' MUNIB AKHTAR, J.---As will shortly emerge, these two suits are counter suits in which the principal contesting parties are Independent Media Corporation (Pvt.) Ltd. ("IMC") and Axact (Pvt.) Ltd.
("Axact"). In Suit 1461 of 2013 IMC is the plaintiff and Axact is the defendant No.
8. In Suit 1584 of 2013, Axact is the plaintiff and IMC is the defendant No.
3. In the latter suit the Director General of the Intellectual Property Organization of Pakistan ("IPO", a statutory body created by and under Act XXII of 2012) and the Registrar of Trade Marks (who of course is appointed and acts under the Trade Marks Ordinance, 2001) are the defendants Nos. 1 and 2. In each suit the plaintiff has filed an application for interim injunctive relief, being, respectively, C.M.A. 12775 of 2013 and C.M.A. 13905 of 2013. Since the issues raised are at least overlapping (if not common) the two applications were heard together.
2. IMC and Axact represent two large business houses, the former being part of the well known Jang/Geo group while the latter (on its own showing) is engaged in the information technology (IT) business and now intends to move into the multi-media world of broadcast by way of television, print and digital media and entertainment. As presently relevant, the tussle between the two is over the use of the word "Bol" as a registered trademark in classes 38 and 41, although Axact seeks also to have it registered in respect of several other classes. IMC would use the word on a standalone basis (as transliterated into English) whereas Axact seeks to use it in like manner and also in association with other words. Classes 38 and 41 relate to services, the former encompassing telecommunication services while the latter relates to "education, providing of training, entertainment, sporting and cultural activities". IMC claims to be the proprietor of "Bol" as a registered trademark in class 41. Its case is that it was entered on the Register of Trade Marks as the proprietor of the mark on or about 7-11-2013 on its application No. 238904, which was filed on 11-6- 2007. It claims to have another application No. 195773 pending for registration of "Bol" as a trademark in class 38. That application appears to have been filed on or about 15-5-2004. There is apparently another application, 342080, that IMC has pending for registration of "Bol" in class 38, though this application was filed many years later (on or about 19-6-2013). Be that as it may, IMC's grievance is that Axact intends to use and/or has started using "Bol" in a manner that infringes its registered trademark (in terms of the aforementioned -application No. 238904). Suit 1461 of 2013 is therefore essentially a straightforward suit for trademark infringement. C.M.A. 12775 of 2013 has been filed therein to restrain Axact from infringing the aforesaid trademark. The suit was filed on 19- 11-2013 and the said application came up before me on the same day, when I made an ad interim order. That order continues to remain in the field.
3. Axact strongly contests IMC's claim. Its case is that it is entitled to have "Bol" registered as a trademark in terms as stated above, for which it has as many as 156 applications pending in various classes. These applications were made on various dates from March to November 2013. As already noted the present dispute enters on classes 38 and 41 and, more specifically, on the latter since it is only in respect of that class that IMC claims to have "Bol" as its registered trademark.
Axact's case is that there is in fact no such registration and that IMC has forged, fabricated and manipulated the official record to claim a right which it does not have and to which it is not entitled. More precisely, its case is that application No. 238904 on the basis of which IMC claims its registered trademark was not made in relation to "Bol" at all but rather in respect of an altogether different mark. However, subsequently the record was manipulated and fabricated to show that IMC had a registered trademark. By its Suit 1584 of 2013 Axact seeks declaratory relief to the effect, inter alia, that IMC has no right or entitlement to the registration of "Bol" as its trademark and that it is Axact that is so entitled on the basis of its pending applications. Axact filed its suit on 13-12-2013 and moved two miscellaneous applications. One is C.M.A. 13905 of 2013, which now falls for determination. By this application, Axact seeks interim injunctive relief to restrain IMC from claiming to be the "owner/proprietor/applicant" for registration of "Bol" and for it to be restrained from pursuing the three applications mentioned above, i.e., application Nos. 238904, 195773 and 342080.
The second application filed by Axact was C.M.A. 13904 of 2013. By this application Axact sought an order that the Nazir of the Court take the entire record in relation to application Nos. 238904 and 195773 in his custody. The said application was allowed by a learned single Judge on 13-12-2013.
The Nazir now has custody of the aforesaid record, although a copy of the same was placed before me in the file of Suit 1461 of 2013 and copious reference made thereto by learned counsel for Axact and (by way of response) by learned counsel for IMC.
