1. ' The applicant _filed an application for registration of trade mark consisting of the words "Qadri Bahar Tel" with monogram inside letter Q in respect of hair oil in class 3 which was registered at serial No, 60052 dated 3-1-1974. On scrutiny a show-cause notice under section 8(a) of the Trade Marks Act was issued on 4-10-1974 and a pending, application bearing No, 60500 was cited as conflicting with the appellant's trade mark. Again on 11-1-1975 another show-cause notice was issued under section 10(1) of the Trade Marks Act and the appellant's trade mark identical to two registered Trade Marks No, 44056 and 44057 of Qadri Sehat Chemical Works, Rangpur, (East Pakistan) were cited. The appellant filed her reply to the show-cause notice stating that the two registered Trade Marks No, 44056 and 44057 have been removed from the register for non-renewal and the pending mark of the respondent has been filed after the adoption and user of the appellant's trade mark under application No, 60052 which is in use since 1t.-,73. During the pendency of the appellant's application for registration, the respondent application No, 60050 was treated as abondoned by the Registrar of the Trade Marks and the appellant was called upon to file evidence of the user. In compliance with the order the appellant filed affidavits cash memo book, hand bill and newspaper. The appellant's trade mark was advertised in Trade Marks Journal dated 1-12-1977. The respondent filed opposition to the appellant's Trade Mark No, 60052 alleging that Trade Mark No, 44056 and 44057 which are similar and identical to the trade mark of the appellant in respect of the same goods were owned by the aunty of the respondent who was carrying on business in East Pakistan and after her death he has inherited the said trade mark but the same have been removed for non-payment of renewal Ice. It was also alleged that the respondent is the manufacturer of Hair Oil and adopted two trademarks consisting of words Qadri Rogha letters 'MS' in concentric circle on label under No, 60500 which has been treated abandoned for non-compliance of office requirements. However the respondent has filed another. Application No, 664% on 29-4-1978 fc the same trade mark and another mark and words Qadri Amla Balt.
2. Roghan. The respondent started business with the appellant as a part but the appellant discontinued it and started using trade mark resemblin Trade Mark No, 44056 and 44057. The respondent has continuously bee using the marks from 1973 and by such user trademarks Qadri Rogha and Qadri Amla Bahar Roghan have acquired reputation in the marks .The respondent, filed affidavit of evidence and the appellant filed count statement. It was alleged by the appellant that the respondent is not to prior user of the mark Qadri in Pakistan and further that the track marks registered in East Pakistan were not transferred to Pakistan after to creation of Bangladesh and that the respondent had no right to inherit it same. Aliegations regarding partnership were also denied. By the impugned order dated 5-7-1979 the learned Assistant Registrar of Trade Marks to whom the matter had been assigned for determination considering the evidence of the parties brought on record held that the responder has failed to establish his right and further that the user by the appellants as alleged was not established. However, it was observed that the approve date order for registration or non-registration can be passed only after to rights of the parties have been determined by the competent Court inch section 10(3) of the Trade Marks Act.
3. ' There is no dispute between the parties that the trade marks claimed by both the parties are in respect of the same goods. It is also not dispute that the trade marks sought to be registered by both the parties if in identical are similar to each other and are likely to cause confusion.
4. ' The facts as stated above attract section 8 of the Trade Marks A which prohibits registration of trade mark which is identical or near resembles to another trade mark owned by another proprietor and whit by reason of such similarity is likely to deceive or cause confusion. Which considering a case under section 8 if the Authority has not to restrict its to similarity with a registered trade mark, it can take into accord registered trade mark in respect of the same goods, or description of good unregistered trademarks which have become distinctive by user in respect of same or similar description of goods, or refused trade marks.
5. ' In the present case the objection of the respondent based on register Marks No, 44056 and 44057 belonging to khan Ara Begum alleged to the aunty of the respondent, could not be entertained under section 10 1 the simple reason that these marks were removed from the register 1 non- payment of renewal fee. These trade marks cannot be treat registered trade marks in the eyes of law, nor the marks which are ma basis for objection are on register. The respondent has also failed establish that he has inherited the said marks and is their proprietor. 1 respondent, therefore, cannot oppose registration under section 10(1) the Trade Marks Act. So far the objection based on section 8 of Trade Mark is concerned it is pertinent to note that none of the part have argued that the marks are not similar and are not likely to cause confusion and deception. The learned Assistant Registrar on assess of evidence came to the conclusion that the respondent has failed establish that his mark is so well known that if the appellant's mark registered deception and confusion would be inevitable. It was held to the respondent claims user since 1973 but Application No,' 496 was filed on 6-12-1977 and the opponent has failed to establish substantial user since 1973.
