SHAHID KARIM, J.---This appeal lays a challenge to the order dated 08.05.2012 passed by the Registrar of Trademarks, Lahore. The impugned order decided two cross rectification applications.
Rectification No,15 of 2010 was filed against the registration No,158845 in class 17 registered in the name of Royal PVC (Pvt.) Ltd., Peshawar. Rectification Application No,26 of 2011 was filed against the registration No,84678 in class 17, registered in the name of Royal Enterprises, Lahore. For the sake of brevity, Rectification No,15 of 2010 filed by Royal Enterprises, Lahore shall be referred as the "Rectification 15" and the Rectification No,26 of 2011 shall be referred as "Rectification 26".
2. This judgment shall decide two appeals, the instant appeal FAO No,326 of 2012 and F.A.O. No, 327 of 2012 filed by Muhammad Ismail (Appellant) against the order of the Registrar Trademarks dated 08.05.2012 by which order the trademark (Royal) registration bearing No,84678 in class 17 was expunged from the trademark register and the trademark (Royal) of Royal PVC (Pvt.) Ltd. bearing No,158845 in class 17 was retained on the register of trademark.
3. The appellant filed application, Rectification 15 against the trademark 'Royal' on the ground inter alia that: a. That the application for trademark 'Royal' was filed on 03.12.1984 and was assigned to the present proprietor on 03 . 10. 2005; b. That the said trademark was being used since that time by the appellant; c. That the registration of trademark Royal hearing No,158845 was secured by the respondent through fraud and with the sole object of making wrong gain out of the goodwill and reputation of the appellant's trademark registered earlier in time relating to the same goods; and d. That the registration of the impugned trademark was obtained without sufficient cause and was liable to be rectified from the register of trademarks.
4. The respondent had, on an earlier occasion, filed an application for rectification of the register under section 73(a) and (b) of the Trademarks Ordinance, 2001 before the Sindh High Court at Karachi for the removal of the appellant's.trademark. It was held by the Sindh High Court that the proper forum for such an application was the Registrar of Trademarks and could not be filed directly before the High Court. The respondent was permitted to file an application for revocation of registration of the appellant's trademark before the Registrar Trademark* and consequently the respondent flied Rectification 26 in respect of trademark of appellant on the ground of non user of mark.
5. On the basis of pleadings of the parties, the following issues were framed by the Registrar of Trademarks: a. Whether the applicant namely Royal Enterprises, Lahore was a person aggrieved in the circumstances of the case? b. Whether the Registration of Trademark under No,1 58845 in class 17 for "Royal" was obtained by the Respondent namely Royal PVC (Pvt.) Limited, Peshawar in bad faith and by fraud. c. Whether the mark registered under No,84678 in Class 17 in the name of Royal Enterprises, Lahore is liable to be removed from the Register due to non-user of the mark.
6. The appellant produced the following documents in support of its contentions which will have a gravitational pull on the adjudication of the two appeals filed by the appellant as also will determine the competence of the impugned decision rendered by the Registrar Trademarks: I. Letter from Secretary CEB to Collector of Central Excise about Gul Muhammad Khalid President of PVC Pipe Manufacturers Association about the problems of Association re payment of excise dated 31st August, 1995, (at pg. 32 of Rectification No,15/2010 File (Vol.III); II. Letter from PM Secretariat regarding grievance of Gul Muhammad Khalid not Muhammad Ismail dated 22nd August, 1995, (at pg. 34 of Rectification No,15/2010 File [Vol. II]); III. Bank Statement of Sultan Sons Plastic Industries dated 30-06-1995 (at pg. 35 of Rectification No,15/2010 File [Vol. 11]); IV. Receipts of payment of WAPDA Bill for February 1992 by Gul Muhammad Khalid and not Muhammad Ismail (at pg 36-38 of Rectification No,15/2010 File [Vol. 11]); V. Inspection Report/test report obtained by Gul Muhammad Khalid dated 22-01-1992 (at pg 39 of Rectification No,15/2010 File [Vol. II]); VI. LDA WASA Bill dated 20-02-1989, May June, 1994 Gul Muhammad Khalid (at pg 41 and 42 of Rectification No,15/2010 File [Vol. II]); VII. Sul Gas Bills for Gul Mohammad Khalid from 28-10-1993 to 28-12-1993, (See pg 43-44 of Rectification No,15/2010 File [Vol.II]); VIII. Abdul Razzaq Engineering Bill dated 20-06-1982 and 15-06-1981, (See pg 45 of Rectification No,15/2010 File [Vol. II]); IX. Register of Employment from July 1983 (See pg 46 of Rectification No,15/2010 File (Vol.!!]); X. Central Excise duty, Sales Tax records etc for 1989 (See pg 48-61 of Rectification No,15/2010 File [Vol. Il]; XI. Redemption Deed dated 03-11-1996. (See pg 62 of Rectification No,15/2010 File [Vol. II]).
