1. ' Appellant Austin Nichols & Co., has filed this appeal under section 76 of the Trade Marks Act (hereafter to be mentioned as the Act) against refusal by the Assistant Registrar of Trade Marks, Karachi to register appellant's trade mark "Orangina" on label with device of bottle and CE.
2. ' Under an application No,96166 the appellant applied to the Registrar, Trade Marks for registration of his mark "Orangina" with a device, for goods mentioned in class 32 viz. Non-alcoholic drinks, fruit juices, beverages made of fruit juices, sodas, mineral water, aerated and carbonated beverages carbonated citrus juices etc. The Registrar issued a notice dated 4-10-1988 to representative of the appellant to show cause, as to why his application for registration should not be refused on the ground that the applied mark was objectionable under sections 8 (a) and 10 (1) of the Act. After giving chance of hearing, the Registrar --under a letter dated 18-7-1989 informed Agent of the appellant that his application was refused registration under an order dated 21-6-1989. The appellant moved for grounds of the decision which were given on 15-10-1989 by the Assistant Registrar. Hence this appeal.
3. ' The grounds given for refusal of the registration were:--
(i) that the word Orangina was not an invented word but was a trivial variation of the word Orange;
(ii) that the word Orangina being nothing but misspelling of Orange an ingredient of the specified goods, can get registration when it becomes distinctive through long and wide use;
(iii) that in the applied mark letters "CE" were used, when use of three letters or less did not constitute a distinctive mark;
(iv) that the mark applied was devoid of any essential particular necessary under section 6 of the Act.'
4. ' Mr. Abdul Hamid Iqbal, learned counsel for the appellant argued that the applied mark contained device of whirl and not letters CE. That the applied mark was 'distinctive' as defined by subsection
(2) of section 6 of the Act. That no word of the applied mark had direct reference to the character and quality of the goods sought to be disposed of under the applied mark. Lastly it was argued that the applied mark could be registered with disclaimer of word "Orangina" in view of the whirl device in it being distinctive and that it was not confusingly similar to any other mark to the extent of deceiving or causing confusion to the prospective buyers of the goods in question, as it had a peculiar colour combination. In support learned counsel for the appellant cited the cases of:
(i) KIA Industrial Co. Limited and KIA Motorcycle Co. Ltd. v. Deputy Registrar of Trade Marks (1987 CLC 1286).
(ii) David Vaughan Racklin v. Deputy Registrar, Trade Marks, Karachi (1986 M LD 1666).
(iii) Hyundai Motor Co. v. Deputy Registrar, Trade Marks (1987 M LD 2847).
(iv) U. Foam Pvt. Limited, Hyderabad v. Assistant Registrar of Trade . Marks (AIR 1977 Mad. 414).
5. ' Mr. S.D. Rana, learned counsel for the respondent argued that the applied trade mark was confusingly similar to already registered mark of "Pakola Orangina" for similar goods mentioned in class 32, and to other marks given in para. 2 of the memo. Of appeal. It was next argued that there was no evidence to show that the applied mark had attained distinctiveness. It was added that the applied mark was not an invented word to attract the provisions contained in clause (c) of subsection (1) of section 6 of the Act. The device in question was said to be no whirl but letters "C" and "E". In support learned counsel for the respondent cited the cases of:
(i) Mohammad Yaloob Lasani Engineering Company v. Punjab Engineering Company and another (Misc. Appeal No,26 of 1989, decided on 23-9-1990) (1992 CLC 2036).
(ii) M/s. Surya Brothers v. M/s. Dada Soap Factory Ltd. (PLD 1971 Kar. 189).
(iii) M/s. Burmah Oil Mills Ltd. v. M/s. Bengal Oil Mills Ltd. (PLD 1976 Kar. 544).
(iv) Seven-Up Company v. Kohinoor Thread Ball Factory and others (PLD 1990 SC 313).
(v) Boots Pure Drug Company Ltd., England v. Registrar of Trade Marks, Karachi (PLD 1973 Note 7, page 15)..
(vi) Crescent Pencils Limited v. Indus Pencil Industries Limited (1989 CLC 2005).
(vii) Transpak Corporation Limited v. The Registrar of Trade Marks 1991 MLD 658.
6. It may be mentioned here that the applied mark was in respect of soft drinks, fruit juices, aerated and carbonated beverages etc. Question arises, as to whether the applied mark "Orangina" is an invented word for purpose of clause (c) of subsection (1) of section 6 of Trade Marks Act. An invented word is a word, which has never existed before it was invented and it has no meaning or no obvious meaning until one has been assigned to it. As observed by Justice Parker in Philipp Art v.
