SYED HASAN AZHAR RIZVI, J.---This appeal under section 76 of the Trade Marks Act, 1940 read with section 114 of the Trade Marks Ordinance, 2001, is filed by the appellant to challenge the order dated 12.04.2006 passed by the respondent No.1, whereby refused the appellant's Trade Mark Application No. 124363 for registration of appellant's trade mark "GALLUP" in class 16, accepted Opposition No.56/1999 filed by Respondent No.2 and allowed its Trade Mark Application No.129970 for registration of the same mark.
2. The brief facts of this case are that the appellant is a private limited -compan y incorporated in Pakistan. The dispute involves ownership rights of trademark "GALLUP" in Pakistan in respect to Class 16 of the international classification of goods. The parent organization of the appellant, Pakistan Institute of Public Opinion (PIPO), introduced public survey and public opinions research in Pakistan. PIPO and its affiliate organization Gallup Pakistan (Pvt.) Limited and the appellant are the only members of Gallup International Association in Pakistan and are the exclusive users of trade mark GALLUP in Pakistan till to date. In 1981, PIPO became the exclusive Associate Member of Gallup International in Pakistan. In 1984, PIPO became the exclusive full member of Gallup International in Pakistan and PIPO and its affiliates have been consistently using the trademark GALLUP and 'Gallup Pakistan together with Pakistan Institute of Public Opinion since at least 1981. Gallup Pakistan has been existing for nearly forty years and has been the exclusive user of the trade mark "GALLUP" in Pakistan. The joint names of Gallup Pakistan and Gallup Organization in the International Gallup Directories illustrate that respondent No. 2 never claimed any right for use of name "Gallup" in Pakistan nor objected to the use of the said name by the appellant and its affiliates in Pakistan. Respondent No. 2 accepted throughout the right of Gallup Pakistan to use the name "Gallup" in Pakistan exclusiv ely. The appellant on 07.5.1994 filed an Application No. 124363 for registration of its trademark "GALLUP" in Class 16 and the application was accepted for advertisement.
Respondent No. 2 filed Opposition No. 56 of 1999 alleging that it was the proprieto r of Trade Mark "GALLUP" and also disclosed pendency of its Application No. 129970 dated 02.5.1995 for registration of same mark in same class.
Respondent No. 2 has failed to file a single document showing use of the name "Gallup" by them in Pakistan. The appellant filed a counter statement to the opposition along with documentary evidence and affidavit supporting such counter statement. Respondent No. 2 never filed any reply or rejoinder to the counter-statement of the appellant the contents of the, appellant's counter statement therefore remain un-rebutted till date. The respondent No.1 settled the following issues:-
(1) Who is the proprietor of the trademark "Gallup" in Pakistan?
(2) Whether use of the trademark "Gallup" in Pakistan by the Appellant would entitle it to secure registration in its name?
(3) Whether the adoption of the trademark "Gallup" by Applicant constitutes honest concurrent user?
3. After settlement of Issues, the respondent No. 1 (Registrar) through the impugned order accepted the Opposition of respondent No. 2 and allowed respondent No. 2's application for registration of trade mark "GALLUP" whereas, the appellant's application was refused. The appellant challenged the said order through the instant appeal on the plea that the impugned order is not tenable in law and is liable to be set aside with the following prayer:- "In view of the above it is most respectfully prayed that Impugned Order may kindly be set aside and respondent No.1 be directed to register the Trade Mark "GALLUP" in favour of the appellant and refuse the application filed by respondent No.2.
The Impugned Order may kindly be suspended during the pendency of this appeal.
Cost of the appeal may also be granted.
Any other relief to the appellant which this Hon'ble Court deems fit in the circumstances of the case may also be granted."
4. I have heard the arguments of the learned counsel for the appellant and learned counsel for the respondent No.2 and perused the material available on record.
5. Mr. Ijaz Ahmed, learned counsel for the appellant has argued that the impugned order has been passed without taking into consideration the fact that the appellant is the exclusive user of trademark "Gallup" in Pakistan, which is established by admitted documents. He has further argued that it is an established fact that the name of the appellant or its parent organization has appeared several times in Gallup International Directories along with and to the knowledge of respondent No.2. He has also argued that respondent No.2's use of this trademark anywhere else in the world is irrelevant as respondent No.2 has failed to prove any work carried out by them in Pakistan. He has urged that the entire project of Gallup Pakistan was started by Dr. Ijaz Shafi Gilani upon encouragement of Dr. Gallup since 1978. He has also urged that Dr. Gallup and scholars from their respe ctive countries established "The International Association of Public Opinions Institutes" which was later conve rted into "Gallup International Research Institutes and thereafter Gallup International Association was incorporated, which took over the business of Gallup International Research Institutes and Gallup International only makes one member in every country , these members also had the right to use the name "Gallup" in Dr. Gallup's own life time as well as afterwards. He has argued that the Appellant is honest, concurrent user in terms of international usage and reputation of the trademark "Gallup". He made reference to various local and international publications to show the reputation of the appellant as Gallup, which reads as under:-
(1) Publication in Pakistan.