7. It may be reiterated that although the application for registration of trademark by the appellant was made on 03.12.1984, the registration of Trademark of the appellant was formally entered in the Register of Trademarks at a time subsequent to the trademark registration of the respondent on 03.11.1999. However, it is not in dispute between the parties that the application of the appellant for the registration of trademark was prior in time to that of the respondent. The primary contention raised by the learned counsel for the appellant was that the Registrar Trademarks travelled beyond the pleadings of the parties and rendered a decision on the basis of clause 'b' of subsection (1) of section 73. Precisely, the case of the appellant is that the respondent had challenged the trademark registration of the appellant on the touchstone of clause (a) of subsection (1) of section 73 and clause 'b' was not at all the basis for the challenge while the Registrar Trademarks had rendered its decision on the basis of clause 'b' and not clause 'a'. which has impinged upon the right of the appellant to be treated fairly and with due process of law.
According to the learned counsel, since the challenge on the basis of clause 'b' was not in the contemplation of the appellant, he was precluded from adducing the relevant evidence relating to allegations of non-user for the last five years prior to the making of the rectification application.
However, the issue at 'c' reproduced above, relates to the question as to whether the mark registered in the name of the appellant was liable to be removed from the register due to non user of the mark. The said issue fails to identify whether it relates to clause 'a' or clause 'b' and contrary to the claim of the appellant the issue is couched in unreal terms and places the onus on the appellant to prove not only the allegation with regard to clause 'a' but also with regard to clause 'b'.
It may be stated that the first five years envisaged by clause 'a' would commence from 03.12.1984 and would extend to 03.12.1989 whereas the period covered by clause 'b' will commence from March, 2006 and end in March, 2011, till the filing of the application by the respondent. However, paragraph 26 of the rectification application filed by the respondent puts paid to the arguments raised by the learned counsel for the appellant which forms the main plank of the attack of the appellant to the impugned decision rendered by the Registrar Trademarks. It has specifically been mentioned in paragraph 26 that the challenge as both on the basis of clause 'a' and clause 'b' of subsection (1) of section 73 of the Ordinance, 2001 and not merely on the basis of clause 'a' alone.
Therefore, the appellant was obliged to adduce the relevant material and evidence which would bring home the fact that the appellant was not guilty of lack of use of the trademark for both the periods contemplated by clause 'a' and clause 'b'.
8. Applications C.M No,1 of 2013 and C.M No,1 of 2014 were filed by the appellant for permission to produce evidence in these appeals. The evidence sought to be produced relates to the period between the year 2004 till 2008. It is not disputed that the documents sought to be filed were in tact in the possession of the appellant at the time of the proceedings in the rectification application before the Registrar Trademarks and it cannot be alleged that these documents were not available with the appellant at the time of the adjudication by the Registrar. It would be proper to reproduce section 73(1)(a)(b) around which the entire controversy revolves: "73. Revocation of registration.---(1) The registration of a trade mark may be revoked on any of the following grounds namely:
(a) that within the period of five years following the date of completion of registration procedure, it has not been put in bona fide use in Pakistan by the proprietor or by an authorized user thereof, in relation to the goods or services for which it is registered and there are no proper reasons for its non-use;
(b) that the bona fide use has been suspended for an interrupted period of five years and there are no proper reasons for its non-use."
9. However, Order XLI, Rule 27 which relates to production of additional evidence in the appellate court disentitles the production of additional evidence by the parties to an appeal whether oral or documentary. The only exception to the non production of additional evidence is where the court from whose decree the appeal is preferred has refused to admit evidence which ought to have been admitted or where the appellate court requires any document to be produced or any witness to be examined to enable it to pronounce judgment or for any other substantial cause the appellate court allows any such evidence or document to be produced or witness to be examined.
Under the circumstances. I do not find it expedient to require any documents to be produced so as to enable this court to pronounce judgment. Also there is no substantial cause on the basis of which additional evidence may be allowed to be produced by the appellant. It is trite principle settled by respectable authority that additional evidence cannot be produced to fill the lacuna in a case, Muhammad Ali v. Qaiser Jehan Begum (2004 CLC 1424). In the instant case, the production of additional evidence is nothing but an attempt on the part of the appellant to fill the lacuna and to bring on record documents which were in the possession of the appellant at all times and could have been produced with due diligence before the Registrar Trademarks. From a perusal of the evidence and material produced by the appellant with the Registrar. it can be seen that none of these documents relate to the two periods in question. Not only that these documents do not relate to the period covered by clause 'b' but they do not also establish the relevant facts regarding the user of the trademark during the period covered by clause 'a' as well. These documents have been mentioned in paragraph 'V' of the impugned decision and were to the following effect: a. Affidavit of M. Ismail son of Gul Muhammad along with b. Letter dated 22/08/1995, c. Letter dated 31-08-1995, d. Statement of Account for 30-06-1995, e. TML Bill for February 1992, f. Inspection Report/test report dated 22-01-1992: g. LDA WASA Bill dated 20-02-1989, May June, 1991, h. Sui Gas Bill from 28-10-1993 to 28-12-1993, i. Gas pipe line Bill 26-06-1990, j. Abdul Razaq Engineering Bill dated 20-06-1982 and 15-06-1981, k. Register of Employment from July 1993, l. Central Excise duty, Sales Tax etc. for 01-07-1989. m. Redemption Deed dated 03-11-1996."
