ENGLISH BISCUIT MANUFACTURING LTD. Versus REGISTRAR OF TRADE MARKS
1. This is an appeal under section 76 of the Trade Marks Act, 1960 against the decision of the Registrar of Trade Marks dated 15‑10‑1987 by which he refused registration of the appellants Trade mark.
2. The facts leading to the filing of the above appeal are that the appellants are a Pakistan Company having its registered office at Plot No.l‑4, section 23, Korangi Industrial Area Karachi. On 22‑1‑1985, it applied on the prescribed form for registration of trade mark under No. 85132 in respect of 'ENGLISH BISCUIT' on label, in x class 30 of the classification of goods mentioned in the 4th Schedule of the trade Marks Act, 1940 (hereinafter referred to as the Act. The mark on the date of application stated to be in use since 1970. The appellants claimed to be the proprietors of the trade mark. A label mark consisting of the words 'English Biscuit' against a background of a Red and Blue rectangle.
3. In due course, the Trade mark application was examined by the examiner who raised an objection and issued a notice to the appellants directing them to show cause why the application should not be refused under section 6 (1) (d) and (c) the Act on the ground that the mark is descriptive and not adopted to distinguish. The appellants submitted a written reply and their Trade mark agent and counsel later attended hearing. The contention of the appellants was that the mark 'English Biscuit' has continuously and exclusively been used by the appellants in Pakistan since 1970. It was contended that due to high quality of the products, extensive advertisement and the grant reputation and goodwill firmly acquired in Pakistan, it has become distinctive and exclusively associated in the rends of the general public with the appellants. As such, the objection be waived and accept the application.
4. The Registry raised further objection to the registration under section 8(a) of the Act on the ground that the mark was deceptive. The appellants submitted written reply. The appellants contended in their reply that they have no direct reference to the character and quality of goods. Instances of "TIBET SNOW and AFGHAN SNOW" were mentioned in the reply.
5. By his decision dated 15‑10‑1987 appeal the Registrar observed that word "ENGLISH" gives an impression to the consumers that the biscuits originate from England or have been manufactured according to the English specification. The firm is local company and therefore, use of the word 'English' in respect of biscuits which are manufactured in Pakistan is deceptive and its registration is barred by Section 8 (a). The Registrar further observed that the significance attached with they word 'English' is that the public will still get impression that the biscuits have been manufactured according to English specification or the appellants have some affiliation with British company.
6. The Registrar observed that the word 'English Biscuits' are descriptive of the goods on the ground that biscuits are English and hence the registration is barred by section 6(1)(d) and (e) of the Act.
7. Before Mr. Zain Shaikh made the following submissions. His first submission is that the learned Registrar erred in refusing the appellant's trade mark 'ENGLISH BISCUIT'. The appellants in support of their application filed affidavit of user in which they stated that their product biscuits with a laebel English Biscuit had been upon the market or is being used by their company since 1970 and due to its high quality of the products expensive advertisement and extensive sales their company's product under the trade acquired a very reputation popularity and goodwill in Pakistan.
8. The evidence was thus clear and unrebutted that in the trade circles the words 'ENGLISH BISCUIT' is connected to the biscuits preparation which is being sold by the appellants. It cannot be doubted that by the constant use of the Trade mark 'ENGLISH BISCUIT' for such a long time the appellants can legitimately claim that the Trade mark is almost exclusively connected with their products. The Registrar observed that the word "English" in respect of biscuits which are manufactured in Pakistan is deceptive and its registration is barred under section 8 (a) but no reasons have been given in support of this findings. The Registrar apparently thought that if the word descriptive is inevitably and in all circumstances means that the biscuits originate from England or have been manufactured according to English specification. But this view is not supportable in law. In every case the question is a question of fact, that is to say, where evidence proves conclusively that descriptive word has lost its primary meaning, and has acquitted a secondary meaning, it is a question of fact whether the registration of that mark will or not cause confusion. The word is not merely by reason of facts that it is descriptive word incapable of registration. See, in the matter of an application J & P Coats Ltd., for registration of trade mark (1936) 35 R.P.C. 355 at 385. There are words which have a direct relation to the character and quality of goods which nevertheless may lose their primary meaning and acquire in a particular trade a secondary meaning as indicating to people interested, whether as traders or as public in trade, the goods of a particular manufactured when that does occur and the evidence shows that the word has attained a secondary meaning, then, in my opinion, the word is registrable as a Trade mark.
