AKTIEBOLAGET JONKOPING VALCAN, SWEDEN Versus REGISTRAR OF TRADE MARKS

This is an appeal under section 76 of the Trade Marks Act, 1940 against the decision of the Registrar of Trade Marks, dated 4th February 1970, by which he rejected the appellant's opposition against registration of a trade mark in the name of the second respondent.

2. The appellant, Aktiebolagent Jonkoping Vulcan, is a Swedish Company and carries on business as manufacturer and exporter of safety matches which it sells under various trade marks. One such trade mark has been registered in Pakistan under No. 5632 in respect of "matches" in class 34 under the Trade Marks (Invalidation and Summary Registration) Act, 1950 as of the date of its Indian registration, namely, 24‑2‑1944. The trade mark consists of a decorative label, featuring inter alia, prominently the device of three stars in the centre of the label with words Three Stars. This trade mark will hereinafter be referred to as Three Stars, and that is how the appellant himself called it. The registration of the said trade mark has been renewed and is in force.

3. The Respondent No. 2, Pakistan Match Company Ltd., who carried on business in Khulna, in the former East Pakistan, applied for registration of its trade mark under the Trade Marks Act, 1940 (hereinafter referred to as "the Act") under No. 19836 on 25‑2‑1953 in class 34 in respect of "safety matches". This trade mark of the respondent No. 2 consists of a label featuring inter alia prominently the device of five stars in a straight line in the centre of the label with the words Five Stars. It will be referred to here inafter as Five Stars.

4. The respondent's trade mark application was examined and the prior registration of appellant's Three Stars trade mark was cited against it and the appellant was officially advised of the respondent's conflicting application. The respondent's trade mark was advertised in due course in the Trade Marks Journal No. 112 of May 1960, whereupon the Trade Mark Agents of the appellant gave a formal notice dated 18‑8‑1960 to the respondent to withdraw the application failing which they threatened to lodge notice of opposition. As they received no reply, the appellant lodged notice of opposition on 31‑12‑1960. The main grounds of opposition against the respondent's trade mark application were (1) that the Five Stars trade mark of the respondent was identical with or so nearly resembled the appellant's registered trade mark Three Stars as to be likely to deceive or cause confusion and its registration was barred under section 10(1) of the Act; (2) That as the appellant had acquired a great reputation and goodwill in respect of safety matches sold under the trade mark Three Stars for many years in Pakistan and other parts of the world, the use by the respondent of their trade mark Five Stars in respect of safety matches would inevitably lead to confusion and/or deception and its registration should be refused under the provisions of section 8(a) of the said Act.

5. The respondent filed a counter‑statement denying the allegations of the appellant. Therein it pleaded that it was one of the leading manufacturers of safety matches in Pakistan and that it had adopted the Five Stars trade mark to distinguish one of its brands of safety matches; that it has sold very large quantities of safety matches under the aforesaid trade mark since the year 1953 and has spent considerable sums of money to popularise the said brand so much so that it has now become distinctive of its products; that the appellant never objected to the use of its trade mark until it was advertised in the Trade Marks Journal in May 1960; that there was no deceptive resem blance between the respective marks as alleged, and that in any case, the respondent was entitled to concurrent registration under section 10(2) of the said Act. Therefore, it prayed that the opposition filed by the appellant be rejected.

6. The parties filed affidavit evidence in support of their respective cases. The appellant's evidence in support of the opposition, comprised of the affidavit of its Managing Director, Mr. Walter Emanuel Thulin dated 11‑10‑1961. In his affidavit, Mr. Thulin deposed inter alia that the trade mark Three Stars is one of the most popular brands of safety matches and that such branded safety matches had been marketed in former British India and in territories now Pakistan since more than 80 years; but that in 1951, the import of safety matches under the Three Stars trade mark in Pakistan was temporarily halted in order to popularise the other lesser known brands, but without any intention to abandon use of its trade mark in future in Pakistan: and that since the import of the safety watches into Pakistan was prohibited by the Pakistan Government in 1954, the appellant was powerless to resume the export to this country. He ended his affidavit by stating that the respondent's safety matches are easily mistaken for those of the appellant and the public is easily deceived into believing that they were buying the appellant's reliable and superior brand of matches.

7. The respondent's affidavit evidence comprised a copy of affidavit of Mr. Mirza Abbas dated 13‑9‑1961, its general attorney (which was filed in another opposition matter) and a supporting affidavit of Mr. Qamaruzzaman dated 26‑9‑1968. Mr. Mirza Abbas deposed that the respondent adopted the Five Stars trade mark for use in respect of its safety matches in 1953 after ascertaining from enquiries made in the market that no one else was using any similar brand. He deposed to particulars of quantities (in gross) of safety matches sold under the trade mark in Pakistan during each of the years 1953 to 1960 and the amounts paid as excise duty thereon each year as well as the amounts spent on advertisements and publicity, together with a list or distributors. He also produced seven invoice books to prove the sales for each of the years 1953 to 1960. The supporting affidavit of Qamaruzaman stated that he was merchant in Karachi and had purchased the safety matches of the respondent for the last 15 years and that safety matches of the appellant bearing Three Stars trade mark were not on sale in Pakistan, and that the trade marks in dispute were not similar.

