Messrs. LAXSON TOBACCO COMPANY LTD. vs REGISTRAR OF TRADE MARKS
This appeal, filed under Section 76 of the Trade Marks Act, challenged an order by the Registrar of Trade Marks refusing to register the trade mark "HUDSON" for cigarettes and tobacco products in class 34. The Registrar had refused registration on the grounds that "HUDSON" was a common surname and a geographical name (river in USA, bay in Canada), thus objectionable under Section 6(1)(d) of the Trade Marks Act, lacking distinctiveness. The Sindh High Court held that the prohibition against registering geographical names or surnames under Section 6(1)(d) of the Trade Marks Act is restricted to names "in Pakistan". Since "HUDSON" was not a recognized caste, surname, or geographical name within Pakistan, the Registrar's objection was deemed misconceived. The Court accepted the appeal and directed the Registrar to proceed with the appellant's application for registration.
- Can a trade mark be refused registration under Section 6(1)(d) of the Trade Marks Act if it is a common surname or geographical name outside Pakistan?
- Is the prohibition against registering geographical names or surnames under Section 6(1)(d) of the Trade Marks Act restricted to names within Pakistan?
- What criteria determine if a trade mark is objectionable as a surname or geographical name under the Trade Marks Act?
- Does the appearance of a name in a foreign telephone directory or its recognition as a geographical feature outside Pakistan automatically preclude its registration as a trade mark in Pakistan?
- Section 76, Trade Marks Act
- Section 14(1), Trade Marks Act
- Section 6, Trade Marks Act
- Section 6(1)(d), Trade Marks Act
1. This is an appeal under section 76 of the Trade Marks Act, challenging an order passed by the Registrar of Trade Marks refusing to register a trade mark.
2. M/s. Lakson Tobacco Company Limited, moved an application under section 14(l) of Trade Marks Act for registration of trade mark "HUDSON" in class 34 in respect of Cigarettes, Tobacco manufactured and raw, smoke rsarticles etc. Registration of said trade mark was refused at the preliminary stage on the ground that "HUDSON" is a common and recognized surname and it has not acquired distinctiveness which was requisite for registration and that the mark "HUDSON" was commonly understood in Pakistan as a surname as a number of Christians and foreigners living at Karachi and at Islamabad and at other towns of Pakistan had such surname and that the mark was also described as River in USA and that there was "HUDSON BAY" in Canada. It was accordingly observed in the grounds of decision that registration of"HUDSON* was objectionable under section 6(l)(d) of the Trade Marks Act. Hence this appeal.
3. Mr. Salim Ghulam Hussain, learned counsel for the appellant argued that as per section 6 of the Trade Marks Act a trade mark shall not beregistered unless words of such trade mark were not according to the their ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan. In this respect earned counsel cited certain authorities which follow.
4. In the case of Messrs Wurttember-gische Parfumerie GMBH v. The Assistant Registrar (1) of Trade Marks, Government of Pakistan (PLD 1986 Kar. 371) the view taken was that mark "Lady Manhattan" could not be refused registration on the ground that Manhattan"is a geographical name i.e. The name of a village or town or city in U.S.A., as in the relevant law under consideration i.e. Section 6(l)
(d) of the Trade Marks Act, the geographical name is restricted by the words "in Pakistan In the same case it was held that registration of trade marks 'Swiss Miss', Made moiselle De Paris, Gala of London, Medora of London, Roman Holiday, Evening in Paris and Spring time in Paris supports the contention that the mark "Lady Manhattan" is a mark c1p able of being registered. In the case of St.
5. Paul's Tobacco Company (City of London) Inc. Ltd. v. The Registrar of Trade Marks (1989 M LD 983), the view taken was that the geographical name which is prohibited for registration under section 6(l)(d) of Trade Marks Act should be one relating to Pakistan. In the case of LEVI Strauss & Co. v. The Assistant Registrar of Trade Marks (1987 M LD 466) the view taken was, that the word "Levi's" could not have been refused registration on the ground that "Levi" is a geographical name i.e. Name of a village or country or city outside Pakistan or on the ground that the name "Levi" is found 35 times in the London Telephone Directory.
6. In the present case the word 'HUDSON" does not appear to be caste of any person in the Telephone Directory of Karachi (1990 Issue) or (1988 Issue). The word "HUDSON" is not geographical name of any place or river in Pakistan. In the circumstances I am of the view that the objection against registration of the trade mark "HUDSON" by the learned Registrar of Trade Marks was misconceived.
7. I, therefore, accept this appeal and direct the Registrar to proceed with the application of the appellant for registration of the trade mark "HUDSON" in accordance with law. There will be no order as to costs.