Shahid Karim, J:- This order shall decide CM No.1-C of 2011 under Order VII, Rule 11 of Code of Civil Procedure (CPC ) for the rejection of the application filed by Italfarmaco S.P.A and C.M No.2 C of 2011 filed under Order XXXIX, Rule 4 CPC. These applications have been filed by the respondent No.1 and raise a baseline question which is being dealt with through this order .
2. An application under Section 90(1)(b)(i) and section 80(4) of the Trade marks Ordinance, 2001 ("the Ordinance" ) has been filed by the applicant-company Italfarmaco S.P.A, a company existing under the laws of Italy through its authorized signatory ("the applicant" ). The application has been filed for a declaration of invalidity of the entry in the Trademark Register of the trademark FERPLEX registered under No.130807 dated July 11, 1995 in class 5 for pharmaceutical preparation s used as iron supplement. The trademark FERPLEX ("the trademark" ) has been registered in the name of the respondent No.1 Himont Pharmaceuticals ( "Himont" ).
3. A license agreement dated 26.10.1994 was executed between the applicant and Himont regarding the manufacturing and sale of the trademark. The agreement is annexed with the application. The primary facts which form the foundation of the application are not in dispute between the parties and the parties are on common ground with regard thereto. Thus, the registration of the trademark in the name of Himont since the year 1996 was within the knowledge of the applicant and the position continued to subsist until the filing of the application for declaring the trademark as invalid. The license agreement between the parties was terminated by the applicant vide termination letter dated 27.4.2009.
4. Himont filed a suit No.1813 of 2009 with the District Court, Lahore. The suit was for permanent injunction and declaration regarding the trademark FERPLEX. This aspect will exercise a gravitational pull on the outcome of the instant application and, therefore, a reference to the prayer made in the suit will have to be made. The prayer reads as under:- a. "A declaration that the exclusive agreement between the Plaintiff and the Defendant dated 26.10.1994 is still valid, intact and in force thus plaintiff has the sole right to manufacture, market, supply , distribute and sale the product FERPLEX in Pakistan. b. A declaration that the non-purchasing of raw material and its local manufacturing thereof by the Plaintiff does not amounts to breach of agreement, in any respect and plaintiff is not liable to this effect. c. A declaration that use of trademark FERPLEX by the plaintiff as FERPLEX SS Inj and FERPLEX PLUS containing substance as Iron Surcrose is not a breach of agreement dated 26.10.1994 or any other commercial arrangement between the parties and the same has not impaired or damaged defendant in any manner , whatsoever . d. A declaration that any use of the trademark FERPLEX in Pakistan by any party , including the Defendant herein, shall be an act of unfair competition and in violation of the plaintiff 's commercial and equitable rights and shall be commercially disadvantageous and unfair to the Plaintiff. e. A decree for permanent injunction restraining the Defendant, its agents, men, representatives and any person claiming through or on behalf of defendant from directly or indirectly interfering and/ or hindering or otherwise obstructing the business of the plaintiff by committing actions that are detrimental and prejudicial to the vested commercial interests of the plaintiff in any manner whatsoever and / or the business interest of the plaintiff in the manufacturing, marketing, selling and/or supplying FERPLEX on any ground, whatsoever, and from defendant resorting to any negative propaganda by way of negative convincing, publication of notices, circulation of brochures, handbills, literature and/or other incriminating material in the market/trade either directly or indirectly in any manner whatsoever. f. A decree for permanent injunction restraining the Defendant, its agents, men, representatives and any person claiming through or on behalf of defendants either directly or indirectly from using the trademark FERPLEX in Pakistan in any manner whatsoever . g. Any other relief or relief(s) which this Honourable Court deem fit and proper under the circumstances of the case. h. Cost of suit."
