P L D 2000 Karachi 298 (PLP)

(iv) Block Drug Company Inc. v. The Registrar of Trade Marks 1991 MLD 2310; (v) Lakson Tobacco Company Limited v. Registrar of Trade Marks 1991 CLC Note 328 at p.251; (vi) Messrs Colgate-Palmolive (Pakistan) Ltd. v. Assistant Registrar of Trade Marks PLD 1992 Kar. 15; (vii) Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SC 1649.

4. It was argued by Mr. Sultan Ahmed Sheikh that a discretion is vested in the Registrar, Trade Marks to reject an application for registration at the preliminary stage and if this authority is withdrawn or taken away then the provisions of sections 8(a) and 10(l) of the Act, 1940 would become redundant. This view is adopted by the learned standing counsel appearing on behalf of the Federal Government. It was contended by the representative of the Department that since the appellant has himself disclosed to be the proposed user. the Registrar was justified to disallow application of the appellant for registration of the aforesaid mark. The impugned order was further supported on the ground that there was only one registered user of the mark "NOBEL" and, therefore, it was not necessary to advertise the application filed by the appellant. It was further argued that in some of the above-noted reported cases, there were more than one owners of the registered marks and, therefore, the superior Courts came to the conclusion that the Registrar should have advertised the application in the first instance. On the other hand, Mr. Tanvir Amjad has mainly relied upon the case of Lakson Tobacco Company Ltd. 1992 SCMR 2323 and contended that as a matter of right appellant's application was entitled to be published before its registration. Since the interpretation of section 14(1) and (2) and section 15(1) of the Act, 1940 is involved, the same are reproduced as under:-- " 14.--(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. (2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat. (3) .. 15.--(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and limitations, if any subject to which it has been accepted, to be advertised in the prescribed manner: Provided that the Registrar may cause as application to be advertised before acceptance if it relates to a trade mark to which clause (e) of subsection (1) of section 6 applies, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do...

5. A close scrutiny of the aforesaid provisions indicates that the Registrar is competent to refuse an application for registration or to accept it absolutely or subject to such other amendments, modifications or limitations. However, in case of refusal or conditional acceptance, the Registrar is required to state in writing the grounds of his decision. It further reveals once an application for registration of a trade mark has been accepted either absolutely or subject to condition or limitation, it should be advertised in the prescribed manner. The proviso to section 15(1) of the Act, 1940 further authorises the Registrar to advertise an application before its acceptance if a trade mark applied, for falls within the ambit of section 6(1)(e) of the Act, 1940. In exceptional circumstances also, the Registrar is competent to advertise an application, if in his opinion it is so expedient. The Registrar has been further authorised to re-advertise such mark after application has been accepted, but, this time a discretion has been vested in him by virtue of incorporating the phrase "but shall not be bound so to do". Now, I will deal with the case-law cited at Bar that how and in what circumstances, in the reported cases, matters were referred to the Registrar for reconsideration.

6. For the first time, this question came up for consideration before this Court in the case David Vaughan Backlin (cited at Serial No.l above) where appellant filed an application for registration of a trade mark of a device of a horse with the word "STUD" in class 5 which was rejected that the preliminary stage on the ground that an identical mark of a device of a flying horse "UNICORN" was registered with the Welcome Foundation Ltd In that case, there were two registered owners of the similar mark, the earlier one was with a flying horse in the name of Mobil Petrolium. Appeal filed against the decision of Deputy Registrar of the Trade Marks was accepted and the order was set aside with the direction to proceed with the application of the appellant after issuing notices to the registered holders of the two similar and identical marks.

