DECISIONABDUL GHAFFAR QURESHI, REGISTRAR. -- M/s. U.T.& P.S., on behalf of M/s. Magna Limited a Company of Jersey. Channel Islands doing business at Estaway, Don Street, St. Heiier. Jersey.
Channel Island have filed Rectification No. 9/93 on 10-8-1993 against the registered Trade Mark No. 55344 in class-29 consisting of word WIMPY in respect of Butter, Jam, Jellies, Preserves, Cheese & Pickles in the name of ABDULLAH ISMALI, F/59. S.I.T.E.. Mauri pur Road, Karachi, alongwith statement of the case, main affidavit and affidavits from the dealers and other documentary evidence in support of their claim.
2. In the application for rectification (TM-26) the applicants for rectification have stated that their organisation is a world renowned and carry on business in Fast foods and other food products which cover almost all the items of class 29 and are sold under their famous trade mark WIMPY throughout the world. The applicants for rectification have further stated that their trade mark WIMPY stands registered in more than 36 countries of the world and have given the list of countries.
They have also applied the trade mark WIMPY in Pakistan in class 29 and 30 under application Nos.114170-30, 114171. 114172 and 114173 in class-29.
3. The applicants for rectification have further added that the trade mark WIMPY has become very popular in Pakistan also due to (lie reasons and that Pakistanis living abroad are well aware of the high reputation and goodwill and they send WIMPY products to theirrelatives living in Pakistan. The tourists visiting Pakistan also take WIMPY products with them and also the other peoples like students. Government and semi-Government officials travelling between foreign countries and Pakistan also bring WIMPY products to Pakistan and for the foregoing reasons, the trade mark WIMPY has established a good will all over the Pakistan.
4. The applicants for the rectification have further stated that the registration of trade mark in Pakistan in the name of Abdullah Ismail has recently come in the knowledge of the applicants for rectification when an examination report was received by them wherein the said mark was shown as conflicting mark.
5. The registration of trade mark WIMPY under No. 55344 has been obtained by the registered proprietors by fraud and misrepresentation of facts. The mark was registered without bona fide use of the trade mark in relation to the goods before the 10th July. 1993 and is therefore liable to be removed from the Register under Section 37 (b). The registration of this mark is wrongly remaining on the Register without sufficient cause and is therefore liable to be removed from the Register under Section 46 (2) of the Trade Marks Act. 1940 also.
6. The applicant for the rectification further stated that the circumstances of the case show that the registered proprietor knew that the applicant is the proprietor of the mark WIMPY and hence the claim to the proprietorship of the mark by the respondent is false made in bad faith and its assertion in the application form was a deliberate attempt to deceive the Registrar in obtaining registration under section 14 (1) of the Act. The registered proprietor has never used the trade mark WIMPY as he has never indulged into any trade activities in Pakistan so far.
7. The applicants for the rectification have requested to remove the entry of Trade Mark No. 55344 in class 29 in the name of Abdullah Ismail from the Register of Trade Marks for the sake of justice, equity, fair play, public interest and purity of the Register under the provisions of Section 37, 1 (a) &
(b) 46 (2), 14 (1) and 8(a) of the Trade Marks Act, 1940.
8. In reply to the application for Rectification M/s. Adbullah Ismail filed counter-statement (TM-6) and have stated that the respondents are well known and renowned manufacturers of butter, jam, jellies, preserves, cheese and pickles since long and that they have adopted developed, popularised and used the trade mark WIMPY in relation to the goods falling in class 29 from the year 1971 and due to the excellent reputation and goodwill on account of the high quality of the respondents goods.
9. The registered proprietors have further stated that the consuming public and the traders in Pakistan identify, recognise and associate trade mark WIMPY with the respondents products exclusively.
10. The registered proprietors have denied each and every averment made in the application for rectification and have stated that the applicants' products under trade mark WIMPY are not at all available in the markets of Pakistan and thus no reputation or goodwill have been acquired by the applicants and the respondents are fully entitled to the protection of the trade mark WIMPY by virtue of Sections 14 (1) and 8 (a) of the Trade Marks Act, 1940.
