1. ' This is an appeal filed under section 76 of the Trade Marks Act, 1940 (hereinafter referred to as the "Act") to challenge the correctness of the order, dated 27-10-1979 'passed by the Registrar of Trade Marks disallowing the opposition of the appellants to the registration of the Trade Mark 'Rolex'.
2. ' On 12-7-1971 the respondents No,2 sought registration of a word Rolex and device of crown, crescent and star on label as their trade mark in respect of vehicle springs. It is not disputed that the word 'ROLEX' under No, 47042 of the same respondent was then pending for registration as their trade mark (which has been registered subsequently in their name). The trade mark registry, after consideration and perusal of the application filed by the respondents No,2 ordered that the application be advertised in the Trade Journal, and accordingly on November, 1976 the application was advertised. The appellants stated in their opposition that the registered mark of the appellants 'ROLEX' is well known throughout the world and has international reputation and goodwill due to extensive sales and worldwide advertising and the respondent's trade mark is identical to their trade mark and it is likely to deceive and cause confusion in the minds of the purchasing public and and its registration would offend against the provisions of sections 8(a) and 10(1) of the Act and the purchasing public will believe that the goods of the respondents No,2 are the products of the appellants and the registration of the respondents No,2's mark would embarrass and unfairly prejudice the appellants in the lawful conduct of their business and mislead the appellant's customers. The respondents .No,2's mark is not distinctive of their goods therefore, it should be refused in the exercise of the discretion vested in the Registrar under section 14 of the Act. The appellants lodged their notice of opposition. Thereafter the respondent No,2 filed their counter- statement in which the respondent No,2 stated that they adopted the Trade Mark 'ROLEX' on label to distinguish their goods in 1966 and goods under the said trade mark have been extensively sold throughout Pakistan and have also been given vide publicity with the result that respondents' goods are identified by the general purchasing public by the Trade Mark Rolex and they have been using this trade mark since its adoption in respect of motor vehicle springs without any let or hindrance and the mark has earned great deal of goodwill and reputation in Pakistan; their trade mark has already been registered under No, 47042 in Class 12 in respect of the same goods and the present application is associated with the said registered trade mark and it was open to the appellants to oppose its registration at that time but they chose not to do so. It was further stated therein that the appellants at that time served a notice through their attorney seeking confirmation that the respondents had no intention of using the Trade Mark Rolex for goods, which was duly replied by the respondents. Through their agents but neither the appellants filed any opposition to the registration of the trade mark nor any other action was taken by them.
3. ' The appellants filed affidavits in support of their director Van Gessel Herman who stated therein that Rolex watches have been sold in Pakistan since last thirty years and sales figures for Paki4an were not compiled by the appellants and are not readily available. According to him their estimate of sales during the last ten years is approximately Rs,35,95,000. He further stated that he is aware that the respondents No,2 are using the 'ROLEX' mark for vehicle springs but he was advised that under section 8(a) of the Act, the respondents No,2 are definitely disentitled to protection of 'ROLEX' in 'a Court of justice.
4. ' Hassan Ali Moolji stated in his affidavit that he knew that word Rolex was a well-known trade mark signifying top quality watches. He further stated that many illiterate and uneducated persons were fascinated by such goods because they believed that these goods emanated and originated from the appellants. Some papers and magazines with Rolex advertisement collectively, marked as ExhA do show worldwide publicity of the Rolex mark and the international reputation of top quality watches.
5. ' Chaudhary Mohammad Sarfraz Khan filed affidavit in support of the application wherein he stated that the respondents No,2 are proprietor of Trade Mark 'ROLEX' since 1-5-66; in respect of road vehicle springs, up to the date of filing of application, the respondents No, 2 sold road vehicle springs under 'ROLEX' Trade Mark of the total value of Rs, 4 lacs and its sales uptodate are Rs, 15 lacs. He annexed copies of cash memos. For, said goods during the period from 1-5-1966 to 14-8- 1966.
