1. ' The appellant is carrying on business of manufacturing safety matches from the year 1977 with Trade Mark "The Scissor" words and device of scissor. It adopted this trade mark after making thorough search in the markets of Pakistan that goods under this trade mark were not available.
2. The appellant claims to have built up sizable business, good will and reputation in the trade of safety matches. The Trade Mark "The Scissor" words and device has attained distinctiveness and is known to be its product. The appellant filed application for registration of trade mark "The Scissor" .Words and device on 13-5-1981. After due pocess it was advertised in the Trade Marks Journal on Ist November, 1982. Respondent No,2 filed opposition proceeding on the ground that it is the proprietor of registered Trade Mark "The Scissor" and device of scissor in respect of safety matches.
3. The appellant's mark is similar to the mark of respondent No,2 and in respect of the same goods. It has not achieved distinctiveness and will cause confusion and deception to consumers. It was further pleaded that the appellant has dishonestly adopted the trade mark of respondent No,2 and is not entitled to its registration. After examining the evidence of both the parties the learned Deputy Registrar by his order dated 30-4-1987 granted the appellant's application with amendments. As respondent No,2 had not used the trade mark registered in its name from 1973 the appellant filed application on 20-10-1983 for removal of trade mark of respondent No,2 from the Register of Trade Marks under sections 37 and 46 of the Trade Marks Act, 1940. The learned Deputy Registrar by the impugned, order dismissed the application. Respondent No,2 filed appeal No, M.A.
4. 27 of 1987 against the order granting registration of trade mark and the appellant filed this appeal (M.A. 30 of 1987) against the rejection of application for rectification and removal of the trade mark of respondent No,2. By a separate judgment I have dismissed the appeal filed by respondent No,2 against the registration of trade mark in favour of the appellant.
5. ' Section 37 reads as follows:-- ' S.37. Removal from register and imposition of limitations on ground of non-use.--(1) Subject to the provisions of section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered, on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either:-
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or
(b) that up to a date one month before the date of the application, a continuous period of five years or longer has elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: ' Provided that, except where the applicant has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.
(2) Where in relation to any goods in respect of which a trade mark is registered:
(a) the circumstances referred to in clause (b) of subsection (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Pakistan (otherwise than for export from Pakistan), or in relation to goods to be exported to a particular market outside Pakistan; and
(b) a person has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark.
6. ' On application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.
(3) An applicant shall not be entitled to rely for the purpose of clause (b) of subsection (1) or of subsection (2) on any non-use of trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use of the trade mark in relation to the goods to which the application relates."
7. Section 37 is subject to section 38 which provides for defensive registration of well-known trade marks. The applicability of section 37 is excluded in respect of cases covered by section 38. Section 37 specifies the following grounds on which an aggrieved party can apply for taking off a registered trade mark from the register.
(1) (a) The applicant for registration has obtained registration without any bona fide intention to use it in relation to the goods, and
(h) there has been no bona fide use of the trade mark in relation to those goods up to a date one month before the date of filing the application under section 37.
(2) For a continuous period of five years or longer upto one month prior to filing the application under section 37 during which the trade mark was registered there was no bona fide use of the trade mark in relation to the goods for which it was registered.
8. ' An application under section 37 can be filed by an aggrieved party. In ' Benazir Bhutto's case PLD 1988 SC 416 (560) it was held that any restriction, which frustrates or impedes the pursuit of a legal activity in the exercise of a right conferred on a person by the Constitution, would result in making him or her as an 'aggrieved' person and furnish him with a locus standi to challenge the said restriction."
9. In section 37 the term 'person aggrieved' should be given a liberal interpretation. Any person interested in mark is obstructed or restricted by any registered mark will be an aggrieved person.
10. Reference can be made to In re: Powell's Trade Mark (1894) 11 RPC 4 and Appollinaris Co.'s Trade Mark 8 RPC 137. In Zonophone T.M. (1903). 20 RPC 450 a person who has used before registration trade mark, in 8 RPC 137 an infringer of a trade mark and in Gianacli's T.M. (1889) 6 RPC 467 a defendant in a passing off action were held to be aggrieved party. Reference can also be made to Pink v. J.A. Sharwood & Co. Ltd. (1913) 30 RPC 725. It was held that where a mark was abandoned, any person who wants to adopt the same in the course of his business will be a `person aggrieved.'
