1. A. S. CHOWDHURY, J.-This appeal calls in question an order made by the Deputy Registrar of Trade Marks, Chittagong, on the 17th March 1965, refusing registration of the Trade Mark of the appellant and it arises in the following circumstances The appellant, Pakistan Medical Supplies, prayed for registration of a Trade Mark consisting of a label in respect of medicine is Class 5. The Trade Mark consists of three letters "P. M. S." printed in a letter-cross device within an encircling border. It is alleged that the appellant has been using the Trade Mark since 1957, and the application for registration of the Trade Mark was submitted on 24- 8-59, the Number of the application being 31365. The application was registered nearly two years after the filing of the same. It was advertised in the Trade Mark Journal No. 128 on 1-9-61.
2. The opposition to the Registration was entered by the respondent firm called Farbenfabriken Bayer A. G. Of Leverkusen --Bayerwerk, West Germany. The opposite-party claims that the trade mark of the appellant should not be registered as the respondent uses a trade marks consisting of the word "Bayer" in a world famous letter cross-device which has been registered by them in Pakistan No. Being 13052 in respect of all the goods in the same Class, namely, Class 5. It is claimed that it is unique and has been in use throughout the world including the territory now in Pakistan. It is further asserted "we claim to be exclusively entitled to the mode of representation thereof, viz. Conformed within an encircling border". It was further stated that the registration of the said mark would affect the reputation and goodwill of the respondent firm built up throughout the world including Pakistan over a number of years, and it was also urged that the registration of the appellant's trade mark was likely to deceive the public and cause confusion in the public mind in that they would take the said trade mark as that of the respondents.
3. The appellant, however, founded its claim on the two marks being dissimilar and that the so-called letter cross device did not give the respondent any monopoly. It was also denied that there would be any confusion or deception in the public mind.
4. Some affidavits were filed by the parties in support of their respective claims. The appellant firm filed ten affidavits including the one affirmed by a partner of the appellant firm.
5. The Registrar of Trade Marks, on a consideration of the materials placed before him and also the relevant statutory provisions, reached the conclusion that the appellant was not entitled to the registration of his trade mark, unless it was amended within six weeks from the date of communication of his decision to the effect that the trade mark "P. M. S." would be restricted to a single line horizontally.
6. Mr. Asrarul Hossain appears for the appellant Pakistan Medical Supplies. The respondent is represented by Mr. S. M. Hussain.
7. Mr. Asrarul Hossain's contention is that the condition imposed by the Registrar is unreasonable and has no lawful authority, inasmuch as the trade mark sought to be registered does not come within the prohibition laid down in sections 8 and 10 of the Trade Marks Act (hereinafter called the Act).
8. Mr. S. M. Hussain, learned Advocate for the respondent firm on the other hand. Strenuously urges that it comes with the prohibition of section 8 by reason of its being likely to deceive or cause confusion in the public mind.
9. The substance of the statements made by Mr. Alfred Roehder is that their trade mark has earned world-wide reputation and is registered in Pakistan and that firm has always jealously guarded its rights in the said cruciformed device. He has also referred to a number of medicinal goods manufactured by the respondent firm which are in circulation in Pakistan, to name only a few Resochin for the treatment of Amoebiasis, and Restren for the same disease and Periston, Campolon, Luminal and Mitigal, etc. It is stated therein that on the opposition of this firm the registration of several trade marks of Shahani Company-written in a letter-cross device within a circle has been refused and they have been amended showing the trade mark in one line horizontally only. It has also mentioned a number of such marks opposed by it in India.
10. Respondents have filed another affidavit affirmed by one Abdul Hossain Khan in which it is stated that the respondent's "device is very leading and important feature of the label or packing and at once indicates that it is a product of Bayer and of no other person". The deponent who is carrying on business as chemist and druggist also averred to the effect that a purchaser generally asks for the medicine by the trade mark; but nevertheless he also looks out for the Bayer letter cross- device. It will, therefore, appear that according to this deponent the purchaser asks for the medicine by its name. If that is so, it is not understood how this is helpful to the opponent, for, when a purchaser asks for a medicine by name, he gets the medicine of that name. Merely, because he looks at the trade mark, it can not be concluded that he would take the medicine of some other name if the trade mark would be similar.
11. Dr. Mosharraf Hossain Joardar, who describes himself a a medical practitioner says : "If I prescribe a few REFAGAN tablets I tell the patient to look out for the tablet of Bayer wbich I want him to use."