4. Before proceeding further two points may be made. Firstly, I understand that IMC's application No. 195773 was advertised in the Trade Marks Journal ("Journal") and Axact has filed an opposition to the same. Consideration of that opposition by the Registrar is pending. Application No. 342080 appears to be still at the stage of examination at the Trade Marks Registry, and if it is eventually advertised in the Journal, Axact will presumably file an opposition to it as well. Since these two applications will be dealt with under the provisions of the Trade Marks Ordinance, 2001 ("2001 Ordinance") relating to acceptance/opposition and registration, it is not necessary for me to deal with them here. Accordingly, I will focus only on application No. 238904, which according to IMC has resulted in a registered trademark, a claim strongly contested by Axact. Secondly, at the conclusion of the hearing, I had permitted learned counsel to file written synopses, which were filed by both sides along with case-law relied upon. The submissions of learned counsel noted below are therefore an amalgam of what was said at the hearing and points taken in the synopses.
5. Learned counsel for IMC submitted that it had filed application No.238904 on 11-6-2007.
Thereafter, the matter could not or did not proceed for one reason or another, but eventually, the application was advertised in the July, 2013 issue (No. 750) of the Journal, which was published on 26-8-2013. As advertised, the application was for registration of "Bol" as IMC's trademark in class 41.
The two month period within which notice of opposition had to be filed (or extension in time sought for filing such opposition), as stipulated by section 28(2) of the 2001 Ordinance, expired on 26-10- 2013. No opposition was filed nor extension sought, whether by Axact or anyone else. Thereafter, on or about 7-11-2013 IMC was entered in the Register of Trade Marks (more precisely the computerized record that constitutes said Registrar) and a certificate in this regard issued to IMC in the prescribed manner on or about 13-11-2013. Learned counsel submitted that IMC was clearly the proprietor of the registered trademark. Axact and its associated companies (of whom two, being defendants Nos. 5 and 6 in Suit 1461 of 2013, are named BOL News (Pvt.) Ltd. And BOL Enterprises (Pvt.) Ltd.) were acting in flagrant breach of IMC's trademark rights. Learned counsel relied on sections 39 and 40 of the 2001 Ordinance in this regard. Learned counsel submitted that the activities (actual and proposed) of Axact and/or its associated companies were of the same description as IMC, being in respect of the same class of service, and thus clearly in infringement of the latter's trademark. A case for interim relief was fully made out. Along with the written synopsis learned counsel also filed a number of decisions that he relied upon, which applied to various aspects of trademark infringement. As noted above, Suit 1461 of 2013 is essentially a straightforward case of trademark infringement and learned counsel tailored his submissions accordingly, presenting his primary case with commendable brevity.
6. Learned counsel for Axact strongly contested the claim that "Bol" was IMC's registered trademark.
As noted above, the DG, IPO and the Registrar of Trade Marks are defendants in Suit 1584 of 2013 (herein after referred to as the "official defendants"). These defendants filed their written statement in the suit on or about 7-2-2014 ("Written Statement"). Learned counsel referred to para 18 of the Written Statement, which is as follows (emphasis supplied):
18. That the contents of Para 18 of the [plaint] are admitted to the extent that application Nos.
195773 and 238904 were advertised in the Trade Marks Journal. Furthermore application No. 342080 is pending for registration. It is worth pointing out that for the above mentioned applications the [Defendant] No. 2 has not issued a certificate duly signed and stamped by the competent authority."
' Learned counsel relied in particular on the part emphasized as also a letter earlier issued to Axact (by the Assistant Registrar of Trade Marks on 6-12-2013 and specifically mentioned in the Written Statement) to the same effect (i.e., that no certificate had been issued to IMC) to contend that this clearly established that the certificate of registration of "Bol" as IMC's trademark was a fabricated and manipulated document. IMC had deliberately misled the Court and obtained an ad interim order on false pretences. Learned counsel submitted that since issuance of a certificate of registration was a ministerial act to be performed in the prescribed manner under section 33(4) once a trademark had been registered, and no such certificate had ever been issued, this meant that in fact there was no registration at all of "Bol" as IMC's trademark. Thus the entire basis on which IMC had made its claim was effectively demolished by what had been stated by the official defendants.
