1. ' Appellant Imperial Chemical Industries PLC has filed this appeal under section 76 of the Trade Marks Act against refusal by the Registrar of Trade Marks to register the Trade Mark 'BANISH' for certain goods viz. insecticides etc. ' Impugned order dated 29-7-1989 shows that the only ground which weighed with the Registrar for refusing to register said trade mark was, that said trade mark was descriptive, having direct reference to the character and quality of the goods. According to the provisions contained in section 6(1) of the Trade Marks Act, a trade mark shall not be registered unless it contains or consists of at least one of the five essential particulars given in clauses (a), (b), (c), (d) and (e) below subsection (1). Out of the five clauses given below subsection (1) of section 6 of Trade Marks Act, clause (d) reads as follows: "(d) one or more words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan."
2. ' While refusing registration of Trade Mark "BANISH", the Registrar Trade Marks ' Is invoked section 6(1) (d) of the Trade Marks Act and has taken the view that the applied trade mark was descriptive for insecticides etc. Hence this appeal.
3. ' Mr. Abdul Hamced lqbal, learned counsel for the appellant argued that the Trade Mark "BANISH" had no direct reference to the character and quality of the goods in respect of which said trade mark was sought to be registered. It was next argued that word "BANISH" can be used for persons and not for insects and that the word "BANISH" had no direct reference to the character and quality of the goods viz. Pesticides etc. In support learned counsel for the appellant cited the cases of:
(i) Burroughs, Wellcome & Co.'s Trade Marks 21 RPC 217.
(ii) Messrs Bubble Up Company Inc. v. M/s. 7-Up USA PLD 1975 Kar.
4. 582.
(iii) Parks, Davis & Company v. The Deputy Registrar of Trade Marks, Karachi 1984 CLC 2623.
(iv) Messrs Glaxo Laboratories Ltd. v. The Registrar of Trade Marks, Government of Pakistan PLD 1985 Kar.
5. 630.
(v) Lakson Tobacco Company Ltd. v. The Deputy Registrar of Trade Marks 1989 M LD 1598.
(vi) Mazhar Industries (Private) Ltd. v. The Deputy Registrar of Trade Marks 1989 M LD 1628.
(vii) Singer Manufacturing Co. v. The Registrar of Trade Marks and another AIR 1865 Cal.
6. 417.
7. ' Mr. Ainuddin Khan learned counsel for the respondent argued that word "BANISH" has reference to the character and quality of the goods and that the appellant had not produced any document to show if similar goods were registered. Learned counsel supported the impugned order.
8. ' The dictionary meaning of the word 'BANISH' is to condemn, to exile, to drive away, or to expel.
9. These words cannot be used in respect of anybody other than a person. I agree with learned counsel for the appellant that these words cannot be used for the insects. Section 6(1) of the Trade Marks Act contains requisite conditions for registration of a trade mark. Clause (d) of subsection (1) of section 6 shows that words of the trade mark should have no direct reference to the ,character or quality of the goods to be covered by such trade mark.
10. ' Cases cited on behalf of the appellant require to be discussed. In the case of Burroughs, Wellcome & Co.'s Trade Marks (21 RPC 217) it was held that when one is dealing with the question whether a word is descriptive, one must always bear in mind that for a word to be really descriptive it must describe something which is material to the composition of the article to which the trade mark is intended I o apply. In said case the mark 'Tabloid' was found to be not a descriptive word but a distinctive word suggesting the source or the origin of the goods, which were covered by said mark or which were intended to be covered by it. It was also held that a word is not to be treated as a descriptive word because it might suggest some idea to the hearer. In the case of Messrs Bubble Up Company incorporated Inc. (PLD 1975 Kar. 582), it was held that purpose of the legislature in enacting clause (d) of subsection (1) of section 6 of the Trade Maiks Act appeared to be, to forbid the use in a trade mark of a word, which is descriptive of the goods and therefore the word must convey a description to those who commonly see it or hear it, and not only to the scholarly. In the case of Parke, Davis & Company (1984 CLC 2623), the view taken was that mere fact that the trade mark sought to be registered for medicine and pharmaceutical products, suggested that it had reference to some medicine, would not make that objectionable and violative of section 6(1) (d) of Trade Marks Act unless it was shown that the same had direct reference to character and quality of the goods or otherwise it violated section 6. In the case of Messrs Glaxo Laboratories Ltd. (PLD 1985 Kar. 630), the view taken was that the trade mark Witamilk' appeared to be a newly-coined word and although it had some suggestive references to the character and quality of the goods, it had no direct reference as may make it descriptive of the goods. In the case of Lakson Tobacco Company Limited (1989 M LD 1598) registration of mark CHAMPION for cigarettes, tobacco manufactured, raw tobacco and cigars, was refused on the ground inter alia that it was descriptive of goods coming within the mischief of section 6(1) (d) of the Act. In appeal a learned Judge of this Court took view that the applied mark has reference to the smoker who smokes the products or the goods, but it would not give the idea to a reasonable person about the quality of the products or goods. In the case of Mazhar Industries (Private) Ltd. (1989 M LD 1628), the view taken was that word "Flair" did not appear to be having any direct reference to the character or quality of the goods sought to be covered by it viz. soft drinks and non-alcoholic liquids like Bubble Up and 7-Up. The case of Singer Manufacturing Co. (AIR 1965 Cal. 417) is not directly on the point. In said case a learned Judge of Calcutta High Court agreed with the Deputy Registrar, Trade Marks on the basis of evidence on record, that the word "SAGAR" is primarily and ordinarily a well-known India word meaning Ocean or Sea, but he found that there was no evidence to show that said word was a surname or a proper name and hence its registration as a trade mark cannot be refused, even if it could be part of a personal name or surname.
11. Reverting to facts of the present case, it is difficult to agree with the Registrar of Trade Marks that the word 'BANISH' is descriptive having direct reference to the character and quality of the goods viz. insecticides, fungicides, herbicides and preparations for destroying vermin. Hence the ground for refusal to register said trade mark under section 6(1) (d) of the Trade Marks Act, was not available to the Registrar of Trade Marks.
12. ' Consequently, this appeal stands accepted and the impugned order is set aside and the Registrar of Trade Marks is required to proceed with application of the appellant according to law for registration of the Trade Mark "BANISH" in respect of said goods. .