CLUETT PEABODY & COMPANY INC. Versus ASSISTANT REGISTRAR OF TRADE MARKS

1. This appeal under section 76 of the Trade Marks Act is filed by M/s. Cluett, Peabody & Co. Inc. of U.S.A. against the decision of Assistant Registrar of Trade Marks dated 30th September, 1979. By the impugned decision the Tribunal allowed Trade Marks Application No. 50071 of Respondent No.2 in class 25 for registration of trade mark comprising of words "sharp arrow" with device of arrow and globe on a label in respect of ready‑made garments. By the same decision the Tribunal rejected opposition No. 27/1974 filed by the appellant against the registration of the above trade mark.

2. The contention of the appellant before the Tribunal was that they are the registered proprietor of the mark 'arrow' with device of arrow in class 24 and 25 in respect of handkerchief, piece goods, rayon wool and combinations thereof, and shirts (collars, cuffs, underwear, night suits, neckties) respectively. They also claimed that they are proprietor of another mark 'golden arrow' with the device of arrow under class 25 in respect of all articles of wearing apparel and particularly shirts. The appellant claimed themselves as the proprietor of all these marks since 1959 on the basis of their registration in their favour. If was alleged before the tribunal that the Respondent No.2 taking advantage of the reputation of the appellant in the mark 'arrow' dishonestly adopted a similar mark 'sharp arrow' with device of arrow in respect of shirts and other ready‑made garments in 1968 which is likely to cause confusion in the minds of public on account of similarity of two marks. They accordingly opposed registration of mark in favour of respondent under section 10 (1) of Act. The tribunal, however, found that the appellant never used their mark in Pakistan and as such the question of any confusion between the two marks did not arise. The tribunal also held, that adoption and use of mark 'Sharp Arrow' with device of arrow and Globe by respondent No.2 was honest and concurrent and as such they were entitled to registration of their mark under section 10 (2) of the Act. In arriving at the above conclusion the tribunal, firstly, took note of the decision in earlier proceeding for rectification under section 37 of the Act filed by respondent No.2 for removal of mark of appellant in which the tribunal rejected the prayer of respondent No.2 on the ground that he is entitled to registration of his mark on the basis of concurrent and honest user, and, secondly, the tribunal also took into accounts large sale figures of the product of respondent No.2 under their mark after the filing of application for registration of the mark. The learned counsel for the appellant in support of this appeal has raised the following contentions. It is firstly, contended that the appellants being .the registered proprietor of mark arrow with device of arrow in respect of wearing apparels and specially shirts, the mark of respondent which was similar to it having the device of arrow as its essential feature, could not be registered under section 10 (1) of the Act. The second contention of appellant is that their mark had acquired international reputation all over the world and is registered in number of countries and as such the adoption of a similar mark by the respondent would not be treated as honest. The third contention of the appellant is that the tribunal while accepting the application of respondent for registration of their trade mark on the basis of honest and concurrent user, firstly, took into consideration the order of tribunal passed in proceedings under section 37 of the Act which was irrelevant as the scope of proceedings under section 37 of the Act was totally different from the proceedings which were before the tribunal for registration of the mark, and, secondly, the use of mark by respondent No.2 after making of the application for registration of mark could not legally be considered for allowing registration on the basis of such use. It is also urged that if the tribunal would have considered the application of respondent No.2 for registration of mark only on the basis of its user upto the date of application, the application would have been rejected as till then the use of the mark was only for a very short period which did not qualify to be treated as sufficient for holding it as honest and concurrent user. The fourth and the last contention of the appellant is that the tribunal failed to consider that the non‑use of the mark by the appellant in Pakistan was due to import restriction which amounted to special circumstances and in any case the evidence on record did show some use of the mark by the appellant which the tribunal completely ignored. In support of his above contention the learned counsel for the appellant has relied on the cases of New Light Chemical Industries v. Registrar of Trade Marks (P L D 1963 Dacca 75), Bende Nawaz Ltd. v. Registrar of Trade Marks, Karachi (P L D 1967 Kar. 492). Glaxo Laboratories Ltd. England v. Assistant Registrar, Trade Marks, Karachi (P L D 1977 Kar. 858), M/s. Dawood Cotton Mills Ltd., Karachi v. The Registrar of Trade Marks, Karachi (P L D 1960 Kar. 547), M/s. Wagner Electric Corporation v. M/s. Paramount Oil and Chemical Co. P L D .1973 Note 68 at p. 91 and S. Muhammad Din and Sons v. Sh. Nabi Bakhsh and Sons 1987 CLC 759. Learned counsel for the respondent No.2 on the other hand contends that the adoption and use of the mark 'Sharp Arrow' by his client was without any obstruction and objection from any one and was made after due verification that no such mark was available in the market in respect of ready‑made garments and specially shirts. It is also contended by respondent No. 2 that the mark 'sharp arrow' on the label is not only used by them locally on the ready‑made garments produced by them but a very substantial quantity of their product is exported to other countries of the world under that mark for a long time. It is accordingly contended by the learned counsel for the respondent No.2 that the adoption and use of the mark 'sharp arrow' was, therefore, honest and concurrent, and even if the appellants are held to be the proprietor of marks 'arrow' and 'golden arrow' the Tribunal rightly allowed registration of the mark of the respondent No.‑2 under section 10 (2) of the Trade Marks Act in the circumstances of the case. Additionally it is contended by the learned counsel for the respondent No.2 that in rectification No.3/69 and 4/69 which the respondent No.2 had filed for the removal of the registered mark of the appellant, the tribunal while disallowing the application for rectification held that there was an honest 'and concurrent user of the mark by the respondent No.2 but this order of the Tribunal was not challenged by the appellant and as such it has become final and as such the appellant cannot agitate this contention in the present proceedings. The respondent No.2 in support of their contention has relied on the case of Younus Ali v. Pakistan' and others (1968 S C M R 628), Amritdhara Pharmacy v‑. ‑ Satya Deo Gupta (A I R 1963 S C 449), London Rubber Co. Ltd. v. Durex Products Incorporated (A I R 1963 SC 1882), Hem Chandra Choudhury v. Ajadhya Bala Choudhury and ‑others (A I R 1969 Cal. 43), Aktiebolaget Jonkopinq Valcan, Sweden‑v. Registrar of Trade Marks, Karachi (P L D 1975 Kar. 478), and M/s. Bengal Friends and Co., Dacca v: (1) M/s: Gour Bendode Saha and Co., Calcutta and (2) The Deputy Registrar of Trade Marks, Chittagong (P L D 1969 SC 477).

