' The petitioner seeks rectification of the Trade Marks Register by removal of the respondents' trade mark 'Mark Seven' registered as No,58723 and entered in Class 34 on 23-7-1981.
2. The facts of the case are that the petitioner is carrying on business as manufacturer of tobacco and tobacco products including cigarettes. It claims to have established itself as a proprietor of the Trade Mark 'Mark-VII'. The petitioner under Application No,54126, dated 22-8-1970 applied to the Trade Mark Registry at Karachi for registration of the said trade mark in Class 34 in respect of the tobacco and tobacco products including cigarettes, cigars and pipe tobacco. Thereafter the respondent No,1 also filed Application No,54697 for registration of the words `Lakson's Mark Seven' in Class 34 in respect of cigarettes. However, the respondent withdrew its application after opposition No,75/72 was filed by the petitioner in response thereto.
3. On 8th April, 1972 the respondent No,1 filed another application (No,58723) for registration of the said trade mark. This application was opposed both by the petitioner as well as a third party and the said application of the respondent was consequently refused registration, the refusal being based on the opposition of the third party. Under the circumstances, the petitioner's opposition became infructuous.
4. Subsequent thereto the petitioner's Application No,54126 for registration of their mark 'Mark VII' after remaining pending for more than 8 years was advertised before its acceptance in the Trade Marks' Journal No,338 on 18-4-1979. The respondent No,1 filed opposition against the application claiming user of the trade mark 'Mark Seven' since 1972. The learned Registrar, Trade Marks, the respondent No,2 vide his letter, dated 29-1-1981 informed the petitioner that its Application No,54126 had been refused and opposition filed thereto had been allowed. In August, 1981 another application of the respondent No,1, No,70568 dated 15-11-1979 was advertised for acceptance in the Trade Marks Journal. The mark applied for in all material particulars was identical with the composite mark sought to be registered by the respondent No,1 in his previous Applications Nos.54697, 58723 and 69735. Accordingly, the petitioner filed opposition vide Application No,70568 under No,140/81 and according to the petitioner, the same is still pending with the learned Registrar.
5. The case of the petitioner is that the respondent No,1 filed a counter-statement to the petitioner's opposition wherein it was disclosed for the first time that Application No,58723 dated 8-4-1972 having been refused by the Registrar of Trade Marks had been granted after the respondent No,1 had appealed to this Court and the matter was remanded to the Registrar of Trade Marks by an order of this Court dated 17-6-1982. It was further disclosed that the learned Registrar had thereafter reconsidered the matter and vide his order, dated 23-7-1981 had ordered the Trade Mark to proceed to registration, and hence the present application for rectification of the Register of Trade Marks.
6. Although there is no serious controversy on the point that the two trade marks are identical but Mr. Zari learned Advocate for the respondent has opposed the application on the ground that the trade mark 'Mark Seven' either in words or numerals of seven has never been used in Pakistan by the petitioner on its products in Class 34 either before or after filing of the Application No,54126 by it.
Therefore, according to the learned counsel, the petitioner never had a bona fide intention to use the said trade mark in Pakistan in Class 34. The second argument of Mr. Zari has been that the trade mark 'Mark Seven' is a label in respect of cigarettes which was applied for by the respondent under Application No,58723 had been registered with effect from 9-4-1973 and after the expiry of the first period of seven years the registration was renewed for further fifteen years with effect from 9-4-1990 and the said registration is still in force. Consequently, according to Mr. Zari, the present application is barred by section 24 of the Trade Marks Act, 1940. Mr. Khawaja Mansoor, learned counsel for the petitioner, on the other hand, although, has not disputed that section 24 of the said Act, provides a bar as contended by Mr. Zari, but, according to him, the bar is not absolute and an application for rectification can still be maintained on the ground of fraud or on the ground that the trade mark offends against the provisions of section 8 of the Trade Marks Act. Such grounds, according to the learned counsel, have been specifically pleaded by the petitioner in the application and hence the petition is maintainable.
7. Section 24 of the Trade Marks Act provides as follows:-- "In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of section 8."
8. So far as the contention of Mr. Khawaja Mansoor is concerned, no doubt, the learned counsel appears to be right, because positive assertions appear to have been made by the petitioner in his applications both in respect of the alleged fraud as well as the deception or the confusion that the trade mark is likely to cause in the mind of the public. However, admittedly, apart from the said assertions made in the application itself no other evidence has been produced by the petitioner in support of the same. There is no controversy on the point that the onus to prove fraud lies on the petitioner. Therefore, the allegations of fraud have to be fully established by positive evidence (see Halsbury's Laws of England 4th, Edn., Volume 48, para. 106, page 76). Kerr on the Law of Fraud and Mistake at page 669 observes:-- "A man who alleges fraud must clearly and distinctly prove the fraud he alleges. Indeed it seems that even in a civil action a higher standard of proof is required than that required for proving ordinary matters."
' Again at page 671 the author observes:-- "If a party alleges that a contract was obtained from him by fraud, the burden of proving the fraud lies on him. Thus, to make out a case of promotion money it is not enough to show that all the consideration did not reach the vendor's pocket, but you must show that the price was swollen fraudulently for the purpose of making the company pay promotion money in addition to what was understood to be the real purchase money. So, also, a fraud is established against a party, it is for him, if he alleges acquiescence in the other party to show when the latter acquired a knowledge of truth and prove that he knowingly forbore to assert his rights. So an action to enforce a contract in which the defendant sets up the plea that he was induced by fraud to enter into it, it is not for the defendant to repudiate the contract but for the plaintiff to show that the defendant adhered to the contract notwithstanding the discovery of the fraud. So, also, where a man makes a false representation to another, the onus pro bandi is on him to show that the other party waived it and relied on his own knowledge."
