Registration of Marks Consisting of Slug Devices under Trademark Law

Registration of Marks Consisting of Slug Devices under Trademark Law Case Laws Corporate Law Industrials Intellectual Property Knowledge – Corporate Law Litigation & Arbitration Sindh High Court Solutions - Corporate Law Trademark Mr. Justice Zulfiqar Ahmad Khan in his judgment has decided the issue regarding registration of marks consisting of slug devices under Trademark Law in Misc Appeal No. 66 of 2008 etc.

In terms of the instant appeals, order passed by the Registrar of Trade Marks dated 22.03.2008 has been impugned wherein the Registrar disposed of Oppositions filed by the present appellants, in which oppositions the latter had challenged registration of a number of trade marks accepted by the Registrar.

Brief facts of the case are that the appellants are one of the leading global healthcare companies which inter-alia are engaged in the business of manufacturing and sale of toothbrushes and toothpaste. In continuation of the said line of business, the appellants, sometime in 1973, allegedly made certain important innovations in the manner of toothpaste being extruded from the mouth of a toothpaste tube onto a toothbrush, which primarily included multi-colour toothpaste emanating from the toothpaste tubes, which typically were used only to release toothpaste in one colour (hereinafter referred to as “speckled toothpaste slug device”), commonly known as „slugs‟. The appellants took their chances to have their innovations to fall under trade mark law and filed applications for registration in a number of countries around the world, however, the learned counsel confirmed that no such applications were filed in Pakistan. The case of the appellants is that the toothpaste deploying said innovations were also made available in Pakistan markets and went on sale since early 2000 and people acquainted these toothpastes, on account of their distinctive getup, use and promotions, to be coming from no one else, except the appellants. However, in paragraph 7 of the memo of appeal, the appellants confess that speckled toothpaste containing granules of same and different colour emanating from toothpaste slug have been manufactured and marketed throughout the world by various companies including the appellants, and on their account, the speckled toothpaste slug device being used by different manufactures, cannot be held to be distinctive to any particular manufacturer and no person should be allowed to acquire monopoly or exclusive right for the use of the speckle toothpaste slug device in any manner. When such applications of the Respondent No.2 were advertised in the Trade Marks Journal, the appellants opposed grant of said applications, which oppositions were rejected by the impugned order, wherein the learned Registrar held in paragraph 31 as under:

“It would be just and equitable to grant right to the applicants in respect of the marks only for the applied colours and the toothpaste is no doubt descriptive and non-distinctive, however, as stated earlier that the colours combinations make them distinctive and as such the proprietors thereof should be given rights to the extent of colours for which the marks are applied for and the formation for which they have worked out. In view of the above I hereby dispose of the oppositions as under.”

After refusing the oppositions filed by the appellants, the Registrar allowed applications of the Respondent No.2, however, with certain limitation of colours, meaning thereby that Respondent No.2 though could have no monopoly in slug device per se, however, if the slug device comprises of the colours for which the registration has been obtained by the Respondent No.2, no person should be allowed to get such colour combination of slug devices. Since the instant contention of the Registrar was contrary to the assertions of the appellants that identical slug devices are being deployed by a number of manufacturers, and have thus became common to trade, no registration thereof ought to have been granted to any person. Being aggrieved of these orders, the instant appeals were filed.

In support of her contentions, the appellants‟ counsel placed reliance on the judgments reported as 1984 R.P.C 155 and 1987 R.P.C 13, where in the first case the High Court of Justice – Chancery Division of the United Kingdom dealt with the similar issue of striped toothpaste being extruded from the mouth of the toothpaste and held that it was the common practice of toothpaste manufacturers to illustrate the product by putting on carton advertisements representations of toothpaste being extruded onto a toothbrush, thus, the trademark comprising of red and white stripped toothpaste and toothbrush was not a trademark within the meaning of the act, rather a pictorial representation of the product, therefore, the Registrar rightly refused the applications for registration of the stripped toothpaste appearing on toothbrush. In the case of 1987 R.P.C 13, wherein application for toothpaste slug was refused, it was held that the question was whether at the relevant date the appearance of the toothpaste in colours was distinctive of the appellants‟ goods or not?

The counsel appearing on behalf of the appellants contended that while passing the Order, the Registrar failed to appreciate that the mark applied for by the Respondent No.2 was objectionable under section 6 of the Trade Marks Act, 1940 (hereinafter referred to as “the 1940 Act”) as well as dis-entitled to protection under section 8(a) of the said Act.

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