This is a petition under section 46 of the Trade Marks Act, 1940 (hereinafter referred to as the Act, 1940) seeking rectification of registered trade mark 'Impalabearing No,67658 registered in class 16 on 27-6-1978.
2. The facts of the petition are that the petitioner is in the trade of manufacturing and marketing pencils and ball point pens since 1955; that the petitioner is carrying on his trade and business under various trade marks affixed not only to the pencils and ball point pens but also on the cartons and other boxes through which these items are sold. It is claimed by the petitioner that they are using the following mark on their products the details of which have been disclosed in para.6 of the petition which reads as follows:-- Trade Mark Registration No,Date of RegistrationClassTMJ No, Date Page Deer 22640 25 October1954 16 81 1-10-1957 page 418 Stag 28764 10 March1958 16 114 1-7-1960 page 222 Dear Label with sailing boat34116 28 February 196116 152 1-9-1963 page 45 Gazelle 61033 7 August 1974 16 293 1-6-1975 page 825 Artograph Deer Super (Label)68696 2 January 1979 16 335 1-8-1980 page 155 Deer Hi- Flow (Label) 69908 12 July 1979 16 366 1-7-1981 page 758 Dear (Label) 69918 17 July 1979 16 365 1-6-1981 page 688 Hi-Flow 71418 20 March 16 370 1980 1-11-1181 page 957 Deer (Label) 72150 12 July 16 372 1980 1-1-1982 page 1059 Stag (Label) 74302 24 May 16 376 1981 1-5-1982 page 1393 Bambi (Word and device)74557 25 June 16 378 1981 1-7-1982 page 75 Word and 64314 24 May 16 375 Device of STAG 1981 1-4- 1982 page 1294 FAWN (Word 79191 13 March 16 398 and Device) 1983 1-3- 1984 page 486"
3. Grievance of the petitioner is that the respondent had obtained Trade Mark 'Impalain class 16 which is a ruminant and falls in the deer family which also includes Deer, Antelope, Bambi, Okapi, Gazelle, Stag and Fawn and that such registration is causing deception and confusion amongst the buyers of pencils and ball point pens who are mainly school-going children. The final order granting such registration in favour of respondent was passed by the Registrar Trade Marks on 1st September, 1979 while the instant application was filed on 11-12-1986. The reason mentioned in the petition is that the petitioner was not aware of such grant. It is prayed by the petitioner that the mark 'Impalaor Impallabe removed from the Register and the cost be awarded for the present proceedings.
4. The respondent has filed its written statement denying the claim of the petitioner. It is denied that Impala is from the same family and will cause any deception or confusion amongst the buyers. It is further claimed by the respondent that they have incurred huge amount of money on sales promotion of the said product and that it was in the knowledge of the petitioner who slept over its rights for more than seven years and thereafter has filed this petition for the purpose of harassing the respondent. On 18-11-1996, during course of hearing of this petition, following four issues were framed for determination. It was further observed that production of evidence is not necessary and the matter is to be decided on the documents filed by the parties. Following are the four issues framed by this Court:-- "(1) Whether the petition is maintainable under section 46 of the Trade Marks Act?
(2) Whether the petitioner was entitled to a notice before the registration of the trade mark by the Registrar, Trade Marks?
(3) What is the effect of the present application being filed after seven years of the registration of the trade mark impugned in this application?
(4) Whether the respondent obtained the registration of the Trade Mark Impala for manufacture of pencils, ball point pens, pens in contravention of sections 8 and 10 of the Trade Marks Act?"
5. I have heard Mr. Khawaja Mansoor, Advocate for the petitioner and Mr. Habibur Rehman, Advocate for the respondent. My findings to the above issues are as follows:-- Issue No,1:
6. It was argued by Mr. Habibur Rehman that the above petition is not maintainable on the ground, inter alia, that the petitioner should have first approached the Registrar, Trade Marks; that it has not been filed in the prescribed manner and that the petitioner is not the aggrieved person. Before proceeding further, it would be advantageous to reproduce section 46 of the Trade Marks Act, 1940 which reads as follows:-- "46. Power to cancel or vary registration and to rectify the register.--(1) On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention of, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or buy any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The. Tribunal may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register.
