1990 PLP 497 (CLC)

(i) That the Deputy Registrar, Trade Marks, Karachi was not competent to allow application for amending the trade mark itself at such a late stage. (ii) That it would have been only proper for the Deputy Registrar to have treated the amended application as fresh application as the mark was altogether changed. (iii) That even the amended mark is so similar to the registered trade mark of the appellants that it can always cause confusion and deception. (iv) That a label containing word "Guard" is already a registered trade mark. Since a new word has been used in the trade mark, it was necessary to issue a notice in terms of section 15 treating the amended application as a fresh one. In support of his above contentions, he has relied on cases reported as P L D 1959 Lah. 381; P L D 1956 Kar. 1; P L D 1967 Kar. 492; P L D 1959 Lah. 381; PLD1973SC107;PLD1984SC81;1981CLC1519;66R.P.C.217andPLD 1981 Kar. 150.

6. Mr. Sultan Ahmed Shaikh, Advocate appearing for the respondents in reply to the arguments advanced on behalf of the appellants stated that the appellants themselves since 1949 have been changing their marks for "Lifebuoy" soap using word `Lifebuoy' in different styles. According to him, the Deputy Registrar, Trade Marks, Karachi, was competent to allow the amended application in exercise of his discretionary powers under section 14 (3) of the Trade Marks Act, 1940. The appellants had also not taken any objection to the proposed amendments. In support of his above contentions, he has relied on cases reported as A I R 1958 Bombay 47, P L D 1973 SC 104, 31 RPC 53, 52 RPC 15, 29 RPC 440, A I R 1943 Lah. 196, 84 RPC 155, 1987 C L C 2333 and 59 RPC 355.

7. In order to appreciate the contentions of the parties on the point if the Deputy Registrar, Trade Marks was competent to allow amendment in the circumstances of the present case under section 14 (3) of the Trade Marks Act, 1940 it is necessary to examine the relevant provision made in the said Act. Chapter III of the Trade Marks Act, 1940 makes a detailed provision for procedure ‑ required to be followed for registration of Trade Marks. An application for registration of a mark is filed under section 14 of the Trade Marks Act, 1940 which is reproduced hereinbelow; "

14. Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. (2) In case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat. (3) The Tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as it may think fit." The Registrar on scrutiny of the application is competent to accept itlA absolutely or subject to amendments, modifications, conditions or limitations as provided by subsection (1) of section 14 of the said Act. Word "accept" when used I B as a verb according to the Legal Thesaurus also means "to admit as satisfactory" The word "acceptance" in the above section simply means that the application inl its original or amended or modified form has been admitted for further action in accordance with the following section. Section 15 of the Act is reproduced as under:‑‑ "15.‑‑(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner: Provided that the Registrar may cause an application to be advertised before acceptance if it relates to a trade mark to which clause (e) of subsection (1) of section 6 applies, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do. (2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice in writing in the prescribed manner to the Registrar of opposition to the registration. (3) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and within the prescribed time the applicant shall send to the Registrar, in the prescribed manner, a counter‑statement of the grounds on which he relies for his application, and if he does not do so, he shall be deemed to have abandoned his application. (4) 1f the applicant sends such counter‑statement, the Registrar shall serve in the prescribed manner a copy thereof on the persons giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted. (5) If a person giving notice or an applicant sending a counter‑statement after receipt of a copy of such notice, or an appellant against an order of the Registrar under section 14 or this section, neither resides nor carries on business in Pakistan, the Tribunal may require him to give security for costs of the proceedings before it, and in default of such security being duly given may treat the opposition or application or appeal, as the case may be, as abandoned." Soon after the Registrar has accepted the application in terms of section 14 of the Act he is required by section 15 (1) of the said Act to take further steps to cause the application as accepted and advertise it in a prescribed manner to enable any other person interested to record his opposition to the registration. "Cause" saccording to Balck's Law Dictionary, 5th Edition, also means "something that l proceeds and brings about an effect or result." It will thus be seen that it will be' result of acceptance that is required to be advertised under section 15 (1) of the Trade Marks Act. This is a further step that is taken after the application is accepted. No doubt the Registrar of Trade Marks is conferred a very wide power to allow amendment of application at any time either before or after an application is accepted under section 14 (3) of the Trade Marks Act, 1940. But such a power is available to him before he has taken the decisive step of accepting the application as the result of preliminary enquiry by him and ordered such acceptance to be advertised in the prescribed manner. Once acceptance of the application under section 14 has been advertised in terms of section 15 of the Act the power to allow amendment is no more available to him. He is then required to proceed further in terms of other provisions of section 15.

8. The Deputy Registrar in this case had permitted the respondents to amend their application for registration of a trade mark which in modified form changed the mark applied for in such a manner that almost a new pattern was evolved. The Deputy Registrar, Trade Marks, Karachi at such a late stage was not E competent to permit amendment of the application so as to allow altogether a different mark to be processed further. Under such circumstances he ought to have treated the amended application as a fresh application and proceeded with the case de novo.

9. In view of above, I accept the appeal and set aside the decision of the Deputy Registrar on this ground alone and would not like to deal with other aspects of the case as argued by the learned Advocates for the parties as it will be open to the respondents to file a fresh application for registration of their amended trade mark to be dealt with by the Deputy Registrar in accordance with law. H.B.T./U‑65/K Appeal accepted.