1989 PLP 1664 (MLD)

The Registrar in his order had recorded that in support of grounds for opposition there is not a single piece of evidence to show that the mark had ever been introduced within the country for readymade garments. The Registrar on a consideration of the materials placed before him came to the conclusion that the first respondent is doing its flourishing and progressive business in the readymade garments and it deserves that its rights over the mark for the readymade garments in the export market are fully protected. He allowed the first respondent to keep itself busy in the export market for readymade garments and he further authorised it that it may if so desired switch over to hosiery products in the export market only. He also allowed the first respondent to add hosiery products but the market under the mark shall remain countries other than Pakistan. The Registrar on the consideration of the material before him came to the conclusion that the appellants are the/registered proprietor of Mercury brand with its different variations like word `MERCURY' and on label having certain features like underwear, vest, devices and other devices for attraction purposes but their main field of activities had throughout been from the year 1968 till to date hosiery products. He gave the‑lists of hosiery products in his order. He held that the appellants are within their right to exploit local market for hosiery products but to safeguard the interest of the first respondent are not to go in the export market. Mr. Khawaja Mansoor, the learned counsel for the appellants, vehemently urged that the Registrar has no jurisdiction to amend the registrations of the appellants as the trade marks under entries Nos.52636 and 71724 were not in issue in proceedings concerning applications Nos.62609 and '71331 and opposition thereto hearing No.79/80 and 295/83. Mr. Khawaja Mansoor further contended that the Registrar had no jurisdiction to limit the areas. The learned counsel for the first respondent supported the decision of the Registrar. In order to appreciate the respective submissions of the learned counsel for the parties, it is advantageous, to reproduce Sections 2(1)(e), 10(2) and 37(2) of Trade Marks Act, 1940 which read as follows:‑‑ "

2. Definitions.‑‑(1) In this Act, unless there is anything repugnant in the subject or context,‑‑ (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 Pakistan, or as to use in relation to goods to be exported to any market outside Pakistan;" "

10. Prohibition of registration of identical or similar trade mark: (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think it to impose." "

