' MUHAMMAD FARRUKH IRFAN KHAN, J.---This single judgment will deal with and decide F.A.O. No, 418/14 and F.A.O. No,474/15 as decision of the former will determine fate of the latter.
2. F.A.O. No,418/14 is directed against the order dated 30.6.2014 whereby opposition of the appellant (Muhammad Waqas Sole Proprietor of ASLI MAND BARFI SHOP Noor Masjid Road, Gojra District Toba Tek Singh) against application No, 305157 in Class-30 has been dismissed by the Registrar, Trade Marks, Registry Karachi. In F.A.O. No,474/15 the same appellant has impugned the order dated 29.7.2015 of the learned Additional District Judge, Toba Tek Singh whereby in a suit filed by respondent No,1 interim stay has been granted and the appellant has been restrained from using the Trade Mark "Mand Burfi Shop, Almashhoor Mand Burfi Wale, Asli Mand, New Mand, Special Mand, Almand and Mand" till the next date of hearing.
3. The background of the case is that Abdul Hameed, proprietor of M/s. Mand Barfi Shop, P-8, Tehsil Office Road Near Noor Masjid, Gojra (hereinafter referred to as "respondent No,1") applied to the Registrar of Trade Marks, Government of Pakistan for registration of Trade Mark "Mand Barfi" vide application No,305157 in Class-30 under Trade Marks Ordinance, 2001. The said application was advertised in the Trade Marks Journal No,732, dated January 1, 2012. The appellant filed opposition (No,418/13) to registration of the said trademark application under section 28 of the Trade Marks Ordinance, 2001 read with Rule 30 of the Revised Trade Marks Rules, 1963. In the notice of opposition the appellant asserted that he or his predecessor in title have been carrying out business of manufacturing and selling sweets especially "Barfi" since 2004 under the trademark "ASLI MAND BARFI SHOP" with logo A.M.B.S and has earned a lot of good reputation and goodwill on the basis of high standard of quality and taste of his products. He further asserted that the Trade Mark "Mand Barfi" was first adopted by his grandfather in the year 1947 and after his demise the appellant being one of the legal heirs of the deceased with a view to distinguish his business and goods from the other legal heirs adopted Trade Mark "Asli Mand Barfi Shop" with logo "A.M.B.S." in the year 2004. The appellant took the stance that he being one of the legal heirs of the deceased is also entitled to use the Trade Mark "Mand" with a particular distinction.
4. The respondent No,1 Abdul Hameed trading as "MAND BARFI SHOP" located at P-8, Tehsil Office Road, Near Noor Masjid Gojra filed his counter statement alleging therein that the business of manufacturing of sweets was established by his father namely, Muhammad Bakhsh alias Mand in the year 1947. He remained associated with his father in the said business till his death in 1999 and thereafter continued the said business himself under the same Trade Mark "Mand". It is alleged that the label and design of the Trade Mark "Mand Barifi" is also registered in the name of the respondent under the Copyright Ordinance, 1962, vide registration No, 26423-Copr., dated 25.7.2012.
The respondent asserted that by virtue of prior adoption of Trade Mark and its long use he has got the exclusive right to use the said Trade Mark and opposition of the appellant being without any valid reason is liable to be dismissed.
5. The learned Registrar of Trade Marks, vide his order dated 30.6.2014 after hearing both the parties, dismissed the opposition and allowed application No,305157 in Class 30 to proceed to registration. Aggrieved the appellant has filed the instant appeal.
6. The record shows that this appeal was filed in the year 2014 when notice was issued to the respondent. The respondent put his appearance through his learned counsel who has been attending this Court. However, the original learned counsel for the appellant appeared on a few dates only. As usual today again no-one is in attendance on behalf of the appellant. Since this appeal pertains to the year 2014, therefore, instead of dismissing it for non-prosecution, I would like to dispose it of on merit.
