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‑‑ S. 8‑Registration of trade mark‑Considerations and require ments for registration‑While considering registration of a trade mark, Authority, held, has not to restrict itself to similarity with a registered trade mark, but could take into account, registered trade mark in respect of same goods, or description of goods, unregistered trade marks which have become distinctive by user in respect of same or similar description of goods, or refused trade marks.

(b) Trade Marks Act (V of 1940)‑---

---‑‑ S. 10‑Objections to registration of trade mark‑‑Competency of‑Objection to registration of a trade mark based on registered marks, held, could not be entertained where those marks were removed from register of trade marks for non‑payment of renewal fee‑Removed trade marks could not be treated registered trade marks‑Person taking objection to registration of trade marks on basis of prior registration thereof, could not oppose registration where he was neither proprietor of such registered marks.

(c) Trade Marks Act (V of 1940)‑

‑‑--S. 10(3)‑Trade marks, identical or closely resembling to each other‑Claims made by different persons for registration there of Procedure‑Jurisdiction of civil Courts when invoked.

Under section 10(3) of the Trade Marks Act, 1940 if separate applica tions have been made by different persons in respect of the trade marks which are identical and closely resemble to each other in respect of the same goods or description of goods the Registrar is authorised to refuse to register any of them and leave the parties to get their rights determined by a civil Court. . Therefore, the dispute should be between different persons in respect of the trade marks which are identical or similar and should relate to the same goods or description of goods. The Trade Marks Act provides a self‑contained machinery and procedure for registration of trade marks and comprehensive remedies have been provided under the Act itself. Even in cases where the parties are different and dispute relates to registration of trade marks which are similar or closely resemble each other in respect of the same or similar description of goods, the Registrar can grant or refuse to register the trade mark. Section 10(3) should be invoked only in cases of special circumstances and exceptional nature. The parties should be left for deter mination of their rights by the civil Court in cases where substantial right of the parties are involved and on the preponderance of evidence produced by both the parties it is not possible to determine the same within the scope of jurisdiction conferred on the Registrar. The disputes and rights between the parties which fall within the exclusive domain of the Registrar must be decided by him. However, if parties raise disputes, claims and rights which cannot be decided without proper evidence and investigation section 10(3) may be invoked. The questions relating to similarity of marks confusion, deception, honest and concurrent user do arise in the normal course during the registration proceedings and they should be decided by the Registrar. If such disputes are left to be determined by the civil Court it will defeat the very object of the Trade Marks Act. The proper civil Court in such cases would be the Court of civil jurisdiction. It would not be proper to hold that the appellate Court will be the civil Court competent to decide the dispute as contemplated by section 10(3), for the reason that the appellate Court would look into the matter on the basis of evidence which has been produced before the Registrar which are usually in form of affidavit and may be insufficient. Where complicated questions regarding substantive rights are raised, it is proper that the parties may produce evidence and allow the witnesses to be cross‑examined by the adversary. If the appellate Court embarks upon inquiry merely on the evidence in affidavit produced before the Registrar the parties will not have any opportunity to cross‑examine the witnesses. It may be argued that the appellate Court has the authority to record evidence and call the witnesses. It is not possible for the appellate Court to over‑load itself with the duty to record cumbersome evidence. Such cases involving com plicated questions relating to substantive rights should be tried by the civil Court competent to try such matters.

(d) Trade Marks Act (V of 1940)‑--

‑‑ S. 76‑Appellate jurisdiction of High Court, exercise of‑Where claimant failed to establish on basis of evidence of using requisite trade mark for a long period so as to become distinctive and objection to such registration was also not substantial, evidence thereon being scrappy and vague, application for registration and opposition filed against such registration were liable to dismissal‑Appeal being devoid of merit was dismissed.

Ashraf Ayub for Appellant.

Akhter Husain for Respondent.

Date of hearing : 20th October, 1986.

The applicant filed an application for registration of trade mark consisting of the words "Qadri Bahar Tel" with monogram inside letter Q in respect of hair oil in class 3 which was registered at serial No. 60052 dated 3‑1‑1974. On scrutiny a show‑cause notice under section 8(a) of the Trade Marks Act was issued on 4‑10‑1974 and a pending application bearing No. 60500 was cited as conflicting with the appellants trade mark. Again on 11‑1‑1975 another show‑cause notice was issued under section 10(1) of the Trade Marks Act and the appellant's trade mark identical to two registered Trade Marks No. 44056 and 44057 of Qadri Sehat Chemical Works, Rangpur, (East Pakistan) were cited. The appellant filed her reply to the show‑cause notice stating that the two registered Trade Marks No. 44056 and 44057 have been removed from the register for non- renewal and the pending mark of the respondent has been filed after the adoption and user of the appellant's trade mark under application No. 60052 which is in use since 15 73. During the pendency of the appellant's applica tion for registration, the respondent application No. 60050 was treated as abondoned by the Registrar of the Trade Marks and the appellant was called upon to file evidence of the user. In compliance with the order the appellant filed affidavits cash memo book, hand bill and newspaper. The appellant's trade mark was advertised in Trade Marks Journal dated 1‑12‑1977. The respondent filed opposition to the appellant's Trade Mark No. 60052 alleging that Trade Mark No. 44056 and 44057 which are similar and identical to the trade mark of the appellant in respect of the same goods were owned by the aunty of the respondent who was carrying on business in East Pakistan and after her death he has inherited the said trade mark but the same have been removed for non‑payment of renewal fee. It was also alleged that the respondent is the manufacturer of Hair Oil and adopted two trade marks consisting of words Qadri Roghan letters MS' in concentric circle on label under No. 60500 which has been treated abandoned for non‑compliance of office requirements. However, the respondent has filed another application No. 664% on 29‑4‑1978 for the same trade mark and another mark and words Qadri Amla Bahar Roghan. The respondent started business with the appellant as a partner but the appellant discontinued it and started using trade mark resembling Trade Mark No. 44056 and 44057. The respondent has continuously been using the marks from 1973 and by such user trade marks Qadri Roghan and Qadri Amla Bahar Roghan have acquired reputation in the market. The respondent filed affidavit of evidence and the appellant filed counter statement. It was alleged by the appellant that the respondent is not the prior user of the mark Qadri in Pakistan and further that the trade marks registered in East Pakistan were not transferred to Pakistan after the creation of Bengladesh and that the respondent had no right to inherit the same. Allegations regarding partnership were also denied. By the impugned order dated 5‑7‑1979 the learned Assistant Registrar of Trade Marks to whom the matter had been assigned for determination consider ing the evidence of the parties brought on record held that the respondent has failed to establish his right and further that the user by the appellant as alleged was not established. However, it was observed that the approp riate order for registration or non‑registration can be passed only after the rights of the parties have been determined by the competent Court under section 10(3) of the Trade Marks Act.

There is no dispute between the parties that the trade marks claimed by both the parties are to respect of the same goods. It is also not disputed that the trade marks sought to be registered by both the parties if not identical are similar to each other and are likely to cause confusion.

The facts as stated above attract section 8 of the Trade Marks Act which prohibits registration of trade mark which is identical or nearly resembles to another trade mark owned by another proprietor and which by reason of such similarity is likely to deceive or cause confusion. While considering a case under section 8 if the Authority has not to restrict itself to similarity with a registered trade mark, it can take into account, registered trade mark in respect of the same goods, or description of goods, unregistered trade marks which have become distinctive by user in respect of same or similar description of goods, or refused trade marks.