7. Elaborating Axact's assertion that the official record has been fabricated and manipulated, learned counsel drew attention to the statement made in the Written Statement (see para 22) to contend that the files relating to IMC's applications mysteriously disappeared from the Trade Marks Registry but were subsequently traced out. In fact, learned counsel submitted, the said files had somehow been "reconstituted" and it was the record so kept at the Registry that was taken into custody by the Nazir. Learned counsel submitted that this cast a shadow over the entire claim put forward by IMC. Referring to the record as available, learned counsel submitted that application No. 238904 as originally filed (on 11-6-2007) had not related to the "Bol" mark at all. Rather, the application had been in relation to the mark "PAKISTANI IDOL TO PAKISTAN IDOL". On 7-8-2008 a show cause notice had been issued by the Trade Mark Registry. The matter had thereafter remained pending at that stage for several years when suddenly, on 7-6-2013, IMC had sought an amendment of its pending application, such that it became an application for registration of the "Bol" mark. In support of these submissions learned counsel referred to various documents available on the record as taken into custody by the Nazir. Learned counsel also drew attention to the fact (which, I may note, has been specifically disclosed in the plaint) that prior to its present Suit 1461 of 2013 in this Court, IMC had already filed a suit for trademark infringement in the court of the District Judge, Lahore seeking essentially the same relief against Axact and certain other defendants. Learned counsel referred to the record of and in the Lahore suit and Suit 1461 of 2013 (as filed by IMC) and submitted that a comparison showed that the contents of what purported to be application No. 238904 differed considerably one from the other, as also from the record as taken into custody by the Nazir. Differences were also to be found in the application for amendment filed in 2013. Learned counsel highlighted these differences in the written synopsis filed by him and submitted that these clearly showed that the record had been manipulated and fabricated to suit IMC's purposes and create the wholly false claim that it was the proprietor of the registered trademark. The real position was to the contrary. Learned counsel referred to section 27(7) of the 2001 Ordinance in terms of which an application for registration of a mark can be amended. The first proviso to this subsection prohibits any amendment "which substantially affects the identity of the trade mark". Learned counsel contended that the "amendment" of the application from "PAKISTANI IDOL" (or "PAKISTAN IDOL") to "Bol" was, on the face of it, a substantial change in the identity of the mark and therefore any such "amendment" was impermissible. Hence, on any view of the matter application No. 238904 as eventually advertised and purportedly registered was completely different from that as filed. IMC was not entitled to (and in fact did not have) any such registration in its favor. There had been a gross abuse and misuse of the process of law. Learned counsel submitted that IMC's application for interim injunctive relief therefore merited dismissal. As regards Axact's application, learned counsel submitted that the foregoing facts clearly demonstrated that the record as available at the Trade Marks Registry could not be relied upon and hence further action on, in relation to or on the basis of IMC's three applications should be stayed till the final decision in Suit 1584 of 2013.
8. Responding to Axact's claim that the official record had been fabricated and manipulated, learned counsel for IMC categorically denied all such submissions. It was submitted that there were no discrepancies or differences in the record as variously placed on the record in Suit 1461 of 2013, the Lahore suit and as available in the record at the Registry. Learned counsel submitted that what the record showed was that application No. 238904, as filed, had been for registration of "Pakistani idol BOL" as a mark. Shortly after the application was filed, IMC applied for permission to amend it, which was granted, such that it became an application for registration of "Pakistan BOL" as the mark. To this the Trade Mark Registry took an objection as regards the use of "Pakistan". This led to the eventual amendment to "Bol" and this was the mark that was advertised. Learned counsel submitted that these amendments were well within the scope of section 27(7) and were properly applied for and granted. There was no manipulation or fabrication of the record as wrongly alleged. It was further submitted that the allegation that the record as taken into custody by the Nazir was a "reconstituted" file was also false. What was with the Nazir was the official record in shape, form and terms as properly maintained by and at the Trade Marks Registry. Learned counsel emphasized that the application was properly advertised and since no notice of opposition was made or received at the Registry within the stipulated period, which expired on 24- 10-2013, the mark was registered in IMC's favor. Although Axact did file an application for extension of time for filing an opposition, this application was made on 19-11-2013, i.e., after the expiry of the stipulated two months period and hence could not be entertained and was rightly dismissed.
Learned counsel made a detailed rebuttal in the written synopsis of the various allegations made by Axact.
