1. A. S. CHOWDHURY, J.-The order passed by Mr. M. H. Rahman, Deputy Registrar of Trade Marks on the 15th August 1966 rejecting the Application No. 34745 for registration is called in question in this appeal which arises in the following circum--stances: The appellant Messrs Zenith Laboratory (Pak.) Ltd. Applied for registration of the words `Zenith's Livatogen' and the letter `Z' appearing on a carton in .Class-5 in respect of medicine.
2. This application was filed on 14-6-61. It appears that it was advertised in the Trade Marks Journal No. 154 dated 1-11-63. It is not known why advertisement of the application took more than two years. At any rate the respondent No. 1 Messrs British Drug House Ltd., submitted an application on 18-9-64 opposing the registration of the Mark `Zenith's Livatogen' on the ground that the respondent is the registered proprietor of several Trade Marks in Pakistan including the Mark "Livegen" word per se. It is stated that the said word was registered on the 14th December 1942, number being 9214. The 'respondent No. 1 asserted that their "Trade Mark `Livegen' had acquired fame and popularity almost throughout the world" and that it has also substantial goodwill and reputation in the principal world markets. It is further contended that the Trade Mark sought to be registered consists of a label with some descriptive matter, the prominent feature being the word "Livatogen" which is claimed to be similar to the Trade Mark of the respondent No. 1, and that it would inevitably lead to confusion and deception. The appellant's goods would be purchased by the public under the impression that they were the goods of the respondent No. 1. On these grounds it was claimed that the -Trade Mark in question cannot be registered in -view of the provision of sections 8(a) and 10(1) of the Trade Marks Act.
3. The Registrar, respondent No. 2 on a consideration of the materials placed before him and the relevant conditions and circumstances, reached the conclusion that the two marks being similar confusion was likely to be created in the minds of the public. The prayer for registration was accordingly refused and the application rejected.
4. Mr. A. R. Khan, learned Advocate for the appellant submits that the Deputy Registrar fell into an error in thinking that the two marks are similar and his grievance particularly was the failure of the Deputy Registrar to consider his clients' Trade Mark as a whole. He elaborates by saying that the Trade Mark in question is not hit by section 8(a) of the Act.
5. Now we read section 8 :- "8. 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 (a),by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of jurisdiction ; or
(b) be likely to hurt the religious susceptibilities of any class of His Majesty's subjects; or
(c) be contrary to any law for the time being in force or to morality."
6. We are concerned in this case only with clause (a) of section 8.
7. It will, therefore, be seen that the prohibition of registration is applied to a Trade Mark which is `likely to deceive or to cause confusion". It is not necessary that there must be evidence of actual deception or confusion. It is true if such evidence is forthcoming that would support the refusal . Of registration on the ground of likelihood of future deception or confusion. But even in the absence of such evidence, if it appears to the registering 4 authority that a Trade Mark sought to be registered is likely to deceive or cause confusion it would plainly be the duty of the, Registrar to refuse registration in such a case. It is therefore to be considered if there is a likelihood of the public being deceive or confused in case of registration of the Trade Mark. In the case before us the word sought to be registered is "Livatogen". The word which is already in the register is "Livogen". Mr. Khan's contention is that pronunciation of- the two words is not similar. He has also pointed out insertion of two letters "at" between letters "V" and "O" of the respondent's Trade Mark.
8. The notice of opposition filed by the respondents shows that they obtained the Trade Mark No. 9214 on the 14th December 1942, and it is admitted by the appellant in the counter statement filed on the 3rd November 1964 by its agent Shafiul Alam that the respondent No. 1, is the registered proprietor of the Trade Mark No. 9214 consisting o--- the weird `Livogen`. The appellant, however, denied that the respondents Trade Mark acquired goodwill and reputation in the markets-in Pakistan.
9. Mr. Harold Treves Brown. Who describes himself as a Director and the Secretary of the respondent- company affirmed all affidavit on the 18th December 1964, in which he gave an account of the sale of goods bearing his company's mark `Livogen' in Pakistan since 1948. In that affidavit it is asserted that the respondent No. 1 sold goods of the value of -- 2824 to -- 8,174. Similarly it is stated in an affidavit affirmed by William Spiers Black on the 25th May 1965, that the goods bearing the Trade Mart `Livogen' had considerable sale in West Pakistan and that varying from Rs. 62,716.50 paisa to Its. 88,418.00 were earned in different years beginning from 1956 to 1062. AA affldavit- affirmed by Mr. Syed Manzoor Alain, Manager of Spencer & Co. (Pakistan) Ltd. Stated: "That the Trade Mark Livogen is used and has been used for a very large number of years in Pakistan by the British Drug Houses Limited exclusively and has come to denote a reliable product of the highest quality and excellence throughout medical circles in Pakistan."
10. He has further deposed :--_ "That I give below the turnover in sales of Livogen during the past few years in East Pakistan :- Years Value Sales 1958 -- 6,200 Rs. 1,72,980.00 1959 -- 2,944 Rs.54,780.00 1960 -- 3,266 Rs.91,125.00 1961 --1,320 Rs.36,860.00 1962 929 Rs.25,940.00 Because of import restrictions no sales of Livogen were possible after 1962/1963."
11. There is a general denial about the sale proceeds of goods of the respondents in paragraph 13 of an affidavit affirmed by Santi Lal Gupta a Director of the appellant's firm on the 8th December 1965.
