1. WAJIHUDDIN AHMED, J.- Before the Registrar, legislation of words "BORIS BECKER" in Class 28 (i.e. Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees) was sought, the words under quote, appearing in capital letters. Registration was refused under Section 6(1) (a) of the Trade Marks Act, 1940, on &e ground that the proposed mark signified an individual's name.
2. In appeal Mr. Abdul Hameed Iqbal has urged that the well-known tennis star, whose affidavit in support the application for registration was submitted, does not go by the name MBORIS BECKER" but was christ-ened, "BORIS FRANZ BECKER", which aloab for the purposes of Section 6(l)(a), was the individual's name and the mark, tight to be registered, having thus been rendered only to be part of a name, section 6(1) (a) was not attracted and representation in a special or particular manner was not called for, the true provision attracted being Section 6(l)(d). The mark qualified to proceed to registration because with reference to the provision last mentioned, it had no direct reference to the character or quality of the goods and was not, in its ordinary signification, a geographical name, surname or the name of a sect, caste or tribe in Pakistan. It would be convenient here to reproduce the five applicable clauses in Section 6(1) of the Trade Marks Act, 1940, which are as follows: - NS. 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 goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan; and
(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."
3. At the outset I would not like to be detained by the implication of the words "in Pakistan", occurring in the reproduced clause 6(1)(d) above or their impact on the contention that surnames prevalent outside Pakistan are registrable here and would suffice to reproduce what I had said on the subject in the case of MORPHY RICHARDS LTD. VS. THE REGISTRAR OF TRADE MARKS, (Miscellaneous Appeals 55 & 56 of 1991). Such is as below: - "Thus stated, it appears that in so far as the full name of a person (individual's name) is concerned no registration is permissible unless there is a representation in the way of the mark in a special or particular manner. That restriction does apply to such portion of the individual's name as may be termed his surname. In the last- mentioned case, however, the surname should have no direct reference to the character or quality of the goods proposed to be covered by the mark nor should such, in "its ordinary signification" be a surname as such. This is how the law stands in England: Section 9(l)(d) of the (English Trade Marks Act, 1983, which was the precursor of section 6(1)(d) in our statute stood thus: "9(1) (d) a word or words having no direct reference to the character or quality of the goods,\md not being according to its ordinary signification, a geographies name or surname".
2. Now, reproducing Section 9(l)(d) above, in the promulgation of the Trade Marks Act, 1940, the phrase, "or the name of a sect, caste or tribe in India" was added in Section 6(l)(d) therefore, the word "India" being substituted by "Pakistan" in 1949. The Supreme Court of Pakistan in the KALLE case ibid has opined that the words "in Pakistan" occurring in Section 6(l)(d) of the Act control not merely the words "sect, caste or tribe", limiting these to Pakistan only but also the pre-existing words in the English statute upon which our enactment draws namely, "a geographical name or a surname" and restrict each of them also to the terrain of Pakistan. With all respect, it is humbly submitted that such may not be correct either on the phraseology used or on principles of construction. It would seem that the word "or" is used as a disjunctive before the phrase "the name of a sec t, caste or tribe in Pakistan" and it is only the name of a sect, caste or tribe in Pakistan registration of which is precluded and correspondingly not that subsisting exclusively outside this country. This becomes clearer when the words "in Pakistan" are focused. If the legislative intent was also to restrict registration to surnames prevalent in Pakistan only, words like prevalent, in. Use etc. Could be grammatically in order. Besides, an enactment on Trade Marks is essentially an international statute, catering to national and international sensibilities and a surname is a surname wherever it is in vogue. We are living in an information age where the Earth has veritably become a global village. Similar may be the connotations of "a geographical name" and there may be hardly any thing as, a pure and simple, geographical name in Pakistan. This country plausibly shares a common geography with the rest of the world. Further, by the substitution of the word "Pakistan" for the word "India" could the legislature have intended that what was non-registrable till the 1949 amendment namely, a well known geographical name in India had upon the amendment also become registrable? Perhaps no. In my most humble view, it may be a total disregard of international norms to allow registration of well-known geographical names prevalent abroad. This should be equally so regarding common-place surnames current in the outside world. Such, therefore, may not have been the legislative intent. Even so pursuant to Article 189 of the Constitution all Courts in Pakistan are bound to follow the law declared by the Supreme Court. The error, if any, can be corrected at the level of the apex Court only. For the present and for our purposes, accordingly, a surname prevalent in Pakistan alone is precluded from registration and neither MORPHY nor RICHARDS, in its ordinary signification, is a surname prevalent in Pakistan.
