1988 PLP 1606 (MLD)

This order will govern the disposal of MAs. Nos.‑SO and 51 of 1983 filed under section 76 of the Trade Marks Act against the decision of the Registrar, Trade Marks, rejecting opposition Nos.86/83 and 87/83 filed by the appellant against Trade Mark Applications Nos.72848 and 72859 in class 7 respectively. The oppositions filed by appellant were dismissed by the Registrar on the sole ground that they were beyond time. The admitted position m the case is that the advertisement for registration of trade marks under Applications Nos.72848 and 72859 in class 7 filed by respondent No.2 appeared in March, 1982 issue of the Trade Marks Journal and the opposition was filed by the appellant in February, 1983. Rule 30 of the Trade Marks Rules, provides a maximum period of two months for filing of opposition to the registration of a trade mark from the date of its advertisement. Under Rule 76 of the Trade Marks Rules, the Registrar is invested with power to extend time for doing an act prescribed by the rules except in the cases covered by Rules 55 and 59, but such extension of time cannot exceed the period of six months as against the period prescribed under the rules. It is, therefore, clear that the total period within which the opposition could be filed by the appellant including the extended period is R months whereas the opposition was filed by the appellant after about 11 months of the advertisement. Learned counsel for the appellant, however, contends that in the present case in spite of the fact that the opposition filed by the appellant was beyond time the Registrar could not proceed with the registration of the trade mark applied for registration by the respondent as there already existed a registered trade mark on the register of the Registry in favour of the appellant and as such registration of a similar trade mark was prohibited in view of sections 10(1) and 8(a) of the Trade Marks Act. It is also contended by the learned counsel that in addition to the registration of trade mark "Yamaha" in favour of the appellant it is also their trading style, and therefore, for that reason also the offending mark applied for registration by the respondent could not have been registered in view of the provisions of the ‑fade Marks Act. Learned counsel also referred to the provisions of section 16(1) of the Trade Mark Act, to contend that even if application was accepted by the Registrar it was an error which should have been rectified under the provisions of section 16(1) of the Act. It is true that the combined effect of Rules 30 and 76 of the Trade Marks Rules, 1963, is that the opposition proceedings could be lodged, by the appellant within a maximum period of 8 months from the date of advertisement of the mark of Respondent No.2 in the Trade Marks Journal but in view of the decision in the case of Basra Soap Factory v. Puajab Soap Factory P L D 1973 Kar. 279 the appellant, in the circumstances of the case, was entitled ,to a spec notice as soon as the application was made for registration of the offending mark by respondent No.2, as the mark applied for registration by respondent No.2 was identical/similar to the mark of the appellant which was already registered in their favour. Mere advertisement of the offending mark in Journal could not amount to a notice to the registered proprietor (appellant). The following passage from the above cited case which appears at page 282 of the report supports the above conclusion:‑ "Implicit in this rule is the principle that notice should be sent to ail the persons or applicants who either have a registered trade mark of have sought registration of a trade mark, whenever an application is made for registration of a trade mark which is identical with, or resambles, a trade mark already on the register or amongst the pending applications. In fact, a notice under Rule 23 was sent to the Punjab Soap Factory with regard to the mark offered for registration by the Basra Soap Factory. But no similar notice was sent to Basra Soap Factory that another party, that is, the Punjab Soap Factory had offered for registration a trade mark identical with, or resembling, the trade mark of Basra Soap Factory MrAA.Zari stated that Punjab Soap Factory's trade mark was advertised under the Rules, and therefore, Basra Soap Factory should be deemed to have notice of the application made by the Punjab Soap Factory. It may be so, but notice should also have been sent to the Basra Soap Factory, as such notice was in fact sent to the Punjab Soap Factory, when the Trade Marks Registry proceeded to consider the registration of the mark of the Punjab Soap Factory on an application which was later in time to that of the Basra Soap Factory, and without waiting for decision of the opposition of the Punjab Soap Factory in the proceedings pending on the application of the Basra Soap Factory." Basra Soap Factory case has been followed by another learned Single Judge of this Court in another case reported as Muhammad Said Jehangir v. Miss Sanjida Bano P I. D 1982 Kar. 263 and I find no reason to take any different view. I accordingly hold that the proceedings before the Registrar were not in accordance with the law on account of absence of notice to the appellant who is tae registered proprietor of mark "Yamaha". The order of Registrar is accordingly set aside and the case is remanded back with the direction that a notice be issued to the appellant in accordance with the provisions of Rule 23 of the Trade Marks Rules, 1963, before registration of the trade mark of respondent No.2, and thereafter the Registrar shall proceed in accordance with the law. As the respondent has not appeased 1 will make no order as to costs. H.B.T/5123/K Appeal allowed/Order accordingly.