1. ' Respondent No,2 M/s. Seth Muhammad Rafiq Ziraati Foundry, filed Trade Mark Application No,82062 for registration of words "PHANNEY KHAN" (in Urdu) as Trade Mark for goods in class 7 which was advertised in the issue of August, 1985 of the Trade Marks Journal. The appellant through its proprietor Muhammad Rafiq filed Opposition No, 274/85 which was disallowed by the Registrar of Trade Marks by his order dated 8-5-1981. The appellant has assailed the aforesaid order in this appeal under section 76 of Trade Marks Act, V of 1940 (hereinafter referred to as the 'Act').
2. The appellant is the owner of Trade Marks "NEW KHAN" and "KHAN" registered on 25-7-1967 and 6- 6-1972 at Nos. 47788 and 56407 respectively for goods in the above class. On expiry of respective seven years, the registration of both the marks was renewed for fifteen years with effect from 25-7- 1974 and 6-6-1979 respectively. On expiry of the fifteen years, the registration of the first mark has been further renewed with effect from 25-7-1989. The above marks were registered for having acquired distinctiveness due to long user by the appellant.
2. ' The appellant claims to be one of the leading manufacturers and merchants of Chaff Cutters, Toka Machines, Wheat Threshers, Ploughs, BeInas and other agricultural implements of large size, since last thirty one years and have been manufacturing, marketing and selling goods under their registered Trade Marks 'Khan' and 'New Khan'.
3. Respondent No,2 had applied for registration of the aforesaid Trade Mark 'Phanney Khan' stating that it was "proposed to be used". The said application was filed on 16-2-1984 and was published in the Trade Marks Journal.
3. ' The said Muhammad Rafiq, the proprietor of the appellant firm field his affidavit opposing the registration of the trade mark 'Phanney Khan' on the grounds of the earlier registration of his both trademarks 'Khan' and 'New Khan' in class 7 and for similar goods. It was stated that due to long and extensive use of the above marks they have come to be associated with the name of the appellant, as belonging to the appellant's products. Respondent No,2 had filed application for registration of the aforesaid mark in respect of the same and similar goods with mala fide intention to prey upon the goodwill of the appellant's above trademarks. The aforesaid mark 'Phanney Khan', phonetically and visually being similar to the appellant's trade marks in respect of the same and similar goods, sold and purchased through the same channel, is likely to deceive or cause confusion in the general public and the goods of respondent No,2 are likely to be passed on as goods of the appellant and as such its registration was objectionable under section 8(a) being likely to deceive the general public as to the origin of the goods and as such respondent No,2 is not entitled to registration of the said trade mark.
4. ' He also gave the annual turnover of his business with regard to sale of his products sold under the trademarks 'Khan' and 'New Khan' from 1962 to 1987. The annual turnover of the business was duly supported by the income tax documents placed on record.
5. ' The Registrar was of the view that Thanney Khan' was distinctive and is a personal name. He specifically has observed as under:- " The mark as a whole is not registrable without evidence of acquired distinctiveness, hence evidence produced in support of application in opposition proceedings is considered to be sufficient evidence to prove its acquired distinctiveness. The mark of the opponent (appellant) consisting of KHAN and NEW KHAN being common surname in Pakistan cannot be considered without having evidence of acquired distinctiveness. For the word NEW more particularly no monopoly rights can be given whosoever evidence may be brought to prove its acquired distinctiveness, hence I believe the presence of the mark of the applicant on the register cannot in any way cause confusion and deception if similar word KHAN with prefix PHANNEY having distinct meaning is allowed to be registered. More so when the applicant does not claim exclusive right on the common surname KHAN. Primarily the word PHANNEY is the distinctive feature of the applicant's mark and, therefore, is not objectionable under sections 10(1) and 8(a) of the Trade Marks Act, 1940."
6. ' It is then observed:-- "The applicant by producing evidence in support of TM 6 has established their business and use of the mark since 1974, hence they are rightful proprietors of the mark and entitled to registration of their mark under section 14 of the Act."
7. ' It was on his above perception of the case that the learned Registrar dismissed the Opposition filed by the appellant and allowed the registration of trade mark Thanney Khan' to proceed.