5. It can be seen from a reading of the prayer clause of the suit filed by Himont that the suit seeks a declaration "regarding the trademark FERPLEX". The suit by Himont also seeks a declaration to the effect that exclusive agreement between the applicant and Himont is still valid and enforceable as also that Himont has the sole right to manufacture, market, supply, distribute and sale of the product FERPLEX in Pakistan. On 6.9.2010, the applicant also filed a suit before the District Court, Lahore under the jurisdiction conferred on the District Court by the Ordinance. The suit by the applicant is for the grant of permanent injunction seeking to restrain Himont purportedly from infringing and using the trademark FERPLEX. Therefore, the suit by the applicant is also with regard to the trademark which is the subject matter of this application as well. It would be expedient to reproduce the prayer made in the suit by the applicant, which is as follow:- "This Honourable Court may further be pleased to pass/grant/direct: a) An order directing the Defendant to recall all the stocks of its products from the market being sold under the imitated trademark FERPLEX as well as for destruction or replacement of the labels, plates, markings thereof along with destruction or handing over to the plaintiff for destruction of all the offending labels, plates, markings and other printed material bearing the imitated trademark FERPLEX. b) To remove all figures, hoarding, boards, neon signs etc., bearing imitated trademark FERPLEX. c) An order directing the Defendant to get all its Marketing Approval/ Drug Registration for imitated trademark FERPLEX transferred to the name of the plaintiff. d) Any other relief that this Honourable Court may deem just and proper in the circumstances of the present case."
6. Once again, it is evident from the prayer reproduced above that the injunction has been sought with regard to the trademark FERPLEX and ancillary reliefs have been asked for which inter alia include an order directing the defendant to have all its marketing approval / drug registration transferred to the name of the applicant.
7. The provision at the heart of the application filed by Himont for the rejection of the application is section 80(4) of the Ordinance. For facility , the said provision is reproduced and reads as follows:- "S.80 (4) An application for declaration of invalidity may be made by an interested party either to the Registrar or to the High Court or a District Court, except that-
(a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or a District Court; and
(b) in any other case, if the application has been made to the Registrar , he may at any stage of the proceedings refer the application to the High Court or a District Court.
8. The case set up by Himont in its application for rejection of the instant application is that since the proceedings in respect of he trademark are pending before the District Court, Lahore by the mandate of sub-section (4) of Section 80 of the Ordinance, the instant application ought to have been filed before the District Court at Lahore and thus the present application falls within the mischief of the exception as contained in clause (a) of sub-section (4) and must be rejected.
9. As adumbrated, the substantial facts forming the backcloth of the application are not in dispute between the parties. It is correct that Himont was a licensee of the applicant for formulating, manufacturing and selling of pharmaceutical products under the trademark FERPLEX under a license agreement executed on 26.10.1994.
The agreement has effectively been terminated w.e.f. 01.04.2009. Himont alleges that the agreement could not be terminated and has brought a suit before the District Court, Lahore. It is also not in dispute that the trademark FERPLEX is the proprietary trademark of the applicant as also that the registration of the trademark FERPLEX with the Registrar Trademark was made in the name of Himont. The parties are at variance with regard to the fact whether the agreement gave the power to Himont to have the trademark registered in its name. The parties are poles apart on the interpretation put on the different clauses of the license agreement with regard to this aspect. The applicant asserts that by the license agreement, Himont was merely conferred a license for the use of trademark FERPLEX within the territory of Pakistan. Also that Himont had in the license agreement recognized the exclusive ownership of the applicant of its trademark FERPLEX as also that by the use of the trademark, Himont did not acquire any proprietary rights to it. The applicant provided requisite data and information to Himont to enable it to obtain marketing approval/ drug registration under the trademark FERPLEX and based on the information and data provided by the applicant, Himont succeeded in obtaining market registration from the applicant for formulating, manufacturing and selling the FERPLEX products as licensee of the applicant. However , the fact remains that the trademark was registered with the Registrar of Trademark in the name of Himont and the current application has been made by the applicant to declare as invalid the registration of the trademark.