6. ' With regard to section 10(1) the Registrar found that section 10(1) is attracted where the opponent's mark is registered for the same goods or for the same description of goods. He found that since the appellant's mark is not registered in respect of the same goods or for the same description of goods as the respondents No, 2's marks, section 10(1) is not applicable in this case. He also found that the appellants' claim on TM-5 that their mark is registered under No,24512 in Class 12 is not correct and no such mark is registered in the name Of the appellants though the appellants in their written arguments have stated that the appellants' registered mark is 34512 in Class 14 and not 24512 in Class 12 as the same was erroneously written. He also found that the appellants did not take any step to amend TM-5 at proper stage to rectify the mistake hence the claim of the appellants on the basis of the registered mark as stated on TM-5 is not based on facts.
7. ' An objection under section 8(a) is founded on the proved user and reputation of the appellants' mark the inference being that the public are so familiar with the trade mark that the use of the respondent No, 2's mark seeking registration is likely.To lead to deception and confusion among them.
8. ' The Registrar found that no evidence has been adduced on behalf of the appellants to show that the' appellants' mark is known to the general public in Pakistan.
9. ' The Registrar exercised discretion in favour of the respondent No,2 as the appellants failed to discharge the initial onus of the acquired reputation and goodwill of their mark.
10. ' The Registrar found that these two goods cannot be categorised as of one description. In this view of the matter he overruled the objection raised by the appellants under section 6(1)(e) of the Act.
11. ' Mr. Jamiluddin has contended that the Registrar put a limited construction upon section 8(a) and unduly narrowed its scope by holding that deception or confusion- as to trade -source was not possible because although the rival marks were identical the competing goods were very different and there was no trade connection between them. The submission of the learned counsel is that section 8(a) is not limited to any particular kind of deception or confusion raising by reason only of trade connection between the goods or a common or related trading activity. That circumstances may exist where the mark of the one proprietor is so well-known in the market that the use of it by any other person in relation to different goods in an unrelated trade, may lead the. Public to think that the goods came from the same source and thereby result in deception or confusion. That it is the case of the appellants, which ,the Registrar failed to consider that the. Trade Mark 'ROLEX' has become so well-known to the public that the use of it in relation to road vehicle springs by the respondent No,2 would lead to deception or confusion because the purchaser of road vehicle springs may think that they were the manufacturer, and merchandise of the appellants. The learned counsel has relied on a decision of Single Judge of this Court in an unreported case No, Misc. Appeal No,43 of 1977 the Seven-Up Company v. The Deputy Registrar and another, which according to him supported his contention that deception or confusion may arise if a well-known trade mark of one proprietor is used by-another person in respect of different and unrelated goods, viz. Seven-up. In this case there was evidence that both are for human consumption as refreshment and ,enjoyment of taste and both the products are sold through the same trade channel.
12. Section 8(a) of the Act is designed for the protection of the public against deception or confusion and must, therefore, be given a wide scope and should not be limited to any kind of confusion such as arising by reason of any trade connection between the competing goods. Once it is established on the evidence that deception or confusion is probable, the Registrar is bound to prohibit registration of the proposed trade mark in the public interest. Now, it . Is not the case of the appellants that there is any trade connection between road vehicle springs and the sophisticated horological instruments and part thereof jewellery, of the appellants. The goods are so different in their nature, use of purchasers. Therefore, ordinarily it would be difficult to infer the probability of the public being deceived into purchasing vehicle springs in the belief that they are manufactured by the appellants.
13. In the instant case, the-Registrar was satisfied on the record that the appellants before me had not established substantial user and reputation of their trade mark and that the goods manufactured by the respondent No,2 were not displaced and sold in the same shops over the same counter and passed through the same trade channel. He also did not find any evidence from the traders and purchasers to the effect that they would think that the goods have originated from the appellants if they see the same mark applied to vehicle springs. He also found that the respondents' mark No,47042 in Class 12 consisting of word Rolex in respect of vehicle road springs was undergoing the process of registration and ultimately it was registered without any opposition from the appellants, so the appellants are estopped to raise objection to the registration of the application by virtue of their conduct. After recording these findings of facts the Registrar held that the respondents' goods were not of the same description, there was not likelihood of any confusion as to trade origin if the respective goods were sold under the Rolex mark.