7. The case of Tembrands Inc. (cited at Serial No.(ii) above) is not relevant for the present controversy. In the, third cited case namely Transpak Corporation Ltd. (1991 MLD 658), the question before this Court was about registration of the trade mark "SHIELD" in respect of Tooth Paste in Class

3. In that case also, the Registrar, Trade Marks rejected the registration application at the preliminary stage on the ground that the registration of trade mark cited was confusingly similar to the already registered mark "BRONZE SHIELD". In that case, reference was made to the case of Messrs Surya Brothers v. Messrs Dada Soap Factory Ltd. PLD 1971 Kar. 189; David Vaughan Racklin (supra), Ruston and Hornby Ltd. (supra) and Messrs Dada Soap Factory Ltd. v. Crescent Pak Industries Ltd. and another 1987 MLD 1256 whereafter it was held, inter alia, that the Registrar of Trade Marks was justified in refusing appellant's trade mark. In another case, Block. Drug Company Inc. cited at Serial No.(iv) above, the argument that the Registrar Trade Marks should have advertised the application for registration was upheld on the ground that there were already some ten registered marks in field having prefix of work "DENT". Following are the relevant observations of his Lordship Justice Saiduzzaman Siddiqui (now Chief Justice of Pakistan) in the case of Block Drug Co. Inc. (ibid):-- "It is accordingly contended by the learned counsel that there was no justification for rejection of the applications of the appellant summarily without advertising the same under section 15 of the Act. The contention of the learned counsel is not without force. All the aforementioned marks pointed out by the learned counsel for the appellant which were advertised in the trade mark journal for registration contained the prefix 'Dent'. Therefore, the question of similarity of the mark of appellant on account of prefix 'Dent' with other registered marks should not have been decided b~ the Registrar at the preliminary stage. This question should have been left to be decided after the marks applied for registration were advertised and opposed by any of the owners of the registered trade mark in accordance with the rules contained under the Trade Marks Act .... 8.The case of Lakson Tobacco Co. Ltd. (1991 -CLC Note 328 at p.251) is not relevant for the present controversy. In the case of Colgate Palmolive (cited at Serial No.(vi) above), the appellant filed application for registration of Trade Mark "TIP-TOP" which was again declined by the Registrar Trade Marks at the interlocutory stage on the ground that there were already registered trade marks of "TOP", "TIP-JOB" and "TIP & TOSE". It was held that the order of the Assistant Registrar rejecting the application at a preliminary stage without issuing any notice to the proprietors of the other trade marks was not proper and was liable to be set aside. In fact the learned Judge has following the case of Lakson Tobacco Co. (1992 SCMR 2323) which was cited before this Court as an unreported case. The most authoritative pronouncement of the Hon'ble Supreme Court is the case Messrs Lakson Tobacco Co. Ltd. (1992 SCMR 2323) which has been relied upon by Mr. Tanvir Amjad. In that case M/s. Lakson Tobacco Co. applied for registration of Trade Mark "LAKSON CLIPPER" which was declined at the interlocutory stage without publication of the application on the ground that the Mark "CLIPPER" has been earlier registered as "PLAYERS CLIPPER NOTHINGHAM CASTLE" and "CLIPPER". Reference was made to a couple of unreported cases of this Court as well as to the case of David Vaughan Racklin (supra) whereafter the decision of this Court was upheld and the leave petition filed by the Assistant Registrar of Trade Marks, Karachi was dismissed with the following observations:-- "

7. After careful consideration of the arguments and the law cited before us, we feel it is a sound principle that in cases like the present one it is not proper to refuse the application for registration at initial stage without advertisement. It will be appropriate to advertise the trade mark and invite opposition, as in such case a decision taken will avoid multiplicity of litigation, besides enabling the Registrar to have his decision on material produced by holders of trade marks who file opposition. "

9. The case of Lakson Tobacco (1992 SCMR 2323) arose from a decision of this Court in M.A. 19 of 1987 (Lakson Tobacco Co. Ltd. v. Assistant Registrar of Trade Marks) where an appeal under section 76 of the Act, 1940 was allowed vide judgment dated 21-12-1987 by a learned Single Judge of this Court, Ajmal Mian, J. (as his Lordship then was). Following are the relevant observations of this Court in the said case:-- "In support of the above appeal Mr. Salim Ghulam Hussain, learned counsel for the appellant has urged that according to respondent's own finding the Trade Mark "CLIPPER" has been registered in the above form in favour of two different applicants and, therefore, the appellant's application merited advertisement in the Trade Mark Journal for inviting objections, if any, instead of dismissing the same without having any objection. The reliance has been placed on the case of David Waughan Racklin v. Deputy Registrar, Trade Marks, Karachi 1986 MLD Kar. 1666 in which a learned Single Judge of this court while construing sections 8, 10 and 76 of the Trade Marks Act, 1940 read with rule 84 of the Trade Marks Rules, 1963 held that because of the factum that the trade mark applied for registration was already registered in the names of two applicants,, the Registrar should not have rejected the application of the third applicant at the preliminary stage but should have proceeded to issue notices to the holders of registered trade mark and publication.

