1983 PLP 522 (CLC)

(ii) That proviso to' clause (b) of subsection (1) of section 37 of the Act has been rightly construed by the learned Single Judge and, therefore the appellant has no cause for any grievance.

4. Before taking up the contentions advanced by the learned counsel for the parties, on merits, it will be appropriate to take up the question of limitation first. . It may be pertinent to mention hereinbelow- the relevant dates:- ' (a) Date of the order under appeal 28-8-1977 (b) Date of application for certified copy of the above order 28-8-1977 (c) Date of assessment of the cost for certified copy 22-9-1977 (d) Date of depositing of cost by the appellant 29-9-1977 (e) Date when the copy was made ready 29-9-1977 (f) Date of delivery of the certified copy 29-9-1977 (g) Date of preparation of the above appeals 1-11-1977 It may be stated that limitation period of High Court Appeal is 20 days plus time requisite for obtaining a certified copy of the order under appeal, by virtue of section 12 of the Limitation .Act. It may be noted that the appellant had applied for a certified copy of the order on 28.8-1977 and they received the same on 29-9-1977 and, therefore, they claim adjustment of the above period under the above section 12 of 'the .Limitation Act in addition to the Limitation period of 20 days. However, ii was contended by the learned counsel for the respondent Mr. Shaukat Ali that since the cost was estimated on 22-9-1977, the appellant should have deposited the cost on the very same day' or within a day or two but they had in fact deposited on 29-9-1977 and, therefore, they are not entitled to the adjustment of the above period of about 7 days from 22-9-1977 to 29-9-1977. In our view the above contention is devoid of any force. It has not been brought on record that the office after having estimated the cost either informed the appellant or their counsel or had put any notice to that. effect on the Notice D Board of the Court. In the absence of any evidence on record on the above facts, the appellant are entitled to claim adjustment of the above period of 7 days as well. In this regard, it may be pertinent to refer the case of Mst. Aisha and 3 others v. Mian Akbar Hussain (P L D 1981 Kar. 52), wherein a Division Bench of this Court inter alia held that time requisite under section 12 of the Limitation Act would commence from the date of application till the actual delivery of the certified copy in absence of any proof that the party was informed that the copy was ready on a date prior to the date of delivery. In the above-cited case reliance was placed on the case of WPIDC, Karachi v. Aziz Qureshi (1973 S C M R 555), in which it was held by the bon'ble Supreme Court that by reason of carelessness of the office in giving no information with regard to the copy being ready within time causing delay in filing of appeal, the requisite time in obtaining certified copy can be extended up to the date of the delivery of the certified copy.

5. However, even if we exclude the period commencing from 28-8-1977 to 29-9-1977, the appeals still remain time-barred as the same should have been filed within 20 days from the date of . receipt of the certified copy of the order i.e. by 18-10-1977. However, they were factually filed on 1-11-1977 as pointed out bereinabove. In this view of the matter admittedly the above appeals are time-barred by about 12 days. The .appellant's applications under section 5 of the Limitation Act were granted by an ex parte order dated 23-1-1978 at the time of Katcha Peshi subject to just exceptions without hearing the respondent. In the supporting affidavit to the above application, it has been averred by the learned Advocate for the appellant that after obtaining a certified copy of order on 29-9-1977, a copy of the same was forwarded to the appellant on 2-10-1977 for further instructions and that the Advocate for the appellant received the appellant's letter dated 17-10-1977 on 27-10-1977 instructing him to file an appeal. It has also been urged by the learned counsel for the appellant that in absence of a certified copy, it was not possible to obtain instructions from the appellant, who have their registered office in U. S. A. It has been further urged by Mr. Fateh Vellani that there was unusual delay in the receipt of the appellant's letter dated 17-10-1977, which was received by him on 27-10-1977 and, therefore, the appellant have been able to explain the delay. It is a well-settled principle of law that a party under section 5 of the Limitation Act is to explain delay of each day. In this regard reference may be made to the case of Haji Dad Shah and another v. Muhammad Fazal and 2 others (P L D 1971 Quetta 69). In the instant case, judgment was given against the appellant on 28-8-1977, in our view there was sufficient time available to file the appeal within limitation period. Admittedly, the copy of the certified copy of the order was forwarded by the learned counsel for the appellant to the appellant on 2-10-1977. Nothing has been brought on record by the appellant to indicate on what date they had received the copy of the above order. However, it was urged by Mr. Fatehali Vellani that since the appellant's letter dated 17-10-1977 was received in Pakistan on 27-10-1977 instead of after 4/5 days from the date of posting, it can be inferred that his aforesaid letter dated 27-10-1977 must have been received by the appellant after about 10 days. In our view no such inference can be drawn. It was for the appellant to bring on record the fact that there was delay in the receipt of the copy of the order for a reason beyond their control in order to press into service an, application D under section 5 of the Limitation Act It may be observed that limitation period for filing an appeal cannot be extended on surmises and conjectures under section 5 of the Limitation Act. The appellant are obliged to explain the delay of each day. Even if the appellant's aforesaid letter dated 17-10-1977 would have been received within 5/6 days from the date of posting, the appeal would have been still time barred. For the aforesaid reasons, we are constrained to hold that the above two appeals are time barred by about 12 days and that the appellant have failed to make out a case under section 5 of the Limitation Act and, therefore, the appeals are liable to be dismissed on the above ground. It may be observed that the superior Courts in this country as well as during pre-Partition days of India, have held that even a Government Department is not entitled to be treated differently while considering an application under section 5 of the Limitation Act. The ground that the Government Department takes longer period to decide, has been found insufficient to condone the delt3y under section 5 of the Limitation Act. Reference can be made to the case of Province of East Pakistan v. Abdul Hamid . Darji and others (1970SCMR558).

