1. ' This is an appeal under section 76 of the Trade Marks Act (hereafter mentioned as the Act).
2. ' Nippon Paint Co. Ltd. incorporated in Japan filed an application before the Registrar of Trade Marks for registration of a Trade Mark `NAX' for paints, varnishes, lacquers, preservatives against rust, preservatives against deterioration of wood, colourants, mordants, raw natural resins, metals in foil and powder form, for painters, decoraters, printers and artists. On examining the application of the appellant, the Registrar found the same objectionable under sections 10(1) and 8(a) of the Trade Marks Act and issued such show-cause notice to the appellant. Appellant filed reply and his counsel filed a consent letter from proprietor of a trade mark, which according to the Registrar was registered under application No,78949 in name of "MAX". After hearing the arguments, the Registrar refused registration of Trade Mark "NAX" under sections 10(1) and 8(a) of the Act, after expressing the following views: "The applied mark conflicts with the registered mark and hit by sections 10(1) and 8(a) as the goods of the both marks are same. The onsent letter from the proprietor of one registered mark is based on some undertaking which is not submitted to the Tribunal. Even if the proprietors have no objection, the public interest has to be guarded and purity of register maintained. The applied mark also conflicts with another registered mark `NOXO' for the same goods. The authority quoted by the agent is not applicable in this case as the goods are exactly same and not of similar description."
3. ' Mr. Abdul Hameed Iqbal, learned counsel for the appellant argued that the Registrar had declined to register the appellant's trade mark on the ground that it was conflicting with another registered trade mark namely "NOXO" for the same goods, although the registered trade mark was materially different from the applied trade mark. In this connection learned counsel for the appellant was of the view that where first letter of two monosyllabic trade marks was different, the two trade marks cannot be said to be similar. In support learned counsel for the appellant cited the cases of:
(i) Smith Hayden & Company Limited 63 RPC 97;
(ii) Gillette Industries Ltd. v. Eveready Razor Products Ltd. 1965 RPC 347;
(iii) S.O. Co. B.O.R. v. Reckitt & Colman Products Limited 1979 RPC 355;
(iv) M/s. G.M. Pfaff A.G. v. Deputy Registrar of Trade Marks and another 1984 CLC 2478;
(v) Dr. Hakimullah Siddiqui v. M/s. Alphaco (Pakistan)', Karachi 1987 M LD 2569;
(vi) M/s. Phillips Morris Incorporates v. Registrar of Trade Marks and another 1980 CLC 1272; and
(vii) Midland Electric Manufacturing Company Ltd. v. Registrar of Trade Marks and another 1987 CLC 1539.
4. ' Mr. Ainuddin Khan learned counsel for the respondent argued that registered trade mark "NOXO" was similar to the applied Trade Mark "NAX" and that unwary purchaser can be deceived by considering the goods of one trade mark being the goods of another trade mark. It was further argued that first letter 'N' in both the trade marks was similar. Learned counsel for the respondent further argued that the authorities from British jurisdiction would not be applicable in this country where the people are not as much educated as in U.K. it was added that applied Trade Mark "NAX" was also identical with another Trade Mark "MAX".
5. ' The applied Trade Mark "NAX" is in respect of the goods like paints, varnishes and lacquers etc. while registered Trade Mark "MAX" was for different goods viz. detergents like vim powder etc. The ground which weighed with the Registrar, in refusing the registration, was that the applied Mark "NAX" was identical with registered Trade Marks "MAX" and "NOX". While refusing registration, the Registrar had relied on the provisions contained in sections 10(1) and 8(a) of the Trade Marks Act.
6. Section 10(1) would apply where any party has established that its trade mark has been registered for description of the goods for which the other party has made its application for registration and while considering an application under section 10 of the Trade Marks Act, the Registrar has to see whether the applicant's trade mark is likely to deceive or mislead the trade or the public. While considering such an application, the Registrar has to consider the resemblance between the two trade marks and he has to look at the two marks not only visually but has to consider whether two trade marks are phonetically similar. Section 8 of the Trade Marks Act says that no trade mark shall be registered the use of which was likely to deceive or to cause confusion. The provisions contained in section 8 are independent of there being a similar or identical registered trade mark, to the applied trade mark. However, the object of the provisions contained in section 8(a) and section 10(1) of the Act is to prohibit registration of marks which are likely to deceive or cause confusion, as observed in the case of London Rubber Co. Ltd. v. Durex Products Incorporated and another AIR 1963 SC 1882.
