ANWAR INDUSTRIES LTD. Versus MUHAMMAD ISHAQUE GONDAL

This Miscellaneous Appeal under section 76 of the Trade Marks Act, 1940, is directed against the order of the learned Registrar of Trade Marks (Respondent No. 3) dated 3‑6‑1984. The relevant facts leading to this case are, that the respondents Nos. 1 and 2, who are trading in the name of Asia Electrical Industries, Gujranwala, filed an application on 8‑8‑1982 before the learned Registrar for registration of their mark ASIA small letters in class 7 for goods like Electric Motors all (kinds), centrifugal pump, Electric grinders, Electric Madhani and Washing Machines. The applicants claimed that they had started manufacturing the goods from the year 1973. The show‑cause notice was issued to the applicants as to why their mark should not be refused as it conflicted with the ealier registration marks. Reply as filed to this show‑cause notice alongwith the documentary evidence showing user of their marks since 1973. On being satisfied, the respondent No. 3 ordered its advertisement. It was duly advertised in the Trade Mark Journal No. 386, dated 1‑4‑1980 at serial No. 76481. The present appellant M/s. Anwer Industries Limited entered into opposition to the acceptance of the mark on the basis of their registered mark at serial No. 43694 in clause (11) which was registered for goods like sanitary fittings and fixtures. It was alleged that the mark 'ASIA' is being used by the opponent /appellant since 1965. In support of this opposition one affidavit of Muhammad Ameen Manager of the Appellant firm was filed, wherein he has deposed that the mark is being used for sanitary fittings and Electric fans since 1965‑66. He has filed in support a number of invoices, bills, cutting of newspapers, price‑list for fans, memo. of bill, etc. In the counter statement the agent of the respondents Nos. 1 and 2 denied the charges of the opponent/ appellant that the mark of the applicants would cause any confusion or deception in the Market. It was further contended that though the mark was being used since 1973 continuously, no confusion has been caused nor any objection has ever been raised by the appellant. It was further contended that the goods manufactured by the appellants were of different description than the goods manufactured by the respondents /applicants.

2. The learned Registrar dismissed the opposition and ordered the registration of the mark of the applicants on two grounds. Firstly, that the goods manufactured by the applicants were of different specification and description than those manufactured by the appellant /opponent and there can be no confusion, as to use of those goods and, therefore, section _ 10(1) was not attracted. The second ground advanced by the learned Registrar is, that though both the parties belonged to Gujranwala and the applicants/ respondents are using the mark since 1973, but the appellant did not file any application for infringement proceedings against them. He was of the opinion that this conduct of the opponent /appellant had encouraged the applicants/ respondent to continue the use of mark and when they had covered a long distance, the appellant had come forward to stand in their way, which was contrary to good conduct or business ethics. He was further of the view that there was no evidence to show that the user of the mark has caused any confusion or deception in the Market, therefore, section 8(a) was not attracted.

3. The learned counsel for the respondents raised a preliminary objection, that the appeal was time‑barred. Under Rule 84 of the Trade Marks Rules, the appeal is to be filed within 60 days from the date of the decision. The decision in this case was given on 3‑6‑1984, which was communicated to the appellant by a covering letter, dated 4‑6‑1986. It is contended by the appellant, that the decision was received by them on 16‑6‑1986 and such endorsement was made on the covering letter, which has been produced as Annexure 'C' to this appeal. If the period of limitation is to run from the date of the decision, then after excluding the time that was taken by the appellant in getting certified copy of the decision, the appeal would be barred by five days. It is not disputed, that section 5 of the Limitation Act is not applicable to the appeals under the Trade Marks Act. However, it is contended by the learned counsel for the appellant, that the period of limitation is to run from the date of communication, viz. 16‑6‑1986 in which case the appeal would be within time. Under Rule 78 the decision of the Registrar in exercise of any discretionary power given to him by the Act shall be notified to the person affected.

4. It is not disputed, that the registration of the Mark or the rejection or acceptance of opposition is a discretionary power of the Registrar. As such the decision had to be notified. to 'the person affected, viz. appellant under Rule 78. If Rule 80 is read with Rule 78, the only conclusion, that can be drawn is that the period of limitation would run from the date the decision is communicated to the person affected, otherwise, he would not be able to file any appeal.

5. The learned counsel for the respondents had relied upon two cases in support of his contention. One of those cases, is reported in 1986 C L C 2623 and the other is unreported decision of this Court in Miscellaneous Appeal No. 56 of 1980. On perusal of both the cases, I find that the period which lapsed between the date of decision and the date on which it was communicated to the affected person appeared to have been excluded while computing the period of limitation, though the point was not specifically‑considered or decided. Thus, these cases do not support the contention of the learned counsel for the respondent. It is held that the date of decision is the relevant date for computation of period of limitation, then there can be number of cases, in which affected person may not receive communication at all and in such cases the person affected would be deprived of his right of appeal. Equity and justice demands that the period of limitation should run from the date when affected person receives communication of the decision. If the date of communication is accepted to be 16‑6‑1986 then the appeal is within time. In view of the above discussion, I am unable to agree with this objection of the learned counsel for the respondent.

