1. ' KHILJI ARIF HUSSAIN, J.---The above referred two appeals are arising out of common impugned order and we would like to dispose of the same by this order.
2. ' Brief facts for the purpose of deciding the appeals are that the appellant in HCA No,404 of 2008 applied for registration of trade mark of Jasmine tissues and Lilly tissues in clause 16. After advertisements of the trade mark published in trade mark journal, dated 1-9-2007 and as no objections were received the trade mark was registered in the name of the appellant and certificate of registration of trademarks and of original trade mark were issued on 1-3-2008 by the respondent No,3. The appellant alleged that after registration of trademarks he came to know that respondent No,1 with connivance of respondent No,3 has obtained registration of the said trade marks in its favour and filed J.M. No,14 of 2008 and J.M. No,18 of 2008 to expunge from register of the trade mark, Trade Mark No,184817 and Trade Mark No,65562 in Class 16. The appellant also filed Suits Nos.571 and 572 of 2008 for grant of permanent injunction restraining the respondent from infringement of trademark "Jasmine tissues" and "Lilly tissues" of the appellant and for account for the profit wrongfully made by the use of trade mark Jasmine and Lilly. Tissues and further to pay a sum of Rs,85,00,000 as damages.
3. ' The respondent filed application under section 10 of Civil Procedure Code to stay the proceedings pending decision of Suit No,05/01 of 2008 filed by respondent before District Judge Peshawar. It was alleged in the application that prior suit between the same parties, litigating under the same title and pertaining to same matter and decision is pending before the competent Court of jurisdiction at Peshawar wherein on 14-2-2008 injunction was granted in favour of the respondent against the appellant.
4. ' After hearing the learned counsel for the parties, applications under section 10, C.P.C. Filed in J.M's. And suit's were allowed and proceedings were stayed till the disposal of the Suit No,05/01 of 2008 pending adjudication before the District Judge Peshawar, however, it was ordered that the interim order passed in these proceedings will continue to operate till final disposal of the J.Ms and suits filed by respondent No,1 before the District Judge Peshawar.
5. ' It was further ordered that if Suit No,05/01 of 2008 decreed, then J. Ms. Nos. 14 and 18 of 2008 and Suits Nos.571 and 572 of 2008 will be dismissed without any order, and if the suit filed by the respondent will dismiss, then J.Ms. And suits filed by the appellant in H.C.A. No,404 of 2008 will proceed on merits.
6. ' Heard, Mr. Muhammad Nadeem Qureshi Advocate for the appellant and Mr. Amir Javed Advocate for respondent No,1.
7. ' Mr. Muhammad Nadeem Qureshi Advocate for the appellant argued that appellant filed J. M.
8. Under section 73 r/w section 80 of Trade Marks Ordinance 2001 for revocation and declaration of invalidity of trade mark 'Lilly Tissues' and 'Jasmine Tissues' in clause 16 and suit for infringement, passing of, permanent' injunction and damages in respect of loss caused to the appellant due to use of said Trade Mark of the respondent. It was argued by the learned advocate for the appellant that the respondent filed the suit in Court having no jurisdiction is not maintainable before District Judge Peshawar as no registration office of Registrar Trade Marks is situated at Peshawar. The registration certificates were issued in the matter by the office of Registrar Trade Marks at Karachi and only Courts at Karachi have jurisdiction in the matter. It was further argued by the learned Advocate for the appellant that requirement for stay in the proceedings under section 10, C.P.C. Are not satisfied in the matter. Issues in the matter pending before the District Judge Peshawar are different than the issues in the matter filed by the appellant. Learned advocate in support of his contention relied upon Dabur India Ltd. v. Hilal Confectionary (Pvt.) Ltd., PLD 2000 Kar. 139(c), United Distribution Pakistan Ltd. v. Al-Syed Agro Chemicals Services and others, 2005 CLC 1659, Dr. Haider All Mithani and others v. Ishrat Swaleh and others, PLD 1999 Kar.81, Abdul Ghani and another v.
9. Province of Baluchistan and two others, PLD 1982 Quetta 63. Learned advocate also relied upon the case Thettayil Peter Joseph v. Thettayil Varghese Augustine and another (1991 (2) Arb. LR 286 (Madras)), and Vikas Manufacturing Co. v. Bharaj Manufacturing Co., Civil (1981 PTD 87 (P&H)).
10. ' On the other hand Mr. Amir Javed learned counsel for the respondent in H.C.A. No,404 of 2008 argued that subsection (4) of section 73 of Trade Marks Ordinance, 2001 required that application for rectification shall be made to the Court where proceedings prior in time concerning trade mark in question are pending and since prior proceedings in connection with trade mark in question are pending before the District Judge Peshawar suit as well as JM filed by the appellant are not only liable to be stayed but also Court injunction cannot be granted particularly when competent Court having jurisdiction has already granted injunction in favour of the respondent.
