1991 PLP 1717 (CLC)

Both the parties submitted their written arguments in writing. The second respondent dismissed the appellants Application No.76710 for registration of their mark and allowed the opposition No.98/89 by his decision dated 3-5-1989. The appellants filed rectification Application No.5/87 on 15-1-1987 against the registered Trade Mark No.78751 in Class 30 under Sections 37, 38 and 46 of Trade Marks Act, 1940 (hereinafter referred to as the Act). The application for rectification was filed on the following grounds:

(a) That the applicants for rectification are a person aggrieved within the meaning of Sections 38(4) and 46(2) of the Trade Marks Act, 1940, as their application for registration of their Trade Mark `HOEST' under Application No.76710 in Class 30 which they have admittedly used since at least 1975 is being opposed by the respondents on the basis inter alia of their impugned Registration No.78751. (b) That the impugned registration ought to be cancelled under the provisions of section 38(4) on the ground that the requirements of subsection (1) of section 38 are no longer satisfied in respect of any goods in respect of which the trade-mark is registered. (c) That the impugned mark is not an invented word and does not satisfy the requirement of section 38 (1) and ought to be cancelled under section 38(4). ; (d) That the requirements and conditions necessary for registration as a Defensive Mark provided under section 38(1) are not existing and have never existed and therefore the entry of the mark is an entry made in the Register without sufficient cause and an entry wrongly remaining on the Register and ought to be cancelled under the provisions of section 46(2) of the Act. The first respondent filed counter-statement on 10-8-1987, mainly on the grounds that (a) the appellants are not aggrieved persons within the meaning of Trade Marks Act, (b) the appellants failed to oppose Trade Mark Application No.78751 in spite of having full knowledge, and (c) the application for rectification is mala fide and has been filed to pressurize the withdrawal of opposition. Both the parties also filed duly sworn affidavits in support of their contentions. Both the parties also filed written argument and the appellants also filed rebuttal arguments in reply to the arguments filed by the first respondent. The second respondent dismissed the rectification application by his decision dated 3-5-1989. Being aggrieved with the decision dated 3-5-..1989 the appellants filed the above appeals. I have heard Mr. Syed Anwar Ali, learned counsel for the appellants and Mr. Sultan Ahmad Shaikh, the learned counsel appearing for the respondents. I have perused the impugned decisions. Mr. Syed Anwar Ali raised a preliminary objection not only to the approach made by the learned Registrar of Trade Marks but the form of his decisions. The next point taken by him was that the appellants had applied for registration of their Trade Mark "HOEST DROPS" as a Label Mark in respect of "Candies, confectionary and sweets" only claiming actual user of the said mark since 1975. He further submitted that rectification application was founded on various grounds. His submission is that the learned Registrar has only referred section 37 of the Act. Evidence was adduced by both the sides before the learned Registrar and all the points were canvassed at great length but the learned Registrar had not made even a passing reference either to the evidence or to the grounds taken by the appellants or even to sections 38 (4) and 46 of the Act. Mr. Sultan Ahmad Shaikh fairly conceded the above position. Both the learned counsel submit that this is a fit case for remand. I think, the request is just and proper in the circumstances of the case. The provisions of the Act and the Rules framed thereunder provide that the decision of the learned Registrar has to set out points for determination, record the decision thereon and give his own reasons for the said decision. The Legislature has laid down these rules so that either the Appellate Court or the Court exercising such jurisdiction should be in a position to find out the track traversed by the Registrar of Trade Marks. He cannot run away from his onerous duties of recording the finding of fact and/or discussing the evidence. Strictly speaking and with due respect to the learned Registrar, as one reads the decision, it cannot be said to be a decision of the Registrar at all. However, as I read the decision of the learned Registrar, nowhere he was ventured to consider the various grounds covered by sections 37, 38 and 46 of the Act. The appellants relied upon numerous grounds for rectification of the mark and none of the grounds given or even the evidence led was discussed by him. I have no other alternative but to remand the matter with a direction to the learned Registrar to hear the applications on merits and to decide the same according to law within three months from receipt of this order by reverting his attention not only on the points of controversy introduced but by scrutinizing the evidence led thereon. In the result, the appeals are allowed. The impugned decisions are set aside. The matter is remanded to the learned Registrar of Trade Marks for rehearing the application/opposition/rectification applications and counter-statements on merits according to law after affording full opportunity to the parties in the light of the observations made above. AA./T-113/K Appeals allowed.