PAKISTAN SOAP FACTORY Versus CHITTAGONG SOAP FACTORY

1. SAJJAD AHMAD J .‑This is an appeal by special leave in a contested case under the Trade Marks Act V of 1940 (hereinafter described as "the Act'") between the Pakistan Soap Factory, the appellant before us, and the respondent, Messrs Chittagong Soap Factory, both of which are soap manufacturing concerns based in Chittagong, The appellant factory was formerly owned by one Misbahur Rahman, who had adopted the numeral "1947" as the trade mark for the washing soap manufactured by the factory. He applied to the Registrar, Trade Marks, Karachi for the registration of this trade mark, by his Application No. 4015 dated the 29th of February 1949, which seems to have been pursued for a number of years, but as it did not reach‑ a fruitful conclusion, the Registrar, by his order dated the 10th February 1958, directed that it shall be deemed to have been abandoned under section 16 of the Act.

2. The present owners purchased the factory on the 30th March 1960. They filed an Application No. 33181 on the 27th May 1950, before the Registrar, Trade Marks, describing it as one "in lieu of" the earlier Application No. 4015 mentioned above, seeking registration for their washing soap in class III of their mark consisting of numeral "1947", the trading name of the factory, viz., Pakistan Soap Factory, and its abbreviated address "C. T. S." impressed on a ball‑shaped soap cake. The trade mark was duly advertised for acceptance in the Trade Mark Journal No. .137 of June 1962. Thereupon, the respondent Messrs Chittagong Soap Factory entered opposition on the ground that they were already the proprietors of a registered trade mark in class No. III in respect of their manufacture of a similar ball‑shaped washing soap consisting of the numeral "1937", their factory's trading name, viz. Chittagong Soap Factory and the abbreviated letters "R. E. G. O." Which had been registered on the 19th of March 1958, on their Application No 5966 dated the 23rd of May 1949. It was contended by them that they had been using this trade mark including the numeral "1937" for their washing soap since before the creation of Pakistan and that due to wide and extensive publicity, their mark had become distinctive of their product commanding extensive goodwill and marketability. It was further submitted that the appellant's request for registration of their trade mark be rejected under sections 8(A) and 10(1) of the Act, as it was almost identical with their own, and which has caused and was likely to cause deception and confusion in the mind of their customers, to the prejudice of their trading interests. The Deputy Registrar, by his order dated the 8th of June 1964, has refused registration to the appellant on the view that the numeral "1947" borne by their trade mark resembled so closely the numeral "1937" of the respondent's trade mark that it was likely to deceive and cause confusion. He has referred to "evidence on affidavit" given by the parties, and has found that the appellants have failed to make out a case of honest concurrent use of their mark for a long period of time, as alleged by them to be permitted registration under section 10(2) of the Act. The Deputy Registrar has further held that the similarity between the two trade marks, both visual and phonetical, is so close that, quite apart from the evidence of actual confusion in the public mind, as to their identity, there is an inherent probability of such confusion in the marks them selves. The appellant took an appeal to the High Court under section 76 of the Act which has been dismissed by a Division Bench. The learned Judges have armed the conclusion reached by the learned Deputy Registrar on evidence produced in the case which they observe to have read but which has not been discussed, and have not accepted the appellants claim of honest and concurrent use of their trade mark since a number of years. They have concurred with the learned Deputy Registrar that the visual and phonetical similarity in the two trade marks does create a confusion in the public mind for judging their respec tive identity.

3. Leave was granted to the appellant by this Court on the 16th of June 1967, after seeing the fascimiles of the two trade marks, and it was observed that to a person knowing English the markings would appear clearly to be different, as not only the words and figures printed but also their sizes are different. It was further observed that even in the case of non‑English knowing people of the poorer class who were likely to buy such soaps, it could not be said that a very careful and discriminating look was necessary to distinguish between the two markings. It was, therefore, a question to be considered whether on the appearance only it could be said that the markings on the appellant's soap are no more than an imitation of those on that of the respondent's.

