2002 PLP 878 (CLD)

(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 fraude mark in relation to those goods by any proprietor thereof for the time being up to 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 subsection (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 also 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 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 (c) 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 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 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 a 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." It is plain from reading of above provisions that the following grounds can be spelt out on which an "aggrieved party" can apply for taking off a registered trade mark from the register‑‑ (a) that applicant for registration has obtained registration without any bona fide intention to use it in relation to the goods, and (b) there has been no bona fide use of the trade mark in relation to those goods by any proprietor up to a date one month before the filing of application under section

37. For a continuous period of five years. Who could be "aggrieved person" the observation of Brown, LJ in re: Powell Trade Mark (1 RPC 195 can be referred): "Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register or person who also would be substantially damaged if the mark remained." In Powell v. Biringham Vinergar Brewery Coy. (The Yorkshire Relish case, (1894) A.C. 8, the House of Lords considered the qualifications of "aggrieved persons" for the purposes of section 90 of the 1883 Act. Lords Watson, so far as material expressed himself as follows: 'In my opinion any trade is, in the sense of the statute `aggrieved' whenever the registration of a particular trade operators is restraint of what would otherwise have been its legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon the trade who might possibly have had occasion to use the mark in the course of his business. It is implied, of course, that the person aggrieved must manufacture or deal in the same class of goods to which the registered mark applied and that there shall be a reasonable possibility of his finding occasion to use it. But the fact that the trader deals in the same sufficient evidence of him being aggrieved, which can only be displaced by the person who registered the mark, upon whom the onus lies, showing that there is no reasonable possibility that the objector would have used it, although he was free to do so." In Wright Crossly and Coy's Trade Mark (15 RPC 377) Rigby, L.J. said with regard to the last mentioned case: "I will only add that I have carefully considered the passages cited from the Yorkshire Relish case in the House of Lords, and so far from assenting to the statement that the mere fact that a man is engaged in the same trade is sufficient to make him a person aggrieved, I think it is carefully guarded against in the very passages in the judgment which has been cited." In National Bell Company v. Metal Goods Manufacturing Company AIR 1971 SC 898, the expression "aggrieved person" has been illustrated as follows: "The expression "aggrieved person" has received liberal construction from Courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the proprietor of such mark." In the case of Chiswick Products Ltd. v. The Registrar of Trade Marks, Karachi PLD 1983 Kar. 423(sic) and 424: The first objection that was taken before the Registrar was that the application before him was not maintainable inasmuch as the respondents were not `a person aggrieved within the meaning of section