3. In the instant case as pointed out hereinabove there are owners of two registered trade marks referred to hereinabove and, therefore, the respondent should have proceeded with the issuance of notice to the registered trade mark and should have advertised the trade mark in Trade Mark Journal for inviting objections and thereafter holding proper inquiry should have passed an order in accordance with law."

10. The other unreported case, M.A.-42/1987 which was noted by the Hon'ble Supreme Court in the case of Lakson Tobacco Co. (ibid) arose from a judgment dated 24-4-1998 passed by Ajmal Mian, J. (as his Lordship then was) wherein appeal filed under section 76 of the Act, 1940 was allowed and the decision of the Assistant Registrar, Trade Marks dismissing the appellant's application for registration of Mark "RED BAND" at the interlocutory stage without its publication was set aside in the following circumstances'. "

4. Since there are a number of other trade marks registered with the prefix 'Red', there seems to be no plausible reason to reject the appellants' application without advertising the same and without receiving the opposition from the other owners of the registered trade marks. .

5. I would, therefore, allow the above appeal and remand the case to the respondent with the direction to advertise the application in the Trade Marks Journal in accordance with the rules and thereafter if any opposition is received, -the same may be dealt with in accordance with law."

11. Another unreported case, which was noted in the decision of the Supreme Court in Lakson Tobacco Co. Ltd. (ibid) is M.A. No.8/1988 (Lakson Tobacco Co. Ltd. v. The Registrar of Trade Marks). In that case, the appellant applied for Trade Mark "REGAL KINGS" in Class 34 which application was dismissed by the Registrar without Advertising the same on the ground that "REGAL" is the registered mark in Class 34 in the name of Kohinoor Tobacco Co. The appeal was allowed by Syed Haider Ali Pirzada, J. (as he then was) in the following circumstances:-- "I am of the opinion that since there are a number of other trade marks registered with word 'REGAL' and the appellants have applied for associated marks, there seems to be no plausible reason to refuse the appellant's application without advertising the same and without receiving the opposition from the other owner of the registered trade mark. For the aforesaid reasons, I am of the opinion that the reasons given in the impugned decision cannot be supported by law. The appeal is allowed and the Registrar is directed to proceed with the appellants' application No.87383 in Class 34 and to advertise the same in the Trade Marks Journal in accordance with law and, thereafter, if any, opposition is received the same may be dealt with in accordance with law."

12. In addition to the above-noted cases, there are some other cases from the Courts of foreign jurisdiction which deal in respect of discretion to be exercised by the Registrar of Trade Marks. It was argued by the counsel for the appellant that the Registrar has no discretion to refuse an application for the registration of the mark without first advertising the same. In the case of Rawhide Trade Mark 1962 RPC 133 it was observed, inter alia, that the Registrar should not exercise discretion arbitrarily, capriciously or unreasonably and that a refusal by the Registrar must be based on some consideration, the nature of which is clear and can be justified as founded upon principle to be deduced from the England's Trade Marks Act, 1938. The case of Rawhide Trade Mark (ibid) was followed in the case of Hallelujah Trade Mark (1976 RPC 605). Recently, an amendment was made in the General Clauses Act, 1897 by introducing section 24-A (PLD 1997 Central Statutes 423) through which it was made mandatory requirement for all authorities exercising this discretion, to pass a speaking order. In the instant case, Registrar has passed a speaking order. On the point of discretion to be exercised by the Registrar, I have already observed above that sections 14 and 15 of the Act, 1940 entrust discretion with the Registrar to advertise or not to advertise an application before its refusal. However, e there must be enough material before him which must satisfy his conscience and such discretion should be exercised through a speaking order, for the sake of convenience, S.24-A of the General Clauses Act, 1897, is reproduced as hereinafter:-- " ... ... ...24-A. Exercise of power under enactments. --(1) Where, by or under any enactment, a power to make any order or give any direction is conferred on any authority, office or person such power shall be exercised reasonably, fairly, justly and for the advancement of the purposes of the enactment. (2) The Authority, officer or person making any order or issuing any direction under the powers conferred by or under any enactment shall, so far as necessary or appropriate, give reasons for making the order or, as the case may be, for issuing the direction and shall provide a copy of the order or, as the case may be, the direction to the person affected prejudicially ... ...