6. As regards the merits of the appeal, it may be obstrved that con troversy centres around the interpretation of proviso to-clause (b) to subsec tion (1) of section 37 of the Act. It may be advantageous to reproduce sub section (1) of section 37 of the Act which reads as fellows:- "Section 37(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 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."

7. It mar be noted that above-quoted subsection of section 37 provides two grounds for the removal of the registered trade mark from the register, namely (i) that the trade mark was registered without any bona fide intention on the part of an applicant for registration that he would use the same in relation to those goods for which registration was obtained; (ii) up to a date on-. month before the date of application for a continu ous period of 5 years or longer from the date of the registration of the Trade Mark, there was no bona fide use of the registered Trade Mark by the proprietor. However, proviso to clause (b) of subsection (1) of above-quoted section 37 gives discretion to the Court to decline the application for rectification on the ground that the proprietor during the above 5 years or more period had used the trade mark in relation to goods of the same description being goods in respect of which the trade mark was registered.

8. It has been urged by Mr. Fatehali Vellani, learned counsel for the appellant as stated hereinabove that the finding of the learned Single Judge that in order to invoke clause (b) to subsection (1) of section 37, user of the trade mark must be in relation of the goods of the same description under the same registration is erroneous as there is no such condition imposed by the Act and that only requirement is that the proprietor of a registered trade mark should have used the trade mark in relation to goods of the same description, whether they were registered under the same registration or under different registration. On the other hand, it has been contended by Mr. Shoukat Ali, in order to press into service above clause (b) to subsection (1) of section J7, the registration should be under the same registration number. It may again be observed that the appellant are proprietor of registered trade marks numerical "7-Up" and "Seven-Up" under class'32 of the IVth Schedule to the Act in respect of carbonated, non-alcoholic, non-cereal, maltless, beverages sold as soft drinks and preparations for making such E beverages and in respect of soft drinks beverages and syrup, flavour an extracts for making soft drink beverages. Whereas the impugned registration in respect of the above two trade marks was obtained under class 3 in respect of, candy and confectionary of all kinds and flavour ice".