(4) A High Court or the Registrar, of its or his own motion, may after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in subsection (1) or subsection (2).
(5) Any order of the Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly . "
7. The first requirement for filing a petition for rectification and correction of the trade mark register is that it should be in the prescribed manner to be filed by an aggrieved person. Such petition could be filed either before a High Court or to the Registrar, Trade Marks. It was argued by Mr. Habibur Rehman that propriety demands that such petition should have been filed before the Registrar first and that the petitioner cannot bypass the statutory provision. Reliance is placed on the cases Wealth Tax Officer and another v. Shaukat Afzal and 4 others 1993 SCMR 1810 and Syed Ali Azhar Naqvi v. The Government of Pakistan through Secretary, Ministry of Finance and 3 others PLD 1994 Kar.
67. There is no cavil to the proposition of law that parties are required to comply with statutory provisions which can neither be abandoned nor bypassed. But, in the instant case, the word 'orused in subsection (1) of section 46 in between 'High Courtand 'Registrarshows that it is the choice of the party to invoke either of the jurisdictions. It is a concurrent jurisdiction of both the forums. Even in subsection (2) of section 46 the word 'orhas been used in-between 'High Courtand 'Registrar'. This is further supported by subsection (4). However, once the forum of Registrar as provided in section 46 is availed, it will not be available for the High Court and any remedy left would be to file appeal under section 76 of the Act 1940. In such circumstances, it cannot be said that the instant petition should have been filed first before the Registrar, Trade Marks. The word 'oris generally used to link alternatives. In a Full Bench decision of this Court C.E. Gibbon and others v.
Pakistan and others PLD 1957 (W.P.) Karachi 956 at 972 it was observed by Wahiduddin, J. (as his Lordship then was), that 'preponderance of authority states that 'orprima facie has only an alternative significance". In case, any further reference is needed, see Salehon and others v. The State PLD 1969 SC 267; Ebrahim Brothers Ltd. v. Wealth Tax Officer, Circle III, Karachi and another PLD 1985 Kar. 407 and Abdul Razzak v. Karachi Building Control Authority and others PLD 1994 SC 512 at 525 where a Full Bench of Hon'ble Supreme Court held, inter alia, as follows:-- "15. From the above-quoted passages from the above celebrated treatises on the Interpretation of Statutes, it is evident that the words 'andand 'orare interchangeable. However, in ordinary usage the word 'andis conjunctive and the word 'oris disjunctive. But to implement the legislative intent, it may become imperative to read 'andin place of conjunction 'orand vice versa. This cannot be done if the meaning of the relevant provision of the statute is clear or if the above construction will operate to change the meaning of the law."
8. It was then argued by Mr. Habibur Rehman that no appeal was filed by the petitioner against the decision of Registrar dated 1-9-1979 as provided in section 76 of the Act 1940 read with Rule 84 of the Trade Marks Rules, 1963. It was submitted by Mr. Khawaja Mansoor that since no notice was issued to the petitioner by the Registrar, it was not aware of the order passed by the Registrar, granting mark 'Impalain favour of the respondent. I have examined the provisions of sections 46 and 76 of the Act 1940. Provision of appeal would lie where an order is passed by the Registrar under any provision of Act or the Rules, which may include any decision made by the Registrar in respect of granting mark or refusing to grant a trade mark or where a petition for rectification is granted or disallowed by the Registrar, Trade Marks. The provision of section 46 is independent of section 76. The earlier provision deals with the matter of rectification of a registered mark. In case, a petitioner invokes the jurisdiction of High Court under section 46 of the Act 1940 for rectification, then the remedy of appeal under section 76 will not be available to him. But if the Registrar is approached by an aggrieved person, then in case if a decision is not acceptable to him, he would be entitled to invoke section 76 by filing appeal before the High Court.
