2003 PLP 1549 (CLD)

10. On 7‑8‑1998, the JT filed before the Registrar an application numbered as 99267 for the registration of Trade Mat k Mild Seven Label, in Class 34 in respect of "Tobacco raw or manufactured; smoker's articles and matches. After examination, it was accepted and advertised in the Trade Mark Journal No.528 dated 1‑1‑1995. In response thereto the LT entered into the Opposition No.303 of 1995 on the bases of their prior registered Trade Mark, Mark Seven Nos. 58723, 69735, 94185 Lakson Mark Seven No.70568, in Class 34 in respect of "Cigarettes and Tobacco Articles etc." The JT filed its counter‑statement and also affidavit‑in‑evidence in support of their application; and some more documents during the hearing. After hearing, the Registrar dismissed opposition filed by LT and allowed the application filed by JT for registration.

11. On 24‑4‑1994, the JT filed before the Registrar an application numbered as 99291 for registration of Trade Mark Mild Seven Label, in Class 34 in respect of "Tobacco raw or manufactured; smoker's articles and matches. After examination, it was accepted and advertised in the Trade Mark Journal No.528 dated 1‑1‑1995. In response thereto, the LT entered into the Opposition No.307 of 1995 on the bases of their prior registered Trade Mark, Mark Seven Nos. 58723, 69735, 94185 Lakson Mark Seven No.70568, in Class 34 in respect of "Cigarettes and Tobacco Articles etc.". The JT filed its counter‑statement and also affidavit -in‑evidence in support of their application; and some more documents during hearing. After hearing, the Registrar dismissed L.T's Opposition and allowed JT's application for registration.

12. On 24‑4‑1994, the JT filed before the Registrar an application numbered as 124835 for the registration of Trade Mark Mild Seven Label, in Class 34 in respect of "Cigars, Chewing Tobacco, cigarettes, cigarette tips, ashtrays (not of precious metal), Cigarettes cases (not of precious metals), cigarettes holders (not of precious metals), lighters for smokers, tobacco pouches and matches". After examination, it was accepted and advertised in the Trade Marks Journal No. 851, dated 1‑12‑1996. In response thereto, the LT entered into the Opposition No‑551 of 1997 on the bases on their prior registered Trade Mark, Mark Seven ko.58723, 69735, 94185 Lakson Mark Seven No.70568, in Class 34 in respect of "Cigarettes and Tobacco Articles etc." The JT filed counter‑statement and also affidavit‑in‑evidence in support of their application; and some more documents during the hearing the Registrar accepted certain documents produced by the JT. After hearing, the Registrar dismissed LT's Opposition and allowed JT's application for registration.

13. The following points for determination were framed for all the eleven appeals:‑‑ (1) To whom the Trade Mark Mild Seven belongs? (2) Whether the registered Trade Mark, Mark Seven and Mild seven resemble with each other? (3) What is the‑effect of section 8(a)? (4) Whether the Registrar has erred in law in not deciding all the oppositions and applications between the parties and the subject‑matter in these appeals pending before him at the time of passing the impugned judgment?

14. Mr. Sheikh and Hussain, learned counsel for the appellants at the outset contended that all applications/oppositions pending before the Registrar on the date of passing judgment should have been decided together instead of leaving some of them as still pending.

15. Mr. Sheikh, pointed out that besides the 17 oppositions, which have been decided by the impugned judgment, three applications bearing Nos. 132982, 132983 and 132984 filed by UT though ordered to be advertised have not been advertised so far and are still pending adjudication. These applications are discussed by the Registrar in his judgment but it is not, clear as to what are the findings upon them and under which provision of .law, the Registrar exercised the discretion of not advertising the same. He added that two more Oppositions Nos. 314 and 315 of 1995 in applications Nos.112019 and 112014 between the UT and LT in respect of the same subject matter are also pending before the Registrar for adjudication but the impugned judgment is silent about the same. Likewise, Mr. Hussain, learned counsel for appellants in Miscellaneous Appeal No.15 of 1999 and four other appeals has argued that though the Registrar, as per title and the operative part of the judgment decided the oppositions filed by LT to the applications of JT but in the impugned judgment neither discussed the same nor gave any reasons for their dismissal. He contended that on this point alone the impugned judgment is liable to be set aside and remanded back to the Registrar for adjudication afresh. He, however, admits that he had not preferred appeal in respect of Oppositions No.304 of 1995 to the Application No.99267, 306 of 1995 to Application 99290, 308 of 1995 to the Application No.99291, 142 of 1997 to the Application No.124835 and 150 of 1997 to the Application No. 124837.

16. Before taking up the other points, the point No.4 and its effect is being discussed. Mr. Sheikh traced the history of cases decided on this point and referred to the cases of (1) Basra Soap Factory v. Punjab Soap Factory PLD 1973 Karachi

279. On page 283 in para. 3, it was observed that the proper procedure to be followed by the registry would be to connect and hear together, the various applications and oppositions with regard to identical or similar Trade Marks, if applications for these trade marks are pending before the registry, (2) Playboy Enterprise Inc. v. Registrar of Trade Marks and another 1986 MLD 1312 (Karachi). On page 1313, para 2, the Court observed that at the time, the Tribunal rejected the opposition of the appellant and allowed the proceedings of registration in favour of respondent, the applications filed by the appellant for registration of the same Trade mark in their favour was pending before the Registrar. It was further observed on page 1314 that though no specific prayer was made to the Registrar by the appellant to decide their pending applications simultaneously but the fact that the two applications of the appellant for registration of the same mark and the same class in their favour was pending registration was specifically noted‑.in the impugned order. It was further added that to avoid any conflict of decision and to do full and complete justice between the parties the Registrar should have dealt with all the pending applications at a time as the decision of any one of them was likely to affect the other pending applications in the circumstances of the case. (3) Iqbal Ahmed v. The Registrar of Trade Marks, Karachi 1988 CLC 1052 and Messrs. Dynasel (Pvt.) Ltd. v. The Registrar of Trade Marks, Karachi PLD 2000 Karachi