(2) Subscriber list of Political W eather Report as referred.
(3) Pakistan Television V ision Programme.
(4) List of Reports and Clients of Gallup Pakistan 1980-2005.
(5) 3-day International Marketing Congress, Marcon 99 held at Karachi.
(6) Award of Excellence for the year 2003.
(7) MRSP Newsletter .
(8) CBR Survey documents and magazine advertisements.
(9) Herald News clippings.
International reputation of the Appellant as Gallup Pakistan in:
(1) Gallup International Conferences.
(2) Gallup International Directories.
(3) Gallup V oice of the People 2006.
(4) ESOMAR directory .
(5) Article in Asian Survey 1988. (Asian Survey was at the time America's leading academic journal on Asia, published by the University of California Berkeley).
(6) The Economist Magazine (U.S. Edition) dated May 22, 1999.
(7) The Economist dated September 18, 1999.
(8) The Economist dated July 14, 2001.
(9) The Economist dated October 8, 2001.
(10) Newsweek dated October 18, 2001 (reputation is distinct for Respondent No. 2's reputation).
(11) Newsweek (Atlantic Edition) dated October 22, 2001.
(12) Asian Survey 2001.
(13) Time Magazine dated April 29, 2002.
(14) Gallup International Letter dated March 12, 1984.
(15) Telefax Transmission by Asian Mass Communication .Research and Information Centre dated February 6, 1992.
(16) Opinion Research Business London letter dated December 16, 1994.
(17) lope Test letter dated May 1995.
(18) Gallup A/s Denmark dated September 14, 1995.
(19) V ilstrup Research. Denmark letter dated May 1996.
(20) NIPO letter dated February 27, 1996.
(21) TNA (TAYLOR NELSON AGB) letter dated June 16, 1995.
(22) Gallup London U.K. letter dated September 22, 1994.
6. Learned counsel for the appellant has urged that the impugned order is a non-speaking order and does not contain any reasoning at all for arriving at the conclusion. It merely reproduces the contention of the parties and nothing more as the only discussion made by the Registrar does not contain any reasoning and completely ignores the evidence produced by the appellant. He has urged that Registrar has failed to mention a single document filed by the appellant. Therefore, the impugned order has been passed by completely ignoring the relevant facts and evidence. In this regard he made reference to Section 10(3) of the Trade Marks Act 1940 clearly states that disputed issues relating to title of a trademark cannot be decided without proper evidence. Respondent No. 1 has neither himself recorded the evidence nor referred the parties to a competent civil court for decision of the disputed issues and in absence of proper evidence this Court in appeal cannot properly appreciate the issues involved in the matter . For convenience sake, section 10(3) of the Trade Marks Act, 1940 is reproduced below:- "10(3). Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other , in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court."
7. Learned counsel for the appellant has urged that if this issue is to be decided vis--vis worldwide use of the name, then the Court would also have to look at the details of global dispute between Gallup International Association ("GIA") (of which the Appel lant is a member) and Respondent No. 2 (Gallup Inc.). GIA, which is repeatedly mentioned in Appellant's Affidavit submitted before the Registrar . He has also urged that GIA is an association of independent Gallup companies from all over the world and Respondent No. 2 remained a member of GIA starting in the late 1940s. But in the early 1992, Respondent No. 2 had a fallout with the GIA and since then, it has been litigating against GIA members in various jurisdictions of the world. He has further urged that the dispute between Respondent No. 2 and GIA over worldwide use of the name is exactly the kind of complex factual controversy which attracts the scope of section 10(3) of the Trademarks Act (and its successor section 17(6) of the Trademarks Ordinance, 2001). It cannot be decided by the Registrar using affidavits only, and should go to the civil courts for proper determination. He has contended that the core competence of the Registrar set up under the Trademark Act is to determine disputes which are relatively simple and can be decided using affidavits only.
