1. ' MRS. YASMIN ABBASEY, J.---As common question of law and facts are involved in all these three Miscellaneous Appeals Nos.2, 3 and 4 of 1989 in between the same parties, therefore, they are being taken together.
2. Facts leading to these Miscellaneous Appeals are that on 19-7-1971 Messrs Wella Aktiengesellschaft got registered trade mark of his company as Wellaform for goods falling in class 3 i,e, soap, perfumery, essential oils, cosmetics, products for cleaning, conditioning and embellishing the hair, including hair shampoos, dry shampoos, hair lotions, hair dressing creams, hair care products, hair sprays, permanent waving solutions, bleaching preparations, neutralizing agent, hair dyes, hair colouring products, hair fixing preparations, hair toning preparations, hair setting lotions.
3. ' According to them they got their trade mark renewed up to 19-7-1993, but due to restriction of import on the items referred above vide Import' Policies Order issued from 1979 to 1985. They were not able to sell their products in Pakistan. In the meanwhile Messrs Shamim Akhtar who was using trade mark Wella since 1984 applied for its registration under No,87457 in class 3. Trade mark registry raised an objection under section 19(1) and 8(a) of Trade Marks Act on the ground that trade mark "Wellaform" is already existing for the very product under class 3. Being dissatisfied with the objection, applications for rectification were moved by 'respondent No,1 and by impugned order dated 21-9-1988 all the three applications were allowed which have been assailed in these miscellaneous appeals.
4. ' Both the learned counsel have submitted their written arguments. Contention of appellant is that by Import Policies Orders issued from time to time i,e, from 1979 to 1985 there was ban on import of cosmetic items as appearing in schedule of them. Therefore, they were not able to do their business in Pakistan under the above trade mark, but had supplied their products in Pakistan through Non-Wella Export companies to the members of diplomatic staff of various embassies in Pakistan. Samples were also supplied to individual companies for procuring business and for manufacturing their goods in Pakistan through them under a licence. Therefore, the case of respondent No,1, of non-using of trade mark since long by the appellant is based on mala fide intention.
5. ' Whereas the case of respondent No,1 is that this trade mark "Wella" was got registered by the predecessor in business of appellant viz. Messrs Rapid Limited London for cosmetic and other items in class 3 on 28-9-1949. It is alleged that Messrs Rapid Limited London themselves were also not bona fide while obtaining trade mark "Wella" for cosmetic and other items of class 3, as they were not doing business in the field of cosmetic and thus they did not use this trade mark-up to 1959.
6. However, on 7-1-1959 this mark was assigned by them to appellant. Appellant who too is a German company got it mg: stered in their name on 19-7-1971 but since the date of registration i,e, from 1971 till the date of application for rectification they had not used this mark.
7. ' Therefore, according to respondent No,1 after a thorough search about the availability of products in the market for the applied trade mark "Wella" and spending a substantial amount on its publicity are aggrieved person as defined in section 46(2) of ibid Act, they filed application for rectification.
8. ' To examine the question that whether respondent No,1 was aggrieved person within the meaning of Trade Marks Act, 1940. It would be appropriate to examine the case from the very root of registration of trade mark. Section 14 of Act defines that who can apply for a trade mark. Bare reading of section provides that person claiming or be the proprietor of a trade mark used or proposed to be used by him and is desirous of registering can apply for its registration to the Registrar. The terms "used" or "proposed to be used" in the section indicate to the manufacturing and business carried out by the proprietor of goods in that particular class and the mark sought to be registered, was in use anterior to making of application. Thus a person could apply for registration of trade mark if he had and have been using that trade mark for his products or propose to use the same in future. If in context to this definition of registration the very applications moved by appellant for registration of trade mark 1971 are looked into, that reflect that except detailing the goods being manufactured and marketed by them at their business address in Berlin Allee 65, 61 Darmsladt, Germany, nothing has been declared by them that whether the mark sought to be registered by them is being used or proposed to be used by them in future and if used then since when, because all the respective columns had been left blank while moving application for registration of mark, which at the very outset indicate that appellant was not bona fide in applying for the same.
9. ' It is also pertinent to note that after getting the trade mark registered on 19-7-1971 named as "Wellaform" the admitted fact is that appellant is not using the same since the day of its registration on the ground of imposition of ban on import of products because of Import Policy Order being issued since 1979-80 to 1984-85.