9. The question as to who is an aggrieved person to maintain a petition for rectification of a trade mark was earlier considered by the House of Lords in England in the famous case "In the matter of Powell's Trade Mark" ((1894) 11 R P C 4 ) where it was held that the applicant is in the same trade as the person who has registered the trade mark and whenever the trade mark, if remaining on the Register, would, or might limit the legal rights of such applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, such applicant appears to have a 'locus standito be heard as a person aggrieved. More or less, the same view was held in the cases, Re: Apollinasies Co.'s Trade Marks (1891) 2 Ch. D. 186; Re: Bovril's Trade Mark (1896) 13 RPC 382); Re: Talbot's Trade Mark (1894) 11 RPC 77; B. Monappa v. R.S. Ramappa and another AIR 1956 Madras 184; Nekumar K. Porwal v. M/s. Mohanlal Hargovindas AIR 1963 Bombay 246 and Messrs Jugmug Electric & Radio Co. v.
Messrs Telerad Pvt. Ltd., Bombay and another AIR 1977 Delhi 152 at 155. In the last-cited case, it was held by the Delhi High Court that "Moreover, the person aggrieved is the person who is actually aggrieved by the registration of the trade mark and it is the respondents who are suffering commercially on account of adoption of the impugned trade mark by the appellant. They have, therefore, every locus standi to complain of the same, and file the petition giving rise to this appeal..." All these cases ruled that the term "person aggrieved" should be liberally interpreted and that burden upon a petitioner is not so onerous to prove himself to be aggrieved but if he, prima facie, shows that there exists similarity in the trade mark registered and his trademark and that there is every likelihood of deception or confusion, it will suffice to give him a right to maintaina petition of present nature. Yet in another case, a Division Bench of Bombay High Court in the case Ciba Ltd. Basle Switzerland v. M. Ramalingam and S. Subramaniam Trading in the name of South Indian Manufacturing Co., Madura and another (AIR 1958 Bombay 56) held that a person whose product is likely to be sold as the product of another party is an aggrieved person and can bring a petition under section 46 of the Indian Trade Marks Act, 1940. It was further held that the phrase 'any person aggrievedis to be liberally construed and that all such persons who are interested in having any mark removed should be treated as aggrieved persons. Mr. Khwaja Mansoor has also referred to the book "Kerly's Law of Trade Marks and Trade Names" by T.A. Blanco White and Robin Jacob (12th Edition 1986, Sweet & Maxwell, London) where at para. 11.07, page 179 it is observed that all trade rivals over whom an advantage was gained by a trader of a registered trade mark to which he was not entitled and all such persons who would be substantially damaged, if the mark remained on the register, are the aggrieved persons. In the present case, the petitioner, in my considered view, is an aggrieved person. I am fortified in my view by a decision of a former Chief Justice of this Court, Tufail Ali A. Rehman, C.J. (as he then was) in the case of Chiswick Products Ltd. v. The Registrar of Trade Marks, Karachi (PLD 1975 Karachi 421) where it was held as follows:-- "5. The first objection that was taken before the Registrar was that the application before him was not maintainable inasmuch as the respondents were not 'a person aggrievedwithin the meaning of section 37. Clearly, however, on the facts of this case the respondents were substantially interested in having the mark removed from the register inasmuch as they themselves were using it. I adopt the observation of Bowen, L.J. In In re: Powell Tm (10 RPC 195) 'persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained'. The question whether such a person has on merits a good case is entirely besides the matter; to require that to be established would be to put the cart before the horse. The maintainability of an action cannot depend on the merit of the claim but upon the standing of the party who makes the claim inasmuch as it must-be asked whether there is a real interest which he is attempting to enforce or defend. In my view, therefore, the respondents were a person aggrieved; in any case the objection was not pressed before me."