4. I have heard Mr. Choudhry Mahmood Ali for the appellant and Mr. Sultan Ahmed Shaikh for respondent No,2.
8. ' The learned counsel for the appellant has contended that the respondent's trade mark has not acquired any distinctiveness, as in the application filed for the registration no prior user was claimed by respondent No,2 and it was clearly stated that the trade mark was proposed to be used, the appellant's trademarks are protected under sections 18, 23 and 24 of the Trade Marks Act and in case the trade mark of respondent No,2 is registered, it is likely to cause deception and confusion in the trade, being similar phonetically and visually to that of the already registered trademarks of the appellant.
9. ' The learned counsel for respondent No,2 contended that the word Thanney Khan' is a fictional word. It denotes something superb. The aforesaid trade mark, according to him is altogether different phonetically and visually from the appellant's trademarks 'Khan' and 'New Khan'.
10. ' As far as the registration of trade mark 'Khan' is concerned it was urged disclaimer was recorded at the time of registration under section 13 of the Act and, therefore, the appellant cannot claim exclusive use thereof. It was lastly urged by him that the Registrar having exercised the discretion vested in him by statute, the Court in appeal should be extremely loath to interfere with.
5. Before considering the submissions made by the learned counsel for the appellant, it would be appropriate to consider the propriety of exercise of the discretion by respondent No,1 in favour of respondent No,2.
11. It is settled law that it is the discretion vested in the Registrar of Trade Marks either to accept or refuse registration of the trade mark. It is established law that the discretion exercised by the Registrar is not to be interfered with unless it is found to have been exercised arbitrarily or capriciously or improperly, or is not justified by the material on record or the decision is clearly wrong or patently erroneous. In the instant case the Registrar allowed the registration of the trade mark of respondent No,2 as he was of the opinion that the said respondent had established in evidence use of the said mark since 1974 and was the rightful proprietor of the mark. It has been further observed by him with regard to the mark of the said respondent that the mark as a whole is not registrable without evidence of acquired distinctiveness but he considered the evidence produced before him sufficient to prove the acquired distinctiveness due to user thereof from 1974.
12. ' I have scrutinized the record and do not find any evidence in proof of the allegation that respondent No,2 had been using the said trade mark since 1974 or that has ever been in the process of manufacturing agricultural implements or since 1974. On the contrary it is noted that the said respondent had not at all claimed prior user. As already noted above in the application filed by him for registration of the said trade mark, it is stated that the trade mark "is proposed to be used". In the counter-statement filed by Muhammad Yaqoob and Muhammad Rafiq, who claimed to be trading partners in the name of Seth Muhammad Rafiq Zaraati Foundry, have clearly stated that for the purpose of establishing the factory for manufacture of agricultural implements they had acquired a piece of land on 20-4-1974 and had also got the sanctions for telephone and electricity connections in the name of Lasani Engineering Company and started construction of the factory building but because of the commencement of litigation in respect of the land acquired for the factory, it could not start functioning. Similar averments hive been made in the affidavit filed by Muhammad Yaqoob in support of the aforesaid counter-statement. The documents produced by them pertain to acquisition of some land situated in Sadiqabad in the name of Muhammad Yagoob and others, but not Muhammad Rafiq and the proceedings of criminal and civil litigation which were commenced in respect thereof. The other documents pertain to acquisition of telephone connection in the year 1984 in the name of Muhammad Yaqoob Lasani Engineering Co.
13. And water connection from WAPDA in the name of Muhammad Yaqoob for a place described as near Azad Nursery. Respondent No,2 has not thus claimed to have manufactured the agricultural implements, least to say of using the trade mark in respect of the goods, in class 7 or the goods of the same description. The learned Registrar has thus proceeded absolutely on conjectures in observing that respondent No,2 had established the business and use of the mark since 1974, and that they are rightful proprietors of the mark which had acquired distinctiveness because of the long user. It is also falsified by the record that the alleged disclaimer was recorded in respect of trade mark 'Khan'. Under these circumstances it is obvious that respondent No,1 had exercised the discretion arbitrarily, capriciously and without applying his mind to the material on record. The tenor of the impugned decision shows that respondent No,1 in the belief of his above-detailed unwarranted assumptions, accepted the application of respondent No,2 under section 14 of the Act. The learned Advocate on being confronted with the factual position conceded that respondent No,2 was not manufacturing the goods in class 7 or of the similar nature, and that no disclaimer was recorded in support of mark 'Khan'.