7. Learned counsel for the respondent submits that the appellant is the real son of the founder of the business and he remained associated with the business during life time of his father and after his death he continued with the said business under the Trade Mark "Mand Barfi"; that it is established from record that the respondent is the bona fide and original user of the aforesaid Trade Mark and has inherited the Trade Mark "Mand Barif' from his father who had adopted it in 1947; that the appellant's claim that he has inherited the Trade Mark "Mand Barifi" is not established from record; that the appellant is maternal grandson of the founder of the business and as such without obtaining permission from his mother, the actual legal heir, could not file opposition against the respondent; and that the learned Registrar has rightly observed that the appellant should first obtain a declaratory decree from the Civil Court in respect of his status as legal heir of Muhammad Bakhsh and till such time he has no right to claim use of the said Trade Mark on the basis of a right acquired by virtue of inheritance; and that the opposition of the appellant has been rightly dismissed.
8. Arguments heard. Record perused.
9. The record shows that both the parties are litigating on the claim of ownership of Trade Mark "Mand". They both have applied for registration of the said Trade Mark and have also filed oppositions against each other. Both the parties have based their claim on the ground that they have inherited the said Trade Mark, which was initially adopted by their predecessor Muhammad Bakhsh alias Mand. Admittedly, the appellant is maternal grandson of the said Muhammad Baldish whereas respondent No,1 is his son. The Registrar of Trade Marks has dismissed opposition of the appellant on the sole ground that the appellant has failed to bring on record any documentary proof to show that he is one of the legal heirs of the said Muhammad Baldish and as such entitled to use the Trade Mark "Mand". On this sole point there is nothing on record to show that the findings of the learned Registrar are factually or legally incorrect. In the presence of the daughter of the deceased the appellant being maternal grandson does not fall within the list of legal heirs.
Therefore, he has no right to use the said Trade Mark as a hereditary right. On the contrary, respondent No,1 is admittedly son of the founder of the said Trade Mark, who adopted it in the year 1947. In the opposition the appellant has not disputed the right of respondent No,1 to use the Trade Mark "Mand" but with some distinction. In view of the fact that the appellant has failed to establish his right to use the said Trade Mark as a hereditary right, his objection was not sustainable under the law. In these circumstances, the Registrar has rightly dismissed the opposition of the appellant.
The impugned order dated 30.6.2014 does not suffer from any legal infirmity or procedural irregularity calling for interference by this Court in its appellate jurisdiction.
11(sic.) In view of my above findings it is established on record that the three grounds necessary to be considered for grant of temporary injunctions i.e, (i) prima facie strong case, (ii) balance of convenience and (iii) irreparable loss lean in favour ot.Respondent No, 1 . The learned trial Court has thus rightly granted temporary injunction in favour of respondent No,1 and against the appellant. I do not find any illegality in the impugned order dated 29.7.2015 of the learned trial Court which has been assailed in F. A .0. No .474/2015 .
12. For what has been discussed above, F.A.O. No,418/2014 and F.A.O. No,474/15 both are dismissed.
13. Before parting with the judgment, this Court feels obliged to observe that during the course of proceedings of this writ petition attention of this Court was drawn to the fact that application No,305157 of the respondent was filed prior to application No,325308 in Class-30 of the appellant but this fact was not considered by the Trademark Registry as an impediment in the way of advertising of the appellant's application in Trade Mark Journal No,751 of August, 2013. In this view of the matter, vide order dated 16.4.2015, this Court directed the Registrar. Trade Marks-respondent No,2 to appear in person along with his report specifying the nature of his work and mentioning detail of the total pending applications with their aging and steps which are being taken for processing the same along with the policy which is applied by the Trade Mark Office/IPO in respect of treatment to the applications which are filed prior to the subsequent applications. In compliance with the said order report was submitted by the Registrar of Trademarks, IPO Pakistan, Karachi/respondent No,2 wherein he mainly stressed that there is a substantial work load with the Trade Marks Office and there is an acute shortage of staff to perform processing of the applications and various other procedures which are required thereupon. Since the above report was evasive and not dealing with the points raised by this Court, respondent No,2 was directed vide order dated 26.05.2015 to file a fresh report specifying the following requirements:-
(i) The total number of applications for registration pending year-wise at examination, publication, registration and renewal stages separately;
(ii) the total number of pending oppositions;
(iii) the total number of pending rectification matters;
(iv) the total number of requests for recordal of subsequent proprietary rights and other similar matters;
(v) the total number of renewal applications pending.
