TRADEMARK

TRADEMARK

The law considers a trademark to be a form of intellectual property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace or through registration of the mark with the Trade Marks Registry of the Intellectual Property Organization of Pakistan (IPO-Pakistan), established under an Act of Parliament — the IPO-Pakistan Act, 2012 — which provides prima facie evidence in favour of the owner of the trademark.

Case: Messrs. Ahmed Tea Limited v. Messrs. Ahmed Foods Industries (Pvt) Limited

Misc. Appeal No. 26/2008 — In the High Court of Sindh at Karachi

Parties

Appellant: Messrs. Ahmed Tea Limited, through Mr. Muhammad Ayub, Advocate.

Respondents:
Respondent No. 1: Messrs. Ahmed Foods Industries (Pvt) Limited, through M/s. Jawwad Raza and M.K. Shikho, Advocates.
Respondent No. 2: Registrar of Trade Marks, through Mr. Saleem Ghulam Hussain, Advocate.

Date of Hearing: 02.10.2018    Date of Announcement: 17.01.2019

Presiding Judge: Salahuddin Panhwar, J.

JUDGMENT

The Appellants challenged the decision dated 28.07.2007 delivered by the Registrar of Trade Marks (Respondent No. 2), whereby Opposition No. 292/2004 filed by Respondent No. 1 was allowed and the Appellants’ Application No. 149770 in Class 30, dated 29.08.1998, for the registration of the trademark “Ahmad Tea London and device” was refused.

Background Facts

The Appellants/Applicants, M/s. Ahmed Tea Limited, England, Merchants and Exporters, applied for registration of the trademark “Ahmad Tea” vide Application No. 149770 in Class 30 before Respondent No. 2. They contended that they are an internationally well-established company engaged in the sale and export of tea for many years and that they adopted the trademark consisting of the words “AHMAD TEA LONDON” with an arch-like device on the label in the year 1988. Since then, the said trademark has been used in the U.K., Canada, and other countries. The tea sold under the said trademark is known and recognized as being of high quality and standard, and the trademark has accordingly acquired goodwill and reputation.

The Appellants further stated that they obtained registration of the said trademark in Canada under Registration No. TMA542-603, claiming use since 1988; that the trademark is also registered in the U.K. under No. 1567279 in Class 30 for tea, with effect from 31st March 1994; and that they own International Registration No. 599733, which includes Algeria, Austria, Germany, Benelux, Bulgaria, Hungary, Cuba, China, Egypt, Spain, the Federation of Russia, France, Italy, Morocco, Monaco, Mongolia, Portugal, Slovenia, Switzerland, Sweden, Yugoslavia, Romania, and the Democratic Republic of Korea.

In order to protect their rights in the above trademark, they applied for its registration in Pakistan under Application No. 149770 in Class 30 in respect of “Tea, coffee, jams, and other goods included in Class 30.” The said application was advertised before acceptance in Trade Mark Journal No. 632 dated September 2003 at page 388.

The Appellants further submitted that they conducted a search in the U.K., Australia, and the U.S.A. and found that the opponent’s trademark No. 1520285 registered in the U.K. had been merged with No. 1520284, that this trademark was registered in Classes 29 and 30 but had not been registered for the use of “Tea,” and that in Australia, the mark was registered in Class 29 (No. 594184) and Class 30 (No. 594188) but without coverage for “Tea.” In the U.S.A., AHMED was registered vide No. 74/708454 in Class 29 and No. 74/708456 in Class 30, neither covering “Tea,” and both registrations appeared to be abandoned.

The Appellants further argued that Respondent No. 1 had failed to file any evidence in support of their averments regarding use and advertisement; that the trademark “AHMED” of Respondent No. 1 is associated with goods other than tea; that the two marks — “AHMAD TEA LONDON and device” and “AHMED” — are totally different and dissimilar, both visually and phonetically; and that Respondent No. 1 had not filed a single piece of evidence in support of extensive publicity of their trademark.

