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Miscellaneous Appeal No.32 of 1983, decided on 22nd September, 1987.

---S.37--Rectification--Non-user of Trade Mark--Non-user by appellant of their Trade YLO was mainly on account of legal restrictions imposed by Government in respect of imports and not a deliberate or wilful non-user, held, could be regarded as one contemplated under S.37 of Trade Marks Act--Period during which import restrictions were in existence, would be excluded from consideration in computing period of non-user.

Ss.10 & 37 Sections 10 & 37 of Act Difference in scope of two Sections stated.

S. Shaukat Ali for Appellant Khalil Kazilbash for Respondents

Date of hearing;16th September; 198'

The, appellant has felt aggrieved against the rectification order passed by the Registrar of Trade Marks on 15th December, 1982, whereby the mark of the appellant in the name of "Mother care" in Cla6s-25 was ordered to be cancelled.

2. The relevant facts are that on 20th November, 1970, the Trade Mark of "Mothercare" was registered in favour of the appellant in Class-25, which is in respect of "Articles of clothing for women, children and babies. The Trade Mark of the appellant was not commercially used in Pakistan on account of restrictions on the import of garments in. Pakistan for the last 30 years or so.

3. The respondent game No. 2 started using the mark of "Mothercare" for its goods in the class sine 1975. There is no serious objection made by the appellant to the use of the mark by the respondent No. 2 in as mud as that no suit was filed either for injunction or damages.

4. On 11-3-1979, the respondent No.2 applied for registration of the mark mother care Capital letters in Class-25. It was claimed that the mark was in use since, 1975. The same mark was duly advertised in Trade Marks Journal. The respondent No.2 having comet, to know of the registration of the mark "Mothercare" having been made in favour of the appellant on 20th November, 1970, applied for rectification of register and cancellation of that mark on 20th March, 1981 under Section 37 of the Trade Marks Act on the ground of non-user of the mark for 5 years and one month before the application for rectification.

5. The appellant defended the rectification application on the ground that on account of the ban on the imports of the articles of clothing in Pakistan since last 20 years the Trade Mark of the appellant could not be commercially used in Pakistan. They, however, asserted that some private parties had sent them orders by mail and they had despatched the goods to them in Pakistan bearing their Trade Mark.

6. The Registrar of Trade Marks came to the, conclusion that there was no commercial use made of the Trade Mark by the appellant since the registration of the Trade Mark in their favour and that they had even failed to get their goods manufactured in Pakistan under their licence and had not even assigned their Trademark in Pakistan to any party and, therefore, the Trade Mark should be cancelled. In respect of export of some of the products of the appellant to Pakistan through h mail orders the Registrar took the view that they were inconsequent and could not be treated to be use of the Trade Mark in any sense.

7. Syed Shaukat Ali for the appellant contended that the failure of the appellant to use their mark in Pakistan was essentially on account of import restrictions imposed by the Government of Pakistan in respect of the articles manufactured by the appellant under their Trade Mark and, therefore, it would not be a voluntary or wilful failure on their part to use their Trade Mark in Pakistan, but was occasioned by the embargo placed by law by the Pakistan Government and hence the appellant should not be burdened with the non-use of their Trade Mark in Pakistan between 22nd February, 1976 to 22nd March, 1981.

8. Mr. Khalil for the respondent submitted that the appellant had never used their mark in Pakistan either before or after its registration and further there was no possibility of the import being allowed in near future for the goods of the appellant in Pakistan and hence the appellant should not be allowed to have a registration of their mark as a piece of ornament in Pakistan.

9. I find that the submission of Mr. Shaukat is correct because the non-use by the appellant of their Trade Mark in Pakistan was mainly on account of the legal restrictions imposed by the Government in respect of imports and hence it was not really a deliberate or wilful failure on the part of the appellant to use their Trade Mark in Pakistan. The appellant cannot violate the law of the country, and hence the non-use of their mark should not be regarded as a non-user contemplated under section 37 of the Trade Marks Act. The Petitioner could be burdened with the non-user only, if there was freedom for them to export their goods to Pakistan and their failure to ex port their goods in Pakistan in spite of that freedom would certainly bring section 37 into play.

10. The submission of Mr. Khalil about the ornamental use of the mark by the appellant would of course be relevant when the application of the respondent No.2 for registration of a similar Mark comes up for consideration before the Registrar. But in the present case the same is not very relevant because section 37 is different in its scope from section 10 of the. Trade Marks Act. Section 37 deals with rectification on the ground of non-user or lack of bona fide intention of use of the Trade Mark by the registered proprietor at the time of its registration while section 10 prohibits registration of identical or similar Trade mark generally, but it permits concurrent registration of the same mark in case of honest concurrent use or for other B special circumstances. It would, therefore, be open to the respondent No.2 to urge all of the grounds in favour of its application for registration of Trade Mark in their favour under section 10(2) in spite of the similar mark being registered already in favours of the appellant. And I am sure that the Trade Marks Registrar will give due consideration to the contentions raised by the respondent No.2 in this regard. But I do not find any material before me, which could justify me to come to the conclusion that at the time of the registration of their mark in 1970, the appellant had no bona fide intention for use of their mark in Pakistan if the import restrictions were released, nor do I find any intentional failure on their part to use their mark bona fide in Pakistan for a period of 5 years and one month, when it had been prohibited by law from using the same. The net result, therefore, is that I find that non-user of the mark by the appellant is on account of the import restrictions imposed by law in Pakistan and, therefore, the period during which the import restrictions were in existence should have been excluded from consideration in computing the period of non-user. Consequently, this appeal is allowed and the impugned order is set aside with the result that the mark of the appellant remains on the register of the Trade Marks in Class-25.

11. It is hereby clarified that the observations made in this Judgment will not affect the merits of the contentions raised or to be raised by the respondent No.2 in respect of his mark under section 10(2) of the Trade Marks Act, and especially the contentions of -the respondent No.2 will be duly considered by the Registrar of the Trade Marks in respect of the bona fide use of the mark by the respondent No.2 since 1975.

M.Y.H./M-287/K Appeal allowed;"

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