6. Respondent No,1, as can be seen from his observations noted above, which from the sole basis for allowing the registration of trade mark Thanney Khan' are firstly, not warranted by the facts on record and secondly, he has overlooked the fact that the appellant's aforesaid trademarks have remained op the register of trade marks for more than seven years and so also the provisions of sections 23 and 24 of the Act and their effect.
14. ' Section 23 of the Act provides that in all legal proceedings relating to a trade mark registered under the Act, the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof. Section 24 of the Act lays down that in all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade marks offend against the provisions of section 8 of the Act.
15. ' Before proceeding further, it may be observed that it is not the case of respondent No,2 that the registration of the trade marks 'Khan' or 'New Khan' was obtained by the appellant by fraud or that the said trademarks offend against the provisions of section 8 of the Act.
16. ' The above provisions came up for consideration before Sajjad All Shah, J. (as he then was now Judge of the Supreme Court). His Lordship while interpreting them observed that, firstly, the registration is a prima facie evidence of its validity and, secondly, the registration is to be treated as conclusive, as far as validity is concerned, after the lapse of seven years.
17. ' In view of above state of law, the validity of the appellant's trade mark cannot be called in question. Respondent No,1 had fallen in serious error in his observations with regard to the aforesaid two registered marks of the appellant.
7. Section 8 for the Act provides that no trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design or any matter, the use of which would by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice etc. ' Section 10 of the said Act reads as under:- "10. Prohibition of registration of identical or similar trade mark. ---(1) Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and either already on the register in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent cause or other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trademarks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
(3) Where separate applications made by different persons are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court."
18. ' The above two sections are equal to sections 11 and 12 (1) of the UK Trade Marks Act, 1938. Kerlay in Law of Trade Marks & Trade Names, 10th Edition (1972), has observed as under:-- "Para 10-06. It is well-settled that the onus of proving that there is no reasonable probability of deception is caused on an application for registration of a mark. The onus is heavier on an applicant when a mark is new and no trade has been established in it provided, at least,. Where the opponent's mark is old.
19. ' Thus, section 12(1) embodies the old rule, that a mark, which from its resemblance to an existing trade mark is 'calculated to deceive' cannot be protected as a trade mark, for its use is an infringement of the other mark which would be restrained by the Court."
20. (Underlined for emphasis).
21. ' Thus, it is clear that there is heavy onus on respondent No, 2 to show that there is no likelihood of deception in case his trade mark proceeds to registration. Respondent No,1 wrongly shifted the burden of proof on the appellant.
8. In view of the above provisions the first question that requires determination is whether the trade mark 'Phanney Khan' in respect of the goods as are being manufactured and marketed by the appellant under this registered trademarks 'Khan' and 'New Khan' does not so nearly resemble as to be likely to deceive or cause confusion. Since the appellant's marks were registered long. Ago for having acquired distinctiveness and is the owner thereof, onus is on the shoulders of respondent No,1 to show that Thanney Khan' is not likely to cause deception or confusion in the trade.
22. ' The learned counsel for respondent No,2 relying on Wahid Bux v. Haji Abdul Rahim and others PLD 1973 SC 104, wherein the word trade marks "Daigon" and "Saigon" came up for comparison of similarity, contended that the prefix Phanney' in the trade mark of respondent No,2 is absolutely dissimilar and, therefore, there was no question of likelihood of confusion or deception.
23. ' He also placed reliance on the case of Master Thread Ball Works v. Master H.A. Karim PLD 1969 Dacca 734, wherein in presence of the already registered trade mark 'Master', contestant trade mark 'Master Tailor' was allowed to be registered.
24. ' He lastly referred to Punjab Engineering Company (Regd.) v. Muhammad Yaqoob and another (1989 CLC 368). In this case the appeal filed by the proprietor of the trade mark 'King' against registration of 'Kung Fu' was dismissed and so also the appeal filed before this Court, holding that there was no descriptive similarity between the two trade marks (in the report 'Kung Fu' has been wrongly printed as 'King Fu') and, therefore, it was held that there was no likelihood of deception or confusion. The judgment of learned Single Judge was assailed before the Supreme Court, judgment whereof is reported as Punjab Engineering Company, Faisalabad v. Muhammad Yaqoob and another PLD 1991 SC 799.