However , determining the nature of a commercial arrangement between two foreig n entities - GIA and Respondent No. 2 all the way from 1940 till their fall-out in 1992, is well beyond the Registrar's scope. He has also contended that wherever the matter was properly tried by courts on the basis of evidence, respondent No. 2 lost the case. This includes, inter alia, South Korea, Japan, Netherlands, Switzerland and Czech Republic. After taking into account evidence about the long history of the GIA, domestic courts in these and many other countries came to recognize that Respondent No. 2 is just a rich American corporation which is trying to unfairly bag the fruits of the labor of independent scholars from all over the world.
8. Besides, learned counsel for the appellant has made reference to the earlier litigation between the appellant and respondent No.2 and stated that respondent No.2 filed a Case No.0 08-01577 WHA in the Court of Northern District of California (Gallup, Inc. v. Business Research Bureau (Pvt.) Ltd. Gallup Pakistan). However , the learned counsel has urged that appellant was not in a position to afford the very expensive legal fees for a full trial in the USA and in fact even the summary proce edings were conducted in person, as such, the appellant entered into a settlement agreement dated 30.09.2010 with respondent No.2 with only agreeing not to use the Gallup mark in the USA and to provide a disclaimer in respect of internet publications, written materials and interviews that the appellant was not associated with respondent No.2. He has also urged that appellant has in fact never intended to use the mark in the USA nor it has ever claimed an association with respondent No.2 except as a fellow member of GIA, until the time that respondent No.2 was a member of GIA. He has further urged that though the settlement agreement was not inconsistent with the legal position of the appellant, however , the appellant's rights with regard to the Pakistan proceedings i.e. the present case were completely protected in terms of Clause 8 of the settlement agreement, which reads as under:- "8. Trademark Rights in Pakistan. The restrictions and rights set forth in this Agreement are solely limited to the United States and its territories. This Agreement has no relation to, bearing on, or consequence regarding the Parties' rights to and use of the GALLUP mark in Pakistan or elsewhere, including but not limited to the Parties' participation in the case before the Registrar of Trade Marks at Karachi, captioned In the matter of Opposition No. 56/1999 to Application No. 124363 in class 16 for the Trade Mark GALLUP . The Parties make no representations in this Agreement regarding their respective rights, use, or ownership of the GALLUP mark in Pakistan. By way of this Agreement, Gallup does not authorize or consent to Defendants' use of the GALLUP mark in Pakistan or any other territory or country of the United States."
9. Learned counsel has next contended that no rejoinder was filed by respondent No. 2 to the appellant's affidavit in support of the counter-statement before the Registrar . He has contended that the appellant's contentions and documents produced remained unrebutted. In such circumstances respondent No. 1 (Registrar) had no basis to reject the same. He has further contended that respondent No. 2, in paragraph 10 of the Opposition No. 56 of 1999 had stated that respondent No. 2 is not aware of any use of the mark by the appellant, however , realizing that respondent No. 2's stance was not sustainable in view of the documents filed by the appellant, respondent No. 2 has now changed its stance and in parag raph 5 of the Counter Affidavit to the Injunction Application stated that the appellant was using the trade mark 'Gallup' as respondent No. 2's agent. Learned counsel for the appellant, therefore, prayed for allowing the instant appeal and setting aside the impugned order passed by respondent No.l.
10. Learned counsel for the appellant in support of his submissions, has placed reliance on the cases of Basic Trade Mark S.A. v. Kapur and Company (2004 CLD Karachi 1454) , Wella Aktiengesellschaft v. Shamim Akhtar (2006 CLD Karachi 1414), Cluett Peabody and Company Inc. v. Assistant Registrar of Trade Marks (1988 CLC Karachi 880), Indus Pencil Industries (Pvt.) Ltd. v. Crescent Pencils (Pvt.) Ltd. (1988 MLD 268), Sanjeda Bano v. Muhammad Saeed Jehangir (PLD 1987 Karachi 53), Solo Susice Narodni Podnik v. Sindh Match Works (Pvt.) Limited (1991 CLC Karachi 37), Pakistan Soap Factory v. Chittagong Soap Factory (PLD 1970 SC 460), Aktiebolaget Jonkoping Valcan, Swed en v. Registrar of Trade Marks, Kara chi (PLD 1975 Karachi 478), Lallubhai-Amichand v. The Punjab Aluminium Factory , Gujranwala (PLD 1960 Karachi 545), Messrs Sadhana Ausadhalaya v. Messrs Rackitt, Colman, Chiswick Ltd. (PLD 1965 Decca 41), In The Matter of Applications by the Alligator Company and by the London Waterproof Company (Silkmac) Ld., (1958 R.P.C. 420), In the matter of Application by Brown Shoe Company Inc. (1959 R.P.C. 29), Levi Strauss and Co. v. The Assistant Registrar of Trade Marks (1987 MLD 466), Jehan Khan v. Province of Sindh and others (PLD 2003 Karachi 691), Excelsior Cotton Company v. Trading Corporation of Pakistan (Pvt.) Ltd.
