This is an appeal against the decision of the Assistant Registrar of the Trade Marks, Karachi, dated 24-8-1971 by which he refused the appellant's---application for registration of its trade mark.
2. The appellant, a Japanese Company trading under the popular name of Sony Corporation, filed an application on 8-5-1969 at the Trade Marks Office, Karachi for registration of its Trade Mark Trinitron (word) in respect of, inter alia, radio and television transmitting and receiving. Sets, tape- recording machines and apparatus, electronic communication machines, apparatus parts and accessories therefore, being goods falling in Class I of the classification of goods mentioned in the Fourth Schedule of the Trade Marks Act, 1940 (hereinafter referred to as the Act). The application was allotted the No. 51552. The application was examined in due course by the Examiner for prior registrations of identical or closely resembling marks in that class. He encountered three prior registrations as follows: (1) Triotron (in special design) No. 24038 registered for electronic tubes, instruments and apparatus for radio, television etc. In the name of N. V. Trons, Netherland, (2)
Triotar (word) No. 21861 for optical instruments and parts in the name of Carl Zeiss of West Germany and (3) Triotron (word) No. 32310 for electronic tubes etc. In the name N. V. Trons, Netherland. Accordingly, a show-cause notice was issued to the appellant's Trade Marks --agent citing the said three prior registrations and directing him to show cause why the appellant's application for registration of the Trade Mark Trinitron should not be refused on the ground that it is objectionable under section 10(1) of the Act on the basis of the three conflicting marks. The appellant's agent submitted a written response but as it was found not-- satisfactory, a hearing was fixed before the Assistant Registrar. The appellant's agent submitted before him that the Trade Mark Trinitron was --not deceptively similar to any of the cited prior registrations because the prefix Trini in the appellant's mark Trinitron was easily distinguishable from the prefix Trio in each of the three prior registrations which also had a well --known dictionary meaning. He submitted further, that the appellant's Trade Mark Trinitron was granted registration by the British Registrar of Trade Marks despite the prior registration of Triotron and, therefore, this showed that co- registrations are possible. The learned Registrar considered these submissions. He held that since the first syllable Tri and the last-- syallable Tron were identical, the Trade Mark Trinitron was confusingly similar and almost identical with the prior registrations of Triotron. Accord--ingly, by his order under appeal, he refused the appellant's application under section 10(1) of the Act.
3. Section 10(1) of the Act contains a statutory bar to the registration of a Trade Mark which is identical with a Trade Mark belonging to a different proprietor and already registered 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.
4. Dr. Tanzil-ur-Rahman, learned counsel for the appellant repeated the same submissions before me. In addition, he submitted that the last syallable Tron which is common to both the Trade Marks is also common to a number of Trade Marks already registered in Class 9, and referred me to a list setting out particulars of such registrations which is Annexure B to the appeal. According to him, therefore, the Assistant Registrar failed to take these factors into consideration when comparing the Trade Marks in question. His contention is that where two Trade Marks contained common suffix, which is also common in a number of other marks standing on the Register, the prefix assumes importance and helps to distinguish between them. This principle can be accepted only if it is proved that the A marks comprising the common suffix are fairly and extensively in use in the market in which the mark under consideration is being or will be used. In support of the point a reference may' be made to Kerly on Trade Marks and Trade Names, 8th Edition, 1960 at p. 407. The appellant has failed to show that the several registered Trade Marks having the common suffix Tron on which it relies, are in use in the market. As for the prefixes, Dr. Tanzil-ur-Rahman submitted that Trini in the appellant's Trade Mark is distinguishable from Trio in the cited registration.
5. But this method of comparing Trade Marks both of which are words, is not proper. The rules of comparison of two Trade Marks comprising of words, as distinguished from divide marks, have been well---settled. In this connection, the quotation from the judgment of Parker, J. In Pianotist Company Ltd.'s Application ((1906) 23 R P C 774) is classic and is frequently referred to. He stated as follows :- "You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen to each of those Trade Marks in use in a normal way as a Trade Mark for the goods of the respective owners of the marks."