6. Next, we proceed to discuss the merits of this appeal. It is not disputed, that the goods of two competitors belongs to different classes, but it is contended by the learned counsel for the appellant that under section 8(a) of Trade Marks Act, the Court has to see whether there was likelihood of deception of confusion by use of the respondents of the trade mark already used by the appellant. He has relied upon P L D 1968 Kar. 369. In the reported case both the parties had applied for registration of word 'RESLOOM' as trade mark of their respective goods, but the evidence produced by them disclosed that neither party had acquired reputation of this trade mark in Pakistani Market. It was observed by the learned Single Judge of Karachi Bench of estwhile High Court of West Pakistan as follows:

"The real point is not whether the goods belonged to the same class or to different classes, but whether there is any trade relation between them of such a nature as to create an impression that the manufacturer of one might be the manufacturer of the other; or the products of one manufacturer might have been used in the production of the goods of the other manufacturer ...............

Further, confusion and deception are not relevant when the situation existing on the date of the applications is considered. But it would be relevant for exercising discretion to make a choice between the two parties in respect of their future trade because, the likelihood of confusion and deception in the event of the parties developing their respective trades is undeniable. While making such a choice the likelihood of future confusion or deception is a material consideration; what is, therefore, necessary is that discretion be exercised realistically."

In P L D 1973 Kar. 567, Chief Justice Tufail Ali A. Rahman (as his Lordship then was) had observed:‑

"The deception which is sought to be avoided by clause (a) of section 8 of the Trade Marks Act, 1940 is deception to the effect that a person might assume in buying particular goods that they have been manufactured by a company having the right to use the Trade Mark and not the deception that the goods are certain other goods which are in fact manufactured by that company."

In 1986 C L C 1636, it is observed by a learned Single Judge of this Court 'Main criterion for registration of Trade Mark would be that unwary purchaser should not be led to believe that the goods of person seeking registration and those of objectors come from the same source and belong to the same origin'. It was further observed. 'If the application for registration filed by two competitors is for adoption of such common names as Tiger, Lion, or Elephant, Rustam, Himalays etc. etc. one of the competitors may not be given preference over the other. It may be that both have conceived the idea of applying such a common name to their product".

7. In the instant case the common word viz. Asia in fact is a geographical word being the name of the continent in which we resides and such a mark in fact is prohibited from registration under section 6(1)(d) of the Trade Marks Act. The grounds on which the registration of mark was allowed to the appellant are not before this Court, but apparently their mark has been registered on the ground of continuous use. Every case is to be dealt with on merits of its individual facts. The cases relied upon by the learned counsel for the appellant pertain to invented words and not to the common word. When any one speaks of 'Asia' the first impression that a person would gather would be that the some reference is being made to the continent of Asia and not to any fan or electrical goods. I have already reproduced the grounds which weighed with the learned Registrar to the impugned decisions.

8. The learned counsel for the appellant could not repel the arguments of the learned Registrar that in spite of the fact, that the respondent had been using the mark since 1973 and though both the parties belong to the same town and carry on the manufacturing of electric goods, still the appellant did not file any infringement proceedings against the applicant/ respondent. This conduct of the appellant leads to the conclusion that he had no objection to the use of mark by the respondent, but he had only objection to the registration of such mark for the goods of the respondent. Reference may be made to the observation made by their Lordships of the Supreme Court in the case of Abdul Wahid v. Haji Abdur Rahim and another P L D 1973 SC 104, wherein their Lordships have observed:

"It has been repeatedly held by the superior Courts that the Registrar in coming to the conclusion whether a trade mark should not be registered, exercises the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. Such discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error."

9. The Registrar in exercise of his discretion has allowed the registration of the mark. I do not find that the conclusion arrived at by the Registrar is clearly wrong or patently erroneous.

10. There is no evidence on record to negative the findings of the learned Registrar that the respondents had been using the mark since 1973 and‑that in the last ten years there was no evidence of 1 any confusion or deception caused to any customer in the market. Under the circumstances the appellant cannot be allowed to monopolise a common geographical name 'Asia' for his goods.

11. For the aforesaid reasons, the miscellaneous appeal is dismissed with no order as to costs.

The appeal was dismissed by a shorter order earlier today, the above are the reasons in support of that order.

H.B.T./A‑237/K Appeal dismissed.