10. Since the petitioner is claiming deception and confusion on the part of respondent by getting mark 'Impalaregistered and since it has been alleged that the petitioner has suffered irreparable loss and injury and loss of business due to such act of the respondent it could be termed to be an aggrieved person in order to maintain a petition under section 46 of the Act 1940 for rectification of a mark. In so far as the point that the application must be in a 'prescribed manner', it was not shown that what is the prescribed manner. There is no prescribed petition provided for filing such applications in so far as the High Court Rules are concerned. However, there may be some forms to file such application in a prescribed manner before the Registrar. Therefore, it is observed that when a petitioner chooses to file a petition for rectification before a High Court, he need not file the same in the prescribed manner. But if it is before the Registrar, it should be strictly in consonance with the provisions of the Act 1940 and the Rules 1963. 1 would like to observe that if a petition under section 46 is filed in the High Court, it should be drawn and framed in a manner as provided in the C.P.C. And in Sindh Chief Court Rules. In these circumstances, I am inclined to hold that instant petition is maintainable.
Issues Nos.2 and 4
11. Both these issues are inter-connected as for their determination, provisions of sections 8, 10 and 21 of the Act 1940 require consideration. Again, the ground of similarity and deception was raised by the petitioner who claimed that at the time of considering application of the respondent for registration of mark 'Impalathey were entitled to notice. It may be advantageous if provisions of sections 8 and 10 of the Act 1940 are reproduced:-- "8. Prohibition of registration of certain matters.--No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would--
(a) by reason of its being likely to deceive or to cause confusion or otherwise be disentitied to protection in a Court of justice; or
(b) be likely to hurt the religious susceptibilities of any class of the citizens of Pakistan; or
(c) be contrary to any law for the time being in force or to morality.
9.
10. Prohibition of registration of identical or similar trade mark.--(1) 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.
2) In case of honest concurrent use 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.
(3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods. The Registrar may refuse to register any of them until their rights have been determined by a competent Court."
12. In view of section 8(a) of the Act, 1940, it was argued by Mr. Khawaja Mansoor that since the mark 'Impalaresembles and is identical to the marks Deer. Gazelle. Stag and Bambi owned by the petitioner they were entitled to a notice. Reliance is placed on the cases Muhammad Saeed Jehangir v. Mrs. Sanjida Bano and another PLD 1982 Karachi 263, Abdul Qadir v. Muhammad Azim and another 1980 CLC 612 and Basra Soap Factory v. Punjab Soap Factory and another PLD 1973 Karachi 279. On the other hand Mr. Habibur Rehman argued that vast publicity was given at the time of getting registration of mark 'Impalaand the same was published in Trade Mark Journal. He has further argued that rule 23 of the Trade Mark Rules, 1963 is not mandatory. He has also placed reliance on the case of Standard Finis Oil Company and others v. National Detergents Ltd. And 2 others 1984 CLC 781 and Abdul Qadir (supra).
13. The question of issuing notice to a party who may be finally aggrieved by an order of granting registration of any trade mark arises from Rule 23 of the Rules 1963 which provides that after receiving an application for the registration of a trade mark, the Registrar shall cause a search to be made amongst the registered marks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of same goods or description of goods, any mark identical to the mark sought to be registered or so nearly resembling it so as to render it likely to deceive or to cause confusion. It is further provided that the Registrar may renew the search at any time before the acceptance of the application but he shall not be bound to do so. It means that the Registrar is competent to make one attempt for search to ascertain existence of a similar mark and renewal of such search is left to his discretion. In the case of Muhammad Saeed Jehangir (supra), the matter pending before this Court was a petition under section 46 of the Act, 1940 for cancellation of mark 'Qadriwhich was registered in class 3 on the ground that it looked like the word 'Dadri which was also a registered mark. The rule laid down by this Court in the case of Basra Soap Factory (supra) was reiterated that "It is implicit in this rule that a notice shall be sent to all the owners of the registered trade marks or applicants whose applications are pending for registration with whom the proposed mark resembles or is likely to cause deception". Rule 23 