10. Two grounds form the nub of the applicant' s arguments with regard to the application under Order VII, Rule 11 CPC filed by Himont. These grounds revolve around the true construction of provisions of sub-section (4) of Section 80 of the Ordinance. Firstly , the learned counsel states that in fact no proceedings are pending with the District Court within the contemplation of the term as used in sub-section (4) and thus, the exception to sub- section (4) is not attracted so as to convince this Court to allow the application under Order VII, Rule 11 CPC.
Secondly, the learned counsel invited this Court to hold that the purposive construction of sub-section (4) was that the choice to approach the appellate forum was retained by the applicant who brings an application under Section 80 for seeking a declaration of invalidity with regard to a trademark.
11. Section 80 delineates the grounds for seeking a declaration for invalidity of registration of a trademark.
According to sub-section (4), the application may be made by an interested party either to the Registrar or to the High Court or a District Court. Thus far, the choice lies with an interested party to file an application either to the Registrar or to the High Court or a District Court. Thereafter follows an exception which has been provided in sub - section (4). In terms of that exception if the proceedings concerning the trademark in question are pending in the High Court or a District Court the application shall be made to the High Court or a District Court. There is a purpose for providing an exception and to my mind the only purpose for providing the exception by the legislature is to avoid conflict of decisions and to encourage consistency of views on proceedings concerning the trademark in question. The learned counsel for the applicant laid great stress on the aspect that the proceedings before the District Court were not proceedings within the ambit of the term as used in clause 'a' of sub-section (4) of section 80 of the Ordinance. This submission of the learned counsel is nuanced and has no legal legs to stand upon. The term 'proceedings' is a compendious term and includes all or any causes which are brought before the courts and on which the courts can undertake judicial proceedings. It would suffice to refer to a judgment of the Supreme Court of Pakistan reported as the State through Advocate General, N.W.F.P., Peshawar v. Naeemullah Khan (2001 SCMR 1461 ) for an elaboration to the term 'proceedings'. It was held that:- "Keeping in view the literary meaning and the, interpretation of the word 'proceeding' as interpreted in various pronouncements given above, we are of the opinion that the word 'proceedings' is a comprehensive expression which includes every step taken towards further progress of a cause in Court or Tribunal, from its commencement till its disposal. In legal terminology the word "proceedings" means the instituting or carrying on of an action of law.
Generally , a 'proceeding' is the form and manner of conducting judicial business before a Court or judicial officer , including all possible steps in an action from its commencement to the execution of a judgment and in a more particular sense it is any application to a Court of justice for aid in enforcement of rights, for relief, for redress of injuries, or damages or for any remedial object. It in its general use comprehend s every step taken or measure adopted in prosecution or defence of an action."
12. The term 'proceedings' as elaborated by the Supreme Court of Pakistan in the precedent cited above leaves it in no manner of doubt that the suits pending before the District Court, Lahore filed by Himont and the applicant are included within the term 'proceedings' as used in clause (a) of sub-section (4) of Section 80 of the Ordinance.
Simply put, the term 'proceedings' includes every step taken towards further progress of a case in Court or Tribunal, from its commencement till its disposal. It is incredulous, therefore, to contend that the suits filed before District Court, Lahore are not proceedings and are, therefore, not included in any of the species which comprise the term 'proceedings'. The learned counsel for the applicant attempted to make a subtle distinction on an issue which arises peripherally from the first submission made by the learned counsel with regard to the meaning of the term 'proceedings'. He stated that the proceedings before the District Court were not regarding the use of the trademark but merely sought the cancellation of the registration of the drug with the Ministry of Health, Government of Pakistan. In other words, according to the learned counsel, the dispute before the District Court arises out of the license agreement but is not concerned wit the invalidity of registration of the trademark which is a distinct cause of action. In order to understand the proposition raised by the learned counsel for the applicant, the prayers made in the suits filed by the parties before the District Court, Lahore have been brought forth above.
