1. ' MRS. YASMIN ABBASEY, J.---By this common order, I intend to dispose of Miscellaneous Appeals Nos.43 and 44 of 2002. It appears that, appellant applied for the registration of a trademark "Emco" under section 14(1) of the Trade Marks Act, 1940, for goods falling in class VI. It seems that, before the application was summarily rejected after show-cause notice.
2. ' It was contended by the learned counsel for the applicant that, section 10(2) of the Trade Mark Act, 1940 permits registration of same or identical mark in respect of same class of goods by more than one proprietor. Learned counsel strenuously urged that, when the law permits registration of the identical and or similar mark in favour of two or more proprietors there was no reason for the Registrar to deny such registration. It was next contended, that even otherwise, letter of consent from Emco Industries Limited, Lahore in whose favour mark "Emco" was already registered in Class VI was also filed, which was not taken into consideration. It was vehemently urged that the appellant is entitled for the registration of the mark, impugned decision may be set aside, application for the registration of the mark, be advertised and objections, if any, be decided in accordance with law.
3. ' Mr. Saleem Ghulam Hussain, learned counsel appearing for the Registrar Trade Marks, contends that no case for indulgence has been made out. According to him, Registrar acts in the interest of public to ensure that no mark is registered that may deceive or cause confusion. It was contended that the mark Emco as applied for by the appellant is already registered in same class for the same category of goods in favour of another proprietor. According to him, if two identical marks are allowed to be registered in favour of two different proprietors it for sure would create more confusion in the mind of unwary purchaser. In order to avoid confusion in the mind of general public Registrar has rightly declined the application.
4. ' Mr. Saleem Ghulam Hussain, further pointed out that the consent of Emco (Pvt.) Ltd., as being relied by the learned counsel for the appellant dated June 11th, 2001, which is subsequent to the date of the impugned decision dated 28-3-2001.
5. ' Learned counsel for the appellant, when confronted with the above position stated that the appellant was not aware of the impugned decision, as it was never communicated. The decision only came to the notice of the appellant on 4-8-2001.
6. ' I have heard the learned counsel, perused the original record as produced by Mr. Saleem Ghulam Hussain learned counsel for the respondent.
7. ' On examination of original file, it appears that the appellant was represented through a counsel before the Registrar when the matter was fixed on 3-12-2001, on which date the case was adjourned to 12-2-2002 and then to 3-3-2002. On the last mentioned date none appeared and it was ordered "mark does not fulfil the needs of section 10(1) and section 8(a) of the Trade Marks Act, 1940 on the basis of cited registered mark hence refused". It seems that when the appellant applied for the reasons for the decision, reasons dated 28-3-2001 was communicated to the appellant on 17-8-2002.
8. The Registrar on receipt of the application for registration either refuses the application or accepts it subject to such amendment, modification, conditions or limitations if any, as he may think fit.
9. Section 10(1) ibid prohibits registration of identical or deceptively similar trade mark, which belongs to a different proprietor in respect of same goods or description of goods. The prohibition to register identical and deceptively similar trade marks in subsection (1) is controlled by subsection
(2) of section 10 ibid. Discretion of Registrar to register more than one identical or similar mark, within the contemplation of section 10(2) of the Act of 1940 is not arbitrary. The applicant claiming registration of identical or deceptively and confusingly similar mark has to show either "concurrent user" or "other special circumstances". Initial burden is on the applicant to prove to the satisfaction of the Registrar that it is in his "honest and concurrent use" or "other special circumstances". The appellants in case in hand do not A claim honest and concurrent user, at the best they could press "other special circumstances". Phrase "other special circumstances" as used in subsection (2) of section 10 ibid has not been defined under the Act of 1940. In the opinion of Indian Supreme Court expressed in the case of London Rubber Co. v. Durex Product In AIR 1963 1882 "Other special circumstances" must be connected with the use of the mark. These include any circumstances peculiar to the application in relations to the subject-matter of the application and this includes use by an applicant of his mark before the conflicting mark was registered or used. In said case, it was further held that "socio-economic consideration of the use of the article is not a relevant consideration."
10. ' Contention of the learned counsel for the appellant that "Letter of Consent" from the holder of Trade Mark "EMCO" was placed on record does not appeal to me. As rightly pointed out by Mr. Saleem such letter of consent is subsequent in date. B "Letter of Consent" of the Emco Industries Ltd.
11. Lahore, dated June 11, 2001 obviously could not be available when the application was dismissed on 3-3-2002 by short order followed by detail reasons dated 23-3-2002.
12. ' Mr. Saleem Ghulam Hussain, learned counsel for the Registrar, however, concedes that appellant may apply afresh claiming registration of mark applied for on the basis of letter of consent and the application shall be decided in accordance with law.