1. ' The appellant claims to carry on a worldwide and reputable business in the manufacture of matches which are sold and marketed throughout Pakistan in containers bearing various trade marks and in particular bearing the trade mark comprising the word "The Scissor" and the device of scissors. The appellant is the proprietor of label trade mark comprising the word "Scissor" and the device of a pair of scissors. The appellant registered the trade mark of the Scissor bearing Registration No,6957 in class 34 for matches on Ist July, 1949. The appellant claims to have used this trade mark for manufacture of matches in pre-partition India including the territories now forming Pakistan and has a valuable reputation and goodwill in respect thereof. The matches bearing appellant's trade mark had been exported to Pakistan and continued to export in Pakistan.
2. In 1973 the import of matches into Pakistan was restricted with the result that thereafter the appellant has not exported its goods to Pakistan. On 13-5-1981 respondent No,1 filed application in class 34 for registration of a lable trade mark comprising as its essential feature the words "The scissor" and the device of pair of scissors in respect of safety matches which was advertised in Trade Mark Journal on Ist November, 1982. The appellant filed notice of opposition on 28th August, 1983 with documents and objected to its registration. On 20th October, 1983 respondent No,1 filed counter statement accompanied by affidavits and documents alleging that it had adopted and introduced "The Scissor" Mark in 1977 and that the question of confusion and deception did not arise as the appellant had abandoned this trade mark. Alongwith its counter-statement respondent Not also filed application under section 37 of the Trade Marks Act to remove the registered trade mark of the appellant. The appellant filed counter-statement and supporting documents in that rectification proceeding case No,52/83. The learned Deputy Registrar, respondent No,2, by the impugned order rejected the opposition of the appellant and allowed the application of respondent No,1 for registration of the mark with amendment by indicating the name of respondent No,1 on the front side of the label. The rectification application filed by respondent No,1 was disallowed. The appellant has filed M.A. 27/87 challenging the order by which its opposition was rejected. The respondent has filed M.A. 30/87 against the rejection of the rectification application which is being disposed of by a separate judgment.
3. ' Mr. Khawaja the learned counsel for the appellant has contended that as the appellant is a proprietor of registered trade mark, the learned Deputy Registrar should have taken into consideration the prohibitions and bars provided by sections 6, 8 (a) and 10 (1) of the Trade Marks Act. It was further contended that respondent No,1 has failed to satisfy the pre-conditions laid down for registration of an identical mark in respect of the same goods.
4. ' The learned counsel for the appellant has contended that the marks of respondent No,1 are not distinctive as required by section 6 (2). In this regard Mr. Syed has contended that in view of its user from 1977 and non-availability of appellant's goods in market from 1973, respondent's mark has achieved distinctiveness. In this regard reference has been made to the affidavits filed on behalf of the respondent in which similar averments have been made. It is established that appellant's goods are not available in market from 1973. The goods with the trade mark in Pakistan markets are known to be the products of respondent No,l. When with reference to a mark the goods of a manufacturer are A distinguished from the goods of other producers, the mark achieves distinctiveness. It is the local market where the mark should be known and recognised to represent a particular person and the goods bearing the said mark to belong to him and none else. Mr. Syed has referred to S.M. Taufiq v. National Biscuit Co. PLD 1962 Kar. 355 in which while relying on Impex Electrical Ltd. v. Weinbaum 44 R.P.C. 405 Wahiduddin, J. (as he then was) a most eminent Judge, observed as follows:-- "In English Courts, it is now well-settled rule of law that for the purpose of finding out whether the mark is distinctive, one should took to the local market and not to foreign markets, as it is wholly irrelevant consideration."
5. From the evidence produced by the parties which will be discussed later it is established that the appellant was exporting safety matches with registered trade mark to Pakistan which completely stopped in 1973. Thereafter appellant's goods are not available in the market. In the absence of appellants products respondent No,1 started manufacturing safety matches from the year 1977 under a trade mark which is similar to the appellant's registered mark, Respondent No,1 has developed sizable business and has continously using this mark and has achieved distinctiveness without any objection by the appellant. In Pakistan the trade mark is associated with respondent No,l. The affidavits filed on behalf of the appellant prove that its goods with the registered trade mark were available in Pakistan upto 1972. The particulars of sales of the same goods in other countries upto 1983 is not relevant. It is pertinent to note that no affidavit of any consumer or shopkeeper of Pakistan has been filed to prove that even now after more than eight years the consumers treat the safety match with trade mark, THE SCISSOR and with device of scissors as goods manufactured by the appellant, There is no iota of evidence to prove that even in the absence of any market in Pakistan the appellant carries any reputation which may deprive the trade mark of respondent No,1 from its distinctiveness. A mark while retaining its distinctiveness in a country may become 'public juris' in another country. Reference can be made to National Starch Manufacturing Co. v. Munir's Patent Maizena and Starch Co. (1894) 11 RRC 281.