11. Ater filing of evidence from both sides hearing was fixed wherein Mr. Hassan Ifran, Advocate appeared on behalf of the applicant and Mr. Karimullah Trade Marks Agent on behalf of the Registered Proprietor, Mr. Hassan Irfan while representing the applicant for Rectification argued as under:-(l) That the respondent has not filed any affidavit alongwith TM-6 which is required to be submitted in support of evidence of user. He further stated that since TM-6 is not supported by any statement of Registered Proprietor who has not even signed TM-6 as well. In the event of nonsubmission of evidence, the Tribunal may consider that no evidence of use has been filed on behalf of the Registered Proprietor, in support of TM-6. Therefore, this Tribunal has to consider only the contents of TM-26.(2) While reiterating their pleas as explained by them in the TM-26 vide para 1 to 14, Mr. Hassan Irfan clarified that these relevant1 paraas give a clear picture of the backgrounds of their case for rectification of the registered trade mark since the word mark WIMPY in fact an invented word which was originally adopted by the applicant firm as their trade mark. Moreover a number of evidence has been filed alongwith TM-26 showing their worldwise use. The details of which a shown as under: -(i) Annexures A-l to A-3, copy of dictionary showing name of WIMPY as a trade mark for the items burger etc.(ii) B-l to B-12, copies of International registrations showing registration of mark in several countries.(i.e) C-i to C-8, publicity material showing different packing of the items as sold by their firm.(iv) D.1 to D-9, publicity material showing the respective use in India and Pakistan. The Exhibit D-9 shows a particular type of Uniform which is usually worn by employees working in WIMPY Restaurants all around the world.(v) E-l to E-6, showings different outlets of WIMPY operating in different countries which definitely support that the mark is being used in a number of countries.(3) The statement made at paras 3,4 and 5 of the affidavit dated 21- 6-1993 duly sworn by Syed rNAVID AZIZ clearly indicate about awarness of the trade mark of the applicant who have been carrying on their business having worldwide reputation while operating their business in England and other countries where their Fast Food Restaurants, which prepare, make and offer for sale a large variety of food products including but not limited to coffee, tea, cocoa, coffee substitutes, burgers, prepared meals, icecreams, ice cream toppings and syrups, milk shakes, sauces, meat, fish, poultry and game and food products made therefrom, preserved, frozen, dried and cooked fruits and vegetables, eggs, milk and milk products, salad dresseings and preserves, beverages etc.(4) Similar affidavit have been filed by a number of Pakistanis showing their awarensess about worldwide reputation about applicant trade mark who have solemnly affirmed in their respective affidavits that they had taken foods from WIMPY Restaurant on their respective visits abroad. This fact amply demonstrate the fact which clearly shows that the trade mark was known to a number of Pakistanis living in Pakistan.(5) That the applicant for Rectification have been using the mark in a number of countries which is evident from the annual worldwide sale figures of the food products sold under the trade mark WIMPY which was. Duly shown in para 11 of the affidavit sworn by Micheal Smith authorised in signatory of M/s. Magna Ltd., in support of application for Rectification. The details of sale figures are given asunder:- YEAR AMOUNT IN $ STERLING1986 5,675.0001987 5,890,0001988 5.220,0001989 6.535.000 1990 7.670,0001991 9,880.0001992 11,125.000that the applicant is a bona fide/genuine owner of the trade mark WIMPY which is further evident from the statement made in para 13 (c) of the aforesaid affidavit showing yearwise sale figures during last 3 years of WIMPY Products in the following countries:-(AMOUNT OF $ STERLING)1990 1991 1992CYPRUS 330,000 290,000 355.000EGYPT 870,000 945,000 930,000KUWAIT 550,000 160,000 375.000SPAIN 3,740,000 3,400,000 4,140,000SAUDI ARABIA 430,000 489,000 526.000TURKEY 230.000 178,000 275.000
12. That all the above sale figures showing use of the mark in a number of countries around the world clearly suggest that the applicant is a bona fide and genuine owner of the Trade Mark WIMPY. Moreover the applicant have a definite intention to market their goods in Pakistan since 91 and have started operation and have already commenced nearly selling all WIMPY products in Pakistan. The applicant have signed licensing agreement in favour of local firms and one outlet is already working in Karachi where all WIMPY products are being sold and the applicant have extensively publicized all WIMPY products which have considerably met with success and people are patronising the sale of their goods due to their quality & high standard.