9. In Kohinoor Chemical Co. Ltd. v. The Registrar of Trade Marks 1986 C L C 649. The Registrar of Trade Marks refused to register the trade mark 'French Girl' on the ground that the words `French Girl' were of French Origin. Mr.K.A. Ghani, J. held that the use of the word 'French Girl' in my opinion does not indicate that the goods sold under the said Trade mark, are of French Origin. "The learned Single Judge placed reliance on the case of SCOTMAN Trade Mark (1965) R.P.C. 358 Roman HOLIDAY Trade Mark reported in 1964 R.P.C. 129.
10. In Hoechest Aktiengesellschaft v. The Assistant Registrar (Civil Appeals Nos. K‑37 and K‑38 of 1979) decided by the Hon'ble Supreme Court on 22‑9‑1987. The Hon'ble Supreme Court held as follows:‑--
11. "In support of the first contention, it was urged that on the plain reading of section 6(1)(d), there can be no objection to the registration of a word unless it is shown that such word is a geographical name or surname in Pakistan. Ex hypotheis, therefore, it was argued that since "KALLE" is not the name of any place in Pakistan or the surname of any group of persons ordinarily residing in Pakistan, the whole foundation of the objection is totally wiped off. We find force to this contention. It may be pointed out, that the provisions of Section 6 of the Act are anologous to the provisions of section 9 of the English Trade Marks Act except that clause (d) of the English Act does not confine the restrictions contained in the provision to any territorial limits as is the case with the statutes in force in Pakistan. Clause (d) of section 9 of the English Act reads as follows:‑---
12. "(d) a word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification,. a geographical name or a surname."
13. On the account of this material difference, in terms of the aforesaid provision of the English Statute, a question that the prohibitions contained in the said provision are not applicable to a foreign geographical name or surname, could not possibly arise before the English Courts. The decisions have, therefore, in the English Jurisdiction proceeded on the interpretation of the words 'according to its ordinary signification'. It may further be stated that before the English Act of 1905, the prohibitions on the use of names of places was absolute and no geographical name could be registered as Trade mark. But in the Act of 1905, the qualification "according to its ordinary significance" was added, in order to give express effect to the decision in Magnolia Metal Co.'s T.Ms. (1897) 2 Ch. 371, in which it was held that the words 'geographical name' are not equivalent to the 'name of any place' and an ordinary English word does not become a geographical name simply because some place on the earth's surface has been called by it. In support of the second contention, raised by the learned counsel he has placed reliance on the said Magnolia's case. But he has overlooked the subsequent decision from the English jurisdiction in the case of Boots Pure Drug Co.'s Tm ("Livron") (1937) 54 R.P.C. 327, in which view was expressed that foreign geographical name, not current in the English language, can have but only one ordinary signification, namely, that of being a geographical name of a foreign place."
14. In Farukh Saleem v. The Registrar (M.A. 36 of 1983) decided on 22‑11‑1987. The Registrar refused to register the Trade Mark 'English Butter' on the ground that they had reference to a geographical name.
15. Mr. Mamon Kazi, J. held‑‑--
16. "Be that as it may, but suffice it to say, that a trade mark is to be looked at as a whole. The mark in question has been filed with this appeal and I do not find anything objectionable therein which may offend against any of the provisions of the Trade Mark Act. The mere use of the word "English Butter" cannot have reference to the quality and character of the goods, I, therefore, cannot agree with the conclusions of the learned Registrar in this respect.
17. Before concluding I may mention that in this Court an undertaking in writing was filed on behalf of the appellants by their Advocate Zain Shaikh in the following terms:‑---
18. "The appellant hereby undertakes to print the words "Made in Pakistan" by English Biscuit Manufacturer (Private) Ltd. at the bottom of the side panel of every packet of biscuits containing the label‑monogram "English Biscuit."
19. For the reasons given above and being of the opinion that the Trade mark 'English Biscuits" consisting of combination of words, is a distinctive mark not likely to deceive or cause confusion and that the reasons given in the impugned decision cannot be supported by law, the appeal is allowed and the Registrar is directed to proceed with the appellants Application No.85132 in clause 30 in accordance with law subject to the undertaking given in this Court which has been reproduced above.
20. The above are the reasons for the short order dated 20‑3‑1988 passed by me on conclusion of arguments.
21. H.B.T/E‑18/K Appeal allowed.