1. ' These Miscellaneous Appeals are filed under section 76 of the Trade Marks Act, 1940 (hereinafter to be referred as the said Act) against the order dated 23-8-77 of learned Registrar of Trade Marks, whereby Marks No, 28107 and 50727 registered in Classes 16 and 18 respectively in favour of Messrs Pakistan International Airliners, Corporation, appellants before me, have been removed from the trade marks register. This action has been taken under section 46(4) of the said Act. Since both these appeals namely M. A. 41/77 relating to Entry No, 50725 and M. A. 46/77 relating to Entry No, 28103 arise from the same common order impugned herein and involve the same questions of law and facts, I propose to dispose of both these appeals by this sigle judgment.
2. ' Brief facts giving rise to these appeals are that the appellants filed application on 29-10-1957 for registration of a trade mark comprising as its essential feature the letters "P I A" in Class 16 in respect of Letters and Stationery goods, to which Serial No, 28103 was allotted by the Trade Marks Office. The said application was examined by the Registrar of Trade Marks under law and rules and was advertised in the Trade Marks Journal and after the expiry of period of opposition it was allowed to be registered under No, 28103 as of 22-10-57. After expiry of seven years the registration of the said trade mark was renewed for a period of 15 years on 29-10-79. Likewise another application was made on 24-12-68 for registration of the said trade mark as stated above in Class 18 in respect of "travelling bags, leather and imitation of leather, and articles made from these materials." This application was registered under No, 50725 and after examination was accepted and advertised in Trade Marks Journal and after expiry of prescribed period of opposition, it was allowed to be registered under the said number as of 24-12-68. After expiry of seven years, the registration of the said trade mark was renewed for a period of 15 years i,e, upto 24-12-1980.
3. ' On 13-7-77 the learned Registrar of Trade Marks issued a notice suo motu under section 46(4) of the said Act to the appellants in respect of Trade Mark No, 28103 in Class 16 to show cause why the said trade mark be not removed from the Register for the reason that it is not a trade mark as defined in section 2(1)(L) of the said Act and had not been used since over five years. Another such notice was issued on 24-5-77 in respect of Trade Mark No, 50725 in Class 18 for the reason that the registration of that mark had been secured on erroneous grounds and facts. Replies were filed on behalf of the appellants before the learned Registrar stating therein that the action proposed to be taken was not in accordance with the provisions of the said Act as such was not justifiable.
4. However, the learned Registrar passed the impugned order whereby the Marks Nos, 28103 and 50725 registered in Classes 16 and 18 have been ordered to be removed.
5. ' I have heard Mr. Syed Shaukat Ali Advacate for the appellants and Mr. Habibur Rehman Advocate for the respondents. The impugned order has been mainly assailed on the ground that the learned Registrar has no power to issue suo moto notice under section 46(4) of the said Act particularly in view of section 24 and also some other provisions of the said Act. In this context thus it will be necessary to reproduce section 46 which reads as under :-
(1) On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
6. (2)Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
7. (3)The tribunal may in any proceedings under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register.
8. (4)A High Court or the Registrar, of its or his own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, , make any order referred to in subsection (1) or subsection (2).
9. (5)Any order of the Court rectifying the register. Shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
10. ' It is manifestly clear that subsections (1) and (2) of section 46 contemplate action of cancellation or variation of the registration of a trade mark on the application of an aggrieved person in the prescribed manner and for the reasons mentioned therein subsection (4) empowers a High Court or the Registrar, of its or his own motion, to give notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard to make an order referred to in subsection (1) or (2). In this context it is contended by Mr. Shaukat Ali that language used in subsection (4) cannot be read to imply that a High Court or the Registrar can issue suo motu notice in the absence of any application made by an aggrieved person as provided in preceding subsections (1) and (2). There appears to be some force in his argument for the reason that all the subsections mentioned above of section 46 are to be read together and provide different stages for action proposed to be taken as contemplated under the said section. Subsection (1) contemplates action on the ground of any contravention or failure to observe condition entered on the register in relation thereto and subsection (2) envisages action on account of absence or omission from the register of any entry or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register or by any error or defect in any entry in the register. In both these subsections an application is to be made in the prescribed manner by a person aggrieved is a condition pre-requisite. Subsection (4) empowers a High Court or the Registrar to give suo motu notice in the prescribed manner to the "parties", which indicates that there are more than one party, one of which is mentioned in subsections (1) and (2) as aggrieved person. Reference to "parties" in subsection (4) is mentioned twice i,e, firstly in respect of notice in the prescribed manner to be issued to the "parties" and secondly after the notice to give "them" opportunity of being heard. Had the intention been otherwise to provide that show-cause notice could be issued suo motu without there being application of an aggrieved person, notice would have been contemplated to be given by the High Court or the Registrar to a party (into a singular form) and also instead of providing opportunity of being heard to "them" the word "him" would have been used to signify a single party, whose registration of trade mark is proposed to be cancelled or varied. It therefore appears from the above interpretation that suo motu show-cause notice cannot be issued without there being an application having been presented in prescribed manner by an aggrieved person as provided in subsections (1) and (2).
