This judgment will decide Miscellaneous Appeal No. 96 of 1964, brought under section 76 of the Trade Marks Act, 1940, and Judicial Miscellaneous Application No. 6 of 1968, brought under section 46 of the Trade Marks Act (read with Rule 65 of the Trade Mark Rules) for rectification of the trade make register. The relevant facts, briefly stated, are these: Basra Soap Factory (appellants in Miscellaneous Appeal No. 96 of 1964 and petitioners in Judicial Miscellaneous Application No. 6 of 1968) filed, on 16-6-1950, Application No. 30981, for registration of a trade mark containing the device of tennis racket with the word. "Balls" for soap in class 3. But as a result of a compromise: in rectification proceedings No. 15 of 1960 instituted by the-- Basra Soap Factory, this mark was amended and the amended, mark contained the device of cricket bat with the words "BALLA CHHAP" in Urdu. This amendment was made with the approval of the Registrar given by the order dated 7-4-1962, under which order the amended trade mark was advertised in the Trade Marks Journal. Up to the date of this order, there wa, no mark conflicting with the amended trade mark of Basra Soap Factory,. On register, nor was any application then pending in the Registry. On i6-6- 1962, the Punjab Soap Factory (the respondents in both --the cases) made an application, No. 37079, for registration of their trade mark containing the device of a cricket bat with the words "BALLA MARKA" in Urdu. Upon this application, an order for advertisement was made as well as for search in the Registry of the Registrar for any existing mark, and any pending applica--petition, for marks identical with or similar to the mark offered for registration by the Punjab Soap Factory. In fact, such applica--petition was pending and accordingly the Trade Marks Registry sent to the Punjab Soap Factory the following notice on 11-10-1962.
"To M/s. Ansar T. M. Agency.
Karachi. subject : Application No. 37079 in class 3 in the name of M/s Punjab Soap Factory, Lahore.
Gentlemen, With reference to the application numbered as above, I am directed by the Dy. Registrar to invite your attention to sections 8 and 10, Trade Mark in pending Application No. 30981 consisting of the device of bat and word "BALLA MARKA" in respect of soap, in class 3, in the name of M/s. Basra Soap Factory, Karachi which conflicts with your mark and hence is made a ground of objection to the registration of the mark.
Within three months from the receipt hereof you may send a considered reply in writing or intimate alternative claim for hearing failing which the application is liable to be treated as abandoned."
It would appear that in consequence of the advertisement of the Basra Soap Factory's trade mark and the aforesaid notice, the Punjab Soap Factory filed their opposition in the proceedings then pending on Application No. 30981 of Basra Soap Factory. But, before this opposition could be decided, the Trade Marks Registry registered the trade mark of the Punjab Soap Factory and, consequently, Rhen Basra Soap Factory's application for registration of its trade mark and the opposition filed therein by Punjab Soap Factory, came up for hearing the Registrar rejected the application of the Basra Soap Factory under section 10 (1) of the Trade Marks Act, 1940, which requires that no trade mark shall be registered in respect of any goods or description of goods which is identical with or similar to, a trade mark belonging to a different proprietor and is already on the register. Against this order, Basra Soap Factory filed Miscellaneous Appeal No. 96 of 1964 and also bled before the Registrar, some time in 1964, according to the statement made by Mr. S. Anwar A.I (which statement has not been controverted) an application for rectifica--petition. But this application was rejected by the Registrar on the ground that the application should be filed in the High Court where Miscellaneous Appeal No. 96 of 1964 was pending. Accordingly, an application was filed for rectification under section 46 of the Trade Marks Act, 1940, in this Court on 20th January 1967, which application was registered as Judicial Miscellaneous Application No. 6 of 1968.
2. After hearing the arguments of the learned counsel, I am of the view that I should not enter into a discussion of the respective merits or demerits of the parties' claims to the superior title of the trade mark in dispute. I propose to confine myself only to the question of procedure in the registration of the trade marks. With regard to this question, I may refer to the unamended rule 23 of the Trade Mark Rules, which read as follows; "23. Search and notice to depositor.-(1) Upon receipt of an application for the registration of a trade mark in respect of any goods the Registrar shall cause a search to be made amongst the marks registered under this Act or registered in any Indian State to which section 82-A for the time being applies and amongst pending applications under this Act or in any aforesaid Indian State, for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with the mark sought to be registered, or so nearly resembling it as to render it likely to deceive or cause confusion, and the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so "
"23. Search.-Upon receipt of an application for the registration of a trade mark in respect of any goods the Registrar shall cause a search to be made amongst the registered marks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with the mark sought to be registered or so nearly resembling it as to render it likely to deceive or cause confusion and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so."
