1. ' The two parties in this suit have competing interest in Trade Marks 'Finis' and Trite'. This controversy has resulted in a series of actions filed by one against the other, and pending before different forums. A suit being Suit No, 184/82 was .Filed by the defendant No, 1, against plaintiff No, 2 in the Court of VII A. D. J. Karachi for infringement of a registered Trade Mark 'Brite'. But a similar Mark 'Brite Sun' was already being used by the plaintiff No, 12 for a long time before "Brite" was registered in favour of the defendant No, 1.
2. ' The plaintiff No, 2 has, therefore, filed in the High Court of Sind two rectifications being rectification application Nos. 2/83 and 3/83 under section 46 of the Trade Marks Act for expunging the trade mark "Brite" from the register of trade marks and preventing the defendant No, 1 from its use. The defendant No, 2 reacted. He filed rectification proceedings before Registrar Trade Marks to expunge the Trade Mark `Finis' from the register of Trade Marks which has been registered on plaintiff's application in 1956.
3. ' The present suit has been filed to question the validity and maintainability of the rectifications filed against the plaintiff No, I and now pending before the Registrar-the defendant No, 3.
4. ' Mr. A. A. Zari, learned counsel for the plaintiff, has attached great importance to bitter disputes between the parties and taken most of the time in showing that the litigation referred to above has direct bearing on the proceedings filed against his clients. The learned counsel contends that the rectification proceedings challenged in this suit are a counter-blast to the rectification proceedings filed by plaintiff No, 2 against defendant No, 1 now pending in the High Court and referred to above. He argues that they have been filed merely as a coercive measure to force the plaintiff to withdraw the J. M. 2 and J. M. 3 which are awaiting disposal in the High Court.
5. ' Mr. Khalid Anwar, learned counsel for the defendants Nos. 1 and 2 in his clean arguments wanted to confirm himself to the dispute between the plaintiff No, 1 and defendants Nos. 1 and 2. According to him the rectification proceedings between plaintiff No, 2 and defendant No, 1 are in respect of Trade Mark "Brite" and the rectification proceedings filed before the Registrar Trade Mark are between plaintiff No, 1 and defendants Nos. 1 and 2 are in respect of Trade Marks "Finis" and as such the two disputes are independent of each other. If the other dispute is permitted to cast its shadow over the present proceedings it would merely cloud our vision, so the learned counsel for defendant con- tended.
6. ' So far as the present dispute is concerned the facts are that plaintiff No, 1 is the owner of 34-Trade Marks all relating to Disinfectants. Insecticides, Fungicides, etc. The association of the name "Finis" with the plaintiff No, 1 dates back to early fifties. One of the trade mark under the name "Finis" was registered as early as 9th October, 1956 on plaintiff's Trade Mark Application No, 26336. Nine of them were registered under different applications on 16th May, 1960, the rest on different dates thereafter. The last of the batch of 34 was registered on 29th March, 1974. The plaintiff No, 1 are using and trading under these trade marks, marketing their different products under the Mark 'Finis,' and have been spending huge amounts on advertisements and publicity.
7. ' Before I proceed to examine the merits of the arguments, let me mention that there is a detailed procedure prescribed in the Trade Marks Act (Act V of 1940) for securing registration of a trade mark. This is contained in Chapter III of the Act and consists five sections. It would be profitable to quote relevant portions of sections 14, 15 and 16 in order to show how the requests for registration of a trade mark are processed in the office of the Registrar and what requirements are to be fulfilled before a trade mark is registered. Section 14 clause (I) reads as follows : "14. Application for registration.-(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any as he may think.
(2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat- (3)
8. "15. Opposition to Registration.-(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the condition and limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner : ' Provided that the Registrar may cause an application to be advertised before acceptance if it relates to a trade mark to which clause (e) of subsection (1) of section 6 applies, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do.
(2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice in writing in the prescribed manner to the Registrar of opposition to the registration.
(3) The Registrar shall served in the prescribed manner a copy of the notice on the applicant, and within the prescribed time the applicant shall send to the Registrar, in the prescribed manner, a counter-statement of the grounds on which he relies for his application and, if he does not do so he shall be deemed to have abandoned his application.