298. The principle laid down in the two matters at serials (1) and (2) above was followed in these matters, (4) Assistant Registrar of Trade Marks v. Messrs Lackson Company Tobacco Ltd. 1992 SCMR 2323, wherein at page' 2325, it was observed that the Registrar was competent to refuse the application before advertising but the discretion has to be used by the Registrar on the sound principles in accordance with law and not arbitrarily. (6) Nahan Foundry v. Messrs Seth Muhammad Rafique Zarati Foundry and others 1994 MLD 2401 (Karachi). In this judgment, it was observed that the function of the Registrar of Trade Marks is judicial and he has to record reasons for dismissing or allowing the application for dismissing or allowing the opposition.

17. In reply Mr. Khan, learned counsel for respondents in all the appeals has conceded to the contention of Hussain, learned counsel for appellants in Appeal No. 15 of 1999 and four others for LT and submitted that since the Registrar has given no reasons for dismissing the oppositions of LT in the five appeals represented by Hussain, the same be remanded back to the Tribunal for recording the reasons. He, however, vehemently opposed proposition of Sheikh and relied upon the case of National Detergents Limited v. Nirma Chemicals Works and another 1992 MLD 2358 (Karachi), wherein in the last but one para. at page. 2364, the Court on the contention of the counsel for the appellant that the Registrar ought not to have decided the application for registration as the application for the first respondent was not taken up with the notice of opposition, observed that the contention was devoid of force firstly for the reasons that this point was not taken before the Registrar, secondly the conduct of the appellants in appropriating the mark of foreign owners is not proper and thirdly the appellants have not come with clean hands. Sheikh pointed out that in the present cases, the appellants have prayed to the Tribunal to decide all pending applications together, which is apparent in para. (1) of the impugned judgment at page 4; and that there is no finding of the Tribunal that the appellant have acted in a manner, which can be said that they have not come to the Court with clean hands. He further submitted that even otherwise the facts in the case referred by Khan are not applicable to the facts of the present cases. Sheikh also contended that if the cases of Hussain are to be remanded then his cases may too be remanded, the aforesaid three applications and the two oppositions between the UT and LT also be ordered to be heard together to avoid conflicting judgments and multiplicity of litigation. I considered the submissions of the learned counsel. A perusal of the judgments shows that the three applications filed by UT and ordered to be advertised were not fixed for hearing before the Registrar lout it was the counsel of UT who drew attention of the Registrar to the fact that three applications filed by UT are pending for advertisement. It was on this point of time that the Registrar discussed the same in his judgment and observed that "I would now deal with various legal issues involved in this matter, but before that I like to focus my attention on the arguments placed by the counsel of UT that their Applications Nos. 132982 132983 and 132984 in Class 34 should also be advertised to be further cross cross‑cross by JT and Premier They have cited before me in their written arguments citation from 1986 MLD 1312 1991 MLD 2402 PLD 1987 Karachi 356; 1992 SCMR 2323 and 1992 MLD 1506 in support of their averments that all the pending applications must be advertised to reach a final conclusion". (Underlined for emphasis). After this the Registrar questioned as to whether he was bound to advertise the identical marks again and let them for come cross‑cross oppositions? He answered that if, it is allowed to be done that it will defeat the purpose of law. Mr. Khan has not been able to rebut that in fact the three applications mentioned above have not been decided by the Registrar and that they are still pending but without any process. Khan had not denied that two oppositions Nos.314 and 315 of 1995 between the UT and LT on the same subject‑matter are also pending before the Registrar for adjudication and they were not even discussed in the impugned judgment.

19. From the case‑law submitted before the Court, it appears that there has been consensus of opinion of the superior Courts that all pending applications/ oppositions should be decided by the Registrar simultaneously to avoid conflict of decision and multiplicity of proceedings. It is true that if the identical matters are decided in different sets at different times, the decisions of one set is likely to affect adversely to the decision of the other set.

20. As observed above, the three applications were discussed in the impugned judgment but have not been finally decided on merits. Neither the judgment disclosed any legal justification for bypassing the earlier order of advertising the three applications nor Mr. Khan was able to answer or place any provision of law or case‑law to that effect. He failed to satisfy the Court that once an application has been ordered to be advertised, it can be left in abeyance without going through the process of advertisement. The observation of the Registrar as to the three applications is neither judicious nor in accordance with law.

21. From the above, it is summed up that the three applications mentioned hereinabove filed by the UT and the two oppositions are still pending for advertisement and adjudication.

22. The upshot of the above is that the impugned judgment is set aside and all applications and oppositions covered by the eleven appeals are remanded back to the Tribunal for fresh adjudication on merit alongwith the three applications bearing Nos. 132982, 132983 and 132984 of UT and two Oppositions Nos.314 and 315 of 1995 between the UT and Lt.

23. Since the matters are being remanded back to the Tribunal for fresh hearing after setting aside the judgment, therefore, the Points Nos.1, 2 and 3 which pertains to the merit of the case are neither being discussed nor adjudicated. The Tribunal will be at liberty to decide the matters afresh in accordance with law.

24. The Registrar to take appropriate steps to conclude all the matters expeditiously.

25. Appeals disposed of accordingly. The parties to bear their own cost.

26. The R & Ps of the cases be returned to the Registrar. M.B.A./L‑28./K Order accordingly.