' Respondent No,2 was also directed to issue a directive introducing a policy to first clear the backlog of old pending matters uptil the year 2012 so that these are processed within a period of one year and a report be submitted in this respect. He was also directed to ensure that the applications filed first in time are dealt with and processed according to chronological order so that transparency in the system is maintained.
14. In compliance with the order dated 26.5.2015 respondent No,2 has submitted a detailed report inter alia showing year wise break up of the documents received in the Trade Marks Registry for the last fifteen years which is as under:- Activities Application ReceivedApplications ExaminedRegistrations Granted 2001-02 6572 5159 3684 2002-03 7799 10015 3501 2003-04 11311 9672 4814 2004-05 13097 13411 5034 2005-06 13129 16083 4279 2006-07 14309 18857 6513 2007-08 14595 14826 8858 2008-09 14789 12401 5432 2009-10 16603 18224 7424 2010-11 18769 21185 6760 2011-12 18582 18196 6554 2012-13 15376 18428 4464 2013-14 22828 11831 12336 2014-15 22027 23571 9469 Sr.No, Stage Number of files 1 Acknowledgement pending 5927 2Applications Pending for Examination26410 3 Objections Replies Pending for Processing4221 4 Pending for Publication in TMJ NIL 5 Pending in Oppositions 4990 6 Pending to Issue Demand Note 7025 7 Registration Certificates Pending 2835 8 Renewal Certificate Pending 2192 9 Post Registration Requests 3362 10 Total Hearing Cases in Process (Ex- parte and opposition)
(7438+3325)10763 ' The above figures are depictive of the low disposal and substantial backlog due to ever increasing volume of applications/paper work which are being filed with the Trade Mark Registry. The reason explained in the report for accumulation of the backlog is inadequacy of the staff in the Trade Marks Registry particularly acute shortage of the examiners who perform a key role in processing the applications. The Trade Marks Office deals with the rights of Trade Marks owners and in view of the current surge in consumerism, there is a dire requirement for protection of such rights which is not possible without ensuring transparency in the manner and system maintained by the Trade Marks Office. Therefore, this Court is issuing following directions:-
1. The Registrar, Trade Marks shall ensure strict adherence to the policy first come first serve. All applications filed prior in time shall be dealt with and processed according to chronological order and transparency in the system shall be maintained. The Registrar will be personally held responsible for any lapse or dereliction in this respect.
2. It has been reported that all policy matters including creation of posts and appointment of officers/staff against vacant posts rests with the policy Board under section 24(1) of I.P.O. Act, 2012 and the I.P.O. Pakistan has made a request to Cabinet Division on a number of times to complete its composition by notifying its Provincial Members which is still under process. As there is acute shortage of the staff in the Trade Mark Registry for which reason pendency of cases over there is tremendously increasing, it is expected that the Cabinet Division/Establishment Division shall take initiative on priority basis for constitution/completion of the Policy Board so that matters of fresh recruitments, promotions and creation of new posts etc. May be finalized as early as possible.
3. The Registrar. Trade Marks who is also reportedly performing the functions of Registrar of Copy Rights, is certainly not in a position to pay full attention and devotion to the work of Trade Marks.
The Chairman and the Director General, I.P.O., Pakistan shall vigilantly pursue the matter with the Cabinet Division/Establishment Division and convey concern of the Court in this respect for appointment of an independent Registrar of the Copy Rights.
4. The Registrar, Trade Marks shall make all out efforts to Clear/decrease the backlog of cases within minimum possible time by making full use of the existing working potential of his Office till appointment of the new incumbents.
15. A compliance/progress report qua the above observations/ directions will be submitted by the Registrar Trade Marks-respondent No,2 to this Court after six month.