HAJI ABDUL RAHIM Versus ABDUL WAHID

This is an appeal under section 76 of the Trade Marks Act, 1940, from an order dated 18th of March 1968 passed by the Assistant Registrar of Trade Marks (claiming to be authorised under section 4(2‑8) of the Trade Marks Act, 1940) rejecting the appellant's application under section 46 of the Trade Marks Act for rectification of the register of Trade Marks by expunging the registrations of Trade Marks Nos. 40323 (DAIGON) and 40267 (DRAGON) entered in the name of the respondents.

2. Since both the appellants as well as the respondents were shown to be carrying on business at Lahore the present appeal was initially presented in the High Court at Lahore but eventually transferred to this Bench under the order of the Chief Justice dated 18th of September 1968.

3. The facts giving rise to the present appeal may briefly be set out as under

4. On the 19th of April 1951 the appellant applied to the Registrar of Trade Marks at Karachi for registration of a trade mark represented by the word "SAIGON". This application, it would seem, was based on a plea of user of the mark since the year 1947. On the 12th of December 1958 the aforesaid mark of the appellants was registered and sealed with effect from the date of application under No. 15618 in clause VII relating to sewing machines. The appellant had also applied for registration of a composite mark with the word 'SAIGON' set in a design. This latter application was presented on the 31st of October 1956 and sealed on the 30th of July 1958 under No. 26438. The appellant alleged that he has been continuously using and exploiting the aforesaid Trade Marks.

5. It would seem that on the 9th of November 1963 the respondents applied for registration of a trade mark represented by the word 'DAIGON' in respect of sewing machines manu factured by them. It is alleged that the learned Registrar, Trade Marks, Karachi without causing a search to be made amongst the registered Trade Marks for the purpose of ascertain ing whether there were on record, in respect of the same goods or description of goods, any marks identical with the mark sought to be registered or so nearly resembling it as to render it likely to deceive or cause confusion, and without notice to the appellant proceeded to register the said mark under No. 40323 in clause VII relating to sewing machines. Respondent also applied for registration of another trade mark represented by the word `DRAGON' also in respect of `sewing machines', and it is alleged that even this mark was, without recourse to the procedure of causing search, and without notice to the appellant, registered under No. 40267 in the same year 1963. It is not denied that these trade marks were, subsequent to the registration, published in the Trade Marks Journal.

6. The appellant's case is that it was on the 20th of August 1966 that he came to know for the first time of the registration of the respondent's Trade Marks from an advertisement appearing in the 'Kohistan' newspaper of even date. The appellant acted promptly by sending a legal notice to the respondent for protest ing against the use of ‑the trade marks in question, which according to the appellant, had such close visual and phonetic resemblance to his Trade Mark `SAIGON' as to render it likely to deceive or cause confusion of the respondent's goods with those of the appellant.

7. The appellant followed us the aforesaid legal notice with two rectification applications filed before the Registrar of Trade Marks on the 31st of August 1966 for expunging the entries made in the register with regard to Trade Marks of the respondent. It may be mentioned that this appears to have been the only course open to the appellant since an action in infringement was not available to them under law, the trade marks of the respondent having been already registered. The appellant alleges that as a measure of retaliation the respondent also filed two applications for rectification in respect of the appellant's word Trade Mark 'SAIGON' and his composite mark represented by the word 'SAIGON' set in a design.

8. All the four rectification applications were consolidated and the learned Assistant Registrar, Trade Marks, Karachi by a common order dated 18th of March 1968 dismissed them.

9. The respondents have not, chosen to come in appeal against the dismissal of their applications for rectification while the appellant has brought the present appeal against the same.

10. The view which the learned Assistant Registrar, Trade Marks has taken in dismissing the rectification applications preferred by both the parties is mainly that the words 'SAIGON' and 'DAIGON' are substantially dissimilar since their first syllables, namely, 'SAI' and 'DAP are different. He has further been impressed by the argument that the name 'SAIGON' is a well‑known geographical entity being the capital of a country and had assumed notoriety because of the present undeclared Vietnam War. Thus factor, according to the learned Assistant Registrar, eliminates the possibility of confusion between the two words. As regards the word `DRAGON' the learned Assistant Registrar was of the view that apart from the first syllable being different, the chances of its conflict with the word `SAIGON' were still remote as the former word was well known in its connotation of a mythical monster like a crocodile or a snake with wings and claws and often known to breath fire. The learned Assistant Registrar further felt complacently for tified in his view by the fact that the Trade Marks Registry had not considered it necessary to issue notice to the appellant at the time of accepting the marks `DRAGON' and 'DAIGON'. Nor was it thought necessary to advertise these marks in the Trade Marks Journal as marks proposed for registration consistent with the practice under section 14 of the Trade Marks Act, 1940. This circumstance, according to the learned Assistant Registrar was prima facie proof of the dissimilarity of the marks alleged to be in conflict.

