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‑‑Ss. 6 (1) (d) & 76‑Trade mark, registration of‑Where opposition is entered and application is contested, Registrar. held, would be required to give reasons for grant or, refusal of application for registration ‑Unless reasons were given in decision thereof, High Court while hearing appeal would not know precise reasons for acceptance or refusal of registration‑Party, aggrieved filing appeal would also be prejudiced being not aware of reasons for rejection of his application due to non‑inclusion of such reasons in order of rejection.

‑‑Ss. 14, 15 & 16‑Procedure for registration of trade mark outlined.

Section 14 of Trade Marks Act, 1940 refers to the preliminary stage when the application made by a party for registration of its trade mark is scrutinized in the Trade Marks Registry. At that stage, which is prior to advertisement and opposition, the Registrar of Trade Marks may refuse the application or it may accept the application absolutely or subject to condition. This acceptance under section 14 (1) does not mean that the application for registration of the trade mark is finally allowed and the trade mark is registered. What it means is that according to the Trade Marks Registry there does not appear to be any apparent objection to the application and as such it is accepted for further proceeding towards registration. After such acceptance, the application is advertised in the Trade Marks Journal whereafter opposition can be filed by any other party objecting to the registration of the trade mark. Section 15 of the Trade Marks Act relates to the procedure for opposition to registration and then under section 16 of the Trade Marks Act a final decision is to be taken by the Registrar in respect of the application made by the party for registration of its trade mark i. e. whether trade mark is to be registered as applied for or subject to any direction, or the application is to be finally rejected.

In case of refusal or conditional acceptance of an application for registration at the preliminary stage i. e. where the application has not been advertised, the Registrar is not required to state in writing the grounds of his decision for refusal or conditional acceptance of the application and is only obliged to give the grounds of his decision in writing in such a case if a request is made by the concerned party on an application made on Form TM‑15. Section 14 does not apply to a case where an application has successfully passed the initial stage and has been accepted for further processing under sections 15 and 16 of the Trade Marks Act. Where an application has been accepted for registration under section 14 (1) of the Trade Marks Act, 1940, and then it is advertised and opposition entered into by any third party, the decision then given by the Registrar is not converted by section 14 of the Trade Marks Act. In such a case the Registrar of Trade Marks is required to give his reasoned decision even without any request from any party. An application on Form TM‑15 for reasons is made only where the application is rejected at the preliminary stage under section 14.

---R. 24‑Scope.

‑‑ S. 76‑Limitation Act (IX of 1908),Ss. 12 & 29 (2)‑Time requisite for obtaining copy of order‑Exclusion of‑Time spent by aggrieved person in obtaining copy of order from Registrar of Trade Marks, held, was to be excluded from period prescribed from filing appeal.

Abu Backer v. Secretary for State for India I L R 34 Mad. 505 distinguished.

S. 76‑Appellate jurisdiction of High Court‑Order of Registrar, Trade Marks not containing reasons for rejection of application for grant of trade mark, was set aside by High Court in appellate jurisdiction with direction to decide application afresh in accordance with law.

Khawaja Mansoor for Appellant.

A. A. Zari for Respondent.

Dates of hearing . 11th, 12th, 13th and 14th May, 1986.

‑This appeal has been filed by the appellant Company under section 76 of the Trade Marks Act, 1940. By Application No. 54126 dated 22‑8‑1970, the appellants applied to the Trade Marks Registry Karachi for registration of "MARK V11" as a trade mark in clause 34: The said application of the appellant was accepted for the purposes of registration and it was advertised in the Trade Marks Journal of March, 1979, respondent No. 1 company, under Opposition No. 33/79 dated 24‑10‑1979, opposed the application of the appellant The appellant raised various objections to the opposition of respondent No. 1. By letter dated 23‑2‑1981 written on behalf of the Registrar of Trade Marks, the appellant's agents were informed as follows :‑

"With reference to the hearing held on 29‑1‑1981 in the above matter, I am directed to inform you that the Registrar of Trade Marks, Karachi by his order, dated 19‑2‑1981 has allowed the above opposi tion proceedings No. 33/79 with no order as to costs. Application No. 54126 in clause 34 stands refused."