14. ' In the case of S.M. Tofiq v. National Biscuit Company PLD 1962 Karachi 355. Appellant in the case in the year 1951 applied for registration of Trade Mark "Nabisco" proposed to be used in respect of Cakes, Biscuit products under Class 30. On 3rd March, 1954 National Biscuit Company (a foreign Company) also applied for registration of the Mark 'Nabisco' in Class 30 and they also opposed simultaneously the registration of the Mark "Nabisco" in favour of appellant. The Registrar after considering the registration of the Mark "Nabisco" in the territory of India before partition and further taking into consideration the marketing of the products by National Biscuit Company then under the above mark in the territory now part of Pakistan refused to register the Trade Mark `Nabsico' in favour of appellant and allowed registration of the trade mark in favour of the respondent. In appeal the High Court reversed the decision of Registrar on the ground that there was no evidence to establish that the public or common man in Pakistan could be confused or deceived .While purchasing goods under the Mark "Nabisco" manufactured by the appellant as National Biscuit Company had no market in respect of their goods in Pakistan. It was observed that as the National Biscuit Company had no reputation in respect of their goods in this country there was no possibility of any deception or confusion in the mind of the persons while purchasing the goods manufactured by the appellant. The following observations of Tomlin J. From the decision in the case of Impex Electrical Ltd. v. Weinbaum (1), were quoted with approval in the above case:--- "It seems to me that the whole contention rests on a misapprehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard.
15. For that purpose foreign markets are wholly irrelevant unless it be shown by evidence that in fact goods have been soli in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them into this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country. That; I venture to think is the basis of decision in the applicants' case".
16. ' After quoting the above passage the learned Judge observed as follows:--- "It, therefore, appears to me that for the purposes of registration under the Act, the Tribunal should ordinarily consider the user in this country to which the Act applies. If the case of the appellant is considered on this view of the law, there is not a shred of evidence on the record to establish that the public or a common man in this country will in any way be deceived or confused 'while purchasing. Goods Under the Trade Mark 'Nabisco' manufactured by the appellants. The respondents have no market of this trade mark in respect of any goods in this country. They have no reputation and as such there can possibly be no deception or confusion in the mind of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondents had not established a reputation for their mark upon which an opposition could be founded. The learned Deputy Registrar, therefore, was not justified in refusing registration of 'Nabisco' Trade Mark in favour of the appellants".
17. ' In the case of Montres Rolex SA. v. Assistant Registrar, Trade Mark PLD 1987 Karachi 199, the respondent No,2 who are manufacturers of cigarettes applied for registration of Trade Mark "Rolex" proposed to be used in respect of tobacco raw, or manufactured including cigarettes. After due scrutiny of the application by the Registrar, the mark was advertised before acceptance in the Trade Marks Journal. The appellants filed opposition. The Assistant Registrar after considering the evidence produced before him dismissed the application. The appellants filed appeal before this Court. A learned Single Judge while dismissing the appeal held:- "Mere advertisement of a product in newspapers and journals without evidence of actual sale of such product in the local market is not sufficient to hold that the product has acquired goodwill in the local .Market."
18. I respectfully agree with the above principle of law. I am of the opinion that the appellants have not .Substantiated a case of tangible danger of confusion among a substantial number of persons.
19. ' In view of the findings of facts recorded by the Registrar, while there is no reason to differ from I agree that the Registrar has answered the .Question of law correctly. In my opinion he has written a very considered judgment and has appreciated the principles of law correctly. The use of the Mark Rolex by the respondents No,2 is clearly bona fide. There is no evidence on record which shows that the appellants, acquired reputation for their products. .
20. ' As a result, I hold that the Registrar has correctly recorded the finding that the use of the Trade Mark "Rolex" by the respondent No,2 is not likely to deceive or cause confusion .And, therefore, its registration is not prohibited by clause (1) of section 8 of the Act. I have no hesitation in endorsing, the said finding. It cannot be said that the discretion exercised by the Registrar in accepting the application of the respondent No,2 for registration of the Trade Mark "Rolex" under Class 12 in respect of moto springs was either arbitrary or offended against any settled principle of law.
21. ' As a result, the appeal is dismissed with no order as to costs.