(6) That the applicant for Rectification had been using the trade mark WIMPAY on Food Products right from 1995 around the world in a number of countries and established a huge business under as explained above. Whereas the Respondent had filed their application in 1971 when the mark was proposed to be used and the applicant did not have any bona fide intention to use the mark which is evident from the fact that the trade mark which was adopted by them was never used upto the date of one month before the date of this application which is the date of application for rectification. This fact clearly indicate that applicant did not have any bona fide use of the mark which is liable to berectified under Section 37 (1) (a) and 37 (1) (b) of the Trade Marks Act, 1940.
Therefore, they prayed that such wrong entry on the Register should be rectified under Section 46 (2). Moreover their registration is liable to be cancelled under section 14 (1) as they are not the actual proprietor of the mark.
13. Mr. Hassan Irfan finally prayed for removal of the registered mark which remains un-necessary obstacle/impediment in the way of working and expansion of Magna's business in Pakistan since the applicants firm has made considerable investment in Pakistan and has definite plans for further investment and such investment need protection of their Industrial Property Rights of the products manufactured by them. In case the registration of the Respondent is not rectified, the applicant will be forced to reconsider this investment and country will be deprived from much needed foreign investment. He relied on the following case laws in support of the above submissions:-1. PLD 1975 Karachi 4212. PLD 1983 Karachi 4023. PLD 1987 Karachi 3564. PLD 1978 Karachi 105. 1988 CLC 2526. PLD 1979 Karachi 837. PLD 1987 Karachi 3568. PLD 1990 S.C. 10749. 1992 MLD 235710. PLD 1973 Karachi 2411. AIR 1967 Madras 14812. PLD 1991 S.C. 2713. 1986 CLC 163614. PLD 1991 Karachi 42515. 1988 CLC 1358
14. Mr. Karimullah, Advocate appeared on behalf of the Respondent, who argued as under: -1. That the Respondents are the owner of Trade Mark WIMPY which is registered under Trade Mark No. 55344 for the items Butter, jam, jellies, preserves, cheese and pickles in class 29. This fact was already stated in para 3 of TM-6 which was filed on 19-4-1994. However the affidavit from the applicant could not be filed alongwith TM-6 due to a clerical mistake. However on 12-9-1994 they filed a letter alongiwith affidavit in duplicate stating therein ^iat due to oversight of their dealing clerk, the main affidAyit could not be filed alongwith TM-6 on 19-4-1994 but no action was taken by this Registry either to reject or grant their request.
2. That the respondents are the registered proprietor of Trade Mark WIMPY for all the goods as indicated above who applied for registration of Trade Mark on 24-4-1971 with the sole purpose to use the mark honestly for the above goods.
3. That the contention Of the applicant for rectification are strongly denied about their claim in the ownership for the Trade Mark WIMPY as they have themselves claimed that this word mark WIMPY had been derived from a comic strip and relied on the meaning of the word WIMPY as appear in different Dictionaries which invariably indicate that WIMPY is the name of a hamburger served in a soft bread roll. These items in fact fall in class 30 whereas the goods of the respondent fall in class 29 as such the applicant for Rectification are not the aggrieved person in accordance with Section 37 (1) (a) of the Trade Marks Act. 1940 and as such the respondent's mark 55344 can be rectified only on submission of proof that the applicants for rectification are the genuine aggrieved person.
