Miscellaneous Appeals Nos. 6/75 and 19/75 arise out of two decisions of the Deputy Registrar of Trade Marks, Karachi, both dated 15th July 1974 dismissing the oppositions and the Trade Mark applications of the appellants. Both these appeals were heard together as they raise a common question of law, namely whether the second respondent could, on the facts and circum--stances of the case, properly claim to be registered as proprietor of two foreign owned Trade Marks belonging to the appellants.
2. In Miscellaneous Appeal No. 6/75, the facts are that the appellant, Societe De Fabrication Et De Distribution De Parfumerie Et Cosmetique (Diparco) Societe Anonyme, is a French Company which carries on business as manufacturers and merchants of perfumery, cosmetics, essential oils and variety of toilet and allied articles which it markets in many countries of the world under the Trade Mark Cheramy. This mark was adopted in the year 1922 by Parfums Cheramy. S. A., from whom, the appellant acquired it in the year 1966. The trade mark Cheramy has been registered in several countries of the world. The products under the said Trade Mark have been advertised in international journals and periodicals which have a world--wide circulation. On 24th May 1972, the appellant filed an application under No. 57340 for registration of the Trade Mark Cheramy m Pakistan it respect of perfumery, essential oils, cosmetics, and other allied goods in class 3 claiming to be proprietor of the Trade Mark and stating that it was proposed to be used.
3. The facts in Miscellaneous Appeal No. 19/75 are that the appellant, Guerlain Societe Anonyme, which is also a French Company carries on busi--ness in France as manufacturer and merchants of perfumery, cosmetics, essential oils and other toilet and allied articles which are marketed in many countries of the world under the trade mark CHANT D'AROMES. The said Trade Mark was adopted by the appellant in the year 1962 and the mark has been advertised in foreign journals and periodicals which have worldwide circula--tion. The mark has also been registered in several countries of the world. On 13th March, 1972, the appellant filed an application under No. 56930 for registration of the trade mark in Pakistan in respect of products of perfumery, toilet soaps, cosmetics, essential oils and other allied goods in Class 3.
4. The second respondent, Lahore Chemical and Pharmaceutical Works Limited (hereinafter referred to as the respondent) is a Pakistan Company and carries on business as manufacturer and merchant of chemical and pharmaceu--tical products at Lahore. On 27th May 1970 it filed two applications for registration of the trade mark CHANT D' AROMES and CHERAMY under No. 53594 and 53596 respectively in respect of perfumery, essential oils, cosmetics and other allied goods in class 3 claiming to be proprietor of the two Trade Marks which, it stated, were proposed to be used.
When these applications of the respondent were advertised in the Trade Mark Journals, both the appellants filed their respective oppositions on the ground, inter alia, that the appellants were the proprietors of the respective Trade Marks and that the respondent falsely and dishonestly claimed to be their proprietor and that if registrations were allowed to the respondent, confusion and deception would be inevitable. They prayed that the Registrar should refuse the respondent's application in the exercise of his discretion under section 14(1) of the Trade Marks Act, 1940 (hereinafter referred to as the Act).
5. After hearing the parties and considering the affidavits filed by the parties, which comprised of one affidavit on each side, the learned Deputy Registrar of Trade Marks by the impugned decision dismissed both the oppositions, but at the same time he refused the Trade Mark applications of both the appellants as well as the applications of the respondent under section 10(3) of the Act. He refused the opposition of the appellant on the ground that they had not used their respective Trade Marks in Pakistan and had failed to establish reputation of the mark required to support the opposi--tion under section 8 (a) of the Act. He refused the trade mark applications of the appellants as well as of the respondent, because as the trade marks applied for by the respective parties as well as the goods being identical, it was a fit case under section 10 (3) to refuse to register any of them until their rights had been determined by a competent Court.
6. Under section 14(1) of the Trade Marks Act, 1940 a person "claiming to be proprietor of a trade mark" used or proposed to be used by him may apply in writing to the Registrar in the prescribed manner, and, subject to the provisions of the Act, the Registrar may in his discretion refuse the application or accept it absolutely or subject to conditions and limitations, as he may think fit. The prescribed form of application is required to be signed by the applicant or his authorised trade mark agent and must contain an assertion that the applicant "claims to be proprietor" of the mark applied for. Strictly speaking, there can be no property in a Trade Mark which has never been used in this country, nor which is on the Register. As observed by' Kerly's Law of Trade Marks and Trade Names, 10th Edition, para. 402, all that the expression "claiming to be proprietor" means is that the applicant claims to be entitled to be registered as the proprietor. Nevertheless, the claim must be made in good faith and the applicant must be able to justify it if his claim is challenged. If the applicant knew or the circumstances showed that he was aware that another person is the proprietor of the Mark, his claim to proprietorship would be false and his assertion in the application form would be regarded as a deliberate attempt on his part to deceive the Registrar and, if he succeeds in obtaining a registration, it would be liable to be expunged on the ground of fraud.
