This appeal under section 76 of the Trade Marks Act, 1940, is directed against the order dated 2nd March 1964, of the Assistant Registrar of Trade Marks. The only respondent in the case is the Assistant Registrar, but no appearance on his behalf has, however, been made in these proceedings.
2. The appellant applied in June 1962, for registration of a trade mark consisting of the word "Punjab Shaving Cup Soap" with the device of a shaving brush, in respect of soap in class 3. The Assistant Registrar refused registration on the ground that the device of shaving brush was merely descriptive of shaving soap and the word "Punjab" was a geographical name and, accordingly, the mark was not adapted to distinguish the appellant's goods under section 6(l)(d) and (e) of the Trade Marks Act, 1940. Section 6 of the Trade Marks Act, without the proviso (which is not material for this case) is in these terms :- "6.-(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely :-
(a) the name of a company, individual, or firm, represented in a special or particular manner ;
(b) the signature of the applicant for registration or some predecessor in his business ;
(c) one or more invented words ;
(d) one or more words having no direct reference to the character or quality of the good, and not being according to its ordinary signification, a geographical name or sur-name or the name of a sect, case or tribe in Pakistan ;
(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.
(2) For the purposes of this section, the expression `distinc--tive' means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which-
(a) the trade mark is inherently so adapted to distinguish, and
(b) by reason of the use of the trade mark of any other circumstances, the trade mark is in fact so adapted to distinguish."
3. No objection has been raised to the Assistant Registrar's finding that the device of the shaving brush is merely descriptive of the goods and cannot qualify for registration. The argument before me proceeded only on the Registrar's refusal to register the mark on the ground that the word "Punjab" was a geographical name and could not, therefore, be treated as "adapted to distinguish" the appellant's goods. There can be no doubt that this word is, according to its ordinary signification, a geographical name and has no direct reference to the character or quality of the appellant's goods. Section 6(1)(d) is a bar on registration of such name as a trade mark. But the mark may be registered under section 6(1)(e) upon evidence of its having become distinctive of the appellant's goods. It has been noted that section 6(2) defines the expression "distinctive" to mean "adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade, from goods in the case of which no such connection subsists". Under subsection (3) the Registrar is required for the purpose of determining whether a trade mark is adapted to distinguish to consider the following factors :-
(a) Whether the trade mark is inherently so adapted to distinguish, and
(b) whether by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish.
4. For the purpose of this appeal, I will accept the statement of the appallant's learned counsel, Mr. A. A. Zari, that by long user since 1927 the appellant's mark acquired 100 per cent. Distinctiveness under factor (b). But this, in my opinion, will not by itself qualify the mark for registration, because, presence of distinctiveness in fact by long user will not dispense with the requirement that inherent distinctiveness under factor (a) should also be present. To qualify a geographical name for registration as a trade mark, the Registrar has to be satisfied that the mark has acquired distinctiveness under both factors (a) and (b). But Mr. Zari contended that both these factors need not be present to constitute distinctiveness, and registration should not be refused if it is shown that the mark, even though it be merely descriptive or is the name of a person or place, has become distinctive by user over a long period. This argument was sought to be supported by decisions in several English cases which the learned counsel cited before me. The first of these cases is Wotherspoon v. Currie ((1872) 27 L T R 393), which is a decision of the House of Lords. The appellants in this case were manufacturers of starch at a hamlet in Scotland called Glenfield. The starch acquired good reputation under the name of "Glenfield Starch". The appellants were given an injunction to restrain the respondent, who had also set up a starch works at Glenfield, from using the word "Glenfield" for his goods. The next case is Montgomery v. Thompson ((1891) 8 R P C 361), in which the plaintiff's were brewers at Stone, a town of about 7,000 inhabitants, and were owners of several trade marks containing the words "Stone Ales". The defendants also began to use these words for the products of the brewery built by them in this town. The Court of appeal affirmed the order of injunction issued against the defendant by Chitty, J., but at the same time ordered, on the defendant's motion, that the Register be rectified by removal therefrom of the words "Stone Ales" as there was no evidence of user of this mark before 1872.
