' The appellants have challenged the decision of the Deputy Registrar of Trade Marks dated 15-10- 1979 whereby he maintained his earlier order passed on 10-6-1979 dismissing the opposition filed by the present appellant No,2, who was then the proprietor of the ESSO Trade Mark in Pakistan. The Deputy Registrar by his above decision dismissed the said opposition and allowed the application of respondent No,1.
2. The facts in brief are that the respondent No,1 had claimed the use of Mark ESSO in Oval claiming its user since 1-7-1964. It was found that there is another mark already on the register for goods of the appellants who deal in petroleum, chemical and fertilizer products. However, show - cause notice raising objections under sections 10(1) and 8(a) of the Trade Marks Act, 1940 was issued to the applicant. The applicant filed their reply and thereafter the mark was ordered to be advertised in the Trade Marks Journal. The opposition was lodged by Messrs Esso Standard Inc., a subsidiary of Standard Oil Company, U.S.A. On 1-1-1969. The name and address of the opponents Company was subsequently changed as the present appellant No,1 and consequently amended notice of opposition and counter-statement were filed by the parties. The learned Deputy Registrar after examining the case and considering the facts came to the conclusion that the mark of respondent No, 1 is qualified for registration under section 10(2) of the Trade Marks Act, 1940 and thus he passed the order dated 10-6-1979. An application was given by the Advocates for the parties jointly in writing requesting that they may be heard by the Deputy Registrar. Such opportunity of hearing was given to the learned counsel for the parties and the Deputy Registrar passed the impugned order on 15-10-1979 whereby he maintained his earlier order on merits. Being aggrieved from the said order, the present appellants have filed this appeal on 23-2-1980.
3. The Advocate for respondent No,1 has moved an application under section 3 read with section 29 of the Limitation Act and rule 84 of the revised Trade Marks Rules, 1963 as amended in 1977. It may also be pointed out that earlier to filing of this appeal, a suit being Suit No,219 of 1970 was filed by the present appellants against the present respondent No,1 for injunction against passing of an unfair competition and for accounts, damages and for other reliefs. By an order passed by this Court, it was ordered that both the said suit and the present appeal be heard by the same Bench on the same date.
4. I have heard the learned counsel for the parties. As mentioned above, the preliminary point raised in this appeal is with regard to the limitation. The dates relevant for the purposes of considering the point of limitation are that the impugned order was passed by the Deputy Registrar on 15-10-1979, which was intimated to the appellants on 10-11-1979. On 17-11-1979 the appellants filed an application for copies and certified copy was received by them on 4-12-1979 while the present appeal has been instituted on 23-2-1980. The above dates would show that the appeal is filed 130 days after the date on which the orders were announced which means more than a period of four months. Even if the time taken in acquiring the certified copies (17 days) is excluded then also the appeal is presented after a lapse of 113 days while the two months period from the date of order would expire on 14-12-1979 as provided in rule 84 of the Trade Marks Rules, 1963 as revised in 1977.
5. In order to appreciate the respective contentions of the parties, it would be necessary to refer to section 76 of the Trade Marks Act and rules 76 and 84 as they originally stood before the amendment made in the rules through SRO-507(I)/77 dated 11th June, 1977 published in the Gazette of Pakistan Extraordinary of the same date. The provisions of section 76 of the Trade Marks Act read as under: "76. (1) Save as otherwise expressly provided in this Act, an appeal shall lie, within the period prescribed by the Federal Government from any decision of the Registrar under this Act or the rules made thereunder to the High Court having jurisdiction: ' Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Court, the appeal 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.
(2) In an appeal by an applicant for registration against a decision of the Registrar under section 13 or section 14 or section 15, it shall not be open, save with the express permission of the Court, to the Registrar or any party opposing the appeal to advance grounds other than those recorded in the said decision or advanced by the party in the proceedings before the Registrar, as the case may be, and where any such additional grounds are advanced, the applicant for registration may, on giving notice in the prescribed manner, withdraw his application without being liable to pay the costs of the Registrar or the parties opposing his application.
(3) Subject to the provisions of this Act and of rules made thereunder, the provisions of the Code of Civil Procedure, 1908, shall apply to the appeals before a High Court under this Act."
' The unamended rules 76 and 84 as were effective prior to the amendment in 1977 read as under; "76. Extension of time. If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of the time for doing any act or taking any proceeding under these rules, not being a time expressly provided in the Act or prescribed by rule 55 or 59, he may extend the time upon such notice to other parties, if any, and upon such terms as he may direct, and the extension may be granted though the time for doing the act or taking the proceeding has already expired. An application for extension of time shall be made in Form TM-55, on payment of the prescribed fee.