13. After conclusion of arguments and before pronouncement of the judgment, Mr. Tanveer Amjad, counsel for the appellant filed his written submissions alongwith a list of cases which includes some of the above-noted cases. It was contended that where more than one application for registration of trade mark pertaining to the same class. is pending before the Registrar, then all such applications were to be decided together to avoid conflict of decisions arid to do full and complete justice. There is no cavil to this proposition. Mr. Tanvir Amjad has rightly placed reliance on the decision of a Single Judge of this Court Saiduzzarnan Siddiqui, J. (now Chief Justice of Pakistan) Play Boy Enterprises Inc. v. Registrar of Trade Marks and another 1986 MLD 1312. The same view was upheld by another Judge of this Court in the cases of Iqbal Ahmed v. The Registrar of Trade Marks, Karachi 1988 CLC 1052 and National Detergents Limited v. Assistant Registrar, Trade Marks 1990 ALD 124 (see also Messrs Bubble-up Company Inc. v. Messrs 7-Up, U.S.A. PLD 1975 Kar. 582 at 597). The rule laid down in the case of Play Boy Enterprise (supra) was followed by this Court again in the case of Calbin Klein Cosmetics Corporation v. The Registrar 1991 MLD 2402. In the instant case it is alleged that there was another application pending for the registration of Mark "Nobel" but both have been dealt with separately by the Registrar, Trade Marks. In that case the application for registration of trade mark was advertised while in the instant case, it was rejected without advertisement of the application for registration of mark.

14. In view of the dictum laid down in the above-noted cases, there is no cavil to the proposition that where there are more than one owner of a similar or identical registered mark and when an application is filed for registration of such mark, it is incumbent upon the Registrar to advertise the application before its final or partial acceptance. In case of one owner, it is advisable for the Registrar to advertise the application for registration of already registered mark. It will enable the Registrar to know whether the first owner has abandoned the use of his mark or there may be a situation where the first owner may extend no objection for registration of same mark. No I doubt the purpose of refusal to register a mark already registered in the same class is to save the buyers at large from confusion and deception. It is also for the protection of the proprietary rights of the owner of a registered mark. But where one registered owner of a mark permits another person to get such mark registered second time in favour of such person, in my view, there is no prohibition in the scheme of Act, 1940, to decline registration of such application. It may be, perhaps, for this reason that the Courts have insisted upon the publication of an application for registration of a mark before its partial or final acceptance. In the instant case, the Registrar has refused acceptance of an application under section 14(1) of the Act 1940 without advertisement of that application. At the same time another application for registration of mark "Nobel" was advertised. The reason forwarded by the representatives of the Trade Mark Registry was that the present appellant was simply "the proposed user" while the other applicant was user of that mark. This was a correct classification but in order to exercise discretion more judiciously, it would have been advisable to get the same advertised. It is well known maxim of law that justice should not only be done but it should be seen to have been done. It is not on record as to what was the fate of the other application for the same mark. For the sake of arguments, if it is presumed that the said application was accepted then there remains no justification for refusing to advertise the application filed by the appellant. It is settled law that all applications pertaining to similar and identical marks of the same class are to be dealt with jointly. This may be done to avoid any conflicting decisions. In consonance with the above view, this appeal is accepted and the matter is remanded to the Registrar to deal with it according to law and after its publication/advertisement. I would also like to extend my gratitude to Mr. Sultan Ahmed Shaikh, Advocate, for his valuable assistance. H'.B.T./D-2/K Appeal accepted.