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Miscellaneous Appeal No.63 of 1984, decided on 10th March, 1987.

---Ss.16, 37(1)(a), 46(2) S 70(c)--Trade mark, registration of- Appellants during pendency of their application for registration of trade mark "Hercules" and on coming to know about respondent's application for registration of same trade mark making an application to Registrar of Trade Marks for rectification and cancellation of respondent's trade mark--Registrar while dismissing appellant's application for rectification also dismissing his application for registration of which he was not seized--Dismissal of such application without hearing appellant, held, was clearly opposed not only to provisions of Act and rules framed thereunder but to principles of natural justice as well--Appeal accepted and case remanded to Registrar for decision on merits.

Syed Shaukat Ali for Appellant.

Khalil Kazilbash for Respondents.

Dates of hearing: 17th and 18th February, 1987.

This appeal has arisen in the following circumstances.

The first respondent filed application No. 10523, dated 12-11-1979 in Class-I, seeking registration of its trade mark 'HERCULES respect of "Plastic in the form of granullets for Industrial use". The application was thereafter advertised in the Trade Marks Journal. However, since the appellants had no knowledge about such advertisement they did not enter into opposition and the trade mark application proceeded for registration. Thereafter, as soon as the appellant came to know about the respondents' application, they lodged proceedings for rectification and cancellation of the trade mark invoking the provisions of sections 37(1)(a) and 46(2) of the Trade Marks Act, 1940, and the case was registered as Rectification Case No.41 of 1983. The learned Registrar thereafter proceeded to dispose of the application (No.41/83) filed in respect of rectification of the trade mark and by the impugned decision not only disallowed the rectification as prayed by the appellants but also dismissed the appellant's application pending before him for registration of their trade mark under serial No.72986, and hence this appeal.

Mr.Syed Shaukat Ali, learned counsel for the appellant, has assailed the decision on the following grounds:------

(1) That the learned Registrar has acted beyond his powers while dismissing the appellant's application No.72986 since the same had been advertised but no opposition had been filed against the same by the respondent although an application for extension.

(2) That the dismissal of the aforesaid application was illegal and the same offended against section 70 (C) of the Trade Marks Act read with Rule 77 made thereunder,

(3) That since no opposition had been filed by the second respondent against application No.72986, the learned Registrar was left with no other option but to register the trade mark under section 16 of the Trade Marks Act, and

(4) That the learned Registrar in any case was not seized of the registration application No.72986 and consequently its dismissal was unwarranted in any case.

I find lot of substance in these arguments. First of all as far as the dismissal of the appellants' application No.72986 is concerned, admittedly the Registrar was not seized of such application as he was clearly dealing with case No.41/83 only which was filed by the appellants for rectification of the trade mark. Admittedly, no opposition had been filed by the second respondent in respect of this case after seeking extension of time for the same from the Registrar. Section 16, subsection (1) of Trade Marks Act provides that "when 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 said trade mark." Consequently when no opposition was filed it was mandatory for the Registrar to register the trade mark. However, in any case the Registrar could not have dismissed the appellant's application which was separately pending for disposal before him and in respect of which no arguments had been heard and of which he was not seized. Apart from that section 70(c) provides that in all proceedings under the Act before the Registrar, the Registrar shall not exercise any power vested in him by the Act or the rules made thereunder adversely to any party duly appearing before him without giving such party an opportunity of being heard. Admittedly, the appellants were not heard in support of their application which was pending before the learned Registrar, for registration and dismissal of the same without hearing the appellants was clearly opposed not only to the provisions of the Trade Marks Act and rules framed thereunder, but to the principles of natural justice as well. I am, therefore, fully convinced that the dismissal of, the appellant's application No.72986 was not warranted in any way under the law and was improper. '

Turning to the next contention of Mr.Syed Shaukat Ali, the counsel has contended that the learned Registrar, while deciding the application for rectification failed to properly consider the case put forth by the appellants. According to the learned counsel, the appellants had contended in no less unambiguous terms before him that the product in respect of which the trade mark 'HERCULES' had been registered was in use in Pakistan since 1962. The facts and figures provided by the appellants further indicated that at least from 1976 to 1980, that is, at the time when the trade mark was applied for and registered, the goods of the appellants were in use in Pakistan. The appellants further supported their contention with affidavits of their witnesses, namely, J. R. Ryan, S. M. Turk, Aslam Q.Mallick and Masood Ghani and their evidence was not rebutted by the second respondent through the affidavits of their witnesses Muhammad Hashim, Shaikh Muhammad Ilyas or Munawar Begum as none of them denied the fact that the goods in question were being used in Pakistan as claimed by the appellants. The order of the learned Registrar shows that he has arrived at the conclusion without taking into consideration this material factor in the case. Consequently, I fully agree with Mr. Syed Shaukat Ali that the order passed by the learned Registrar suffers from material errors.

As a result, I allow this appeal and set aside the impugned order, dated 17-6-1984 and remand the case to the learned Registrar for decision of both the cases on merits. The parties are left to bear their own costs.

S.Q./H-37/K Appeal allowed.

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