In this application, the prayer is to the effect that the trademark registration be declared as invalid in terms of section 90(1)(b)(i) of the Ordinance and in the alternate it has been prayed that registration of trademarks be rectified by substituting the name of the applicant as the proprietor of the registered trademark. Therefore, the entire prayer of the applicant constitutes a request for a declaration of invalidity with regard to the trademark registered in the name of Himont. If we were to juxtapose the prayers made in this application with the one made by Himont in its suit before District Court, Lahore it would become evident that Himont has prayed for the converse of what the applicant has prayed in the instant application. The two prayers are inextricably linked to one another and one cannot be separated as a cause of action from the other. The prayers are so intertwined that the grant or refusal of one will necessarily impact upon the prayer made in the other proceedings and, therefore, there is no escape from the conclusion that the two proceedings are proceedings concerning the trademark in question.
It is also clear from a holistic reading of the plaint before the District Court filed by Himont and to which a reference was also made by the learned counsel for the applicant in particular clause 9.1 that Himont derives its right to the registration of the trademark in its own name from the license agreement and upon mutual promises between the parties. Therefore the right, according to the learned counsel for Himont, flows from the terms of the license agreement, which Himont deems valid and subsisting for all intents and purposes. It is under these circumstances that inter alia a declaration has been sought in the suit for the continued use of the trademark FERPLEX by Himont as also for a declaration that any use of the trademark FERPLEX by any party including the defendant shall be an act of unfair competition and in violation of Himont's commercial and equitable rights. A decree for permanent injunction restraining the defendant or any of its agents from obstructing the business of Himont has also been sought. More importantly, a decree for permanent injunction has been sought restraining the applicant herein either directly or indirectly from using the trademark FERPLEX in Pakistan in any manner whatsoever. Therefore, the relief claimed in the suit filed by Himont is in conflict and directly contrary to what has been asked for in the present application. As adumbrated, if the decree for permanent injunction restraining the defendant as prayed for is granted, it will necessarily impinge upon the right of the applicant to maintain the present application seeking invalidation of the trademark. For, these two prayers run counter to each other and it is for this purpose that the enactment of clause (a) of sub-section (4) of Section 80 of the Ordinance has been brought about for the primary purpose of avoiding conflict of judgments by different courts. But in my opinion, the crucial words are "concerning the trademark in question". These words, are broad enough to include within them any dispute concerning the trademark in question. It will be well-nigh impossible to carve out a distinction or a set of disputes separately and individually so as to hold that one or the other dispute is not concerning the trademark in question and is not caught by the mischief of clause (a) of sub-section (4) of Section 80. A holistic and expansive view of these words will have to be taken and the construction to be put on these words cannot be pedantic or narrow. But in my opinion the present application is concerning trademark in question which dispute is pending before the District Court, Lahore and it would be proper and will comport with the intent of the legislature that this application be heard by the District Court, Lahore which is already seized of the suits filed by the parties on different aspects concerning trademark in question.
13. The learned counsel for the applicant made a reference to section 72 of the Trademark Act, 1940 and referred to the words "as the case may be" as used in section 72 of the Act, 1940. He also referred to section 73 of the Ordinance, 2001 in which in sub section (4)(a) while making a similar exception the legislature has used the words "as the case may be". In my opinion, nothing turns on this contention raised by the learned counsel as even if the words "as the case may be" are not used in clause (a) of sub section (4) of Section 80 of the Ordinance, the intention of the legislature is clearly to the same effect and does not detract from the construction which has been put on the said provision. Precisely , the learned counsel invited this Court to hold that the absence of these words has left a choice with the applicant to make the application to either the High Court or the District Court. This argument by the learned counsel will virtually have the effect of nullifying the intention of the legislature in providing an exception and will make the entire exception as redundant. It is trite principle and a rule of construction that redundancy cannot be attached to any provisions enacted by the legislature. If the argument of the learned counsel were to be accepted, this will mean that the application may be filed will the High Court or a District Court irrespective of the proceedings pending in the High Court or a District Court. This will have the unholy effect of making a mockery of the law and, therefore, such an interpretation could not be countenanced.