Applying this test in the comparison of the two Trade Marks under discussion, one cannot fail to see that the Trade Marks Trinitron and trlotron look similar as a matter of first impression. Each word comprises of three syallables having 9 and 8 letters respectively. The prefix Tri and the suffix Tron are identical in both marks. The only difference is in the middle syallable of each mark. In Trinitron it is `NI' while in the Triotron it is `O'. As observed by Farewell, J. In William Bailey Birmingham Ltd.'s Application ((1939) 53 R P C 151), it is a dangerous method to adopt, to divide the word up and seek to distinguish a portion of it from a portion of the other word. The two Trade Marks have to be compared as wholes. Luxmoore L. J. Stated in Rista Ltd.'s Application ((1943) 60 R P C 87): "The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with bath words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution. The Court must be-careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants."
These observations are apt in the instant case where on account of the complex structure of the two Trade Marks and also having regard to the somewhat defective knowledge of the English language on the part of an ordinary :purchaser in Pakistan, the risk of confusion which is likely to occur, cannot be under estimated. Dr. Tanzil-ur-Rahman cited a decision of the Supreme Court in Abdul Wahid v. Haji Abdul Rahim and another (PLD 1973 SC 104). In that case, the Trade Marks concerned were Daigon and Saigon used in respect of sewing machines". Their Lordships held that although the suffix Gon was common, the prefixes Dai and Sai were clearly dissimilar in sound. They therefore held that the two marks were different. This citation may therefore be distinguished because in the instant case before us, the prefix Tri is common to both the marks under comparison. Mr. Tanzil-ur-Rahman further cited the unreported decision of this High Court in Misc.
Application No. 81/68 wherein Dispro was held to be dis--similar to Aspro. Again, for the same reason, the prefixes being clearly different, this decision, is clearly distinguishable. He also referred to several other cases but in all of them the prefixes being clearly different, it is not necessary to consider them. There is the further point that in comparing two Trade Marks each comprising of two syllables of which the second syllable is common, a difference in their prefixes helps to distinguish them by easily retaining an impression in the mind, unlike in the case of Trade marks having three or more syllables which are difficult to remember. Again, the risk of confusion and/or deception is greater since the goods in respect of which Trinitron is proposed to be registered, are identical with those covered by the prior registrations for Triotron. For these reasons, I am inclined to agree with the decision of the learned Assistant Registrar that section 10(1) of the Act bars the registration of the appellant's Trade Mark application Trinitron.
6. Dr. Tanzil-ur-Rahman relied on section 10(2) of the Act which permits registration by more than one proprietor of Trade Marks which are identical or which nearly resemble each other in respect of the same goods or description of goods where special circumstances exist which in the opinion of the Registrar justify such concurrent registration. The special circumstances relied on is the fact that both the trade marks stand registered in the Register of Trade Marks in the United Kingdom. I have seen the relevant certificates of registrations granted in respect of Triotron and Trinitron by the British Trade Marks Office. In the first place, the British Registration for Triotron is for the word shown as a device mark with the disclaimer of the letter `T' and it proceeds also for different goods, namely, "Wireless telephone valves" and was granted as far back as 1929. In any case, as rightly observed by the learned Assistant Registrar, the registration side by side of similar marks in a foreign country, be it a British country, where the Trade Marks laws are similar, does not help the appel--lant if the registration is in contravention of the Pakistan Trad Marks Act.
7. As observed in the cited Supreme Court case, the Court will not lightly interfere with the discretion of the Assistant Registrar which is a special tribunal, unless it is shown that he has clearly gone wrong or that his decision is arbitrary and capricious. I am satisfied that the discretion vested in the Tribunal has been rightly exercised and the mark; of the appellant rightly refused.
8. In these circumstances, I see no force in this appeal, which is hereby dismissed with costs.
S.A.H.