11. ' We have taken into consideration respective arguments advanced by the learned advocates for the parties and perused the record. To appreciate respective contentions of the learned advocates for the parties, we would like to reproduce sections 73, 80 and 96 of Trade Marks Ordinance, 2001: "73. Revocation of registration.---(1) The registration of a trade mark may be revoked on any of the following grounds, namely:--
(a) that within the period of five years following the date of completion of registration procedure it has not been put to bona fide in Pakistan by the proprietor or by the authorized user thereof, in relation to the goods or services for which it is registered and there are no proper reasons for its non-use,
(b) that the bona fide use has been suspended for an uninterrupted period of five years and there are no proper reasons for its non-use;
(c) that in consequence of acts or in activity of the proprietor, it has become the common name in the trade for a product of service for which it is registered; and
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality of geographical origin of those goods or services.
(2) For the purpose of subsection (1), use of trade mark shall include use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered:
(3) The registration of a trade mark shall not be revoked on the grounds specified in clause (a) or
(b) of subsection (1) if such use, as it referred to in those clauses, is commenced or resumed after the expiry of the five years period and before the application for revocation is made: ' Provided that any such commencement or resumption of use after the expiry of five years period but only three months before the application for revocation is made, shall only be regarded if the preparation for commencement or resumption began before the proprietor became aware that the application is made.
(4) An application for revocation may be made by an interested party to the Registrar, except that--
(a) if proceedings concerning the trade mark in question are pending in a High Court or a District Court, the application shall be made to High Court or, as the case may be, the District Court; and
(b) in case the application is made to Registrar, he may at any stage of the proceedings refer the application to the High Court or a District Court.
12. (Underlining is added).
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade is registered, revocation shall relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from--
(a) the date of application for revocation; or
(b) if the Registrar, the High Court or a District Court is satisfied that the grounds for revocation existed at any early date, that date;
(7) Where the registration of a trade mark is revoked or declared invalid on the ground that the registration was secured in bad faith, the applicant shall be barred from applying for the registration of the identical or similar trade mark for two years from the date of revocation or invalidation, whatever the case may be.
(80) Ground for invalidity of registration.---(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 14 or any of the provisions thereof.
(2) Where the trade mark was registered in breach of clauses (b), (c) or (d) of subsection (1) of section 14, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
(3) The registration of a trade mark may be declared invalid on the ground that there is--
(a) an earlier trade mark in relation to which the conditions set out in subsections (1), (2) or (3) of section 17 obtain; or
(b) an earlier right in relation to which the condition set on in subsection (4) of section 17 is satisfied, unless the proprietor of the earlier trade mark or other earlier right has consented to the registration.
(4) An application for declaration of invalidity may be made by an interested party either to the Registrar or to the High Court or a District Court except that--
(a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or a District Court.
(5) In the case of bad faith in the registration of a trade mark, the Registrar may apply to the High Court or a District Court for a declaration of the invalidity of the registration.
(6) Where the ground of invalidity exist in respect of only some of the goods or services for which the trade mark shall be declared invalid as regards those goods or services only.
(7) Where the registration of the trade mark has been declared invalid to any extent, the registration shall to that extent be deemed never to have been made provided that this shall not affect the transactions past and closed.
(96) Rectification or correction of Register.--(1) Any person having a sufficient interest may apply for the rectification of an error or omission in the Register: ' Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark.
(2) An application for rectification may be made to the registrar, except that:--
(a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or a District Court. And (under lining is added)
(b) in case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the High Court or a District Court.
(4) Except where the Registrar or the High Court or a District Court directs otherwise, the effect of rectification of the Register shall be that the error or omission in question shall be deemed never to have been made.
(5) The Registrar may, on application made in such manner, as may be prescribed, by the proprietor of the registered trade mark, or a licensee, enter any change in his name or address as recorded in the register.
13. ' It is pertinent to note that provisions pari materia of subsection (4) of section 73, subsection (4) of section 80 were not available in the Trade Marks Act, 1940. In other words prior to proclamation of Ordinance, 2001 proceedings for rectification of registration, invalidity of the registration can be filed before different Courts having jurisdiction in the matter and by invoking principle of section 10 of C.P.C., in appropriate matter, Court can pass order of stay of proceedings.
14. ' Section 124 of Indian Trade Marks Act, 1999 provided that (1) where in any suit for infringement of trade mark, the defendant pleaded that registration of the plaintiffs trade mark is invalid or raises defence that use of registered trade mark being one of the two or more trade marks registered under the Act which are identical or nearly resemble each other or mark is not infringed, the Court trying suit shall if any proceedings for rectification of the registration of the plaintiff or defendant trade mark are pending before the Registrar or the Appellate Board and if no such proceedings are pending and the Court is satisfied that the plea regarding invalidity of the registration is tenable then adjourn the proceedings for a period of three months to enable the parties concerned to apply to the Appellate Board for rectification of register.