(2003 YLR Karachi 461), The Assistant Registrar of Trade Marks, Karachi v. Messrs Lakson Tobacco Company Ltd. (1992 SCMR 2323 ).
11. Mr. Shoaib Mansoor , learned counsel for the respondent No.2 while supporting the impugned order passed by respondent No.1 stated that after detailed deliberation the respondent No.1 refused the application of the appellant and allowed the opposition of responden t No.2 by applying the correct principle of law and keeping in view the precedents of the cases decided by the superior Courts in Pakistan and abroad. He has argued that the correspondence and documentary evidence filed by the appellant either at the Trade Marks Registry in Opposition Proceeding No. 56/1999 or before this honourable Court it is crystal clear that the appellant was a member of respondent No. 2. He has further argued that the appellant's use of the trademark "GALLUP" was subject to the permission of respondent No.2 after fulfilling the procedural requirements of the Gallup International Business Strategy , which did not give any right to the appellant to apply for the registration of the trademark "GALLUP" in its own name and filing of the application with the Trade Marks Registry under No. 124363 dated 20 March 1994 was illegal and blatant attempt on the part of the appellant to capitalize the proprietary right of the respondent No.2 in the trade mark GALLUP .
12. Learned counsel for the respondent No.2 has contended that the facts establish that the operation of business and use of the trademark "GALLUP" by the appellant was subject to the permissio n of the respondent No. 2 being its member and the Gallup Organization. He has contended that in accordance with section 74 of the Trade Marks Ordinance 2001, the use of the mark through license and/or permission does not give right to the licensee to capitalize the trade mark of its principal. Thus, the alleged use of the appellant inure to the benefit of the Licensor/Respondent No. 2. He has further contended that the appellant alleged that on 3 February 1997 he has obtained a letter of consent from Gallup International wherein it is stated that Gallup International has no objection whatsoever to the Application No. 124363 , in this regard it has been asserted that Gallup International from whom the appellant obtained a letter has no authority to issue such concerned as the respondent No. 2 holds the proprietary rights in the trademark 'GALLUP' across the globe. He has also contended that any purported letter of Gallup International is null and void in the eyes of law as Gallup International does not have any right in the trademark "GALLUP" or has any authority to issue such concerned letter to any member to seek registration in its name as the authority letter is nothing but to misguide this honourable Court.
13. Learned counsel for the respondent No.2 has further argued that the appellant has alleged that the Registrar has erred in concluding the matter and has wrongly refused registration of the mark "GALLUP", it has been submitted that the facts narrated by the appellant in the appeal are evident that the appellant was member/af filiate of the Gallup International whose Chairman was Dr. George Gallup the founder of Gallup Poll Survey . Therefore the decision given by the Registrar of Trade Marks after considering the documents available on record and arguments advanced by the learned coun sel was on the correct principles of law. Additionally , he has argued that the appellant had not filed an opposition to the application of the respondent No.2, which tantamount to accept the claim of the respondent No.2.
14. Learned counsel for the respondent No.2 has argued that the proprietorship of a trademark is acquired either by virtue of long and extensive use, or vide registrations. The Respondent No. 2 has secured registrations for the trade mark, GALLUP around the world and has also been carrying on its business over the seventy years and has therefore met both the above mentioned criteria. He has also argued that the appellant was member/af filiate of respondent No. 2 the adoption of the mark GALLUP by the appellant is dishonest and that Gallup Pakistan had prior knowledge of the proprietary rights of Gallup Inc.'s trademark "GALLUP ." He has also argued that the respondent No 2 also filed an action for infringement against the appellant in the United States District Court, Northern District, California for its GALLUP trademark and after the summons the Court were served, the appellant deliberately chose not to appear before the said court and as such a default judgm ent was passed in favour of the respondent No. 2 which judgment has also been provided to the Appellant. He has urged that the appellant was not authorized by Gallup Inc., the proprieto r of the trademark "GALLUP" worldwid e to obtain any registration in Pakistan of the trademark "GALLUP" in its name. He has further urged that in any event, throughout the world, Gallup Inc. is the registered proprietor of the trade mark GALLUP and as a general rule it does not authorize any affiliates or subsidiaries to apply for registrations of the trademark GALLUP in its names. As such the appellant has no justification as to why it has attempted to adopt the trademark of Gallup Inc. being used by it across the world over more than 50 years. In the end learned counsel has also urged that the use of the mark by any person with fraudulent intention does not vest right to him, and that dishonest adoption cannot be protected.