7. A leading case on the point regarding improper claim to be proprietor is the case of Vitamins Ltd.'s Application 1956 R P C 1. In the case, an American Company had originally applied for registration of the Trade Mark 'Pabalate' for medical substances, but withdrew the application when it was opposed by Vitamins Ltd. On the basis of its registration for 'Paravel'. A few months later, Vitamins Ltd. Itself applied for registration of 'Pabalate' claiming to be the proprietor of the trade mark. The American Company opposed the application contending that the claim to proprietorship of the Trade Mark was false. The Registrar dismissed the opposition of the American Company on the ground that there was no user or reputation of the mark of the American Company in Great Britain. But, on appeal the decision was reversed. It was held that Vitamins Ltd.
When it applied for registration of the Trade Mark 'Pabalate' knew that the American Company had already put forward a elaim of Proprietorship of the said Trade Mark and, therefore, the British Company's claim to be proprietor of the Trade Mark being improper, the application was refused by the Court in the exercise of its discretion. There was also another reason for exercising the Court's discretion against the British Company's application. As medical products of American origin are generally advertised in American medical journals, which were likely to reach Great Britain, public interest required that articles of different origin should not be advertised and sold in Great Britain and abroad under the same mark.
8. The improper conduct of an applicant for registration of a Trade Mark may also involve a false claim to be the proprietor. An illustration of this is found in the case of Gynemin T. M. (1961 R P C 408). In that case, a former agent of a foreign manufacturer received in confidence knowledge of the formula of a product from his principal and marketed the product under a mark, he knew to be the mark of a foreign manufacturer and registered the mark in his own name. On an application by the foreign manufacturer for cancellation of the registration, it was held that the application for registration involved a false claim of proprietorship and accordingly the registration was obtained by fraud and the registration was expunged. The principle was applied by the erstwhile High Court of Sind and Baluchistan in the case of Abdus Salam and others v. Crown Radio Corporation, Karachi (PLD 1973 Kar. 24). In that case, the appellants had imported radio parts and kits from the respondent firm of Tokyo, Japan under the letter's trade mark 'Crown' and later applied for registration of that Trade Mark in their name. The application was opposed by the Japanese firm.
The High Court, on appeal, held that although the Japanese firm had acquired no reputation for its Trade Mark in Pakistan in the absence of use, the Deputy Registrar of the Trade Marks rightly refused the application in the exercise of discretion vested under section 14 (1) of the Act, on the ground that the claim by the appellants to be the proprietor of the Trade Mark which they knew to be the trade mark of the Japanese firm, was improper.
9. Reverting to the facts of the present case, there is no real dispute that the appellants are the proprietors of the Trade Mark CHERAMY and CHANT D' AROMES by virtue of use and registration of the marks in foreign countries. The contention of the respondent, however, is that the appellants are not and cannot claim to be proprietors of the marks in Pakistan, because they had neither used nor advertised their marks in this country prior to the date of the respondent's applications. The respondent, in fact, stated that before filing the applications it made enquiries and took a search in the Trade Marks Office and learnt that no one had applied for registration of these marks. It was, therefore, contended that these marks were legally available for being appropriated by the respondent as its trade marks.
10. The main question is whether the respondent knew or was aware that the Trade Marks applied for by it were the property of the appellants. I am satisfied from the evidence and the circumstances that the respondent was aware that these marks belonged to the appellants. In the first place, it was not the case of the respondent that it had selected these two words of the French language which appeared to it to be attractive for adoption as Trade Marks for perfumery and other allied goods. In the second place, the respon--dent did not seriously deny prior knowledge of the appellants' marks. Its case was that whatever be the position in foreign countries, the appellants could not clam to be the proprietors of those marks in Pakistan for the reason that they had neither been used nor advertised in this Country prior to the date of the respondent's applications. The respondent has not alleged that the appellants had abandoned any intention to use their foreign Trade Marks in Pakistan for the goods and such inference cannot also be drawn in this case as the appellants have now themselves filed applications for registration of their marks and have expressed their intention to use them in Pakistan. Therefore, there is no doubt that the respondent has deliberately copied the Trade Marks of the appellants and now claims to their proprietor. In similar circumstances, the respondent has applied for registration in its name of six other marks of foreign owners which comprise of the words of the French language, as will appear from the affidavits filed on behalf of the appellants, which fact is not denied by the respondent.
There is, therefore, little doubt that the object of the respondent in applying for registration of words of the French language, and that too, the Trade Marks of the former owners could be no other than to induce purchasers of perfumery and allied goods to believe that they are of French origin.
11. The conduct of the respondent in appropriating Trade Marks of foreign owners is not proper. The respondent has not come to the Tribunal with clean hands and in the interest of the purity of the Register the law ought not to grant registration to an applicant whose conduct is not beyond reproach. There is also another factor which should be kept in mind. It is common knowledge that trade in French perfumery is of international character. With the revival of International Trade and international publicity, the rights of owners of foreign Trade Marks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country.
12. In the circumstances, I am of the opinion that the applications of the respondent ought to have been refused by the Deputy Registrar in the exercise of his discretion under section 14(1) of the Act.
This aspect of the case failed to receive consideration by the learned Deputy Registrar. In this view of the matter, the refusal of the applications of the appellants under section 10(3) of the Act until their rights have been determined by a compe--tent Court, was not justified. I would, therefore, direct the Trade Marks Office to proceed with the applications of the appellants in accordance with the law.
13. The orders of the Deputy Registrar of the Trade Marks are accord--ing set aside and the appeals are allowed with costs.