1. ' The appellant is trading under the name and style of Lasani Engineering Company at Rahimyar Khan and claims to be nationally renowned merchant and manufacturer of agricultural implements. On 16-2-1984 he applied for registration of trade mark {{URDU TEXT}} a in Urdu in respect of chaff cutter and blades of chaff cutters, sugarcane crushers, wheat thrashers, rice and maize sheller, electric motors and other agricultural implements falling in clause 7. The Registrar issued show-cause notice to the appellant that as respondent No,1 is proprietor of three registered trademarks consisting of the word {{URDU TEXT}} .-fir (KING) and one application for registration of trade mark' consisting of KING is pending, the application will be hit by. Sections 8, 10 (1) (S). The particulars of such conflicting marks were also mentioned in the notice. The appellant submitted his reply and, the Registrar advertised the mark in Trade Mark Journal NoA22 dated , 1-3-1986.
2. Respondent No,1 filed opposition stating that they are dealing in agricultural implements and are proprietors of trade mark under registration Nos.34199 and 78920 in class 7 from 1980 and 1984 respectively. They objected that the mark applied for is identical or closely similar to their trademarks and is likely to deceive and create confusion. It was also alleged that the adoption of trade mark by the appellant is not honest and bona fide and the registration should be refused. To support their opposition they filed affidavit of Ghulam Qadir their Managing Partner alongwith documents including income-tax record, trade certificate, and certificate of Chambers of Commerce and Industries. The appellant filed his counter-statement with his affidavit, alleging that the appellant is planning to start the business of manufacture and sale of agricultural implements but the work had not till then started. He proposed to use the mark. He further stated that the mark in Urdu has been adopted after thorough search in Pakistan market. The claim of respondent No,1 that they are engaged in manufacture since 1960 was denied. It was further stated that the mark {{URDU TEXT}} visually and phonetically is different from the mark {{URDU TEXT}} He claimed that his mark is bona fide and will not create any confusion.
3. ' The learned Registrar by the impugned order held that the appellant's mark is identical or similar with the already registered marks of the respondent No,1 and is likely to cause confusion and deception in the mind of the purchaser. The opposition was therefore allowed and appellant's application for registration was dismissed.
4. ' It is an admitted position, that respondent No,1 are proprietors of the{{URDU TEXT}} with the device of crown in respect of agricultural implements described above in class 7. The learned counsel for the appellant contended that respondent No,2 has contradicted himself as in the face of these registered trademarks he had allowed the appellant's mark to be advertised after considering all such objections on the basis of which the opposition was allowed. Mere advertisement does not confer any. Right to be registered. The mark is advertised inviting objections from persons who may like to oppose it. The final determination is to be made after hearing opposition, if any. Therefore, merely because the Registrar had allowed the appellant's mark to be advertised does not lead to the conclusion that it must be registered or if opposition is filed and duly established the Registrar is bound to grant registration.
5. The learned counsel then contended that the order of the Registrar is not a speaking order. I have examined the order. Major part of the order contains the statement of facts, contentions of the parties and it is only in the last paragraph that observations have been made. It is correct that the order is not an elaborate one but it will not be correct to say that it is not a speaking order. It has precisely given the reasons for rejecting the application mainly on the ground that in view of identic.Al nature of the marks in respect of the same goods, public is bound to be deceived and confusion is likely to be created in their mind. Speaking order does not mean that it should be long and elaborate containing all minor details. It should give reasons for the decision in a clear manner which may be precise and should be intelligible. From a reading of the Order one should feel that the issues have been dealt with in an analytical manner, mind has been applied and due consideration has been given to the facts, law and contentions of the parties.
6. ' The learned counsel further contended that, there are three registered marks namely 'King of the Road' King Fisher' and 'Cooper King' in respect of goods in class 7 which co-exist with the registered trade mark of respondent No,1, the trade mark of the appellant can also co-exist with it. The learned counsel has relied on Master Thread Ball v. MA. Karim (PLD 1969 Dacca 734). In this case the respondent applied for registration of trade mark 'Master Tailor'. The appellants were the proprietors of various registered trade marks with the word Master in respect of thread balls. They objected on the ground that respondent's mark will cause confusion and deception and that they have been using their 'trade marks for long time and have acquired considerable reputation and goodwill in the market in respect of thread balls. The Registrar allowed the application. The appeal on the basis of evidence produced on record it was observed that the meanings of the words and devices were, each having its own distinctiveness, the appellant had not established reputation for his business and trade mark, therefore, there was no possibility of deception and confusion. It was' further observed that from the evidence it is clear that the respondent was using the mark since 1950 without confusion or deception and no rebuttal evidence was produced by the appellant. This judgment has turned entirely on facts and evidence which was brought on record. The appellant has not yet commenced his business and has not started manufacturing the goods. Respondent No,1 are in manufacturing business from the year 1960. The Managing Partner of respondent No,1 filed his affidavit stating that they are engaged in manufacturing various agricultural implements under their registered trade mark from 1960. He has given sale figures from the year 1970 to 1985- 86 according to which the sale of King brand agricultural implements has risen from Rs,1,10,000 in 1970 to Rs,28,00,0000. It has been averred that the goods of respondent No,1 have attained reputation due to superior workmanship and goods under trade mark King are known to be the goods of respondent. No,1. Certificates have been filed to show the income and credibility in business circle. The appellant has filed his affidavit denying these averments. He admits that he has not yet started manufacturing work. Although the parties have filed their own affidavits only the material brought on record by respondent No,1 is more impressive and creditworthy.