14. While construing an enactment, the intent and purpose of legislature in making that enactment has to be culled out. The argumentation raised by the learned counsel for the applicant are tenuous and do not chime with the purpose which permeates the entirety of the Ordinance. Section 73 refers to the revocation of registration of a trademark and sub section (4) is in pari materia with sub-section (4) of Section 80 thus creating an exception of the same kind. But firstly, to reiterate, the premise of the petitioner's primary argument will have the unholy effect of making the purpose of the exception as superfluous and a pauper's will. If, as the petitioner submits, the choice still retains with the applicant, what was the need for providing an exception? There is no other purpose but to make it certain that any such application for invalidity of registration must come before the Court before which the proceedings concerning the trademark in question are pending and at the heart of the exception is a desire for consistency and to rule out conflict of judgments. For, if the proceedings are pending before the High Court, it will be well-nigh impossible for a District Court to take a contrary view or to hold that the proceedings before the High Court are not 'proceedings concerning the trademark in question'. The exception has another intended effort. It obviates the necessity of filing for an application under Section 10, CPC for stay of proceedings in every other case. If the exception were to be taken out of the scheme of the Ordinance, the most likely scenario is an application under Section 10 CPC and the Courts will be caught in a vortex of thorny issues regarding the applicability of section 10 CPC in each individual case.
15. The wrongness of the argument is also evident from a consideration of the provisions of section 73 of the Ordinance. Section 73, so far as relevant, reads as under:- 73(4) An application for revocation may be made by an interested party to the Registrar , except that a) if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or , as the case may be, the District Court; and b) in case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the High Court or a District Court.
16. Sub-section (4) confers the jurisdiction to entertain and decide an application for revocation on the Registrar .Thus, and it requires to be reemphasized, the power vests in the Registrar and nor in either the High Court or the District Court. However , the exception still provides that "if proceedings concerning the trademark in question are pending in the High Court or, the District Court...", the application shall be made to the high Court or the District Court. Therefore, in that case only with the High Court or a District Court also have the jurisdiction to decide an application under Section 73. This clearly brings forth the anxiety of the legislature to avoid inconsistency and conflict. The legislature took pains to carve out a jurisdiction so as to confer it on the High Court or a District Court, out of the Registrar's jurisdiction. It will be borne in mind that the original jurisdiction does not belong to either the High Court or the District Court but to the Registrar. If in an exceptional case, it is being conferred on these forums too, the conclusion is ineluctable; that is, that the legislature intends all disputes to be adjudicated and decided by the same forum and to curb the proclivity of forum shopping. It does not leave it to the whim or discretion of an interested party to make an application to a forum of its choosing or to indulge in predilection. This will also save the courts and the parties from engaging in the tedious and nuanced issues such as res judicata which will be the essential fallout of a determination by any of the forums. The overall effect will be spiraling of tardy and vexatious litigation which is the opposite of what is designed to be achieved by the exception. Dealing with a case justly includes, so far as practicable, saving expenses, dealing with as many aspects of the case as it can on the same forum and ensuring that the trial of a case proceeds quickly and efficiently .