84. Time for appeal. An appeal to a High Court from any decision of the Registrar under the Act or these rules, shall be made within four months from the date of such decision or within such further time as the Registrar may allow, provided that in calculating the said period of four months the time, if any, occupied in granting a copy in writing of the decision appealed against, shall be excluded." (Underlining is made by me).
' The above rules 76 and 84 after their amendment in 1977 read as under: "76. Extension of time. If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of time for doing any act or taking any proceeding under these rules, not being a time expressly provided in the Act or prescribed by rule 55 or 59, he may extend the time upon such notice to other party, if necessary, and upon such terms as he may direct, and extension may be granted though the time for doing the act or taking the proceeding has already expired. An extension granted under this rule shall not exceed a period of more than one month at a time, provided that the total period of such extensions shall not exceed six months against each statutory period prescribed. An application for extension of time shall be made in Form TM-55 on payment of the prescribed fee. (The underlining is made by me).
84. Time for appeal. An appeal to a High Court from any decision of the Registrar under the Act or these rules shall be made within two months from the date of such decision."
6. Mr. Fateh Ali W. Vellani, learned counsel for the appellants has vehemently argued that the amendments brought in the Rules 1977 would be operative prospectively and not retrospectively.
He has further submitted that appeal is a substantive right created by a Statute as provided under section 76 of the Trade Marks Act and, therefore, the said right cannot be taken away or abridged by a subsequent legislation unless specifically mentioned therein. He has placed reliance on the case of Pakistan International Airlines Corporation v. M/s. Pak Saaf Dry Cleaners PLD 1981 SC 553 wherein their Lordships have held as under; "The position in law is well-settled that the right of appeal is not a mere matter of procedure, but it is a substantive right; and that the institution of a suit carries with it- the implication that all rights of appeal then in force are preserved to the parties concerned till the rest of the career of the suit; and that these rights can be taken away only by a subsequent enactment, provided it so provides expressly or by necessary intendment, and not otherwise."
' He has also placed reliance on the case of State of Bombay v. M/s. Supreme General Films Exchange Ltd. (AIR 1960 SC 980). In this case their Lordships have been pleased to observe as under; "It is thus clear that in a long line of decisions approved by this Court and at least in one given by this Court, it has been held that an impairment of the right of appeal by putting a new restriction thereon or imposing a more onerous condition is not a matter of procedure only; it impairs or imperils a substantive right and an enactment which does so is not retrospective unless it says so expressly or by necessary intendment."
He has also placed reliance on a number of other cases. There is no cavil with this proposition. Of course, the right of appeal as created under a Statute is a substantive right and the same cannot be taken away by the legislature through an amendment giving it retrospective effect unless it so provides expressly or by necessary intendment.
7. The question in the present case is not that the right of appeal has been taken away but the question involved is whether the period of limitation for filing the appeal would be governed by rule 84 as effective before the amendment of 1977 or the same rule 84 as effective after the amendment. The consequential point for determination would also be if the Registrar had the powers under rule 76 to extend the period of limitation for filing of the appeal.
8. Taking up the first question, Mr. Vellani, learned counsel for the appellants has submitted that since the appeal is a substantive right accruing to the party at the very inception of the proceedings, the same is to be governed by the law of limitation as applicable at that time and the subsequent change, if any, would have no bearing in the case. In support of his above contention, he has placed reliance on the following cases:
(i) Abdul Kalam v. Bashir Ahmed Rana (1984 CLC 2997).
(ii) Nazir, High Court of Sindh and Balochistan v. M/s. Haji Muhammad Ishaq (1981 CLC 372).
(iii) National Bank of Pakistan v. M/s. Hyderabad Tando Fazal Bus Service (1980 CLC 1146).
(iv) Coote v. Eastern Gas Board ((1953) 1 ALL E R 762).
9. I have read the above judgments minutely and in my view none of the above judgments would be applicable to the present case. In the first case of Abdul Kalam, the matter pertained to the applicability of section 5 of the Limitation Act with retrospective effect. In this case a learned Division Bench of this Court had observed as under: "It may be observed that in our view it is not beyond controversy, whether the extension of section 5 of the Limitation Act to an application under Order IX, rule 9, C.P.C. Can be strictly treated as a procedural matter. Be that as it may, even if it is to be treated as a procedural matter, retrospective effect cannot be given to it if it will take away a vested right or will re-open a past and a closed transaction in the absence of an express provision or by necessary intendment. It cannot be denied that on the expiry of 30 days period from 5th November, 1979 when the suit was dismissed in default, the appellant had lost the right to file a competent application for restoration of the suit.
On the other hand, a right in favour of the respondent accrued on the expiry of the above period of limitation, which right in our view, cannot be taken away by making section 14 of the Code of Civil Procedure (Amendment) Ordinance, 1980, applicable retrospectively which came into force on 26th March, 1980 in the absence of an express provision or by necessary intendment."
