ZAFFAR HUSSAIN MIRZA, J.-This is a certificated Letters Patent Appeal and seeks to challenge the judgment of a learned Single Judge of this Court, whereby the learned Judge dismissed the present appellant's appeal under section 76 of the Trade Marks Act, 1940 (hereinafter referred to as "The Act"), which in turn was directed against the order dated 13.8.1963 whereby the Registrar of Trade Marks refused the request of the appellant for registration of his label.
2. Briefly the facts, relevant for the purpose of this appeal, are that, the appellant Burma Oil Mills Ltd, a joint stock company incorporated in Pakistan under the Companies Act, 1913, applied to the Registrar of Trade Marks, Karachi- for registration of a mark consisting of a label as their trade mark in class 29 in respect of "edible oils and fats". The mark was advertised before acceptance under section 15(1), proviso of the Act with a disclaimer of the exclusive use of the word 'Binolia'. In consequence to the advertisement, Messrs Bengal Oil Mills Ltd., Karachi, notified their opposi--tion to the registration of the mark, inter alia on two grounds that the mark 'Binolia' had such resemblance with a trade mark consisting of the word 'Benevell' (of which the opponents were the proprietors) as to be calculated to deceive and that the word 'Binolia' which was prominently displayed, in the label, being almost the same as 'Binola' (meaning in Urdu language cotton seed) both visually and phonetically, was descriptive of edible oil prepared out of cotton seed and as such it was not inherently adopted to distinguish. It was further contended, by way of opposition that, the dis--claimer would not prevent the mark being known by reference to 'Binolia' and this will, accordingly, mislead purchasers into the belief than it possesses trade mark value. But the Registrar, ruled out of consideration the objec--tions as of right, on the ground that the objecting party had filed a suit against the applicants in the Court to restrain use of the mark alleging the infringement of their trade mark, which was dismissed in default and no attempt was made to have it restored. Accordingly, he held this conduct to constitute implied consent to the use of the mark under section 22(2) of the Act. The Registrar, however, refused the application of the appellants, by his order dated 13-8-1963, on the ground that because of the prominent display of the word 'Binolia', which it occupies dominantly in the label, it was likely to generate a false impression among the members of the public that the feature possess trade mark value. Secondly, he took the view that the word 'Binolia' bears such striking resemblance with the word 'Binola' that it can be said to be descriptive of the raw material out of which edible oil, sold under the label, is manufactured and as such was not registrable as a trade mark. Aggrieved by the said order, the appellant came up in appeal to the High Court which was dismissed by a learned Single Judge of this Court as mentioned above and hence this Letters Patent Appeal.
3. Mr. Waheed Farooqui, learned counsel for appellant, in support of the appeal, challenged the correctness of the judgment passed by the learned Judge by reiterating his contention in support of the claim of the appellant for registration of the mark. He, firstly, contended that 'Binolia' was an invented word and would, therefore, be permissible to be registered as a trade mark under section 6(l)(c) of the Trade Marks Act, 1940. His next contention was that in view of the disclaimer by the appellant in regard to the said word, the remaining parts of the mark consisting as they do of the picture of a flower and a geometrical design, did not offend against any A provision of section 6 of the same Act. He also challenged the view taken' by the Registrar and affirmed by the learned Single Judge that the word 'Binolia' in its present form has direct reference to the character or class of goods to which it was applied.
4. Now the word 'Binolia' except for the letter ---i' in the last syllable has more or less direct reference to the word 'Binola' which in Urdu language means cotton seed and, we have no doubt, that the appellant can have no exclusive rights in the word 'Binola' or all the words of the class derived from or embodying the word 'Binola'. The question, however, is whether by the change in the last syllable of the word from 'la' to 'lie' the word 'Binolia' could be said to be an invented word.
The meaning of the phrase 'invented word' was considered by their Lordships of the Privy Council in the case of Decilde Cordora and others v. Vick Chemical Co. (PLD 1951 P C 108). At page 114 of the report their Lordships quoted with approval the observations of Mr. Justice Parker in Philipp Art v.
William Whitely Ltd. ((1908) 2 Ch. 274) to the following effect :- "To be an invented word within the meaning of the Act a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or, at any rate, any obvious meaning, to an ordinary Englishman. It must be a word having no meaning or no obvious meaning until one has been assigned to it."