The Appellants prayed that: (a) Opposition No. 292/2004 be disallowed; (b) Application No. 149770 in Class 30 be allowed to proceed to registration; and (c) costs of these proceedings be awarded.

Respondent No. 1’s Opposition

Respondent No. 1, M/s. Ahmed Food Industries (Pvt) Limited — a company incorporated in Pakistan under the Companies Ordinance, 1984 — opposed the registration on the grounds that they have for many years carried on a reputable business in Pakistan and internationally as manufacturers, merchants, importers, and exporters of a wide range of products falling in Classes 29, 30, and 32.

Respondent No. 1 stated that the trademark AHMED, besides being their principal world-famous trademark, is also their house mark; that the word “Ahmed” forms a part of their corporate name; that the trademark AHMED was first adopted and used by them in the year 1952 and has been continuously in use since then on a large number of food items; and that, in view of the good quality of products and intensive publicity campaigns, the trademark AHMED has become exclusively associated with them throughout the world, including Pakistan.

The following registrations were secured in Pakistan:

The following is the list of countries where AHMED brand products are sold internationally:

Respondent No. 1 contended that the Appellants had applied for registration of the trademark AHMED TEA with prior knowledge of the popularity and reputation of the trademark AHMED, and with a view to trading upon the goodwill and reputation of Respondent No. 1 therein. Respondent No. 1 argued that the use of the impugned trademark AHMED TEA would lead to confusion and deception among consumers, and that the likelihood of deception and confusion is more serious because the goods are of the same description and are used and purchased by the same class of purchasers through the same trade channel.

It was submitted that the Appellant’s trademark AHMED TEA is objectionable under Section 10(1) and Section 8(a) of the Trade Marks Act, 1940, by reason of its being likely to deceive or to cause confusion, and that the Appellant’s mark, if used, would be disentitled to protection in a court of justice under Section 8(a) of the Trade Marks Act, 1940.

Respondent No. 1 prayed that: (a) Opposition No. 292/2004 be allowed; (b) Application No. 149770 in Class 30 be refused registration; and (c) costs of these proceedings be awarded.

Arguments of the Appellant Before the High Court

Learned counsel for the Appellant argued that the Appellant is registered in more than 31 countries; that the application was filed in 1988 only for “tea dust”; and that the Registry rejected the application on three erroneous observations: (1) the opponent’s mark AHMED is being used for food items; (2) the Applicant failed to prove its use in Pakistan; and (3) goods being food items of Classes 29 and 30, there was a chance of confusion.

Counsel further submitted that Respondent No. 1 filed its opposition in 2004 under the name “AHMED FOODS INDUSTRIES (PVT) LTD,” but disclosed in a counter-affidavit dated 17.04.2013 that its name had been changed to “AHMED FOODS (PVT) LTD” in 2002. Counsel contended that since no application for change of title was made as required under the Trade Marks law and the Companies Ordinance, 1984, the opponent entity was not in existence at the time of filing the opposition and was therefore not entitled to raise any opposition. It was also argued that the Respondent’s Memorandum of Association contained no mention of dealing in “Tea,” that such business was therefore not registered with the SECP, and that conducting unregistered business would be ultra vires the company and subject to penal provisions under Section 476 read with SRO 230(I)/2001 dated 16.04.2001 and Section 496 of the Companies Ordinance.

It was also contended that the Registry had previously granted the mark AHMED in Class 30 to another entity, “Ahmed Tea Company, Peshawar” (Reg. No. 145525), and that Respondent No. 1 did not oppose that mark, thereby allowing the word “AHMED” to enter the public domain.