' In the other two cases of Nazir, High Court of Sindh and Balochistan and the National Bank of Pakistan, the orders challenged in appeal were passed prior to the amendments affecting the period of limitation while in the case of Court the facts are different than the present case. In this case the incumbent was an employee of Gas undertaking and the right to sue had accrued to him in the year 1945 and the period of limitation provided was 6 years under section 2(1)(a) of the Limitation Act as applicable in U.K. This undertaking became vested in Gas. Board on 1-5-1949 under Gas Act, 1948 which provided for a limitation period of 3 years for such action in tort.
10. No doubt the remedy by way of appeal being a creation of Statute is a substantive right but the question involved in the present case is as to when such right accrues? An appeal can be preferred only when the order is passed in the original proceedings and thus it can safely be said that the right to prefer the appeal becomes enforceable only on the date the order is passed or announced and not during the pendency of the proceedings. It is conceded by the learned counsel that the Appeal is a substantive right while the law of limitation is procedural law. Thus the presentation of appeal would be governed by the law as applicable on the date the impugned order is passed/announced as held in the above-cited case of Nazir, High Court of Sindh and Balochistan v.
Haji Muhammad Ishaq and National Bank of Pakistan v. Hyderabad Tando Fazal Bus Service. In the present case the impugned order was passed on 15-10-1979 whereas the amendment has been made in June, 1977. I am, therefore, inclined to hold that it would be the amended rule 84 which will be applicable to the present case providing a period of two months from the date of impugned order.
11. Now I take up the second point relating to extension of time by the Registrar. In the present case, it would be observed that the period of limitation for filing an appeal was provided by rules (rule 84) and not Act itself whereas rule 76 invested certain powers on the Registrar whereby he could extend time for doing any of the acts as required under the said rules or for taking any proceedings under the rules. The applicability of rule 76 is restricted to the proceedings under the rules whereas the right of appeal is conferred by the Act and not by the rules and thus the amended rule 76 which invested the Registrar with power to extend the time would not be applicable to any right created under the Act or to any Act which the party was required to do under section 76 of the Act.
Mr. Fateh Ali W. Vellani, learned counsel for the appellants has vehemently argued that the amended rule 76 empowered the Registrar to extend the time which he did through his order, which has been placed on the record of this appeal at page 43. I have perused this order. Even if the contention of Mr. Vellani is to be accepted then also the provisions of amended rule 76 provide that the application for extension of time is to be made in Form TM-55. The pro forma of form TM- 55 is given hereunder: "Form TM-55. Trade Marks Act, 1940.
' Application for extension of time (see rule 24(2) and rule 76).
' Application No ' Application is hereby made by (a) for extension of time by..Month(s), for complying with the requirements of the Registrar communicated under his letter No........................ Dated the or (strike the portion not required) for filing notice of opposition or counter- statement to registration of a trade mark No........................... In Class advertised in Trade Marks Journal Noat page on the day of 19 , or (strike the portion not required) for supplying evidence in ..Support of the application/opposition proceedings.
' The reasons for making application are as under:- ' Dated this............... Day of.........
19...
(b)................
' To ' The Registrar of Trade Marks The Trade Marks Registry, Karachi.
' As against this the order of the Deputy Registrar which is placed on record is dated 13-12-1979 and is titled as "TMR-25". This is not the Form TM-55 on which the Registrar was empowered to extend the time.
12. A plain reading of the unamended rule 84 as compared with the amended rule 84 would show three outstanding features. According to unamended rule the period of limitation for filing of an appeal was four months from the date of decision and it was also provided that the Registrar could extend the time for filing of the appeal and also that the time consumed in granting the copy of the decision to the party had to be excluded. As against this the amended rule shows that the period of limitation for filing of an appeal has been curtailed from four months to two months and the powers of the Registrar to extend the time are taken away. Similarly, the third ingredient allowing the exclusion of time consumed for filing of the appeal has also been omitted. The outcome of the above discussion is that as per amended rule 84 the appeal had to be filed within two months from the date of decision which in the present case would expire on 15-12-1979. However, by virtue of section 29 of the Limitation Act if the provisions of section 12 of the Limitation Act are made applicable then also the appellants in the present case would be entitled to a grace period of only 17 days. The total period of exclusion in the present case, therefore, would be 78 days whereas the appeal is presented after 130 days and on the very face of it is out of time. Mr. Ashraf Ali, learned counsel appearing for respondent No,1 has placed reliance on the cases of Magic Chef and another v. Al-Noor Industries and another (1987 CLC 972) and Muhammad Shafi and another v.
Assistant Registrar of Trade Marks (PLD 1983 Kar. 463). In the above-said two cases also the learned Judges of this Court also held the same view.
13. I would, therefore, hold that this appeal is hopelessly barred by limitation and the same is accordingly dismissed with no order as to costs.