1. SHAFIUR RAHMAN, J.--Leave to appeal was granted in a trade-mark case to examine whether the High Court's view in the impugned judgment that the order of the Registrar, Trade Marks, could not be set aside unless, in addition to the same being wrong, it was also 'absurd' and/or 'perverse'.
2. 2.The appellant is a Japanese firm having the name 'TOKYO SHIBAURA DEMKI KABUSHIKI KAISHA' from which it coined or invented the word `TOSHIBA' and got it registered as manufacturer of goods of various classes as appearing hereunder:- Trade Mark No,ClassAdvertised in T.M. Journal and page Nos, 55127 9 277 dated 1-2-1974 page No. 275.
3. 55128 8 255 dated 1-4-1972 page No.2202.
4. 55129 10 253 dated 1-2-1972 page No.2088.
5. 55130 11 253 dated 19-3-1971 page No.2089 55131 12 263 dated 1-11-1972 page No.2600, 55132 14 259 dated 1-8-1972 page No.2440.
6. 55133 16 264 dated 1-1-1973 page No.2681.
7. 3.M/s. Murad Industries, Gujrat, respondent No,1, applied on 27th of October, 1979 for registration of their trade-mark 'TOSHIBA' in Urdu for goods like electric fans all kinds falling in Class 11 claiming use of mark since 1978. On receipt of the application the Officer reported that mark 'TOSHIBA' stood registered at Sr. No, 23678 in Class 11 in favour of M/s. TOKYO SHIBAURA ELECTRIC COMPANY LIMITED JAPAN for installation for lighting and heating. The respondent No,1 filed Opposition to the registration and the grounds taken up were mainly the following:--
(i) That the opponents are the true and original proprietors of the Trade Mark "TOSHIBA" an invented word, which has been coined from their Japanese name viz. TOKYO SHIBAURA DEMKI KABUSHIKI KAISHA and they have adopted it as a part of their trading name viz. TOSHIBA CORPORATION as such they have exclusive and inherent rights in the word "TOSHIBA" and having been registered as a trade mark in many countries of the world, including Pakistan, has become synonymous with the Opponents' name viz. TOSHIBA CORPORATION, of Japan." (Para 2).
8. (ii)That the mark viz. 'TOSHIBA' sought to be registered by the applicants is the same as the Opponents' name and their world famous Trade Mark `TOSHIBA'. Moreover, the goods for which applicants seek to obtain registration of 'TOSHIBA'. Viz. 'Electric fans (all kinds) are the same goods or goods of the same description for which Opponents have obtained registration of the word 'TOSHIBA' and hence the use and registration by the applicants is likely to cause confusion and deception in the trade. The applicant's proposed Trade Mark No,70461 is, therefore, not registrable under the provisions of section 10(1) of the Trade Marks Act, 1940'. (Para. 7).
9. (iii)That the Opponents' said Trade Mark 'TOSHIBA' has been in continuous use in respect of various Electric goods falling in different classes as well as goods of Class 11 in Pakistan for many years past and by virtue of extensive user it has become famous in Pakistan in connection with various kinds of electrical items. Therefore, if the applicants' mark is allowed to be used on the goods for which application has been made it will cause confusion and deception, as the public will believe that the goods emanate from or have some connection with the opponents'. The applicants' mark is, therefore, not registrable under section 8(a) of the Trade Marks Act, 1,940' (Para. 8).
10. 5.In reply to these grounds the counter-statement contained the following replies:--
(i) The contents of para. 2 of Notice of Opposition are not known to the applicants and are not admitted.
(ii) 'Statement in para. 7 is funny and absurd. Applicants are not aware of the fame of the Opponents' so-called world famous mark Toshiba. Since opponents have not used their mark in Pakistan on or in connection with goods, particularly electric fans, in which it is alleged to be registered, applicants assert that in the absence of use of the mark in Pakistan by the opponents, by applicants of this mark are not likely to cause confusion. In fact, its use by applicants for the last six years has not caused any confusion. Since opponents have not submitted any proof of confusion and have not used the mark provision of section 10(1) is not attracted'.
