1. ' This is an application under section 46 read with section 68(d) of the Trade Marks Act, 1940 for cancellation of the entries on the Register of Trade Marks relating to Trade Mark No, 61512 in Class
(34) dated 4-12-1974.
2. ' The facts as related by the learned counsel for the petitioner are that the respondent No, 1 applied for registration of the aforesaid trade mark in Class (34) on 4-12-1974 which was advertised in the Trade Mark Journal dated 1-11-1976. The last date for filing opposition expired on 25-3-1977. But on 4-7-1977 the petitioner filed application for extension of time to lodge opposition before the Registrar. The learned Assistant Registrar heard the parties in regard to the request for extension of time and rejected the application by his order dated 23-7-1977. On 24-7-1977 the registration certificate was sealed.
3. ' In the events that happened the petitioner had also applied on 22-8-1975 for registration of his trade mark in Class (34) in respect of Beedies, which was entered under No, 62741. This application was also advertised in the Trade Mark Journal of 1-3-1977. The respondent No, 1 filed opposition under section 15 of the Trade Marks Act to the application of the petitioner, inter alia, on the basis of Trade Mark No, 61512. According to the learned counsel for the petitioner the application of the petitioner is pending decision. In the meantime, aggrieved, by the registration of the trade mark of respondent No, 1, the petitioner has brought the present application for cancellation of the trade mark of respondent No, 1.
4. ' In support of the present application, learned counsel for the petitioner raised the following two contentions :- (i)That the trade mark of the respondent No, 1 is liable to be removed from the register as the respondent has contravened a condition attaching to the Trade Mark as provided by subsection (1) of section 46 of the Trade Marks Act, 1940.
(ii) That the trade mark is liable to be cancelled owing to the failure of the Registrar to decide the application of respondent No, I together with the petitioner's application which was pending.
5. ' As to the first contention it was pointed out that the respondent's Trade Mark was registered subject to the condition that the mark would be limited to colors as shown in the representation on the form of application. But soon after the registration respondent No, 1 published a public notice in the Urdu daily 'JANG', Karachi dated 28-4-1977 purporting to warn the public at large that the aforesaid Trade Mark was the property of respondent No, 1 (of which the facsimile was reproduced), which cannot be copied by any one and demanded that those who have copied the design of the respondent's trade mark to surrender their goods to him within one week.
6. ' It was urged that the aforesaid public notice published in the newspaper does not indicate that the trade mark was restricted to color and other conditions and thereby respondent No, 1 had committed the breach of conditions in using the trade mark without complying with the conditions.
7. On the other hand, it was submitted on behalf of respondent No, 1 that mere publication of notice of warning does not constitute a breach of conditions within the meaning of subsection (1) of section 46, Trade Marks Act, 1940. It was argued that the apparent object was not to publicize the goods but to warn the public from invading the rights of respondent No, I to the exclusive use of the trade mark. Now there is no dispute that in the aforesaid publication the mark was not published in color.
8. However, the question is whether thereby the said respondent committed a breach of the conditions entered on the register in relation to the mark. In the first place it is clear to me that a proprietor would forfeit the right to registration of his mark by its removal only upon a conscious failure to observe a condition entered on the register in relation thereto. The question of intention is, therefore, a necessary consideration for deciding whether a breach has been committed. Having regard to this aspect the contents of the public notice and the object with which the same was published become immediately relevant. This aspect assumes importance also because the question of cancellation of the registration lies within the realm of discretion of the Court.
9. ' In view of the aforesaid it may be recalled that the only object for issuing the impugued notice was to ward off and warn imitation of the design of the trade mark. In order to achieve this object it was not absolutely necessary for the respondent to print the trade mark in colour or disclose the limitation as to colour. Section 21 of the Trade Marks Act. Would seem to confer upon a proprietor of a registered trade mark the exclusive right to use the same in relation to the goods for which it has been so registered. If, therefore, a mark has been registered subject to the limitation to one specified colour, it does not mean that the proprietor has no right as to the other distinctive features contained in the trade mark. A proprietor would, therefore, be within his rights to warn the public at large against the use of the trade mark apart from the colour. I am, therefore, of the confirmed view that the publication of the trade mark in black and white in the aforesaid public notice does not constitute the breach of the condition. The first objection, therefore, is, untenable.
10. ' Coming now to the second contention it was urged by the learned counsel for the petitioner that in accepting the application for registration of the mark of respondent No, 1 the Registrar committed a breach of rule 23 of the Revised Trade Marks Rules, 1963 by not issuing notice to the petitioner whose application for registration of a trade mark resembling the impugned trade mark was already pending. In support of this contention learned counsel relied upon the case of Basra Soap Factory v. Punjab Soap Factory (1). It was laid down in this judgment by Noorul Arfin, J. (as he then was), that the principle was implicit in the language of rule 23 that notice should be sent to all persons or applicants who either have a registered trade mark or have sought registration of a trade mark, whenever an application is made for registration of a trade mark which is identical with, or resembles, a trade mark already on the register or amongst the pending applications. It may be stated that it was conceded by the learned counsel for the petitioner that violation of rule 23 does not furnish a ground for cancellation under section 46 of the Trade Marks Act. This contention could, therefore, be ruled out of consideration on that short ground. There irregularities or illegalities committed in the course of registration proceedings can be made a ground of attack against the decision of the Registrar to accept an application for registration under section 76 of the Act which provides for an appeal against such a decision. The period of limitation for such an appeal as provided by rule 84 of the Revised Trade Marks Rules, 1963 is four months from the date of decision. No appeal having been filed against the aforesaid decision, the same has attained finality and is not liable to be questioned in these proceedings on the grounds available to the petitioner in appeal. The cited decision was also given in an appeal filed under section 76. The scope of the present proceedings under section 46 is obviously limited to the grounds prescribed by the said provision. How-. Ever, even on merits I find that the objection is untenable. The bare perusal of rule 23 shows that the mandatory requirement for search of identical trade-marks registered or pending registration has reference to the time when an application for registration of a trade mark is received by the Registrar and, thereafter, it is the discretion of the Registrar to renew such a search before the acceptance of the application, but in the express words of the Rules he is "not bound to do so". It is, therefore, obvious that the provisions regarding search and notice relate only to such person whose mark is already on the register or whose applications are pending at the time of receipt of a fresh application for a similar trade mark. It is, therefore, not a mandatory requirement of law for the Registrar to issue such a notice to persons whose applications are received subsequent to the application in question. In the reported decision the impugned registration was made on an application of the respondent which was subsequent to a pending application of the appellant and it was, therefore, held that the procedure adopted was in violation of rule 23. In the present case respondent No, 1 had applied for registration on 4-12-1974 whereas the application by the petitioner was received by the Registrar on 22-8-1975.
(1) PLD 1973 Kar. 279 ' The case of the petitioner, therefore, does not fall within the ambit of the mandatory part of rule 23 and as such the registration of respondent No, l's mark without notice to the petitioner was not vitiated on account of any illegality, as he was not entitled as a matter of right to receive notice of a prior application for registration. The second objection also, therefore, fails.
11. ' No other contentions was advanced.
12. ' In the result, there is no merit in this application which is dismissed with costs.