15. Learned counsel for the respondent No.2 in support of his submissions has placed reliance on the case of Cooper's Incorporated v. Pakistan General Stores and another (1981 SCMR 1039 ), Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant (1987 SCMR 1090 ), Abdus Salam and 2 others v. Crown Radio Corporation, Karachi (PLD 1973 Karachi 24), Societe De Fabrication Et. De -- Distribution De Parfumeri Et Cosmetique (Diparco) Societe Anonyme v. Deputy Registrar of Trade Marks, Government of Pakistan and others (PLD 1979 Karachi 83), National Detergents Ltd., Karachi v. Nirma Chemical Works, Gujrat State, India and another (1992 MLD 2357 ), Dabur India Ltd. v. Hilal Confectionery (Pvt.) Ltd. (PLD 2000 Kar. 139), Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf (PLD 1991 SC 27), Essa Engineering Industries (Pvt.)
Ltd. v. Registrar of Trade Marks and another (2009 CLD 805), Javed Akhtar Chauhan v. JKS (Privates)
Limited and others (2016 CLD 2260 ), Messrs Farooq Ghee and Oils Mills (Pvt.) Ltd. v. Registrar of Trade Marks and others (2015 CLD 1245 ), unreported judgment in the case of ALDO Group International AG v.
The ALDO Shoes (H.C.A. No.309 of 2015), Allergan Inc. v. Milment Oftho -Industries and others (AIR 1998 Calcutta 261), In the matter of Vitamins Ld.'s Application for a Trade Mark (1956 RPC 1) and Calvin Klein Inc. v . International Apparel Syndicate cind others [FSR 1995 (515)].
16. In rebuttal, Mr. Ijaz Ahmed, learned counsel for the appellant has urged that respondent No. 2 submitted that they were not aware of the use of the Gallup mark by the appellant, it has been submitted that this statement is contradicted by the several documents available on record. Furthermore, it is contrary to the stance taken by respondent No.2 in the present appeal. He has submitted that respondent No.2 and the appellant were members of GIA and continued to participate in its conference until the exit of respondent No.2 in 1992. He also submitted that respondent No.2 was therefore fully aware of the use of the mark Gallup during and after the life of Dr. George Gallup and has never taken any step to stop use of the same by the appellant in Pakistan.
17. With regard to the submission of the respondent No. 2 that it is entitled to global exclusive use of the trademark "Gallup", it is submitted that this submission is factually incorrect as apart from the USA, respondent No. 2 has mostly registered in the countries that had no significant history of public opinion surveys and accordingly registration in such countries cannot in any manner improve their chances of registration in Pakistan. He made reference to the foreign judgments, which clearly shows that in the countries where GIA members like the appellant are using the trademark "Gallup", the claims of respondent No.2 have been consistently rejected.
18. With regard to the next submission of the counsel for the Respondent No. 2 that the correspondence exchanged between Dr. George Gallup or respondent No. 2 and the appellant does not contain any express permission to allow the use of the name, it is respectfully submitted that there was no requirement of such permission since the members of GIA were allowed to use the name and accordingly the appellant's predecessor pursued membership of the GIA instead of seeking a separate permission to use the trademark "Gallup". The permission to use this trademark by members of GIA is categorically established by the Amsterdam and Swiss judgments. In the end of proceedings, the appellant referred to the consent judgment between the appellant and respondent No. 2 before the Federal District Judge in California, the USA. He has submitted that upon filing this action, respondent No. 2 had applied for a summary judgment against Dr. Gilani and the appellant, which was dismissed and the learned District Judge wrote as follows in the Introduction: "This civil action is but one front in a global war over the "Gallup" name. In this extraterritorial trademark dispute involving a foreign polling organization's right to publish opinion polls on the Internet under the name "Gallup Pakistan", plaintif f Gallup, Inc. moves for summary judgment and a permanent injunction against pro se defendant Ijaz Shafi Gilani, a resident and citizen of the Islamic Republic of Pakistan and Chairman of Gallup Pakistan, a foreign corporation that has been conducting Pakistani opinion surveys for nearly thirty years. For the reasons set forth below , the motion must be denied."
