P L D 1965 Supreme Court 292 (PLP)

HAMOODUR RAHMAN, J.‑This appeal, by special leave, arises out of a proceeding for the registration of a trade mark under the Trade Marks Act, 1940. The appellant, which is a private limited company established for the manufacture and sale of different kinds of soaps and other allied commodities, acquired the business of Messrs Crescent Pak Soap and Oil Mills including the benefits of its trade marks. The said Crescent Pak Soap and Oil Mills was a partnership firm carrying on business in the manufacture and sale of different kinds of soaps in Karachi, Dacca and Chittagong. The partners of the said firm became the directors of the appellant which claiming to be the successor of the said firm on the 15th of June 1.948, made an application being ,Application No. 294, to the Registrar of Trade Marks, Urachi, for the registration of its trade marks consisting of the device of a "camel" simpliciter on the basis of its alleged user of the said device since 1948. It maintained in its application that being the biggest soap manufacturer in Pakistan having factories both in East and West Pakistan its trade mark consisting of the device of a "camel" had, by reason of its extensive user since 1948, come to be associated with the products of the appellant and acquired a wide popularity. Though the application of the appellant was accepted on the 16th of June 1948, it was for no fault of the appellant not advertised as required by subsection (1) of section 15 of the Trade Marks Act, but during the pendency of this application the appellant filed four other applications, which were registered as Nos. 2978, 6217, 6218 and 6220, for the registration of certain other trade marks consisting of the picture of a "camel" together with certain qualifying words, such as "Caravan". "Safeguard", "Crepsom", "Camel", "Qasir" and "Unt". Out of these, Application No. 6218 was allowed on the 15th of November 1954, and registration was allowed of a mark containing the picture of a "camel" coupled with one of the above‑mentioned qualifying words. This registration was granted without any limitation of any kind for the entire area of the territories of Pakistan. Two of the other applications were also allowed and the marks therein described were registered in the same year as associated trade marks. In all these the picture of a "camel" was common and the registration was for the whole of Pakistan without any limitation. During the pendency of these applications, however, on the 16th of May 1951, the respondent No. 2 also filed an application for the registration of a trade mark having the picture of a "camel" along with the qualifying words "Premier Soap Factory" and "Ut Marks Dhakai pure" in Bengali character for the washing soaps produced by it claiming that it had been using the picture of a "camel" as a distinguishing mark for its products ever since 1916. This application was advertised of the Ist of April 1956, in the Trade Marks Journal. The appellant within the time prescribed under rule 30 of the rules framed under the Trade Marks Act gave notice of its intention to oppose the application of tile said respondent on the 26th of June 1956, upon, inter alia, the ground that the "camel" design associated with certain qualifying words had already been registered as a trade mark for some of the products of the appellant in 1954, and, therefore, no identical or nearly resembling mark like the one applied for by the said respondent could be registered. The appellant also pointed Out that the earlier application filed by the appellant in 1948 was still pending and had not even been advertised as requires by section 15 (1) of the Trade Marks Act. Further statements and affidavits as prescribed by the rules were also filed by both parties and the said application became ripe for hearing. But instead of taking it up for hearing the Registrar after 81 years caused the application filed by the appellant m 1948 to be advertised on the 1st of January 1957. Even so the respondent No. 2 did n". give any notice of opposition as required by rule 30 of the Trade Marks Rules either within the time or in the manner presented thereunder. But on the 19th of November 1957, the Registrar of Trade Marks was informed by a letter that it had been decided to oppose the said application of the appellant. The respondent was thereupon informed by the Deputy Registrar that opposition to the said application should have been filed "within the prescribed time in the prescribed manner." The respondent then on the 24th of May 1958, gave another notice of opposition in Form TM‑5 without any application for condonation of delay or extension of time. No evidence was also filed in support of the said objection. Notwithstanding these facts, the Registrar caused the said objection to be served on the appellant in September 1958. The appellant, without taking any objection to the filing of the opposition after a lapse of 17 months filed its counter statement Neither the time prescribed under rule

32. This was followed by another counter‑statement filed in answer to the Registrar's notice of' the 119th of September 1958. Both these applications were then taken up for hearing on the 12th of August 1959, by the Deputy Registrar of Trade Marks, Chittagong, to whom they were transferred by the Registrar for disposal. On that date the respondent No. 2 also prayed for permission to produce evidence, and to file certain other order forms, which ought to have been filed with the notice of opposition given on vie 24th of May 1958. This ‑vas allowed without, it is alleged, giving the appellant any further time to produce evidence in rebuttal and on the 2nd of October 1959, both the applications for registration were partially allowed. The application of respondent No. 2 was allowed in respect of East Pakistan only and that of the appellant was allowed in respect of West Pakistan only. The appellant appealed against the above order to the High Court of West Pakistan under section 76 of the Trade Marks Act and urged three grounds in support of the appeal in the High Court, namely, (1) that the division