This order was upheld by the House of Lords. In Reddaway v. Banham ((1896) 13 R P C 218), the House of Lords restrained the defendant from using the words "Camel-Hair" for his belting as these words had become identified with the plaintiff's goods. The case of Powell v. Brimingham Vinegar Brewery Co. Ltd. ((1897) 14 R P C 720) is also a decision of the House of Lords, affirming the orders of the Courts below that the expression "Yorkshire Relish," though containing the geographical name Yorkshire, was in fact a fancy name and had become distinctive of the plaintiff's goods. In Faulder & Co. v. O. And G. Rushton Ltd. ((1903) 20 R P C 477), the Chancery Division held that the word "Silver-pan" was not descriptive, but was a fancy name identified with the plaintiff's goods. In the Application of the California Fig Syrup Company ((1909) 26 R P C 846), the mark offered for registration consisted of the words "California Syrup of Figs" The Board of Trade referred the application for the opinion of the Court. The application was refused by Moulton, J., but in the Court of Appeal it was allowed to be proceed with. In the case of Itala Fabbrica di Automobill ((1910) 27 R P C 493) also the point was whether the application for registration of the word "Itala" should be allowed to be proceeded before the Registrar. It was held that the mark had become distinctive by user and the Registrar should, therefore, proceed with the application. In the Application by the Shields Ice & Cold Storage Co. Ltd. ((1940) 40 R P C 197) the Chancery Division held that the mark "Time Brand" was not so essentially geographical as to justify the refusal of registration. The last case relied upon by Mr. Zari is the decision of the High Court of Australia in Joseph Bancroft & Sons Co. v. Registrar of Trade Marks ((1957-58) 99 C L R 453) which decided that the mark "Miss America" had no direct reference to the character or quality of textile products, particularly rayon fabrics, and the words were not according to their ordinary signification a geographical name or surname.
5. But, in my opinion, these decisions are not of any assistance in the present case. In the "Yorkshire Relish and Silver-pan" cases, the marks were held to be fancy names or invented words. In the Shields Ice & Cold Storage Co. Ltd.'s case, and that of Joseph Bancroft & Sons, the words "Tyne brand" and "Miss America" were held not to be geographical names. In the "Itala" case, the decision seems to have been influenced by the fact that the mark had been adopted from the geographical name Italy, and was, therefore, treated as an invented word. Wotherspoon v. Currie was decided on the common law rule that offer for sale of goods as possessing some connection with a particular trader, which they do not in fact possess, is an actionable wrong.
6. Except the Shields Ice & Cold Storage Co. Ltd.'s case, which was decided in 1940 (the decision in Joseph Bancroft & Sons, being an Australian decision is not relevant on this particular argument), all the cases relied upon by the appellants were decided before the Trade Marks Act, 1938 came into force. Before this date, inherent distinctiveness of a mark was not a requirement for its registration. It will be, useful here to reproduce the relevant provisions of the various English enact- -ments on Trade Marks before the Trade Marks Act, 1938 came into operation.
7. Section 10 of Registration of Trade Marks Act, 1875 stated as follows :- "10.-For the purposes of this Act A trade mark consists of one or more of the following essential particulars ; that is to say; A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner ; or A written signature or copy of a written signature of an individual or firm ; or A distinctive device, mark, heading, label, or ticket ; and there may be added to any one or more of the said particulars any letters, words, or figures, or combination of letters, words, or figures ; also."
8. The Registration of Trade Marks Act, 1875 was replaced by the Patents, Designs and Trade Marks Act, 1883. The section of this Act relevant on the point in consideration was section 64 which was in these terms :- "64. (1)-For the purposes of this Act, a trade mark must consist of or contain at least one of the following essential particulars
(4) A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner ; or
(b) A written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark ; or
(c) A distinctive device, mark, brand, heading, label, ticket, or fancy word or words not in common use.
(2) There may be added to any one or more of these particulars any letters, words or figures, or combination of letters, words or figures or of any of them.
(3) Provided that any special and distinctive word or words, letters, figures, or combination of letters or figures or of letters and figures used as a trade mark before the thirteenth day of August one thousand eight hundred and seventy-five may be registered as a trade mark under this part of this Act."
9. The Patents, Designs and Trade Marks Act, 1888 substi--tuted a new section for section 64 of the 1833 Act. The material part of this substituted section is subsection (1), which was as follows :- "64 (1).-For the purposes of this Act, a trade mark must `consist of or contain at least one of the following essential particulars.
(a) A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner ; or
(b) A written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark ; or
(c) A distinctive device, mark, brand, heading, label, or ticket ; or
(d) An invented word or invented words ; or
(e) A word or words having no reference to the character or quality of the goods, and not being a geographical name'."
10. The Patents, Designs & Trade Marks Acts of 1883 and 1888 we a repealed by the Trade Marks Act, 1905. The material provision of this Act is section 9, the relevant parts of which were as follows "9. A registrable trade mark must contain or consist of at least one of the following essential particulars :-
(1) The name of a company, individual or firm represented in a special or particular manner ;
(2) The signature of the applicant for registration or some predecessor in his business;
(3) An invented word or invented words ;
(4) A word or 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 a surname ; or
(5) Any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the above paragraphs (1), (2), (3) and (4) shall not, except by order of the Board of Trade or the Court, be deemed a distinctive mark Provided always that any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a trade mark by the applicant or his predecessors in business before the thirteenth day of August one thousand eight hundred and seventy-five, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application for registration, shall be registrable as a trade mark under this Act.
For the purposes of this section 'distinctive' shall mean adapted to distinguish the goods of the proprietor of the trade mark from those of other persons.
