' This appeal under section 76 of the Trade Marks Act, 1940 is filed by Messrs Playboy Enterprises Inc. a foreign company incorporated under the laws of U.S.A., against the decision of Registrar of Trade Marks, dated 22-7-1977 (I will hereafter refer the Trade Marks Act, 1940 as the Act only for the sake of convenience). By the impugned order the Registrar of Trade Marks, Karachi, dismissed the opposition lodged by the appellant under section 8(a) of the Act and allowed registration of trade mark 'Playboy' with the device of a Rabbit's head in favour of respondent No,2 file under No, 66627 in class 25 after expiry of period of appeal. -
2. The Registrar, rejected the opposition of appellant and allowed registration of Trade Mark 'Playboy' with the device of a rabbit's head in favour of respondent No,1, on the ground that the appellant failed to establish that the above mark was ever used by them in Pakistan in relation to any goods under class 25 produced by them. It was also found by the Tribunal that there was considerable evidence on record to show that respondent No,2 extensively used the Trade Mark 'Playboy' with device of a rabbit's head in relation to the goods produced and sold in Pakistan. The learned counsel for the appellant firstly contended that the Tribunal below failed to consider that the mark 'Playboy' with device of a rabbit's head is registered in favour of appellant in about 50 countries of the world and this fact alone was sufficient to refuse registration of the same mark in favour of respondent No,
1. It is also contended that the appellant was unreasonably denied opportunity to lead evidence before the Tribunal to establish use of the above mark in relation to goods produced by appellant and sold in local markets in Pakistan. It is lastly contended that the application of appellant filed for registration of the above Trade Mark in their favour in class 25 which was pending before the Registrar should have been considered and decided simultaneously as by the present decision the pending application of appellant has been prejudged. After hearing the learned counsel for the appellant I am of the view that the present appeal can be disposed of6 on the basis of last contention of appellant. It is quite clear from the order of the Tribunal that at the time he rejected the opposition of the appellant and allowed further proceedings for registration of Trade Mark No, 66627 in class 25 in favour of respondent No,2, the applications filed by the appellant bearing Nos. 68763 and 68764 for registration of the same trade mark in their favour was pending before the Registrar. Learned counsel for respondent No,2 contends that it was for the appellant to have pressed before the Registrar for decision of their above pending applications simultaneously and in the absence of such a prayer by the appellant the Registrar was not bound to decide these applications simultaneously and as such the appellant cannot make any grievance in this regard. It is true that no specific prayer was made to the Registrar apparently by the appellant to decide their pending applications simultaneously but the fact that the two applications of the appellant for registration of the same mark in the same class in their favour was pending registration is specifically noted in the impunged order. In these circumstances in order to avoid any conflict of decision and to do full and complete justice between the parties the Registrar should have dealt with all the pending applications at a time as the decision of any one of them was likely to affect the other pending applications in the circumstances of the case. I accordingly accept this appeal, set aside the order of Registrar and remand the case back to the Registrar with the direction that he should forthwith advertise Applications Nos. 68763 and 68764 filed by the appellant for registration of Trade Mark 'Playboy' with the device of a rabbit's head and after completion of all formalities all the pending applications in respect of the same trade mark in the same class be decided simultaneously. There will be no order as to costs.