' MUHAMMAD SADIQ LEGHARI, J.---The facts relevant for the decision of present civil miscellaneous appeal are that on 23-6-1976 M/s Hussain Steel Industries, Gujranwala (hereinafter referred to as 'the respondent') got trade mark consisting of word ATLAS registered in their name under Registration No,64190 in class II dated 23-6-1976 in respect of installation of sanitary and water supply goods.
2. On 18-9-1982 M/s. Universal Engineering Company, Gujranwala (hereinafter referred to as 'the appellant')_ got trade mark consisting of word 'ATLAS' and device of globe registered in their name under No,77779 and 72449 both in class II in respect of gas appliances i,e, Gas Water Heater, Gas Room Heater and related gas equipment.
3. Both of the above industries were carrying on their respective business under their registered trade mark in 1990 the respondent filed an application to the Registrar of Trade Mark, Lahore for registration of trade mark consisting of word 'ATLAS' on label in respect of gas appliances.
4. After advertisement of the application in Trade Mark Journal No,470 for the month of March, 1990 the appellant field opposition to the registration of the trade mark. They pleaded that they have been carrying on the large and reputable business as manufacturers and merchants of gas appliances under Trade Mark 'ATLAS' with device of globe since 12 years and due to good quality of their products and exclusive publicity compaign the trade mark 'ATLAS' has exclusively become associated with them in respect of said appliances. They also asserted that they have acquired substantial reputation and goodwill among the purchaser id the respondent want to adopt their Trade Mark 'ATLAS' in respect of same goods i,e, gas appliances just to take advantage of their goodwill and reputation. They also asserted that use of same Trade mark i,e, `ATLAS' in respect of identical goods are bound to deceive and confuse the customers. In the last they prayed for rejection of the request for registration of the trade mark.
5. The Registrar overruled the objections filed by the appellant and accepted the application of respondent vide order dated 18-3-1996. It has been assailed through present civil miscellaneous appeal.
6. On 15-9-2005 the arguments were heard and the appeal accepted by short order. Now I proceed to record the reason thereof.
7. Mr. Zahid Jamil, the learned Advocate appearing for the appellant contended that the Registrar repelled the objections of the appellant and granted the application on the ground of concurrent use, illegally in violation of the provisions of sections 8 and 25 of the Trade Marks Act, 1940. He further contended that the learned Registrar ignored the appellant's exclusive right to use Trade Mark `ATLAS' in respect of their products of gas appliances under the colour of so-called concurrent use ignoring the element of confusion and deception which is bound to be present among the purchasers. He further contended that in fact the respondent had not claimed user but the Registrar evolved that ground artificially stretching the trade mark registered in the name of respondent in respect of sanitary and water supply goods.
8. Mr. Sultan Ahmed Shaikh, the learned Advocate representing the respondent No,1 defended the impugned judgment contending that the respondents were owners of Trade Mark 'ATLAS' in respect of the goods in class II which was registered earlier than the registration of the same trade mark in appellant's favour. He further contended that since the gas appliances are also in class II the Registrar had rightly recognized the right of concurrent use in respondent's favour. Additionally he argued that the impugned registration of trade mark in respondent's favour was granted in the light of principle of associated trade mark recognized by section 12 of the Trade Marks Act, which is mandatory in nature.
9. As regards the plea of associated trade mark, it has been taken first time before this Court at appellate stage. Even otherwise it appears to have been taken due to misconception as respondent never got Trade Mark 'ATLAS' registered as associated trade mark under section 12 of the Trade Marks Act. In absence of any such registration the arguments are baseless. Even impugned order does not refer to section 12 Trade Marks Act.
10. As concerns the right of honest concurrent use under subsection (2) of section 10 Trade Marks Act it can legitimately be said that the respondent had not claimed the registration on the basis of honest concurrent use. On the contrary, the record specially the examination form shows that trade mark was proposed to be used by them in future. Although the Registrar has mentioned that Trade Mark 'ATLAS' initially registered in respect of sanitary and water supply goods in favour of respondent was extended in 1985 in respect of gas appliances but no evidence is on record to show that any such extension was granted or the respondent applied for registration on that ground. Under no provision of the Trade Marks Act a-iy such extension could be granted in this way in respect of the goods for which the same trade mark had already been registered in favour of some other industry. For the sake of arguments, if there was any such insertion of gas appliances without invitation of objections and that also in presence of registration of that trade mark in favour of the appellants in 1982 that was ab initio void. Thus the Registrar has illegally treated the respondent as owner/user of Trade Mark `ATLAS' in respect of gas appliances since 1985.
11. Moreover, for registration of a trade mark on tl ie oasis of its honest concurrent use subsection
(2) of section 10 of Trade Marks Act is not to be read in isolation of section 21 of the same Act which confers the exclusive right of use to the proprietor of the trade mark in respect of the goods for which it has been registered. The provisions of section 2 I are subject to the provisions of sections 22, 25 and 26. Out of them section 25 deals with the subject of concurrent use of the trade mark under subsection (2) of section 10. It protects the request for and registration of the identical and resembling trade mark relating to same goods under section 10(2) Trade Marks Act, only when the use of trade mark by the subsequent applicant was prior to the use/registration of the earlier one.
In resent case no such evidence is available which could establish the use of the trade mark by the respondent in respect of the gas appliances before 1982 when the Trade Mark `ATLAS' was registered in the name of appellants in respect of the gas appliances. Therefore, they have exclusive right in use of the trade mark in respect of the gas appliances.
12. Even otherwise the element of deception and misleading the purchaser shall always remain present, if the same trade mark is used in respect of the identical or same kind of goods. In presence of such possibility the user even if honest is disentitled to any protection by Court of justice. In famous case of Toshiba Corporation reported in PLD 1991 SC 27, it has been held that in a case where deception and confusion are the grounds of opposition, honesty of intention in user cannot be of any avail.
13. In view of the above, registration of Trade Mark 'ATLAS' in the name of respondent in respect of gas appliances was illegal. Also the opposition filed by, the appellant was rejected wrongly rather illegally.
14. Above are the reasons for short order dated 15-9-2005.