Theapplicant for rectification had filed a number of evidences alongwith TM-6 in which it is clearly mentioned that they are dealing in the trade of goods like burger, hamburger and these goods fall in class 30. Moreover the applicant for Rectification have not filed a single evidence showing their claim of use for such goods which actually fall in class 29. Moreover not a single invoice/advertisement material or any affidavit/supporting affidavit was filed in support of Rectification which could show about their specific use for such items falling in class 29 as such they are not the aggrieved person. In support of the above arguments. Mr. Karimullah has given the following references:(i) Para 2 under the heading persons held to be persons as in page 634 of the Trade Marks Act, 1940 by Dr. Venkateswaran (1963 Edition).(ii) Lever Bros Port Sunlight Ltd v.
Sunniwhite Products Ltd (1949) 66 RPC at P. 101.
4. The applicants are not the aggrieved party as their goods are different which fall in class 30.
Hence their prayer to remove the mark cannot be allowed. He thus concluded saying that the application for rectification may be refused and costs of these proceedings be awarded to the respondent.
15. While rebutting statement of the respondent, Mr. Irfan. Advocate for the applicant argued as under:-
1. Regarding non-submission of the main affidavit by the Respondent alongwith TM-6, the applicant advocate stated that the letter dated 12-9-1994 as filed by the applicant showing reasons of oversight of clerk is a false reason which could not be sustained as it is almost after 5 months of filing TM-6 and no justification what so ever was given for its late submission. Nor any affidavit of dealing clerk/advocate was filed which could indicate any cogent reason for non submission of main affidavit alongwith TM-
6. Moreover once TM-6 is filed, further affidavit/evidence has to be filed in accordance with Rule 36 which procedure was not adopted by the respondent as such affidavit cannot at all be brought on record.
While denying the respondent's contention to the effect that the applicants don't deal in items falling in class 29, Mr. Hassan Irfan refuted their claim and stated and clarified that two separate applications were filed by the applicants Trade Mark No. 114172 and 114173 for the goods falling in class 29 which clearly shows that M/s. Magna Limited has a worldwide use of all such goods falling in class 29 and has a bona fide intention to use them alongwith some other goods in Pakistan which also fall in class 29. In this regard they placed their reliance on a number of evidence filled, alongwith TM-26, the details of which are as under:-
(i) Annexure C-3 which shows a packing for fish and chips, these goods fall in class-29.(ii)
Annexure D.1 shows advertisement of their goods like cheese, fish chips, potato chips, hot applies pie & chicken nuggets. These goods fall in class 29.(i.e) Annexure D-2, shows advertisement for using above items in Kuwait.
Mr. Hasan Irfan therefore asserted that these facts/evidence clearly suggest that M/s. Magna Limited are the true and genuine owners of trade mark WIMPY having worldwide use of all such items falling in class 29 as well in class 30. Even otherwise the word WIMPY has been derived from a comic/cartoon character which is a foreign cartoon character, it is neither an Urdu language word nor it is the name of the proprietor or a name of one of its relatives. The question therefore remaine as to Kow the registered mark holder had adopted the word mark WIMPY as their trade mark in the year 1971. No plausible reasons had been given by the respondent in TM-6 which could explain the honest adoption of the mark.
16. Even otherwise by filing two applications in class 29 by the applicant, the applicant has. Shown its bona fide intention to use their trade mark for the goods falling in class 29. In this regard he placed his reliance on the NIRMA case as reported in 1992 MLD 2357 at page 2360. While rebutting the contention of respondent towards applicant's honest intention to use the word mark WIMPY in Pakistan, Mr. Hasan Irfan asserted that intention for dishonest/honest use is a Secondary question in the present circumstances. The first primary question is required to be determined whether the respondent who had got their mark registered in 1971, has ever used the mark or have used the mark in the last five years period or not and therefore submitted that even the registered proprietor may show that they had adopted the.Trade mark with the honest intention to use in. 1971 but if it fails to prove use of mark on the goods during the last 5 years which is a sufficient ground for its rectification under Section 37 of the Trade Marks Act, 1940.
17. Mr. Hassan therefore submitted that as the registered proprietor has failed to submit any evidence to show that they have ever used the Trade Mark WIMPY therefore it is a fit case for Rectification under Section 37 and if non-use is proved, then no other point need to be considered by this Tribunal.