6. ' The learned counsel for the appellant next contended that as the mark is similar to its mark, it is likely to deceive or cause confusion and thus registration cannot be allowed under section 8 (a).
7. The respondent on the other hand denied it on the plea that the reputation acquired by the appellant has ceased from 1973 onwards and as the appellant's goods are not available in Pakistan markets the question of deception and confusion does not arise. But according to Mr. Khawaja there is a residue goodwill and reputation which was acquired persists even after use of mark has ceased. He has referred to (1954) 71 RPC 348 and 1957 RPC 84. Mr. Syed has referred to Akbibolliget Jonkoping Volume Sweden v. Registrar of Trade Marks, Karachi and another PLD 1975 Kar.478. In this case facts are similar. The appellant was a manufacturer of safety matches and proprietor of a trade mark of word THREE STAR and device of three stars. It supplied the matches in East Pakistan upto 1954 when import was banned by the Government. Respondnet No,2 applied for registration of trade mark Five Star and device of Stars. The appellant filed opposition which was rejected. Similar objection as raised by Mr. Khawaja was repelled in the following words: "The next submission of Mr. Nomani is that the burden was on the applicant to prove the absence of likelihood of deception and confusion and that the respondent had failed to discharge it. There is no force in the submission. Since the appellant admittedly discontinued use of its Three Stars trade mark in Pakistan since 1951 and in the absence of the appellant's goods in the market, the burden, of proving absence of likelihood of deception or confusion, has been easily discharged by the respondent."
8. The learned counsel for the appellant contended that as honest concurrent use has not been established the mark of respondent No,1 cannot be registered. Section 10 (1) provides for registration of identical mark in respect of similar or same goods on conditions prescribed under section 10 (2). These are exceptions to the rule prohibiting registration of same, similar or identical marks in respect of the same or similar goods belonging to other person. Such registration is permitted if there is honest concurrent user or other special circumstances justifying exercise of discretion by the Registrar. Reference has also been made to M /s. Bengal Friends & Co., Dacca v.
9. M/s Gour Benode Shah & Co., Calcutta and another PLD 1969 SC 477 where it was observed as follows:-- "It has been noticed that the supplies made by respondent No,1 to East Pakistan since 1948 were scanty and stopped together in 1952. Consequently when the appellant applied for registration of his mark in 1953 the goods of respondent No,1 were not available in the market. In the circumstances there was no likelihood of deception' or 'confusion' as contemplated in section 8 (a).
10. But the Courts below upheld the opposition by respondent No,1 merely on the basis of his use from an earlier date of the mark with the device of a ship than on the volume of goods sold by him in East Pakistan for a number of years before the appellant approached the Deputy Registrar for registration of his mark. If mere use from an earlier date alone were to satisfy the requirements of section 8, then no one need have his mark registered under the Trade Mark Act at all."
11. This controversy seems to be well-settled that if the goods of a manufacturer are not available in the market for a long time and during this period another manufacturer sells the same goods under similar trade mark the question of deception and confusion, depending on the facts of case, will not arise. So far as the honest concurrent user is concerned according to the appellant it has not been proved by respondent No,1. According to the learned counsel as the appellant's mark was in market from 1949 and continued upto 1973 it has acquired goodwill and respondent No,1 has adopted it only for the purposes of reaping on the goodwill of the appellant. In this regard the learned counsel has referred to Glaxo Laboratories Ltd. England v. Assistant Registrar of Trade Marks and another PLD 1977 Kar. 858 and 1981 SCMR 1039 and 7 Up Co. v. Registrar 1987 MLD 91.
12. On the other hand the learned counsel for the respondent has pointed out to the evidence on record to show that the appellant's mark is not available in the market from 1973 and after making inquiries and satisfying that the appellant's goods were not available in the market since long it started manufacturing in 1977. The learned counsel criticised the evidence produced by respondent No,1 on the ground that it is insufficient and unauthentic. An examination of the evidence will show that respondent No,1 had produced affidavits alongwith documents which were photo copies of receipts, voucher and a letter issued by the Excise Department. It had also produced the receipt and vouchers of the press which had been printing the label. The affidavit of a shopkeeper was also filed who sells the respondents' goods, Before the mark was published for inviting objections, the Registrar had asked for particulars of material with regard to production from 1977 and certain vouchers and receipts of 1977 onwards were produced through a letter of the advocate for respondent No,l. After the opposition was filed respondent No,1 filed affidavit in which it was stated that all the documents and evidence produced before the Registrar at the time of filing application for registration should be taken as evidence for the purposes of opposition. This was a reasonable and proper request. A perusal of this evidence will show that respondent had been producing the goods from 1977 with the trade mark for which it has applied for registration.