was also considered by another Judge of this Court in the case of Abdul Qadir (supra) where is was held that it is not a mandatory requirement of law for the Registrar to issue notice to such persons whose applications are received subsequent to the application in question and that the provisions regarding search and notice relate only to persons whose mark already existed on register or whose application was pending at the time of receipt of separate application for a similar trade mark. In the case of Standard Finis Oil Company (supra), it was held that the publication of notice in Trade Mark Journal is a statutory requirement as provided in section 15 of the Act, 1940 and that reopening of such proceedings at the instance of a party who was not a party to earlier proceedings could not be permitted as it would defeat the real object of securing registration of a trade mark. But in the case of Haji Abdul Rahim v. Abdul Wahid PLD 1970 Karachi 537 at 548, it was observed by a learned Single Judge of this Court, that "there is no obligation cast on people to see the Trade Marks Journal and failure to do so does not lead to any inference that the person aggrieved had nonetheless notice of the registration." Reliance was placed on the cases The Great Tower Street Tea Co. v. Smith (1889) 6 RPC 165 and the United Chemists Association Ltd. (1923) 40 RPC 219 at 223. There are several questions of facts involved in this case which could only be proved by production of evidence but none of the party objected on the order dated 18-11-1996 whereby it was recorded by consent that there was no need to produce any evidence and that the matter be decided on the documents. The question whether any application was pending at the time when the petitioner applied to obtain 'Impalais a question of fact. However, in para. 6 of the petition it is claimed by the petitioner that mark "Deer" was registered in class 16 on 20th October, 1954; mark "STAG" was registered in class 16 on 10th March, 1958; mark "Gazelle" was registered on 7-8-1974 and other marks of "Deer" on different labels were registered prior to July, 1979 while the registration of mark "Impala" was officially granted on 7-9-1979.
14. How a deception- or a confusion is created and what is similarity in respect of two goods registered in the same class or category was considered by a Full Bench of Hon'ble Supreme Court in the cases of Seven-Up Company v. Kohinoor Thread Ball Factory and 3 others PLD 1990 SC 313.
On the same point, three cases of this Court were referred, namely, Kaiser Jeep Corporation v.
Saber Saleem Textile Mills Ltd. PLD 1969 Karachi 376, Sony Kabushtki Kaisha v. Registrar of Trade Marks, Karachi and another PLD 1978 Karachi 161 and Montgomery Flour and General Mills Ltd. v.
Registrar, Trade Marks, Karachi PLD 1973 Karachi 567 before the Supreme Court, whereafter it was held, inter alia, by the Hon'ble Supreme Court as follows:-- "Our statute law recognises and also protects trade mark in relation to goods, and not independently of the goods. Therefore, one is justified in claiming protection for a particular trade mark only if it is related to a particular good or class or category of goods. The generality of clause
(a) of section 8 of the Act cannot be given the meaning and the content so wide as to embrace all registered and widely used trade marks so as to exclude their adoption and use for any and every class or category of goods, howsoever different and dissimilar. The generality advocated is limited by clause (a) of section 8 of the Act itself. The test provided therein is not the identity of the trade mark or of the goods but likelihood of deception or confusion such as to entitle protection in a Court of law. The test of the likelihood of deception or confusion is dependent on the nature of the goods marketing methods, consumer awareness etc., all variables, differing from place to place, country to country and commodity to commodity. Even in the Caltex's case where the goods were totally different the Court proceeded to examine the first requirement and found it amply satisfied by holding that 'The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man,and finally holding that 'The opponents are a large company known by many as having large sources, and therefore, capable of starting any new industry or trade'. It has to be noted further that the likelihood of deception or confusion is tested not by the reaction of the immediate vendee but by those of the ultimate consumer."
15. Mr. Khawaja Mansoor, Advocate for the petitioner has referred to the case of Crescent Pencils Limited v. Indus Pencil Industries Limited and another (1989 CLC 2005) where the appellant had applied for registration of mark 'antelopein class 16 for the purpose of using for ball point pen and pencils. Before registration of the trade mark, the examining officer reported that the words 'Stagand 'Deerhave been registered in favour of the respondents in that appeal (petitioner herein).