18. The applicants are the persons aggrieved, in view of above arguments, it is only after filing their Trade Mark application for registration of their trade mark WIMPY, they became aware about the registration of trade mark WIMPY in the name of the respondent and thereafter they became the person aggrieved and filed Rectification application before this Tribunal accordingly. As no arguments has been advanced by the Registered Proprietor to show that as to why mark was not used and has not given any evidence of use of the mark since its registration in 1971. Finally Mr. Hasan Irfan prayed that the Trade Mark of the Respondent may be rectified from the Register as the prime question is to be considered whether the registered owner of the Trade Mark WIMPY has ever used the mark during the relevant period in Pakistan, which in fact was never used in Pakistan.
Therefore, the registered mark may be rectified and cost of the proceedings may be granted to the applicants.Now I have to see that:
(1) Whether the Applicant is a person aggrieved as required by Section 46 of the Trade Marks Act.
1940.(2) Whether the mark was registered without bona fide intention to use the same in relation to the goods, for which the registration was granted.(3) Whether the mark has been used in Pakistan by the Registered Proprietor.(4) Whether the mark is an unnecessary obstacle in the working of business of the applicant.I will deal with the above issues in detail step by step.(1) That the applicant MAGNA LTD. Is a world renowned company carrying on a worldwide reputable business from England and elsewhere of fast food restaurant which prepare/make and offer for sale a large variety of food products including hut not limited to coffee, tea. Cocoa, coffee substitutes, Burgers, prepared meals, ice creams, ice cream toppings and syrups, milk shakes, sauces, meat fish, poultry and gawe and food products made therefrom, preserved, frozen, dried and cooked fruits and preserves, beverages etc. And in order to distinguish their goods/products of the other traders of the same field they adopted a trade mark WIMPY in the year 1954 in United Kingdom which was originated from the well known Comic cartoon character 'J' Wellington Wimpay from the "Popeye Cartoon series". According to the applicant there exist 225 WIMPY outlets in U.K., whereas there exist 364 WIMPY outlets in other parts of the world including Egypt. Sweden, Norway, Spain. Cyprus, Gilbralter, Malta. Turkey, Kuwait, Saudi Arabia, India, Japan, Kenya. Zimbabwe, South Africa, Guatmala and Columbia. The applicant has also opened WIMPY outlet in Pakistan.
19. That the trade mark WIMPY has been registered in almost every major country of the world and the applicant has applied for the registration of the mark WIMPY in Pakistan under 4 applications the particulars of which are as under:- TRADE MARK NO. DATED_________________________ GOODSWIMPY 114170 26-1-92 Coffee, tea, cocoa, coffeesubstitutes, sugar rice, topioca. Flour, products made from cereals for food for human consumption. Bread, Biscuits, Cakes, Pastry and hamburgers (being bread rolts containing cooked foods). Preparedmeals, Confectionery, ice creams, ice cream toppings and syrups, milk shakes, sauces, salt mustard, vinegar, flavourings and seasonings.WIMPY DEVICE 114171 26-1-1992 - -............... -do--------------------- WIMPY DEVICE 114172 26-1-1992 Meat, fish, poultry and gameand food products made therefrom, preserved, frozen, dried and cooked fruits and vegetables, eggs, milk and all milk products, Edible oil. Salad dressings and preserves.WIMPY 114173 26-1-1992 ------- ----- do------------ 20. The above applications are still pending in the Trade Marks Registry due to the registered trade mark WIMPY of the respondent t under No. 55344 in class .
29. The registration of trade mark WIMPY by the respondent would thwart the legitinate business expension of the applicant which is an internationally well known and established company and regarded throughout the world as the proprietor and owner of the trade mark WIMPY as such the registration No. 55344 for WIMPY would remain an unnecessary obstacle in the way of theapplicants fair and free use of their world renowned trade mark WIMPY in Pakistan. As such the applicants are the persons aggrieved as required by the Section 46 of the Trade Marks Act, 1940.