11. Before proceeding to deal with the contentions raised by the learned counsel appearing for the parties I think it will be worthwhile to draw reference to sections 8 and 10 of the Trade Marks Act, hereinafter referred as the Act. Section 8 of the Act provides that no trade mark nor part of a trade mark shall be registered which consists inter alia of any matter the use of which would, by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice. Section 10 of the Act visualizes that no trade mark shall be registered in respect of any goods or description of goods which is identical with a Trade Mark belonging to a different proprietor or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. The question which, therefore, now arises for consideration is whether the Registrar acted rightly in according registration to the trade marks of the respondent in view of the two provisions cited above.

12. The learned counsel for the appellant has strenuously contended that both the words 'DAIGON' and `DRAGON' have such close visual as well as phonetic resemblance to the word 'SAIGON' that they were, in relation to sewing machines, bound to deceive the unwary purchasers and to cause confusion in the identity of the products bearing the said trade marks. This contention of the learned counsel for the appellant was met on behalf of the respondents by reference to the same reasoning as that since relied upon by the learned Assistant Registrar, Trade Marks in arriving at the conclusion that the respondent's trade marks did not conflict with those of the appellant. The learned Assistant Registrar had mainly proceeded on the principle that difference or dissimilarity in the first syllables of two words would eliminate the chances of conflict between the two. With respect to the learned Assistant Registrar I must at once observe that this generalization, almost to the point of making it a dictum, has no justification. In support of the above principle the learned Assistant Registrar relied on a few English cases and it will be worthwhile to consider them here. The first case was of Facsimile Letter Printing Company Ld. v. Facsimile Typewriting Company (29 R P C 557). In this case the latter name was struck down by the Court as being in close resemblance in style to the former. A consideration which no doubt seems to have prevailed with the learned Judge in that case was that the first word or the catch word, namely, "Facsimile" was identical in both the cases and in the two cases on which reliance was placed by Facsimile Typewriting Company there was a different first word. The principle relied upon by the learned Assistant Registrar appears also to have been followed in the case of London Lubricants (1920) Limited (42 R P C 264), where the word, "Tripcastroid" was held to be not in conflict with the word "Castrol" as they were not alike one another and that prima facie there could be no risk of confusion. It was observed by the learned Judge hearing the case that the value of the prefix as being of importance in the total word sought to be registered could not be neglected. But the main consider ation upon which the owners of the mark "Tripcastroid" succeeded in this case was the total dissimilarity of that word with the word "Castrol". The importance of prefixes in the English language has been emphasised by the judgment of Sargant, L. J. in this very case who observed as follows :

Though I agree that, if it were the only difference, having regard to the way in which the English language is often slurred at the termination of words, that might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

The above observation implies that an Englishman in his pro nunciation has the habit of emphasizing the first syllable which, therefore, becomes the most important part of a word in assess ment of any phonetic resemblance. I shall presently deal with those cases in which this principle has not been followed. But even so, I can hardly find any justification to import into a non- English speaking country the linguistic peculiarities of they Englishman. The learned Assistant Registrar has been pleased to note that the principle enunciated in the case of the London Lubricants Ltd. had been applied in the disputes between Vivi Cillin and Cyllin (64 R P C 142) and 'Eastex' and 'lastex' in which cases the first syllables or the prefixes being different the words were held to be not in conflict with each other.

