Registration of trade mark

2023 CLD 338 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 52 & 67Civil Procedure Code (V of 1908), O. XXXIX, Rr. 1 & 2Registration of trade markInterim injunction, refusal ofRevocation proceedings, pendency ofPlaintiffs claimed that trade mark "HAMZA" was wrongly registered in favour of defendant as it was not registerableValidityTrademark of defendant was registered against which revocation proceedings were initiated and were sub judicePlaintiffs did not contest proceedings before Registrar when trademark in question was in process of registration

Certificate of registration appended with counter affidavit of defendant had a disclaimer that registration of trademark would give no right to exclusive use of word "HAMZA" except substantially as shown on the label

With counter affidavit of defendant, it was also attached copyright registration in artistic word entitled "HAMZA"

Basic ingredients for grant of an injunctive relief were not present in the case of plaintiffs as it was defendant who was the holder of registered trademark and not the plaintiffs

Application was dismissed in circumstances.

2022 CLD 176 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

Ss .8(a), 10(1)(2), 21 & 114Registration of trade markDeception and confusionPrincipleObjection to registration of trade mark

Appellant claimed to be owner of registered trade mark "Soft Touch" and filed his objection to registration of trade mark "Sweet Touch" by respondent

Authorities dismissed the objection and application for registration of trade mark filed by respondent was allowed

Validity

Where two marks were not identical, the crucial point requiring consideration was that it should so nearly resemble that it would likely to deceive or cause confusion in course of trade

Unwary or incautious or careless or unguarded purchaser was likely to be misled or deceived into purchasing goods of person keeping in view the vast difference in literary ratio and condition of like in Pakistan as compared to developed countries

Appellant had been using trade mark "Soft Touch" since long which was not only distinctive but was continuously in use and respondent realizing such fact had copied it to "Sweet Touch" in order to deceive customers

High Court set aside the order passed by authorities

Appeal was allowed, in circumstances.

2020 CLD 1404 KARACHI-HIGH-COURT-SINDH Judicial Precedent

PreambleRegistration of trade markObject, purpose and scope

Object and purpose behind trade mark law is to ensure that a person can benefit from his business reputation which he has developed with hard work and dedication over the years.

2020 CLD 1404 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 6, 10 & 76Trade Marks Ordinance, (XIX of 2001), Ss. 14, 17, 19 & 114Registration of trade markOppositionConcurrent and honest useDispute was with regard to registration of trade mark "Gallup"

Application filed by appellant was dismissed by Registrar of Trade Marks (Registrar) and opposition filed by respondent was accepted

Validity

Appellant and its associated concerns were the only user of trademark "Gallup" in Pakistan since 1981, when they were accepted as the Pakistan member of Gallup International Association and had been extensively and exclusively using the same in its publications and public opinion services in Pakistan

Such use of trademark in Pakistan was established from documents placed on record

Registration of trademark under S. 10(2) of Trade Marks Act, 1940, allowed registration of a trade mark to an honest concurrent user and in other special circumstances

Unique nature of the matter and appellant's exclusive and extensive use of trade mark "Gallup" in Pakistan over of a period of nearly four decades entitled appellant to registration of trade mark in question in its name

Appellant proved concurrent and honest use of their trade mark "Gallup" for quite a long time, which was not satisfactorily rebutted by respondent

Registrar erred in refusing registration of appellant's trade mark and accepting opposition of respondent and allowing application filed by respondent

High Court in exercise of appellate jurisdiction directed to register trade mark "Gallup" in the name of appellant and set aside the order passed by the Registrar

Appeal was allowed in circumstances.

2015 CLD 1400 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

Ss. 17(6), 28 27, 33 & 7Registration of trade markOpposition proceedingsProcedure before the RegistrarExercise of jurisdiction by Registrar Trade MarksDetermination of ownership of trade mark

Jurisdiction of Registrar to stay opposition proceedings and give direction to parties to approach Civil Court for determination of ownership of trade mark

Scope

Appellant had filed opposition to application for registration of trade mark filed by respondent, on the ground that the said trade mark was owned by the appellant

Registrar vide impugned order stayed opposition proceedings and directed parties to get the question of ownership of trade mark determined by a civil court