21. Reliance is placed on PLD 1975 Karachi 421 wherein the aggrieved person means person in someway or the other substantially interested in having mark removed from the register or person who would be substantially damaged if mark remained. Respondant using the trade mark concerned, HELD! Interested in having mark removed from register and as such aggrieved persons entitled to make application under section 37.
22. In another case reported in PLD 1983 Karachi 402 wherein it has been observed as under:-23.
Persons who are aggrieved are persons who are in someway or other substantially interested in having the mark removed from the register or a person who would be substantially damaged if the mark remained. It is very difficult to frame a nearer definition than that. In the Appollinaris case, it was pointed out not as a complete or exhaustive definition that people would be aggrieved if they were in the same trade and dealt in the same articles.
24. It would be, an unbusiness like construction to place on the term aggrieved, to say that it could only be applicable to those who ^ actually had formed fixed and crystallized intention of dealing in tluT particular article if permitted to do so. If a man is hampered in his arrangements business matters in the future by the fact that a trade mark is on the register which ought not to be there, he is a person who is sufficiently aggrieved to come within the Section 46.
25. In view of the above it is quite clear that the applicants arethe person aggrieved as required, by section 46 of the Trade Marks Act, 1940.
26. Under section 36 of the Trade Marks Act, no application4 for the registration of a trade mark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark, if the Registrar is satisfied that a company is 'about to be formed and registered under the Companies Act. 1913 and that the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods by the company.
27. In the light of section 36, a proprietor of a trade mark would not be disentitled for registration unless the mark is in use at the time of registration. A bare reading of section 14 of the Trade Marks Act. Shows that any person claiming to be the proprietor of the trade mark used or proposed to be used by him who desireous of registering it shall apply to the registration in the prescribed manner.
It is clear that a proprietor can legitimately avail of right to register the proposed trade mark but the intention to use the mark is to be seen with reference to the circumstances around the said proprietor.
1 in a case reported in PLD 1978 Karachi P.10, it was held, that imention to use a trade mark is a fact not capable of direct proof and can be established only by influence from evidence of conduct.
More nonuse for a period of 5 years or longer upto a date 1 month before application under clause
(b) of section 37 (1) of Trade Marks Act is sufficient ground for removal of mark.
28. It is further held in PLD 1975 KCI 421 that a trade mark not used for 18 years beginning right from year of registration, the registrar of trade mark was right in holding that the trade mark was either not intended to be used or there was no bona fide use.
29. In view of the above two citations it is quite clear that if a mark was registered and not used thereafter for a sufficient time than it can be said that the mark was registered without bona fide intention to use the same in relation to the goods for which the registration was granted. In the subject matter the mark WIMPY was registered in the name of, respondent since 24th of April. 1971 and was not used till the filing of the present application on 31st July, 1993 i.e. a period of 22 years has passed but the respondents have not used the said trade in relation to the goods for which the registration was granted. It is now clear from the conduct of the respondent that he sought the registration of the trade mark without bona fide intention to use the mark in relation to goods for which it was registered. Moreover, the respondent has failed to produce any evidence and as such in the present case it was considered by the respondent that the trade-mark was not used during the statutory period. A mere non-use for a period of five years or longer upto a date one month before the application is a sufficient ground for removal of the mark.
30. Prima fade the mark is liable to be removed as it was registered without bona fide intention to use the same in relation to the goods for which registration was granted.
31. Section 14 (1) of Trade Marks Act, provides that any person claiming to be the proprietor of the trade mark used or proposed to be used by him may apply to register the mark. Although the wording of section 14 (1) appears to be simple, however they place a very heavy burden upon an applicant, as well as a heavy duty of fairness, openness and a duty of honesty upon him in that the applicant who wishes to register the mark and who claim to be proprietor of the trade mark in actual sense to be its proprietor and his claim to proprietorship must not be dishonest. In a case reported in PLD 1979 Karachi 83, it was observed as under:-
32. Claim must be made in good faith and applicant should be able to justify it where the applicant knowing that another person the proprietor of the trade mark applied for, the claim of such applicant to proprietorship would be false and assertion regarded as deliberate attempt to decieve the Registrar and Registration if obtained would be liable to be expunged.