37. Clearly, however, on the facts of this case the respondents were substantially interested in having the mark removed from the register inasmuch as they themselves were using it. I adopt the one observation of Bowen, L.J. in re: Powell T.M (1); `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 makes 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. 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 application for registration that it should be used in relation to the goods in question and that there has in fact been no bona fide use of it up to a one month before the date of the rectification application a continuous period of five years or so 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 clause (b) of section 37(1). In the case of Cluett, Peabody & Co. Inc. v. Asstt. Registrar of T.M. reported in 1991 SCMR 921 it was observed as follows: 6.A. Plain reading of the above section indicates that a registered trade mark may be taken off the register in respect of any goods upon an application by any person aggrieved to a High Court or to the Registrar on either of the grounds mentioned in the said section. It may further be noticed that the proviso, which is in issue, provides that the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods if it is shown there has been, before the relevant date or during the relevant period as the case may be, bona fide use of trade mark by proprietor thereof for the time being in relation to the goods for the same description, being goods in respect of which trade mark is registered except in two cases referred to in the opening part of the above proviso, namely, (1) .where the application has been permitted under subsection (2) of section 10 to register an identical or nearly, resembling trade mark in respect of the goods in question; or (ii) where the tribunal is of opinion that they might properly be permitted so to register such a trade mark. In the case of Abdul Aziz v. Seven‑up Co., Karachi and another reported in PLD 1978 Karachi 14 and 15 it was observed as follows: The perusal of the above‑cited provisions will show that an applicant inter alia must establish for purposes of clause (a) the following two facts: (i) That the trade mark was registered without bona fide intention' of using the same in relation to the goods in respect of which it was registered, and (ii) That there has in fact been no bona fide use of the Trade in relation to those goods up to a date one month before the application. So far as the second point is concerned, admittedly there has been no use of the trade mark in relation to the goods for which it was registered. The only point at issue is the question of bona fide intention as required by this clause. Intention is a fact which is not capable of direct proof and can be established only by inference from evidence or conduct. Mr. Vallani referred me, of this question to a passage from Karly's Law of Trade Marks and Trade Names, (10th Edn.), at paras. 11‑16 at p.210 where the learned author expressed an opinion that in the absence of an intention to abandon the mark, a mere non‑use of the mark does not amount to abandonment of trade mark rights in respect of it. The author referred to the observations of Chitty, J., who said a man 'who has a trade mark may properly have regard to the state of the market and demand for the goods. It would be absurd to suppose that he lorst his trade mark by not putting more goods on the market when it was "glutted" in the same passage, however, Karly says that an intention to abandon might be inferred from long discussion and in modern practice the matter is concluded one way or of the other by terms of section 26 U.K. Act (equivalent to section 37 of Trade Marks Act, 1940). Under which non‑use for five years in connection with any goods for which the trade mark is registered may be cause for removal of mark except when it is shown to be due to special circumstances in the trade. I therefore, do not agree with Mr. Vallani in his submission that non‑use of the trade mark right from the date of its registration from 1966 until the present day is not irrelevant consideration. A mere non‑use for a period of five years or longer up to a date one month before the application under this clause, is sufficient ground for removal of the mark. In the present cause it was conceded by the respondents that the Trade Mark was not used in relation to the grounds for which it was registered, by the respondent, during the statutory period. Prima faice therefore, the mark is liable to be removed but the respondents have sought the aid of the proviso and their contention is that they have during the relevant period used the trade in another class. It is imperative, therefore, that the applicant who moves such an application has to show that he is an aggrieved person and also that the mark that needs to be removed it has not been used for the last 5 years. In almost all the citations referred to above the main point urged was on the point of aggrieved person and also whether indeed the mark of respondent was not being used for the last 5 years. In this case, however, the respondents have not turned up in spite of notice and have not put forward any defence. ~ On the other hand the counsel for the applicant has not been able to show user o1 the mark in Pakistan and the non‑user by the respondents for five years. The entire evidence brought on record is restricted to letters and invoices. The invoices and letters do not pertain to the direct input into Pakistan by any party in Pakistan from the applicant. On the other hand if the statement of the applicant is to be believed then the sister concern or another legal separate entity has conducted correspondence with the parties in Pakistan from England. Some of the documents are Air Way Bills which show that goods have been dispatched from England to Pakistan. Indeed with the advertent of the Television and the revolution in the communication borders have been broken and the products are very heavily advertised and seen by common persons in their homes. Marks have become household names which hitherto were only known to selected few. Indeed if some persons take advantage of such popular marks and bring on being into the market imitations then they have to be stopped. In the instant case it is claimed that the mark of the applicant has been registered way back in 1985 in India. On the other hand the mark of the respondent has been registered in Pakistan in year 1986. The applicants themselves admit that they had adopted the Trade Mark Laser in 1985 but they have failed to show that indeed the mark was registered in India. Whilst trade mark of the respondent is supposed to have been registered and in use in Pakistan from 1986. It is an admitted position that the applicant's goods found their way into the market in Pakistan since 1992. The present application has been filed in 1998. Whereas the application for registration of the Mark Laser has been made before the local trade mark registry in 1994. Surely such an delay on the part of the applicant is unjustified. They have failed to show why and how there was such delay in not only applying for registration of the mark in Pakistan but for also filing the present application for rectification. Even though the respondent has not appeared it would be unfair to direct the removal of the registered mark from the records of the Trade Registry as I am. not convinced that in the stricto senso terms the applicant is an aggrieved person. As already observed above the applicant has failed to show that the product has not been used for the last 5 years. Under the circumstances the application is dismissed. In case the applicant is in a position to bring proof then he may apply again. S.A. K. / M‑302 / K Application dismissed.