' ALI NAWAZ CHOWHAN, J.---This is an appeal under section 76 of the Trade Marks Act, 1940 against the findings dated 9th of April 2003, passed by the Registrar of the Trade Marks.
2. The controversy in this case is with regard to the Trade Mark Hafiz Sweets. The findings came about because of an application by the respondents for the purpose of registration of the Trade Mark Hafiz Sweets, wherein it was claimed that this Trade Mark was being used by the respondents side since 1997. This application was numbered 148800 in Class 30. Later, it was accepted and advertised in the Trade Mark Journal No,577 on the Ist of February, 1999.
3. The present appellants filed a Notice of Opposition under section 15(2) of the Trade Marks Act, 1940. Later, the respondents also filed their counter-statement in support of their registration application under section 15(3) of the Trade Marks Act, 1940.
4. The Registrar disallowed the opposition through the order impugned. The objections inter alia raised against the decision of the Registrar were as follows:--
(a) That the Registrar did not advert to the appellant's evidence nor discussed the same.
(b) That the Registrar did not take into consideration the factors which were prevailing on the date of the application made by the respondents for registration.
(c) That the word Hafiz had become publici juris in the business of the sweets and being common to trade, it cannot be applied for as a Trade Mark.
5. It is said that Hafiz was not publici juris and that the names like, Ghausia, Sufi, Qadri have already been registered at Trade Marks. In this connection reference was made to the following cases:-- ' Multani Sohan Halva v. Registrar of Trade Marks, Karachi 1987 CLC 1448; ' Muhammad Ismail through Mst. Shamim Akhtar and 8 others v. Messrs. Soofi Soap Factory PLJ 1973 Lahore 208.
' That the crucial question was as to who was I is prior user and thus proprietor of the Trade Mark Hafiz'.
6. On the issue of prior user it was said that the respondents had applied way back on the Ist of July, 1998 while claiming the use of the Trade Mark since 1997, and the application for the appellants side was dated March 17, 2001, i,e, 2-1/2 years later. That no evidence was produced in support of prior user by the appellants who also did not file income tax documents, whereas the respondents had filed documents such as balance-sheet, sale invoices, bills of advertisement, income tax assessm ent order, all reflecting the use of the Trade Mark since 1997.
7. Learned counsel for the respondents while relying on the case cited as Zakauddin v. Muhammad Zahid and 2 others PLD 1993 Karachi 766 stated that in case of doubt with respect to the prior user, the date when the application for registration was made, can be relied upon.
8. It was the respondent's case that merely because some other persons were using the Trade Mark while infringing the law, it does not mean that such a Trade Mark had become common to the trade (publici juris). In this connection, it was stated that the respondents have filed a case against such infringement. In support of this contention, reliance was placed on the following case-law:-- ' W. Woodward Ltd. And another v. Hakimullah idiqui NLR 1981 UC 377.
' Cecil Dr. Cordova and others v. Vick Chemical Company PLD 1951 PC 108.
9. It was contended that the word Hafiz' was registered with only one more company, who had also filed opposition which was disposed of by the Registrar while laying certain conditions as reflected in his decision.
10. The word publici juris actually means when something is declared common to the trade or commerce and in the context of our law, it is the Registrar who has to determine this question and to decide whether a word was public juris or not. In this connection, a reference may be made to the following excerpt from the case of Multani Sohan Halva, Hussain Aghahi Multan v. The Registrar of Trade Marks, Karachi 1987 CLC 1448:-- "The other plea regarding publici juris is also not acceptable, because in the Trade Marks Act, a word becomes publici juris when it is declared common to the trade by the Registrar of Trade Marks, and for declaring a particular word/mark as common to trade or in other words becoming publici juris, the sole and final Judge is the Registrar of Trade Marks himself. In Re: National Starch Manufacturing Co. v. Munn's Patent Maizena and Starch Co. 1894 A. 275/63 LJPC 112, it was stated as follows:-- "Where applicant in 1889 registered in the Colony under B the Trade Marks Act, 1865 word Maizena which they had invented in 1856 registered and enforced in other countries, but for a quarter of century allowed to be used in the Colony as a term descriptive of the article and not of their own manufacture thereof; held the word had thereby become publici juris and was no longer registrable as a trade mark. See page 324 of the English and Empire Digest, Volume 43."
' In the instant case the word Hafiz was adopted by the registered proprietor in the year 1963 and he worked thereon since then continuously and without any interruption, let or hindrance and at no stage it has been established that the word in question was abandoned by the registered proprietor. Then how the applicant can come out with the plea that the word Hafiz has become publici juris."
11. The three important cases pertaining to the question of common use, use of a surname and adopting a surname as a Trade Mark, and using the geographical name as a trade name were considered and discussed and the relevant excerpt from the judgment ibid clarifies the position.
The relevant portion says:-- "In the first cited case Messrs Cadbury Brothers Limited applied for registration as a trade mark a label in class 42 in respect of Chocolates containing the word 'Tudor Chocolates made by Cadbury". The Registrar of Trade Marks refused to register it unless there was disclaimer of right to the exclusive use of the word "Tudor". On appeal it was held that the registration of the label as a whole could give no statutory right in respect of the word 'Tudor" and, therefore, it was inexpedient to place on the Register unnecessary disclaimer. The Registrar was accordingly directed in that case to proceed with the application without imposing any condition as to disclaimer. From the discussion at page 451 of the report it appears that the learned Judge was of the view that the word "Tudor" could not have been registered separately because it was a surname. On the basis of the above discussion in the Tudor's case the learned counsel urged that like 'Tudor" "Hafiz" is also a surname and, therefore, it cannot be monopolized by anyone by obtaining its registration under the Trade Marks Act. In the order of the Registrar dated 28-3-1979 relevant part whereof is reproduced above, the Registrar found that 'Hafiz' is neither descriptive nor it is a surname, and is capable of being registered as a trade mark. The above conclusions of Registrar are based on cogent reasoning and the learned counsel was unable to advance any argument to persuade me to take a contrary view. I am, therefore, of the view the t Tudor's case is of no assistance to appellant.