37. Removal from register and imposition of limitations on ground of non use: (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 sub‑section (1) are shown to exist so far as regards non‑use of the 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 sub‑section (2) of section 10 to register 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." This statement of the law makes it cleat that the limitation as to territory may lawfully be imposed by the tribunal under the said Act. In Messrs Crescent Pak S lap and Oil Mills v. The Deputy Registrar of Trade Marks, Chittagong and another PLD 1965 SC 292 the facts were that the appellants made an application for the registration of trade marks consisting of the device of a "Camel" 11) simpliciter on the basis of its alleged user of the said device since 1948 Though the application of the appellant was accepted on 16‑6‑1948, it was not advertised as required by Section 15(1) of the said Act, but during the pendency of this application, the appellant filed four other applications for the registration of certain other trade marks consisting of a "Carnal", together with certain qualifying words such as "Carvan", "Safeguard", "Crepsom", "Camel", "Qasir" and "Unt". In all these picture of a "Camel" was common and the registration was for the whole of Pakistan without any limitation. During the pendency of those applications, the respondent No.2 also filed an application foe the registration of a trade mark having the picture of a "Camel" alongwith the qualifying words "Premier Soap Factory' and "Ut Marks Dhakai pure". The application of respondent No.2 was allowed in respect of West Pakistan only and that of the appellant was allowed in respect of West Pakistan only. The appellant appealed before the High Court of West Pakistan. The High Court repelled each one of the contention holding that since the‑‑ Trade Marks Act gave 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 Judgment of the High " Court was affirmed by the Supreme Court. The Supreme Court held:‑‑‑ "Pakistan is 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 proceed appropriate limitations may be imposed for curtailing the extent of the registration if this can be done even after the registrar 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 dictum laid down in the above judgment is fully applicable to the facts of this case. The learned counsel for the appellants invited my attention to paragraph 899 at page 411 of Narayanan (3rd edition) Trade Marks and Passing off a portion of which reads as under:‑‑ "But no order can be made which will have the effect of extending the rights given by the existing registration of the trade mark or which is not in consonance with the general scheme and purpose of the Act." Mr. Khawaja Mansoor placed reliance on the case of B. Honappa v. R. S. Ramappa and another reported in AIR 1956 Madras 184 in which a learned Single Judge held as under:‑‑ " . . . . . . In the special circumstances set out above in this case it is unnecessary to cancel the entry made in the Trade Marks Register and the proper thing to do is to vary it by registering both the petitioner and the respondent as joint proprietors of the trade mark and that the proprietary rights in the trade mark will naturally date from dates of their respective settlement deeds. This joint registration will also be in conformity with the spirit if not the letter of S.17(2) as the petitioner and the respondent do not, being covered by the Aliyasanthana Law, constitute members of a joint family coparcenary and these, two factors do not constitute joint family assets." The case is distinguishable as in that case the Single Judge held that the joint registration will also be in conformity with the spirit if not the letter of section 17(21 as the petitioner and the respondent do not, being governed by the Aliyasanthana Law. This case .was set aside by the Division Bench m appeal (AIR 1957 Madras 76). Reverting to the last contention of Mr. Khawaja Mansoor that the Registrar had not exercised discretion in the present case judicially, the question for consideration is that whether the Registrar had really gone so wrong as to make it necessary to interference with his discretion. The first respondent claimed the proprietary right in the word "MERCURY" with a device of Globe. The respondent claimed themselves as proprietor of two registered marks bearing No.39519 since 29‑6‑1963 and 42747 since 6‑6‑1965. The respondent have also filed other applications which are pending. The Registrar has recorded a finding that his opposition is against the acceptance of the mark on the ground of equity because according to them there is no confusion in the market as to the origin of two goods, i.e. hosiery and readymade garments. He found that the respondent's trading style is Mercury Garments Industries and that of the appellant is Mercury Hosiery Industries. The case of the appellant as set out in the counter statement is that the appellants claimed used since 1968 and emphatically asserted that its hosiery products are well‑known throughout the length and breadth of the country and the period of use is over 15 years and there had been no complaint from the public as to confusion. He pointed out that according to the appellant, it is within the country for hosiery products whereas the respondents are exclusively in the export market for readymade garments. He also pointed out that according to the appellant goods are of different description, therefore, question of confusion and deception, m view of different specifications and separate market, does not arise. The Registrar came to the conclusion that the first respondent wanted to keep themselves busy in the export market for readymade garments and he further allowed them that they may if so desire, switch over the hosiery products in the export market only. He came to the conclusion that the market they have captured can readily be exploited by them for their hosiery goods which are presently a readymade garments. They may add hosiery products but the market under the mark shall remain countries other than Pakistan. Mr. Khawaja Mansoor, learned counsel for the appellants, contended that once a trade mark is registered, then section 10(1) will operate as a bar for the registration of a trade mark even outside the territory. According to the learned counsel, Section 10 does not make any distinction between cases where a trade mark is registered in respect of the entire country and a trade mark registered in respect of a particular area on region and that only exception to this rule is the one which is covered by subsection (2) of section

10. I am unable to accept this contention for the reason that the words "he may permit the registration by more than one proprietor, subject to such conditions and limitations as appearing in subsection (2) of section 10 must be read with the provisions of Section

14. Subsection (2) of section 1.0 as well as subsection (1) of section 14 empower the Registrar to accept an application "subject to such amendments, modifications, conditions or limitations, if any, as he may think fit," The registration referred to in subsection (1) of section 10 is the registration subject to the amendments, modifications, conditions or limitations imposed by the Registrar under subsection (1) of section

14. In the present case, the appellants' word `MERCURY' in respect of hosiery goods namely men's underwear and vests was registered subject to the limitations that it was to be used by the appellants for sale of men's underwear and vests. Section 10(1) would be a bar to the registration of the respondent's trade mark for readymade garments in the export market. In the present case, the learned Registrar has found that there is no evidence to prove that the mark had ever been introduced within the country for readymade garments. Therefore, it would follow that in export market, the use of the mark for readymade garments would be protected. The final contention of the learned counsel for the appellants is that the Registrar should not exercise his discretion in allowing the respondents to use the word `MERCURY' in export market for readymade garments. I have already indicated that the learned Registrar was right in his view that the respondents were using word `MERCURY' for the last 20 years for readymade garments in export market. In the instant case the Registrar is clearly right and therefore, the discretion vested in him has been exercised on the basis of correct view. This is a fit case where this Court should not interfere with the discretion exercised by the learned Registrar. The orders of the learned Registrar are maintained and the appeals are dismissed. There shall be no order as to costs. M.Y.H./M‑756/K Appeal dismissed.