Taking this as a guide for our purpose we have no difficulty in rejecting the contention that the word 'Binolia' is an invented word, for, it does obviously convey a meaning in the sense of the Urdu word 'Binola' and at any rate, it cannot be said that it possesses no obvious meaning to the common man. The variation in the so-called adopted word is so insignificant that in our opinion, in course of time, 'Binolia' would come to be called as 'Binola' by the purchasers of the goods who would obviously comprise a large majority of common people having regard to the fact that the goods intended to be sold under the mark consist of edible oil, an essential commodity of ordinary use for almost every one in this country. It is not possible to accept that ordinary people, who would constitute the bulk of purchasing public can make such a fine distinction between the terminating syllable of 'la' and 'lia'. Such distinction can, if at all, be made by educated people who read terms and not merely refer to the goods by the sound of the name under which they are sold. We can with advantage refer to the case, strongly relied upon by the learned counsel himself in support of his argument, on other points, namely Magdalena Securities Ltd. ((1931) 48 R P C 477). In that case a trade mark with a word 'Ucolite' was sought to be registered and was opposed by another com-- pany having a registered trade mark 'Coalite'. While, rejecting the contention that the proposed trade mark bore no resemblance with the registered trade mark, the learned Judges of the Chancery Division, at page 486 of the report, made the following observation:- "Now 'Coalite' as a written word is, I think, not at all like 'Ucolite' having regard to the way it is spelt, and can not conceive myself an educated man having any difficulty in distinguishing between the written word 'Coalite' and the written word 'Ucolite'. I think how--ever, if they are regarded as written words, referring to fuels there is not really very much distinction between them. And, further, I think I must bear in mind this, that, as spoken, they do resemble each other less you in each case throw back the accent to the first syllable and although it is true to say that an educated man seeing the word 'Ucolite would probably pronounce it with the assent on the 'U', 1 have no reason to think that throughout the country in different parts of England, Scotland and Wales, it would be so pronounced and I am bound to say on the evidence before me that I think it is exceedingly likely it would not universally be so pronounced. If you pronounced 'Ucolite' with the accent substantially on the second syllable you get a resemblance to 'Coalite' which, it is perfectly plain, might conceivably lead to confusion and coming from the mouth of the ignorant people or people who are not particularly well educated, it might well lead to regrettable mistakes."
On parity of reasoning, therefore, we are of the opinion that the same perhaps would govern the question whether the word 'Binolia' is an invented word or a word carrying a meaning to the ordinary man. We have, there--fore, come to the conclusion, as stated above, that ordinarily the word "Binolia" would mean 'Binola' (Cotton Seed) and, therefore, it is not an invented word within the meaning of the Act.
5. Taking up the next contention of learned counsel for the appellant we entirely agree with the view taken by the Registrar and the learned Single Judge that the word 'Binolia' occupies such prominent position in the mar that it is likely to generate an impression in the minds of public that the same constitutes the trade mark of the appellant. It must be remembered that in the entire label the only word appearing is 'Binolia', and there is no controversy that by itself the word could not be registered as a trade mark. If the word 'Binolia' is excluded the only remaining distinctive mark would be the picture of a flower and the geometrical design, which cannot be said to be indicative of the goods sold under the label. The learned Single Judge,` therefore, had added an observation, while dismissing the appeal, that the Registrar will consider the case of the appellants if rose is made the trade mark and the word 'Binolia' is displayed insignificantly in it. We think that this observation eminently safeguarded the rights of the appellant and he should have been satisfied with the decision. Mr. Farooqi, however, has relied upon the case of Magdelina Securities Ltd. Mentioned above, in this connection. We do not find anything in it which supports the learned counsel in his submission. He perhaps relied upon the observations of the learned Judge, who while dismissing the appeal had said that on the date of the application there was no intention on the part of the applicants to use the word 'Ucoliate' as a trade mark. But since the final result of the case went against the applicant in that case, we fail to understand now these observa--tions would really be applicable in the present case. Mr. Farooqi then relied upon the case of Garrett ((1916) 33 R P C 48). In this case, the applicant-firm sought registra--tion of 'Ogee' as a trade mark, but their initials were 'O. G. & Co '. The registration was refused on the ground that the mark was a mere spelling of the letters 'O. G.', the initials of the applicants' trade name. Upon a finding that 'Ogee' is a dictionary word having a meaning and having regard to the long use of the word by the applicants, in connection with other class of goods as registered trade mark, the registration was allowed on the applicant's disclaiming the exclusive rights to the letters 'O. & G.' However, we think that the facts of the present case are distinguishable and the case is not a precedent on any principle attracted in the present case. The decision there turned on the question of facts and on the merits of that case and no legal principle was enunciated for general determination. In the present case the facts are not that the mark applied for has been used for a long time by the appellants as a registered trade mark in connection with the goods of some other class.
6. No other argument was advanced at the bar. And in the result this appeal fails, Subject to the observations, therefore, of the learned Single Judge to the effect that the Registrar will consider the case of the appellant if rose is made a trade mark and the word 'Binolia' is displayed insignificantly in it, this appeal is dismissed with costs.