1. ' This appeal has been filed under section 76 of the Trade Marks Act, 1940 challenging the decision dated 24-8-1990 passed by the respondent who has declined to order the appellant's application to proceed to advertisement and registration on the ground that it does not fulfil the requirements under Rule 14 of the Revised Trade Marks Rules, 1963.
2. ' The appellant on 5-2-1980, had filed an application No,71061 for registration of word mark 'Dawood Fabrics' in respect of Cotton piece goods falling in class 24. The word mark subsequently, but during examination, was allowed to be amended as simple and plain letter mark 'Dawood Fabrics' on 31-3-1980. The appellant's case further is that it had applied for registration of the word mark as an Associated Trade Mark under section 12 of the Trade Marks Act, 1940 with similar label mark 'Dawood Fabrics' being subject of appellant's earlier application for registration under No,62733 of the same description of goods.
3. ' Objections were proposed by the Trade Marks Registry as the mark was found to consist of personal name 'Dawood' and on the ground of pendency of similar cases. The appellant claimed user since 1955 and submitted affidavit of Yousuf A. Deshi, Secretary of the appellant-company testifying to such user with exhibits showing the mark 'Dawood Fabrics' as used by the appellant.
4. However, since the record of the appellant company for the years 1955 to 1969 was not available, evidence of user was filed for the period from 1970. The application was declined registration through decision dated 4-9-1980 which was assailed through M.A. No,12 of 1981 filed before this Court. The appeal was allowed through judgment dated 8-11-1987 on the ground that the order dated 4-9-1980 suffered from an inherent defect inasmuch as, the matter had been decided by the same Officer who had already expressed his views while examining the application. The matter was accordingly, remanded for decision afresh by the Registrar himself or by referring the same to another Assistant Registrar.
5. ' The application for Registration No,71061, consequently, came up before another Assistant Registrar of Trade Marks who has passed the decision dated 24-8-1990 impugned in this appeal.
6. The notice of this appeal was sent to the respondent and the record pertaining to the appellant's Application No,71061 was also called for. The respondent No,1 has again declined the application of the appellant by reference to the proceedings in respect of the appellant's earlier Application No,6E-733. The operative part of the impugned order is as follows: "The learned Advocate insisted that the period of user of the mark be counted from the year 1955 as has been done in Application No,62733 class 24. Under Rule 14 of the Revised Trade Marks Rules, 1963 the applicant is required to file an affidavit testifying to such user with exhibits, showing the mark as used, which in the subject application has not been done accordingly. It does not appear wise to accept the claim of user of the mark on the basis of a statement made by the applicant in affidavit. Such an acceptance is likely to effect the shape of things in the contested opposition case being heard side by side in the Trade Marks Registry. Had it not been a contested matter the affidavit would not have become much controversial, even without the exhibits. Accepting applicant's claim of user is definitely going to create difficulties in the proceedings of other application being opposed.
7. ' I, therefore, order the application not to proceed to advertisement and registration since it does not amply fulfil requirement under Rule 14 of the Revised Trade Marks Rules, 1963."
8. ' It appears that according to the respondent, the statement made in the affidavit is not sufficient to accept the claim of the user of the mark on account of counter-statement in opposition No,34 of 1979 in respect of appellant's Application No,62733. The language of Rule 14 of the Revised Trade Marks Rules, 1963 which requires filing of statement of user, is as follows: "14. Statement of user in application.--An application to register a trade mark shall contain a statement of the period during which, and the person by whom, it has been used in respect of the goods mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used."
9. A plain reading of the above Rule indicates that filing of statement of user in the form of affidavit, with supporting documents, is sufficient compliance with such Rule and the claim to registration as Associate Trade Mark under section 12 of the Trade Marks Act, 1940 cannot be refused on the ground of opposition in respect of another application for registration. The appellant's Application No,71061 was for registration of associated trade mark in terms of section 12 of the Trade Marks Act, 1940 and the earlier application for registration of the label mark 'Dawood Fabrics' under Application No,62733 is still pending. In view of the pendency of the said application, the respondent, according to the petitioner's counsel, was obliged in law to allow the Application No,71061 to proceed for advertisement and to hear it together with the earlier Application No,62733.
10. In support of his above submission the learned counsel relied on the judgment in the case of Basra Soap Factory v. Punjab Soap Factory and another reported in PLD 1973 Kar.
279. In the above case, during pendency of application for registration submitted by the appellant therein, against which opposition had been filed by the respondent therein, the Registrar of Trade Marks had proceeded to register the trade mark of the respondent and had subsequently rejected application of the appellant on the ground of prior registration of the Trade Mark of the respondent.