33. The reputation and goodwill of trade' marks and companies is no longer territorial and no longer confined within the national borders of any country. It in fact travels across international borders and has become of international character. Especially with the proliferation of means of communication and information media, sattelite coverage of variouds events throughout the world, international dissemination of print media etc, the names trade marks and products of world renowned big companies are catching the eyes and ears of the public at large in all civilized countries of the world and Pakistan is no exception.
34. There is also another factor which should be kept in mind that word WIMPY has got international publicity. The right of owners of foregin trade marks are to receive some safeguards unless it is clear from the evidence that the foreign owners have abondaned their intentions of marketing their products under the mark ill this country.
35. In another case reported in 1992 MLD 2357. It was held. I have no doubt that having regard to the scheme of the Act and the maintenance of the purity of the register unless a person alleges and also proves that he is a proprietor of the trade mark, he cannot obtain registration of it. The observations of Fry L.J. In RE APPOLLINAR'S TRADE MARK (1891) 2 Ch! At P. 226 (1891) 8 RPC 136-61 L.J Ch. 625 will clearly show that it is incumbat upon the applicant to establish that he is proprietor of the mark and that if questioned he must substantiate the same. The person who first designed or who use a trade mark first is the person entitled to claim the proprietorship thereof unless subsequently he has dealt with the same and some other has obtained rights thereto in the manner known to and recognized by law.36. Reliance is also placed on AIR 1967 MADRAS 148. In the 7-UP (seven up) case reported in PLD 1990 Supreme Court 313.. It has been held by the Supreme Court as is a General Principle also that the statute has to be read as a whole. It provides that a trade mark can only be registered if it falls under any of the clauses of Section 6 and must be distinctive of the goods. In addition the trade mark of which the proprietorship has been claimed by an applicant must be a trade mark which is not hit by Section 10 (1) or 8 (a) of Trade Marks Act.
So the basic requirement of registration is that the mark which is applied for registration must be a distinctive mark as required by Section 6 and the applicant must prove his claim of ownership and that the mark be entitled to protection in the Court of Justice. Now coming back to the fact of this case it clear that the mark WIMPY which is said to be derived from the well known comic cartoon character vJ. Wallington Wimpy1 from the Popeye Cartoon series, is not an ordinary dictionary' word but is a trade mark wholly associated with the applicant for rectification since 1954 and even in the dictionary it has been described as the trade mark for the hamburg in the following way.Wimpy:n. a kind of hamburger, (Trade Mark; orig, name of a hamburger-loving character in a comic strip).
37. Hence the adoption of such a trade mark by the respondent is dishonest and objectiona ble under section 14 (1) of the Trade Marks Act, 1940. Moreover, the word WIMPY which has been described as a trade mark for burger etc. Is wholly associated with Applicant for rectification.
Hence it was not distinctive as required by Seiion 6 of the Trade Marks Act, 1940. Furthermore the mark as such is disentitled to protection in the Court of justice hence objectionable under section 8
(a) of the Act.
38. Regarding the use of-the mark WIMPY by the respondent. The respondent have failed to produce any evidence in support of their case, even they failed to file a supporting affidavit as required under section 70 (b) of the Trade Marks Act, 1940 and such failure on the part of respondent is fatal. Reliance is placed on 1988 CLC 1358.
39. It is therefore quite clear that the mark has not been used in Pakistan by the registered proprietor.40. In view of the above I have come to the conclusion that the mark 'WIMPY' registered under No. 55344 in class 29 is not used and is an unnecessary obstacle in the working of business of the applicant for rectification as they have not only applied for its registration but have also made considerable investment in Pakistan and have definite plan for further investment'and such investment need protection by way of their intellectual property rights. 1 therefore allow this application and direct that the mark registered under No. 55344 in class 29 be expunged from the register.
41. This order shall take effect after the expiry of the appeal period.