3. After hearing the learned counsel for the appellant and after going, through the case law cited at the Bar ,1 am of the view that the tribunal while allowing registration of the mark 'Sharp Arrow' with device of arrow and Globe under section 10 (2) of the Act in favour, of respondent No.2 neither acted arbitrarily nor against the provision of Act so as to call for interference in this appeal. I am also of the view that the appellant having failed to challenge the decision of Assistant Registrar in, the Rectification Proceeding No. 3/69, 4/69, wherein the tribunal while disallowing the application of respondent. No.2 for removal of the registered mark of the appellant categorically held that the respondent No. 2 was entitled to registration of their mark on the basis of concurrent and honest user, the same become final and .the appellant could not be allowed to agitate against those findings in .the proceedings for registration of Trade Mark filed by respondent No.2, the learned counsel for the appellant though admitted that decisions of tribunal in Rectification Proceedings No.3 and 4 of 1969 were not challenged by the appellant, very vehemently urged that the observations of the tribunal in the rectification proceedings to the effect that the respondent No.2 was entitled to registration of their trade mark on the basis of honest and concurrent user were clearly in excess of the authority conferred on the tribunal as this question was neither germane nor directly relevant in the proceedings for rectification of Trade Mark which was earlier decide by the tribunal. The submission of learned counsel has not impressed meat all. Rectification proceedings for removal of registered trade marks .are governed under Section 37 of the Act which reads a follows:---------------

37. Removal from register and imposition of limitations on grounder non‑use,‑(1) Subject to the provisions Sub-section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either‑

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or

(b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

4. Provided that, except where the applicant has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by the proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.

(2) Where in relation to ally goods in respect of which 'a trade mark is registered;---

(a) the circumstances referred to in clause (b) of subsection (1) are shown to exist so far as regards non‑use of the .trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Pakistan (otherwise than for export from Pakistan), or in relation to goods to ,be exported to a particular market outside Pakistan; and

(b) a person has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods, to be so, sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use..

(3) An applicant shall not be entitled to rely for the purpose of clause (b) of subsection (1) or of subsection (2) on any non‑use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates:"

5. A careful reading of section 37 will show that the 1st proviso to subsection (1) of section 37 clearly provides that an application for rectification of a mark could be refused by the tribunal if the applicant has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark of the goods in question or where the tribunal is of the opinion that he might properly be permitted so to register such .a trade mark. It is, therefore, quite clear that while considering the application of respondent No.2 for removal of the marks of appellant under section 37 of the Act the tribunal was not only competent to consider the right of respondent No.2 to register an identical or nearly resembling trade mark on the basis of honest and concurrent user but such consideration was fully relevant in determining the controversy before the tribunal under section 37 of the Act. The tribunal in proceedings under section 37 of the Act between the above parties. in its decision dated 28‑4‑1973 observed as follows:‑

