MUKHTAR AHMED JUNEJO, J.- Appellant Transpak Corporation Limited has filed this appeal under Section 76 of the Trade Marks Act against refusal by the Registrar of Trade Marks to register his trade mark "SHIELD" in respect of tooth pasts in Class 3, which was claimed to be in use since 1987.
2. The main ground which weighed with the Registrar of Trade Marks in refusing the registration under the impugned order dated 25.4.1989 was, that the trade mark sought to be registered viz 'SHIELD' was confusingly similar to the already registered trade mark "BRONZE SHIELD" for same goods and the trade -mark "SHIELD" was likely to deceive.
3. Mr. Syed Shaukat Ali, learned counsel for the appellant raised the following contentions:- i) That before passing any order the Registrar should have caused appellant's trade mark application for the word "SHIELD" advertised, with notice to owners of the registered trade mark "BRONZE SHIELD", in view 6f the provisions contained by the proviso below Sub-section (1) of Section 15 of the Trade Marks Act.
Ii) That the appellant wanted registration of Trade Mark "Shield" for his goods and such trade mark was materially different from the trade mark "Bronze Shield" and that registration of the trade mark "Shield" could not have been refused.
4. In support of first contention, learned counsel for the appellant relied on the provisions contained by the proviso below Sub-section (1) of Section 15 of the Trade Marks Act and the cases of David Vaughan Racklin vs Deputy Registrar of Trade Marks Karachi (1986 M LD 1666) and Lakson Tobacco Company Limited vs Assistant Registrar of Trade Marks Karachi (Misc: Appeal No.19 of 1987), decided by a learned Single Judge of this Court. In respect of second contention, it was argued that the trade mark "BRONZE SHIELD" was in respect of goods which were different from the goods for which the trade mark "SHIELD" was sought to be registered.
5. Mr. S.D. Rana learned counsel for the respondent refuted both the contentions and argued that as provided by Section 8(a) of the Trade Marks Act no trade mark shall be registered which consists of any matter the use of which was likely to deceive or cause confusion. Reliance was also placed on Sub-Section (1) of Section 10 of said Act which says that, 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 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, except in cases covered by Sub- Section (2) of Section 10 of said Act. Dealing with the proviso below Sub-section (1) of Section 15 of said Act, learned counsel for the respondent argued that by using the word "May" the Legislature had given discretion to the Registrar to cause an application to be advertised. It was next argued that it was condition precedent for refusal of an application under Section 14 of the Trade Marks Act that it should be advertised. In support learned counsel for the respondent cited the case of M/s. Surya Brothers vs M/s. Dada Soap Factory Ltd.
(PLD 1971 Kar 189) where the view taken was, that the Registrar Trade Marks was justified in refusing the application for registration of a trade mark, on the ground that there was tangible danger of the mark sought to be registered being mistaken, by the illiterate persons, for the already registered mark of another manufacturer.
6. The provisions contained by Section 14 of the Trade Marks Act say that 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 said Act the Registrar may refuse the application or may accept it absolutely or subject to such amendments etc. If any, as he may think fit. A Registrar, while refusing registration of a trade mark or conditional acceptance of the same, shall state in writing the grounds of the decision and the material used by him in arriving there at, as per Sub-section (2) of Section 14.
7. While deciding an application for registration of a trade mark, the Registrar of Trade Marks shall be governed by the provisions of the Trade Marks Act including its Sections 8 and 10. But the procedure for moving and deciding such as, application is given in Sections 14,15 and 16 of the Trade Marks Act. The provision about causing an application to be advertised appears in the proviso below Sub-section (1) of Section 15 of the said Act. Said proviso with section 15(1) reads as under: "Opposition to Registration: When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitation, the Registrar shall, as soon as may be, after acceptance, cause the application as accepted, together with the conditions and limitation, if any, subject to which it nas been accepted, to be advertised of the prescribed manner: Provided that the Registrar may cause an application to be advertised before acceptance if it relates to a trade mark to which clause (e) of sub-section (1) of section 6 applies, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted but shall not be bound so to do"
In the case of David Vaughan Racklin vs Deputy Registrar of Trade Marks (1986 M LD 1666) the appellant's application for registration of trade mark of a device of a horse with the word 'STUD' written underneath the device, was dismissed at the preliminary stage on the main ground that the mark applied for and the mark of Welcome Foundation Limited already registered, were confusingly similar and they were for same description of goods and in same class. In the said case it was pleaded on behalf of the appellant inter alia that device of a horse was registered as trade mark of Mobile Petroleum Company in 1966 and in spite of such trade mark, the device of a horse in the same class was registered in the name of Welcome Foundation Limited and if that was so the appellant's application should not have been rejected at the preliminary stage but the Registrar should have proceeded with the application for registration after issuing notice to the holders of the registered mark and after publication. It was in these circumstances that the application of the appellant was remanded to the Registrar with direction to proceed with the same after issuing notices to the registered holders-of Trade Marks likely to be affected by registration of appellant's trade mark and after, publication. In the case of Lakson Tobacco Company Ltd. Vs Assistant Registrar of Trade Marks Karachi (Misc: Appeal No.19 of 1987) decided on 21.12.1987 by a learned single Judge of this Court, appellant Lakson Tobacco Co. Ltd. Filed application for registration of the trade mark "CLIPPER" in class-34 in respect of "Cigarettes, tobacco manufactured and raw, smomker's articles, matches, gas lighters and cigars". This was followed by an amended application seeking registration of the trade mark "LAKSON CLIPPER" for same goods.