8. The appellant filed a reply affidavit of Mr. E. Vaz a Legal Assistant working in the firm of Trade Mark Agents of the appellant in Karachi. In order to prove that the respondent falsely contended that the respective marks were dissimilar, he produced certified copies of legal proceedings in Suit No. 130/65 which was filed by the respondent against Rauf & Co. Ltd., Karachi to restrain the latter's use of Three Stars trade mark for safety matches as being confusingly similar to its Five Stars mark. The respondent's suit was decreed.

9. The Registrar of Trade Marks heard the parties and by the impugned order dated 4‑2‑1970, he dismissed the appellant's opposition and directed registration of the respondent's trade mark Five Stars. He found that the appellant had failed to prove that the adoption of the trade mark Five Stars by the respondent in 1953 was mala fide. He also found that the appellant had failed to establish its case under section 8(a) of the Act in the absence of evidence of long user and reputation of its trade mark in Pakistan which admittedly it stopped using since 1951. He held further that although section 10(1) of the Act prohibited the registration of the trade mark Five Stars because it nearly resembled the trade mark Three Stars already registered in the name of the appellant, it does not preclude concurrent registration under section 10(2) of the Act in case of honest concurrent use or other special circumstances. In the instant case, he, held that the respondent had established "other special circumstances" justifying the registration of its trade mark Five Stars and, in this connection, he followed the decision of the erstwhile High Court of West Pakistan in Lallubhal Amichand v. The Punjab Aluminium Factory, Gujranwala (P L D 1960 Kar. 545). The special circumstances found by the registrar were that the goods of the appellant had admittedly not been imported into Pakistan since 1951, while the respondent had built up a wide reputation for its mark by using it since 1953 and that the appellant had done nothing to stop the respondent from using the trade mark and from expanding its business and goodwill in the trade mark.

10. Mr. E. A. Nomani, learned counsel for the appellant, submitted that the case of Lallubhai Amichand on which the Registrar placed reliance, is distinguishable because in that case, the Registrar had permitted registration of the mark applied for on the basis of his finding of honest concurrent use, whereas in the instant case, the adoption and use of the trade mark Five Stars by the respondent was dishonest. In my opinion. this submission is not well founded. In the first place, the appellant did not take the plea in its notice of opposition that the respondent's adoption of its Five Stars trade mark to 1953 was dishonest. Moreover, the Registrar has found that the appellant had failed to prove that the adoption of the trade mark by the respondent was mala fide. In the second place, Lallubhai Amichand's case was decided on an altogether different ground, viz., that "other special circumstances" existed in that case, which justified registration in the name of the Pakistan applicant. The "other special circumstances relied on in Lullubhai Amichand's case were identical with those in the present case viz., that the goods of the foreign registered proprietor were not available for sale or consumption in Pakistan and in the vacuum so created, a national firm of manufacturers bad built up a sizable business by using the A trade mark in question over the last several years without any objection. These circumstances, in the view of the Court, were regarded as "special circumstances" within the meaning of section 10(2) of the Act. These obser vations were also referred to with approval in Messrs Pakistan General Stores, Karachi v. Messrs Coopers Incorporated Karachi (P L D 1973 Note 61 at p. 82), in which the facts were similar. However, in none of these two cases did the question arise for consideration whether the adoption of the trade mark by the applicant in question was initially dishonest and, if so, what is the legal effect. Clearly, if the adoption of a trade mark by an applicant is proved to be dishonest, no amount of user of the trade mark by him can justify registration on the ground of "other special circumstances" under section 102) of the Act, of the kind which exist in the present case and which existed in the two cases cited above. The point will haw to be examined in greater depth on another more appropriate occasion than the present where, as stated earlier, the point has not been pleaded by the appellant.

11. The next submission of Mr. Nomani is that the burden was on the applicant to prove the absence of likelihood of deception and confusion and that the respondent had failed to discharge it. There is no force in the submission. Since the appellant admittedly discontinued use of its Three Stars trade mark in Pakistan since 1951 and in the absence of the appellant's goods in the market, the burden, of proving absence of likehood of deception or confusion has been easily discharged by the respondent.

12. Finally, Mr. Nomani submitted that the ban on the import of safety matches has now been removed by the Government of Pakistan and that, in fact, the appellant has appointed a Pakistani firm as a registered user of its trade mark, who now proposes to manufacture and sell safety matches under the appellant's trade mark Three Stars. But this fact is not sufficient to out weigh the right of the respondent, which it has already built up in its trade mark on account of the special circumstances which have created such a right. The refusal of registration of the trade mark to the respondent now would, therefore, create a greater hardship to the respondent and incon venience to the public.

13. For the foregoing reasons, I find no force in this appeal which is accordingly dismissed with no order as to costs.

K. B. A. Appeal dismissed.