' In the second cited Diamond's case, Diamond T. Motor Car Company of US.A. Applied for registration of their trade mark "Diamond T' with a device of diamond. The Registrar of Trade Marks refused to accept the application on the ground that the mark was not a distinctive mark within the meaning of English Trade Marks Act, 1905 and that the device of diamond was common device in the motor trade. On appeal the application was ordered to be proceeded subject to the condition that the applicant should disclaim any right both to the exclusive use of diamond- shaped border and also to the exclusive use of the word diamond. It is quite clear that the decision in the above case proceeded on the ground that the word "Diamond" and diamond shaped border were common to the trade of motors. Firstly, there is no such evidence in the present case that the word "Hafiz" with descriptive matter on the label of respondent No,2 is common to the trade. Apart from it, the Registrar in his order found that the mark "Hafiz" has become distinctive of the goods of respondent No,2 by long user since 1963, I am, therefore, of the view that this case too did not advance the case' of the appellant in any manner.
' The last case relied by the learned counsel for the appellant is York's case reported in 1983 Pak. SC Cases 508. In that case the Registrar had refused to allow registration of a trade mark which consisted of the word "York" on the ground that the proprietor could not be allowed to monopolize the name of an important city. On appeal the judgment of the Registrar was reversed and it was held that as the mark was factually distinctive of the proprietor and he was entitled to its registration. On a further appeal to the House of Lords it was held that as the name "York" possesses an industrial character such that other traders, in related fields, might want to use it, it could not be said that the Registrar has wrongly exercised his discretion in refusing to allow the respondents application for registration of the trade mark. This case is quite distinguishable as in that case a geographical name was sought to be registered as a trade mark which is prohibited under the Trade Marks Act.
' The observation in the aforementioned case answers some of the questions raised by the learned counsel for the appellants.
12. On the question of user, the impugned finding of the Registrar Trade Marks referred to the factual position has not been stultified cogently before this Court. Paragraphs 13 to 20 of which being relevant are reproduced below:-- "First of all, I would like to take up for consideration the Opponent's request on Form TM-16, for amending the period of user from 2001 to 1997. It is pertinent to note that this request was filed by the Opponent on (date missed) much after filing their Application No,169566/30. No evidence of user was initially filed with the Notice of Opposition (TM-5) as required by rule 31 of Revised Trade Marks Rules, 1963. Even the evidence subsequently filed does not prove any use of the Trade Mark by the Opponent before the date of filing of their TM-16 is 1997 which is the same as the use claimed by the applicant in their Application No,148880.
(14) A request on TM-16 is entertained by TMR by virtue of the powers conferred by section 14(3) of Trade Mark Act, 1940 which reads as under:-- "14(3) The Tribunal may at any time, whether br. Ore or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as it may think fit."
' It is obvious that the power to allow any amendment to the application (TN-1) is discretionary with the Registrar who has to exercise the said discretion judiciously. As already observed the Opponent did not at first file any evidence in support of TM-5 and even now when such evidence has been filed, it does not prove any use of the Trade Mark by the Opponent since 1997 as now sought to be claimed by way of filing TM-16. In my view, the filing of TM-16 is an afterthought and India fide.
Apparently, it has been filed with the notice to match with the applicant's user without considering the fact of using the mark. Hence TM-16 is rejected.
(15) The next point which is urged on behalf of the Opponents is that all the applications seeking to Register the word "Hafiz" should be heard together. In this connection, learned counsel has cited the following judgments of the Honourable Supreme Court and High Court:-- ' 1992 SCMR 2323 1991 MLD 2402 ' PLD 2000 Karachi 298.
(16) I am bound by the principle of law laid down by the Honourable High Court and respectfully follow the said decisions and as desired by the learned counsel of the Opponent. I am taking up this opposition as well as Opponent's Application No,169566 together in order to avoid possible conflict in this decision.
(17) It is noteworthy that the word "Hafiz" is already registered vide Mark No,62517/30 as of date 11-7- 1995. The Registered Proprietor of the said Trade Mark No,62517 had also opposed the applicant's same Application No,148880 in Opposition No,485 of 2001. The said 'opposition has already been disposed of by TMR's order dated 13-12-2003 pursuant to the undertaking given by the applicant in that case and on the basis of honest concurrent use established by the applicant. No intimation has been received in TMR about any appeal filed by any party against the said order dated 13-12- 2002, which has thus attained finality as between the said parties.
(18) In the said opposition Case No,485 of 2001 as well as in the instant Opposition No,498 of 2001, the applicant has filed authentic documentary evidence showing Tat many sweets meat shops have been set up in Lahore, Gujranwala, Sheikhupura etc.
(19) It is evident from the said proved fact that the applicants have spent millions of rupees in opening these shops from 1997-1998 onward and that they have been continuously using their Trade Mark since 1997.
(20) It is, therefore, established fact that Trade Mark "Hafiz" has become distinctive of the applicant's goods who have gained recognition for the name of "Hafiz" for sweets by virtue of long, extensive and continuous use since 1997."
13. On the question of prior user, we have already the dates of the applications made by the both sides and we find that the application made by the appellants was after a delay of two and a half years from the publication of the Trade Mark of the respondents in the Trade Mark Journal.
14. After hearing both sides, this Court is not inclined to interfere with the decision of the Registrar Trade Marks which is upheld and this appeal is dismissed having no merits.