The learned District Judge concluded his findings as follows: "Since only six of presumably thousands of Gallup Pakistan surveys have been of sufficient international interest to be selected for publication by American news outlets, the relief requested by plaintif f seems plainly unfair . It would essentially shut down a foreign company that has been taking polls and surveys of the Pakistani public for over thirty years as .a longstanding member of GIA, which was apparently founded by the very George H. Gallup that founded Gallup, Inc. This decades-long membership of Gallup Pakistan in GIA strongly suggests that Gilani did not (and does not) intend to harm American commerce or plaintif f's mark in the United States by operating the Gallup Pakistan website.
19. Mr. Ijaz Ahmed learned counsel for the appellant contended that the appellant in fact has never intended to use the mark in the USA nor it has ever claim ed an association with respondent No. 2. As such, the appellant's rights with regard to the Pakistan proceedings i.e. the present case were completely protected in terms of Clause 8 of the Settlement Agreement, which has already reproduced in the preceding paragraph.
20. With regard to the submission of the learned counsel for the respondent No. 2 that the appellant had not filed an opposition to the application of respondent No. 2, it is respectfully submitted that respondent No. 2 had filed an application after the appellant and the Registrar had passed an order that both the applications will proceed together for determination of the proprietary rights to the trademark, therefore, there was no need for the appellant to file any separate opposition for this purpose.
21. I have given due consideration to the arguments advanced by the learned counsel for the parties and perused the available material so also the case law cited by the learned counsel. Case of the appellant is that he being one of the representative of Gallup world-wide Association who has introduced the program of public opinion survey and research, is conducting such survey since long and for last two decades, and is the exclusive user of trade mark Gallup in Pakistan whereas respondent No.2 neither own nor operate any company under the trade mark in Pakistan. The object and purpose behind trademark law is to ensure that a person can benefit from his business reputation which he has A developed with hard work and dedication over the year. Since the Opposition proceedings were conducted under the Trade Marks Act of 1940 (which has now been replaced by the Trade Marks Ordinance, 2001), it would be pertinent to mention the relevant provisions from both the said laws.
"Trade Marks Act, 1940: Section 6:- Distinctiveness requisite for registration:
(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:-
(a) the name of a company , individual, or firm, represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business; one or more invented words; One or more words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Pakistan;
(e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness.
(2) For the purposes of this section, the expression "distinctive" means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal, the tribunal may have regard to the extent to which-
(a) the trade mark is inherently so adapted to distinguish, and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish Section 10:- Prohibition of registration of identical or similar trade mark:
(1) Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and either already on the register in respect of the same goods or description of goods or which so nearly resembles such trade-mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar , make it proper so to do he may permit the registration by more than one proprietor of trademarks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any , as the registrar may think fit to impose.
(3) Where separate applications are made by different persons to be registered as proprietors respectively of trade- marks which are identical or nearly resemble each other , in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court.
Trade Marks Ordinance, 2001: Section 14:- Absolute grounds for refusal of registration:-
(1) The following shall not be registered, namely:-
(a) mark which do not satisfy the requirement of clause (xlvii) of section 2;
(b) trade-marks which are devoid of any distinctive character;
(c) trade-marks which consist exclusively of marks or indications which may serve , in trade, to designate the kind, quality , quantity , intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
(d) trade-mark which consist exclusively of marks or indications which have become customary in the language or in the bona fide and established practices of the trade; Provided that a trade mark shall not be refused registration by virtue of clauses (b), (c) or (d) if, before the date of application for registration, it has, in fact, acquired a distinctive character as a result of the use made of it or is a well know trade mark.
(2) A mark shall not be registered as a trade mark if it consists exclusively of:-
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
(3) No trade mark nor any part thereof in respect of any goods or services shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-
(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a High Court or District Court;
(b) be likely to hurt the religious susceptib ilities of any class of citizens of Pakistan , per se, or in terms of goods or services it is intended to be so registered; or
(c) be contrary to any law , for the time being in force or morality .
(4) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
Section 17:- Relative grounds for refusal of registration:-
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services, for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered.
