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Civil Miscellaneous Appeal No.79 of 1984, decided on 30th June, 1987.
---S.2(1)--Registrar of Trade Marks is also a Tribunal under Act besides being Chief Executive and Administrative Head of Trade Marks Registry--Functions of Registrar are thus partly judicial and partly administrative--Registrar is a Tribunal only in relation to proceedings pending before him or when he performs some judicial functions under the Act--Registrar can initiate a proceeding by issue of a notice to a party under the Act or the Rules.
---Ss.2, 2-A & 2-B--Trade Marks Registry is under the charge of Registrar of Trade Marks and Registrar is assisted by Deputy Registrars who discharges functions .of Registrar under his superintendence and directions in respect of all proceedings under the Act before Registrar.
---Ss.2 & 14--Registration of trade marks--Registrar of Trade Marks, held, could not delegate his power to Examiner of Trade Marks- Examiners of Trade Marks can examine application for registration to see whether they qualify for registration under the provisions of the Act and Rules--Such functionary also assists Registrar in all procedural, administrative and supervisory functions connected with various proceedings under the Act and the Rules.
---S.14--Registration of trade marks--Application for registration of trade mark refused by Examiner of Trade Marks who had no jurisdiction in the matter--Order of refusal passed by Examiner set aside and proceedings allowed to continue according to law.
A.A. Zari for Appellant.
Niaz Ahmed Khan for Respondents No.1.
Date of hearing: 19th February, 1987.
This appeal is directed against the order, dated 19-8-1984, the respondent 2 refusing application No.79917, dated 12-6-1983 for the registration of the trade mark "CHOVETINE" in Class 29.
The facts leading to the filing of the application are that Walter Rau Neusser 01 und Fett AG applied for the registration of a trade mark "CHOVETTA" on 12-6-1983. On 6th December, 1980 the respondent No.2 called upon the appellant to show cause why the application should not be refused and called upon the appellant to:--
(a) state the nationality on the applicant and
(b) also to slate the period of user by filing TM. 16.
On 30th December, 1980 Messrs Zari & Co. Advocates wrote to the respondent No.2, on behalf of the appellant contending that "T. M. 16 is necessary only in case the applicant seeks an amendment voluntarily. It is therefore respectfully submitted that T.M. 16 does not apply when the reply is sent to comply with the official requirements". On 16-8-1984 without any further step being taken or without complying with the provisions of the said Act as to hearing etc. the application for registration was refused as it was not filed in the prescribed manner. Mr. A.A. Zari the learned counsel for the appellant has raised the following two contentions:--
(1) The respondent No.2 had no jurisdiction to hear the application.
(2) The respondent No.2 has misconstrued the provisions of Section 14 of the Trade Marks Act and the Rules 8, 12, 14, 64 and 69 of the Trade Marks Rules.
In order to decide these contentions, it will be necessary to consider the provisions of the said Act and the Rules framed thereunder in some detail. It is an Act to provide for the registration and more effective protection of trade mark. The first provision to be considered is Section 2 which is the definition section. Under clause (n) of subsection (1) of Section 2, the expression "Tribunal" has been defined to be the Registrar or, as the case may be, the Court before which the proceeding concerned is pending. It is provided in Section 4 that for the purposes of this Act, there shall be established at Karachi an office of a Registrar of Trade Marks wherein shall be entered all registered trade marks with all necessary particulars. The next subsections to be considered are subsections (2-A) and (2-B) of Section 4 which are as follows:--
"(2-A) The Central Government shall appoint one or more Deputy Registrars of Trade Marks to discharge under the superintendence and direction of the Registrar such functions of the Registrar under this Act as he may from time to time authorise them to discharge; and any reference in this Act to the Registrar shall include a reference to any Deputy Registrar when so discharging any such functions.
(2-B) The Central Government may by notification in the official Gazette authorise the Registrar to delegate any particular functions of the Registrar to officers other than the Deputy Registrars of Trade Marks."
