2015 PLP 1400 (CLD)
CEPHALON FRANCE — Appellant Versus HIMONT PHARMACEUTICALS — Respondent
| Citation | 2015 PLP 1400 (CLD) |
| Forum / Court | Lahore |
| Bench Members | N/A |
| Parties | CEPHALON FRANCE — Appellant Versus HIMONT PHARMACEUTICALS — Respondent |
| Primary Law | Trade Marks Ordinance (XIX of 2001) |
Q1: What are the key laws and sections cited in 2015 PLP 1400 (CLD)?
This judgment primarily cites: Trade Marks Ordinance (XIX of 2001) as referenced in Pakistani case law index.
Q2: Which judicial bench decided the case 2015 PLP 1400 (CLD)?
The case was heard and decided by the Lahore bench comprising: N/A.
Q3: What is the official citation format for this judgment on Pakistan Law Portal?
Cite this legal precedent as: 2015 PLP 1400 (CLD) (CEPHALON FRANCE — Appellant Versus HIMONT PHARMACEUTICALS — Respondent). Read the full summary and cross-referenced laws free on Pakistan Law Portal.
Laws Cited
Representation
- Ex parte for Respondent.
Headnotes / Summary
Ss. 17(6), 28 27, 33 & 7
Procedure before the Registrar
Exercise of jurisdiction by Registrar Trade Marks
Determination of ownership of trade mark
Jurisdiction of Registrar to stay opposition proceedings and give direction to parties to approach Civil Court for determination of ownership of trade mark
Scope
Appellant had filed opposition to application for registration of trade mark filed by respondent, on the ground that the said trade mark was owned by the appellant
Registrar vide impugned order stayed opposition proceedings and directed parties to get the question of ownership of trade mark determined by a civil court
Contention of appellant inter alia was that in the impugned order, the Registrar failed to exercise jurisdiction vested in him and that the question of ownership of trade mark was within the domain of the jurisdiction of the Registrar
Held, that the Trade Marks Ordinance, 2001 provided a comprehensive procedure and remedies regarding grant or refusal of a trade mark to a party applying for it and such powers were vested with the Registrar of Trade Marks
Respondent, in the present case, had applied for grant of the trade mark to which the appellant objected by filing an opposition claiming that the said trade mark was already owned by it
Both the parties submitted their affidavits and evidence available with them before the Registrar however, the Registrar did not decide the matter himself and sent the parties to the civil court for determination of their ownership
Power to grant or refuse the trade mark applied for by the respondent and controverted by the appellant was vested with the Registrar, therefore, the same should have been exercised rather than directing the parties to approach the civil court for determination of the ownership of the trade mark
Registrar could advise the parties to approach the civil court only if substantial rights of any or both the parties were involved which could not be determined by preponderance of evidence produced by the parties within the scope of jurisdiction conferred on the Registrar
In the present case, no such substantial right appeared to be involved and only question of grant or refusal of trade mark was before the Registrar, which he could decide himself in accordance with law
High Court observed that Registrar failed to exercise the jurisdiction vested in him in law and had unlawfully sent the parties to the civil court for determination of their ownership
Impugned order was set aside and Registrar was directed to decide the question of ownership of trade mark on its own
Appeal was allowed, accordingly.
Judgment & Decree
ATIR MAHMOOD, J.
This appeal is directed against decision dated 4-8-2007 passed by the Registrar Trade Marks, Karachi.
2. Brief facts leading to the filing of this FAO are that the appellant (Cephalon France) is a pharmaceutical company incorporated in France; that on 17-10-1994, the appellant entered into a distribution agreement with respondent (Himont Pharmaceutical) for import and sale of appellant's products including the drug under the brand name "SPASFON" for Pakistan; that the appellant came to know through advertisement in Pakistan Trade marks Journal No.642 dated 1-7-2004 that the respondent had applied for registration of trade mark "SPASFON" in its own name with the Trade Marks Registry in Pakistan under application No.130435 dated 7-6-1995 in Class 5 to "Antispasmodic Pharmaceutical Preparation". The appellant filed a notice of Opposition with the Trade Mark Registry claiming that the said trade mark is owned by it and it cannot be granted to the respondent. Both the parties filed their affidavits with evidence in support of the Registration and in support of the Opposition respectively.