4. We have been shown in Court the samples of the washing soaps in question manufactured by the two concerns and are prone to think that there is a striking similarity between the two in so far as their shape is concerned, both being ball‑shaped, but not so between the wordings of their trade marks impressed on them. Each bears its own factory name and its own particular abbreviated address, and the only similarity, which is apparent, is in the commonness of the three digits of their respective numerals impressed almost in the centre of both the soaps, "1947" on the appellant's and "1937" on that of the respondent, the difference in the two numerals being that the third digit is 4 in the one and 3 in the other. This apparent similarity in the two numerals both visual and phonetical appears to have dominated the mind of the Deputy Registrar as well as the learned Judges of the High Court in their conclusion about the close similarity between the two marks containing the inherent probability of creating a confusion in the public mind with regard to their correct identity. We regret we are unable to share this view because, in the first place, although the numerals on the marks might be considered to constitute a dominant feature of the marks, they do not represent the total markings, some of which, as already stated above, are dissimilar. But if the numerals are accepted as the sole dominant feature to distinguish their respective identity as field both by the Deputy Registrar and the learned Judges of the High Court, it must correspondingly be accepted that the numerals also dominate the mind of the consumers while making their purchase., to make sure that they got the correct stuff. A purchaser, therefore, whether literate or illiterate, who wants to have a soap cake of the appellant's trade mark "1947" would obviously see to it and be assured that he is getting his "1947" soap and not "1937" of the other concern. The situation would just be opposite in the case of a consumer wanting to have a soap cake of the respondent's "1937" trade mark and there would be no confusion in his mind to mistake it for "1947" unless the confusion is created by the person who passes the one for the other deliberately by a cheating process. We found considerable force in the argument of Mr. Hamidul Haq Chowdhury, the learned counsel for the appellant, that where commodities are identified and known by numerals, they are purchased by pointed reference to the numerals and no confusion can arise in this respect. We are also unable to agree with the Deputy Registrar and the learned Judges in their view that the numerals "1937" and "1947" in the two trade marks are phonetically identical. 40 and 30 pronounced in English have a different intonation and the same is the case with their Bengali equivalents, namely, shaitrish (37) ‑and shatcholeesh (47). It will be seen that shaftrish (37) of Bengali is pronounced as a composite word, while shatcholeesh (47) is pronounced in two separate words shat and chollesh which makes all the difference between the two phonetically.

5. Under section 10(1) of the Act, registration of a new trade mark in respect of any goods or description of good's shall be refused if an identical trade mark in respect of the same goods or description of goods belonging to a different proprietor is already registered or if it so nearly resembles the latter "trade mark" that it is likely to deceive or cause confusion. The tests for adjudging this identify or similarity in the competing trade marks from the point of view of creating confusion were neatly laid down by Parker, J., in Pianottst Company's Application (23 R P C 774), which have been referred to both by the learned Deputy Registrar and the learned Judges of the High Court, and which for their basic worth certainly bear repetition. The learned Judges I 'as observed:‑

6. "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those Trade marks is used in normal way as a Trade Mark for the goods of the respective owners of the Marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods, then you may refuse the registration, or rather must refuse the registration in that case."

7. While applying these tests, both the Deputy Registrar and the learned Judges appear to have been under the dominating influence of the apparent commonness in the two numerals on the respective trade marks of the parties, ignoring that the one little difference between the two as regards their third digit makes all the difference, which focuses their respective identity in the mind of the purchasing public. Instead of creating any confusion, it should prevent any such confusion even in the mind of the unwary purchaser. An unwary purchaser is not expected to exercise wariness but he is expected also not to keep his eyes shut.

8. Again, on the question of honest and concurrent use of their trade mark by the appellant, it seems to us that the evidence has not been duly appreciated by the learned Deputy Registrar whose view of that evidence has been accepted by the High Court without its proper analysis and appreciation. It will be recalled that the predecessors‑in‑title of the appellant had moved for the registration of their trade mark as early as the 27th February 1949, a few months before the respondent had moved for the registration of their trade mark. It can be reasonably presumed that the appellant's trade mark in question was in use since 1949, if not earlier. In any case, it was put into use by the appellant on their purchase of the concern in March 1960, after which they renewed their application for registration in August 1960. The concurrent use of this trade mark by the appellant without any challenge from the opposite side for along period of time is thus clear. That it has been in such a use innocuously without prejudice to the respondent's interests would be manifest from the circumstance that the respondent has never thought of taking steps to restrain the appellant from using this trade mark nor was any incident of the fraudulent use of their trade mark or of deception by the appellant brought to light. The accounts filed by the respondent show that their sales have steadily grown and not gone down. The appellant has filed affidavits of different persons, including several respectable merchants, salesmen and consumers of washing soap, all of whom have deposed that the appellant's soap bearing the trade mark "1947" has been in the market since a number of years and that they have been dealing and selling it as well as dealing with the respondents soap bearing the trade mark "1937", and that there has been no confusion in the mind of the purchasing public as regards their separate identity. These affidavits, which number 21, have in our view been lightly treated and disbelieved by the learned Deputy Registrar, merely by his observation that they are of a stereotyped nature, which were prepared by the appellant, and casually signed by the deponents. We consider that this is a very unsatis factory way of dealing with sworn statements in judicial proceedings. The respondents have also filed 14 affidavits, in rebuttal, of persons most of whom are not at all concerned with soap trade. The learned Deputy Registrar has not particularly referred to the respondent's affidavits because in his view the onus lay on the appellant to prove the honest and concurrent use of their trade mark, which they had failed to establish, and the weakness in the affidavit evidence filed by the respondent does not prove the appellant's case.

9. On a careful and overall appraisement of the affidavit evidence produced by both sides in this case, we are of the opinion that the appellants have proved concurrent and honest use of their trade mark for quite a long time, which is note satisfactorily rebutted by the affidavit evidence produced by the respondent. In our view, the Deputy Registrar and the learned Judges of the High Court have erred legally in refusing registration of the appellant's trade mark. In the result, we accept this appeal, set aside the order of the Deputy Registrar and of the High Court, and direct that the appellant's trade mark, covered by their Application No. 33181 dated the 27th August 1960, be duly accepted and registered. The parties will bear their own costs throughout.

10. K. B. A. Appeal accepted.