10. ' In the circumstances the step taken by respondent No,1 by moving application for rectification that as appellants are not using the trade mark for more than 5 years therefore, the trade marks registered in name of appellant in all the three miscellaneous appeals be removed from the register of Registrar. Trade Mark, appears to be within the framework of law, for proper appreciation of case it would be beneficial to reproduce section 37 of the Trade Mark Act, 1940 which reads as under:-- "37. Removal from register and imposition of limitations on ground of non-use.---(1) Subject to the provisions of section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered, on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either:--
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the me being up to a date one month before the date of the application; or
(b) that up to a date one month before the date of the application, a continuous period of five years or longer has elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, expect where the applicant has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application made under clause (a) or clause (b) in relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relations to goods of the same description, being goods in respect of which the trade mark is registered.
(2) Where in relation to any goods in respect of which a trade mark is registered:---
(a) the circumstances referred to in clause (b) of subsection (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Pakistan (otherwise than for export from Pakistan), or in relation to goods to be exported to a particular market outside Pakistan; and
(b) a person has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of those good s under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the Tribunal is of opinion that he might properly be permitted so to register such a trade mark.
11. ' On application by that person in the prescribed manner to a High Court or to the Registrar, the Tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.
(3) An applicant shall not be entitled to rely for the purpose of clause (b) of subsection (1) or of subsection (2) on any non-use of trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use of the trade mark in relation to the goods to which the application relates."
12. ' To controvert the allegations of respondent No,1, if the statement of appellant that on account of legal restrictions imposed by Government through Import Policies Order referred above in respect of import on subject goods is taken into consideration to believe that it was not a deliberate failure on the part of appellant, then no reason has been assigned by appellant that the even if this restriction from 1979 is taken into account for non-use of trade mark, then what were the special circumstances which restrain them from the use of it from 1971 to 1979 as no such plea of restriction during the period was ever pleaded by appellant. Mere getting the trade mark renewed for the last 15 years is not a valid ground for maintaining the same without using it on the register. Because even if the period when there were restriction is excluded while counting the period of non-use then also the undisputed fact that appellant is not using the same since the date of its registration brings him within the ambit of section 37 of the Act of non-using for more than 5 years. The statement of respondent No,1 at least to the extent that before applying for registration "Wella" as trade mark for their products, he had made a thorough search in the markets of Pakistan, and after ';atisfying themselves about non-existence of any goods with the registered trade mark adopted the trade mark of "Wella", which respondent No,1 is using since 1984 after incurring a huge amount in this reference too has not been denied by the appellant.
13. ' To show the bona fide use of trade mark the conduct of party is very much material. The observation made in 1988 CLC 252 are very much relevant in this connection, which reads as under:-- "The important factor however, to be kept in mind while deciding the above fact is whether the actual non-user of the trade mark resulted on account of any intention on the part of the registered proprietor to abandon the mark or on account of certain other factors which would amount to special circumstances for such non-user.
14. ' Here, again, while considering the other factors, it is not merely the attendant or attached circumstance to any particular individual business which is relevant but a special circumstances of the kind which affects or applies to all the traders in the particular trade. In other words if peculiar or abnormal circumstances exist which has resulted in the non-use of the trade and over which the registered proprietor had no control then the requirement of section 37(3) regarding existence of special circumstances for non-use of the mark shall be deemed to have been fulfilled.
15. It will thus be seen that if there are circumstances which make ordinary uses of international trade impracticable then such circumstances would amount to existence of a 'special circumstance' resulting in the non-user of the mark by the registered proprietor. In the case before me it is common case between the parties that there existed from the beginning a complete ban on the import of detergent in Pakistan. These restrictions on the import of detergent in Pakistan are into restricted to affect the business of any particular individual but all the traders dealing in the import of detergent are affected by these restrictions. I am, therefore, of the view that non-use of mark by the appellant on the goods is the result of import restriction on such goods, which constituted a special circumstances within the meaning of section 37 of the Trade Mark Act, and, therefore, the Registrar was not justified in ordering removal of their mark from the register."
16. ' Whereas in the present case as discussed above appellant has not been able to prove that during the period when there was no ban, had appellant traded under the mark.
17. ' However, if it is taken that non-use of trade mark by appellant was due to government restrictions then also section 28 of Trade Mark Act facilitates such proprietor of trade mark to assign and give receipt to any other person for its use. The other alternative available to the appellant was to appoint someone as registered user to show his continuity in the business under the registered trade mark as it is a settled principle of law that if non-use of a trade mark in respect of any product during the whole period of five years immediately preceding the application for rectification is proved without showing any special circumstances, then the proprietor of such trade mark is not entitled to retain it any more. Reference is made to 1932 RPC Vol. 49.621. The observation made in the citation referred as 38 RPC 155 are very much material wherein on an application for removal of Trade Mark "Aladdin" for soap, even under the circumstances when besides other ground taken by the respondent of non-use of trade mark, it was also pleaded that "owing the war it had not been possible to obtain such dies, and respondent's "business had been restricted generally, and that they intended as soon as conditions should become normal they will continue to manufacture and sale of soap under the name Aladdin."