12. This also does not appear to be of any avail to the respondent for the patient of the depondent would then ask for the Refagan tablets manufactured by the respondents-firm and if he looks out as advised by him for the trade mark of "Bayer" then he would look for "Bayer" and not "P. M. S."
13. Maswoodur Rabman who has been carrying on the business of pharmacist and druggist also averred to the effect that "purchasers who ask for medicines from my shop across the counter under names, often also look to see if it has the letter cross device on the packing or labels as to be sure that it is the medicine made by Bayer". It will therefore appear that the purchasers ask for the medicine and in addition to checking up the name of the medicine would also examine if the trade mark of "Bayer" was there. Therefore, it is not trade mark alone but the name also is examined by the purchasers. He then proceeds to say that illiterate persons mazdoors, cultivators and persons of the lower income group come to his shop to buy some common and ordinary medicine such as tablets or headaches or bodily pain. If they ask for a few' tablets, he offers them a variety including Cafiaspirin tablets; they generally select the Cafiaspirin tablets because they have the letter cross- device embossed on them. He therefore thinks that the people would be led away by the similarity of the letter cross-- device of the applicant. If the statement of this witness is to be accepted then the position would be that the medicine by "Bayer" firm can be purchased by illiterate person for a disease for which it is not meant, for the purchaser would select it only by looking at its letter cross- device. If the purchaser is depending on the selection of the druggist, then it would be his duty to point out to such illiterate persons as to what medicine is for what purposes and for what disease.
14. Registrar is concerned with the people of ordinary prudence and intelligence and not with unwary public about whom the deponent is speaking in this statement.
15. As against the aforesaid statements made in support of the opposition of !He respondent firm the applicant had also filed several affidavits claiming that there would be no possibility of confusion in the mind of the public in the case of registration of the appellant's trade mark.
16. One Abdur Rashid Chowdhury in the affidavit affirmed by him Pays that he leas been purchasing the patent medicine of the respondent and to a appellant and he is not confused, for, he can easily understand the letter cross of "P. M. S." as distin--guished from that of "Bayer".
17. One Samiullah who described himself as registered medical practitioner says that he understands and recognises any medicinal and pharmaceutical preparation with P. M. S. Letter cross--device as the product of the appellant. He further says : " . . . . During the course of my Medical Practice I have not come across any instance where a patient, even an illiterate one who came to me for consultation and treatment, was misled and received and purchased a Medicine with Bayer letter cross --device (mistaking it for P. M. S. Device) and vice versa. Amulendu Castigir says he is "the Manager of the United Suppliers & Co. Has been doing business as chemist and druggist at 19-20 Sadarghat Road, Chittagong, for the last 12 years". He says that there has not been any single occurrence in his shop he: a even an illiterate customer was misled and purchased aproduct of P.
18. M. S. As that of Bayer and a product of Bayer as that of P. M. S. One Abdul Ghafur, a proprietor of Heera Pharmacy in the Government N-.w Market, has also stated that none has been misled and purchased a product of P. M. S. As that of Bayer and vice versa.
19. Nesar Ahmed has also stated : "I have never been misled and confused which made me purchase a product with letter cross Bayer for a P. M. S. Product and vice versa."
20. One Helal Uddin has stated to the effect that there has been no confusion about the medicine of the two manufacturers concerned in this appeal.
21. One Krishna Nanda S.1, who has also business as chemist and druggist has deposed that his customers have never complained about any confusion between the two trade marks and there was no possibility of any such confusion.
22. The respondent also filed an affidavit of Dr. M. I. Chaudhury in reply to the affdavit of Amalendu B.
23. Castigir asserting that Amalendu's firm is principally a firm of Importers and Wholesale Dealers and it does not deal in retail and therefore there was no possibility of his coming in direct contact with consumers.
24. Another affidavit has been filed on behalf of respondent firm by one Dr. N. L. Chakrabarty who deposes to the effect that Abdur Rashid Choudhury owns a medicine shop and he has special knowledge in this regard and is not an ordinary lay man.
25. He has also challenged the evidence of Md. Samiullah on the ground that he being a medical practitioner has special knowledge. His objection with regard to the affidavit of Helal--uddin is that his information is that he is a nephew of the appellant. He has deposed also to the fact that Md.
26. Nurul Hoque is also a nephew of the partner of the appellant.
27. Mr. Alfred Roehder has also affirmed an affidavit-in--opposition to the affidavits filed by the appellant and has reiterated his earlier statements and has also stated as to why the affidavits filed in support of the appellant's claim for registration would not be relied upon.
