PREMIER TOBACCO INDUSTRIES LIMITED Versus ASSISTANT REGISTRAR OF TRADE MARKS-I

1. This appeal under section 76 of the Trade Marks Act, 1940, is directed against the decision dated 22‑11‑89 of Assistant Registrar‑I of Trade Marks Karachi, refusing to register appellant's trade mark "CONCORD" (Label) in Class‑34. '

2. The appellant filed a Trade Mark Application No.87046 in Class‑34 for the registration of trade mark "CONCORD" (Label) in respect of cigarettes, tobacco manufactured and smokers articles, matches and gas lighters. The application was examined and a show‑cause notice dated 15‑4‑1986 was issued to the appellant under section 14(1) of the Act communicating objections to the registration under sections 8(a) and 10(1) in view of an earlier registered mark CONCORIE at No.42356 in Class 34 and under section 6(1)(d) on the ground that it was a geographical name. The notice was duly replied by the appellant. Later, the appellant was required to furnish evidence of user which too was done. The matter was then heard and the said decision was given.

3. It was contended by Mr. Salim Ghulam Hussain the learned counsel for the appellant that Assistant Registrar's refusal to register the mark was unjustified as there was neither any visual nor phonetic similarity between the words "CONCORD" and the earlier registered mark "CONCORIE". The Assistant Registrar in the impugned decision while stating the grounds for the refusal to register appellant's mark observed:

4. "The words "CONCORIE" and "CONCORD" are substantially very close to each other when compared phonetically because the last syllable in English pronunciation is often shored. Visually too the words do not show any remarkable difference."

5. The learned counsel submitted that Mark No.42356 was not even in use in Pakistan and no cigarette or smokers article etc. was being marketed under that name and there could be no question of any deception or confusion by the product of the appellant under the proposed name. He pointed out that the articles covered by both the marks being cigarettes, smokers alone would be the buyers, who generally develop taste for a particular brand and as such there was no likelihood of any deception or confusion even if there was somewhat similarity in the names of two brands.

6. It appears .to me that prima facie the two words, CONCORD and CONCORIE, taken as a whole, are dissimilar visually and phonetically. In any event it seems that the Assistant Registrar was not justified in summarily refusing appellant's application No.87046 for registration of the said trade mark without having the same advertised under section 15 of the Act. For the exercise of the discretion vested in him in a case like the present it was desirable to that the Assistant Registrar should have had all the relevant material before him and for this purpose he ought to have caused the application advertised in the prescribed manner. This would have enabled the interested parties to file opposition and then the Assistant Registrar could have been in a better position to determine the issue.

7. It was contended by the appellant's counsel that in C.MA. No.79 of 1984 it was held by this Court that the Registrar was not competent to delegate his judicial functions under the Act to his subordinate officers other than the Deputy Registrar and for that reason too the impugned decision was liable to be set aside. He stated that the appeal filed against the judgment in the said case in the Supreme Court has been dismissed.

8. In the circumstances I set aside the impugned decision and remand the ease to the Registrar for decision with the direction to also cause appellant's application advertised in the prescribed manner as provided under section 15 of the Act and following the normal procedure decide the application. There will be no order as to costs.

9. By a short order, dated 6‑8‑91 I had allowed the appeal and remanded the case to Registrar and these are the reasons for that short order.

10. H.B.T./P‑217/K Appeal allowed/Order accordingly.