Counsel argued that the opponent’s mark related to fancy food items falling in Class 29, and that Respondent No. 1 had no business in Class 30 for dealing in tea. He relied on the legal proposition that the law recognizes and protects a trademark in relation to goods and not independently of goods, per Sections 22(3), 2(20), 4(a), and 4(b) of the Trade Marks Ordinance. He submitted that both marks — visually, phonetically, by look, packaging, size of container, color of wrapper, and get-up — are far different; that the opponent’s mark is a single word without any device whereas the Appellant’s mark consists of three words with a device; and that a mark must be read and considered as a whole.

Reliance was placed on PLD 1967 Karachi 637, PLD 1969 Karachi 278, CLD 2003 Karachi 463, PLD 1985 Karachi 630, 2011 CLD Karachi 193, PLD 1987 Karachi 199, PLD 1979 Karachi 83, PLD 1969 Karachi 376, and 2013 PTD Peshawar 372.

Arguments of Respondent No. 1

Learned counsel for Respondent No. 1 contended that Respondent No. 1, in order to protect its right and interest in the trademark AHMED, has obtained registration in almost all territories of the world; that the Appellant applied for registration of the trademark AHMED TEA with prior knowledge of the popularity and reputation of the trademark AHMED; and that the use of the impugned trademark would lead to confusion, deception, and monetary and goodwill loss to Respondent No. 1.

Counsel further argued that the likelihood of deception and confusion is more serious because the goods are of the same description (Class 30) and are used and purchased by the same class of purchasers through the same trade channel; that the Appellant’s trademark AHMED TEA is objectionable under Section 10(1) and Section 8(a) of the Trade Marks Act, 1940; and that the learned Registrar rightly refused the Appellant’s application on merit.

Arguments of Respondent No. 2 (Registrar of Trade Marks)

Learned counsel for Respondent No. 2 argued that Section 10(1) of the Trade Marks Act, 1940 prohibits the registration of an identical or similar trademark. According to that section, no trademark shall be registered in respect of any goods or description of goods which is identical with a trademark belonging to a different proprietor on the Register in respect of the same goods or description of goods, or which so nearly resembles such trademark as to be likely to deceive or cause confusion.

Counsel submitted that the test applicable under Section 10(1) is the test of identity or resemblance. The word “AHMAD” is phonetically similar to the registered trademark “AHMED,” and there is every possibility of confusion while purchasing the goods. The purpose of the Act is to protect consumers from deception or confusion while buying goods.

Reliance was placed on 2012 CLD 1465, Section 8(a) of the Trade Marks Act, 1940, 2004 CLD 1383, PLD 1990 SC 13, 2012 CLD 1465 (Supreme Court), PLD 1991 SC 27, PLD 1984 SC 8, PLD 2001 SCMR 967, PLD 1960 Karachi 355, 2004 CLD 1454, 1980 CLC 1268, and AIR 1947 Lahore.

The Court’s Legal Analysis

The Court began by noting that the Trade Marks Ordinance, 2001 falls within an exception to Article 18 of the Constitution, which otherwise ensures and protects the right of every citizen to enter upon any lawful profession or occupation and to conduct any lawful trade or business. The Court referred to the preamble of the Ordinance:“WHEREAS it is expedient to amend and consolidate the law relating to trademarks and unfair competition and to provide for registration and better protection of trademarks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto or connected therewith.”

The Court observed that the purpose of registration is to ensure protection to the goodwill, name, and reputation of a trademark so as to avoid any mala fide move by a competitor to benefit from such name and reputation — goodwill that is not established in a day nor achieved overnight. Once registered, a trademark becomes the property of the person in whose favour it is registered.

The Court cited M. Sikandar Sultan v. Masih Ahmed Shaikh (2003 CLD 26):

“Under section 21 of the Trade Marks Act 1940, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and that right shall be deemed to be infringed by any person, who not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembles it as to likely to deceive or cause confusion in the course of trade, in relation to any goods in respect of which it is registered.”

The Court noted, however, that registration alone is not sufficient to deprive all others from using a registered mark for other classified goods and services — only for those goods for which the mark has been registered. This is the reason why goods and services are classified into classes. Referring to Rule 11 of the Trade Marks Rules, 2004, the Court affirmed that goods and services are to be classified in the manner specified in the Fourth Schedule, in accordance with the International Classification.

