2015 PLP 1108 (CLD)

AMER RAZA NAQVI, J.

In this matter pre-admission notice was issued to the respondent, they were served and are represented by Mr. Salim Ghulam Hussain, Advocate. Both the learned counsel submit that since matter has been heard at length, they agree that it can be disposed of finally at katcha peshi stage.

2. The facts of .the matter are that appellant applied for a Trade Mark Word and label "EMAMI", such application was summarily dismissed and registration was refused. It appears from the impugned order that Deputy Registrar of Trade Mark, who has passed the impugned order found that Trade Mark AMAMI stands registered in the name of another Company namely WELLA A.G, Berliner Allee Darmstad, General Federal Republic of Germany. It is also mentioned that in response to office objection a reply was filed by the appellant, which reply is available on record at Page-43. Application filed by the appellant is available at Page-29.

3. Learned counsel for the appellant submitted that not only the description of goods of the two applicants were different but the applied, trademark was different visually as well as phonetically. He further submits that there was no harm if the publication was allowed and notices were issued to all concerned and thereafter order should have been passed by the authority, who has passed the impugned order. Per learned counsel impugned order has stated that no case-law was relied in support of the contention raised before the respondent. He points out that the reply which was filed mentions two authorities at the last page of the reply and those authorities being 1986 MLD 1666 and 1992 SCMR 2323 have not been discussed in the impugned order. He further submits that in view of such case-law respondents were required to allow publication and notices and thereafter should have heard the matter in case of any opposition. Learned counsel also pointed out that Trade Marks Ordinance, 2001 refers and recognizes "Paris Convention". He also points out that under the Ordinance "Convention Country" means a country other than Pakistan which is a party of "Paris Convention". He further stated that appellant Company falls within the definition of section 86(1)(a) and (b) and therefore is entitled to the protection provided in such section.

4. On the other hand learned counsel for the respondent has submitted that once an application is received such application is examined through process prescribed under section 27 and after examining the application in accordance with section 27 impugned Order has been passed and there is no factual or legal flaw in the impugned order. He however concedes that after sections 85 and 86 of Trade Marks Ordinance, 2001 having become effective, Paris Convention has been recognized and convention countries have been defined in section

85. He further submits that in both the case-laws relied by the learned counsel for the appellant; facts were different from the present case as the main consideration while deciding those matters was that there were more than one registrations in respect of the Trade Mark applied. He has also submitted that the ground taken by the appellant in respect of distinction between the trade mark already registered and the trade mark applied for was not available to them. They are similar rather identical, therefore, impugned order was rightly passed otherwise it would not only have created confusion in the minds of general public but would also have caused prejudice to the Company in whose favour similar trade mark already stand registered. He has relied upon many authorities including PLD 1967 Karachi 492, 1987 MLD 91, 1980 SCMR 625, PLD 1990 SC 313 and submitted that in these authorities and in many other cases when similarity was found, the registration was refused. He further submitted that in India the concept of Paris Convention provided in Trade Marks Ordinance, 2001 in Pakistan is not specifically provided but in the case-law such aspects were covered by Superior Courts of India. Learned counsel submits that in such facts and circumstances in view of subsection (2) of section 17, the impugned order is correct in facts and law.

5. I have heard both the, learned counsel and perused the record with their able assistance. Mr. Saleem is correct while arguing that when an application is made, Registrar is to examine the application through a process provided under section 27 of the Trade Marks Ordinance, 2001. Subsection (2) of such section provides that for the purpose of subsection (1), the Registrar shall carry out a search to the extent as he considers necessary of earlier trade mark. In the order impugned, the registration has been refused without publication and notice on the basis of an earlier trade mark as mentioned above. The reply of appellant is available at page-43, such reply clearly shows that appellant has mentioned in page-5 of such reply that there are 17 other countries in which such trade mark has been registered in favour of the appellants. In my humble opinion in such a situation exercise carried out by the Registrar under subsection (2) of section 27 has not properly been carried out as there is nothing on record to show that any investigation was carried out in respect of the contention raised by the appellants before the respondent that in 17 countries the trade mark applied stands registered in their favour, in such a situation, therefore, in my humble opinion no finding should be given in respect of the merits of the case, as that stage had not come before respondent, since sections 85 and 86 have been ignored by the respondent while passing the impugned order and he has not made search in respect of contention raised by the appellants to the effect that his trade mark stands registered in so many countries.

6. Now World is a global village, and when the law makers themselves have recognized this situation by providing sections 85 and 86 in the Ordinance, it is now compulsory for the respondent that while exercising his Powers under section 27, sections 85 and 86 should be kept in mind. Mr. Saleem has contended that this aspect was not agitated before respondent, therefore, he was not obliged to carry out the search beyond the jurisdiction of Pakistan. In my humble opinion as in reply of show cause notice appellant has specifically mentioned and raised the plea regarding his registration in the other countries, such search was necessary. I am not examining the case on merits with regard to similarity or distinctiveness between the two claimed trademarks as it might prejudice the case of either party before the respondent, as matter is being remanded.

7. In view of above facts and circumstances impugned order is set aside and case is remanded back to the respondent to exercise his powers under section 27(2) of the Trade Marks Ordinance, 2001 in accordance with law keeping in view sections 85 and 86 of the Ordinance and proceed further, from such stage. This appeal stands disposed of. KMZ/E-1/Sindh Case remanded.