10. It can be seen from the list of documents reproduced above, that these documents do not establish neither the requirement of clause 'a' nor of clause 'b' and it does not matter whether additional evidence is allowed to be produced or not. To reiterate, none of the above documents are proof of user between 1984 and 1989 (the first five years). This is on account of the fact that whether it be a case under clause 'a' or 'b' the appellant has not brought home the onus placed by issue 'c' and has failed to discharge that onus. Both the applications C.M. 1 of 2013 and C.M. 1 of 2014 are, therefore, dismissed.
11.Learned counsel for the respondent rightly pointed out that the only raw material for the manufacture of the goods by both the appellant as well as the respondent is PVC Raisin and for which a company by the name of Engro Polymer is the only suppliers and, therefore, the most pertinent and relevant evidence was the invoices etc. in respect of the supplies from Engro Polymer. The appellant has not attached any document which would show the supplies to have been made by Engro C Polymer to the appellant for the manufacture of UPVC Pipe, Some of the documents which are sought to be produced by the appellant through C.M. 1 of 2013 are purportedly sales tax invoices but they do not relate to supplies made by Engro Polymer. The most important requirement for the manufacture of UPVC pipe is to be registered with the Pakistan Standard and Quality Control Authority and, therefore, the pipes have to be conformed to the Pakistan Standards and SRO 453(1)/1993 dated 26.05.1993 by which the Federal Government has prohibited the manufacturer, keeping in stock and sale of UPVC Pipe which do not confirm to the Pakistan Standard. The documents produced by the appellant with the Registrar Trademarks and now sought to be produced as additional evidence do not show the use of material which conforms to the Pakistan Standards. Also the electricity and gas bills have not been produced in order to show that the manufacturing facility of the appellant is in operation. The application for additional evidence was filed almost sixteen months after the date of the filing of the appeals.
Since the application for additional evidence has been declined in these appeals, it is not necessary to discuss the nature of the documents which are sought to be filed as additional evidence.
12. Contrarily, the respondent has produced documents before the Registrar which show clearly that the respondent has been in use of the trademark "Royal". Documents were produced to the effect that the respondent was registered with the Pakistan Standards and Quality Control Authority in respect of UPVC pressure pipes for cold potable water of royal brand. The certificate shows that the respondent is making annual marking fee of 0.05% of the annual production value for the continued validity of the certificate. As explicated above, it is unlawful. to manufacture, keep in stock or sell UPVC pressure pipes for cold potable water which did not conform Ito the Pakistan Standards. This was an important piece of evidence clearly bringing forth the fact that the respondent was a serious and bona fide manufacturer of UPVC pipes and is in compliance with the manufacture requirements of health and safety laws. Such a document is conspicuously absent in the case of the appellant. Further a letter dated 27.01.2007 from the Public Health Engineering Department, Government of Punjab demonstrates that the respondent is registered as an approved manufacturer of UPVC pipes in Punjab. It is also registered with WASA department and the fact of registration with these departments is ample proof that pipes manufactured by the respondent are recognized and are approved products for use in Government projects. Similarly the respondent is an approved contractor for the supply of UPVC pipes in respect of Balochistan, Khyber Pakhtunkhwa and Jammu and Kashmir health departments. Apart from this, the respondent produced a license from Pakistan Engineering Council dated 23.12.2006 which mentions its field of specialization of UPVC pipes which further lends support to the contention of the respondent that it is a bona fide manufacturer of UPVC pipes and use of trademark "Royal".
The most crucial documents submitted by the respondent before the Registrar of Trademarks were sales tax invoices, sale tax returns and export documents for the period between 2006 to 2011 which clearly mention the word "Royal" as trademark as well as value of the products and the sales tax paid on it. The input tax paid by the respondent clearly shows that the respondent is purchaser of raw material for the manufacture of UPVC pipes as well as pays tax on the use of such raw material and consumption of electricity. Export invoices have also been attached by the respondent which are required to be furnished by the exporter pursuant to the Foreign Exchange Regulation Act, 1947 and attested by the State Bank of Pakistan. These export invoices are corroborated by the relevant banking documentation required by the State Bank of Pakistan. In short, the documents produced by the respondent have not been controverted and rebutted by the appellant with corresponding documents which would show that the appellant has been the user of trademark "Royal" and is a good faith manufacturer of UPVC pipes and has an operational manufacturing unit for such pipes.
13. In view of the above, the impugned decision of the Registrar Trademark is unexceptional and is hereby upheld. The appeals filed by the appellant are consequently dismissed.