of territory was warranted by law, (2) that since the design of a "camel" coupled with other qualifying words had already been registered as the trade marks of some of the goods produced by the appellant throughout the entire territory of Pakistan, it could not now be limited to only West Pakistan and (3) that the objection filed by the respondent No. 2 against the application of the appellant filed in 1948 being out of time could not be entertained. The High Court repelled each one of the above contentions holding that since the Trade Marks Act gave a discretion to the Registrar to allow registration subject to conditions and limitations, it was open to the Registrar to impose a limitation with regard to the territory within which the registration would be valid. The fact that the appellant had earlier in 1954 secured registration of certain other trade marks which, amongst other things, also contained the design of a "camel", did not give it any right to use the design of a "camel" simpliciter as its trade mark, since the mark "camel" appeared to be in common use in respect of soaps in class III, which was the category in which the soaps produced by both parties fell. With regard to the last contention relating to the jurisdiction of the Registrar to accept objections filed out of time to High Court held that the Registrar bad the power under the Trade Marks Rules to extend the time, and since an application f%5r extension of time, filed on the 14th of January 1959, by the respondent No. 2 had been allowed, the appellant could not legitimately complain, particularly, since the appellant's own agent had at that time declared that he did not wish to file any further evidence. The appellant then obtained leave from this Court on the 24th of November 1962, for the consideration of two questions, namely, (1) that the Registrar had no right to limit the user of a trade mark to a particular area after having granted registration of other associated or similar marks containing substantially the same characteristics without any limitation or restriction as to area and (2) that, in any event, the same or similar trade marks could not be granted to other applicants even within a limited area. Learned counsel appearing in support of this appeal has, however, urged all the three grounds that were pressed in the High Court. He has contended that the High Court was wrong in taking the view that the conditions and limitations referred to in subsection (2) of section 10 included a limitation as to area. It is pointed out that limitations have been defined in section 2(1)(e) of the Act as follows:‑ "2(1)(e) `limitations' (with its grammatical variations) means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold or otherwise traded in within the Provinces and the Capital of the Federation, or as to use in relation to goods to be exported to any market outside the Provinces and the Capital of the Federation." Subsection (1) of section 7 indicates a further limitation that may be imposed. as to the use of specified colours. From these he contend, that the only inference that can be drawn is that the limitations referred to in section 10 must necessarily be restricted to those mentioned in the definition of the word given in the Act itself and those indicated in subsection (1) of section 7 thereof. Since neither of these refer to any limitation as to territory, there was no jurisdiction in the Registrar to make such a novel limitation. In this connection our attention has also been drawn to the provisions of section 68 of the English Trade Marks Act of 1938 where the definition of "limitations" is as follows:‑ `limitations' means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or otherwise traded in, in any place within the United Kingdom, or as to use in relation to goods to be exported to any market outside the United Kingdom." The only difference in phraseology is that the English Act) uses the words "in any place within" instead of the word "within" used in the Act prevailing in this country. This difference in terminology does not, in our view, indicate any difference in they intent or the purport of these words. They both mean the same, thing and merely‑ qualify the words "sold or otherwise tradedi in." If it is conceded, as the learned counsel has conceded,, that under the English Statute a limitation as to territory could validly be made, then we have no hesitation in coming to the. conclusion. that it can also be done in this country. The Trade Marks Act of 1940 is, no doubt, based on the English Trade Marks Act, but this does not necessarily mean that it must also be a verbatim copy of that Act. In our opinion, the words used in our own statute arc of substantially the same wide scope and may equally well be construed to include the power to make limitations as to territory. The words "within the Provinces and the Capital of the Federation" can only mean "in any place within the Provinces and tip‑, Capital of the Federation." Pakistan is a much larger country than England and, as such, it is not difficult to conceive of a trade mark, which is popular in one area, being not known in another area. It is equally possible under the Act of 1940 for a person to apply for the registration of a trade mark to be effective within a limited area if he is not interested in the trade in any other area. The High Court was, accordingly, in our opinion, right in taking the view that the scheme of the Act, as would appear from the reading of the definition given in clause (e) of subsection (1) of section 2, subsection (2) of section 10 and subsection (2) of section 37, was that limitations as to territory may lawfully be imposed under the said Act. Subsection (2) of section 37 expressly refers to non‑user of a trade mark "in. a particular place" within the Provinces and the Capital of the Federation and provides that in the case of such non‑user being proved appropriate limitations may be imposed for curtailing the extent of the registration, if this can be done even after the registration has been ordered, there appears to us to be no legitimate reason why the same thing