13. As observed by me earlier the rules of English pronun ciation can have no application to this country in which it is not it only the last syllable which is slurred but the whole word. In the case however of Aristoc Limited v. Rysta Limited ((1940) 62 R P C 65), the House of Lords appear to have been conscious of a common tendency to slur a word beginning with 'a'. The above tendency was considered in relation to the word Aristoc vis‑a‑vis Rysta, thus leading to a declaration that the word 'Aristoc' was in close resemblance to the word 'Rysta'. It would, therefore, seem that even in a country like England the tendency to slur a part o the word is not peculiar only to the suffixes but also to pre‑fixes. I have, therefore, no doubt in my mind that the principle applied L by the learned Assistant Registrar and relied upon by him almost as a sole criterion for judging the similarity between the words was not wholly correct. Even in England there have been several cases in which the aforesaid principle has not been followed as a rule. Reference in this connection may be made to Smith & Wellstood v. The Carron Company (13 R P C 108) where the words 'Trafford' and 'Stafford' were held to have phonetic resemblance despite the fact that their first syllables were dis similar. Again in Robert Middlemas & Percy James Wood v. Moliver & Co. Ltd. and others (38 R P C 97), the words 'Boliver' and 'Moliver' were held to be in conflict with each other. Similarly, in Macleans, Ld. v. J. W. Light Brown & Sons Ld. (54 R P C 230) the words 'Merrimacs' and 'Vitamacs' were found to bear such close phonetic resemblance as to cause confusion in the minds of the customers. In all the 3 cases cited above the first syllables or the prefixes were different. To me, it seems, that the real criterion in all such cases is the one enunciated by Lord Maugham. I would reproduce this enunciation as quoted in the case of Hans Emanuel Neumann Enoch ((1947) 64 R P C 119) :‑

The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is, likely to be deceived or confused. Little assistance, therefore, 'is to be obtained from a meticulous comparison of the two words, letter by letter and syllable, pronounced with the clarity to be expected from a teacher of elocution'. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to the person's wants.

As observed by the Privy Council in the case of V. S. Subbiah Nadar v. E. P. Kumaraval Nadar and others (A I R 1946 P C 109) it is the general effect on the mind of any body dealing in the disputed goods that is to be mainly considered. If the marks are plainly calculated to lead to confusion and deception and the similarities are so close as to make it impossible to suppose that such marks were devised independently of each other they would be held to be in conflict. I would also draw reference to similar views expressed in P L D 1958 Dacca 481, P L D 1963 Dacca 75 and P L D 1967 Kar. 492.

14. The learned Assistant Registrar, Trade Marks by applying to the case the notion of dissimilarity in the pre‑fixes as the most decisive factor came to the conclusion that there was no similarity between the words `Saigon' and 'Daigon'. I would, however, reject the above approach as the main criterion for deciding the question, in dispute. The question which I have to determine is whether there is that similarity between the three names which is likely or is calculated to deceive or cause confusion. To me the words 'Daigon' and `Saigon' appear strik ingly similar both in sight as well as in sound. The word 'Daigon' appears to have no meaning in any known language. It is impossible to suggest any motive for adoption by the respondents of a name so similar in sound with the word `Saigon' except perhaps a desire on the part of the respondent to gain some advantage from the reputation which the word had possibly acquired. The user by the appellant of the word `Saigon' since the year 1947 has not been denied and the attempt of the respondent appears to have been to gain an advantage to them selves by, as they say, `sailing close to the wind'. It seems impossible to resist the conclusion that the word 'Daigon' was designed perhaps to attract to the respondent's goods those members of the public who knew the appellant's goods and to filch from the appellants the benefit of the reputation in the particular sphere of trade.

15. The learned Assistant Registrar appears to have also been influenced by the fact that the word 'Saigon' is a geographical name, and was sufficiently famous in view of the Vietnam War to exclude all possibility of confusion. I must, however, observe firstly that this fame or notoriety was hardly of a degree to be reckoned with at the time when the respective applications were made for the registration of the trade marks in question. Secondly, the knowledge and fame upon which the learned Assistant Registrar has so freely drawn can scarcely be attributed to the class of persons which would be expected to buy the cheap sewing machines manufactured by the two parties. It would not be an over statement to say that a vast majority of the populace of this country are illiterate and have perhaps not even beard the name of Saigon as a name of geographical or political significance. The other consideration, relied upon by the Assistant Registrar, Trade Marks, namely, that the two names were so basically dissimilar as to dissuade the registry from issuing notice to the appellants of the respondent's applica tion for registration of their trade marks, is hardly a considera tion which would justify the impugned action. This view of the learned Assistant Registrar amounts to begging the question. Rule 23 of the Trade Marks Rules, clearly seems to cast a duty on the examining staff of the Trade Mark Registry to cause a search to be made of the Register of Trade Marks for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical to the mark sought to be registered or so nearly resembling it as to render it likely to deceive or cause confusion. It is not denied that no such search was ever made in the present case. If this is so, the learned Assistant Registrar, Trade Marks had no material before him to form the view that there was prima facie no similarity and in this view of the matter the last‑mentioned consideration which weighed with him seems to be wholly mis conceived. It is significant to note that upon a later application for registration of the word 'Waigon' in respect of sewing machines the Trade Marks Registry considered it proper to effect a search and to adopt the procedure of citation before the registration. If the said procedure commended itself for adoption in relation to the word 'Waigon' I do not see how the case of 'Daigon' was any different.