(iii) 'Statement in para. 8 is denied because the opponents have not used the mark Toshiba not only on fans but also on other electric goods falling in class 11 in Pakistan. Hence provision of 8(a) are not attracted."
11. The respondent No,1 filed a number of affidavits and documents in support of its claim. The grounds which weighed with the learned Registrar, Trade Marks, are enumerated as hereunder:-- (i)The opponents are the registered proprietor of mark Toshiba in different classes but not a registered proprietor of this mark in Class 11 which deals with electric fans. There is no affidavit to support the grounds for opposition. It clearly indicates that the mark applied for by the applicant is not being used by the opponent in Pakistan for goods like electric fans'.
12. (ii)Keeping in view the evidence on record I am convinced that the applicants are in bona fide use of mark 'TOSHIBA' in Urdu since 1978. There had been no hindrance made by the opponent as to use of mark. Use of mark by the applicant is honest, bona fide and without any let or hindrance from any quarter. The registration of mark in one class does not give any monopoly right to the owner to use for infringement for goods falling in other classes. No monopoly rights vest with the proprietor, unless the mark has been used for those particular goods. I rely on PLD 1978 Kar. 161 and PLD 1969 Kar.
376. Goods of then opponent are not in the market and they have never been in the market nor does opponent intend to export goods to Pakistan. In these circumstances question of confusion does not arise. Section 8(a) is not attracted, See PLD 1969 SC 477'.
13. (iii)In these circumstances I am of the considered view that the use of mark by the applicant entitles him to claim registration of the mark'.
(iv) 'Opponent's plea that the mark is objectionable under sections 8(a) and 10(1) is not maintainable. Opposition filed by the opponent stands dismissed with costs."
14. The relief that was granted by the Registrar, Trade Marks, was as hereunder:- "Application No,70461 in Class 11 to proceed to registration with a condition that the mark shall always be used in Urdu as applied and advertised, the trading style shall always be prominently displayed with the mark and goods shall remain fans all types and the activities shall not be extended further under their mark. To safeguard the interest of the opponent further applicant is directed not to export his products from the country under the accepted marks."
15. 5.An appeal was filed in the High Court under section 76 of the Trade Marks Act. The High Court held that 'the trade mark of the respondents was sought to he registered for the same class of goods for which a similar trade mark was already registered by the learned Registrar The burden would be on the applicant to show that no deception was likely to be caused by registration of his trade mark'. On the question of deception or confusion, the learned Judge observed as hereunder:-- "I find that the learned Registrar has already considered all the relevant questions and after doing the same, he was convinced that there was no likelihood of any confusion being caused in the mind of the public since the trade mark of the respondents is in Urdu and the same has been used without any let or hindrance since 1978. Moreover, according to the learned Registrar, similar goods of the respondents are not in the market. Consequently, according to the learned Registrar the question of confusion did not arise. Needless to say that the findings of the Registrar can only be interfered with when the same are found to be absurd or perverse which does not appear to be the case here. Moreover, the learned Registrar has allowed registration of the mark subject to certain conditions which, in my opinion, can reasonably safeguard the interest of the appellants."
16. On these findings, the order of the Registrar was upheld and the appeal dismissed.
17. 6.When this appeal came up before us for hearing on the 25th of April, 1990, there was no representation by the respondents. The arguments were heard ex parte against the respondents and the judgment reserved. At the same time we intimated the Advocate-on-Record for the respondent No,1 of the fact that appeal had been heard ex parte and the judgment was reserved.
18. He was allowed to submit written arguments, if any. The Advocate-on-Record of the respondent submitted in the Supreme Court of Pakistan at Lahore written arguments on 14-5-1990 without any explanation for the absence on the date of hearing.
19. 7.An examination of the judgment of the High Court and the order of the Registrar of Trade Marks gives the clear indication that they have over emphasized the honest and long use of the trade mark which is phonetically identical with the registered trade mark of the appellant. In doing so they have omitted to note that the application for registration of the mark was filed in 1979 and the use of that trade mark was claimed only from the previous year. The relevant consideration in the ordinary course for the Registrar of Trade Marks and the High Court should have been to take the factors as existing on the date the application for registration was filed. If that had been kept in view, not a very long or continuous uninterrupted use of that trade mark would have surfaced.