"The amendment makes no Material difference as far as this case is concerned, as under unamended rules as well as under the amended rules, a search is required to be made upon an applica--petition for the registration of a trade mark, not only amongst the registered trade marks, but also amongst the pending applications, for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods, any trade marks identical with the marks sought to be registered, or so nearly resembling it as to render it likely to deceive or cause confusion. Implicit in this rule is the principle that notice should be sent to all the persons or applicants who either have a registered trade mark or have sought registration of a trade mark, whenever an application is made for registration of a trade mark which is identical with, or resembles, a trade mark already on the register or amongst the pending applications. In fact, a notice under Rule 23 was sent to the Punjab Soap Factory with regard to the trade mark offered for registration by the Basra Soap Factory. But no similar notice was sent to Basra Soap Factory that another party, that is, the Punjab Soap Factory had offered for registration a trade mark identical with, or resembling, the trade mark of Basra Soap Factory, Mr. A. A. Zari stated that Punjab Soap Factory's trade mark was advertised under the Rules, and therefore Basra Soap Factory should be deemed to have notice of the application made by the Punjab Soap Factory. It may be so, but notice should also have been sent to the Basra Soap Factory, as such notice was in fact sent to the Punjab Soap Factory. When the Trade Marks Register proceeded to consider the registration of the mark of the Punjab Soap Factory on an application which was later in time to that of the Basra Soap factory, and without waiting for decision of the opposition of the Punjab Soap Factory in the proceedings pending on the application of the Basra Soap Factory.
3. The further objection tothe procedure adopted in the Trade Marks Registry is that, though Basra Soap Factory's application was pending for registration, and in these proceedings the opposition filed by the Punjab Soap Factory had not been decided, still, without waiting for such decision, the Trade Marks Registry, registered the trade mark of the Punjab Soap Factory, even though, as the aforesaid notice would show the Registry Was fully aware that a prior application of Basra Soap Factory for registration of an identical or similar trade mark was then pending. It should also be presumed that the Registry was also aware that in the proceedings on Basra Soap Factory's application, the Punjab Soap Factory had filed opposition which bad yet to be decided. Still, the Registry did not wait and proceeded to register the trade mark of the Punjab Soop Factory, and when the Basra Soap Factory's applica--petition and the opposition of Punjab Soap Factory filed therein came to be heard, the opposition was accepted and the application of Basra Soap Factory was rejected only on the ground that Punjab Soap Factory was proprietor of an identical or similar trade mark already on the Register. This whole procedure, to say the least, was irregular and has caused prejudice to the Basra Soap Factory. In such cases, the proper procedure to be followed by the Registry would be to connect and hear together the various applications and oppositions with regard to identical or similar trade marks, if applications for these trade marks are pending in the Registry. Further, it would have been proper for the Registry to decide the opposition of the Punjab Soap Factory first and then proceed to consider the application of the Punjab Soap Factory, or of the Basra Soap Factory, as the case may be, for registration of their respective trade marks.
4. Here I may refer to Mr. A. A. Zari's contention that seven years have already elapsed since the registration of the Punjab Soap Factory's trade mark, referred to above, and therefore under section 24 of the Act, this registration should be taken to be valid in all respects unless it is shown that it was obtained by fraud or unless the trade mark was registered against the provisions of section 8.
But the question is whether the legal proceedings referred to in this section are the legal proceedings instituted after the expiration of seven years or whether these legal proceedings would include proceedings instituted before the expiration, of seven years, so that while the proceedings are still pending, the period of seven years expires. Neither party was able to place any decision before me on this question. However, in my opinion, the reasonable construction would be that the legal proceedings contemplated by section 24 of the Trade Marks Act, 1940, are the legal proceedings taken after the expiration of the period of seven years from the date of registration. In the instant case the Basra Soap Factory filed application for rectification first in the Trade Marks Registry in 1964, and, on dismissal of this application, another application, which is Judicial Miscellaneous Application No. 6 of 1968, was' filed in this Court on 20th January 1967.
Therefore, the action by Basra Soap Factory for rectification of the trade marks register was taken before the expiration of the period of seven years and is consequently not barred under section 24 of the Act.
5. For the foregoing reasons, I am of the view that the procedure followed by the Trade Marks Registry was irregular calculated to cause prejudice to Basra Soap Factory. Accordingly, Miscellaneous Appeal No. 96 of 1964 is accepted, as also the Judicial Miscellaneous Application No. 6 of 1968. The case will go back to the Trade Marks Registry with the direction that the application of Basra Soap Factory, the application of the Punjab Soap Factory and the opposition filed by this party in the proceedings on the application of the Basra Soap Factory, should be heard together, and first the opposition should be decided and. Then the respective applications of the two parties.