1. ' Appellants Arm Brothers Plastic Industries (Pvt.) Limited, have filed this appeal under section 76 of the Trade Marks Act (hereafter to be mentioned as the Act) against a decision given by the Deputy Registrar of Trade Marks, Karachi refusing registration of appellant's Trade Mark "PEARL".
2. ' The appellants moved an Application No,93912 before the Registrar of Trade Marks, Karachi for registration of their Trade Mark "PEARL" in Class 21, in respect of small domestic utensils and containers, tooth brushes, combs, pots, insulated jugs, water-coolers and flasks. After scrutiny of the application, a notice under section 14 (1) of the Act was issued to the appellant to show cause, as to, why his application should not be refused on the ground, that the applied mark was objectionable under section 8 (a) of the Act, as it was conflicting with two other identical marks of M/s. Clay Products Ltd., Karachi and M/s. China National Light Industries Limited. The appellant replied the show-cause notice and took stand that the goods of the applied marks were totally different from goods of the marks which were pending registration.
3. ' While elaborating the grounds of his decision for refusal to register appellant's Trade Mark "PEARL", the Deputy Registrar Trade Marks took view that appellants' honest concurrent use of the applied trade mark, as per their evidence being for a period less than one year, was not long enough to entitle them to get their trade mark registered under section 10(2) of the Act, and that the affidavit and the documents filed by the appellants in evidence lacked corroboration. Hence this appeal.
4. ' Mr. Salim Ghulam Hussain learned counsel for the appellants argued that application of the appellants was dismissed at a preliminary stage, that no show-cause notice was issued to the appellants in respect of the bar created by section 10 (1) of the Act and that no cogent reasons were given by the Deputy Registrar Trade Marks even in the "Grounds of Decision" for dismissing the application on the basis of section 8 (a) and section 10 (2) of the Act. Learned counsel for the appellants argued that section 10 (2) of the Act has not prescribed any period of honest concurrent use of a trade mark before the same would qualify for registration under the said provision.
5. Reference was made to photo copy of the affidavit of Abdul Rahim Director of appellant firm, filed in this Court, where sale figures about appellant's product sold locally under mark "PEARL" were given in para. 7 while in para. 8 export figures of the same product exported under the same mark, were given. In support learned counsel for the appellant cited the cases of:-
(i) London Rubber Co. Ltd. v. Durex Products Incorporated and another (AIR 1963 SC 1882).
(ii) Solo Susice Narodni Podnik v. Sindh Match Works (Pvt.) Limited and another (1991 CLC 37).
6. ' Fact that an earlier Application No, 68601 for registration of similar trade mark was pending, has not been denied. Said application has been accepted as conceded by learned counsel for the appellants. This shows that an identical trade mark of another proprietor duly registered, exists in the register of trade marks. In the circumstances prima facie section 10 of the Act would come into play. Subsection (1) of section 10 reads as below:-- "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."
7. ' Said provisions as well as the provisions contained in section 8 (a) of the Act came to be considered in the case of London Rubber Co. Ltd. (AIR 1963 SC 1882) where it was held that object of the provisions contained in section 8 (a) and section 10 (1) of Trade Marks Act is to prohibit from registration, marks which are likely to deceive or cause confusion. It was also observed that enactment of subsection (1) of section 10 of Trade Marks Act would show that where there is identity or similarity in two marks in respect of the same goods or goods of the same description, registration at the instance of another proprietor would be prohibited where a mark is already on the register as being the property of another proprietor.
8. ' In the instant case a show-cause notice was issued to the appellants to show cause as to why their application should not be refused on the ground that the applied mark was objectionable under section 8 (a) of the Act on the basis of two conflicting marks pending for registration. No objection under section 10(1) of the Act was raised in the show-cause notice. It is not mentioned either in the show-cause notice or in the "Grounds of Decision" if the applied mark was identical with the trade marks already on the register in respect of the same goods or description of goods, or that the applied marks so nearly resembled the trade marks pending registration, as to be likely to deceive or cause confusion. There is no finding by the Deputy Registrar if there was identity or similarity in the applied mark and the marks pending registration in respect of the same goods or goods of the same description. The applied mark was in respect of small domestic utensils, containers, tooth brushes, combs, pots, insulated jugs, water-coolers and flasks. The two marks pending registration were (i) in respect of tea pots with cover, milk jugs etc. And (ii) in respect of glasswa re, vacuum flasks etc. Respectively. Similarity or otherwise of the goods of the different marks, was not discussed by the Deputy Registrar. No notice was issued to proprietors of the Trade Marks which were considered to be confusingly similar to the applied trade mark. In the circumstances the impugned order is premature and non-sustainable. In the case of David Vaughan Racklin v. Deputy Registrar of Trade Marks, Karachi (1986 M LD 1666) it was held, that in case the Registrar Trade Marks found that the trade marks applied for and the Trade Marks already registered in names of other firms were confusingly similar, he should not have rejected the application for registration at preliminary stage, but should have proceeded with the application and should have decided the same in accordance with law, after issuing notices to the holders of the registered trade marks and after publication of the trade mark proposed to be registered.
9. ' Even if registration of a trade mark is barred by subsection (1) of section 10 of the Act, it can be registered if it is covered by the provisions contained in subsection (2) of section 10 of the Act. Said subsection reads as under: "In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose?
10. ' In this way the provisions contained in subsection (2) are exception to the rule laid down in subsection (1) of section 10. The onus is on the applicant to prove honesty mentioned in subsection (2), section 10 and it has reference to commercial honesty, as held in the case of Parkington & Co Ltd. v. Frederick Robinson Ltd. (1946) 63 RPC 171. In the case of Solo Susice Narodni Podnik, (1991 CLC 37) the view taken was that section 10(1) provides for registration of identical marks in respect of similar or same goods on conditions prescribed under section 10(2) of the Act and these provisions are exception to the rule prohibiting registration of same, similar or identical marks in respect of the same or similar goods belonging to other person. Such registration is permitted if there is honest concurrent user or other special circumstances justifying exercise of discretion by the Registrar, as further observed. Unfortunately there is no discussion of appellant's evidence in the "grounds of Decision" about the honest concurrent use of their trade mark, except a line about the affidavit and the documents lacking corroboration. There is no discussion on the basis of evidence, about applicability of section 8 (a) of the Act.
11. ' For the foregoing reasons and following the view taken in the case of David Vaughan Racklin (1986 M LD 1666) I set aside the impugned order and remand the matter to the Registrar of Trade Marks for redefining the matter according to law. Proprietors of the trade marks registered or pending registration and said to be barriers in registration of appellant's applied trade mark, be issued notice to participate in the proceedings if they desire so. They be allowed to lead evidence, if they contest appellant's application, after giving chance to the appellants to lead any evidence in addition to their evidence already on record. The appeal stands disposed of in the aforesaid terms with no order as to costs.