18. ' It was observed that:-- "There had been no bona fide user of the mark during the five years immediately preceding the application, the such non-user had not been due to special circumstances in the trade, and that the case came within section 37 of the Trade Mark Act, 1905-1919 and order was made of removal of Trade Mark from the Register."
19. ' PLD 1969 SC 477 further confirmed the observation referred above made at back in 1921 that:-- "In absence of sale by the respondents since 1949 possibility of confusion and deception contemplated in section 8 of Trade Mark Act did not exist."
20. ' An unreported judgment of this very Court in Miscellaneous Appeal No,2 of 1983 viz. Crescent Pencils Ltd. v. Indus Pencil Industries and others has been placed on record wherein a like point was raised and it was held that:-- "A party is entitled to apply and obtain registration in respect of goods he is manufacturing or proposes to manufacture provided he complies with all the requirements of law. But to apply with the intention to assign it should be looked with caution and suspicion as such action is bound to develop unhealthy corrupt practice which may lead to filing application or obtaining registration of dummy trade marks for the purpose of trafficking in trade mark which may lead to several complications and even blackmailing. Such unhealthy practices should be discouraged as they are bound to frustrate the intention of the legislature to protect the goods and products and the consumers alike."
21. ' In reply learned counsel for appellants has referred 1981 SCMR 1039 wherein it is held that:- " A foreign manufacture and seller of certain types of wearing apparel under trade mark jockey exporting its product under such mark to Pakistan but on import of such items being banned not selling its products in Pakistan but having had high hopes of selling products in Pakistan some days got his mark registered in Pakistan. Some year later a Pakistani company commencing to sell like sort of wearing apparels under Trade Mark 'Jockey' and applied to Registrar of Trade Mark for its registration and also applied for striking off foreign company's Trade Mark jockey' and from register of trade marks on ground of foreign company having stopped selling its products in Pakistan and no longer remained in position to sell them because of import restrictions. Their lordships were pleased to hold that fact of foreign company having not been selling its products in Pakistan because of Import Restrictions did not entitle the Pakistani company to copy foreign company's trade mark, since by doing so it deceives public into thinking that its products are the product of the foreign company."
22. ' But the case as referred by learned counsel for appellant is not applicable in the matter became in the referred case that foreign company was importing its goods under the trade mark to Pakistan and during that marketing a ban was imposed whereas in the present case the record reveals that appellant after getting the trade mark registered had never used the same as no act of manufacturing or use of trade mark is ever appearing during the whole period from the date of registration till to the application for rectification filed by the respondent. Therefore, it would be very irrelevant to say that because of import policy order appellant was restrained to do business under the trade mark. So the point raised by appellant that the same trade mark will create confusion and deception in the minds of general consumer would be redundant, because the question of confusion and deception arose when the first owner of trade mark had a market and his products are being used by consumer in a particular name, whereas in the present case as discussed above appellant does not hold any market of particular or general class of consumer. Supply of sample to the members of embassy can in no way be termed as use of trade mark.
23. ' In contrary to it, it has been proved by the respondent that after spending a big amount on the thorough search that no product under the name of trade mark "Wella" is being supplied in the market, he applied for registration of that mark.
24. ' To support his arguments learned counsel for applicant has referred 16 RPC 411 wherein it is observed that:-- "There had been no real user of the two registered marks before or since registration, and that they had been registered in Class 42 without any bona fide intention to use them in the class."
25. "The Trade Mark Acts are not for copyright in marks, they are to protect trade marks. If you have no goods you are claiming only copyright, you are not claiming for the purpose of protecting your trade." "bona fide intention to use at the time of registration is sufficient."
26. ' PLD 1962 Karachi 355, wherein it is observed that:-- "The respondents have no market of this trade mark in respect of any goods in this country. They have no reputation and as such there can possibly be no deception or confusion in the mind of the public of this country that the goods manufactured by the appellants belonged to the respondents. In these circumstances the respondents had not established a reputation for their mark upon which an opposition could be founded. The learned Deputy Registrar therefore, was not justified in refusing registration of "Nabisco" trade mark in favour of the appellants."
27. The upshot of above discussion is that appellants have not been able to establish that they were ever the bona fide user of trade mark since 1971 to onward at any stage. Thus the order passed by Registrar Trade Mark was in accordance to the circumstances prevailing in the matter and that appellant was admittedly non-user of it's trade mark for the last five consecutive years. Appeal disposed of as dismissed having no merits.