7. Appellant's averments without any supporting documents or material can have hardly any rebuttal value. Considering the sale figures of respondent No,1 it seems that they have a large sale, and wide reputation of their goods with dominating and prominent mark" {{URDU TEXT}}". Mr. Sultan Shaikh referred to Halena Reubinstein Ltd's Application (1960) 9 Reports of Patent Design and Trade Mark Cases (No, 9) 229 in which an application to register "Skin Dew" as trade mark for toilet creams was allowed in spite of the opposition of proprietors of registered mark "Skind Deep". The decision rested on evidence on two points viz. (1) that other skid marks were in use and (2) two marks are in use since application had been filed, side by side without any confusion. This case is distinguishable on facts. The appellant's counsel also referred to In the matter of Application by The Pianist Co. Ltd. XXIII Reports of Patent, Design and Trade Mark cases 774. In this case the applicant filed application for registration of the word 'Neola' as trade mark in class 9. Opposition was filed by proprietors of Trade Mark Pianola but the mark was registered. Parker, J. While having the principles to be applied to determine whether confusion and deception can be caused due to similarity of marks dismissed the appeal as the persons buying musical instrument are mostly educated, the nature of customers, the article in question and the price at which it is likely to be sold, a man of ordinary intelligence cannot be deceived. The judgment does not support the appellant's contention as all factors necessary for determination are lacking in it Mr. Sultan Sheikh the learned counsel for the appellant has referred to Punjab Engineering Corpn. v. Muhammad Yaqoob and another (1989 CLC 368). This case was between the parties in this appeal where the appellant's trade mark '{{URDU TEXT}} 'In class 7 in respect of Chaff cutter and blade, sugarcane crusher was allowed and the opposition filed by respondent No,1 was rejected. While considering the fact that the respondent's mark has been registered and the appellant had applied for the mark in Urdu and as the second respondent had found three other marks having the word 'King' which were accepted by registration for more or less similar goods, no right to the exclusive use of the word' was given to the respondent. It was observed that trade mark of the respondent is "and the word has no resemblance with the appellant's mark. According to Mr. S.D. Rana the learned counsel for respondent No,1 petition for special leave to appeal has been granted by the Supreme Court against this judgment.
8. ' It may be noted that three trade marks viz. "KING OF THE ROAD", "COOPER KING" and "KING FISHER" are in English language and thus exclude visual resemblance. There is only phonetically resemblance of the word "KING". Furthermore these trademarks are not used in respect of the similar .Goods manufactured by respondent No,1,, whose registered trade marks are in Urdu language in which the word has predominance and prominence.
9. ' In the trade marks"{{URDU TEXT}} and {{URDU TEXT}} the word has same controlling prominence which it has in the mark of respondent No,1. The word "{{URDU TEXT}} an essential feature in the marks of respondent No,1 and as the word "{{URDU TEXT}} ,--s.1" is also used in the appellant's mark there is likelihood of causing deception and confusion. Reference can be made to De Cardova and others v. Vick Chemical Co.68 RPC 103 and Broadhed's application for the. Registration of Trade Mark 67 RPC 61. In these circumstances and as discussed below the possibility of creating confusion and deception by use of the appellant's mark cannot be ruled out. With due respect I am unable to subscribe to the view expressed in KING's case cited above.
10. ' The main question for consideration is whether the registration of the appellant's mark will create confusion and deception in the mind of the public. There is no dispute that the goods to be manufactured by the appellant are the same which are being produced by respondent No,1.
11. Respondent No,1 have filed affidavit to show that the marks {{URDU TEXT}} and {{URDU TEXT}} are being used and are popular in market. The mark {{URDU TEXT}} is prominently written in Urdu likewise in the other mark the most prominent word is {{URDU TEXT}}'. The word {{URDU TEXT}} phonetically, visually are same and the manner it has been written in the trade mark of the appellant is strikingly similar to the marks of the appellant No, .1 in cases where the goods and marks are identical or similar, the Court has to be very cautious in granting an application for registration of such trade mark. In deciding such application one has to take into consideration the public interest involved in it, the deception and confusion to be caused to them, the nature of the goods, the nature of customers who would use it and also whether the adoption of device and mark is bona fide and honest. In such a situation sections 8 and 10 of the Trade Marks Act are immediately attracted. Of this regard reference can be made to 7-Up Co. v. The Registrar, Trade Marks and another (1987 M LD 91) in which most of the relevant judgments of our Courts and foreign jurisdiction have been discussed. In this case the respondent filed an application for registration of 7-Up in class 30 in respect of sweet scented supari. The appellant filed opposition but it was rejected and the respondent's applications were allowed.