9. It may be advantageous to quote hereinbelow the description of the goods covered by classes 30 and 32 to the 1Vth Schedule to the Act, which read as follows: "Class 30.-Coffee, tea, cocoa, sugar, rice, tapioca sago, coffee substitutes; flour, and preparations made from cereals; bread biscuits, cakes, pastry and confectionery ices; honey treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces; spices; ice:" "Class 32.-Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages." It may be noticed that under the above two classes; though the items of goods covered are consumable by .human beings as soft drink/edible but they have been categorised separately for the purpose of obtaining registration of trade mark. Mr. Fateh Ali Vellani has referred to the case of Montgomery Flour & General Mills Ltd. (P L D 1973 Kar. 567), in which Tufail Ali A. Rehman, C. J., while hearing an appeal against the order of Registrar, Trade Marks declining the appellant's application for registration of Trade Mark 7-Up in respect of "hard boiled sweets, candies and drops" under class 30 upon opposition of the respondent (i. e. of the present appellant) held that the goods of the contesting parties were of the same description inasmuch as they were normally sold through the same trade channel and that both items were for human consumption. On the other hand, Mr. Shoukat Ali has referred to the case of 7-Up v. Abdul Aziz Noor Muhammad (P L D'1976 Kar.. 895), wherein Dorab F. Patel, J. (as he then was) dissented from the above judgment of Tufail Ali A. Rehman, C. J., on the above point and upheld the orders of the Registrar, registering the trade mark numerical 7-Up for Pan Masala, cotton; sweet and thread under class 30- of different parties. We have been informed by the learned counsel for the parties that the appeals against the judgment of Dorab F. Patel, J. are pending before the honourable Supreme Court and, therefore, we would not like to express on the question, as to whether the view found favour with Tufail Ali A. Rehman, C. J. was correct or of that of Dorab F. Patel, J., as it is not necessary for the disposal of the above appeals. We are inclined to hold that the conclusion arrived at by the learned Single Judge in the instant cases to the effect that proviso to clause (b) of subsection (1) of section 37 can be pressed into service only when a proprietor can establish that he has used the trade mark during the, relevant period in relation to the goods of the same description under the same registration is correct. In this regard, it may be pertinent to quote herein below relevant passage from the well-known book Kerly's law on Trade Mark and Trade Name, 10 Edition at page 220 relied upon by -the learned Single Judge, which reads as follows:- "The proviso to section 26(1) states that, except where the applicant has been permitted under subsection (2) of section 12 of this Act 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 it' it is shown that any proprietor had in fact made bona fide use of the trade mark "in relation to goods of the same description, being goods in respect of which the trade mark is registered. This proviso was new in the 1938 Act. The substantial effect is that the registered proprietor may seek to excuse the absence of use in relation to the registered mark by proof of use upon goods of the same description provided those goods also fall within the registration." It may be noticed that the learned author while considering proviso to sub section (1) of section 26 of the English Trade Marks Act, which is equivalent to proviso. 1 to clause (b) to subsection (1) of section 37 of the Pakistan Trade Marks Act, has observed that a registered proprietor can press into service the above proviso by proving the use of the trade mark upon goods of the same description provided the same fall within the same registration. 10.' However, it was urged by Mr. Fateh Ali Vellani, learned counsel for the appellant that the learned author has cited the case of Cal-u-Test (TM(67)FSR39), in support of the above-quoted observation, but there is no such observation in the order of the above case, which could have been made the basis by the learned author for making the above observations. It may be stated that the above case of "Cal-u-Test" was -decided by the Registrar of Trade Marks and not by English High Court or Court of Appeal. In our view, the following observations made by the Registrar could have been formed basis for the author of the above book to make the observations referred to in the above-quoted passage "It is the specifications of goods as recorded on the register which are material and I have already held that all the marks on the list, except for Nos. 644,006 and B 644,009, cover the chemical diagnostics used externally on samples. Ames cannot however, pray in aid the proviso of section 26(1) as a defence in the case of those two marks because the use of the mark which has to be provided is limited to use on goods of the same description within the specifications for which the mark is registered."

11. It may be stated that in a subsequent case, namely, Atlas Trade Mark (1979 R P C 59). Mr. Myall, Registrar Trade Marks while dealing with the scope of proviso to subsection (1) of section 26 of the English Trade Marks Act, held that the above proviso can only be pressed into service if the goods of-the same description upon which trade mark used was within the same registra tion.

12. In our view the object of section 37 of the Act seems to be to discourage the registration of Trade Marks by the persons, who have no bona fide intention to use the same. This object of the above section will) be defeated if we were to hold that a proprietor can press into service proviso to clause (6) of section 37 even by showing that he was using the trade mark in respect of goods registered under separate registration. It may be pointed out that what is in issue before the Registrar under section 37 is a particular registration on the grounds mentioned in clauses (a) and (b) of section

37. The impugned registration can be defended by a proprietor by establishing that he has been using the trade mark upon any goods fallen under the same registration. It may again be pointed out that class 3 to the aforesaid rule contains a large number of items quoted hereinabove and the appellant had obtained registration in respect of the some of the above items. namely, candy and confectionery of all kinds H and flavour ice. They could press into service the above proviso if they would have, used the trade mark in question at any time before the relevant date or during the relevant period in respect of any of the above items for which they have obtained registration. It may be observed that the appellants' case might have been on better footing, if they could have establi shed that they had used the trade mark in question upon any of the items of goods covered under class 30 at any time before the relevant date or during the relevant period.

13. The upshot of the above discussion is that the above two appeals are dismissed, with no order as to costs. K. M. A. Appeals dismissed,