25. ' The above authorities are distinguishable. In so far as the first case is concerned, it relates to dissimilarity in the prefixes and is not relevant in the context of the present case where the compound trade mark of respondent No,2 consisting of two words, contains the whole of the trade mark 'Khan' of the appellant which has acquired distinctiveness and would attract different rule of comparison. In so far as the second case is concerned, the learned Judges maintained the registration of 'Master Tailor' in presence of the trade mark 'Master' as they were of the view that meaning of the words and the devices were quite different, each having its own distinctiveness and, therefore, there was no likelihood of confusion or deception. In the case in hand there are no devices nor any plea of distinctiveness on the basis of devices was raised before respondent No,1 and as will be presently seen the meaning of the words contained in the two trademarks is also not different. In the last case referred to by the learned counsel for respondent No,2, although the devices of the two contesting trade marks were altogether different, the counsel of the applicant for 'Kung Fu' proposed changes in the trade mark to eliminate all possibilities of deception and confusion. The Hon'ble Supreme Court accordingly dismissed the appeal on putting 'Kung Fu' to terms.
26. In so far as the case in hand is concerned, the trade mark of respondent No,2 consists of a phrase, is a composite and compound mark which incorporates within itself, the whole of the mark 'Khan' of the appellant. The question of likelihood of confusion or deceptive similarity in such cases where trade mark is composed of more than one word, contains common distinctive word, which forms whole of the trade mark of the other party, is bound to assume importance, the imperfect, recollection of purchaser being relevant factor.
27. ' In such cases two factors are important, one is the structural resemblance and the other is similarity in idea or the meaning of the words comprised in the contesting trademarks. In the present case possibility of phonetic confusion cannot be ruled out. As, it may be repeated, in cases where the imperfect recollection of the purchaser is a relevant factor, the two marks are not to be subjected to a side by side comparison or meticulous analysis, though the structure of the two marks need to be examined to ascertain, whether either of them possess any outstanding characteristic that will inevitably create a more or less similar impression on the consumer's mind.
28. The issue is to be approached from the point of view of a man of average intelligence and of imperfect re-collection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them, as.
29. Has been observed in Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142).
30. Harry Reynolds v. Laffeaty's Dowell & Company, (1958) RPC 387) also indicates that words arc remembered not only by their sound and appearance but also by the ideas suggested by them.
31. Words conveying the same meaning or suggesting the same idea are-in general likely to deceive or cause confusion.
9. The learned counsel for respondent No,2 Contended that the mark Thanney Khan' is quite different and poles apart when compared with mark `Khan', phonetically, in structure and meaning.
32. The emphasis of his argument was on Phanney' which, according to him, is a landstory word and makes the mark of respondent No,2 dissimilar.
33. It may be stated that while deciding the question of similarity between the two marks, they have to be considered as wholes. There may be two words which in their component parts seem quite different but which, when read or spoken together, do represent something which is so similar as to lead inevitably to confusion, as has been observed by Justice Farewell in the matter of an application by William Bailey (Birmingham) Ltd. (1935) 52 RPC 136).
34. ' In the matter of application by Egg Products Ltd. ((1922) 39 RPC 155), Sargant, J. Observed, "The true test is whether the totality of the proposed trade mark is such that it is likely to cause mistake or deception or confusion, in the minds of persons accustomed to the existing trade mark."
10. The potential customers of the agricultural implements exist throughout the country, our country being essentially agrarian -- they comprise of persons belonging to wide range of land owners.
35. Such products are advertised through newspapers and handbills. The persons wishing to purchase such implements are normally influenced by the brand names recommended to them by others or read by them in newspapers or handbills. The products of the appellant have remained in the market, by their trademarks - 'Khan' and `New Khan' or commonly as Khan brand or Khan Marka.
36. When one goes to the market for purchasing articles with brand names only, having no devices at all, he asks for them by naming the brand.