9. "16. .Registration.-(1) When an application for registration of a trade mark has been accepted and either has not been opposed and the time for notice of opposition has expired, or having been opposed, has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, or unless the Federal Government otherwise directs, register the said trade mark, and the trade mark, when registered, shall be registered as of the date of the making of the said application, and that date shall, subject to any directions made under section 83 applicable to such trade mark be deemed for the purpose of this Act to be the date of registration.
(2) On the registration of a trade mark the Registrar shall-issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prascribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
10. ' The perusal of the three sections would show that to secure the registration of a trade mark is not a matter of formality but is tacked with so many conditions and before a trade mark appears on the register the application has to pass through all these procedural formalities. In some cases, an applicant may have to face tough opposition on various grounds some of which are mentioned in the act itself. The mark would appear on the register only if the application has survived a thorough scrutiny by the Registrar and contest or opposition raised by some competitor in trade.
11. ' In the present case opposition was raised to contest the registration application filed by the plaintiff No, 1.
12. ' The request for the registration was evaluated by the Registrar himself and opposed by a party named Central Products. The "opposition proceedings" were filed by Central Products Karachi before the Registrar. By an order, dated 1st February, 1978 the Deputy Registrar exercising the powers of Registrar dismissed this opposition, registered the mark and enabled the plaintiff to continue to use the mark "Finis". In this way it cannot be said that it was a smooth sailing for the plaintiff No,
1. He has secured this mark after a proper scrutiny and after facing the opposition proceeding before the Registrar at the time of registration.
13. Since then the plaintiff No, 1 has enjoyed and exploited the name 'Finis' with various variations all these years without any objection from anybody.
14. As a matter of public policy it would be desireable to ensure that once a mark is duly registered, and has been nurtured through publicity and advertisement and other means and has remained firmly stabilised for a long period of time, it should not be allowed to be abruptly uprooted on flimsy ground.
15. ' If this sense of security is not guaranteed to an owner of a Registered Trade Mark and if uncertainty about its future is allowed to prevail no productive growth which is most desirable in every field of activity of a civilised society would be possible.
16. ' With these ideas now let me quote section 24 of the Trade Marks Act and see what protection is offered by the Act for a peaceful enjoyment of a registered trade mark : "24. Registration to be conclusive as to validity after seven years.- In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of section 8."
17. ' Mr. A. A. Zari, has pitched himself on this section and says that unless fraud and misrepresentation are proved his clients are entitled to the protection of this section. That "Finis" has been registered with all possible safeguards and after thorough scrutiny, and as stated above after passing through "opposition proceedings". He contends that in the present case not only seven years but a longer period has passed, that the plaintiff No, 1 has been enjoying this mark and now he is fully covered under the umberella of section 24. No opposition or objection of any kind has been raised by any one since early fifties when he started using this mark and he secured the registration. He states that the name "Finis" has now become a pass word in the trade so far as disinfectants and detergents are concerned. He further states that none other than defendant No, 2 who is now representing defendant No, 1 before the Registrar as defendant's counsel, is the person who adjudicated the dispute in 1978 and allowed the registration and passed an order allowing the registration and dismissing the "opposition proceeding". This order is Annexure "M" to the plaint in this suit.
