1986 PLP 1480 (MLD)

P L D 1973 Lah: 534; 35 CHD 231; 53 L J Q H 320 and 1981 S C M R 1939 ref. Chughtai M. Jamiluddin for Appellant. Munawar Ghani for Respondents. Dates of hearing: 25th, 28th November and 3rd December, 1985. This Miscellaneous Appeal is directed against the decision of the Registrar of Trade Marks, Karachi, dated 27‑11‑1978.

2. The relevant facts are that the appellant is the registered owner of Trade Mark "OTNELLO" since 1951. The respondent No.2 claims to be the dealer and/or manufacturer of stationery and pencil. On 1‑2‑1979 the respondent No.2 made an application for registration of mark T.M. OTHELLO in respect of stationary, office requisites, artists materials, fountain pens, pencils, ball‑points and inks of all sorts but on 10‑8‑1978 he sought the omission of stationary, fountain pens and ball‑points from his application.

3. On 23‑5‑1978, the respondent No.l made an application for rectification under section 37 of the Trade Marks, Act for removal of Trade Mark 'OTHELLO' from the name of the appellant. The notice of the same was given and the parties made their statements and counter statements in writing before the Registrar. The Registrar gave his impugned decision and hence this appeal. The Registrar after consideration of various authorities came to the conclusion that since the Trade Mark in question has been used during the past five years and one month before. 23‑5‑1978, by the appellant in Pakistan in respect of the ball‑points only, therefore, he would delete the wide list of goods as mentioned in Form TM‑1 of the Trade Mark No.16679 of the appellant and would allow only one item, viz. ball‑points and their refills to remain.

4. Mr. Jamiluddin had argued that he had not been given the opportunity of showing cause against a partial rectification and, therefore, the order of partial rectification was not justified. I do not agree with this submission because the appellant had the show‑cause notice in respect of the total removal of the Trade Mark from his name and, therefore, he had the notice that his Trade Mark is to be completely creased from his name. But since the mark was not totally removed from his name and merely partial rectification was made, therefore, he was not condemned unheard. The counsel has not been able to show any prejudice which has been caused to him and which he could have avoided if notice of partial rectification had been given to him.

5. No argument has been advanced before me to the effect that is principle partial rectification cannot be allowed by the Registrar. I have seen order of Registrar and I agree that' in the present day conditions of world trade the tendency is to specify the particula items for trade mark.

6. Appellant's counsel has relied upon 1983 C L C 522 where a D.B. of this Court had observed that in a case under section 37 of the Trade Marks Act, the impugned registration can be defended by a proprietor by establishing that he has been using the trade mark upon .any goods falling under the same registration. It was further observed that the registered owner of the Trade Mark could have defended the Trade Mark if they could have established that they had‑ used the trade mark in question upon any of the items of the goods covered under clause 30 at any time before the relevant date or during the relevant period. With respect I am in substantial agreement with the same but I am further of the view that a registration of a mark could be rectified by limiting the registration of these items upon which the mark has been used during the relevant period and also in respect of these items which are of the same description as the goods upon which the mark has been used. Reliance in this regard has been placed upon 43 R P C 385 where the registered mark was restricted to enamels and undercoating produced by the owner of the mark whereas flat oils and paints was allowed to be excluded because these items were not being manufactured by the registered proprietor.

7. Further submission of the appellant's counsel was that no rectification order could have been passed under section 37 after the evidence had been led before the Registrar that the Trade Mark "OTHELLO" was used in Pakistan by the appellant in 1974 and 19.75 upon the ball‑points imported by it as those articles are a part of clause 16 of Schedule 4 of the Trade Marks Act. However, I find that under section 37 a registered Trade Mark can be taken off the Registrar in respect of any of the goods in respect of which it is registered subject to certain limitations. This being the position, it is clear that there can be a partial rectification of the Trade Mark in respect of these goods which are not shown to have been used with the Trade Mark during the relevant period of five years and one month. It is only the proviso of section 37 which has dated a difficulty in respect of the impugned order.

8. The proviso under section 37 provides than in a case where the registered owner has not used the Trade Mark during the relevant period on the goods for which the trade mark has been granted, but if the owner can show that there has been use during the relevant period of the Trade Mark by any proprietor thereof in relation to goods of the same description then the Trade Mark can be allowed to be retained and application for rectification can be refused. This proviso, therefore, makes the use of the Trade Marx in respect of the goods of the same description as very relevant for consideration of rectification of the Trade Mark in respect of particular goods.

9. But I find that the Registrar of the Trade Mark has not applied his mind to this aspect of the case and he has limited the use of the Trade Mark of the appellant only in respect of ball‑points and their refills. If according to the proviso of section 37 the use of the Trade Mark upon goods of the same description is relevant for the purpose of rectification then it was incumbent upon the Registrar to take into consideration as to which were the goods of same description alongwith the ball‑pens and their refills and to allow the Trade Mark to remain with the appellant not only in respect of ball‑pens and refills but also in respect of the goods of the same description. In respect of goods of the same description reliance has placed upon P L D 1973 Lah.534.

10. However, it appears to me that this aspect of the case has bee left out of consideration by the Registrar and, therefore, I would se aside the impugned decision and remand the case back to the Registrar for consideration as to what other goods of the same description should be allowed to be retained alongwith ball‑points and their refills it respect of the Trade Mark "OTHELLO" by the appellant. Since the matter is being remanded for fresh decision on this point, therefore both the parties will have the chance to lead their evidence in respect of the same.

11. The appellant had also submitted that the respondent No.2 was not an aggrieved person but in view of the claim of the respondent No.2 that he was a dealer and manufacturer of stationery, it is difficult to state the position that the respondent N'o.2 was not an aggrieved person. In 35 C . H. D. , 231, it was held that one who would be prevented by its registration from doing that which otherwise he could lawfully do, e.g. one in the same trade whether he intends to compete in respect of that particular article or not, could be regarded as an aggrieved person in respect of rectification application. In respect of copy right law, in 53 L.J.Q.H. 320, it was observed that a person who has himself made wrongful entry is entitled under section 14 of Copy‑right Act, 1842 to apply for rectification as one aggrieved thereby.

12. I may also refer, argument of the appellant's counsel that the respondent No.2 had dishonestly copied the mark of the appellant and, therefore, his application should be rejected. In this respect he had relied upon 1981 S C M R 1939 where the respondent had applied for registration of the mark "lackey" for his goods while the same had been registered for the appellant in that case in respect of "hosiery" for several years. But the registered owner had not been able to import his goods in Pakistan on account of restriction on import In that case it was held that it was a dishonest use of the mark "lackey" by the respondent and, therefore, his application for registration for mark was rightly refused by the Registrar and the High Court was not justified in allowing appeal against that decision. But that decision was in respect of registration of the mark by the new user and the lack of use on the part of the registered owner was proved to be on account of legal restrictions imposed. However, the same considerations may not apply in the case of the rectification under section 37 if the person apply for rectification can positively prove that the mark has not been used for more than five years and one month and if he can show the same then his motive is hardly of any consequence.

13. The appeal is, therefore, disposed of and the case is remanded back to the Registrar for redicision in respect of the items of clause 16 which should be allowed to be continued alongwith ball‑points and their refills. I am making it clear here that the decision of the Registrar in respect of allowing the Trade Mark in respect of ball‑points and their refills was apparently justified but the deletion of the rest of the items of clause 16 in toto was not justified without considering as to which other items of clause 16 come within the same description of goods as ball‑points and their refills. M. Y. H. Case remanded.