17. The exception is couched in broad terms. The words "if proceedings concerning the trademark in question are pending in the High Court or, the District Court..." evince a broad-based and wide-ranging concept which is inclusive. From the meaning of the term 'proceedings' brought out in the judgment of Supreme Court of Pakistan, there is no doubt that it embraces within it the suits filed by the parties before the District Court and the current application too. But the key word in any opinion is 'concerning'. It connotes all or any proceedings even remotely touching upon the trademark in question. The word renders the entire concept fluid and plastic without being hedged in, in any manner. If the proceedings are brought under the provisions of the Ordinance, they are necessarily proceedings concerning trademark, whether they arise out of a contact or are brought for revocation of registration or for declaring as invalid the registration of a trademark.In this case, Himont resists the application for invalidity , tooth and nail. It seeks both the license agreement and the registration to be declared as valid in the suit before the District Court. The applicant says that retention of the registration of trademark is not a specific prayer in the suit filed by Himont. That may be so but the effect of declaring the license agreement to be subsisting and valid would have the consequence of impacting the question of registration too and there is no escape from it. The use of the word 'shall' too lends actuality to the analysis and clearly brings forth the mandatory nature of the provision.
18. As if this was not enough, the legislature enacted section 116 to reinforce the purpose of bringing in the exception in sub-section (4) of section 80. Section 116 is to the following effect:- "116. Procedure in certain cases of option to apply to the High Court, a District Court or the Registrar - Where under this Ordinance, an applicant has the option of making an application either to the High Court or a District Court or to the Registrar - a) if any suit or proceedings concerning the trade mark in question are pending before the High Court or a District Court, the application shall be made to the High Court or , as the case may be, the District Court; and b) in any other case, if the application is made to the Registrar , he may at any stage of the proceedings refer the application to the High Court or a District Court.
19. Once again, section 116 conceptualis es the same statutory enterprise and is an overarching provision which applies to all applications made under the Ordinance. It seeks to attain the same end, that is, all decisions concerning a trademark should be consistent and made by the same forum.
20. The learned counsel for the applicant relied upon Jewan and 7 others v. Federation of Pakistan through Secretary , Revenue, Islamabad and 2 others (1994 SCMR 826), Rafiuddin v. Karachi Metropolitan Corporation and 2 others (1994 MLD 874) and Iqbal Begum v. Farooq Inayat and others (PLD 1993 Lahore 183).These judgments elaborate upon the concept and contours of Order VII, Rule 11 CPC. However , in my opinion, it is not necessary to allude to these precedents as the concept is very well settled and the issue regarding the applicability or otherwise of Order VII, Rule 11 CPC does not arise as it is not denied that in these proceedings the general provisions of civil procedure apply and in case this Court comes to the conclusion that the present proceedings are caught by the mischief of sub-section (4) of section 80 of the Ordinance, this Court has the power to make necessary directions in order to give ef fect to those provisions and there is no cavil with this proposition.
21. The learned counsel for Himont referred to Royal PVC (Pvt.) Ltd. through Authorized Officer v. Registrar of Trade Marks and another (2011 CLD 833) which was a case concerning application under Section 73 of the Ordinance for the revocation of the trademark. It was held in this judgment that the application ought to be filed with the Registrar and the only exception which allows the filing of such an applic ation before the High Court if proceedings were already pending with the High Court. This precedent can be cited as a complete answer to the arguments raised by the learned counsel for the applicant that the applicant has a choice to file the proceedings either before the High Court or before the District Court. Messrs H & B, General Trading Company through Director v. Messrs International Marketing Company through Proprietor and 2 others (2009 CLD 1028 ) is a Division Bench judgment of the Karachi High Court which held that proceedings under Section 73 and 80 of the Ordinance require such proceedings to be filed before the forum where proceedings concerning the trademark is already pending. This judgment is on all fours with the facts in the instant applic ation and primarily supports the findings rendered in the instant application. The Division Bench came to the conclusion that all such proceedings must be decided by the same forum and this was based on sound principles of administration of justice and judicial governance and proceeded thereafter to return the application to be filed at the proper forum. The appeal before the Division Bench arose out of a judgme nt of the Single Bench of the Karachi High Court reported as 2009 CLC 354 which substantially arrived at the same conclusion which was af firmed by the Division Bench.
22. In view of the above, C.M No.1-C of 2011 is allowed . The application is hereby returned to the applicant to be filed before the appropriate forum.