' UMAR ATA BANDIAL, C.J.---Learned counsel for the parties have been heard. It is common ground that the respondent Dar-e-Arqam School was set up in 1992 at Sargodha under the name of a society formed in 1991. The appellant set up a school by the same name in Faisalabad in the year 1993.
2. The respondent applied for trademark registration in 2004 which application remained pending and was decided by the impugned order on 29-4-2010. On the other hand, the appellant applied for trademark registration on 2-5-2005 and secured the same on 26-1-2008 although the pending application of the respondent ought to have been heard simultaneously in terms of sections 14 and 17 of Trademark Ordinance, 2001. On the warning published by the appellant on 28-3-2008, the respondent filed two rectification applications on 26-4-2008 against the trademark in favour of the appellant in two classes. Thereafter the appellant filed opposition to the respondents' pending applications for registration which has been dismissed in the impugned order.
3. The dispute between the parties is about the entitlement to register trademark in the name Dar- e-Arqam which is used by both parties. It is also a matter of record that one of the appellant's sponsor, namely, Professor Sakhawat Ali acknowledges that in 1993 he set up a school with the name Dar-e-Arqam School after obtaining permission from Professor Irfan Chaudhry, who had set up a school with the same name in Sargodha in 1992. Consequently, according to the record both the institutions were running their schools since 1992 and 1993 under the same name. The proceedings for registration of trademark were also resorted almost contemporaneously in the year 2004 by the respondents and in 2005 by the appellant. Both in terms of use and in terms of the date of applications for registration of trademark the two parties have a similar track record.
The difference is that the original conception of the name was by Professor Irfan Chaudhry of the respondent school rather than by any sponsor of the appellant school.
4. In the above circumstances, the question is who should take benefit of the registration of trademark. The respondents state that they had 55 schools at the time of their application for registration of trademark; whereas the appellant had only 3 schools at the time of his application for registration of his trademark. Consequently, the respondents had a big footprint in the public domain. The said claim is disputed by the learned counsel for the appellant who submits that the impugned order dated 29-4-2010 passed by the Registrar of Trademarks ("Registrar") was passed without allowing the parties to record any evidence.
5. There are two factual points on which there is no disagreement between the parties: firstly, that the inventor/adopter of the name Dar-e-Arqum was Professor Irfan Chaudhry and secondly, that said name was adopted by a society registered in Sargodha in the year 1991 for a school which was established in 1992 prior in time to a school established by the appellant at Faisalabad. However, there is a dispute between the parties on two points: firstly, whether there is acquiescence on the part of each party in dispute to the use of common name by the other party and, if so, the consequence thereof; and secondly, there is a dispute as to which party had a larger footprint in the public domain in order to claim benefit of such standing, repute and business profile for claiming the exclusive use, if at all, of the name in question. The finding on the foregoing points of fact should provide an answer to the rival claims for exclusive use of the said name. The respondent No,2, Registrar shall record evidence of the parties on the foregoing two points of dispute. He shall thereafter give his finding on the respective claims of the parties for exclusive use and trademark registration of the name Dar-e-Arqam within a period of three months from the date of receipt of a certified copy of this order.
6. Appeal disposed of