37. Thus, accepting the case of the appellant that it has established goodwill and reputation in the market, which can be concluded from the year to year increase in its turnover, notwithstanding a few intermittent insignificantly lean years, its products in that class or of the nearly same description being popularly known by the brand name, would normally be wished by the purchaser and known to the dealers and salesmen by that name. It is ,also a matter of first impression that when mark consists of two words, the one which is prominent and dominant, gains currency. In trademarks 'Khan' and 'New Khan' of the appellants and Thanney Khan' of the respondent, the prominent and central feature is word 'Khan'. Therefore, in my opinion there is likelihood of confusion, if goods in the same class are allowed to bear the above competing trademarks. Both the trade marks on first impression being 'Khan' Marka or 'Khan' brand. The use of word Thanney' does not make the mark of respondent distinctive in any manner.
38. ' I say so because Thanney Khan' is fictional and imaginative name. It is used ironically for one who blows his own trumpet, puffed up by vanity or vaunt or a vainglorious person. The word Thanney' is, otherwise, meaningless and is not used and is incapable of being used independently of 'Khan'. It also cannot be used with any other word. In the parlance of association of ideas, the moment word Thanney' is communicated to mind, 'Khan' will be the only response, it will immediately float on its surface, with no let-up or recesses.
39. ' Phanney' having no meaning in isolation, if be allowed to be registered and goods in the same class are marketed under the said mark, it is likely to create confusion, 'Khan' being the prominent and central feature and already known in the market, among the agriculturists. The possibility cannot be ruled out that the mark 'nanny Khan' may be taken as another variation made by the manufacturers of 'Khan' and 'New Khan' and thus the potential buyer may take Phanney Khan' as a product of the appellant. The word Phanney' for the purpose of comparison, therefore, makes no distinction. As observed above, on first impression both marks are basically 'Khan' marks. It is the word 'Khan' which is likely to remain in the mind of the potential purchaser, who has been hearing about it since long in relation to agricultural implements. One has also to take notice of tendency of purchasers to reduce and abbreviate the composite marks to one word, which is to be the word which is more prominent or central or is already known in the market.
40. ' The trade mark Thanney Khan' by reason of its being likely to deceive or cause confusion in the trade is not entitled to be registered and as also it being identical with the already registered trademarks of the appellant, in respect of the goods in class 7 or of the goods of the same description, under sections 8(a) and 10(1) of the Act.
11. On analysis of case-law, that includes the cases of infringement and passing of also it has been found that a composite or compound trademarks of the above nature, as a matter of fact, have led to confusion in the market or to put it in other words, in the mind of the purchaser, imperfect recollection being the relevant factor in such cases, or have led the unwary purchaser to take goods with such composite trademarks as another version or variation of the marks of the manufacturers whose good are known to him.
12. Before coming to the case-law in the above context, it will be befitting to reproduce the of-- quoted observation of Justice Parker in the matter of application of Painotist Ltd. ((1906) 23 RPC 774) in respect of marks consisting of words: "....You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you must refuse the registration, or rather you must refuse the registration in that case."
41. ' In Ravenhead Brick Company Limited v. Ruabon Brick and Terra Cotta Co. Ltd. (1937) 54 RPC 341, the plaintiffs who were the registered proprietor of the trade mark consisting of the word "Rus" registered in class 16 in respect of porcelain and earthen ware, brought an action against the defendant for infringement of the mark and passing off by the use of the word "Sanrus" by the defendants. The relief was granted to the plaintiffs with the following observations:-- "Now I think it is reasonably clear that no man seeing the words `Rus' and `Sanrus' written side by side on a piece of paper would be liable to any sort of confusion, nor I think is there any likelihood of confusion from the use of the words `Rus' or `Sanrus' in conversation, whether over the telephone or otherwise, but I am entitled, and bound, to take this into consideration, that a person accustomed to deal in this class of material, that is to say an architect, builder or surveyor of builders' materials, hearing the word `Sanrus' used would at once think -- for so the evidence leads me -- 'This is, or this may be, a name used to describe an article of the plaintiffs" manufacture'. If I come to that conclusion, as upon the evidence I think I must, then I must, upon the authorities, also hold that the use of a word liable to cause such confusion is an infringement of the plaintiffs' mark. Accordingly, upon the evidence which has been adduced in this case, I can come to no other conclusion than that the use of the word `Sanrus' is an infringement of the plaintiffs' mark `Rus'."