In pursuance of subsection (2-A) of Section 4, the Central Government has appointed one or more Deputy Registrars of Trade Marks to discharge under the superintendence and direction of the Registrar such functions of the Registrar under this Act as he may from time to time authorise them to discharge, and 'any reference in this Act to the Registrar shall include a reference to any Deputy Registrar when as discharging any such function. In pursuance of subsection (2-B) of Section 4 the Central Government has authorised the Registrar of Trade Marks to delegate any particular functions of the Registrar to officers other than the Deputy Registrars of Trade Marks. A copy of authorisation produced before me. Section 14(1) provides that on an application being made, the Registrar may refuse the application or accept. If he feels inclined to refuse Section 70(c) requires him to give a hearing to the applicant before he passes his order. The Registrar may upon hearing still refuse the application or he may accept it. If he accepts, whether initially or upon hearing the applicant, such acceptance does not mean that registration of the marks is directed. The Registrar must then under section 16(1) cause the application to be advertised and thereafter persons desiring to oppose the registration may come forward within a prescribed time and urge such considerations or adduce such evidence as they may wish to rely on. The Registrar must then, after hearing the parties, if so required and considering the evidence, decide finally if registration is to be permitted. When the Registrar refuses to accept the application, there are no further proceedings before him and the application is considered only once; but if he accepts it, there must be a further consideration at a second stage.
If on an application being made the Registrar does not feel inclined to accept it, he must give the applicant a hearing, but Section 15(2) of the Act provides that he may, even at that stage cause the application to be advertised, particular, in a case coming under Section 16(1)(c) and may hear not only the applicant for registration but also his opponents, if any should come forward.
The learned counsel for the appellant has contended that under the Act, the words "Registrar" and "Tribunal" are not identical but have different meanings. The word "Tribunal" according to Mr. Zari, has been used in the Act as distinguishable from the word "Registrar" and, therefore, the operation of subsections (2), (2-A) and (2-B) is excluded or not attracted. Under subsection (2), the Central Government shall appoint a person to be called the Registrar of Trade Marks, who shall be the Registrar for the purpose of this Act. Under subsection (2-A) the Central Government shall appoint one or more Deputy Registrars for the purpose o;' discharging the functions of the Registrar under the superintendence and direction of the Registrar. Under subsection (2-B) the Central Government may authorise the Registrar to delegate any particular functions of the Registrar to officers other than the Deputy Registrar. According to Mr. Zari, these offices can only discharge such functions as the Registrar alone is authorised to discharge under the Act. But where the word "Tribunal" is used the provisions of subsection (2-B) are not attracted.
The Registrar of Trade Marks is the officer appointed by the Central Government for the purpose of the Act. He is also a Tribunal under the Act besides being the Chief Executive and administrative head of the Trade Marks Registry. His functions are thus partly judicial and partly, administrative. From the definition of Tribunal it would appear that the Registrar is a Tribunal only in relation to some proceedings pending before him. The Registrar can initiate a proceeding by the issue of a notice to a party under the Act or under the Rules. In such a case he would be a Tribunal in terms of Section 2(1)(n) of the Act. The Registrar is a Tribunal only when he performs some judicial functions under the Act.
The Trade Marks 'Registry is under the charge of the Registrar of Trade Marks. He is assisted by officers designated Deputy Registrars. These officers discharge the functions of the Registrar under his superintendence and direction. I am of the view that ordinarily Deputy Registrars are authorised to hear and decide cases in respect of all proceedings under the Act before the Registrar. The examiners of Trade Marks examine applications for registration of trade marks to see whether they qualify for registration under the, provisions of the Act and the Rules. They also assist the Registrar in all procedural, administrative and supervisory functions connected with the various proceedings under the Act and the Rules.