11. ' It was further contented that action taken by the Registrar has no cover of the validity for the reason that notice contemplated under subsection (4) of section 46 is to be in the prescribed manner and under the relevant rules which relate to the cancellation or variation of a registered trade mark, as contained in rules 65, 66 and 67 of the Trade Marks Rules, 1942. These rules spell out the requirement that application to rectify or remove the trade mark is to be made on form T. M. 26 and is to be accompanied by statement setting out fully the nature of the applicant's intention, the facts upon which the case in based and the relief which he seeks. In case the application is made by a person who is not registered proprietor of the trade mark in question, the duplicate copy of that application and statement are to be transmitted by the Registrar to the registered proprietor.
12. A person who is not a registered proprietor, when alleges interest in the registered trade mark has to apply on form T. M. 27 for leave to intervene, stating nature of interest and the Registrar may refuse or grant such leave after hearing the parties concerned, upon such conditions and terms as he deems fit. It may be pointed out that in these relevant rules there is no form prescribed for issuing suo motu show-cause notice. In the case under consideration in respect of entry of registered Trade Mark No, 50725 show-cause notice dated 24-5-77 Annexure "B" in the record of M.
13. A. 41/77 is in a letter form addressed to the Advocate of the appellants calling upon to show cause why entry relating to the said trade mark in Class 18 should not be emoved from the register for the reason that the registration of the said mark had been secured on erroneous grounds and facts. It is not stated in this notice whether any application has been made by an aggrieved person nor it is stated as to what are those grounds and facts which are alleged to be erroneous. The source of information is not divulged and even it is not mentioned that those facts have come to the knowledge of Registrar and how. Since the facts and grounds are not specified, it can hardly be considered as a sufficient notice contemplated under rules 65 to 67 of the Revised Trade Marks Rules, 1963. This notice has been replied on the ground that legality/validity of notice under section 46(4) is disputed as offending against the mandatory provisions of sections 23 and 24 of the said Act. Section 23 provides that in all legal proceedings relating to a trade mark registered under this Act the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of trade mark and of all subsequent assignments and transmissions thereof. Section 24 further provides that in all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of section 8. Section 8 imposes prohibition of registration of certain trade marks which consists of or contains any scandalous design, or any matter the use of which would-
(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or
(b) be likely to hurt the religious susceptibilities of any class of the citizens of India; or
(c) be contrary to any law for the time being in force, or to morality.
14. ' It appears from the above provisions firstly that registration is a prima facie evidence of validity and secondly the registration is to be treated as conclusive so far the validity is concerned after a lapse of seven years. In both the cases under consideration the registered trade marks have been renewed after a lapse of seven years as such their validity cannot be called in question unless the registration was obtained by fraud or trade mark offends against provisions of section 8 as stated above and or the trade mark called for cancellation or variation for the reasons mentioned is section 46. The burden lies upon the Registrar, who has initiated the proceeding on his own.
