1991 PLP 1414 (MLD)

S. 8(a)

Appellant's registration was refused by the Registrar in view of a conflicting and pending application which was at pre-advertisement stage

Both trade marks on the date of said order being at the same level of proceeding ought to have been dealt with in close proximity, as to time, with each other keeping in full view the incidental ingredients of either

Registrar possibly could have decided not to accept even the allegedly similar mark for advertisement in which event, the element of deception or confusion would have disappeared

High Court did not consider it proper to decide question of deception or confusion finally to avoid causing prejudice to the third party not present before the Court

Order of Registrar was set aside and case was remanded for adjudication according to law. Muhammad Farukh Irfan for Appellant. Bashir Ahmed Shaikh, Deputy Registrar for Respondent. Date of hearing: 3rd April, 1991. I have heard both the parties in this case: The mark involved in the appeal is "FIRST RESPONSE". The appellants applied for its registration in class 1 on 14-12-1986. Show-cause notice was issued to them on 16-7-1987, raising an objection that such mark, in view of .a prior and pending application for registration of a conflicting mark namely, `RESPONSER' was likely to cause confusion or deception, as contemplated under section 8(a) of the Trade Marks Act. At the ensuing hearing appellants' mark was refused by the respondent

Registrar at the pre-advertisement stage on the ground that the mark not only offended section 8(a) of the Trade Marks Act but also contravened section 6(1)(d) of the same Act being indicative, directly, of the character or quality of the goods. Before me Mr. Farukh Irfan has rightly contended that in so far as the decision on the question touching section 6(1)(d) is concerned such is not based on any formal objection notified to the appellants and thus violates the fundamentals in the principles of natural justice. To this extent the impugned order is, bad and the position is conceded to by the respondent's representative, who is present. As regards the question of confusion or deception, it is an admitted position on the part of the respondent that the conflicting mark which is based on a prior application namely, `RESPONSER' is still at the same stage at which it was on the date of the impugned order, that is to say it has not proceeded to advertisement as yet. Clearly enough the two marks, which on the date of the impugned order were at the same level of proceedings ought to have been dealt with in close proximity, as to time, with each other and keeping in full view the incidental ingredients of either. In such a situation it could not be ruled out that the respondent may have decided not to accept even the allegedly similar mark for advertisement in which event, at least, the element of deception or confusion would have disappeared. Since, now the ease shall have to go back on remand before the respondent on the above-quoted question touching section 6(1)(d), it does not seem proper to decide upon the question of deception or confusion finally, moreso because any finding on this question whether of acceptance or rejection is likely to prejudice another person who is already in the field and who, for obvious reasons, cannot be represented here. However, upon remand all the foregoing aspects shall be addressed to by the respondent. In view of the foregoing, the impugned order is set aside and the case is remanded to the respondent for adjudication according to law. The above order, however, has been consented to by the respondent's representative, while no such consent has been extended from the side of the appellant. The Registrar shall decide the matters in dispute within six months provided always that this will not include the period of time that may come to intervene on account of raising of any lawful objections by the Registry. Z.S./T-109/K ????????????????????????????????????????????????????????????????????????? Case remanded.