9. I have heard learned counsel as above, examined the record and seen the case-law relied upon.
I begin by referring to sections 11, 33 and 43 of the 2001 Ordinance. These, as presently relevant, are as follows:
11. Evidence of entries in Register and things done by Registrar.---(1) A printed, written or computer generated copy of any entry in the Register, purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in all High Courts or District Courts in Pakistan and in all proceeding without further proof or production of the original.
(2) A certificate purporting to be issued under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Ordinance or the rules to make or do shall be prima facie evidence of the entry having been made and of the contents thereof, or of the matter or thing having been done or not done.
33. Registration.---(1) Where an application has been accepted and (a) no notice of opposition has been given within the period referred to in subsection (2) of section 28 ... The Registrar shall, within such period as may be prescribed, register the trade mark, unless it appears to him having regard to matters coming to his notice since he accepted the application that it was accepted in error.
(4) On the registration of a trade mark the Registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate in the prescribed form of registration, sealed with the seal of the Trade Marks Registry.
43. Registration to be prima facie evidence of validity.---In all legal proceedings relation to a trade mark registered under this Ordinance ... The fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmission thereof.
' The combined effect of these provisions can for present purposes be stated as follows. In relation to a mark whose registration is sought, the Registrar is bound, if no opposition is filed to the mark as advertised within the stipulated period (or no application is made, within the said period, for extension of time) to make an entry on the Register in the prescribed manner (section 33(1)). Such entry is prima facie evidence of the validity of the registration of the mark in favor of the applicant as the proprietor thereof (section 43). Once the entry has been made the Registrar is bound to issue an appropriate certificate to the applicant under the seal of the Trade Marks Registry (section 33(4)). Such certificate is prima facie evidence of the entry having been made and the contents thereof (section 11). In a suit for infringement of a registered trademark when such a certificate is produced, in the normal course it has the effect as just stated. This may be only on a prima there basis but that, after all, is all that is required for an application for interim injunctive relief. The cases cited by learned counsel for IMC for infringement all proceeded, either expressly or by necessary implication, on such basis. In the present case also, in Suit 1461 of 2013 a certificate has been produced by IMC, which purports to be issued in compliance with and under the provisions cited above. The certificate (dated 13-11-2013) has been issued by one Mrs. Nasreen Akhtar, who has signed the certificate "for" the Examiner of Trade. Marks. She has also signed the accompanying letter (dated 13-11-2013) "for" the Registrar of Trade Marks.
10. If the foregoing certificate is proper and valid, then it has the prima facie effect as just stated.
This is IMC's position. However, Axact submits that the certificate is a fabricated and manipulated document, and relies on the Written Statement filed by the official defendants. The relevant paragraph from the same has been reproduced (see para 6 above). I have considered the rival submissions. In my view, given that the certificate relied upon is not issued by the Registrar himself, the position adopted by the official defendants in the Written Statement must be given primacy.
The position there is that no certificate "duly signed and stamped by the competent authority" has been issued. This statement has been repeated in para 28 of the Written Statement, where it is also stated that it is "imperative" to "highlight" this fact. Furthermore, I note that in the Written Statement, the official defendants have avoided stating that, in fact, "Bol" is properly registered as a trademark in favor of IMC in class 41 on the Register. They could easily have done so. This omission therefore seems to be deliberate and this conclusion is strengthened by the fact that it appears from the Written Statement that some sort of internal inquiry is (or was) ongoing at the Registry with regard to IMC's applications and the files in respect thereof. In my view, the stance taken by the official defendants prima facie casts serious doubts on the veracity and integrity of the certificate of registration relied upon by IMC. It is of course possible to read what has been said in paragraph 18 of the Written Statement somewhat differently. It could be that the official defendants are not denying that Mrs. Nasreen Akhtar did, in fact, issue the certificate, but only that she was not the "competent authority" to "duly sign" the certificate. Even as so read, in law the effect would be the same. The certificate must be issued by the Registrar or by an officer of the Registry authorized in terms of section 7(2). Mrs. Nasreen Akhtar was obviously not the Registrar and from what has been said in para 18 of the Written Statement, not authorized to issue the certificate. On any view of the matter therefore, the stance of the official defendants is clear; there is no certificate of or evidencing, registration in the field as has, or can have, legal validity.
11. In my view, it would be unsafe in such circumstances for the Court to draw, even for purposes of an application for interim relief, the (prima facie) conclusions about, and from, the certificate relied upon, as otherwise mandated by sections 11 and 43 of the 2001 Ordinance. Now, the certificate is under normal circumstances the only evidence that is on the record regarding the registration.