The Court held that when a particular mark stands registered in favour of one party, that party, as the “authorized user” (defined under Section 2(iii) of the Ordinance), has every right to oppose a subsequent application for registration of the same or deceptively similar mark on any of the grounds detailed in Section 29 of the Ordinance.

The Court quoted the definition of “mark” under Section 2(xxiv) of the Ordinance:

“‘mark’ includes, in particular, a device, brand, heading, label, title, name including personal name, signature, word, letter, numeral, figurative element, color, sound or any combination thereof.”

The Court concluded that where a trader chooses a personal name for registration in respect of a particular class, the intention is that the goods under that class be distinctively known and recognized with such mark. That mark then becomes the principal or dominant mark. An ordinary consumer purchasing a product is not expected to minutely examine it to find differences from a product he intended to purchase. Accordingly, the Court applied the dominant mark test, drawing guidance from Montres Rolex S.A. v. Asstt. Registrar T.M. (PLD 1987 Karachi 199).

The Court also relied on the principle articulated in Seven Up Company v. Kohinoor Thread Ball Factory (PLD 1990 SC 313):

“Our statute law recognizes and also protects trade mark in relation to goods, and not independently of the goods. Therefore, one is justified in claiming protection for a particular trade mark only if it is related to a particular good or class or category of goods… The test of the likelihood of deception or confusion is dependent on the nature of goods, marketing methods, consumer awareness etc., and all variables differing from place to place, country to country and commodity to commodity.”

Application to the Facts

The Court found the following undisputed facts:

• Respondent No. 1 is the authorized user of the mark “AHMED”.
• Respondent No. 1 has been using the mark “AHMED” since 1952.
• Respondent No. 1’s mark “AHMED” is registered in both Classes 29 and 30 of the Fourth Schedule.
• Respondent No. 1 deals in goods of those classes both nationally and internationally.

As regards the Appellant’s case:

• The Appellant applied for registration of “AHMAD” as its mark.
• The registration sought is in Class 30.

The Court held that a bare look at the Appellant’s mark shows that it cannot be said to be dissimilar to the trademark “AHMED” of Respondent No. 1 — they are phonetically identical. Further, since “tea” would be sold from the same counter as the goods of Respondent No. 1, and since there was no claim that the Appellant’s goods would be offered to a different class of public, the Registrar was justified in refusing registration of the Appellant’s mark in Class 30. The Registrar was also right in not giving much weight to the plea that “tea” is a different kind of product, because it is not the product but the class/category for which a mark is registered that governs the analysis.

On the Three-Word Mark Argument

Regarding the Appellant’s plea that their mark consists of three words — “Ahmad Tea London” — while Respondent No. 1’s mark is a single word — “Ahmed” — the Court held that the principal/dominant mark applied for by the Appellant is “Ahmad,” and undeniably Respondent No. 1 has been dealing under the mark “Ahmed.” There is therefore every possibility that such tea may be sold while being referred to as a product of “AHMED” (Respondent No. 1). The Registrar was right in allowing the principal/dominant mark of Respondent No. 1, already registered, to prevail.

The Court cited M/s. Mehran Ghee Mills v. M/s. Chilton Ghee Mills (2001 SCMR 967):

“The question of whether there has been an infringement or not is to be decided by comparing and placing the two marks together and then determining their similarity or distinctiveness. If the two marks are absolutely identical no further probe is needed and infringement is established. Essential features of the marks shall be looked into for effectively deciding the issue of infringement. To constitute infringement, it is not necessary that the whole of the mark be adopted. The infringement will be complete if one or more dominating features of a mark are copied. If there is a striking resemblance, ex facie, it would lead to the conclusion that the mark has been infringed.”