3. The respondent contended before the Registrar Trade Mark that since the respondent had already filed a suit in the civil court at Lahore seeking a declaration that they were owners/proprietors of the Trade Mark "SPASFON", therefore, proceedings in the Opposition be stayed. The appellant also filed application under section 3(2) of the Recognition and Enforcement (Arbitration Agreements and Foreign Arbitral Awards) Ordinance, 2005 for stay of proceedings. The Registrar, Trade Marks vide order dated 8-9-2007 directed the parties to get the question of ownership of the Trade Mark "SPASFON" decided by a civil court and stayed the Opposition proceedings (No.833/04) pending before him. The appellant filed application under sections 11 and 121(2) of the Trade Marks Ordinance, 2001 and Rule 84 of the Trade Marks Rules, 2004 to give reasons for order dated 8-9-2007 which were provided on 4-8-2007 whereagainst this appeal has been filed.
4. Learned counsel for the appellant contends that all the evidence of the parties relating to the ownership was available before the Registrar of Trademarks but he failed to exercise jurisdiction vested in him and did not decide the question of ownership which is his special domain; that the impugned decision is contrary to provisions of Trade Marks Ordinance, 2001 as well as the judgments of the superior courts; that the learned Registrar by not deciding himself the question of ownership of trademark has acted illegally and unlawfully, therefore, this appeal be allowed, the impugned decision be set aside and the case be remanded to the Registrar of Trademarks to decide the matter himself.
5. The respondent has already been proceeded against ex parte vide order dated 11-3-2009.
6. Arguments advanced by learned counsel for the appellant have been heard and the record also perused.
7. According to the appellant, it entered into a distribution agreement with the respondent for import and sale of appellant's products including the drug under the brand name "SPASFON" for Pakistan. However, it later came to know through an advertisement appeared on 1-7-2004 in Pakistan Trade Marks Journal No.642 that the respondent itself has applied for registration of trademark "SPASFON" with the Trade Marks Registry. The appellant since claims ownership of trade mark "SPASFON; filed a Notice of Opposition with the Trade Mark Registry. Both the parties filed their affidavits and evidence before the Registrar of Trade Mark but he despite deciding the matter himself directed the parties to get determined their ownership by the civil court vide impugned decision where a suit between the parties is pending while staying proceedings in the Opposition filed by the appellant.
8. The Trade Mark Ordinance provides a comprehensive procedure and remedies regarding grant or refusal of a trademark to a party applying for it. Such powers are vested with the Registrar Trade Marks. In this case, the respondent had applied for grant of trade mark "SPASFON" to which the appellant objected by filing an Opposition No.833/2004 claiming that the said trade mark is already owned by it. Both the parties submitted their affidavits and evidence available with them before the Registrar but the Registrar did not decide the matter himself and sent the parties to the civil court for determination of their ownership. In my view, if some powers have been given to an authority, it should exercise its powers in accordance with law. Since the powers to grant or refuse the trademark applied for by the respondent and controverted by the appellant were vested with the Registrar Trade Marks, therefore, he, in my view, should have exercised his powers in accordance with law rather than directing the parties to approach the civil court for determination of their ownership of trademark as the Registrar himself is authorized to grant or refuse the trademark and non-exercising of his own powers by him amounts to defeat the purpose of law. I am of the considered view that the Registrar of Trade Marks could advise the parties to approach the civil court only if substantial rights of any or both the parties were involved which could not be determined by preponderance of evidence produced by the parties within the scope of jurisdiction conferred on the Registrar. From the record produced before me, no substantial right as noted hereinbefore appears to be involved in this case. The only question of grant or refusal of trade mark was before the Registrar, which he could decide himself in accordance with the provisions of the law. Section 17(6) of the Trade Marks Ordinance, 2001 is replica of section 10(3) of Trade Marks Act, 1940. Reliance is placed on the ratio decidendi laid down in case reported as Sanjeda Bano v. Muhammad Saeed Jehangir (PLD 1987 Karachi 53).
9. In the circumstances, the Registrar Trade Mark has failed to exercise the jurisdiction vested in him and instead of deciding the matter of grant of refusal of trade mark to the respondent, has illegally and unlawfully sent the parties to the civil court for determination of their ownership. Therefore, this appeal is allowed, the impugned decision dated 4-8-2007 is set aside and the Registrar Trade Marks, Karachi is directed to decide the matter of grant or refusal of trademark to the respondent at his own, strictly in accordance with law. KMZ/C-10/L Case remanded.