' While referring to the evidence requird to prove fraud the author observes:-- "The facts to constitute a fraud must be found at law by the jury. In equity they are found by the Court; but a Court of Equity is not justified in finding such facts upon any less or different kind of proof than would be required to satisfy a jury. The law in no case presumes fraud."
9. In 1958 Bom. L.R. 912 the Court declined to accept the plea of fraud merely on the basis of the pleadings and absence of particulars of fraud given in the pleadings. Consequently, the plea of fraud raised in the pleading was treated as non-existent. In Ahsan Ali v. District Judge PLD 1969 SC 167 the burden of proving fraud was held to be on the party alleging it and that too by clear and convincing evidence.
10. In fact, hardly any precedent is needed in support of the contention. Fraud connotes dishonesty.
The essence of the matter is deceit, therefore, some suppression of fact in word or deed with intent to deceive must be proved. The proof must be clear and distinct and, therefore, it is essential that evidence of fraud must be properly adduced by the party who intends to prove the same. Even circumstantial evidence in this regard is to be excluded. In the present case, no doubt, fraud has been alleged by the petitioner in his petition before the Court which has been further supported by the affidavit filed on behalf of the petitioner, but it is hard for the Court to draw any definite conclusions on the basis of affidavits or counter-affidavits filed beiore it because what has been alleged by one party has been denied by the other. However, this does not conclude the matter as it also needs to be considered whether the trade mark offends against the provisions of section 8 of the Trade Marks Act.
11. So far as this question is concerned, there is hardly any controversy on the point that the two trade marks are so identical that they hardly leave any doubt as to their causing deception or confusion as contemplated by section 8(a) of the Trade Marks Act. The first case in respect of which my attention has been invited by Khawaja Mansoor is the case of Jamia Industries Limited v.
Caltex Oil (Pak.) Ltd. PLD 1984 SC 8 wherein the following passage fiom Kerly's Law of Trade Marks and Trade Names, 1966 Edition, page 838, was quoted:-- "Two marks, when placed side by side, may exhibit many and various differences yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of ball; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.
' When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus, it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken. In cases of device marks, especially it is helpful before comparing the marks to consider what are the essentials of the plaintiff's device; with word marks, the Court is apt to be more impressed by the danger of giving the plaintiff what amounts to a monopoly in a large class of words."
12. In the matter of the application of Pomril Ld. (18 RPC 181) a company who was the registered proprietor of trade mark Pomril' for cider applied for registration also for cider of a mark consisting of a representation of the cut side of half an apple, cut vertically, with the word `Pomril' across it.
This trade mark was found to be in conflict with the opponent's mark comprising (inter alia) the words 'Apple Brand' and the representation of an apple which had been registered for bottle cider.
It was held that the proposed mark was likely to lead to the word 'Apple' or the words 'Apple Brand' being associated with the goods sold under it and therefore, was likely to deceive.
13. As I have already pointed out there hardly appears to be any doubt that the mark 'Mark Seven' of the respondent clearly conflicts with that of the petitioner. There is also no doubt that the petitioner had applied for registration of its mark earlier that the respondent because as per admission of the respondent itself the mark has been used by it since 1972. The mark of the respondent was also not distinct as the petitioner was the registered proprietor of the trade mark, notwithstanding the fact that the mark had not been used by the petitioner in Pakistan. However, the question is whether the discretion vested in the Court should be exercised in the present case in favour of the petitioner. Admittedly, the petitioner, although, had applied for registration of the mark as early as in August, 1970 but the petitioner thereafter has failed to use the mark in Pakistan.
Reference in this respect may be made to section 37 of the Trade Marks Act which provides for removal of a registered trade mark from the Register if the same has not been in use for a continuous period of five years or longer in relation to the goods for which it was registered by the Registrar. According to section 14 of the Trade Marks Act, any person claiming to be the proprietor of a trade mark used or proposed to be used by him in the course of his business would be entitled to apply for registration. It, therefore, follows that if the proprietor of a registered trade mark who intended to use the same in the near future but has failed to use the same thereafter for a continuous period of five years would be liable to have the mark removed from the Register of Trade Marks. Consequently, it has been argued by Mr. Zari that even if the trade mark of the petitioner was registered by the Registrar the same on account of its non-use would have become liable to be removed from the register. It has been pointed out, on the other hand, that the respondent No,1 has been using the mark since 1972 continuously and extensively throughout Pakistan on its products to the knowledge of the applicant. This factual position has not been denied by the petitioner in the affidavit filed by it in rejoinder. Even according to his own case, the petitioner learnt about the registration of the respondent No,1's trade mark after the order of this Court, dated 23-7-1981 came to the petitioner's notice in September, 1982. The petitioner has, therefore, slept over the matter thereafter as it has filed the present application in 1986. In my view, therefore, it is not a fit case where the discretion should be exercised by the Court in favour of the petitioner.
14. In the result, this application is dismissed.