15. Trade Marks Ordinance, 2001 unlike Trade Marks Act, 1999 instead of adjourning the matter for the three months or more for undertaking proceeding by the parties before Appellate Board for rectification of register (registry) or to stay of the proceedings in a suit or J.M. For infringement of trade mark rectification of the register provided that for rectification of register or declaration that the registration was invalid on the ground that trade mark was registered in breach of section 14 or any provision thereof rectification or error and omission in the in register application is to be made to the Court i,e, that High Court or District Court as the case may be where proceedings concerning trade mark in question is pending.
16. The intention of legislature by providing special procedure appears to be that all the matters concerning trade marks should be decided by one forum instead of filing proceedings before different Courts and thereafter order be passed for staying such proceedings under section 10, C.P.C. Or otherwise. The application under section 10, C.P.C. Is not required to be filed in the matter covered by section 73(4), section 80(4) and subsection (1) of section 96 of the Ordinance, 2001.
17. Admittedly proceedings connecting trademark in question were pending before District Judge Peshawar prior to filing of suit/JM.
18. The Legislature in order to avoid conflict of decisions and further to expedite the proceedings concerning trademarks in question incorporated subsections (4)(a) and (b) of sections 73 and 80 of Ordinance, 2001 put restriction to file application for rectification of registered mark etc. In Court i,e, High Court and District Court except to High Court or District Court, as the case may be, where matter prior to time concerning trademarks is pending.
19. On reading of sub-clause (4)(b) of sections 73 and 80 along with sub-clauses (4)(a) if any proceeding concerning trademarks filed in another High Court or District Court, the application shall be made to the High Court as the case may be, after having notice pendency of the proceedings concerning trademarks earlier in time has to transfer the matter before him to Court where concerning trademark prior in time is pending, rule that exclusion of jurisdiction of Civil Court is not to be readily inferred based on theory that Civil Court is the Court of general jurisdiction that the people have right unless expressly or impliedly debarred to insist for fair access to the Court of general jurisdiction of the State not attracted in the instant matter has jurisdiction of the general Civil Court is not being taken away by subsection (4) of sections 70 and 80 of Trade Marks Ordinance, 2001 but what the legislature intend that all proceedings concerning trademarks should be filed and proceeded in one Court for the obvious reason to avoid conflict of the view and expedite the proceedings.
20. Under the Scheme of the Act, there is hierarchy of authorities before which the party can get an equate redress against the wrongful acts complained of. It is well recognized that where a Statute, which gives a special remedy for enforcing F it, creates a right or liability the remedy provided by a Statute only must be availed of.
21. To attract provision of section 10, C.P.C., party has to establish that matters in both suits are directly Or substantially the same, previously instituted suit between the same parties is pending in a Court competent to grant relief. Whereas under subsection (4) of sections 73, 80 of Trade Marks Act, 2001, the requirement is only that proceedings prior in time concerning the trade mark is pending in which Court proceedings for revocation or rectification of trade marks can be filed.
22. ' Mr. Muhammad Nadeem Qureshi, learned advocate for appellant in High Court Appeal No,404 of 2008 relied upon Burma Eastern Ltd. v. Burma Eastern Employees Union and others, PLD 1967 Dacca 190, the issue in the matter was in respect of an application under Order VII Rule 11, C.P.C. Filed by one of the parties for rejection of the plaint which is not the issue before this Court. As regards the question whether declaratory suit filed by the respondent in the Court of District Judge Peshawar was not maintainable, we would not like to discuss this issue in detail for the reason that application for rejection of plaint filed by the appellant is pending for adjudication and any observation made by us may adversely affect the same.
23. ' In the case of Thettayil Peter Joseph (supra), and Vikas Manufacturing Co., (supra), from Indian Jurisdiction issues in the matters pertain to maintainability of an application for want of territorial jurisdiction of the Court. In light of section 107 of Trade and Merchandise Marks Act, 1958, Indian Supreme Court gave decision, that Courts where sub-office of Trade Marks Registry issued Trade Mark is situated have jurisdiction in the mater. No provision has been pointed out in. Trade Marks Ordinance, 2001 that application for rectification of trade mark or right in respect of trade mark can be filed only in the Court within territorial jurisdiction office of trade mark registry is situated.
24. Even on reading of section 73(4) and section 80(4) along with section 6 of Trade Marks Ordinance, 2001, provide that the provision of Ordinance, 2001 is in addition to not in derogation of any other law for time being in force. We are of the view that the appellant cannot file proceedings in respect of trade mark, proceedings connecting with, is pending prior in time in another Court, in a Court have jurisdiction except filing the same in Court where proceedings concerning trader mark is pending otherwise very purpose of subsection (4) of section 73 and section 80 will render redundant.
25. For the foregoing reasons, we are of the view that strictly principles of section 10, C.P.C. Are not attracted to the facts of the case and we dispose of these appeals with direction that office should return plaints of Suits Nos. 571 of 2008 and 572 of 2008 and J.M. Nos. 14 and 18 of 2008 to the plaintiff/applicant for presenting the same to the Court where proceedings earlier in time concerning the Trade Marks in question are pending.