7. William Whitely Ltd. (1908 2 Ch. 274) and reproduced in PLD 1951 PC 108, to be an invented word within the meaning of the Act, a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or any obvious meaning to an ordinary Englishman. Such a word must be having no meaning or no obvious meaning until one has been assigned to it, as further held in the same case. In the case of Boots Pure Drug Company Ltd. England v. Registrar of Trade Marks (PLD 1973 Note 7 Page 15) the view taken was that the words, which are in sound ordinary English words, but are misspelt, do not thereby become invented words, nor a mere ordinary addition to or variation of an English word would produce an invented word. In said case addition of termination "EX" to word "Sweet" was held to be a trifling variation of said word, which would not make the new word "Sweetex" to be an invented word, within the meaning of section 6(1)(c) of the Trade Marks Act. In the instant case there is no doubt that the word Orangina has been coined because it is similar to Orange. Addition of three letters and deletion of one letter to word "Orange has produced name of a mark namely "Orangina". Such trivial variation has not made the new w6rd "Orangina" as an invented word. In the case of M/s. Burmah Oil Mills Ltd. v. M/s. Bengal Oil Mills Ltd. (PLD 1976 Kar. 544) it was held that change in last syllable of word "Binola" from La to lia, cannot make "Binolia" an invented word.
8. ' Next it needs to be considered, as to whether in the applied mark the device used with a bottle is a whirl or letters "C" and "E" of English language. In the case of Hyundai Motor Co. v. Deputy Registrar, Trade Marks (1987 M LD 2847) registration of trade mark HD was refused, on the grounds that it was objectionable under section 6(1) (e) of Trade Marks Act and it was not proved by evidence to be distinctive of the goods covered by it. Refusal by the Registrar to entertain the application for registration, was found unjustified by a learned Single Judge of this Court who observed as below: "It is quite clear that the word H.D. Which is written in a rectangular device is not written ordinarily in that fashion in the English language. Moreover the mark applied for registration, did not consist of only the word H.D, but they were coupled with a rectangular device as well, and been if there was objection to the registration of the word HD, there could not have been any objection to the rectangular device, which was as much a part of the said mark as was the word HD."
9. ' In the instant case, the device with the bottle, looks more like a whirl, rather than the letters CE.
10. Hence one cannot agree with the contention that in the applied mark two letters of English language are used, when use of three letters or less did not constitute a distinctive mark.
11. ' The Registrar has taken the view that the applied mark is devoid of any essential particular, necessary under section 6 of Trade Marks Act. Section 6 of the Trade Marks Act shows that a trade mark is required to contain or consist of at least one of the essential particulars given under clauses (a), (b), (c), (d) and (e) below subsection (1) of said section, before if is registered. In the instant case, the application for registration bears name of the petitioner firm represented by United Traders Syndicate. It bears signature of the applicant. The applied mark does not consist of one or more invented words. The words of applied mark have no direct reference to the character or quality of the goods covered by it. In his reply dated 12-1-1989 to the show-cause notice, the petitioner took stand that the applied mark had a distinctive mark, represented in a special and particular manner with distinctive colour label, having a specific whirl shaped device, which factors make the applied mark distinctive and distinguishable amongst all the registered or pending marks mentioned in the notice. It was also stated in the reply dated 12-1-1989 that the petitioner had adopted the applied mark to distinguish his goods in the course of trade and that the applied mark is merely suggestive of the goods but it does not have any direct reference to the character or quality of the goods covered by it. By contending so, the petitioner wanted the applied mark to qualify under clause (e) of subsection (1) of section 6 of the Trade Marks Act. Clause (e) reads as below: "(e) Any other distinctive mark, provided that a name, signature or any word, other than such as fall within the descriptions in the. Above clauses, shall not be registrable except upon evidence of its distinctiveness."
12. ' Word "distinctive" has been defined under subsection (2) of section 6 to mean adopted in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish the goods with which the proprietor of the trade mark is or may be connected in the course of /ride, from goods in the case of which no such connection subsists. In the case of KIA Industrial Co. Ltd. And KIA Motorcycle Co. Ltd. v. The Deputy Registrar of Trade Marks (1987 CLC 1286) the view taken was, that a restriction put under section 6(1)(e) of Trade Marks Act is only on the three kinds of marks viz. a name, a signature or any word and provides that such marks shall not be registerable except those which fall within the description in clause (a), (b), (c) or (d) or unless upon the evidence of their distinctiveness. In said case meaning of word "distinctive" has been given to be distinguishing a particular person's goods from some body else's goods, not a quality attributed to a particular article, but distinctive in that respect. It was also observed in said case that where a mark is combination of a letter and a device or a word and a device, the get up as a whole, must be considered for registration, and that the true test is, as to what is totality of the impression and whether the impression so produced is such, as would cause confusion or deception. In the instant case the main parts of the mark are a bottle with a whirl in the background in red colour. Such a mark viewed in its totality looks 'distinctive'. I therefore disagree with the view that the applied mark is devoid of any essential particular necessary under section 6 of the Act.
13. ' In his show-cause notice the Registrar found the applied mark objectionable under sections 8(a) and 10(1) of the Act but in the grounds given for refusal of the registration, such a ground was not given.