18. ' Mr. A. A . Zari contends that the rectification proceedings whose maintainability is in question in this suit are brisling with malice and on the face of it are mala fide. That the three defendants have joined hands together in order to deprive the plaintiffs from the enjoyment of these marks and the plaintiff .Is doomed to be condemned by the defendant No, 3 who, as he alleges is acting in a manner which is any thing but impartial and fair. He says that the plaintiff should not only be awarded a fair verdict but during the proceedings he should have a feeling that he is not struggling in an episode whose outcome is already forewritten. In other words he says that he is not having that satisfaction which is the life of all judicial proceedings "justice should not only be done but should appear to have been done". He seems to be very scare of appearing before defendant No, 3 and for good reasons or bad he is not having a feeling of appearing before impartial Tribunal. With this background it would be easy to appreciate the basis of the suit and the relief claimed by him in the plaint. Para. 18 of the plaint reads as follows : "18. The sole object of the misconceived and mala fide rectification proceedings filed by 'defendant No, 1 before defendant No, 3 is to harass the plaintiffs and bring pressure on both the plaintiffs to concede the illegal demands of defendant No, 1 i. e. Withdraw J. Misellaneous Application No, 2 of 1983 and J. Miscellaneous Application No, 3 of 1983, filed by plaintiff No, 2, against defendant No, 1 and pending in this Hon'ble Court. In order to achieve this object, defendant No, 1, through defendant No, 2 has formed an unholy alliance with defendant No, 3 who has passed several orders which are arbitrary, capricious and mala fide. In some cases, defendant No, .3 has passed arbitrary and mala fide orders in gross violation of the decisions of this Hon'ble Court which amount to brazen Contempt of Court. The plaintiffs will place reliance on the said mala fide orders of defendant No, 3 and the unholy alliance referred 40 above to establish that the plaintiffs have a reasonable apprehension that they will not get a fair and impartial hearing, trial or decision in the rectification proceedings instituted by defendant No, 1 before defendant No, 3 for obvious reasons.
19. Though defendant No, 2, at the material time was the Assistant Registrar of Trade Marks and as such at least 9 of the Registration Certificates issued to plaintiff No, 1 have been signed by him as the Asstt. Registrar of Trade Marks, and though it was defendant No, 2 who recommended that the mark applied for registration under No, 49739 should be registered without disclaimer of the word "Finis" and accordingly the said mark was registered, in respect of which rectification proceedings have been filed against plaintiff No, 1, it is significant that he has thought it fit and proper to advise, draft, sign and institute 34 rectification proceedings on Form T. M. 26 filed before defendant No, 3., as the authorised Trade Marks Agent of Defendant No;
1. Defendant No, 2 has established a reputation of being a favourite of defendant No, 3 and has obtained several arbitrary, capricious and mala fide orders. In order to establish the arbitrary and mala fide orders passed by defendant No, 3, reliance will be placed on the files and records in the possession of defendant No, 3."
20. ' The above grievance is coupled with a serious legal objection which is the main attack on the maintainability of the rectification proceedings. This grievance is as follows :- "23. The plaintiffs, therefore, pray for a Judgment and Decree against the defendant
(a) for a declaration that the registrations of 34 trade marks registered in the name of plaintiff No, 1, a list of which is given in Annexure '0', are valid, subsisting, conclusive and binding on the defendants, under section 24 of the Trade Marks Act, 1940;
(b) for a permanent injunction against the defendants, jointly and severally, restraining them from directly or indirectly, or through their agents of servants from attacking the validity of the said registrations, or in any manner infringing the said registration or disputing the validity of the said registration ;
(c) for temporary injunction pending the disposal of the suit, restraining the defendants, jointly and severally, as prayed for in para. (b) above ;
(d) for a stay of the rectification proceedings set out in the Column "Remarks" of Annexure '0' before defendant Nei. 03 pending the disposal of this suit ; "
21. ' Reliefs (a) and (b) are the substantial reliefs claimed in the suit. The relief (c) and (d) are the interim reliefs which he is also claming in this application C. M. A. No, 1853/83.
22. ' As stated above the defendant No, 1 has filed rectification proceedings before the defendant No, 3 challenging the entitlement of the plaintiff No, 1 to use this trade mark "Finis" and his stand seems to be that these marks have been wrongly registered. He has filed the rectification proceedings for expunging the mark "Finis" from the Register or de-registration of these marks. This right is claimed by the defendant by virtue of section 46 which is the first section of Chapter VII of the Act and this chapter carries a heading Rectification and Correction of the Register. Section 46 is important from defendants point of view and may be reproduced below :- "46. Powper to cancel or vary registration and to rectify register.- (1) On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar a Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention of, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry, made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The Tribunal may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register."
23. ' Mr. Khalid Anwar, learned counsel for the defendant contends that it is the unquestionable right of the defendant No, 1 to challenge the mark on any ground and apply for a relief that the mark should be deleted and expunged from the register.