13. Mr. Khawaja has taken a serious objection to the production of documents alongwith the letter of advocate for respondent No,1 which are credit bills from 1977 to 1979. However, even if those bills are excluded from consideration the certificate of the Excise Department confirms that respondent Not has been manufacturing the brand from 27-9-1977. There is one receipt of 14-2-1978 of Samir Arts for printing these labels. The other receipt is dated 7-3-1979. The affidavit of Feroz Ahmad who is a partner of Hafeez & Co. Has stated that he is selling safety matches under the trade mark from 1977 and this device has been associated with the respondent No,1 and no one else in the market is recognised as its owner. Mr. Khawaja has contended that the statement of Feroz Ahmad is false as it speaks of selling matches from the year 1975 although production of respondent No,1 started from 1977. This contention is based on misconstruction of para 1 of the affidavit in which he has stated that he, started business of selling match boxes from the year 1975 and respondent's brand is also sold by him. His statement does not mean that from 1975 he has been selling the match boxes manufactured by respondent No,1. In para 2 of the affidavit it has been explained that trade mark THE SCISSOR and device was introduced in the year 1977 and he has been selling matches under this trade mark continously from the year 1977. The entire affidavit has to be read as a whole and the overall impression is that he is selling the matches manufactured by the respondent No,1 from 1977. The evidence filed by respondent No,1 and the letter of Excise Department are sufficient to establish that respondent Not has been selling the matches with the trade mark from the year 1977. The volume of sale as stated in the affidavit also reflects the production capacity and the business respondent No,1 has acquired during the year 1977 to 1981. In these circumstances it seems that the appellant did not object from 1977 to 1981 till the application was filed. Therefore, the inquiry that was made by respondent No,1 before using the trade mark, continuous silence on the part of the appellant and raising no objection till 1981 establishes the honest user of the respondent.
14. The learned counsel for the appellant has referred tol Kerly's Law of Trade Mark and Trade Names 12th Ed., p.157 and Narayanan on Trade Mark and Passing off 2nd Ed. Pp. 280-281. The learned counsel for the appellant also referred to Cooper's Incorporated (now named Jockey International Inc. v. Pakistan General Store and another 1981 SCMR 1039 which proceeds on the basis and finding of the Deputy Registrar that the user by the respondent was dishonest. There is no such finding in this case. In 7-Up case 1987 MLD 91 dishonesty of purpose was established and therefore registration of identical mark though for different goods was not allowed. On the other hand the learned counsel for respondent No,1 has referred to Pakistan Soap Factory v. Chittagong Factory and others PLD 1970 SC 460. In this case application for registration of trade mark in 1947 on soaps manufactured by 'P' and sold in market for a number of years was opposed by another manufacturer on the ground that he was proprietor of a registered mark 1937 in respect of similarly shaped washing soap. The registration was refused and the appeal was dismissed by the High Court. The appellant agitated the matter before the Supreme Court where taking note of the fact that the trade mark has been in use of the appellants' predecessor from 1949 it was observed as follows:-- "It can be reasonably presumed that the appellant's trade mark in question was in use since 1949, if not earlier. In any case, it was put into use by the appellant on their purchase of the concern in March, 1960, after which they renewed their application for registration in August, 1960. The concurrent use of this trade mark by the appellant without any challenge from the opposite side for a long period of time is thus clear. That it has been in such a use innocuously without prejudice to the respondents interests would be manifest from the circumstance that the respondent has never thought of taking step to restrain the appellant from using this trade mark nor was any incident of the fraudulent use of their trade mark or of deception by the appellant brought to light."
15. ' The Supreme Court on assessm ent of evidence allowed the registration.
16. ' In Aktiebolaget Jonkoping v. Registrar of Trade Mark PLD 1975 Kar. 478 the appellant a foreign company was holder of trade mark of 3 Stars not available in the market for a long time. The respondent started manufacturing matches with trade mark 5 Stars and Label and developed a sizable trade without objection from the foreign firm. The Court allowed the registration.
17. From these authorities it is fully established that where a manufacturer is proprietor of registered trade mark but his goods are not available in the market for sufficiently long time and if any other manufacturer uses that trade mark after F obtaining full information about the non-availability of those goods in the market and develops a sizable market for his goods for sufficiently long time without any objection from the proprietor of registered mark then his adoption will not amount to dishonest user. These are such questions of facts which have to be proved by cogent, clear and convincing evidence and decided on its own merits. In view of the evidence discussed above user of respondent No,1 cannot be termed as dishonest.