11. Such procedure, adopted by the Trade Mark Registry, was declared to be irregular and the matter was remanded for hearing the adverse claims for registration together. The learned counsel for the appellant also drew my attention to the provisions of section 12 of the Trade Marks Act, 1940 to urge that the appellant's Application No,71061 being for the Associated Trade Mark, was not subject to the limitations provided by sections 6 and 8 of the Trade Marks Act. In support of his contention, the learned counsel referred to a judgment in the case of M/s. Colgate-Palmolive (Pakistan) Ltd. v.
12. Deputy Registrar of Trade Marks reported in PLD 1992 Kar. 115 wherein, after quoting the provisions contained in section 12 of the Trade Marks Act, 1940, it was held as follows: "It will thus be seen that a proprietor of a registered mark may have same mark registered for his other goods of the same description or having close resemblance to the goods for which it is already registered or such a mark is likely to deceive or cause confusion if used by some other person. Section 12 of Trade Marks Act, 1940, as pointed out hereinabove, makes a special provision dealing with such cases as are mentioned above and registration of a mark as associated mark under that section will not be subject to the provisions of section 6 of the Trade Marks Act, 1940."
13. ' In my view the dictum laid down in the case of M/s. Colgate Palmolive (Pakistan) Ltd. Is not attracted to the present case since such case had arisen out of refusal of the application for registration of the trade mark being combination of two English words merely describing the goods and therefore, was impermissible under section 6(1)(d) of the Trade Marks Act, 1940. The applicants in the reported case were holders of a registered trade mark and had applied for registration of the mark in question under section 12 of the Trade Marks Act, 1940. The learned Judge found that section 12 of the Trade Marks Act, 1940 makes a special provision for registration of certain marks as Associated Trade Mark. In the present case, however, the appellant's claim seems to have been declined for non-compliance with the requirements of Rule 14 of the Revised Trade Marks Rules, 1963 which, in my view, would be applicable to application for registration in any category. In the present case respondent has refused to accept the statement of user made in the form of affidavit alongwith exhibits, in terms of Rule 14 of the Revised Trade Marks Rules, 1963. The finding of the respondent that the Application No,71061 cannot proceed to advertisement and registration for the reason that it did not fulfil requirements under the said rule, does not point out the defects or lacuna in the statement submitted by the appellant nor has any reason been offered to justify, the finding. The respondent, while exercising authority under sections 5, 6 and 12 discharges quasi- judicial function and it was obligatory upon him to state reasons. This indeed, tentamounts to refusal on the part of the respondent to exercise power vested in it under the law. Such principle, by now, is firmly established. The requirement to state reasons, is particularly imminent when an order, like the present case, is amenable to scrutiny in appeal and revision so that the higher forum is in a position to know and appreciate the same. If the reasons or grounds are not given, then the remedy of challenging that order ex facie, will become futile. I am supported in my said view by judgments in the cases of Syed Ali Abid Zaidi and others v. Deputy Settlement and Rehabilitation Commissioner, Gujranwala and others PLD 1967 Lah. 836, Yaseen v. Hussian Bakhsh and 4 others 1985 CLC 1889 and Federation of Pakistan and others v. M/s. Charsadda Sugar Mills Ltd. 1978 SCMR 428.
14. ' Besides, the respondent has also taken into consideration the pendency of Opposition No,34 of 1979 in respect of appellant's earlier Application No,62733 and such factor has apparently influenced the impugned decision. The above consideration, in my view, is alien to the scheme visualised by section 12 of the Trade Marks Act, 1940. The above provision envisages consideration of application for Associate Trade. Mark alongwith the mark which is subject of an application for registration. The pendency of an application and/or opposition thereto, rather requires consideration of the two applications viz. The one for registration of principal mark and the other for registration of Associate Mark, together. The respondent has thus erred in refusing the Application No,71061 without deciding the earlier Application No,62733. Indeed.: the impugned decision can be taken to have decided fate of the appellant's earlier Application No,62733. In the present case, in order to ward off any conflict of decision, the proper course, as rightly pointed out by the learned counsel for the petitioner was, to direct consideration of the appellant's Application No,71061 alongwith the earlier application of the appellant No,62733 and the statement in Opposition No,34 of 1979.
15. ' As a result, the impugned decision dated 24-8-1990 passed by the Assistant Registrar of Trade Marks, Karachi in the matter of Application No,71061 is set aside and the matter is remanded back to the respondent to consider the same for registration as associated trade mark under section 12 of the Trade Marks Act, 1940 subject to the law and Rules relevant to such class. The appeal is disposed of in the above terms with no order as to costs.