Opposition proceedings

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.

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.