6. "In these proceedings the judgment of Mr. Nurul Arfin, J. in Jockey case applied here (vide Appeal No. 102 of 1971). The allegation in support of the removal of the said trade marks have not been used in Pakistan and the registered proprietors have no intention of marketing their goods under the present trade marks. The applicants have also made an application No.50071 for registration of almost a similar trade mark 'Sharp Arrow' under No.50071. Issue is whether the applicants are entitled to registration of their mark Sharp Arrow by reason of its existence of special circumstances within the meaning of section 10 (2) of the Trade Marks Act, 1940. The main point to be decided in these cases is that whether special circumstances exist to entitle the applicants to registration of Sharp Arrow as their trade mark for their goods i.e. ready‑made garments which is almost similar words marks arrow and Golden Arrow are already registered marks of the respondents for the same class of goods. The respondents goods could not come into the market of Pakistan since the imposition of ban on the said goods vide Notification No. 335/ 260/64 of June 12, 1951 issued at Karachi in the Ministry of Commerce and Education (Commerce Division) (Import Trade Control) under powers conferred by subsection (1) of section 3 of the Import ‑and Export Control Act, 1950, Gazette Notification has been attached as 'Exhibit "A". The applicants goods came into the market in the year 1967 and have been in continuous use without let or hindrance by the respondents. In this case the decision which can be more applied is that reported in Lallubhai Amirchand v. Punjab Aluminum Factory (P L D 1960 Kar. 545) given by S.A. Haq, J. when he was the Judge of the High Court of West Pakistan.

7. Since the imposition of ban on the import of ready‑made garments in the year 1951 the registered proprietors of the said marks M/s. Cluett Peabody Inc., U.S.A. have not imported into Pakistan for various reasons since 1951. But the applicants have been using the same goods under almost similar marks since 1967 and earned valuable goodwill. These facts constituted 'other special circumstances' within the meaning of section 10 (2) of the Trade Marks Act, 1940 so as to allow the registration of a mark almost identical with one already on the Register, as the expression 'other special circumstances' was wide enough to include diverse considerations relevant to the balanced development of industry, the relative degree of convenience or inconvenience to the contesting parties in the event of registration or its refusal and finally the interest of the consumer or the general public. Thus, on the finding of Lallubhai Amirchand, the goods of the registered proprietors were no longer available for sale or consumption in this country and in the vacuum so created a local firm of manufacturers has built up sizable business by using the trade mark of Lallubhai A.mirchand, reported in P L D 1960 Karachi P.349 the learned Judge allowed the registration of the trade mark as the trade mark of Punjab Alluminium Factory. The facts of these cases are the same as that of the above case. The respondents have used the mark and their sales are quite substantial and duly supported by documentary evidence, but the plea of special circumstances made by the respondents are also justified. This judgment has also been cited in a recent judgment in Misc. Appeal No. 102 of 1971 Pakistan General Stores v. Coopers Incorporated.

8. After carefully considering the arguments of both the learned advocates, the evidence on record and in exercise of the discretion vested in me, I hold that the objection of the applicants cannot be sustained as it is a case of special circumstances. However, I disallow rectifications Nos.3 (69) and 4 (69) and further order that due to special circumstances coupled with honest and concurrent user the mark No.50071 of the applicants for rectification will proceed to advertisement. I further order that in the special circumstances of the case each party to bear its own costs."

9. The above findings of tribunal categorically determined the right of respondent No.2 to register their mark on the basis of concurrent and honest user and the appellant having failed to challenge the above decision cannot collaterally attack the above order. It is true that in proceedings under Section 3 7 of the Act the tribunal was dealing with the prayer of respondent No.2 for removal of the mark of appellant from the Register of Trade Marks, but it equally true that the application of respondent No.2 was refused by the tribunal on the consideration that he was entitled to registration of his mark under section 10 (2) of the Act. This consideration by the tribunal was fully relevant and within the scope of Section 37 of the Act. In somewhat similar circumstances in the case of Multani Sohan Halva, Hussain Aghahi Multan v. Registrar of Trade Marks, Karachi (1987 CLC 1448) I had the occasion of considering a similar argument and I observed as follows:‑

10. "A perusal of the order of Registrar dated 28‑3‑1979 whereby he rejected the application of petitioner to remove the registered mark of respondent No.2 'Hafiz' from the Registrar of Trade Marks, will show that all the above contentions now raised by the learned counsel for the appellant in support of this appeal were raised before the Registrar in support of their rectification application which were duly considered and repelled. The appellant failed to challenge the said order under the Act and thus it attained finality. It may be true, that the scope of two proceedings is different but the findings given on a relevant contention in one proceeding which attained finality cannot be allowed to be challenged collaterally in another proceeding unless it is permitted by law. The Registrar while dealing with the contention of appellant in proceedings under Section, 37 of the Act held as follows:‑

11. "I have gone through the pleadings and the evidence filed by the respective parties and have also heard the learned, counsel for the contesting parties at length. I have come to the safe conclusion that no case is made out for expunction, of the mark Rafiz registered under No. 62517. The word HAFIZ, adopted as a trade mark by the registered proprietor, in my estimation does not infringe section 8 (a) or 8 (b) of the Trade Marks Act.