14. ' Rest of the cases cited on behalf of the respondent, are on the point of refusal to registration of a mark identical or confusingly similar to the trade mark already registered or pending registration in terms of section 8(a) and section 10(1) of the Trade Marks Act. Refusal to register the applied mark was not based on such ground. Hence the cases cited on this point need not be discussed in details, except reproduction of principles laid down by them. In the case of M/s. Seven-Up Company v. Kohinoor Thread Ball Factory and others (PLD 1990 SC 313) it was held that the provisions contained in clause (a) of section 8 of the Trade Marks Act cannot be given a wide meaning to the extent that the mere adoption of a registered trade mark, irrespective of the class or category of goods, were to be decisive or so as to embrace all registered and widely used trade marks excluding their adoption and use for any and every class or category of goods, howsoever different and dissimilar. In the case of Crescent Pencils Limited v. Indus Pencil Industries Ltd. And another (1989 CLC 2005) the view taken was that the test for ascertaining the likely confusion and deception is, not to compare the two marks side by side, but to ascertain whether the applicant's mark is likely to create upon a man of average and ordinary intelligence an impression that the goods bearing applicant's trade mark, are the goods of the respondent. In the said case the essential features or the main idea underlying the mark Antelope (meaning fabulous fierce horned beast) with a device of an antelope sought to be registered, were found to be the same as that of already registered marks "Deer" and "Stag" (means male of a red deer) for same goods viz. Ball point pens, pencils etc., and the registration was held to have been rightly refused. In the case of M/s. Surya Brothers (PLD 1971 Kar. 189) registration of trade mark comprising of a label containing device of the ACE of Spada with word "Kalapan" was held to have been rightly refused on the ground that there was resemblance with minor changes in figures, between the applied mark and the mark comprising of device of a "Pan" with the words "Motia Pan" (whose registration was pending decision) for same goods viz. Soaps and soap products. In Transpak Corporation Ltd. (1991 M LD 658) registration of mark "Shield" was held to have been rightly refUsed in presence of registered mark "Bronze Shield" in respect of same goods viz. Tooth pastes. In the case of Muhammad Yaqoob Lasani Engineering Company (1992 CLC 2036) registration of mark "King Kong" in Urdu for Chaff Cutters and other agricultural implements was held to have been rightly refused as being identical anti similar to the already registered marks viz. "King Kong", "King Toka" and "King Wheat Thrasher". In the case of M/s. Burmah Oil Mills Ltd. (PLD 1976 Kar. 544) registration of mark "Binolia" was held to have been rightly refused in presence of registered mark "Binola" for same goods viz. Edible oils and fats.
15. ' A reference may be made to the remaining cases cited on behalf of the petitioner. In the case of U. Foam (Pvt.) Ltd., Hyderabad (AIR 1977 Madras 414) it was held that where a mark is a combination of a letter and a device or a word and a device, the get up as a whole must be considered for registration and the true test is, what is the totality of the impression that the trade mark produces and whether the impression so produced is such, as would cause confusion or deception. In the case of David Vaughan Racklin, (1986 M LD 1666) the view taken was that where the Registrar of Trade Marks found that the applied mark was confusingly similar to the trade marks already registered and owned by other proprietors, the application for new registration should not have been rejected at the preliminary stage but the Registrar should have proceeded with the application for new registration instead of rejecting it at the preliminary stage.
16. While agreeing with the Registrar that the word "Orangina" in the applied mark is not an invented word in terms of clause (c) of subsection (1) of section 6 of said Act, I disagree with him that the applied mark is devoid of any of the essential particulars given under section 6 of the said Act. As held in the cases of U. Foam Pvt. Ltd., Hyderabad (AIR 1977 Madras 414) and KIA Industrial Co.
17. Limited and another (1987 CLC 1286) the Registrar while considering registration of the applied mark, had to look at the get up of the same as a whole, to see, as to what was totality of the impression, even if it was combination of two letters and a device of bottle. The totality of impression one can get by considering get up as a whole of the applied mark is, that it is a bottle with whirl in the background. It is therefore covered by clause (e) of subsection (1) of section 6 of said Act and is not barred by clause (d) of said subsection. It does not require evidence of its distinctiveness because it does not consist of any name or any signature or any word, other than those covered by clause (a) or (b) or (c) or (d) of section 6(1) of said Act. Evidence about distinctiveness is required only in case of a mark which consists of a name or signature or any word, other than such as falls within descriptions in clause (a) or (b) or (c) or (d) of section 6(1) of said Act, as per the language of clause (e) of section 6(1).
18. Under the impugned order the Registrar has not elaborated, as to in what way the applied mark has direct reference to the character and quality of tLe goods.
19. ' For the foregoing reasons, this appeal is accepted with no orders as to costs and the impugned order refusing registration of applied mark is set aside and the Registrar is required to take further steps towards registration of the applied mark, in accordance with law. However, if after publication of the applied mark in the relevant journal any opposition is made to registration of the applied mark, the same be dealt with on merits in accordance with law.