On receipt of the said intimation from the Registrar of Trade Marks, the appellant applied on form TM‑46 on 26‑2‑1981 for a certified copy of the decision, dated i9‑2‑1981 of the Registrar of Trade Marks. Certified copy was, however, not issued to the appellant and in the circumstances in September, 1982 the appellant reminded the Registrar of Trade Marks about the application made in February, 1981 for a certified copy and in reply the following letter, dated 9‑9‑1982 was received by the appellant from the Registrar of Trade Marks :‑

"With reference to your request on Form TM‑46 dated 26‑2‑1981 and its subsequent reminder dated 4‑9‑1982 in the above matter, I am directed by the Registrar to inform you that as this opposition has some common grounds with another opposition Case No. 125 of 1980 which is about to mature, the order will be passed in. the above opposition case after hearing the connected Case No. 125 of 1980."

Then a letter, dated 29‑1‑1986 was addressed by the Registrar of Trade Marks to the appellant and the same is reproduced here :‑

"With reference to your request on Form TM‑46 dated 26‑2‑1981 in the above matter I am directed by the Registrar of Trade Marks to forward herewith a certified copy of the then Registrar (Mr. Riaz A. Malik's) short order, dated 19‑2‑1981.

I am further directed to inform you that detailed order cannot be issued as communicated in this office letter dated 9‑9‑1982 as the Tribunal who was supposed to write detail decision has been transferred to Ministry of Commerce, Islamabad."

Certified copy of the order, dated 19‑2‑1981 of the Registrar of Trade Marks which was sent to the appellant alongwith the letter dated 29‑1‑1986 of the Registrar is reproduced here :‑. .

"I have heard the respective agents and have 'also gone through the pleadings and the evidence.

Opposition No. 33/79 succeeds and the Application No. 54126 in clause 34 stands refused. Parties to bear their own cost. Inform."

Being aggrieved, the appellant has filed the present appeal under section 76 of the Trade Marks Act, 1940. I have heard at length the arguments of Mr. Khawaja Mansoor, learned counsel for the appellant,, and Mr. A. A. Zari who has appeared on behalf of the respondent o. 1. Respondent No. 2, Registrar of Trade Marks has remained absent.

2. In my view this is a fit case for setting aside the short order, dated 19‑2‑1981 of the Registrar, of Trade Marks and remanding the case to the r Registrar for giving fresh decision with reasons after hearing the parties. As observed earlier, after, hearing .the learned counsel for the parties in January, 1981, the appellant was informed in February, 1981 that the opposition entered into by respondent No. 1 had succeeded and the applica tion of the appellant was refused but in spite of the application made for certified copy of the decision, it was not made available to the appellant. On the contrary, appellant was informed that another Opposition Case No. 125 of 1980 was about to mature and after hearing that Opposition Case No. 125 of 1980, order would be passed in the case of the appellant. What was meant by the Registrar was that he would give reasons for the decision after he had heard the connected opposition Case No. 125 of 1980, but certi fied copy of the short order was also not supplied to the appellant. Then the Registrar who had heard this case, namely, Mr. Riaz A. Malik, was. transferred to the Ministry of Commerce and as such he could not write detailed order giving reasons for refusal of the appellant's application and instead certified copy of the short order, dated 19‑2‑1981 was supplied to the appellants under cover letter dated 29‑1‑1986 of the Registrar of Trade Marks.

This was an opposition case. An application for registration of a trade mark had been filed by a party and another party was opposing it. In the Opposition entered into by respondent No. t various objections were taken. In reply to the said Opposition, a detailed counter‑statement in form TM‑6 was filed by the appellant. Arguments of the agents of the parties were heard by the Registrar. In cases where Opposition is entered and application is contested the Registrar of Trade Marks is required to give reasons for grant or refusal of the application for registration of the trade mark so that the parties are made aware of the grounds on which the application has been accepted or refused and the aggrieved party is then able to challenge such order before the High Court in appeal under section 76 of the Trade Marks Act, 1940. Unless reasons are given in the decision of the Registrar, High Court, while hearing the appeal, would not know the precise reasons why the application for registration has been accepted or refused. The party aggrieved who files an appeal will also be prejudiced inasmuch as he would not be aware of the reasons for which the case had been decided against him. In such a case, if an appeal is filed, perhaps invariably the short order would be set aside and the case remanded to the Registrar of Trade Marks with a direction to give reasons for his decision and in case in the meantime the Registrar who had passed the short order is transferred or stands retired, as is the position in the instant case, the matter will be remanded for fresh decision to the new Registrar. On account of the Registrar not having passed a reasoned order, not only the parties have been prejudiced but great deal of time and expense has beer: spent for no purpose inasmuch as the case has to b remanded. The Registrar of Trade Marks was called to this Court pursuant to the order dated 15‑4‑1986 passed in this appeal. Mr. M. Jalilullah, the present Registrar of Trade Marks, appeared in this Court on 4‑5‑1986. He was apprised of the complications and difficulties arising out of passing of the short orders and not giving reasons for the short order for years and also of the great prejudice such practice causes to the parties. The Registrar was directed that he should see to it that the Tribunals in the Trade Marks Registry should, in contested cases, pass reasoned orders as far as it is possible and even if short orders are passed, reasons are made available by the Tribunal within a short period which period should not in any case exceed a month or two.

