1. ' This appeal is directed against a decision dated 23-8-1990 passed by the respondent refusing to register appellant's application No,99286 dated 7-8-1988 filed for registration of a composite Label comprising of a distinctive device of flying bird with a leafed branch in its beak placed between two horizontal lines with word 'PEACE' below the same (a representation of which is appeared in the Memo. Of Appeal and hereinafter referred to as "device of flying bird and word "PEACE") as a trade mark in class 34 in respect of "tobacco, raw or manufactured; smokers' articles; matches" being goods included in class 34. By show-cause notice No,5792/89 the respondent raised an objection under sections 10 (1) and 8 (a) of the Trade Marks Act, 1940 (hereinafter referred to as "the Act") considering the trade mark device of flying bird and word peace of the appellant to be conflicting to prior registered trade marks whose particulars are as follows:-{{TABLE}} Application No, Trade Mark 3 Specification of goods Name of owner 42283 Gift Tobacco Manufactured and unmanufactured. Rembrandt Tobacco Corporation (Overseas) Limited.
2. 38970 Melody Unmanufactured. Souvenir Tobacco Company Limited.
3. 11259 Kdol Manufactured tobacco, Brown & Williamson Tobacco Corporation (Export) Ltd.
4. 40478 Black Cigarettes. Golden Bengal Bird Tobacco Company Limited.
5. 57334 Peace Matches. Dossul Industries.
6. ' The appellant replied to the said show-cause notice refuting the objections under sections 10 (1) and 8 (a) of the Act. The contention of the appellant was that the appellant's mark virtually and phonetically was dissimilar to the above-cited marks in totality and it comprised of the device of a flying bird and the word 'PEACE'. The respondent declined the above application on the ground that the registration would cause confusion in itself but would also affect the interest and goodwill established by earlier registered marks. In that view of the matter the application was refused under sections 19 (1) and 8 (a) of the Act. The appellant being aggrieved by the above decision has filed the present appeal.
7. ' Mr. Abdul Hamid Iqbal, learned counsel for the appellant vehemently argued that where there are already two owners in whose name a trade mark' was registered the application of the third applicant for registration of such trade mark, should not be refused at the preliminary stage but should be proceeded with and notice issued to previous proprietors and also the application be published for inviting opposition. The reliance has been placed on the case of David Vanghan Racklin v. Deputy Registrar of Trade Marks, Karachi (1986 M LD 1666) in which a learned Single Judge of this Court while construing sections 8, 10 and 76 of the Act read with rule 84 of the Trade Marks Rules, 1963 held that because of the factum that the trade mark applied for registration was already registered in the names of two applicants, the Registrar should not have rejected the application of the third proprietor/applicant at the preliminary stage but should have proceeded to issue notice to the holders of registered trade mark and advertisement. The judgment dated 12-12- 1987 was followed by a learned Single Judge of this Court in M.A. 19 of 1987 Lakson Tobacco Co. Ltd. v. Assistant Registrar of Trade Marks. The Assistant Registrar of Trade Marks being aggrieved by the above judgment had filed Civil Petition for leave to appeal bearing No,147-K of 1988 before the Honourable Supreme Court. The learned counsel for the respondent brought various decisions in which in similar circumstances, the action of the Registrar to prematurity before application for registration of a trade mark, without advertising the application has been consistently held as improper and the practice was deprecated. In support of his submission, the counsel placed reliance on a number of unreported decisions Misc. Application. No,42 of 1987, Misc. Application No,8 of 1988, 1988 MLD 1666. The Honourable Supreme Court dismissed the petition on 15-1-1990. It is advantageous to reproduce the relevant portion of the order which reads:- "7. After careful consideration of the arguments and the law cited before us, we feel it is a sound principle that in cases like the present one it is not proper to refuse the application for registration at initial stage without advertisement. It will be appropriate to advertise the trade. Mark 'and invite opposition, as in such case a decision taken will avoid multiplicity of litigation, besides enabling the Registrar to have his decision on material produced by holders of trade marks who file opposition."
8. ' The case of Lakson Tobacco Company Ltd. v. The Deputy Registrar of Trade Marks 1989 M LD 1598 was decided by me. It was held as follows:- "It is not possible to accept the finding of the Deputy Registrar that there is a connection between the goods safety matches and cigarettes as both sets of goods are sold on the same counter.
9. Though safety matches are used for lighting the cigarettes, they cannot by themselves, become cigarettes, tobacco and cigar. Likewise cigarettes, tobacco and cigar, though they are used for smoking can never be treated as articles for lighting stone or a cigarette. Apart from the fact that both these sets of articles cannot be brought under the description of the articles of smoking, it is well known that the articles can be classified either on the basis of their use or on the basis of their contents elements out of which they were manufactured or from the mode of their production. As already stated the Deputy Registrar in this case has not specifically considered the applicability of section 8(a) to the case in hand ."
10. The principle laid down in the decisions is applicable to the facts of the instant case. In the instant case as pointed out hereinabove there are more than two owners of registered marks referred to hereinabove and therefore, the respondent should have proceeded with the issuance of notice to the registered trade mark and should have advertised the mark in Trade Marks Journal for inviting objections and thereafter holding proper inquiry should have passed an order in accordance with law.
11. ' For the aforesaid reasons, the decision dated 23-8-1990 of the respondent is set aside and the Registrar of Trade Marks is directed to proceed with the Application No,99286 of the appellant for registration after issuing notices to the registered holders o' Trade Marks and after publication and then decide the application in accordance with law.
12. ' M.A.No,33 of 1990 stands disposed of.