20. Besides, in a case where deception and confusion are the grounds of Opposition, the honesty of intention in user cannot be of any avail. In the case of Singer Machine Manufacturers v. Wilson 3 Appeal Cases 376, the House of Lords approved the principle reproduced in Mitchell v. Henry (1880)
21. 15 Chancery Division 181 at 191 in the following words:- " even if it were made out that the defendants had originally adopted a mark honestly and innocently, either in ignorance of the existence of the plaintiffs' mark, or in the belief that their mark was so different from that of the plaintiff? As not to be calculated to mislead an ordinary purchaser, their continuing to use the mark after they became aware that their use of it did cause their goods to be mistaken for the goods of the plaintiffs, would be not less fraudulent in the eye of the Court than if they had originally begun to use it with a fraudulent intent. The defendants must bear in mind that the original honesty of intention does not protect the continued user, if the user is found practically to have the result of deceiving, or is calculated to deceive purchasers, because it is very easy for manufacturers to avoid any possibility of misleading purchasers if they are minded to avoid it."
22. 8.The view taken by the Registrar of Trade Marks that not only the trade mark has to be identical/similar but also the goods covered by the trade mark have also to be identical/similar, is not in accord with law, after the similarity of the trade mark was established and phonetically it was found to be identical.
23. 9.The next question which the Registrar of Trade Marks was required to examine was whether there was likelihood of deception on account of goods of the appellant being similar or of the same description. The appellant is extensively in the manufacture of electrical appliances, having a registered trade mark for lighting and heating. Electric fans fall in the category of electrical appliances for which the appellant has earned world-wide reputation apart from registration of its goods under various classes in this country. So far as Articles in domestic use are concerned, an impression can be formed even outside the recorded evidence as was done by the House of Lords in Bali Trade Mark's case 1969 Reports of Patent Cases 472 in the following words:-- "So, in my opinion, this evidence is of no weight against the plain common sense view (not unsupported by evidence) that phonetically there is a likelihood of deception or confusion and of such a character as to satisfy the legal test which I have propounded above. Prima facie, therefore, Bali's mark should be expunged."
24. 10.As regards the discretion of the Registrar in the matter, one has to take note of the fact that the provisions invoked by the appellants do not on the plain D words contain a discretion. The discretion comes in after a finding of fact has been recorded. The two provisions (sections 8(a) and 10(1) of the Trade Marks I Act) invoked, read as hereunder:-- 8.Prohibition of registration of certain matters:--No trade mark or 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;"
10. 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."
25. 11.It cannot be said that the Registrar of Trade Marks has discretion in determining whether the prohibition prescribed has been incurred or not. He has no discretion. He has to record a finding of fact on the material before him. In case the Registrar of Trade Marks comes to the conclusion that the matter falls within the prohibited category then he has no discretion but has to refuse registration. His discretion arises only when after recording the finding of fact that the matter does not fall within the prohibited decree, he yet considers on certain good grounds that registration is not to be allowed or has to be allowed conditionally. This finding of fact with regard to the matter being within the E prohibited category or outside it, has necessarily to be examined as a finding of fact relatable to the goods for which the trade mark is to be used. Such a finding of fact has therefore, to be shown to be plausible and correct. If it is not so, such a finding is liable to interference. There is no requirement that the finding itself should have been perversely recorded. It is the exercise of discretion, which is subjected to such a stricter test.
26. 12.The respondent has shown no reason tenable at law to pick up an invented word of foreign firm enjoying inside the country and outside a reputation for electrical goods of various descriptions. It is registered in this country as such. In this background, the adoption of the same trade mark F phonetically in respect of electric fans is bound to create likelihood of confusion and deception to the consumers of such goods. Hence, it is against public interest to register such a trade-mark. This appeal is allowed. The judgments impugned are set aside, and the application for registration filed by respondent No,1 is refused. No order is made as to costs.