7. ' Before proceeding to consider whether the applied Mark NAX is identical with a trade mark of another proprietor already registered or whether it is likely to deceive or cause confusion, the cases cited on behalf of the appellant require to be considered. In the matter of Smith Hayden & Co. (63 RPC 97) registration of Trade Mark "OVAX" in respect of a cereal preparation for use as an improver and moistening agent in making cakes, was opposed by proprietors of the Mark "Hovis" registered in 1895 in respect of substances used as food or an ingredient in food but used principally in preparation of flour and bread and the Mark "Ovi" registered in 1890 in respect of goods including cake mixtures. Despite opposition by the proprietors of "Hovis" and "Ovi" the Trade Mark "OVAX" was registered. In appeal the appellate Court held that judged by sound as well as visually the applicants had succeeded in discharging the onus laid upon them that the mark applied for, if used in a normal and fair manner with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.
8. Appellate Court also held that the applicants had discharged the onus that there would be no reasonable likelihood of deception or confusion among a substantial number of persons if mark "OVAX" was used by its proprietors normally and fairly in respect of any goods covered by it. The appellate Court agreed with the Registrar, in the cited case, in attaching importance to the emphatic characteristics of the second syllable of the applied mark and took view that a contrary conclusion would give to prorietors of "Hovis" in effect exclusive rights in regard to all short words beginning with the Syllable "Ov" to an extent which would disregard the significance commonly attached to the syllable, from its derivation from "Ovum" in words in general use in the language.
9. Said case was followed in the case of Gillette Industries Ltd. v. Eveready Razor Products Ltd. 1%5 RPC 347 where registration of the Trade Mark "MEM" for safety razors and blades was opposed by a company selling the same goods under the Trade Mark "GEM". The grounds of opposition were, that for many years the proprietor of mark "GEM" had advertised, offered for sale and sold in and outside U.K. the similar goods under mark "GEM"'which had become distinctive of their goods and that the trade and public would think the goods offered for sale under the Trade Mark "GEM" or under any trade mark, deceptively similar thereto such as the mark MEM, and that the mark applied for consisting of the word MEM so closely resembles the Mark GEM that if used upon the goods to which the application related, it would be likely to deceive and cause confusion and would offend against the provisions of the Trade Marks Act. The grounds of opposition were rejected and the application for registration of Mark MEM was ordered to be processed. In said case it was held that the greatest likelihood of confusion is phonetic confusion, where the goods are asked for by name and that a one-letter difference in a three-letter word is a significant difference, particularly when the differing letters are the first letters of the words, with such different sound as between the letters M and G. It was also observed that word GEM is well-known and easily remembered because of its laudatory significance as against the word MEM which has no obvious meaning except possibly as suggesting something to be remembered and that complete lack of similarity between the ideas associated with the rival marks, excludes any possibility of confusion due to imperfect recollection. Lack of evidence of confusion was not given any significance in view of limited sale of applicant's goods in U.K. and the relatively restricted sale abroad, where the selling methods and pronunciations are somewhat different from those prevailing in U.K. In the case of S.O. Co. B.O.R. v. Reckitt and Colman 1979 RPC 355, registration of Mark "FIF' for dietetic and non-alcoholic drinks was opposed by registered proprietors of a number of registrations of the Mark "JIF' which included non-alcoholic drinks and fruit juices. The Registrar allowing the application to proceed took view, that the applicants had discharged the burden of showing that there was no real tangible danger of phonetic or visual confusion. In appeal the appellate Court while dismissing the appeal took view that prima facie the two marks were neither visually nor phonetically so close that their use upon the same or similar goods would be likely to lead to confusion and that it would not be appropriate to proceed on the basis that the packaging of the juice in simulated lemons is what could be described as a fair or normal use. In respect of the phonetic confusion, appellate Court held that the initial letter difference in the two marks suffices to distinguish them sifficiently. In the case of Messrs G.M. Pfaff A.G. 1984 CLC 2478 the view taken was that pronunciation of "PFAFF' and "TUFF' is quite