1991 PLP 2402 (MLD)

Date of hearing: 11th November, 1990. Messrs Calbin Klein Cosmetics Corporation, a Corporation incorporated under the laws of United States of America have filed this appeal under section 76 of the Trade Marks Act, 1940 against the decision of the Registrar, Trade Marks, Karachi dated 8th June, 1989 whereby he did not accept their application (No.90103) for registration of their trade mark. The appellants in this case filed an application for registration of word "OBSESSION" as a trade mark in class-3 in respect of perfumery, essential oils and cosmetics manufactured and marketed by them. The respondent Registrar Trade Marks, Karachi processed their application under section 14 of the Trade Marks Act 1940 and raised an objection to the acceptance of such application on the ground mentioned in section 8(a) of the Act. He issued them a show-cause notice. It was pointed out that Messrs Detergent Limited Karachi by their Application No.89914 had already applied for registration of the same mark in class 3 for their products and such application was pending. The Appellants filed their reply alongwith certificate of registration of such mark in United States of America and Canada. They also produced evidence showing that they were the users of such mark throughout the world for their products, since 1943. The appellants were heard and they pointed out that they will be entitled to oppose the application of Messrs National Detergent Limited, Karachi after it was advertised in the Trade Marks Journal in accordance with law. The respondent without adverting to the points raised by the appellants decided to reject the application on the sole ground that another application was already accepted for registration. Mr. Farooq Irfan Khan, Advocate appearing for the appellants mainly contended that the decision of the Registrar in rejecting the application of the applicants for registration of the Trade Mark applied for is not justified only on the ground of pendency of another application for registration of the same mark. According to him the application of the appellants ought to have been accepted and proceeded further alongwith the pending application of Messrs National Detergent Limited. In the process the appellants would be entitled to oppose the application filed by Messrs National Detergent Limited, Karachi and only after hearing both the applications final decision could be taken. He relied on cases reported in 1981 S C M R 1039, 1986 M L D 1312, P L D 1973 Lah. 229, 1988 C L C 1052, P L D 1979 Kar. and P L D 1987 Kar.

356. The Registrar Trade Marks, Karachi in spite of notice preferred to remain absent. In the present case the Registrar Trade Marks, Karachi had merely raised an objection to the acceptance of application filed by the appellants on the ground that another applicant too had applied for registration of the same trade mark in the same class. In cases where more than one applicants apply for registration of common mark in the same class the Registrar of the Trade Marks will always be well-advised to take up all such applications together to avoid possible conflict in his decisions. By resorting to such a procedure all parties interested in registration of such a mark will be afforded opportunity to oppose each other and thus facilitate the Registrar to reach a correct conclusion in passing order under section 15 of the Trade Marks Act, 1940. An application for registration of a trade mark cannot be rejected merely on the ground that another application for registration of mark applied for is pending before him. I am fortified in taking such a view by the case of Play Boy Enterprises Incorporated v. Registrar of Trade Marks and another published in 1986 M L D 1312. For the foregoing reasons I set aside the decision of the Registrar of Trade Marks, Karachi impugned in this appeal, allow this appeal and remand the case to the respondent to decide the application of the appellant alongwith the application filed by Messrs National Detergent Limited, after hearing them in accordance with law. A.A./C-220/K Case remanded.