16. As regards the word `Dragon' I have no hesitation in observing that this word cannot even, in relation to a common class of goods, be held to be in conflict with the word `Saigon'. In making this observation I must say that I am not influenced by the meaning of the word as commonly understood or as described in the dictionary. To me it seems that the word `Dragon' both in sound as well as in appearance is substantially different from the word 'Saigon' and no amount of slurring of the word, excepting a perverse one, would operate to bring about a phonetic resemblance between the two. On this view of the matter I would readily uphold that part of the order in appeal which relates to the word 'Dragon'.

17. Mr. Abdul Latif Thakur, the learned counsel for the respondents, raised a preliminary objection to the maintenance for this appeal by contending that an appeal under section 76 of the Trads Marks Act lay only against the decision of the Registrar. It was argued that in the instant case the order in question was passed by an Assistant Registrar and, therefore, the said order was not appealable. It is true that the order in the instant case has been passed by the Assistant Registrar, Trade Marks but a reference to the said order would show that the learned Assistant Registrar passing the order claimed to be authorised to do so under section 4(2‑B) of the Trade Marks Act, 1940. It will be worthwhile to reproduce subsection (2‑A) and (2‑B) of section 4 of the Trade Marks Act, 1940 (2‑A) The Central Government shall appoint (one) or more Deputy Registrars of Trade Marks to discharge under the superintendence and direction of the Registrar such functions of the Registrar under this Act as he may from time to time authorise them to discharge ; and any reference in this Act to the Registrar shall include a reference to any Deputy Registrar when so discharging any such function.

(2‑B) The Central Government may by notification in the official Gazette authorise the Registrar to delegate any particular functions of the Registrar to officers other than the Deputy Registrars of Trade Marks."

It would seem from a perusal of subsection (2‑B) that the Central Government may, by notification in the official Gazette, authorise the Registrar to delegate any of his functions to officers other than Deputy Registrars of Trade Marks. I, therefore, directed the learned counsel for the appellants to produce a certified copy of the Gazette notification of the Central Government authorising the Registrar of Trade Marks to delegate any of his functions to an officer other than the Deputy Registrars of Trade Marks. In compliance with my direction, Mr. S. K. H. Rizvi produced before me a sealed certified true copy of the said notification bearing No. 318/701/51 dated 9th May 1951. A perusal of this would show that in exercise of the powers conferred by subsection (2‑B) of section 4 of the Trade Marks Act, 1940 the Central Government was pleased to authorise the Registrar of Trade Marks to delegate any particular function of the Registrar to an officer other than the Deputy Registrar of Trade Marks. The aforesaid copy has been taken on record. The learned counsel for the appellants also inserted in the record certified sealed true copies of two orders dated 5th of October 1967 and 8th of November 1967 by which the rectification application filed by the appellant in the present case before the Registrar of Trade Marks were made over by him to the Assistant Registrar for hearing aid decision. Mr. Abdul Latif Thakur, the learned counsel for the respondent, contended that after the amendment of the Trade Marks Act in the year 1946 the words "and any reference in this Act to the Registrar shall include a reference to any Deputy Registrar when so discharging any such function" were omitted from subsection (2‑B) to section 4 of the Act. By this omission counsel concluded that the intention of the Legislation was to delegate only simple functions and not to delegate the function of adjudication under the provisions of the Act. I have not been able to follow the logic behind this reasoning. The power of the Central Government in relation to delegation of powers by the Registrar applies to any particular function and a reference to the Gazette notification produced in this behalf shows that the Registrar has been authorised to delegate any particular function of his to an officer other than a Deputy Registrar. Any attempt to circumscribe the embrace of the word "any particular function" appearing both in subsection (2‑B) of section 4 of the Act and the order of delegation seems to be wholly unjustified and clearly does violence to the language used.