distinguishable from each other and they cannot be regarded as identical in their phonetic sound, as "P" has a soft sound as against "T" which has a harsh sound and that first letter of both the marks is not identical leaving no chance of the confusion and deception to take place. In the case of Dr. Hakimullah Siddiqui 1987 M LD 2569 the view taken was, that the Registrar Trade Marks while examining the question of similarity of two trade marks, would consider effect of the two marks visually and phonetically and other circumstances including point of view of public and then would reach conclusion whether or not there was no similarity between the two marks and that use of either of them was not likely to deceive or cause confusion in trade. In said case proprietor of Trade Mark "LEUKONOL" opposed registration of Trade Mark "LEECON" and it was held that dissimilarity in said two marks was patent not only visually but also phonetically because the sound of one has no such resemblance with sound of the other, so as to create confusion in mind of the purchaser or the shop assistant. In the case of M/s. Philip Morris Incorporates 1980 CLC 1272 registration of Mark "Solo" in respect of Cigarettes and Tobacco products, was opposed by proprietor of Mark "POLO" already registered for similar goods, on the ground that there was phonetical and visual similarity between the two marks with likelihood of creation of confusion and deception in mind of prospective purchasers.
10. Registration was refused not on the ground taken by proprietor of "POLO", but on the ground of the Mark "SOLO" having geographical significance, which objection was not raised by proprietors of "POLO". In appeal order of the Registrar was set aside on the ground that the opposite-party had not taken any objection to registration of Mark "SOLO" on the basis of its alleged geographical significance except during arguments of the appeal, and that no geographical significance is attached to word "SOLO" which is more known for its dictionary meaning, and its geopraphical significance is little known even to educated class of the public not to say of the ordinary public of Pakistan and that the word "SOLO" has meaning and connotation of its own and in common parlance is understood as such, shorn of any known geographical significance. In the case of Mid Land Electric Manufacturing Co. Ltd. 1987 CLC 1539 the view taken was that the marks "REM" and "MEM" cannot be considered to be confusingly similar as visually both the marks look different and sound of "M" is different from "R".
11. In his grounds of decision, the Registrar has not discussed visual or phonetic similarity between the applied Mark "NAX" and the registered marks "NOXO" and "MAX". He has not cared to mention as to proprietor of which mark has given consent letter in favour of the applied mark and which was the undertaking given by the applicant/appellant. The Registrar has given finding about conflict in respect of "NOXO" but not in respect of "MAX". This indicates that he has not found "NAX" to be confusingly similar to "MAX".
12. Visually there is material difference between the mark "NAX" and the mark "MAX". One-letter difference in a three-letter word is a very significant difference, as held in the case of Gillette Industries Ltd. 1965 RPC 347. Phonetically too the two words are poles apart. First letters of the two marks sound differently. The initial letter difference between said marks suffices to distinguish them sufficiently if the view taken in the case of S.O. Co. B.O.R. v. Reckitt and Colman 1979 RPC 355 is followed. Visually there is not much of the difference between the mark "NAX" and the mark "NOXO" but phonetically there is much difference. Even the initial letter "N" common in the two marks, would sound differently in each of the said marks. So also the letter "X" visually too, there is difference in number of the letters carried by each mark.
13. Paints, varnishes, etc. are mostly used by building contractors and building engineers and the persons owning or building houses. Such category of persons would not be confused by use of goods under Mark "NAX" in presence of similar goods under the Marks "NOXO" or "MAX". There is no likelihood of the unwary purchaser being misled by taking product of NAX to be of NOXO or MAX.
14. Hence the provisions contained in sections 10(1) and 8(a) of the Act were not attracted to the instant case.
15. In the light of the case-law discussed above, and on examining the applied trade mark and comparing it with the already registered marks, one cannot arrive at the conclusion that the applied mark is confusingly similar to the registered Marks "NOXO" and "MAX" or that registration of the applied trade mark is likely to deceive or to cause confusion.
16. ' Consequently this appeal stands accepted and the impugned order is set aside and the Registrar is directed to proceed with application of the appellant in accordance with law.