P L D 1969 Dacca 451 (PLP)

A. S. CHOWDHURY, J.‑This appeal is directed against an order made by Mr. M. H. Rahman, Deputy Registrar of Trade Marks made on 14th June 1967, refusing to grant registration of the word "Bestco" as a trade mark in respect of a pharmaceutical rub ointment for cuts, burns and pains etc. in the name of B. S. Industries. The application for registration was submitted as early as in 1962, to be precise, on 16‑6‑

62. The office of the Deputy Registrar appears to have take action this application only after two years, that is, on 6‑2‑64, when he ordered for advertisement of the Mark in accordance with the proviso to section 15 of the Trade Marks Act, 1940 (hereinafter called the Act). The advertisement was published in the Trade Mark Journal on the 1st September 1964, and no objection having been raised from any quarter, it appears the Deputy Registrar decided to grant registration, inasmuch as on the 13th January 1965, he asked the applicant to submit the registration fees. The applicant deposited the fees on 23‑1‑65 in compliance with the said order. On 19‑7‑65, however, show‑cause notice was issued as to why the registration should not be refused to which the applicant replied and prayed for a hearing. The Deputy Registrar heard the case on 16‑2‑

67. On 20‑3‑67 the prayer for registration was refused. On receipt of the said order the appellant asked for reasons for the refusal. Thereafter the impugned order together with the reasons was communicated and this order as stated at outset is challenged before us in this appeal. Mr. A. R. Khan, learned Advocate appearing for the appellant submits that in this case it would clearly appear that on the 13th January 1965, the Deputy Registrar made up his mind to grant registration. According to him there was an end of the matter. But subsequently Registrar expressed opinion against registration. His contention is that the order dated 14‑7‑67, is no order in the eye of law for; it is the product of a biased mind influenced by the opinion of the Registrar. In support of this contention reliance has been placed by him on the decision of the Supreme Court in the case of the Province of East Pakistan v. Jogesh Chandra Lodh (11 D L R 411 (SC). We have already noticed that the application for registration was filed on 16‑6‑

62. It appears that on 19‑7‑65 a notice was issued on the applicant asking him to show cause why the mark in question should not be refused as it conflicts with the trade mark "Beston". After the appellant‑firm submitted its reply thereto, it was asked to make certain amendments with regard to the specification of goods and this direction was also complied with. Thereafter the following order was passed on 13‑1‑65 I am directed by the Registrar to inform you 'that the above application has been duly advertised in the Trade Mark, Journal and that registration of the trade mark relating to the said application will be proceeded with on receipt of the prescribed fee of Rs. 100 as detailed below the enclosed Form TM‑II duly filled up. Yours obediently (Sd.) Illegible For Registrar of Trade Marks." On the 23rd January, the requisites were put in. From these facts it will appear that the stage of determination of the desirability of granting registration was over, and mere formalities for issuing certificates of registration were left to be done. That act was in the nature of a ministerial act. But on the 13th July 1965, the Registrar passed the following order "Issue notice under section 6 (l) (d) as the word `Bestco' appears to be an abbreviation "Best Company" and as such it does not appear to be an invented word. Originally the office proceeded on the footing that the word "Bestco" was invented word (see examiner's report, dated 19‑2‑63, and D. R's order of even date in the examination sheet) and the objection under section 8 (a) was raised in view of conflicting pending Mark No. 37124 objection under section 6 (L) (d) ought to have been taken in the first instance. (Sd.) Illegible 13‑7‑65." The aforesaid order itself indicates that both the Examiner of the Trade Marks as well as the Deputy Registrar found that the word sought to be registered as a Trade Mark was an invented word. The Registrar not only reopened the matter but made comments and thereby created a situation it is rightly asserted in which it was not possible for the Deputy Registrar to apply his mind independently. When a statute confers a certain duty on an officer it is that officer who has to make up his mind and pass the order in accordance with law and exercise his discretion uninfluenced by any opinion of his superior officers. fn this case the order dated 13‑7‑65, quoted) above, definitely created a bias in the mind of the Deputy Registrar who was influenced by the same in refusing registration. Such an order is not an order in the eye of law and cannot be sustained. I am fortified in the above view by a decision of the Supreme Court in the case of the Province of East Pakistan v. Jogesh Chandra Lodh referred to above. In that case the Supreme Court held that when the Provincial Government delegated its power to an officer that officer was substituted for the Provincial Government and that it was he who had to form an opinion in the matter. That was a case under the (Emergency) Requisition of Property Act (Act XIII of 1948). Under that Act the Provincial Government was empowered to requisition property of a person in certain circumstances under section 3 and the Government was also authorised to delegate its function to an officer. The District Magistrates were autho rised to discharge the function assigned under section