(2) A trade mark shall not be registered because-
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is registered; or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is regist ered and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered. shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be-detrimental to, the distinctive character or the repute of the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be prevented-
(a) by virtue of any law, in particular , the law of passing off, protecting an unregistered trade mark or other mark used in the course of trade; or
(b) by virtue of an earlier right other than those referred to in subsections (1), (2) and (3) or clause (a) of this subsection, in particular by virtue of the law of copyright, design right or registered designs.
(5) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
(6) Where separate applications are made by different persons to be registered as proprietors respectively of trademarks which are identical or nearly resemble each other , in respect of the same goods or description of goods, the Registrar , if thinks fit, may refuse to register any of them until their rights have been determined by the High Court or a District Court.
Section 19:- Raising of relative grounds in case of honest concurrent use
(1) Where on application for the registration of a trade mark it appears to the Registrar that there is-
(a) an earlier trade mark in relation to which the conditions set out in subsectio ns (1), (2) or (3) of section 17 obtaining; or
(b) an earlier right in relation to which the condition set out in subsection (4) of section 17 is satisfied. but the applicant proves to the satisfaction of the Registrar that there has been honest concurrent use of the trade mark for which registration is sought, the Registrar shall not refuse the application by reason of the earlier trade mark or other right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.
(2) For the purposes of this section, "honest concurrent use" means such use in Pakistan, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of subsection (2) of section 10 of the Trade Marks Act, 1940 (V of 1940).
(3) Nothing in this section shall af fect-
(a) the refusal of registration on the grounds mentioned in Section 14; or
(b) the making of an application for a declaration of invalidity under subsection (2) of section 80.
Section 74:- Use of trade mark by a person other than the proprietor thereof
(1) The permitted use of a trade mark shall be deemed to be use of the trade mark by the owner of the trade mark and shall be deemed not to be use of the trade mark by a person other than the owner for any purpose for which such use is material under this Ordinance or any other law for the time being in force.
(2) The tribunal while determining as to whom the benefit of use of a trade mark be passed, shall pass the benefit to none else, except to-
(a) the proprietor of the trade mark, if the trade mark is registered; or
(b) the owner of the trade mark, if the trade mark is entitled to protection under the Paris Convention as well known trade mark.
22. Lengthy arguments have been addres sed by the learned counsel on both sides. Mr. Ijaz Ahmed, appearing for the appellant has sought to show that there has been honest and concurrent use of the trademark Gallup since 1981 by the appellant. He has placed on record the documentary evidence to show that the appellant and its parent organization Gallup Business Research Services of Islamabad is the exclusive member of Gallup International Association as was confirmed in the letter dated 03.2.1997. He has criticized that the respondent No.2's entire reliance is in respect of work outside Pakistan which may be reflected in some magazines, which is not sufficient to refuse the registration of appellant's trademark. He has also refuted the respondent No. 2's argument of exclusive global use by the admitted use of the mark "Gallup" by other entities in various countries. He has also made reference to 26 companies that have the word Gallup as part of their name and are not associated with respondent No. 2 where GIA members advertise 'Gallup' on their websites. The learned counsel for the respondent No.2, namely Mr. Shoaib Mansoor, has similarly taken great pains in trying to prove that there has been no honest and concurrent user on the part of the appellant. He has questione d that the appellant sought to misappropriate the mark Gallup which is the trademark and corporate name of Gallup Inc. and the trademark Gallup is exclusively associated with respondent No.2.
23. In the case in hand, the admitted fact that the appellant and its associated concerns has been the only user of the trademark "Gallup" in Pakistan since 1981 when they were accepted as the Pakistan member of Gallup International Association and has been extensively and exclusively using the same in its publications and public opinion services in Pakistan. This is established from the documents placed on record. It may be noted that Section 10(2) of the Trademarks Act, 1940 allows the registration of a trademark to an honest concurrent user and in other special circumstances. The unique nature of this case and the appellant's exclusive and extensive use of the trademark "Gallup" in Pakistan over a period of nearly four decades entitles the appellant to the registration of the said trademark in its name.
