Registrability of geographical names as trade mark, Pakistan legal perspective
S j tubrazy
If a word is a geographical name according to its ordinary signification, it is not registrable under the Trade Marks Act, 1940, except upon evidence of its distinctiveness. The name of a place when applied to any article of commerce, will, in general serve to indicate only that the product or article is manufactured at the particular place and not that they are manufactured by a particular trader. Accordingly, the name or place of a major industrial area or a city will be totally unregistrable in respect of almost any gods as such marks do not serve the purpose of a trade mark. Thus, names of well‑known mineral water springs “Apollinaris” and “Hunyadi Janos” were held geographical names and prima facie not distinctive in respect of spring waters or product of those waters.
But not all names of places suffer from this disability. Thus, “Northpole” could very well be a good trade mark for sewing machines. No sensible man would think that sewing machines are manufactured at the Northpole. The prima facie disability can be overcome by filing evidence of distinctiveness and long user. But names of places of industrial or commercial importance are still incapable of registration even upon proof of extensive user. The mark “Liverpool” for cables was refused registration on the ground that it is the name of a place having reputation for the article. Similarly, a mark consisting of the word “York” for trailers and containers for transportation of freight was not registered by the Registrar and his decision upheld by the House of Lords on the principle that, in relation to certain words, of which laudatory epithets and some geographical names were established examples, traders could not obtain the monopoly in the use of such words (however distinctive) to the detriment of members of the public who, in the future and in connection with other goods, might desire to use theta. The refusal by the Registrar was upheld because the name “York” possessed an industrial character such that other traders in related fields, might want to use. However, in Abdul Hamid v. Abdur Rahim” where the question was whether the words “Daigon” and “Dragon” could be refused registration as trade marks when the word “Saigon” was already on the register of trade marks it was held by the Supreme Court of Pakistan that first syllables “Dai” and “Drs” are dissimilar from the first syllable “Sai”, which syllable was important for deciding the question of deception and confusion. Since the word “Saigon”, an important geographical entity, had become well‑known in connection with the Vietnam War the word “Daigon” was not likely to cause confusion or deception and it, could be registered.
It is also to be noted that the words “according to its ordinary signification” used in section 6(1) (d) of the Trade Marks Act, 1940, must interpreted in the general and popular meaning of the words and that a word does not become geographical name because some place in the world is called by that name. If the name of a place was not generally used and was not likely to be understood in a geographical sense it may be registered.
Court observed that the phrase ‘geographical’ to section 64(e) ought not to receive so wide an interpretation. In the Pakistan Act the limitation regarding registrability of geographical names is even more restricted. Here the place has to be located in Pakistan to come within the prohibition. Thus, the Supreme Court of Pakistan in the case of Hoechest A. G. v. Assistant Registrar of Trade Marks” reversed the decision of the Trade Marks Registry and the; High Court wherein registration ,of the word “Kalle” was refused on the ground that it was both a surname and a geographical name in its ordinary signification on the reasoning that the words “ordinary signification” must be looked at objectively and according to a Pakistani’s normal understanding. On this criteria, the word “Kalle” was found to be a word which was not “commonly understood in Pakistan” and if at all it referred to some geographical entity it could only have “one signification of referring to the name of a place outside Pakistan”. The Court went on to observe that “since in terms of section 6(1) (d), the prohibition relates to geographical names, in Pakistan, it appears to us that no valid objection could be raised to the registration of this word as a trade mark”.