The Court further observed that registration of a mark in a particular class gives the authorized user the right to deal in all products within that class, even if the user is not presently dealing in a particular product within that class. The Appellant’s plea that Respondent No. 1 is not presently dealing in “tea product” and hence registration would cause no harm was therefore held to be misconceived.

The Court also rejected the plea that since Respondent No. 1 had not opposed the grant of the mark “AHMED” in Class 30 to “AHMED TEA COMPANY, PESHAWAR,” it cannot object to the Appellant’s application. The Court held that negligence in making a proper opposition to an earlier application cannot deprive the authorized user of rights and privileges that are the creation of the law itself, as established under Section 29(4) of the Ordinance.

Finally, the Court noted that the Appellant’s international registrations were of no assistance, since the dispute concerned registrations in Pakistan, where Respondent No. 1’s mark “AHMED” is already registered and where Respondent No. 1 deals in products classified in Classes 29 and 30.

The Court declined to go into the memorandum-related plea raised by the Appellant, observing that the legality or illegality of the Registrar’s order — not ultra vires issues relating to Respondent No. 1’s corporate memorandum — was the matter before the Court.

The Impugned Order

The Court examined the relevant portion of the impugned order, which reads:

“(i) That Opposition No. 292/2004 is allowed on the basis of the following: (a) That the Opponent’s trademark AHMED is being used in Pakistan since 1952 and is also registered for food items. (b) That the Opponent’s trademark AHMED has acquired distinctiveness by its continuous use in Pakistan and abroad. (c) That the Applicant has claimed user since 1988 as against the Opponent’s genuine and continuous user claim since 1952. (d) That the Applicant has failed to prove user in Pakistan… (e) That the goods being food items of Classes 29 and 30 are sold from the same outlet/counter and as such chances of confusion and deception are very much there. (ii) That the Applicant’s Application No. 149770 in Class 30 is refused registration.”

In support of this order, the Registrar had relied upon the following cases:

• Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf trading as Murad Industries (NLR 1991 SCJ 41) — where the adoption of the trademark TOSHIBA for “electric fans” in Class 11 was held likely to create confusion given prior registrations of TOSHIBA in Classes 8, 9, 10, 11, 12, 14, and 16.
• Alpha Sewing Machine Co. v. Registrar of Trade Marks (PLJ 1990 SC 499) — where registration by a local company of the mark “Philip” for “sewing machines” was refused on the opposition of N.V. Philips, on the basis that even though Philips did not manufacture sewing machines, the question of deception and confusion to the general public could not be ignored.
• Montgomery Flour and General Mills Ltd. v. Registrar of Trade Marks (PLD 1973 Karachi 567) — where the trademark “7 Up” in Class 30 for “hard boiled sweets, candies and drops” was refused registration in view of earlier registrations for “7Up” and “Seven Up” in Classes 30 and 32, on the basis that the goods were of the same description.

Decision

The Court held that the impugned order was in line with all settled principles and was not open to any exception. Accordingly, the order was maintained.

Appeal is dismissed.

Judge

Change Log

• Preserved: All legal arguments, statutory citations, case references, judgment structure, the author’s authoritative tone, all registration numbers and classification details.
• Corrected: “market place” → “marketplace”; “U. K.” → “U.K.”; “James, jellies” → “jams, jellies”; “16.4.200” → “16.04.2001”; “AHMAD LOND TEA” → “AHMAD LONDON TEA”; “Kabushi ki Kaisha” → “Kabushiki Kaisha”; “Monters Rolex” flagged (possible “Montres Rolex”); “respondent No.1 are” → “Respondent No. 1 is”; stray accent on “ÁHMED” removed; page break markers {2}, {3}, etc. removed; spacing artifacts removed.
• Formatted: Registration number lists converted to HTML tables; block quotes placed in <blockquote> tags; consistent use of Respondent No. 1 / Respondent No. 2; section headers added for navigation.
• Flagged: “Monters Rolex” — likely “Montres Rolex S.A.” — please verify against original judgment before publication.