12. ' In appeal the order of the Registrar was set aside. After referring to various authorities it was observed as follows :- "In case for registration of trade marks, whether it is similar to any registered mark or relates to similar or same class of goods or not, the law enjoins a duty upon the Registrar to consider whether registration of such mark will in any manner affect public interest. In order to determine whether any confusion or deception will be caused several facts including whether there is close resemblance between the two rival marks and whether there is some trade connection between the two marks leading to the impression in public that both the goods originate from the same source have to be kept in view. It has also to be seen whether the proprietor of a registered mark has attained wide reputation and will it be capitalised by any other party after obtaining registration of a similar or same mark for other goods. The rule has been laid down by late Chief Justice Tufail Ali A. Rehman in Montgomery Flour and General Mills Ltd. v. Registrar of Trade Marks (PLD 1973 Kar. 567) as follows :- ' 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 Court 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 goods in the belief that are manufactured by a company or firm in the quality of whose goods he has acquired confidence and the latter consisting 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 capitalize upon the reputation of the owner of the trade.; ' In the present case the appellant manufactures aerated water which has attained popularity the world over The trade mark of the appellant is so popular that it establishes in the mind of common consumer a connection between the goods bearing the trade mark and the appellant The nature of the respondent's product though different seems to be similar to the appellants so far, its use is concerned as . Both are for human consumption as refreshment and enjoyment of taste. They are not taken' as food. Both the products are sold through the same trade channel. These goods are consumed by general public of, all ages and almost from every class of society. In these circumstances in using the 7-Up by the respondent No,2, there is not only actual probability but real tangible danger of deception and the consumers are likely to believe and think that both the products originate from the same source'
13. ' It was further observed as follows :- "The respondent has not explained why he has adopted the trade mark 7-Up. Such explanation may not be necessary in case where similar mark has not been registered earlier. But where similar mark has been registered in respect of the same or similar nature of goods then such explanation is necessary to establish honest concurrent user. In cases where the goods are completely different and have no similarity such explanation may be necessary if the registered trade mark has attained such acclaimed and universal reputation that if any other person associates the same mark with his own goods, the customer/purchaser will immediately think that both the goods originate from a common source."
14. ' It was also observed:-- "In the present case there is identity of appellant's and respondent's marks. The goods of both the parties though different are used for similar purpose, sold through the same trade channel and consumed by persons of all ages and walks of life. No doubt the colour scheme of the respondent's mark is different and respondent's monogram is also added to it but the expression '7-Up' designed similar to appellant's mark appears so prominently that there is every likelihood of deception and confusion as to source of the products. The innumerable customers of the appellant and many others who know the appellant's name, trade mark and product are likely to associate the respondent's products to the appellant. This may probably happen as the appellant has acquired universal notoriety and reputation for its name and product The appellant's reputation is established by the evidence of the respondent also as in almost all the questionnaires the 7-Up drink has been attributed to the appellant."
15. ' This judgment was upheld in PLD 1990 SC 313.
16. ' Applying the aforestated principles of law I find that the appellant has not vet manufactured the goods. Respondent No,1 are already producing the goods for a long time and have attained a reputation of their own particularly with the word "{{URDU TEXT}}" which seems to have been attached to their products. The customers are usually from rural area mostly uneducated and are carried away by the past performance and reputation of goods with trade marks and their essential features. In these circumstances there is every possibility that the appellant's trade mark may cause confusion and deception in the mind of unwary purchasers.
17. ' The contention that there is no visual similarity between the marks does not seem to be correct.
18. The word {{URDU TEXT}} precedes the word. Similar is the case with the mark of appellant. {{URDU TEXT}}. One can easily be deceived to believe that the goods with this mark belong to the same family and proprietor particularly as the goods arc the same, the customers arc the same and sale points are also the same. It is pertinent to note that where the trade marks consist of several words, the public usually calls or remembers them by their dominant and prominent word or abbreviation of the brand. Reference can be made to the following observation of Parker, J. 'In the Matter OF AN APPLICATION BY THE UNITED KINGDOM TABACCO LTD. 29 PRC 489 in which the application for registration of trade mark "State room" in respect of manufactured tobacco was opposed by the proprietor of trade mark "State Express" registered for the same class of goods the following observation was made :- "It appears to me, therefore, that there is no necessary inconsistency in the evidence, and on the evidence I think I am bound to hold that there is a danger of the registration of the new mark leading to confusion or deception, not because the word does not distinctly differ from the word already on the Register, but because of the tendency of the public to abbreviate, and to use the abbreviation of a brand as the ordinary designation in common parlance of that brand."
19. ' Of late there has been great emphasis on, protecting public interest and public good. This can only be achieved by, refusing to register marks which create confusion and deception in the mind of public. The appeal is dismissed.