24. To my mind there may be two situations in which such a right i. e. To demand rectification of register by expunging the mark from the Registrar may be invoked.' There may be cause in which the relief may be based on allegations of "contravention of, or failure to observe condition" attached to the registration of the mark. In such a situation there would be no difficulty in holding that there is unqualified power for expunging the mark from the Register on account of non- fulfilment of some condition or contravention thereof. But there may be cases where no contravention or failure has occurred and yet the objector files the rectification proceedings raising such objections to the validity of registration which, perhaps may have been available to him when the application for registration was originally moved and which may have been examined and adjudicated at that time. Question arises whether in the later case a Registered Trade Mark can be challenged. Mr. Khalid Anwar was asked to assist the Court on this aspect of the case.
25. ' As stated above, the plaintiff in this case has remained associated with this mark "Finis" since 1949 in one form or the other and has been securing Registration of the 34 marks since early fifties. It is not denied that he has secured Registration No, on his application which he had made as early as this registration was obtained after opposition filed by Messrs Central Products" and a detailed order Annexure `M' was passed by the Registrar on 1st February, 1978. Mr. Khalid Anwar says that he was not a party in the proceedings of Registration and as such the findings in the order, dated 1st February, 1978 which was passed by the Registrar are not binding on him. True he may not be in the tight grip of res judicata as postulated by provisions of section 11, C. P. C. But the notice prescribed in section 15 of the Trade Marks Act is a notice to the whole world. This notice is published in the Trade Mark Journal and is a statutory requirement for the exercise of power conferred on the Registrar by section 15. If the findings of the Registrar, recorded on an application, after due publicity, and after full compliance of the requirements of sections 14, 15, 16 can be reopened at any time at the instance of anybody on the plea that he was not a party to those proceedings the results might be disastrous. Suppose 'files opposition' in response to a notice in the Registration proceedings and all his opposition is rejected and the Registrar proceeds to register the mark, A might file another opposition on the same grounds and call it rectification proceedings, and yet another in different names, thus to start an unending process of rectification completely blocking the way of the applicant indefinitely. Will it be condoned by any rule of jurisprudence ? Would it not defeat the real object of securing registration ? Mr. Khalid Anwar when further asked to assist the Court on how the provisions of section 16 and section 46 are to be reconciled, and if the mark has remained on the register for seven years whether it enjoys complete immunity from an attack by way of rectification by virtue of section 24 replied that in the present situation such an analyses was not necessary and he had not prepared his arguments on this aspect of the case. Whether in view o the protection of section 24 of the Act and the trade mark remaining on the register for over seven years the mark can still be challenged is doubtful and whether the rights secured under section 16 can be annulled by means of rectification proceedings under section 46 is debatable.
26. ' In these proceedings the defendant No, I has to meet the serious attack based on the protection extended to the mark by section 24 ; and further he has to make out a clean case that although the mark "Finis" was registered after opposition of Messrs Central Products yet it can be expunged from the register precisely on the same grounds which were raised by the said Messrs Central Products' in the "opposition filed by them and which after hearing were rejected by the Registrar by his order dated 1st February, 1978, Annexure 'M' to the plaint. I have read the order of the Deputy Registrar, dated 1st February, 1978 and have closely examined the contentions of the defendant No, 1 raised in the written statement filed in the suit ; and I find that substantially they are the same that were raised and adjudicated in order, dated 1st February, 1978 Annexure 'M'. It is to be noted that neither in the written statement nor in the counter-affidavit any allegation of "contravention or failure to observe a condition" has been made against the plaintiff in use of his registered trade mark.