On receipt of an application for registration it is allotted a serial number which is used as a reference number for the application and subsequently for the trade mark when registered. The application is, 'examined to see whether it satisfied the requirements of the relevant provisions of the Act and the Rules. The requirements of the Rules are in general of a procedural nature, while these under the Act are of a substantial character. The more important Rules to be considered are Rules (13) (Fees), 4 (forms), 5 (size of documents), 6 (signature), 8 (particulars of applicants), 9 (address of service), 10 (agency), 11 (classification of goods), 14 (statement of user), 15 to 19 (representation of marks), 20 (Trans literation), 21 (translation) Examination of the trade mark is carried out with particular reference to the following sections: --
"Section 2(1)(L) to see whether the mark comes within the scope of the definition of a trade mark.
Section 6--Distinctive requisite for registration.
Section 8-Prohibition of registration of certain matters.
Section 10-- Prohibition of registration of identical or similar trade mark.
Section 9-Use of names of chemical elements barred.
Section 11--Registration of parts of trades and trade marks as a series.
Section 12--Associated trade marks.
Section 13--Registration subject to disclaimer.
Coming now to the facts of the instant case, I find that upon an application for registration having been made the examiner of trade mark issued a show-cause notice dated 25-1-1984 calling upon the appellant why the application should not be refused. On 8-5-1984 Messrs Zari & Co. wrote to the examiner on behalf of the appellant contending that T M. 16 is not necessary. On 19-8-1984 the respondent No.2 refused the appellant's application.
Under subsection (2-B) of Section 4, it has been provided that the Central Government may authorise the Registrar to delegate any particular functions to officers other than the Deputy Registrar of Trade marks. Registration of the application is one of the functions and I am called to hold that he cannot delegate that power to such officers. Section 70(c) requires the Registrar to give a hearing to the applicant before he passes his order. The contention of the learned counsel for the appellant is that the officer and the examiner cannot proceed under the provisions. Section 70(c) subsection (2) provides that any reference in this Act to the Registrar shall include a reference to Deputy Registrar when so discharges any such function. Subsection (2-B) provides that the Central Government may by Notification in the official Gazette, authorise the Registrar to delegate any particular functions of the Registrar to officers other than Deputy Registrars. According to Mr. Zari these officers can only discharge such functions as the Registrar alone is authorised to discharge under the Act. But where the word "Tribunal" is used, the provisions of subsection (2-B) are not attracted. In other words it is argued that since the exercise of the function of the Registrar by the officers or examiners, they cannot be equated with the Registrar or Deputy Registrar. On the other hand Mr. Niaz Ahmed Khan has contended that when officers acting as such they have all the powers of the Registrar including the power of accepting or refusing the registration. I cannot see under what circumstances the words used in subsection (2-A) "any re-reference in this Act to the Registrar shall include reference to any Deputy Registrar when so discharging any such function" could be made applicable. The word 'functions' in subsection (2-B) obviously refers to administrative functions. The Registrar cannot possibly give direction to the officers as to how and in what manner they should decide a particular case. In my opinion, to give the interpretation which Mr. Niaz asks me to give, I shall have to modify some of the provisions of the Act. Under subsection (2-B) of Section 4, it has been provided that the Registrar may delegate to officers appointed by the Central Government for that purpose any particular functions which may be discharged by him under the Act. Registration of trade mark is one of his functions, yet I am called upon to hold that he can delegate that power to such officers. All this would mean modification of the provisions of the Act. A perusal of subsection (2-A) shows that the words "any reference in this Act to the Registrar shall include to any Deputy Registrar when so, discharging any such function". The legislature in its wisdom deliberately omitted these words in subsection (2-B). I agree with Mr. Zari that the Registrar cannot delegate that power to the examiner. I am unable to agree with the interpretation canvassed by the learned counsel for the respondent and I hold that the examiner had no jurisdiction to make order dated 19-8-1984.
Mr. Niaz has fairly conceded that T. M.-16 is not applicable to the facts of this case. The respondent No.2 had no jurisdiction to refuse an application and accordingly his order, dated 19-8-1984 was not according to law.
The result is that the appeal succeeds and the order, dated 19-8-1984 is set aside. The proceedings for registration may now continue according to law. In the circumstances of the case, the parties shall bear their own costs.
M.Y.H./W-9/K Appeal accepted.
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