24. I have also gone through the foreign judgments of passed by Courts of different countries wherein somewhat similar facts and circumstances are involved. This includes, inter alia, South Korea, Japan, Netherlands, Switzerland and Czech Republic. I have noted that in various countries wherever the respondent No.2 initiated legal proceeding to stop the using of mark 'Gallup' they lost the case, which fact also nullify the claim of exclusive right of respondent No.2 to use the trade mark Gallup worldwide. For ready reference, Case in South Korea the trademark registered in favour of respond ent No. 2 was cancelled at the request of Gallup Korea. The Gallup Korea is also a member of GIA and being a member of GIA just like the appellant Gallup Korea is using the trademark Gallup in that country even today . In case of Switzerland, respondent No. 2 had started providing services within the country since 1997. But, the Swiss court rejected the claim that use of the Gallup by Swiss entity amounted to infringement of respondent No. 2' name. In case of Pakistan, respondent No. 2 has not undertaken a single activity till date. Therefore there cannot possibly be any infringement of respondent No. 2's name in Pakistan. Perusal of the aforesaid cases shows that GIA and its members including the appellant have the right to use the mark 'Gallup' and this was allowed with the consent and knowledge of Dr. George Gallup and respondent No.2 has no ground to challenge the same.
25. Even otherwise, the admitted position in the case is that the appellant and its associated concerns has been the only user of the trademark 'Gallup' in Pakistan since 1981 and on the basis of long standing/using the said mark, the appellant applied for registra tion of their mark 'Gallup' in Pakistan but on the opposition filed by respondent No.2, appellant application for registration was refused and accepted the opposition of respondent No.2 for registration of trademark 'Gallup. The respondent No.1 (Registrar) has failed to examine the unique position of this trademark as it related to public opinion research and was introduced in USA by Dr. Gallup. At the same time similar institutes were established by other scholars in Europe and other countries, who formed 'The International Association of Public Opinion Institutes'. It is settled law that extra-territorial use of trade mark by a party is not relevant under the Act which only recognized such use within the territory of Pakistan. There is nothing on record to show that the respondent No.2 had in fact used their mark 'Gallup' in Pakistan. It is also an admitted fact that the entire project of Gallup Pakistan was started by Dr. Ijaz Shafi Gilani upon encouragement of Dr. Gallup since 1978.
In unique position of this trademark, the respondent No.1 (Registrar) has oversight and failed to exercise express discretion as provided under section 10(2) of the Act relates to special circumstances. The facts of the case as discussed above establish sufficient long honest user by appellant without any objection. It has also developed a sizable market and the respondent No.2's entire reliance is in respect of work outside Pakistan. Subsection (2) of the section 10 of the Trade Marks Act clearly confers discretion on the Registrar to allow registration by more than one proprietor of trademarks which are identical or nearly resemble each other in case of honest concurrent user or "of other special circumstances" which, in the opinion of the Registrar , makes it proper to do. Thus this is not only in the case of established honest and concurrent user that subsequent registration of an identical trade mark is permitted but also in cases where other special circumstances may exist. No authoritative interpretation of the phrase "other special circumstances" seems to be available, not does it appear desirable or even practicable to attempt any, precise definition or exhaustive enumeration of circumstances and factors which may appropriately fall within its ambit. But the phrase is clearly wide enough to include diverse considerations relevant to the balanced development of industry , the relative degree of convenience or inconvenience to the contesting parties in the event of registration or its refusal and finally the interest of the consumer or the general public. To fortify this view, reference can be made to the cases of Pakistan Soap Factory v. Chittagdng Soap Factory (PLD 1970 SC 460) and Lallubhai-Amichand v . The Punjab Aluminium Factory , Gujranwala (PLD 1960 Karachi 545 ).
26. It is also worth mentioning that the appellant and respondent No.2 were entered into a settlement agreement dated 30.9.2010 only agreeing not to use the Gallup mark in the USA and to provide a disclaimer in respect of internet publications, written materials and interviews that the appellant was not associated with respondent No.2.
The appellant has never violated the terms of settlement agreement. The appellant's rights with regard to the Pakistan proceedings is fully protected in terms of Clause 8 of the settlement agreement, which has been reproduced above.
27. The case-law relied upon by respondent No. 2 is clearly distinguishable on account of the peculiar facts of the cited cases. None of the cases have facts that are even slightly similar to those of the present case.
28. In view of what has been discussed above, I am of the opinion that the appellant has proved concurrent and honest use of their trade mark 'Gallup' for quite a long time, which is not satisfact orily rebutted by the respondent No.2. As such, in my humble view, the respondent No.1 (Registrar) has erred in refusing registration of the appellant's trade mark and accepting the opposition of respondent No.2 and allowed respondent No.2's application.
In the result, I accept this appeal, set aside the order of respondent No.1 (Registrar) dated 12.04.2006 and direct that the appellant's trade mark, covered by their Application No.124363 dated 20.03.1994, be duly- accepted and registered. At the same time, the appellant is bound to abide by the terms contained in the settlement agreement arrived at between the appellant and respondent No.2 dated 30.09.2010.