Indeed, section 11(1) appears to suggest that this is all the evidence that is required. Therefore, if such certificate, as presented by the plaintiff, is categorically denied by the Registrar, then the effect of such denial is clear: there is no prima facie basis on which it can be concluded that the plaintiff is the registered proprietor of the trademark claimed. As is obvious, this has a serious consequence for an application for interim injunctive relief: the plaintiff must be regarded as having failed to make out a prima facie case. I appreciate that the threshold set for making out a prima facie case is rather low and it is relatively rare that the Court will conclude that a plaintiff has been unable to cross the bar. In my view, the present situation is such a case. In a suit for trademark infringement, the plaintiff must make out a prima facie case of being the registered proprietor (or assignee, etc.) thereof. For that, the certificate that is to be issued and to which the plaintiff would be entitled as of right is a (and invariably, the) crucial document. If the certificate as produced is repudiated by the authority empowered by law to issue the same, then clearly is would be unsafe for the Court to conclude that a prima facie case has been made out. That is the situation at hand. I therefore conclude that IMC has failed to establish the first of the three ingredients required for interim injunctive relief.
12. The view that I have just taken makes it unnecessary for me to consider in detail the submissions made by learned counsel for Axact that the record has been manipulated, fabricated or otherwise tampered with. This is all the more so given that, as noted, there appears to be some internal inquiry going on at the Trade Mark Registry. I would not wish to say anything that, even on a tentative basis, might prejudice such inquiry. However, one aspect of Axact's case requires comment, and that is the submission that the original application No. 238904 was for an altogether different trademark and became one for "Bol" by an impermissible and unlawful exercise of the power to amend an application, as contained in section 27(7). This is a legal submission and something will be said about it later on.
13. Before proceeding further, there is one aspect arising out of the present proceedings that I must address and highlight even though it was not, strictly speaking, referred to by learned counsel for the parties. However, it does have a bearing on the outcome of the present applications and is even otherwise a matter of importance and general application. It will be recalled that application No. 238904 for "Bol" as IMC's proposed trademark was advertised in the July, 2013 issue (No.750) of the Trade Marks Journal, which was published on 26-8-2013. The relevant extract from the Journal was placed on the record by IMC. I noted that the application was, as stated in the extract, being "advertised before acceptance under section 28(1), Ordinance 2001". The various issues of the Journal are available online at the website of the IPO from July 1996 onwards. I have taken the trouble of going through the issues for 2014 (January to November as currently available) and have sampled a number of issues from previous years. It appears that in the overwhelming number of cases the applications are advertised before acceptance. This appears also to have been situation under the predecessor legislation, the Trade Marks Act, 1940 ("1940 Act"). The question of when and how advertisement of an application is permissible before its acceptance is a matter of importance, which requires close attention.
14. Sections 27 and 28 of the 2001 Ordinance, as presently relevant, are as follows:
27. Examination of application.---(1) The Registrar shall, as soon as practicable, examine whether an application for registration of a trade mark satisfies the requirements prescribed under this Ordinance.
(2) For the purposes of subsection (1), the Registrar shall carry out a search, to the extent as he considers necessary, of earlier trade marks.
(3) If it appears to the Registrar that the requirements for registration are not met he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representation or to amend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements are met, or to amend the application so as to met them, or fails to respond before the end of the specified period, the Registrar shall refuse to accept the application.
(5) If it appears to the Registrar that the requirements for registration are met, he .Shall accept the application absolutely or subject to such conditions or limitations, if any, as he may think fit.
(6) In the case of a refusal or conditional acceptance, the Registrar shall state in writing the grounds of his decision and the materials used by him in arriving thereat.
(7) If the tribunal is of opinion that it is fair and reasonable in all the circumstances of the case to do so, may at any time, whether before or after acceptance correct any error in, or in connection with, the application or may permit the applicant to amend his application upon such terms as it may think fit; ' Provided that no amendment or correction shall be permitted in the application which substantially affects the identity of the trade mark or extends the goods or services covered by the application; ' Provided further that if the amendment or correction in the application is permitted after the application has been advertised, the amendment or correction shall also be published.