42. ' In Sanitas Co Ltd. v. Condy, (1887) 4 RPC 530, an action was brought by the plaintiffs to restrain the defendants from using the words "Sanitas" and "Sanitant" either alone or in conjunction with any other words as the defendants were advertising their goods under the title of "Condisanitas". The plaintiffs, who were the registered owners of the mark "Sanitas" brought an action for infringement and passing off. The case was decided in favour of the plaintiffs with the observations:-- " that the use of the word `Sanitants' with 'Condi' before it -- `Omnia Condi Sanitas', and so forth -- was an infringement of the Plaintiffs, trade mark, and that 'Condi Sanitas' was not a sufficient distinction to enable the unwary public to discern whether what they were buying was the Plaintiffs' or the Defendant's goods."
43. ' In appeal the Chancery Division maintained the judgment with the following observations:-- "To my mind whether it is Condi-Sanitas," or `Sanitant', it being a compound intended for the same purpose, I must come to the conclusion, and I think any ordinary juryman would come to the conclusion, that he has gone as near as he thought he safely could, with the intention of cutting out the Plaintiffs, and cutting them out dishonestly -- that is passing off his goods as theirs. That is my distinct conclusion as the evidence; "
44. ' In Ruston and Hornby Ltd. v. Zamindar Engineering Co. AIR 1970 SC 1649, the owner of trade mark "Ruston" registered for goods in class 7 in respect of diesel internal combustion engines brought an action against the use of trade mark "Rustam India" for the combustion engines, for injuction, on the ground of infringement of their trade mark. The suit was dismissed holding that there was no visual or phonetic similarity between the two trademarks. In appeal the learned Judge of Allahabad High Court though held that "Rustam" was infringement of "Ruston", dismissed the appeal holding that "Rustam India" was not an infringement of "Ruston" as the former engines were manufactured in India and the latter in England and that the suffix India was a sufficient warning in such regard. The matter was taken up to the Supreme Court. The appeal was allowed holding that the trade mark "Rustam" was deceptively similar to "Ruston" and the addition of India was found to be of no consequence.
45. ' In the case of Bulova Watch Co. Ltd. v. Associate Watches Ltd., (1969) RPC 102, in earlier round of litigation it was held that the two trademarks " Accutron" and "Accurist", if viewed side by side, there was possibility of deception and confusion. The appellant, therefore, applied for registration of mark "Bulova Accutron". The registration was refused as it was found that the addition of the former component had not rendered the latter innocuous, nor there was any less risk of deception or confusion.
46. ' In the case of Jaya Bharat Industries v. R.T. Electronics and Engineering Co. AIR 1978 Gujarat 60, it was held that "Reec Master" was an infringement of "Master". The goods in question were diesel engines and the purchasers included illiterate agriculturists from villages.
47. ' In K.R. Chinnikrishna Chitty v. K. Venkatesa Mandaliar and another AIR 1974 Mad. 7, the registration of "Radha's Sri Andal Snuff' was refused on opposition filed by owners of mark "Sri Ambali holding that the addition of the word "Radha" to the legend "Sri Andal" will not make the slightest difference, with following observations:-- "...The appellants' snuff sold under the trade name 'Sri Andal' the registration of which was objected to by the respondents, has been in the market for some years and the objection to its registration has not been finally upheld. The question for consideration now will be whether by the addition of the word `Radha' to the objected legend makes a vital difference. When the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp, J. In 1969 RPC 102 at p.109, 'Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion.' We are of opinion that the combination of the two words `Radha's Sri Andal' is likely to be taken by snuff users as the snuff manufactured and marketed by the appellant originally as 'Sri Andal'. The appellants' learned counsel sought to distinguish the above three cases on the ground that in the aforesaid decisions the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of the word `Radha' to the legend 'Sri Andal' is a combination which has nothing in common with the respondents' legend 'Sri Ambal'. We are unable to accept the ground of distinction made by the learned counsel. We are of opinion that there is a tangible danger that a substantial number of persons will confuse the appellants' Radha's Sri Andal' mark applied for with the respondents' legend 'Sri Ambal snuff ."
