Atir Mahmood, J. This appeal is directed against decision dated 04.08.2007 passed by the Registrar Trade Marks, Karachi.
2. Brief facts leading to the filing of this FAO are that the appellant (Cephalon France) is a pharmaceutical company incorporated in France; that on 17.10.1994, the appellant entered into a distribution agreement with respondent (Himont Pharmaceutical) for import and sale of appellant's products including the drug under the brand name "SPASFON" for Pakistan; that the appellant came to know through advertisement in Pakistan Trade marks Journal No.642 dated 01.07.2004 that the respondent had applied for registration of trade mark "SPASFON" in its own name with the Trade Marks Registry in Pakistan under application No.130435 dated 07.06.1995 in Class 5 to "Antispasmodic Pharmaceutical Preparation". The appellant filed a notice of Opposition with the Trade Mark Registry claiming that the said trade mark is owned by it and it cannot be granted to the respondent. Both the parties filed their affidavits with evidence in support of the Registration and in support of the Opposition respectively.
3. The respondent contended before the Registrar Trade Mark that since the respondent had already filed a suit in the civil court at Lahore seeking a declaration that they were owners/proprietors of the Trade Mark "SPASFON", therefore, proceedings in the Opposition be stayed. The appellant also filed application under Section 3(2) of the Recognition and Enforcement (Arbitration Agreements and Foreign Arbitral Awards) Ordinance, 2005 for stay of proceedings. The Registrar, Trade Marks vide order dated 08.09.2007 directed the parties to get the question of ownership of the Trade Mark "SPASFON" decided by a civil court and stayed the Opposition proceedings (No.833/04) pending before him. The appellant filed application under Sections 11 and 121(2) of the Trade Marks Ordinance, 2001 and Rule 84 of the Trade Marks Rules, 2004 to give reasons for order dated 08.09.2007 which were provided on 04.08.2007 whereagainst this appeal has been filed.
4. Learned counsel for the appellant contends that all the evidence of the parties relating to the ownership was available before the Registrar of Trademarks but he failed to exercise jurisdiction vested in him and did not decide the question of ownership which is his special domain; that the impugned decision is contrary to provisions of Trade Marks Ordinance, 2001 as well as the judgments of the superior courts; that the learned Registrar by not deciding himself the question of ownership of trademark has acted illegally and unlawfully, therefore, this appeal be allowed, the impugned decision be set aside and the case be remanded to the Registrar of Trademarks to decide the matter himself.
5. The respondent has already been proceeded against ex parte vide order dated 11.03.2009.
6. Arguments advanced by learned counsel for the appellant have been heard and the record also perused.
7. According to the appellant, it entered into a distribution agreement with the respondent for import and sale of appellant's products including the drug under the brand name "SPASFON" for Pakistan. However, it later came to know through an advertisement appeared on 01.07.2004 in Pakistan Trade Marks Journal No.642 that the respondent itself has applied for registration of trademark "SPASFON" with the Trade Marks Registry. The appellant since claims ownership of trade mark "SPASFON" filed a Notice of Opposition with the Trade Mark Registry. Both the parties filed their affidavits and evidence before the Registrar of Trade Mark but he despite deciding the matter himself directed the parties to get determined their ownership by the civil court vide impugned decision where a suit between the parties is pending while staying proceedings in the Opposition filed by the appellant.
8. The Trade Mark Ordinance provides a comprehensive procedure and remedies regarding grant or refusal of a trademark to a party applying for it. Such powers are vested with the Registrar Trade Marks. In this case, the respondent had applied for grant of trade mark "SPASFON" to which the appellant objected by filing an Opposition No.833/2004 claiming that the said trade mark is already owned by it. Both the parties submitted their affidavits and evidence available with them before the Registrar but the Registrar did not decide the matter himself and sent the parties to the civil court for determination of their ownership. In my view, if some powers have been given to an authority, it should exercise its powers in accordance with law. Since the powers to grant or refuse the trademark applied for by the respondent and controverted by the appellant were vested with the Registrar Trade Marks, therefore, he, in my view, should have exercised his powers in accordance with law rather than directing the parties to approach the civil court for determination of their ownership of trademark as the Registrar himself is authorized to grant or refuse the trademark and non-exercising of his own powers by him amounts to defeat the purpose of law. I am of the considered view that the Registrar of Trade Marks could advise the parties to approach the civil court only if substantial rights of any or both the parties were involved which could not be determined by preponderance of evidence produced by the parties within the scope of jurisdiction conferred on the Registrar. From the record produced before me, no substantial right as noted hereinbefore appears to be involved in this case. The only question of grant or refusal of trademark was before the Registrar, which he could decide himself in accordance with the provisions of the law. Section 17(6) of the Trade Marks Ordinance, 2001 is replica of Section 10(3) of Trade Marks Act, 1940. Reliance is placed on the ratio decidendi laid down in case reported as Sanjeda Bano Vs. Muhammad Saeed Jehangir (PLD 1987 Karachi 53).
9. In the circumstances, the Registrar Trade Mark has failed to exercise the jurisdiction vested in him and instead of deciding the matter of grant of refusal of trademark to the respondent, has illegally and unlawfully sent the parties to the civil court for determination of their ownership.
Therefore, this appeal is allowed, the impugned decision dated 04.08.2007 is set aside and the Registrar Trade Marks, Karachi is directed to decide the matter of grant or refusal of trademark to the respondent at his own, strictly in accordance with law.