28. Publication, opposition proceedings and observations.---(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Register shall, as soon as may be after acceptance, cause the application as accepted together with the conditions and limitations, if any, subject to which it has been accepted, to be advertised in the Journal, and for all legal purposes, advertisement of the trade mark in the Journal shall constitute sufficient notice of acceptance of the trade mark; ' Provided that the Registrar may cause an application to be advertised before acceptance where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit advertise it again when it has been accepted, but shall not be bound so to do; ' Provided further that where an application is advertised by reason of any special circumstances under the above proviso, the Registrar shall simultaneously notify the exceptional circumstances which led him so to do.
(2) Any person may, within two months from the date of the advertisement or re-advertisement of an application for registration or within such further period not exceeding two months in the aggregate, as the Registrar on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the registration. ...
15. As will be readily appreciated, the Registrar's duty to examine an application for registration of a mark is one of his most important statutory functions. This exercise, mandated by law, is of an imperative nature and must be carried out. The Registrar (which of course, includes such officers of the Trade Marks Registry as are authorized in accordance with law) cannot, and cannot be allowed to, abdicate this statutory responsibility. Briefly put, what section 27 requires is that if, after examination of the application and the required search, the Registrar is of the view 'that there are any objections to the application, he must notify the applicant and give him an opportunity to either satisfy the Registrar that the application is, in fact and law, compliant with statutory requirements or to amend it suitably to bring it in line with what is required and permissible. If either of these eventualities is not met, then the Registrar must refuse to accept the application. Even if he accepts it he may do so absolutely or subject to such conditions as he may impose. In case of refusal or conditional acceptance, the Registrar must make an order that is compliant with subsection (6) (and such other legal requirements as may apply).
16. Once the foregoing exercise has been completed and culminates in acceptance (either absolute or conditional), then section 28(1) requires that the application be advertised in the Journal in the prescribed manner. To this subsection there are two provisos relating to advertisement before acceptance. In order to examine them properly it is relevant also to consider section 15(1) of the 1940 Act, which was as follows:
15. Opposition to registration---(1) When an application far registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner: ' Provided that the Registrar may cause an application to be advertised before acceptance if it relates to a trade mark to which clause (e) of subsection (1) of section 6 applies, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do.
' It will be seen that this provision was similar to section 28(1). (Section 14 of the previous Act was similar to the present section 27.) There are however two important differences. Firstly, the proviso to section 15(1) comprised of two parts. It could be invoked either (a) in respect of a mark to which section 6(1)(e) of the 1940 Act applied or (b) in any other case where "exceptional circumstances" were found to exist. The first proviso to section 28(1) only applies if "exceptional circumstances" exist and not otherwise. Secondly, the second proviso to section 28(1), is new: it had no equivalent in the 1940 Act. Now, section 6 of the 1940 Act provided for the distinctiveness that was required of a mark for it to be registered. Subsection (1) provided that a mark would not be registered unless it consisted of any one of the "essential particulars" as stated in clauses (a) to (e) thereof. These included, in the first four clauses, various specific particulars (such as the applicant's name, signature, an invented word, etc.). Clause (e) then provided that the required essential particular could be "any other distinctive mark". Thus, if the proposed mark sought to be registered consisted of "any other distinctive mark", the proviso to section 15(1) made it permissible for the application to be advertised before acceptance. It is important to note that for this purpose "exceptional circumstances" did not need to exist: it was sufficient if the proposed mark came within the meaning of section 6(1)(e). If however the case did not come within the scope of the foregoing ("any other case"), then the proviso only applied if "exceptional circumstances" existed.
17. Now it could be (although I record no definite finding in this regard) that under the 1940 Act a practice may have arisen that in respect of all applications in which section 6(1)(e) applied to the mark sought to be registered, the Registrar routinely allowed the application to be advertised before acceptance. This may explain why, under the previous statutory regime, such a large number of applications were apparently so advertised in the Journal. And it may also be that once the 2001 Ordinance came into effect, this practice has continued, essentially as a holdover from what was happening previously. However, if so (and even otherwise), in my view such a practice and the routine application of the first proviso under section 28(1) is clearly contrary to law. This is so because the first proviso can apply if, and only if, "exceptional circumstances" are shown to exist and not otherwise. This requirement applies to all cases and there is no separate category as was to be found in the proviso to section 15(1). Now, "exceptional circumstances" are precisely that: circumstances of such a rare or unusual nature as would warrant departure from the main rule, namely that an application is only to be advertised if accepted (whether absolutely or conditionally). Quite obviously, a provision that can only be applied in exceptional circumstances cannot become a matter of routine, and a power so granted cannot be exercised more or less automatically. Such a practice, in the context of section 28(1), would effectively eliminate the words "exceptional circumstances" from the statute. In other words, it cannot lawfully become the practice for applicants to invoke the first proviso, and for the Registrar to purport to exercise the power thereby conferred in a routine manner. The law has been materially altered from the previous regime, and the scope of the proviso significantly narrowed and tightened. Its routine application I unlawful. This however, appears to be precisely how the Registrar has continued to apply the first proviso. In my view, this is a serious illegality and material breach of the raw. It cannot be countenanced and allowed to continue.