12. It is stated therein:- "That my company emphatically denies the annual value of sales of goods of the opponent- company given in para. 5 of Brown's affidavits."
13. The statements made in the affidavits filed on behalf of the respondent No. 1 in regard to the sale of its goods both in East and West Pakistan have been denied by the appellant.
14. On a consideration of the materials placed before us we are satisfied that the Trade Mark of the respondent No. 1 was registered in 1942 and that it has a large circulation in both the wings in Pakistan. . That being so, it is now necessary to consider if the public would be confused by the Trade Mark 'Livatogen' against which protection is sought under the Act. The words `Livogen' and `Livatogen' are, in our opinion, likely to create confusion in the public mind and a purchaser of ordinary prudence is likely to be deceived.
15. It is interesting to note that New Light Chemical Industries also sought permission for registration of a Trade Mark wnich is similar to the Trade Mark 'Livogen' of the respondent-company. In that case New Light Chemical Industries sought registration of the Trade Mark `Livergin'. A Division Bench of this Court upheld the order of the Registrar refusing to grant registration to `Livergin'. This case of New Light Chemical Industries v. Registrar of Trade Marks and another (PLD 1963 Dacca 75). Mr. Haider Mota, learned counsel for the respondent No. 1 submits that in that case two letters were inserted after the letter `V' of the trade mark 'Livogen', but the learned Judges found `Livergin' and `Livogen' similar and he finds no reason why `Livatogen' should not also be considered to be similar to Livogen'. In the case referred to above Akbar, J. As his Lordship then was, observed :- "In our opinion, there is both a visual and phonetic resemblance between the words 'Livergin' and `Ligoven'. It seems to us that in: this case there is an attempt to have a name which approximated to the name associated with the products of another Company. We are, therefore, of opinion that the resemblance between the two Marks being clear and obvious, the Registrar was justified to hold that the applicant's Trade Mark was likely to lead confusion."
16. Mr. Haider Mota, learned counsel for the respondent has rightly contended that the above observation is applicable in all force in respect to the two words with which we are concerned, namely, 'Livatogen' and `Ligoven'. It is true that the word `Livergin' is closer to the word 'Livogen' but it is also true that there is also likelihood of confusion between `Livatogen' and `Livogen'.
17. "An average purchaser would therefore be likely to think that the respondents Gluvita Biscuits' were made with the appellant's `Glucovita' glucose. This was the kind of Trade connection between different goods which in the `Black Magic' case (in re : an application by Edward Hack) 1940-58 R P C 91 was taken into consideration in arriving at the confusion or deception."
18. "The commodities concerned in the present case are so connected as to make confusion or deception likely in view of the similarity of the two trade marks."
19. We are also of opinion that similarity between `Gluvita' and `Glucovita' is of the same nature as between `Livatogen' and `Livogen'. We are, therefore, clearly of opinion that the Registrar has rightly refused registration acting under clause (a) of section 8 of the Act.
20. Subsection (1) of section 10 prohibits registration of identical or similar Trade Mark in respect of any goods or description of goods which is identical with a Trade Mark belonging to a different proprietor or which shows resemblance of such Trade Marks as is likely to deceive or cause confusion. In the case before us it appears to us that the two Trade Marks are similar and they are in respect of the same goods, namely, medicine under the same description. In considering as to whether a confusion is likely to occur we have to borne in mind as to whether such a confusion would occur in the mind of a man of ordinary prudence.
21. Lastly, a prayer was made for granting registration by imposing condition as provided in subsection (2) of section 10 of the Act which reads as follows:-- "(2) In case of honest concurrent use or of 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 trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods subject to such condition and limitation if any, as the Registrar may think fit to impose."
22. It will therefore appear that in a case where the Registrar finds himself unable to grant registration he may, in his discretion, permit registration of such a Trade Mark subject to such condi--petition as he may consider necessary. This is an enabling provision by which the Registrar in his discretion may grant registration by imposing condition. In doing so he is to bear in mind the provisions of section 8 and section 10(1). He has also to remember as to whether the case in which such discretion is sought to be exercised in favour of the applicant it could claim honest concurrent use of the Trade Mark. In the case the respondent Trade Mark was registered in 1942. The appellant's Trade Mark is sought to be registered in 1961 and it is asserted 1 that it was in use since 1954. On the admission of the appellant it will appear that the appellant started to put the medicine called `Livatogen' into circulation about 12 years after the registration of the respondent's trade mark. The affidavit filed on behalf of the respondent would show that the medicine called `Livogen' was in circulation in Pakistan since 1931. It is true it was registered in 1942 but the affidavit would indicate that in the territory now included in Pakistan the medicine was in circulation since 1931. There is no statement to the effect that the appellant was unaware of the circulation of the respondents goods in Pakistan. It is, therefore, difficult for us to say that there was an honest and concurrent use by the appellant of his goods and subsection (2) speaks of exercising the discretion in the case of honest concurrent use. It is true such discretion may also be exercised in other special circumstances. But it appears to us that there is no such special circumstance in this case. At any rate, it is not possible for us to say that the Registrar was bound to exercise his discretion under subsection (2) in this case. This contention of the learned Advocate is also of no substance.
23. For the reasons stated above, the appeal is dismissed without any order as to costs, the impugned order of the Registrar calls for no interference and it is hereby maintained.
24. A. H. KHAN, J.-I agree.