3. Mr. A. A. Zari, learned counsel for respondent No. 1, however, raised two preliminary objections. It was first contended by him that in an opposition case it is not necessary under the law for the Tribunal to give reasons for its decision unless a request for supply of reasons is made by the concerned party through an application in Form TM‑15. Mr. A. A. Zari referred to the provisions of section 14 of the Trade Marks Act, 1940, rules 24 and 25 and specimen of Form TM‑15 in Second Schedule of the Revised Trade Marks Rules, 1963.

According to Mr. A. A. Zari, the aforesaid provisions of Trade Marks Act and the Rules and the specimen of Form TM‑15 clearly show that the Registrar of Trade Marks or other Tribunal under the Trade Marks Act is not required to give reasons for his decision while refusing an application for registration of a trade mark and, he is only required to give reasons if after he has passed the order refusing the application for registration of trade mark he is required to do so through a request made by the concerned party on Form TM‑15.

On a perusal of section 14 of the Trade Marks Act it follows that section 14 refers to the preliminary stage when the application made by a party for registration of its trade mark is scrutinized in the Trade Marks Registry. At that stage, which is prior to advertisement and opposition, the Registrar of Trade Marks may refuse the application or it may accept the application absolutely or subject to condition. This acceptance under section 14 (1) does not mean that the application for registration of the trade mark is finally allowed and the trade mark is registered. What it means is that according to the Trade Marks Registry there does not appear C to be any apparent objection to the application and as such it is accepted for further proceeding towards registration. After such acceptance, the application is advertised in the Trade Marks Journal whereafter opposition can be filed by any other party objecting to the registration of the trade mark. Section 15 of the Trade Marks Act relates to the procedure for opposition to registration and then under section 16 of the Trade Marks Act a final decision is to be taken by the Registrar in respect of the application made by the party for registration of its trade mark i. e. whether trade mark is to be registered as applied for or subject to any direction, 'or the application is to be finally rejected.

In my view, therefore, in case of refusal or conditional acceptance of an application for registration at the preliminary stage i e. where the, application has nut been advertised, the Registrar is not required to state in writing the grounds of his decision for refusal or conditional acceptance of the application and is only obliged to give the grounds of his decision in writing in such a case if a request is made by the concerned party on an application made on Form TM‑15. Section 14 does not apply to a case where an application has successfully passed the initial stage and has been accepted for further processing under sections 15 and 16 of the Trade Marks Act. Where an application has been accepted for registration under section 14 (1) of the Trade Marks Act, 1940, happened in the case of the present appellant, and then it is advertised and opposition entered into by any third party, the decision then given by the Registrar is not covered by of the Trade Marks Act. In such a case the Registrar of section 14 Trade Marks is required to give his reasoned decision even without any request from any party. An application on Form TM‑15 for reasons is made only where the application is rejected at the preliminary stage under section 14, which is not the case here.

Moreover in the instant case the appellant bad applied on Form TM‑46 for a copy of the decision and although such application on Form TM‑46 did not specify that copy of reasoned decision was required, as this was a case where opposition was entered into and the application of the appellant was contested, the Registrar was required to give reasons for his decision and the application dated 26‑2‑1981 on Form TM‑46 by the appellant required the Registrar to furnish the appellant with a certified copy of the reasoned decision. As observed earlier this was a contested case where opposition had been entered into by respondent No. 1 after application of the appellant had been accepted under section 14 and then advertised in the Trade Marks Journal. The appellant was, therefore, not required to make an application for a certified copy of the decision on Form TM‑15, which form applies only on those cases which are covered by section 14 (2) i. e. at the preliminary stage and not after the application is advertised and opposition is entered.

Mr. A. A. Zari had also referred to rules 24 and 25 of the Revised Trade Marks Rules, 1963. Rule 25 refers to decision of Registrar under 24 and provides that in case of such decision an application is to be made on Form TM‑15 to tire Registrar requiring him to state in writing the grounds and the material used by him in arriving at his decision. But a perusal of rule 14 shows that this rule refers to decision taken by the Registrar at the preliminary stage i. e. before the application is advertised and opposition is entered into.