28. We have ourselves examined the trade mark sought to be registered, namely "P. M. S." and the one already registered namely "Bayer". It is asserted by Mr. Hossain appearing for the appellant and not opposed by Mr. S. M. Hussain representing the respondent- that the two trade marks are technically different. It is however urged by the learned Advocate for the respondent that there is a close visual resemblance between the two, whereas learned counsel for the appellant asserts that they are easily distinguishable and not likely to misled any one.
29. Learned Advocate for the respondent has urged before us that this trade mark has not been refused registration but it has been allowed with certain modification. According to him there is a difference between refusal of registration and allowing registration of a trade mark with modification. He asserts that the appellant has not been prejudiced by the amendment imposed on it and, therefore, his appeal should be dismissed. We are unable to accept this contention of learned Advocate for the respondent. In the absence of a legal bar the Registrar is not entitled to impose a condition arbitrarily or capriciously. He can impose such a condition when it is necessary in view of the prohibitions imposed by the statute in respect of Registration of a trade mark. He can also refuse when reasons direct him to do so and if an applicant for registration finds that a condition has been illegally or unreasonably imposed on him, he is entitled to prefer an appeal to this Court. This contention is, therefore, of no substance. Learned Advocate for the respondent further submits that there is a distinction between an objection raised by the Registrar himself and an objection accepted by him on the opposition of the holder of an earlier trade mark and in this case the Registrar accepted the opposition and therefore the order of the Registrar has to be scrutinised in the light of the objection raised by the respondent.
30. The position in law is that when the amendment is imposed the applicant is unable to get the registration in the manner proposed by him. If he accepts the amendment the matter ends there. If he does not accept the amendment he has a. Right to go on appeal with a prayer for changing the order of the Registrar or the Deputy Registrar as the case may be. It is not understood how there would be difference between a --condition imposed by the Registrar suo motu and a condition imposed by him at the instance of a party. In both the circumstances in order to uphold the condition it is to be shown that the direction of the Registrar is legal and reasonable.
31. Mr. S. M. Hossain argues that a discretion exercised by the Registrar cannot be interfered with, unless the order is clearly wrong or it is patently in error of law. We have already stated that we have ourselves examined the trade "Bayer" which is a word consisting of five letters. We have also considered the trade mark P. M. S. Consisting of three letters. They are phonetically different and their visual resemblance is not such as would warrant imposition of a condition. We have taken into consideration the possibility of people of ordinary prudence C being misled by the two trade marks. On a careful consideration of the two trade marks appearing on page 26 and page 1 of the paper book we are of opinion that they are visually different and there is no likelihood of the public being misled or confused.
32. The Registrar dealing with this matter has stated "Here though the two marks "Bayer" and "P. M. S." are admittedly dissimilar ,but the mode of representation of the two marks is common. It is my considered view that the applicant's letter cross-device is confusingly similar to the opponents' letter cross-device and this being an essential feature of the opponents' mark, as I have already found, the applicant's letter cross-device cannot be allowed to go on the register as there would be likelihood of confusion or deception."
33. We have taken into consideration the affidavits filed by both the parties and also noticed that no positive evidence of one single person having been confused by the circulation of the two trade marks, has been adduced in this case. Moreover, the fundamental principle involved in the case is whether there is likelihood of confusion in the mind of a purchaser of ordinary prudence. We do not understand how a purchaser while asking for a medicine by its name will be confused merely because another trade mark consisting of different letters would be appearing on a medicine bearing a different name. We are unable to accept the contention of Mr. S. M. Hussain learned Advocate for the respondent that we should not interfere with an order made in the discretion of the Registrar, for, fn this case we have found that this discretion has not been properly exercised.
34. The two trade marks being clearly different, the applicant's trade--mark should be directed to be registered.
35. For the reasons stated above, the appeal is allowed; the: impugned order dated 17-3-65 is set aside and the Registrar is directed to allow the registration of the appellant's trade mark.
36. There will be no order as to costs.
37. PLD 1958 Dacca 481 has not been able to produce the desired effect.
38. "We note with regret that this Department is not yet full alive to its duties and responsibilities. Such a long delay is not only detrimental to the interests of the company applying for registration of the trade mark but also of the parties who oppose such registration. We can only hope that we shall not have occasion in future to comment on the working of this Department. A copy of our judg-- ment may be sent to the Ministry dealing with the Department."
39. This observation was made ten years age. It is time that this Department should take effective steps in this behalf.