18. I turn to the second proviso to section. 28(1). As noted, this is new. Two points may be made.
Firstly, the second proviso is mandatory: this is clear from the use of "shall". Secondly, the manner in which the Registrar is to "simultaneously notify" the "exceptional circumstances" which led him to allow advertisement before acceptance can only be for such circumstances to be stated in the advertisement itself. While this follows ineluctably from the language of the second proviso, the point is expressly made in Rule 29 of the Trade Mark Rules 2004. Sub-rule (1) lists the particulars that must go in the advertisement and clause (i) thereof requires that the "details of special circumstances, if any, under the proviso to subsection (1) of section 28" must be given. (The "should" used in sub-rule (1) obviously applies in the mandatory and not optional sense.) In my examination of the Journal I specifically looked for an application advertised under the first proviso in which, in compliance of the second proviso, the special circumstances had been stated. I could not find a single example. It appears to be me, therefore, that applications are being advertised in flagrant breach of the law. Firstly, the first proviso is being invoked and applied in a more or less routine manner and as a matter of practice. Secondly, even if there were cases in which "exceptional circumstances" did exist the second proviso is being violated inasmuch as such circumstances are not being disclosed in the application as advertised. (Of course, it will be appreciated that the failure to comply with the second proviso makes it impossible to determine whether there were any such circumstances at all in respect of any application to which the first proviso validly applied.)
19. Clearly, these illegalities must be brought, and come, to an end. By routinely invoking the first proviso to section 28(1) the Registrar has, in effect, abdicated due and proper discharge and performance of one of his most important statutory duties, the examination of the application under section 27 and the making of an appropriate order thereon and taking action in respect thereof as contemplated by law. I therefore direct and hold as follows. In any case where the applicant wishes to invoke the first proviso he must make an appropriate application setting out therein (in sequentially numbered grounds/paragraphs) the "exceptional circumstances" which exist in his case as would warrant advertisement of the application before acceptance. The Registrar must apply his mind to such application and make a proper order identifying each circumstance (if more than one is invoked) that, in his view, is an exceptional circumstance within the meaning of the first proviso. Only then can permission be granted for advertisement before acceptance. And if such permission is granted, the circumstance(s) on the basis of which the applicant has successfully invoked the first proviso must be set out in the advertisement, as required by the second proviso read with Rule 29. Any person opposing any such application shall be entitled to take objection also to the "special circumstances" disclosed in the advertised application. In considering such opposition, the Registrar must apply his mind also to such objection and if he is of the view that the other grounds for opposition are without merit, but the objection to the advertisement before acceptance nonetheless has merit (Le., that there were no special circumstances) he must then further apply his mind and make a specific order whether the application is to be re-advertised or not. The Registrar is directed that in every issue of the Journal that is now to be published, starting from the date on or after 15 days from this Order, no application is to be advertised before acceptance in respect of which the foregoing procedure has not been followed. The Registrar and all officers of the Registry are warned that if it is subsequently brought to the attention of the Court in any manner (and in any proceedings) that there has been any breach of the directions herein given, strict action shall be taken under law against all delinquent officers and also any applicant who is found to have violated the law.
20. Reverting to the two applications under consideration, in the circumstances it is not necessary for me to consider in detail the case law cited by learned counsel for the respective parties and, in particular, that cited on behalf of IMC. For the reasons given above, the stage at which, even prima facie, a case for infringement is made out has not yet been reached.