18. Learned counsel for the respondent then contended that the Registrar of Trade Marks was a necessary party in the present appeal and the appellant by failing to implead him as a party had not properly constituted the appeal. Reliance for this contention was placed on section 74(1) of the Trade Marks Act, 1940. This provision is in the following terms

In any suit or other legal proceedings in which the relief sought includes alteration or rectification of register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the tribunal.

It is quite obvious that the aforesaid provision merely confers a right upon the Registrar to appear and to be heard and that he shall, if so directed by the tribunal, appear. I do not see anything in the frame of subsection (1) to section 74 of the Act which requires the Registrar to be impleaded as a party in an appeal under section 76 of the Act. The above provision appears, prima facie, merely to confer a right upon the Registra c to appear and to be heard. This right, the learned Registrar has not chosen to avail himself of despite the fact that knowledge of the pendency of the appeal had been gained by him when the records in connection therewith were called from his office. Be that as it may, the view seems to be that where the question is one concerning solely the (applicant to rectify) and the `registered proprietor', the Registrar will not' usually appear. In any case no prejudice is shown to have been caused to the respondent's case by the Registrar not being heard. This contention of the learned counsel for the respondent is, therefore, overruled.

19. Mr. Thakur then contended that the appellant had not filed an affidavit in support of their appeal as required by rule 3 of the High Court Rules and Orders relating to Trade Marks, Volume V, Chapter VII. This contention has also no force since the affidavit filed by the appellants in support of their application for interim relief goes on to recite that the facts stated in the memorandum of appeal are true to the knowledge of the appellant. The intention of rule 3 of the High Court Rules and Orders requiring an appellant to file an affidavit in support of the appeal is wholly to have on record a sworn testimony of the facts contained therein. This testimony may be in any affidavit present on the file of the case. As long as the said I affidavit purports to testify to the facts stated in the memorandum of appeal, the circumstance that the affidavit in question was filed only in support of the application for interim relief cannot operate to alter or negative the fact that the contents of the memorandum of appeal have been sworn to be correct.

20. On the merits of the case the case of the respondents' learned counsel was mainly pressed on the aspects already dealt with by me. However, the learned counsel for the respondent contended that the reliefs under sections 37 and 46 of the Trade Marks Act were discretionary in nature and the appellants had forfeited the exercise of that discretion in their favour by going before the Registrar of Trade Marks with unclean hands. Reliance for this contention was placed on an advertisement inserted by the Registrar. Trade Marks in the Trade Marks Journal of 1st September 1957 at the instance of the appellant in which the word `Saigon' was shown to be used in relation to goods of the "Saigon' Sewing Machines Manufacturing Company' supposed to be of Japanese origin. This insertion, according to the learned counsel for the respondent, amounted to fraudulent user.

21. It was next contended by Mr. Thakur that publication in the Trade Marks Journal of the respondent's Trade Marks constituted notice and in any case the publication of the post facto notice and non‑issuance of notice to the registered proprietor was not fatal to the case of the respondent. I have only to answer this contention by saying that if the appellant succeeds in part in this appeal then that success is not wholly due to failure of notice to the appellants. But it has also been held in more than one case that there is no obligation cast on people to see the Trade Marks Journal and failure to do so does not lead to any inference that the person aggrieved had none theless notice of the registration, see (1889) 6 R P C 165 and (1923) 40 R P C 219 at p.223.

22. The learned counsel for both the parties also addressed arguments before me on the appellants' allegation that the respondent had failed to prove user of the trade mark. It was further alleged by the appellants that complete non‑user was obvious from a perusal of the respondent's sales figures. I do not feel called upon to address myself to that controversy for the purpose of deciding the present appeal.

23. For the reasons discussed above I would allow this appeal only in relation to the word `Daigon' and hold that the said word is so closely similar both phonetically and visually to the word `Saigon' as is likely to cause confusion and deception. The appeal in relation to the word `Dragon' is dismissed. The register of the Registrar, Trade Marks, Karachi shall be corrected in accordance with this decision.

24. In the circumstances of the case the parties are left to bear their own costs.

A. S. Appeal partly accepted.