3. However, what has been sought to be registered is a combination of two names and either or both could be a personal name as well as a surname and conjointly may be employed as name of an individual, firm or a company. Thus, while it may be debatable that two surnames could be registrable as one mark, in spite of the Supreme Court dictum, being non-prevalent in Pakistan, only one surname being logically permissible, the fact remains that the appellants can still fall back on registration of then- own name pursuant to section 6(l)(a), if they so choose and offer it, as expressed in a special or particular manner."
4. In the light of the reproduced observations, while the two ingredients of the name "BORIS BECKER" may, taken separately, be not surnames prevalent in Pakistan and thus, in view of the KALLE case, be, possibly, registrable as distinct entities, the ingredients taken together may signify an individual's name as indeed the German tennis star is popularly know. If so, the individual's name would not be registrable unless the conditionalities of Section 6(l)(a) in the Trade Marks Act are duly met and the name is "represented in a special or particular manner". More of this would be discussed below.
5. Another leg of the argument from the side of the appellant is premised on the fact that the mark in question has already proceeded to registration in Class 18 (viz. Leather and imitations of leather and goods made of these materials and not included in other classes; animal skine, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery). To be precise, the contention is to the effect that if the applied mark was fit for registration under class 18 such would be equally so for class 28, now invoked. The registrar has answered by declaring that two wrongs do not make a right. That is correct. On my part, however, I am tempted to think that the earlier registered mark, possibly, was represented in a special or particular manner, as per requirement of Section 6(l)(a) in the Act. Even so, it is a matter dependant on record whether an application of mind was made as to the aspect of the "special or particular" representation. If not, the question would stand disposed of on the conclusion of the registrar alone.
6. In support of the first contention afore-quoted, which too can be disposed of on the short ground already discussed, Mr. Abdul Hameed Iqbal, for the appellant, has drawn my attention to SINGER & CO. VS. REGISTRAR OF TRADE MARKS, A.I.R. 1965 Cal. 417, and an unreported case from this jurisdiction namely, GALILEO DISTRIBUTION SYSTEMS LIMITED VS. REGISTRAR OF TRADE MARKS (Misc. Appeal No.14 of 1990, decided on 8.4.1992). In so far as the Singer case is concerned, the mark involved there was "SAGAR" and was allowed to proceed to registration by the High Court at Calcutta on the ground that the word was not shown either to be a surname or a proper name and in its ordinary signification carried the meanings of "sea" or "ocean" in the vernacular. However, some observations were made in the case, which tend to support the stand of the appellant. Here, I refer to the following:- "Part of a name, it is rightly said by counsel for the respondents, is not prohibited by Section 9 of the Trade Marks Act, 1958".
7. Now Section 9 in the Indian Trade and Merchandise Marks Act, 1958, under which the case was decided, is comparable with Section 6 of our Act but sub- clause (d) of Section 9 in the Indian statute is much broader and runs thus:- "One or more 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 of a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India."
8. (emphasis added)
9. Comparing Section 6(l)(d) of our Act and Sub-clause (d) in Section 9 of the Indian Act, it becomes obvious that the comparable Indian provision precludes the registration not only of a surname but also of a personal name or any common abbreviation thereof, our legislation contextually merely prohibiting the registration of surnames. Upon the broader language of the Indian statute, it is difficult to understand as to how the Calcutta High Court could conclude, as it did in the Singer case, that part of a name was not prohibited from registration under the referred sub-clause(d) in Section 9 of the Trade & Merchandise Marks Act, 1958, prevailing in India. It will be recalled that in the case of Morphy Richards ibid it has already been demonstrated that the name of an individual, as contemplated by Section 6(l)(a), includes a personal name as well as a surname, of which, surname, as seen, is prohibited from registration under Section 6(l)(d) of our Act. Individual's name under Section 6(l)(a) is likewise precluded and may be registered only if represented in a particular or special manner.