48. ' In the case of Benedictus v. Sullivan, Pow] and Co. (1895) 12 RPC 25 `Margarita' was held to infringe "La Flor de Margaretta". In Distillery Company Limited's Application, (1904) 21 RPC 18, 'Jock Scott' was held to be similar to the already registered mark 'Scotch Jock'. In Tailor's Drug Company Limited's Application, (1923) 40 RPC 193, `Germocca' was found to be in conflict with `Germolene' and 'Homocea' due to probability_ of confusion and registration was refused. It was held that the trade mark was an obvious compound of parts of the above two existing marks, owned by different manufacturers, both used for skin ointment and the compound word sought to be registered may not bridge over the distinction between the two registered marks and thus create confusion. It was further held that it may give rise to the inference that the proprietors of `Germolene' and 'Homocea' had combined forces and produced joint article.
49. ' In Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449, on the touchstone of the aforesaid rule laid down by Justice Parker on the comparison of the trademarks `Amritdhara' and `Lakshmandhara' were found to be so similar in idea that they were found to cause deception. It was observed that "as to confusion it is perhaps an appropriate description of the state of mind of a customer, who, on seeing a mark, thinks that it differs from the mark on goods which he had previously bought, but is doubtful whether that impression is not due to imperfect recollection".
50. ' In such cases the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man overall structural and phonetic similarity of the two names `Amritdhara' and `Lakshmandhara' is, in our opinion, likely to deceive or cause confusion.
51. ' In the case of United Kingdom Tobacco Company Limited's Application, (1912) 29 RPC 489, on comparison of the trade marks 'State Express' and 'Stateroom' Mr. Justice Parker observed, "prima facie it appeared that there was no likelihood of deception or confusion arising by the use of the word 'Stateroom' for cigarettes merely because the words, State Express' are already used for cigarettes but this was not found conclusive on the subject. It was observed that there may be special considerations which lead the Court to infer that some confusion may arise. It was found that 'State Express' was abbreviated to 'State'. It was, therefore, considered probable that 'Stateroom' also might be abbreviated to 'State' and consequently it was found that there was some amount of likelihood of confusion or of deception.
52. ' The learned counsel for the appellant has referred to Margrate Rose Trade Mark Application (1978)
53. RPC 55, which was refused on opposition filed by the proprietor of English Rose. The following observations at page 60, line 45 et sig, are pertinent:- "My view is that on first impression both marks are essentially 'rose' marks, that it is the device and the word 'rose' which will more probably remain in the recollection of the potential customer who has seen one or other of the marks in an advertisement or brochure and who has an imperfect recollection of it when he meets the other. When simply the words 'English Rose' or 'Margaret Rose' are used in oral communications or requests in relation to the goods I am not convinced against the likelihood of deception or confusion can be ruled out. 'Rose' is the key word of both marks which in my view is likely to remain in the memory -- as it did in the memory of Mrs. Cross -- and in view of the use of and reputation in ENGLISH ROSE a substantial number of people will be caused to wonder whether it might not be the case that MARGARET ROSE products come from the same source."
54. If the present case is seen on the touchstone of the rules laid down in the above authorities, the whole of the trade mark 'Khan' of the appellant is component part of the trade mark proposed to be used by respondent No,2, the component Thanney' is innocuous independently of the word 'Khan' and in so far as the question of association of ideas is concerned, the word Phanney' when spoken would suggest in response the word 'Khan' to the mind and in this view of the matter the component trade mark proposed is in essence `Khan'. Both the marks convey idea of 'Khan'. There is great probability that respondent No,2's trade mark may be taken as another variation made by the manufacturers of 'Khan' and 'New Khan'. Lastly, the abbreviation of the words Thanney Khan' into 'Khan' also cannot be ruled out. It is, therefore, probable that the registration of the trade mark of respondent No,2 will lead to confusion in the market, particularly so keeping in view the class of the consumers of the product in question and their imperfect recollection of marks. As observed by Justice Parker, while deciding the case, it is not necessary to find that one man would be injured and the other will gain illicit benefit but what is important is that there will be confusion in the mind of the public which will lead to the confusion in the goods.
55. ' The appeal is, therefore, allowed and consequently opposition No,247 of 1985, filed by the appellant, is allowed against Trade Mark Application. No,82062, filed by respondent No,2.