12. "HAFIZ" is a common dictionary word meaning a person who remembers by heart. It does not ordinarily mean that whosoever has adopted this word is necessarily a 'Hafiz‑e‑Quran'. Hafiz is a word from personal language, meaning as above, and is also available in Arabic Dictionary where it means as "protector, guardian or supervisor". 'Hafiz' was also the title of a Persian poet and collection of his verses is known as ' Deewan‑e‑Hafiz' . We may look at this word 'Hafiz' from any angle or we may accept or adopt any of its meaning, and in my estimation it does not injure the religious feelings of a Musalman, nor does it hurt the religious susceptibility of any class of citizens in Pakistan.

13. At page 269 of Standard Dictionary published by Kitabistan, Urdu Bazar, Lahore, meanings of this word HAFIZ are given as a protector, a preserver, a guardian, a governor. By all these meanings, the word HAFIZ, is not a word which cannot be accepted as a trade mark. Acceptance of word HAFIZ as trade, mark by the Trade Mark Registry can by no stretch of imagination be taken as acceptance in violation of any provision of the Trade Marks Act. This word is in common use in our daily conversation either as Khuda Hafiz or 'Hafiz-u-Nasir ' Here the word HAFIZ, always means a protector, a guardian or a preserver, and I do not accept the plea of the applicant that this word injures the religious feelings of the Muslims or of any sect of the Muslims, if used as a Trade Mark.

14. The other plea regarding publici juris is also not acceptable, because in the Trade Marks Act, a word becomes publici juris when it is declared common to the trade by the Registrar of Trade Marks, and for declaring a particular word/mark as common to trade or in other words becoming publici juris, the sole and final judge is the Registrar of Trade Marks himself. In Re-National Starch Manufacturing Co. v. Munn's Patent Maizena and Starch Co. 1894 A. 275/63 WPC 112, it was stated as follows:‑ 'where applicant in 1889 registered in the colony under the Trade Marks Act, 1865 word 'Maizena' which they had invented in 1856 registered and enforced in other countries; but for a quarter of century allowed to be used in the colony as a term descriptive of the article and not of their own manufacture thereof; held the word had thereby become publici juris and was no longer registrable as a trade mark. See page 324 of the English and Empire Digest, Volume 43.'

15. In the instant case the word 'Hafiz' was adopted by the registered proprietor in the year 1963 and he worked thereon since then continuously and without any interruption, let or hindrance and at no stage it has been established that the word in question was abandoned by the registered proprietor. Then how the applicant can come out with the plea that the word 'Hafiz' has become publici juris'.

16. The above findings of Registrar which attained finality deal with all the contentions of appellant raised before me. The learned counsel was unable to advance any logical reason or argument for ignoring the above findings of Registrar which is well‑founded and based on sound reasoning. The learned counsel for the appellant, however, cited the above‑noted cases in support of his contentions. I will, therefore, now examine whether these cases are of any evidence to the learned counsel."

17. The above observations fully apply to the present case as the decision in the rectification proceedings which was between the appellant and respondent No. 2 was not challenged by the appellant and the observations with regard to right of respondent No.2 to get their mark registered on the basis of honest and concurrent user has attained finality and, therefore, could not be attacked collaterally in proceedings for registration of mark which though instituted earlier were stayed on account of rectification proceedings. Even otherwise the admitted position in the case is that although the appellant obtained registration of their marks 'arrow' and 'golden arrow' in Pakistan but on account of complete ban on the import of ready‑made garment shirts etc. their products were not available in Pakistan. It is settled law that extra‑territorial use of a trade mark by a party is no relevant under the Act which only recognised such use within the territory of Pakistan. There is nothing on record to show that the appellant had in fact used their mark 'arrow' or 'golden arrow' in Pakistan after its registration. On the contrary the evidence on record clearly shows that the respondent No.2 when adopted the above mark' had not only verified that no such competing mark is available in the market but they continued to use this mark without any obstruction and claim by the appellant. There is also evidence on record to show that respondent No.2 used the above mark extensively and large quantity of ready‑made garments were exported by them to foreign countries under the mark 'sharp arrow'. Such extensive use of the above mark by the respondent was rightly considered by the tribunal as amounting to honest and concurrent user of the said mark by the respondent No.2. I accordingly see no reason to interfere with the order of the Tribunal and dismiss the appeal but in the circumstances leave the parties to bear their respective costs.

18. M.Y.H./C‑38/K Appeal dismissed.