Contention of appellant inter alia was that in the impugned order, the Registrar failed to exercise jurisdiction vested in him and that the question of ownership of trade mark was within the domain of the jurisdiction of the Registrar

Held, that the Trade Marks Ordinance, 2001 provided a comprehensive procedure and remedies regarding grant or refusal of a trade mark to a party applying for it and such powers were vested with the Registrar of Trade Marks

Respondent, in the present case, had applied for grant of the trade mark to which the appellant objected by filing an opposition claiming that the said trade mark was already owned by it

Both the parties submitted their affidavits and evidence available with them before the Registrar however, the Registrar did not decide the matter himself and sent the parties to the civil court for determination of their ownership

Power to grant or refuse the trade mark applied for by the respondent and controverted by the appellant was vested with the Registrar, therefore, the same should have been exercised rather than directing the parties to approach the civil court for determination of the ownership of the trade mark

Registrar could advise the parties to approach the civil court only if substantial rights of any or both the parties were involved which could not be determined by preponderance of evidence produced by the parties within the scope of jurisdiction conferred on the Registrar

In the present case, no such substantial right appeared to be involved and only question of grant or refusal of trade mark was before the Registrar, which he could decide himself in accordance with law

High Court observed that Registrar failed to exercise the jurisdiction vested in him in law and had unlawfully sent the parties to the civil court for determination of their ownership

Impugned order was set aside and Registrar was directed to decide the question of ownership of trade mark on its own

Appeal was allowed, accordingly.

2015 CLD 528 KARACHI-HIGH-COURT-SINDH Judicial Precedent

S. 39Registration of trade markEffect

Proprietor of registered trade mark has exclusive right to use the same in relation to goods specified therein and has got the right to restrain every and all persons from using the registered trade mark.

2013 CLD 1862 LAHORE-HIGH-COURT-LAHORE Judicial Precedent

Ss. 111(2) & 29Trade Marks Rules, 2004, Rr. 30(6) & 30(7)General Clauses Act (X of 1897) S. 24-ARegistration of trade markOpposition proceedingsProcedure before Registrar of Trade MarksNotice/opportunity of being heard to party adversely affected by order of the RegistrarNon-filing of evidence in opposition proceedings within statutory period of two monthsExtension in timeScope

Appellant filed oppositions against trade marks that the respondents had sought to register, and said oppositions were disallowed by the Registrar on ground that evidence under R.30(6) of Trade Marks Rules, 2004 was not filed within the stipulated period of two months by the appellants

Validity

Under R.30(6) of the Trade Marks Rules, 2004 if opposing party failed to file evidence within two months, such party's opposition could be abandoned, however by virtue of R.30(7) of the said Rules, the Registrar was vested with the power to extend such statutory period of two months for filing of evidence

In the present case, Registrar while knocking out the appellants on basis of R.30(6) of the Trade Marks Rules, 2004 had neither mentioned reasons for not allowing the extension in time nor had detailed the causes for penal action taken against the appellant

Under S.24-A of the General Clause Act, 1997 every authority was bound to justify its decisions by giving valid reasoning for the same

Impugned order was bereft of any reasoning could not be considered a speaking one, therefore the same could not be allowed to hold field

Even otherwise under Ss.29(7) & 29(8) of the Trade Marks Ordinance, 2001 the Registrar was bound to give notice of hearing and then to decide the matter of registration of trade marks

No notice was issued to the appellants in the present case, which the Registrar was bound to issue under provisions of S.111 of the Trade Marks Ordinance, 2001

High Court set aside impugned order and remitted the matter back to the Registrar with the direction that the appellant be provided a reasonable opportunity to tender its evidence

Appeal was allowed, accordingly.

2011 CLD 1082 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss.15 & 76Registration of trade markNotice of oppositionLimitation

Contention of appellant was that after the entire opposition was dismissed as being time barred, the Registrar could not order respondent's application to proceed to registration with disclaimer of E4

Validity

Authorities were not justified in ordering respondent's application to proceed to registration with disclaimer of E4 as no such disclaimer was ordered by Deputy Registrar, against whose order the opponent had filed opposition

Order passed by Registrar could not be sustained and, therefore, his order was set aside to the extent of disclaimer of E4 and order of Deputy Registrar on the point was restored

Appeal was disposed of accordingly.