Find a Lawyer

Miscellaneous Appeal No. 62 of 1984, decided on 5th March, 1987.

---S.16(1)--Registration of trade mark--Application for registration of trade mark accepted and opposition dismissed--Registrar, held, had no option under S.16 but to register the trade mark--Registrar, could, however, refuse to register trade mark if application had been accepted erroneously or the Federal Government directed otherwise.

---Ss.6(1)(d) & 16--Refusal of registration of trade mark on ground of being descriptive--Word "POLY PAK" read as a whole, held, could not be regarded as descriptive, although words "POLY" and "PAK" were not separately registrable--Appeal accepted and case remanded to Registrar of Trade Marks for taking further action in accordance with law.

Glaxo Laboratories Ltd.'s case P L D 1985 Kar. 630 ref.

Syed Shoukat Ali for Appellant.

Sultan Ahmad Sheikh for Respondent.

Date of hearing: 23rd February, 1987.

The appellant had applied for registration of their trade mark "POLY PAK" by application No.75130 in Class 23, dated 27-9-1981. The respondent No.l filed opposition No.283 of 1982. The Registrar, trade marks was not impressed with the grounds of opposition with the result that the same was dismissed by order, dated 10-1-1984.

However, by the same order the Registrar also dismissed the appellant's application (No.7510) although the same had been admitted and advertised in the trade marks journal.

The reasons which found favour with the Registrar for dismissing the appellant's application mainly were that the trade mark sought to be registered consisted of two parts namely "POLY" and "PAK" and while "PAK" had been disclaimed by the appellants at the time of the advertisement of the trade mark, the second part, namely "POLY" had a definite meaning as the same meant "multiple". Besides that the word "POLY" was found to be in common use by they manufacturers of yarn and thread. Consequently the Registrar found it to be unfair to give monopoly rights to one party in respect of the trade mark and the application for registration of the same was dismissed.

I have heard Mr. Syed Shaukat Ali, learned counsel for the appellant and Mr. Sultan Ahmad Shaikh learned counsel for the Respondent No.1.

Mr. Syed Shaukat Ali has assailed the order on two grounds, his first contention was that after dismissing the opposition filed by the Respondent No.l, the Registrar should have proceeded under section 16(1) of the Trade Marks Act, 1940 which provides that:

"16: -(1) When an application for registration of a trade mark has been accepted and either has not been opposed and the time for notice of opposition has expired, or having been opposed, has been decided in favour of the applicant, the Registrar shall unless the application has been accepted in error or unless the Federal Government otherwise directs, register the trade mark, and the trade mark, when registered shall be registered of the date of the making of the said application, and that date shall, subject to any directions made under section 83 applicable to such trade mark be deemed for the purpose of this Act to be the date of registration."

The second contention of the counsel was that after the Registrar came to the conclusion that the mark was registrable subject to the disclaimer, of the word "PAK", he had no justification to refuse to register the trade mark as a whole. The contention of Mr. Sultan Ahmad Shaikh on the other hand was that after holding that the word "POLY" was descriptive the Registrar had little option but to dismiss the appellants' application as "PAK" had already been disclaimed by the appellants themselves.

Turning to the first argument of Mr. Syed Shaukat Ali, the same does not appear to be without substance. Section 16(1) of the trade marks Act clearly indicates that when application for registration of the trade mark has been accepted by the Registrar and if the same has either not been opposed or the time for notice of opposition has expired or having been opposed, it has been decided in favour of the applicant then the Registrar is bound to register the trade mark. The Registrar can, however, refuse to register the trade mark if the application has been accepted erroneously or the Federal Government has otherwise directed. Admittedly, the application filed by the appellants was not covered by any of such exceptions. Consequently, once the application was accepted by the Registrar for advertisement and the opposition had been dismissed, the Registrar tad no option under section 16 but to register the trade mark.

The next argument of Mr. Syed Shaukat Ali is that the Registrar had no justification for refusing to register the trade mark since the trade mark sought to be registered was "POLYPAK". This contention of Mr. Syed Shaukat Ali also appears to be forceful as the word I "POLYPAK" neither appears to be descriptive nor there was any disclaimer in respect of the same.' Admittedly what was disclaimed by the appellants, was the word "PAK" and not "POLYPAK". Reference in this respect may also be made to the case of GLAXO LABORATORIES Ltd. P L D 1985 Kar. 630, wherein a learned single Judge of this Court found that the trade mark "Vita Milk" was not descriptive and hit by the provisions of section 6(1)(d) of the trade marks Act, 1940 although the words "Vita" and Milk were separately found to be .descriptive. The learned Judge consequently held that the word "Vita Milk" was a newly coined word and when read as a whole, the same was not descriptive. The word "POLYPAK" also when read as a whole cannot be regarded as descriptive, although the words "POLY" or "PAK" are not separately registrable in view of the circumstances stated. The argument of Mr. Sultan Ahmad consequently has no force.

I, therefore, allow this appeal and remand the case to the Registrar, trade marks for taking further action in respect of the appellant's application No.75130 in accordance with Law.

S.Q./B-17/K Appeal allowed.

Find a Lawyer Near You

Dealing with a matter like this? Connect with a verified advocate in your city — free on SJP Lawyers Directory.