27. ' In view of the above discussion there is no doubt that the plaintiff has made out a strong case against the maintainability and competency of the rectification proceedings filed against him before the Registrar. If the objections are finally sustained the Registrar would be in no better position than a forum coram non judice and the outcome produced at the end an exercise in futility. This is sufficient ground for allowing the plaintiffs application for injunction at this interlocutory stage. But Mr. Zari, learned counsel for the plaintiff in addition to the grounds of attack narrated above has heavily relied on provisions of section 72 and tried to make out a case that after the filing of the suit there is a statutory bar against the defendant to continue to pursue the rectification proceedings in question. Section 72 is as follows :- "72. Procedure in certain cases of option to apply to a High Court or the Registrar.-Where under this Act an applicant has the option of making an application either to a High Court or to the Registrar,-
(a) If any suit or other proceedings concerning the trade mark in question is pending before a High Court or a District Court, the application shall be made to that High Court or, as the case may be, to the High Court within whose jurisdiction that District Court is situated ;
(b) if in any other case the application is made to the Registrar, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to a High Court."
28. The burden of arguments of the learned counsel for the plaintiff is that after the filing of the suit rectification proceedings which under section 46 could be filed either before the Registrar or the High Court can now be pursued only before the High Court. It is to be noted that rectification proceedings under section 46 may be filed either before the Registrar or before the High Court. The opening paragraph of section 72 read with sub-clause (a) of section 72, would show that it relates to section 46. According to the learned counsel the present suit should be treated as a pending proceeding. Now out of the two forums provided by section 46 only the forums of High Court remains the proper venue where such proceedings can be maintained. The plain reading of these provisions would show that there is a merit in the arguments of the learned counsel. But Mr. Khalid Anwar, learned counsel for the defendant, argues that the expression "pending proceedings" means that the suit or such proceedings were filed prior to the launching of the rectification proceedings and not filed subsequent to the action of rectification launched already before the Registrar. This is a moot point and Mr. Zari has cited case law in support of his contention that the expression E "pending proceedings" should be liberally construed and must cover in its ambit all the proceedings whether filed before or after the action before the Registrar is taken. The purpose and idea behind this provision according to the learned counsel is that when it comes to decide such valuable rights as rights in a trade mark then the forum which is better of the two i,e, the High Court should the exclusive jurisdiction to adjudicate. If sub-clause (a) is carefully analysed it would be evident that even if some matters are pending before the District Court concerning a trade mark that District Court also becomes coram non judice and only the High Court under which that District Court is functioning can entertain any grievance arising out of the dispute related with the proceedings. The next contention of Mr. Zari is that in any event a prudent Registrar who is acting bona fide would in such a situation feel no hestitation to submit to the requirement contained in clause (b) of section 72 and should voluntarily refer such proceedings to the High Court. The learned counsel contends that the learned Registrar in spite of all the acrimony and lack of confidence shown by the plaintiff is keen to keep the matter with himself ; that his refusal to act in terms of the provisions of section 72 (b) reinforces plaintiff's allegations of malice and partially alleged against him.
29. ' On the other hand, Mr. Khalid Anwar, learned counsel for, the defendant, contends that the Registrar is a forum of special jurisdiction and merely because power under section 46 are concurrent to the powers of the High Court the defendant cannot be forced to choose one forum and not the other. Registrar is doing no more than exercising the powers given to him by the act. He should not be prevented from exercising those powers.
30. This is an interlocutory stage and there are substantial points of law involved to be considered and determined. The evidence has yet to come. The parties at the trial may contribute towards a better appreciation of the statutory provision involved. But for the present it cannot be denied that there is a prima facie arguable case in favour of the plaintiff. Moreover it is also to be noted that the plaintiff is enjoying and exploiting these marks since 1949, for over thirty years and has high stakes in the outcome. The defendant No, 1 has not been able to show what prejudice would be caused to him if the proceedings are stayed and status quo is maintained. In my opinion still all the implications are examined in the case the two other factors of balance of convenience and irreparable injury also heavily weigh in favour of the plaintiff.
31. ' In view of the above discussion I would allow the second part of the prayer contained in plaintiff's application No, CMA 1853/83 under Order XXXIX, rules 1 and 2, C.P.C. As a result the .Rectification proceedings now pending before the defendant No, 3 should be stayed till the final disposal of this suit. This will provide the Registrar an opportunity to examine his position and form an opinion on whether its a fit case in which the applications before him should be referred to the High Court in terms of section 72 clause (b) of the Trade Marks Act. In the above terms with no order as to costs.