11. The 1905 Act was replaced by the Trade Marks Act, 1938 which is still in force. Section 9 of this Act, which corresponds to section 6 of our Act, is as follows :- "9.-(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register in must contain or consist of at least one of the following essential particulars ;
(a) the name of a company, individual, or firm represented in a special or particular manner ;
(b) the signature of the applicant for registration or some predecessor in his business ;
(c) an invented word or invented words ;
(d) a word or words having no direct reference to the character or quality or the goods, and not being according to its ordinary signification a geographical name or a surname ;
(e) any other distinctive mark, but a name signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d) shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness.
(2) For the purposes of this section 'distinctive' means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally, or where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which-
(a) the trade mark is inherently adapted to distinguish as aforesaid ; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.
12. It will thus be seen that before 1905, there was no statutory test of distinctiveness of a mark for the purpose of registration. It was the Trade Marks Act, 1905 which required I the Tribunal to take into consideration the extent of user as the test of distinctiveness. But this distinctiveness was distinctiveness in fact, and to this requirement the 1938 Act added the further condition of inherent adaptation of the mark to denote any particular goods. Thus the decisions before 1938 are no longed good authority for the proposition that distinctiveness in fact by, long user is sufficient compliance with the statutory tests for the registration of a trade mark.
13. The correct principle, in my opinion, has been enunciated in Registrar of Trade Marks v. W. & G.
Du Cros (LR (1913) A C 624) in which Lord Parker said --- ---But the tribunal is not bound to allow registration even if the mark be in fact distinctive. A common law mark is still not necessarily registrable. If the tribunal finds that a mark is anywhere, or among any class of people, in fact distinctive of the goods of the applicant, it may be influenced by this fact determining whether it is adapted to distinguish these goods from those of other persons, but distinctiveness in fact is not conclusive, and the extent to which the tribunal will be influenced by it must, in my opinion, depend on all the circumstances, including the area within which and the period during which such distinctiveness in fact can be predicated of the mark in question.---
14. Two other cases which are directly applicable to the determination of the point under consideration are :-
(1) A. Bailey & Co. Ltd. v. Clark, Son & Morland, Ltd. (1938) 55RPC253.
(2) Yorkshire, Copper Works Limited's Application (1954) 71 RPC 150.
15. In A. Bailey & Co. Ltd. v. Clark Son & Morland, Ltd. The question was of the expungement from the register of the trade mark "Glastonburys". Glastonbury is the name of a town and this word with the addition of "s" was registered as the respondent's trade mark for sheepskin goods. It was assumed that the word had become associated by user with the respon--dent's goods. But it was held that distinctiveness in fact is not conclusive upon the question whether a mark is distinctive. Both Lord Atkin and Lord Russell of Killowen said that though the word was distinctive in fact, it was not "adapted to distinguish". Lord Russell of Killowen further observed :- "With the Mark on the Register, no person who manu--factured slippers in Glastonbury or sold slippers manufactured by some one else in Glastonbury, could advertise his goods as being what in fact they were, namely, Glastonbury slippers. It is no answer to say that the appellants can notwithstanding the registration, continue their practice of making their goods as `made in Glastonbury'. They, and any future manufacturers of slippers in Glastonbury, and their respective retail customers, ought not to be hampered or restricted, by the presence of this Mafik upon the Register, in selecting the particular form of words by which they desire to describe their goods as being products of a town which enjoys a reputation in connection with the manufacture of sheepskin slippers,"
16. In Yorkshire Copper Works Limited's Application, Lord Asquith of Bishopstone, referring to section 9(3) of the English Trade Marks Act, 1938, observed as follows :- "Subsection (3) is designed to help the Registrar to deter--mine when the requirements of subsection (2) are satisfied. It provides that in so determining the Registrar `may' and I think `may' here means `must' or the subsection in nugatory must have regard to two factors and to their `extent' : the extent, namely, to which
(a) the trade mark is inherently adapted to distinguish as aforesaid ; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid".
The noble Lord further observed that distinctiveness as a whole would depend on the combined answers to factors (a) and (b). Section 9(3) of the English Act is in identical terms with sub-- section (3) of section 6 of our Act. I would venture to state that the observations of Lord Asquith would be the correct enunciation of the rule as to distinctiveness under our law also.
17. In the present case, the Assistant Registrar has assumed that the mark acquired distinctiveness by user, but he has taken the view that the mark was not adapted to distinguish, by which I understand him to mean that there was no inherent distinctive--ness in the mark, and that the word "Punjab" was not inherently adaptable to distinguish the appellant's goods. It is clear from the above discussion that the name of a geographical place, unless it be the name of an insignificant place, is generally incapable of being appropriated as a trade mark because it is not adapted to distinguish the goods of one producer in that area from that of another in the same area. The Assistant Registrar had the discretion to decide whether inherent distinctiveness was present in the word "Punjab" in relation to the appellant's goods and I cannot say that in determining that there is no inherent, adaptability in this word, he has come to a wrong conclusion.
18. For these reasons I dismiss the appeal but make no order as to costs, because no appearance was made by the Registrar in these proceedings.