Registrar of Trade Marks (PLD 1967 Kar. 492In this case the goods in question were undoubtedly of the same description since the appellant had applied for the registra--petition of a certain device as a trade mark for use in connection with lubricating oils and greases and the device closely resembled a registered trade mark used by the Shell Company of Pakistan Limited which also used it in respect of the same kind of goods. Nevertheless the argument before the learned Judge proceeded both upon the basis of section 8(a) and section 10(1) of the Trade Marks Act and Mr. Justice Noorul Arfin, in deciding the case, observed "the consideration which has to be kept in mind is whether a member of the public buying the products of the appellant's was likely to be deceived into believing that he was buying the products of the Shell Company" (page 494). Clearly the element of possible deception of the customer was something which the learned Judge was paying great attention to.
38. Again in the case of Mosanto Company v. Gul Ahmed Textile Mills Ltd. (PLD 1968 Kar. 369), Qadeeruddin Ahmad, J., as his Lordship then was, observed: "The real point is not whether the goods belonged to the same class or to different classes, but whether there is any trade relation between them of such a nature as to create an Impression that the manufacturer of one might be the manu--facturer of the other ; or the products of one manufacturer might have been used 1n the production of the goods of the other manufacturer.
From this point of view, there is a likelihood of deception and confusion if the chemical liquid, which is used for giving a finish to textiles and for protecting them against shrinkage has the same name as the textiles themselves, because the impression can easily be created that the textile piece goods which bear the name of "Resloom" may have been treated with the chemical preparation of the other manufacturer."
Plainly the learned Judge was placing far greater emphasis upon the possibility of deception and confusion than upon the question whether the goods belonged to the same class or to different classes.
39. Upon a consideration of the various statutory provisions and the circumstances of the case 1 have come to the conclusion that the goods of the contending parties are of the same description inasmuch as they are normally sold through the same trade channels and that, while both are items for human consumption and edible, neither is a food in the sense that either would be used for the purpose merely of satisfying hunger. Each is used in the form of a refreshment, a substance from which some enjoyment of taste and referesh--ment is to be obtained rather than the satisfaction of a physical appetite. In that view of the matter section 10(1) would clearly debar the appellants from registration of the trade mark. It is to be observed that even in section 10 the likelihood of deception or confusion is an element.
40. So for as the grievance of learned counsel for the appellant is concerned that the Registrar did not consider section 10(2) I think the clear ans over !s that no concurrent use had been established inasmuch as evidence had not been placed before the Registrar ; I have dealt with that aspect of the matter earlier in this judgment. I deliberately refrain from considering the word "honest" at the present moment for I shall presently revert to it. There is of course no question of any special circumstances made out in the present case.
41. But even more strongly would I reject the case of the appellant by reason of section 8(a). Now there is no question in section 8 of goods being of the same description or not and the emphasis is purely, so far as clause (a) is concerned, upon the likelihood of deception or the causing of confusion. The Trade Mark of respondent No. 2 has already acquired not only in the rest of the world but also in this country which establishes in the mind of the common consumer a connection between goods bearing the Trade Mark and respondent No. 2. It is true of course that the appellant adds the words "Montgo--mery" and "candies" before and after the expression "7 Up" respectively but, nevertheless, that expression figures prominently and there is, therefore in my view every likelihood of deception and confusion.
42. Now as I have said before although the two words separately "7" and "Up" are words of the English language in combination these are as it were, an invented expression. One naturally wonders why, of all possible expressions that the appellants might have chosen, they hit upon this particular combination. I cannot agree that this is a coincidence ; it indicates quite clearly I think that there was an intention to capitalize upon the reputation of respondent No. 2. Is for that reason that I cannot agree that, even if section 10(2) other--wise applied, this was a case of "honest" concurrent use and, if for no other reason. I would hold upon this ground alone that that subsection has no application. It is in any case no defence against section 8.
43. I have, therefore, come to the conclusion though for reasons somewhat different, that the decision of the Registrar of Trade Marks was right and must be upheld. I, therefore, dismiss this appeal with costs.