15. ' Second notice on the file of M. A. No, 46/77 annexed "Y" in respect of Trade Mark No, 28103 Class 16 issued on 13-7-77 is a typed notice form on the top of which is mentioned form T. M. 26-A. In this notice it is stated as to why the trade mark be nor removed/rectified for the reasons that it is not a trade mark as defined in section 2(1) (L) of Act V of 1940 and has not been used since over five years. Apart from the objection that this notice is also not in conformity with rules 65 to 67 which relate to the action proposed to be taken under section 46 as already stated above, this notice was also replied by the counsel of the appellants that the reasons specified in the notice did not justify action under section 46(4) of the said Act. The reasons put forward by the learned counsel before me are the same that such action cannot be taken in view of the provisions of sections 23 and 24, which are mandatory in nature. In this notice also no details are given as to how the Registrar came to know that the trade mark registered under the said number in Class 16 was not being used since over five years.
16. ' In the impugned order the Registrar has taken objection that registration was obtained for the trade mark comprising letters P 1 A with thin line crossing the letters and device of a small aeroplane and one was registered under No, 28103 in Class 16 for stationery goods which the appellants claimed to have been manufacturing to be sold as vendible articles. The same trade mark as stated above was registered under No, 50725 in Class 18 for leather goods. It is further stated in the impugned order by the learned Registrar that he had gone through the file and has found that the mark "P I A" which was to be pronounced as "P I a" or "P ya" which was claimed to be fanciful and pronounceable word ' is not being used so and furthermore neither the stationery goods under trade mark in Class 16 are being sold in the market as vendible articles nor latter goods under the trade mark in Class 18 are being manufactured. It is further observed in the impugned order that misrepresentations were made by the appellants at the time of registration and the marks were not registerable either as trade mark or even as the house mark. At this stage it is necessary to refer to the definition of trade mark as envisaged by section 2(1)(L) which provides that "trade mark" means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some persons having the right either as proprietor or as a registered user, to use the mark whether with or without any intention of the identity of that person. In the definition as stated above it cannot be read that the goods had to be sold in the market but such goods under the trade mark are supposed to indicate connection in the course of trade between the goods and the persons having light as propreitor or registered user. I have seen the affidavit in the original file in support of Trade Mark Application No, 50725 in Class 18 in which it is stated that by virtue of extensive user of the trade mark over a long period of time it has become recognized and indicative of goods as belonging to Pakistan International Air Lines Corporation and none else. No assertion is made in this affidavit that articles bearing this trade mark are to be used as vendible articles. Affidavit in support of other trade mark is not on the record.
17. ' It is held in Ryasta Ltd.'s Application (1) that if the ' intention to use the mark as a trade mark within the meaining of section 2(1)(L) is sufficiently alleged in the application, it must be regarded as established in the absence of evidence to the contrary. Since there is no evidence available for rebuttal on the record to prove that the trade marks in question are not being used as indicated at the time of registration, the assertion of the Registrar cannot be said to be established. In any case it is not necessary to go into these details at this stage because the burden lies upon the Registrar to prove what is alleged by conclusive evidence, which he has failed to do. The impugned order also suffers from legal defects as mentioned above since under sections 23 and 24 of the said Act the registration has clear conclusive validity after a lapse of seven years and there has been no opposition and no objection has been taken by any aggrieved person. Reference can be made to Bengal Oil Mills Ltd. v. Deputy Registrar of Trade Marks, Karachi (2) in which it is held that when a show-cause notice is issued suo motu under section 46(4) of the said Act by the Registrar who has himself registered the trade mark burden is upon him to prove that trade mark was not validly registered. It was further held in that case that there is presumption of validity in favour of trade mark, because of section 23 of the Act, under which the registration of a trade mark is prima facie evidence that it was validly registered. The burden of proof for rebutting that presumption is on those who question its validity. In the instant case apart from section 23 which provides that registration is prima facie evidence of validity, there is applicable section 24 which provides that registration after lapse of seven years is conclusively valid unless fraud is alleged or contravention of provisions of section 8. The learned Registrar has not discussed the legal objections taken by the appellants in proceedings before him after issuance of show-cause notice with regard to the provisions of sections 23 and 24 of the said Act. Additionally it was stated at bar by Mr. Shaukat Ali that similar trade marks of other airlines such as "Alitalia" registered under No, 55218 in Class 18 and 55217 in Class 16 are on the register and the entries have not been removed, hence the action of the learned Registrar in the instant case has no legal justification.
18. ' For the reasons aforementioned the impugned order is set aside, the appeals are allowed with no order as to the costs.
(1) 60 R P C 103 (2) PLD 1963 Kar. 920