4. The other preliminary objection raised by Mr. A. A. Zari was that the present appeal was barred by time. According to the learned counsel, the appellant is not entitled to exclude the tithe for obtaining certified copy of the impugned order. Learned counsel referred to rule 84 of Trade Marks Rules, 1963 which reads as follows :‑

"84. Time for appeal.‑An appeal to High Court from any decision of the Registrar under the Act or this rule shall be made within two months from the date of such decision."

It was pointed out by the learned counsel that rule 84, as it exists today, was substituted in 1977 for previous rule 84 which was as follows :‑

"84. Time f or appeal.--- An appeal to High Court from any decision of the Registrar under the Act or this rule shall be made within four months from the date of such decision, provided that in calculating the said period of 4 months, the time, if any, occupied in granting a copy in writing of the decision appealed against shall be excluded."

Mr. A. A. Zari argued that under the provisions of rule 84, as it existed 1977, time occupied in obtaining a copy of the decision appealed prior to was liable to be excluded but in 1977 the said rule was substituted by the present rule 84 under which the provision about exclusion of time for obtaining copy has been deleted and as such time in obtaining copy is now not to be concluded for purposes of limitation. According to the learned counsel the impugned order was passed on 19‑2‑1981 whereas the present appeal has been filed on 25‑3‑1986 and as such it is hopelessly barred by time.

I find no substance in the contention of learned counsel for the respondent No. 1. As observed earlier, this is a case which is not covered by section 14 of the Trade Marks Act, 1940. This is a case whereafter the application filed by the appellant had been accepted, it had been advertised and then appellant had been entered into by the respondent No. 1. In such a case the Registrar was required to give a reasoned order even without a request made by any party for a reasoned order. Without certified copy of the order, the appellant could not be expected to file proper appeal as he did not know the reasons for which his application was finally rejected by the Registrar. Then reference may be made to section 29 (2) of Limitation Act. 1908 which reads as follows :‑

"29 (2). Where any special or local law prescribes for any suit, appeal or application a period of limitation different from the period prescribed therefore by the First Schedule, the provisions of section 3 shall apply, as if such period were prescribed therefor in that Schedule, and for the purpose of determining any period of limita tion prescribed for any suit, appeal or application by any special or local law.

(a) the provisions contained in section 1, sections 9 to 18, and section 22 shall apply only in so far as, and to the extent to which, they are not expressly excluded by such special or local law ; and

(b) the remaining provisions of this Act shall not apply."

It will be seen that section 12 of the Limitation Act is included in the sections of the Limitation Act specifically referred to in clause (a) o section 29 (2) of the Limitation Act, and under section 12 the time requisite for obtaining certified copy of the order/judgment appealed against is to be excluded in computing the period of limitation prescribed for an appeal. Section 29 (2) of the Limitation Act applies to appeals under section 76 of G the Trade Marks Act, 1940 and as such the time taken by the appellant in obtaining certified copy of the impugned order from the Registrar of Trade Marks is to be excluded from the period of 2 months prescribed by rule 84 of the Revised Trade Marks Rules, 1963 for filing appeal to the High Court.

Mr. A. A. Zari had also cited a decision of a Full Bench of the Madras High Court in the case of Abu Backer v. Secretary for State for India (I L R 34 Mad 505). That decision is clearly distinguishable and the principle laid down in that decision of the Madras High Court does not help the appellant in the argument that section 12 of the Limitation Act is not applicable and the appellant is not entitled to exclusion of the time occupied in obtaining the certified copy of the impugned order.

Mr. A. A. Zari very fairly submitted that in case time occupied in obtaining a certified copy of the impugned order is excluded, the present appeal would be in time and not barred by limitation. I have already held that the appellant was entitled to exclusion of the time taken for obtaining H a certified copy of the impugned order. After this time is excluded, it has been found that the appeal had been filed in time. The objection of Mr. A. A. Zari, learned counsel for respondent No. I is overruled.

As a result, Miscellaneous Appeal No. 19 of 1986 is allowed, the order, dated 19th February, 1981 of the Registrar of Trade Marks, Karachi, is set aside and the matter is remanded to the Registrar of Trade Mark to decide afresh the Application No. 54126 filed by the appellant for registration of the mark in the clause 34 and Opposition No. 33 of 1979] entered by respondent No. I against the said application, after hearing the /parties. The Registrar will, of course, give reasons for his decision. There will be no order as to costs.

A. A. Appeal allowed.

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