11. In this regard reference can also be made to 'In the Matter of Applications by Ernest Marshall' (1943)
12. 60 RPC 147.
13. ' In National Bell Co. v. Metal Goods Manufacturing Co. AIR 1971 S.C. 898 the following observation was made: "The expression 'aggrieved person' has received liberal construction from the Courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark."
14. Present injury may be shown to have been suffered by an aggrieved person, but if he demonstrates probability of prevention or adverse effect on extension of trade C he will have a locus standi as a person aggrieved. Reference can be made to Re Appellinaris Co.'s Trade Mark (1891) 2 Ch. 186 and Monappa v. Ramappa AIR 1956 Mad 184. Any person who is substantially interested in taking off the mark from the Register and persons who are substantially prejudiced or damaged by D the existence of a mark will fall in the category of person aggrieved. Reference can be made to Mac Laboratories (Pvt) Ltd. v. American Home Products Corporation AIR 1969 Cal.
342. Applying these principles, the appellant is a person aggrieved and has a locus standi to file application under section 37.
15. Whether the case falls under section 37 (1) (a) or (b) the burden of proof is upon the applicant. But where non-use for the statutory period of five years is admitted then the party pleading 'special circumstance' must prove it. The grounds pressed by the appellant fall under section 37 (1) (b) only which provides E that a mark may be taken off the register if upto a date of one month before the date of application the trade mark has not been bona fide used for a continuous period of five years or more which had elapsed since the trade mark was registered. However, proviso to subsection (1) (a) and (b) provides that except where the applicant has been granted registration of similar or same trade mark in respect of the same similar goods under section 10 (2), application under section 37 (1) (a) or (b) may be rejected if it is established that before the relevant date or during the relevant period there has been bona fide use of the trade mark by its proprietor. As the case falls under clause (b) of subsection (1) of section 37 the provision of subsection (3) is attracted. It grants protection to the proprietor of a trade mark whose non-user was not with a view to abandon it but due to special circumstances. If it is shown that The non-user during the relevant period was due to reasons beyond the control of its proprietor and not intentional or voluntary he will not fall within the mischief of which 37 (1) (b) and the mark cannot be taken off the register.
16. The term 'special circumstance' has not been defined nor any definite meaning can be assigned to it. The events constituting 'special circumstance' depend upon the facts of each case. Broadly speaking all such circumstances which do occur regularly and ordinarily in the course of trade will not be covered by this expression. All such events and occurences which cannot be anticipated or though anticipated are beyond the control of the party can safely be termed as `special circumstance'. Any restriction; limitation, disability resulting in non-user occurring due to war, civil commotion, act of God or act of State can safely fall under the term 'special circumstance'. See (1949) 66 RPC 71. In Aktiebolaget I Jonkoping Valcan v. Registrar of Trade Marks, Karachi and another PLD 1975 Kar. 478 where the appellant was unable to bring its safety matches under the trade mark due to ban on import in Pakistan, the question arose whether it constituted special circumstance as used in section 10 (2) and it was observed: ' The 'other special circumstances' relied on in Lullabhai Amichand's case were identical with those in the present case viz., that the goods of the foreign registered proprietor were not available for sale or consumption in Pakistan and in the vacuum so created, a national firm of manufacturers had built up a sizable business by using the trade mark in question over the last several years without any objection. These circumstances, in the view of the Court, were regarded as 'special circumstances' within the meaning of section 10 (2) of the Act."
17. ' In A.J. Vulcan v. V S.V. Palanichamy Nadar and others AIR 1969 Cal 43 in similar situation it was observed as follows: "Now, this exposition of 'special circumstances' in the trade as being the cause of the non-use of the trade mark emphasises the aspect that the non-use is due to certain external forces such as the war of prohibitive tariff and not due to any voluntary act or omission on the part of the trader."
18. It is fully established on record that respondent No,2 had bona fide used the mark in Pakistan till 1973 when the import of its goods was banned. The non- ; use of trade mark was therefore due to reasons beyond its control. There existed special circumstances due to which respondent No,2 was prevented from using it. Therefore in view of section 37 (3) the appellant cannot seek relief on basis of clause (b) of subsection (1) of section 37.
19. The appeal is dismissed.