10. Learned counsel's reference to the Galileo case (Misc. Appeal No. 14 of 1990) is without significance in that the learned Judge there merely referred to a submission of counsel pertaining to the Singer case from the Indian jurisdiction but did not think fit to make any comment thereon either of approval or disapproval. Such becomes clearer when it is seen that corresponding mention was also made to the Application of BENZ ET CIE to Registrar a Trade Mark, 30 RPC 177, where the learned Judges in the Court of Appeal expressly said that a name, unless individualised by adding due prefix to a surname, could not be registered, even if represented in a special or particular manner.
11. This was under a provision similar to Section' 6(l)(a) of the Pakistan enactment. The learned Judge's order of remand, in itself, was based on a different aspect.
12. On his part Syed Tariq Ali, the learned Standing Counsel, has relied upon the following discussion in K.S. Shawaksha's commentary on the Trade Marks Act, 1940, occurring at page 15 thereof: "It has been held also that the expression "name of an individual" includes a personal name. In other words, such names as John, Diana, David, Elsie, etc., are names of individuals and, if represented in a special or particular manner, would fall under this sub-section."
13. I would prefer to reserve comments on this till the concluding part of the judgment.
14. During the course of arguments, references, from either side, were also made to Application of BENZ ET CIE to Register a Trade Mark, Supra, and STANDARD CAMERAS LTD'S Application to Register a Trade Mark, 69 R.P.C.
125. The first of these cases involved registration of the proposed mark "BENZ" and the finding was that the word, being only a part of the company's name, or probably a surname, did not equal the name of a company or individual, but it was added that the decision would not prevent asking for registration thereof with a disclaimer or for an order that the word be deemed as a distinctive mark. The Standard Cameras case involved the registration of the words "ROBIN HOOD" and the High Court, in the circumstances of the case, allowed registration on the ground that the proposed mark was presented in a special or particular manner, which was an usual representation, struck the eyes and involved a substantial impossibility for an ordinary man, wishing to represent the name, to arrive at.
15. In the broad perspective of the case, reflected above, it seems to me that, for the purposes of Section 6(l)(a), it is not necessary that registration in a special or particular manner should be requisite only of an individual's full name for many a individuals may carry a similar but abbreviated full name in comparison with other, for example, an individual, as in this case, may have his full name as Boris Franz Becker, whereas another may have his full name merely as Boris Becker or even as Franz Becker, It thus follows that what substantially may appear to be an individual's name may be accepted as such by the Registrar an expression in a. Special or particular manner may be insisted upon together with compliance with other requirements of law.
16. As to surnames, it is such alone, Out of an individuals whole name, that may come up for registration under Section 6(l)(d) provided always that the relevant requirements are satisfied.
17. I would be reluctant, at this stage, to express any firm opinion whether the personal or proper name of a person would or would not be covered in the concept of an individual's name, occurring in Section 6(l)(a), though, I have no doubt in my mind whatsoever, that on the phraseology in the Indian enactment, roughly equivalent to clause (d) in our Section 6(1) namely, sub-clause (d) in Section 9 thereof, even such a portion would be covered by the prohibition but that clearly is not the legislative position in Pakistan and how our statute would be interpreted, when a case of that character arises, it would be nothing short of prejudging the issue to say anything more than necessary on the subject. All that may be said is, if what has been quoted from K.S.Shawaksha's commentary is good law and " a personal name" may be taken as equivalent to an "individual's name", as covered by Section 6(1) (a) of our Act, representation in a special or particular manner may be insisted upon, compliance alone ensuring registration. If the commentator's version be not acceptable, for no precedent is cited therein and the decision in the BENZ ET CIE case may be to the contrary, the word or words, constituting a "personal name", may be covered by Section 6(l)(e) in the Act, in the category of "any other distinctive mark" and registration would ensue only "upon evidence" of distinctiveness.
18. In the foregoing circumstances, this appeal must fail in so far as the registration in the manner presently sought is concerned. However, the appellant would be free, if so advised, either to reply before the Registrar or to seek modification of its application by offering the proposed mark, as represented in a special or particular manner and, if and when that occurs, surely, law will take its own course, including the procedural requirement of a fresh publication in the Trade Marks Journal in terms.