3. But in that case the Provincial Government directed him to requisition property of the petitioner under section 3 of that Act. This order, on that ground, was set aside. It will, there fore, be seen that even an Executive Officer when he performs a statutory function, is not to be influenced by any direction C from any quarter. That was the view expressed by his Lordship, Munir, C. J., who delivered the judgment of the Court. It was observed therein "It is perfectly clear from this proceeding that the Additional District Magistrate who made the order under section 3 merely acted as a tool of the Land Acquisition Department or the Government and did not at all apply his mind to the question whether it was necessary or expedient to requisition the property for a public purpose. On this ground alone, therefore, the order must be held to be invalid." This observation clearly applies to the facts of the instant case and the impugned order dated 14‑3‑67 passed by the Deputy Registrar under the influence of the Registrar is not sustainable and on this ground alone this appeal must be allowed. It is clear in this case that the discretion at an earlier stage was exercised in favour of the appellant by the Deputy Registrar. On an examination of the record transmitted to this Court, we find an endorsement in the file in the following terms: ‑ "As per D. R's order above registration certificate is put up please,‑ This shows that the matter reached finality and the certificate would have been issued but for the contrary opinion of the Registrar. It should also be appreciated that the scheme of this Act is that the Deputy Registrar while dealing with the registration of a trade mark exercises a power conferred on him by a statute and no appeal lies to the Registrar against his order. Therefore, the interference of the Registrar was absolutely in excess of the authority conferred on him by the statute and has the effect of vitiating the impugned order of the Deputy Registrar. The appeal is to be allowed on this ground alone. Mr. A. R. Khan who has ably argued his client's case has next submitted that the word "Bestco" is an invented word and it comes within clause (c) of section 6 (1) or at any rate under clause (d) of that section. It is, therefore, entitled to registration under section 6 (() of the Act. Section 6 (1) of the Act reads as follows:‑ "(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely (a) The name of the company, individual, or firm represented in a special or particular manner; (b) the signature of the applicant for registration of some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods, and not being, according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan; (e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registerable except upon evidence of its distinctiveness." It is laid down in the above‑ section that a trade mark shall not be registered unless it contains or consists of at least one of the essential particulars mentioned therein. In other words a registerable trade mark must contain or consist of at least one of the essential particulars mentioned in subsection (1) of section

6. It is clear that if such a mark comes within any of the clauses enumerated in section 6 of our Act, it would be entitled to registration. In this case the word `Bestco' does not refer to the quality or the character of the goods and as such, in our opinion, it comes within the meaning of clause (d) and is entitled to be registered on that ground. The word `direct' occurring in clause (d) indicates that a word is prohibited from registration if it has a straight or clear reference to the character or quality of the goods. The word `Bestco' is also not a geographical name or surname, or the name of a sect or a caste. It is, therefore, a word which is contemplated in clause (d) of section

6. I have set out in details different dates in stating the fact of the case only to show how in the Trade Mark Registration Office matters are left over for years. The application in this case was filed on 16‑6‑62 and although all the directions issue by the Registrar was promptly complied with by the appellant firm, it was disposed of after five years, that is, in 1967. This long delay is deplorable. Such delay was noticed by Akbar, J. (as his Lordship then was) in the case of Aluminium Products Ltd., Chittagong v. Registrar of Trade Marks, Chittagong (P L D 1958 Dacca 481). It was observed therein: "We, however, refuse to give any costs to the respondent -Registrar of the Trade Marks, because his Deputy took nearly seven years to dispose of this simple application. We note with regret that this Department is not yet fully alive to its duties and responsibilities. Such a long delay is not only detrimental to the interests of the Company apply ing for registration of the trade mark but also of the parties who opposed such registration. We can only hope that we shall not have occasion in future to comment on the working of this Department. A copy of our judgment may be sent to the Ministry dealing with this Department." This observation was made by the learned Judge on 10‑2‑58 and in dealing with this case today after ten years, we would only repeat the same and say that no improvement is noticed in this department. We asked the Deputy Attorney‑General about the delay in the disposal of this matter and he felt difficulty in defending a delay of five years. In the result, the appeal is allowed without any order as to costs, the appellant's mark "Bestco" is directed to be registered. A. H. KHAN, J.‑I agree. K. B. A. Appeal accepted.