6. The evidence produced by the respondent was weak, stereo type and did not inspire confidence.
7. The evidence of the appellant was also weak and substantial user was not established. The.
8. Learned Assistant Registrar then held that as controversy requires evidence and cross- examination of witnesses the registration of the marks of the appellant and respondent is refused until their rights have been determined under section 10(3) by a competent civil Court - Section 10(3) reads as follows :- "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 or already registered in any Acceding State or a non-Acceding State to which section 82-A for the time being applies 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.
(3) Where separate application made by different persons 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".
9. Under section 10(3) if separate applications have been made by different persons in respect of the trade marks which are identical and closely resemble to each other in respect of the same goods or description of goods the Registrar is authorised to refuse to register any of them and leave the parties to get their rights determined by a civil Court. Therefore, the dispute should be between different persons in respect of the trade marks which are identical or similar and should relates to the same goods or description of goods. The question arises when the Registrar should leave the parties for determination of their rights by the civil Court. The Trade Marks Act provides a self- contained machinery and procedure of registration of trade marks and comprehensive remedies have been provided under the Act itself. Even in cases where the parties are different and dispute relates to registration of trade marks which are similar or closely resemble each other in respect of the same or similar description of goods, the Registrar can grant or refuse to register the trade mark. Section 10(3) should be invoked only in cases of special circumstances and exception nature. The parties should be left for determination of their rights by the civil Court in cases where substantial right of the parties are involved and on the preponderance of evidence produced by both the parties it is not possible to determine the same within the scope of jurisdiction conferred on the Registrar. The disputes, and rights between the parties which fall within the exclusive domain of the Registrar must be decided by him. However, if parties raise disputes, claims and rights which cannot be decided without proper evidence and investigation section 10(3) may be invoked. The questions relating to similarity of marks confusion, deception, honest and concurrent user do arise in the normal course during the registration proceedings and they should be decided by the Registrar, If such disputes are left to be determined by the civil Court it will defeat the very object of the Trade Marks Act. The proper Court in such cases would be the Court of civil jurisdiction. It would not be proper to hold that the appellate Court will be the civil Court competent to decide the dispute as contemplated by section 10(3), for the reason that the appellate Court would took into the matter on the basis of evidence which has been produced before the Registrar which are usually in form of affidavit and may be insufficient. Where complicated questions regarding substantive rights are raised, it is proper that the parties may produce evidence and allow the witnesses to be cross-examined by the adversary, If the appellate Court embarks upon inquiry merely on the evidence in affidavit produced before the Registrar the parties will not have any opportunity to cross-examine the witnesses. It may be argued that the appellate Court has the authority to record evidence and call the witnesses, but in the present state and circumstances, it is not possible for the appellate Court to overload itself with the duty to record cumbersome evidence. Such cases involving complicated question relating to substantive rights should be tried by the Civil Court competent to try such matters. In the present case no such dispute seems to arise because the appellant has not been able to establish on the basis of evidence produced by her that she has been using the trade mark for a very long period and by virtue of user the mark has become distinctive. The plea of the respondent is also not substantial as the evidence is scrappy and vague. The respondent is not the proprietor of any registered trade mark. The two registered trade marks which were registered in the name of Jehan Ara Begum alleged to be the aunty of the respondent are no more on the register. The respondent has not applied for the transfer of those trade marks in his name in D Pakistan. Nor has he produced any evidence to establish how he has inherited the non-existent trade marks. Mere allegation is not sufficient. In these circumstances no serious question regarding determination of civil right arises which requires determination by the civil Courts. In these circumstances the order of the learned Assistant Registrar to refer the matter to the civil Court for determination of rights of the parties is set aside. Considering the facts, circumstances and evidence on record, the application for registration filed by the appellant and the opposition filed by the respondent are dismissed.
10. ' For these reasons the appeal is dismissed.