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Constitutional Petition No. D‑663 of 1986, decided on 19th November, 1986.

‑‑‑S. 16‑‑Registration of trade mark‑‑Issuance of certificate‑‑Duty of Registrar‑‑Where decision for registration of trade mark was finally made by Registrar in favour of a party and request of opposing party for grant of stay order against such decision was also rejected by Supreme Court, Registrar, held, was under legal obligation to issue certificate of registration in a our of applicant and mere pendency of appeal before Supreme Court against decision of Registrar would not bar issuance of such certificate.

‑‑‑ Practice of Department in contravention of a statute‑‑Effect‑‑Where practice of a Department was in contravention of a statute, such practice, held, could not override or overrule the provisions of the statute.

Raja Mahmood Akhtar for Petitioner.

Nemo for Respondent.

Date of hearing: 19th November, 1986.

This constitutional petition has been filed by the petitioner Messrs Tabaq through its Managing Partner Irfan Ahmed Noori of 1, Abbot Road, Lahore. Against application No. 77309 filed by the petitioner for the registration of trade mark consisting of the word "Tabaq" and device of "COCK" in respect of food products, etc. an opposition was entered into by Messrs Tabaq Resturant of Murree Road, Rawalpindi. Another application No. 78615 had been filed by Messrs Tabaq Restraurant of Murree Road, Rawalpindi, for registration of the same trade mark consisting of the word 'Tabaq' and device of "Cock" in class 29. Against this an opposition was filed by the petitioner. By decision, dated 3‑6‑1985, the Deputy Registrar of Trade Marks, Karachi, allowed the application of the petitioner for registration of the aforesaid trade mark and rejected the application of Messrs Tabaq Restaurant of Murree Road, Rawalpindi. However, the grievance of the petitioner is that in spite of the grant of their application and rejection of the opposition of Messrs Tabaq Restaurant of Murree Road, Rawalpindi, the certificate of registration in respect of the trade mark applied for by the petitioner and granted by decision, dated 3‑6‑1985, the respondents have not issued certificate of registration.

In this matter comments had been called for and the Registrar of Trade Marks in paragraph 4 of the comments has stated as follows:‑‑

"With reference to para. 5, it is submitted that the petitioner was informed that the registration certificate as contemplated in section 16 of the Trade Marks Act, 1940 will be issued after decision by the Appellate Courts. Rest of the statement is not correct as it is the practice of Registry to wait finality of appealable decision."

It is pointed out by the learned counsel for the petitioner that the other party, namely, Messrs Tabaq Restaurant of Murree Road, Rawalpindi, has filed Civil Petition for Leave to Appeal No. 238 and 239 of 1986 before the Supreme Court and in the petition leave has been granted but stay against the decision of the Deputy Registrar has not been granted. A copy of the order, dated 5‑10‑1986 of the Supreme Court has been placed on record and the relevant paragraph of the aforesaid order of the Supreme Court dealing with the stay application is reproduced here:‑‑

"The petitioner has filed a Civil Miscellaneous Petition requesting for an order of suspension of the impugned order of the Deputy Registrar Trade Marks till the appeal is decided. On the facts and the circumstances of the case, we are not inclined to grant the request".

It is, therefore, apparent that in spite of request having been made for an interim order of stay, the Supreme Court has declined to grant stay to the other party.

Then the learned counsel for the petitioner referred to section 16 of the Trade Marks Act, 1940, which reads as follows:‑‑

"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 Government otherwise directs, register the said trade mark, and the trade mark, when registered, shall be registered as 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.

(2) On the registration of a trade mark the Registration shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Trade Marks Registry.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice."

In view of the provisions of section 16 of the Trade Marks Act and the fact that no stay has been granted and subsection (3) of section 76 of the Trade Marks Act provides that subject to the provisions of this Act and rules made thereunder, the provisions of the Code of Civil Procedure 1908 shall apply to appeals before a High Court under this Act, we are of the view that the Deputy Registrar Trade Marks was in error in not issuing the certificate of registration on the sole ground that the appeal against the decision of the Deputy Registrar was pending before the Supreme Court. As already pointed out, the request for stay has been rejected by the Supreme Court. A practice of the department, which is opposed to the clear provisions of the statute cannot override or overrule the provisions of the statute. In the circumstances of the case, under the law, the decision having been given in favour of the petitioner and no stay having been granted by the Supreme Court, the Registrar was under a legal obligation to issue a certificate of registration.

Accordingly, the respondents are directed to issue the certificate of registration in favour of the petitioner as contemplated by section 16 of the Trade Marks Act, 1940.

There will be no order as to costs.

H.B.T./5128/K Petition allowed.

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