2004 PLP 1916 (PTD)

2. The applicant is a foreign company, organized and existing under the laws of the State of Delaware and has‑ its principal place of business at one Harrision Street, San Francisco, USA. The applicant claims to be the registered owner of trade mark GAP in different countries in respect of clothing, knitwear, footwear, headgear, leather goods, belts, bags of various kinds, toiletries of various kinds, cosmetics, perfumery, personal care product etc. It has about 2500 stores selling products with the trade mark GAP and that its product being of very high quality has acquired worldwide acclaim and reputation. The applicant has applied for registration of trade mark GAP with the Registrar of Trade Marks in Class 3, 18 and

25. The Registrar raised objections under sections 10(1) and 8 (a) of the Trade Marks Act on the basis of respondents 1 and 2 Registration No.97650 in Class

3. The applicant's application for registration was not processed unless respondents 1 and 2 registration is rectified. Consequently the present application was filed.

3. I have heard learned counsel appearing for the applicant. Mr. Abdul Hameed Iqbal has stated that the trade mark GAP was registered by the respondent 1 on 3‑3‑1988 bearing Registration No. 97650 in Class 3 and who subsequently assigned this mark to the respondent

2. He has stated that since the registration of mark GAP of respondents 1 and 2, there is no bona fide use of the said mark by the respondents 1 and 2 and the applicant being the owner of the said mark having worldwide registration and user, the mark registered by respondents 1 and 2 is false, fraudulent and mala fide as it will cause great deal of confusion and deception as the goods will pass of as that of the applicant. The applicant has prayed that the entry of Registration No. 97650, dated 3‑3‑1988 of mark GAP in Class 3 be completely expunged from the Register as it is in contravention of the provisions of section 37(1)(a) and (b), 46(2), 14(1), 8(a) and (c) of the Trade Marks Act, 1940. In support of his submission the learned counsel has relied upon the following case law. (i) Abdul Aziz v. Seven‑Up Co., Karachi and another (PLD 1978 Karachi 10); (ii) The Seven‑Up Company v. Abdul Aziz and another (1983 CLC 522); (iii) Chiswick Products Ltd. v. The Registrar of Trade Marks, Karachi and another (PLD 1975 Karachi 421); (iv) Sindh Match Works (Private) Limited v. The Deputy Registrar of Trade Marks and another (1991 CLC 47); and (v) Culett, Peabody and Company Inc. v. Assistant Registrar of Trade Marks and another (1991 SCMR 921).

4. I have considered the arguments. Applicant has filed with the application printed material to show the trade mark GAP is being used by it in respect of various products. The applicant has also filed photostat copies of Registration Certificates of trade mark GAP as Annexure E‑46 and E‑

98. Section 37(i) of the Trade Marks Act is as follows‑:‑‑ 37 (1) Subject to the provisions of section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either‑‑‑ (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being." The respondent 1 who has registered trade mark GAP Registration No.97650 in Class 3 and assigned it to the respondent 2 have not contested the matter. There is no opposition to the applications allegation that there was no bona fide intention on the part of the applicant for registration that it should be used in relation to the goods and that there has in fact been no bona fide use up to a date one month before the date of rectification application a continuous period of five years or longer has elapsed during which there has` been no bona fide use. Applicant has established that it is a proprietor and user of the trade mark GAP and desires it to be registered with the, respondent

3. Applicant being obstructed and restricted front registration of its mark because of registration of respondents 1 and 2 mark, will make the applicant person aggrieved and its application maintainable. For the above reasons, this application is allowed and entry of Registration No.97650, dated 3‑3‑1988 in Class 3 of the trade Mark GAP is expunged removed from the Register of Trade Marks. M.H./G‑13/K Application allowed.