18. Under section 10 (2) in special circumstances the Registrar in exercise of his discretionary may grant registration to more than one proprietors of trade mark which is identical or resemble each other in respect of the same or similar goods. Term "special circumstances' has not been defined nor specified. What are `special circumstances' in a particular case is a question of fact and has been left to the discretion of the Registrar. It is well-settled that Trade Marks Act does not encourage dishonesty, deception, confusion and fraud. Its object is to maintain purity of mark and safeguard the interest of public, consumers and proprietors of trade marks. Where dishonesty is established even in special circumstances registration of same or similar mark cannot be granted.
19. Special circumstances can be pleaded where honestly of purpose is not lacking. In this regard the learned counsel for the appellant has referred to Narayanan on Trade Mark and Passing Off (3rd Ed.), Arts. 616, 618 1621, AIR 1967 Madras 116, 1987 MLD 91; 1981 SCM R 1039, AIR 1969 Bom. 24 and 63 RPC 187.
20. ' In Narayanan on Trade Marks and Passing Off (2nd Ed.) at page 209 para. 626 the term "other special circumstances" has been analysed as follows: "Any circumstances peculiar to the applicant in relation to the subject-matter of the application may be considered a special circumstance under section 12 (3). Thus the use by an applicant of his mark before the conflicting mark was registered are used in the special circumstances for the purpose. Holt and Coy. (Leeds) Ld.'s Appin., (1957) RPC 289 at p. 294 relied on in London Rubber Co.
21. Lt. v. Durex Products Inc. AIR 1963 SC 1882 at p.
22. 1890. If the plaintiffs own registered trade mark was in peril of removal from the register on the ground of non-user throughout the whole of the period of the defendant's user of his mark, this fact may be a special circumstance of which the Tribunal should take account. Electrolux Ld. v. Electrix Ld., (1953) R.P.C. 127 at p.
23. 2133. This expression of opinion appears to be obiter as the issue of concurrent registration was not properly before the Court for its decision. When the use of applicant's mark is proved to be dishonest, it is not open to the Registrar to allow registration on the basis of "other special circumstances". Bengal Immunity Co. Ltd. v. Denver Chemical Mfg. Co. A ! R 1959 Cal. 636 at p.
640. The use of the word 'other' shows that `honest concurrent use' itself is a special circumstance.
24. Other cases of special circumstances arise: (a) when the mark happens to form the essential part of the applicant company's name (b) when the mark has been used for a considerable period of time and denial or registration would cause hardship to the applicant; and (c) when the goods are different. But socio-economic considerations would not constitute a special circumstance under S. 12 (3). A special circumstance must be connected with the use of the mark. London Rubber Co. Ltd. v. Durex Products Inc. AIR 1963 SC 1882 at p.1890.
25. ' The general principle for granting registration of same or similar trade marks was set ont in Kerly's Law of Trade Mark and Trade Names (12th Ed) at page 160 as follows:-- "The main matters which the Tribunal should take into account under this subsection were laid down by Lord Tomlin in Pirie. Briefly these matters are:-
(1) The extent of use in time and quantity and the area of the trade, (2) the degree of confusion likely to ensue from the resembance of the mark which is to a large extent indicative of the measure of public inconvenience; (3) the honesty of concurrent use; (4) whether any instances of confusion have in fact been proved; and (5) the relative inconvenience which would be caused if the mark were registered, subject if necessary to any condition and limitations, but not, probably the effect in foreign countries of registration in the United Kingdom. The discretion of the Tribunal is unfettered and concurrent registration may be allowed even then the probability of confusion is concerned. Every case has to be determined on its own particular, merits and circumstances."
26. ' In Antiebolaget Jon Koping Valcan Sweden v. Registrar of Trade Marks and another PLD 1975 Kar.
27. 478 referred above in similar facts the following observation was made:- "The 'other special circumstances' relied on in Lullbhai Amichand's case were identical with those in the present case viz. That the goods of the foreign registered proprietor were not available for sale or consumption in Pakistan and in the vacuum so created a national firm of manufacturers had built up a sizable business by using the trade mark in question over the last several years without any objection. These circumstances in the view of the Court, were registered as "special circumstances" within the meaning of section 10 (2) of the Act."
28. The facts of the case as discussed above establish sufficiently long honest user by respondent No,1 without any objection. It has also developed a sizable market and the appellant is neither manufacturing in Pakistan nor has been importing here from 1973. These facts do constitute other 'special circumstances' I and therefore, the discretion exercised by respondent No,2 is legal and proper.
29. The appeal is dismissed.