P L D 1975 Karachi 421 (PLP)

3. The case put forward by the respondents before the Registrar of Trade Marks was that they had been using the marks in question since 1964 onwards and it was argued, even before me, that the appellants, wanting to capitalise upon the goodwill built up by the respondents, started using the same 1960, from onwards. On the other hand for the appellants it was contended that they have a world‑wide trade under these Trade Marks and in fact have done a very large volume of business in the territories which now constitute Pakistan since 1916. This might be true but I have no evidence before me upon which I can judicially reach that finding; the amount of business which they did from 1916 to 1949 in Pakistan, or at any rate the areas which now constitute Pakistan, is a matter of mere academic interest for it is not only alleged but had to be conceded that there in fact has been a non‑user from 1949 to 1967. The prior use of the mark, even if established, would make no real difference. Probably, if what the appellant states is correct then their use since 1967 could be attributed not indeed to an intention to utitise the respondent's goodwill but to safeguard their own previously built up but which of these motives is the true one makes no difference to the decision of this case and I do not, therefore, propose to discuss the question any further.

4. The substantial questions that arise in this case turn almost entirely upon a consideration of section 37 of the Trade Marks Act, which reads thus : "37, Removal from register and imposition of limitations on ground of non‑use.‑(1) Subject to the provisions of section 38, a registered Trade Mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either‑ (a) that the Trade Mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the Trade Mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the Trade Mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being : Provided that, except where the applicant has been permitted under sub section (2) of section 10 to register an identical or nearly resembling Trade Mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a Trade Mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the Trade Mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the Trade Mark is registered. (2) Where in relation to any goods in respect of which a Trade Mark is registered‑ (a) the circumstances referred to in clause (b) of subsection (1) are shown to exist so far as regards non‑use of Trade Mark in relation to goods to be sold, or otherwise traded in, in a particular place in Pakistan otherwise than for export from Pakistan, or in relation to goods to be exported to a particular market outside Pakistan; and (b) a person has been permitted under subsection (2) of section 10 to register an identical or nearly resembling Trade Mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported or the tribunal is of opinion that he might properly be permitted so to register such a Trade Mark. On application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first‑mentioned Trade Mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use. (3) An applicant shall not be entitled to rely for the purpose of clause (b) of subsection (1) or of subsection (2) on any non‑use of Trade Mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the Trade Mark in relation to the goods to which the application relates."

5. The first objection that was taken before the Registrar was that the application before him was not maintainable inasmuch as the Respon dents were not "a person aggrieved" within the meaning of section

37. Clearly, however, on the facts of this case the respondents :ware substantially interested in having the mark removed from the register inasmuch as they themselves were using it. I adopt the observation of Bowen, L. J. in, In re; Powell Tm (10 R P C 195) "Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained. The question whether such a person has on merits a good case is entirely besides the matter; to require that to be established would be to put the cart before the horse. The maintainability of an action cannot depend on the merit of the claim but upon the standing of the party who Fakes the claim inasmuch as it must be asked whether there is a real interest which he is attempting to enforce or defend. In my view. therefore, the respondents were a person aggrieved; in any case the objection was not pressed before me.

6. It is plain from a reading of section 37 that the Trade Mark may be removed if there was no bona fide intention on the part of the applicant for registration that it should be used in relation to the goods in question n. that there has in Fact been no bona fide use or if up to a date one month before the date of the rectification application a continuous period of five years or longer has elapsed during which there has been no bona fide use. The first class of cases is covered by clause (a) and the second class by came (b) of section 37 (1). It was argued before me, and I think quite rightly, that clause (b) admittedly could not apply since the application was made in July 1969 and, therefore, the period of five years and one month would have to commence from about June 1964 and continue up to one month before the application. The whole basis of the finding of the Registrar is non‑use up to 1967. Clearly, although the Registrar does not expressly say so, he acted under clause (a).

7. The only evidence before the Registrar of any user by the appellant was by affidavit and related to the period 1966 onwards. (Additional evidence had been allowed to be placed on record in the course of these proceedings and to that evidence I shall presently come). Learned counsel argued that the Registrar was wrong in holding that there was no intention to use" or that there was no bona fide use. These are, however, questions of fact and. what is more of intention and it is not possible to obtain direct evidence of intention which can only be inferred from conduct. I think that the fact that there has been in fact no use from 1949 when the marks were registered, until 1967, a period of 18 years, is a sufficient evidence upon which the Registrar could come to the conclusion which he did and I myself would draw the same, inference.

8. Now the additional evidence which has been produced in this Court consists of a number of documents being cash memos, invoices etc., but all these, with one single exception., relate to the year 1949. The sole exceptions a Marine Insurance Policy of goods worth 4,090 pounds. The goods were to be imported to Karachi but even 9f l assume that the existence of this policy proves that the goods were in fact imported into Karachi, it by no mans follows that they were then marketed in Karachi. In any case, on. the view most favourable to the appellants, this would show one isolated transaction in 1955 and there still would be a period of 12 years of non‑user.

9. It was then argued that the Registrar has over‑looked the provisions of section 24 and section 39 of the Trade Marks Act. Now section 24 only provides that after the expiration of 7 years from the date of the registration of a Trade Mark, the Trade Mark shall be taken to be valid in all respects unless it was obtained by fraud. There is no question, here however, of any allegation that the Trade Mark was obtained by fraud. The question is whether there was any intention to use it and whether there has been any bona fide user thereafter. These are, I think, matters entirely distinct from any fraud. Section 24 would apply when the Registrar has been deceived by some in representation to grant a registration.

10. Section 39 merely provides that a person other than the proprietor of the Trade Mark may be registered as a registered user and that the permitted use of a Trade Mark shall be deemed to be the use by the proprietor. In this case Messrs Reckit & Colman were registered yes the registered users. There is no evidence, however, that even they used it during the relevant period‑ that is 1949 to 1967. I am unable to see, therefore, how learned counsel for the appellant can rely upon this section either.

11. It was finally argued, that subsection (3) of section 37 saved the appellant. In the first place the subsection applies only where clause (b) of subsection (1) is concerned but in any case it is clear that the onus of proving special circumstances would be upon the registered owner and not the faintest attempt was made to assert these special circumstances, muchless to prove them.

12. In the result I have, therefore, come to the conclusion that the order of the Registrar was perfectly correct and I, therefore, dismiss these appeals with costs. S. A. H. Appeals dismissed.