cannot be done at the time of granting the application for registration. The second contention of the appellant is equally devoid of any force. Merely because the picture of a camel is incorporated as a part of a trade mark registered for other kinds of products produced by the appellant, it cannot be said that the appellant had acquired any proprietary right in the design or device of a camel even when used without any qualifying words or other embellishments. If indeed this was so, then one would have expected the appellant to withdraw its original application filed in 1948. On the other hand, it appears, that the Registrar of Trade Marks had actually found that the device of a camel and the word "camel" had become common to the trade regarding soaps of class III (in which category the soaps produced by both the parties were presumably classed) and called upon the appellant as long ago as the 28th of September 1955, to disclaim its alleged right to the exclusive use of the said device. It is difficult to appreciate why the trade should have acquired such fondness for this particular device, for, there appears to us to be no possibility of even a remote amity between a camel and a soap. One can conceive of a relationship between a device of this nature and products like camel hair belting or camel hair blankets which are produced from camel hair but, be that as it may, the mark or design of a camel must necessarily be an artificial design in the case of a soap and unless one can establish a proprietary right thereto by a sufficiently long user it cannot be said that it had become associated with the product manufactured by such a person and that if any one else uses it with other qualifying or distinguishing features there would still be a chance of the customer or user being confused. In any event, no case appears to us to have been made out in the present case E to substantiate the claim that simply because the design of a camel formed part of a mark registered earlier, no one else can use that design or device as a part of its own trade mark coupled with other totally different words or designs in respect of goods of different nature. The previous trade marks of the appellant of which registration had been granted in 1954 were in respect of toilet soap but the mark sought to be registered by the respondent No. 2 was in respect of washing soaps. There could, therefore, be no question of the appellant . having acquired any proprietary right to such a trade mark in respect of washing soap or any one being confused between the two different kinds of soaps merely because of this single common feature of the trade mark. Lastly it is contended that since no objection was filed or' evidence produced either within the time prescribed by the rules framed under the Act or in the manner therein prescribed there was no objection at all in the eye of the law to the application of the appellant and the same should, therefore, under subsection (1) of section 16, have been accepted as a matter o course. This contention does not take into account the fact that the appellant not only did not protest before the Registrar of Trade Marks against the filing of the belated objection, but in fact waived this delay by filing his counter‑statement within the time prescribed under rule

32. This amounted to submission to jurisdiction, for, the provisions as to notice of opposition and filing of evidence are for the benefit of a party who may well choose to waive the irregularity and join issue on merits. In any event, it appears that the respondent No. 2 did, in fact, file an application for extension of time on the 14th of January 1959, and the Deputy Registrar of Trade Marks granted an extension of time as he could do under Rule 76 of the Trade Marks Rules. Learned counsel, however, seeks to contend that the Registrar has no power to extend the time for doing an act prescribed by the statute and even if he had such a power he could only have extended the time by following the procedure provided under that rule, that is to say, by an express order made in that behalf, after notice to the opposite‑party and that too upon an .application made in the prescribed form. Section 84 of the Trade Marks Act expressly authorises the Central Government to make rules for prescribing the times or periods required by the Act to be prescribed and section 15 merely says that the notice of objection must be filed within the time prescribed. 'This necessarily means prescribed by the rules. Rules 30 to 35 prescribe the times within which the steps therein specified should be taken. These rules are, therefore, in no way ultra vires. The time so prescribed could also be extended in exercise of the power given by Rule

76. There is; furthermore, nothing in the said Rule 76 to indicate that an express order necessary for extending the time. The mere fact, therefore, that the opposition was admitted after the lapse of the prescribed time and served upon the applicant by the Registrar himself indicates that the Registrar must have condoned the delay. The allegation that no opportunity was given to the appellant to produce evidence in rebuttal is wholly baseless, for, it appears from the order of the Deputy Registrar that he specifically asked the agent of the appellant if he desired an adjournment for the purpose of producing such evidence in rebuttal, but the agent informed the Deputy Registrar that he did not wish to file any further evidence. In the circumstances, we find no substance in this contention either. The irregularity, if any, committed by not filing the application for extension in the prescribed form was not such as can be said to have vitiated the entire proceeding, particularly, since no prejudice of any kind was caused thereby to the appellant. He was given every opportunity to adduce evidence in rebuttal but he declined to avail of the same. He cannot, therefore, have any legitimate grievance on that account. For the reasons given above we find no substance in this appeal and, accordingly, dismiss the same but leave the parties to bear their own respective costs. A. H. Appeal dismissed.