Said application was dismissed due to existence Of two previously registered trade marks namely "LIPPER" and "CLIPPER" registered in name of two different applicants. In the circumstances the view taken was that the Registrar of Trade Marks should have proceeded with issuance of notice to the proprietors of the trade marks already registered and should have advertised the trade mark in Trade Mark Journal for inviting objections and thereafter holding proper inquiry, should have passed an order in accordance with law. For taking such view reliance was placed on the case of David Vaughan Racklin (1986 M LD 1666). Facts of the aforesaid two cases are materially different from facts of the instant case, where registration was refused because already registered Trade Mark similar to the Trade mark sought to be registered, existed in respect of a tooth paste.
8. Perusal of the proviso below Sub-section (1) of Section 15 of Trade Marks Act shows that an application for registration of a trade mark is to be advertised before acceptance of the same.
There is nothing in language of Section 15 of the said Act that an application for registration of abrade mark should be advertised before rejection of the same. Language of the proviso below Subsection (1) of Section 15 of said Act Cannot be interpreted to mean that the Registrar shall cause an application to be advertised before rejection of the same.
In the case of M.S. Surya Brothers (PLD 1971 Kar 189) an application for registration of a trade mark in respect of all types of Soaps was filed and the trade mark sought to be registered comprised a label containing the device of the Ace of Spade with the word "Kala Pan" Registration of said trade mark was refused by the Registrar, on the ground that there was a registered Trade Mark having the device of a Heart with the word" in respect of the same class of goods and that there was tangible danger of the mark sought to be registered being mistaken, for the already registered mark of another manufacturer, by the illiterate persons. In the circumstances it was held that the Registrar was justified in refusing the registration. In cited case no exception was taken to act of the Registrar in rejecting the application for registration of Trade Mark without getting that application advertised. Moreover, use of the word "May" in language of the proviso below Sub-section (1) of Section 15 of said Act shows that the Legislature left it to the discretion of the Registrar of Trade Marks to cause an application for registration of a trade mark to be advertised or not. On merits the question arises, as to, whether unwary purchaser would take the products of "SHIELD" to be "BRONZE SHIELD". In the case of Ruston and Hornby Ltd. Vs Zamindara Engineering Company (AIR 1970 SC 1649), plaintiff owned registered trade mark > "RUSTON" in respect of diesel internal combustion engines, while the defendant ' used the words "RUSTON INIA" on similar engines manufactured by it and in an action for infringement brought by the plaintiff against the defendant it was held that if the defendant's trade mark is deceptively similar to that of the plaintiff, the fact that the word "INDIA" is added to the defendant's trade mark, is of no consequence and the plaintiff is entitled to succeed in its action for infringement of its trade mark. In the case of M/s. Dada Soap Factory Ltd.
Vs Crescent Pair Industries Ltd. And another (1987 M LD 1256), the view taken was that "Al-Bqra" was similar to "Burq". In the case of national Detergents Ltd. Co. Vs. Mod International (Pvt) Ltd. Co, (Suit No.643/89), I had taken the view, while deciding an application for interim injunction on 30.5.1990 that addition of word "French" to the word "Flare" by the defendant would not materially affect the piracy, when the plaintiff was owner of the registered trade mark "Flair"
In the light of above discussion, it appears that Registrar of Trade Marks was justified in refusing to register appellant's trade mark "SHIELD" in respect of Tooth Pastes, when registered trade mark "BRONZE SHIELD" already existed in respect of goods including tooth pastes. With these observations I dismiss this appeal.