21. In view of the foregoing, I conclude that at present IMC has failed to make out a prima facie case that it is the proprietor of the registered trademark "Bol" in class 41 on its application No. 238904. Accordingly, its present application is Suit 1461 of 2013, C.M.A. 12775 of 2013, must necessarily fail. Subject to what is stated hereafter, this application is therefore dismissed and the ad interim order made earlier L stands recalled and vacated. As noted above, the official defendants have indicated that there is some inquiry ongoing at the Registry with regard to IMC's various applications and in particular application No. 238904. Taking up this application I direct that the official defendants must conclude such inquiry (if not already completed) within 30 days from the date of announcement of this Order. No opportunity of hearing need be given to either IMC or Axact (or any other person) but the results of the inquiry and the report thereon must be provided to them, and a copy of the same placed on the record in both Suits. In particular the report must address and record a clear finding whether, on IMC's application No.238904, an entry has in fact been lawfully and properly made in the Register showing IMC as the registered proprietor of the "Bol" trademark. If the finding is that there is no such entry, then IMC's application No. 238904 shall be deemed pending. Since it was advertised under the first proviso in a manner contrary to law, the Registrar must then consider whether the application is to be accepted in terms as required by section 27 read with any other applicable provisions. If accepted (either absolutely or conditionally) then the application must be re- advertised and Axact (and any other person) shall then be entitled to file opposition on such re- advertisement in accordance with law. In its opposition, Axact will be entitled to take all such grounds as are admissible including the ground (as appears to be its case) that the application has been unlawfully allowed to be amended in violation of the first proviso to section 27(7). On the other hand, if the finding recorded.: in the inquiry is that on IMC's application No. 238904, an entry has in fact been lawfully and properly made in the Register showing IMC as the registered proprietor of the "Bol" trademark, then the date of such finding or the date of this Order (whichever is later) shall be deemed to be the date of the decision of the Registrar and the date on which the trademark is, in fact, registered. Axact will be entitled to its statutory remedies, if any, accordingly.
Furthermore, in such a situation IMC shall be entitled to renew its application for interim injunctive relief in. Suit 1461 of 2013 which, if filed, will be taken up and decided on its own merits.
22. I turn to Axact's application C.M.A. 13905/2013 in its Suit 1584 of 2013.. I can see no reason why this application should be allowed. As already noted in respect of application No. 195773, the same has been advertised and is being opposed by Axact. Application No. 342080 is still under examination at the Registry and will be dealt with in accordance with law, especially as explained herein above.
The third application, No. 238904, has already been dealt with herein above. Since all the applications can be, and will be, dealt with under the relevant provisions of the 2001 Ordinance, I see no reason why an interim injunctive order should be made in relation thereto in terms as sought. Subject to what has been stated herein before, C.M.A. 13905 of 2013 is therefore dismissed.
23. In order to enable further proceedings to be taken, both in terms as stated herein above and under the 2001 Ordinance, the Nazir is directed to return the record taken by him in custody under the order made in Suit 1584 of 2013. However, before doing so he must suitably endorse/mark each page for identification purposes and retain a copy of the record so endorsed/marked and provide copies of the same to IMC and Axact. The record will be handed over to an officer not below the rank of Deputy Registrar who must be authorized in this regard by the Registrar himself. The Registrar must provide, on a monthly basis, copies (suitably marked and under an appropriate letter of intimation) to the Nazir of all documents subsequently filed in the record being returned and printouts of any computer entries made, amended, varied or deleted (whether in respect of the Register or otherwise). The Nazir will keep such copies along with the earlier copy.
24. I note from the file of Suit 1461 of 2013 that Axact has certain applications pending under Order VII, Rule 11 and section 10, C.P.C. On account of the Lahore suit. These applications may be listed and be heard and disposed of on their own merits notwithstanding what has been stated in the foregoing. I may also note that whatever has been said herein above is tentative in nature and the two Suits, should they go to trial, will be disposed of on their own merits and in terms of the evidence as recorded.
25. Finally, the Registrar is directed, since the matter is of importance and general application and interest, that paras 13 to 19 of this Order (both inclusive) and this para (and only these paras) must be _published in the next issue of the Trade Marks Journal as is published on or after 15 days from the date of announcement of this Order. A copy of the relevant issue of the Journal must be sent to the Additional Registrar (OS), who will ensure that it is placed on the file of Suit 1461 of 2013.
26. Subject to, and in terms of, what has been stated herein above, both C.M.A. 12775 of 2013 in Suit 1461 of 2013 and C.M.A. 13905 of 2013 in Suit 1584 of 2013 are dismissed.
Order accordingly.