PUNJAB ENGINEERING CORPORATION (REGD.) Versus MUHAMMAD YAQOOB

1. This is an appeal filed under section 76 of the trade marks Act (hereinafter referred to as the Act) to challenge the correctness of the order dated October 18, 1987 passed by the Registrar of Trade Marks rejecting opposition No.47 of 1986 to application No.82063 in class 7. The first respondent herein filed application No.82063 on 16‑2‑1984 for registration of a trade mark KING FU in Class 7 in respect of Chaff cutters and blades, sugarcane crushers etc. The application was accepted by the second respondent and advertised in the Trade Marks Journal No.418 of 1‑11‑1985 at 212. The appellant filed notice of opposition to the registration of the said mark on 25‑9‑1986 under section 15(2) of the Act in relation to the goods in question suffering out the following main grounds:‑

(1) The opponents have since about the year 1960 carried on reputed business as manufacturers and merchants of argicultural implements, which have marketted under the opponent s well‑known trade mark KING .

(2) The trade mark KING is duly registered in the name of the opponents under the Act in respect of agricultural implements vide trade mark No.24199 in clause 7 and No.78920 in Class 7, which were duly advertised in the Trade rJarks Journals prior to registration.

(3) The Trade mark sought to be registered by the appellants is identical with or closely similar to the opponents trade mark and the goods of the applicants are also the same as those of opponents. Therefore, the applicant s trade mark, if registered or allowed to be used, is likely to deceive and cause confusion, and is likely to enable the applicants and/or others to pass off the applicants goods as and for the goods of the opponents.

(4) The registration of the applicant s mark with the words KING FU would be contrary to sections 9(a) and 10(1) of the Act.

(5) The applicants were not the proprietors of the mark in respect of the goods for which registration had been sought, within the meaning of section 14(1) of the Act.

2. In answer to the said opposite, the first respondent filed a counter statement on 16‑6‑1987 stating that the first respondent adopted the mark KING FU believing in good faith that they were the originators of the said mark in respect of Chaff cutters and blades of Chaff cutters, sugar cane cutters, wheat threshers, rice and maize shellers, electric motors (not for land vehicles) and all other agricultural implements falling in Clause 7, that before so adopting they, after making thorough search in Pakistan market that similar mark was not in use. After the counter statement was filed by the first respondent, the appellants filed an affidavit of the managing partner setting out the evidence in support of the opposition supported by the Income‑tax assessment orders, membership certificate of Faisalabad factory owners and Chamber of Commerce. Thereafter, the first respondent filed an affidavit reiterating the grounds of counter statement.

3. The second respondent then proceeded to consider the application for registration in the light of the opposition, after a personal hearing. Before the second respondent it was contended by the appellants that the application for registration of the trade mark KING FU was based on the registered trade mark of KING FU in respect of agricultural implements and the first respondent had adopted the trade mark KING FU and by such adoption they had acquired ownership of the trade mark and therefore the registration of the trade mark in the name of the first respondent after the appellants had acquired ownership therein will be contrary to section 8(a) of the Act. Dealing with objection of the appellants that they having acquired ownership of the trade mark KING FU could not be registered in the name of the first respondent. The second respondent took the view that the appellant s mark KING was registered under No.34199 in Clause 7 and another mark 78920 consisting of word KING and device of Crown for similar goods whereas the first respondent s mark consists of words KING FU in Urdu. ~, The mark phonetically and visually has no resemblance with the registered mark of the appellants. The second respondent found that three other words having word KING were accepted for registration for more or less similar goods and in this case no right to the exclusive use of word KING has been given to the applicant .

4. In the instant case the second respondent found that KING FU is used and commonly known in China for demonstrating Karate type wrestling and has been used as a character in movies. The expression KING FU is defined in Chambers 20 th Century Dictionary . New Editions as the art of unarmed combat in ancient China.

5. The principle laid down in Halsbury s laws of England, Vo1.38, simonds Edition at page 588, para 984 is as under:‑

6. Thus, in the case of applications for registration of trade marks and in oppositions thereto, the onus is on the applicant to satisfy the registrar that the trade mark applied for is not likely to deceive or cause confusion.

7. As regards resemblance, it is stated that it is question of fact. The author observes:‑

8. Whether or not any degree of resemblance likely to deceive or cause confusion exists, is a question of fact for the tribunal or Court to decide upon the evidence in each case and is not a matter for witnesses.

9. What degree of resemblance is likely to deceive or cause confusion in any instance is incapable of definition a priori and the observations of Judges upon other and quite different facts are usually of little help.

10. Lord Parker in the matter of an Application by the Pianotist Company Ltd. reported in 1906 23 PPC at 774 has laid down the test as follows:‑

11. You must take the two words. You must judge 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 natural and kind of customers 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 a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances of case, 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 you must refuse the registration in that case.

12. The primary tests are that the words should be judged by their look and by their sound. There is no similarity in the marks by their look in the present case. KING and KING FU in my view, are not similar in sound and are not likely to confuse any person. B The Registrar was satisfied on the evidence on record that the mark phonetically and visually has no resemblance with the registered mark of the appellants. As such he disallowed the opposition and the first respondent s application was allowed.

13. In view of the findings of fact recorded by the second respondent, which there is no reason to differ from, I agree that C the second respondent has answered the question of law correctly. There is no doubt that the first respondent adopted the mark KING FU . The registered trade mark of the appellants is KING and the mark KING FU has no resemblance to the appellant s mark.

14. On a consideration of the entire facts of the case, I am satisfied that there is no descriptive similarity between the two marks. As a result, I hold that the second respondent has correctly recorded the finding that the use of trade mark KING FU by the first p respondent is not likely to deceive or cause confusion and therefore its registrations not prohibited by Clause (a). of section 8 of the Act. I hold that the second respondent has correctly recorded the finding that mark KING FU phonetically and visually has no resemblance with the registered mark of the appellants. I have no hesitation in endorsing the said finding.

15. As a result the appeal is dismissed. In the circumstances of the case, the parties shall bear their own costs.

16. M.Y.H./P‑78/K Appeal dismissed.