Accordingly, registration was not granted. Thereafter an appeal was filed before this Court. The characteristics and appearance of antelope, deer and stag were considered whereafter it was held by this Court that these marks illustrated the likely confusion and deception to similarity in essential features. Following are the relevant observations of the case Crescent Pencils Ltd.(ibid):-- ...If the mark sought to be registered is likely to deceive the public due to its similarity with a registered trade mark, then the Registrar would be entitled to reject such application. It has, therefore, to be considered whether mark 'Antelopeis similar to 'Deerand 'Stagand is likely to cause confusion and deception. 'Antelope', 'Deer and 'Stagare names of animals of the same species and resemble to each other in essential characteristics and appearance... ..."Stag is male of a deer specially the red deer." There can be no dispute that the meaning of these words and their appearance are common and similar. If such mark and device appears on pen, pencil or ball-point pen or similar goods unwary public and purchaser majority of whom may be school and college-going boys and girls can hardly distinguish it from each other. A look at the marks will illustrate the likely confusion and deception due to similarity in essential features...."
16. Deer, Stag, Gazelle, Antelope and Bambi are all members of the mammalia commonly known as mammal. Now, respondent had obtained the mark 'Impalawhile the petitioners were/are admittedly owners and are in use of the marks 'Deer', 'Stag', 'Gazelle', 'Bambiand 'Fawnsince long.
Impala has been defined to be a kind of Antelope. Gazelle is also one of the species of Antelope. It would be relevant to quote Collier's Encyclopaedia (Volume 2, pages ,276 to 284 Macmillan Educational Company, New York, Edition 1991) where different kinds of Antelopes have been shown, namely, Fossil Antelope, Twisted-Horned Ox Antelope, Marsh Antelope, Straight-Horned Antelope, Horse Antelope and Gazelle Antelope. Impala is the largest of Gazells Antelope. Following quotations would be relevant to determine similarity and confusion in the two marks under question:-- "ANTELOPE, the name for a large group of cud-chewing ungulates (hoofed mammals) in the family Bovidae that range in size from the royal antelope, only 10 inches (25 cm) high, to the oxlike giant eland that may weigh over 1,000 pounds (454 kg). They are handsome animals and are known for their speed and grace. Early zoologists recognized only one species, the Indian antelope, antilope cervicapra, but today about 100 species are known. ....Most antelope are sociable and live in herds consisting of a few individuals up to 10,000; however, a few are shy and solitary. Antelope frequent dense forests, wide open plains, deserts, marshes, swa mps, and rocky mountain slopes. The largest variety and greatest abundance of antelope are found in Africa, but they are also widespread over Southern Asia. There are not true antelope in the New World."
GAZELLE ANTELOPE "The gazelle antelope are a tribe of slender, beautifully formed antelope, the Antilopini, that are adapted for speed and a life on the hot, treeless wilderness. They inhabit the open desert regions of Africa and Asia, although some live in open park country. The gazelle antelope are rather small and include the black-buck, impala, dibatag, gerenuk, many species of typical gazelles, goat gazelle, and springbuck."
"Impala: The impala, Aepyceros melampus, is the largest of the gazelle antelope. A graceful animal, golden-yellow in colour, it stands about 3 feet (1 metre) high at the shoulder and may weigh up to 160 pounds (72.5 kg). The male has long, lyrate horns that measure up to 28 inches (71 cm) in length; the females are hornless Impala, chiefly grazing antelope, are rarely found far from water. Day and night, they feed and rest alternately a few hours at a stretch. They are not easily frightened animals and a herd of fifty or more can be approached fairly close before the animals bound off...."
"Gazelle: The gazelle, gazella, is a small, slender, graceful, fawn-coloured antelope with black and white facial markings and a dark, flank stripe. Its horns, usually present in both sexes, are spread, lyre-shaped, and heavily ridged at the base. Its height averages from about 24 to 36 inches (60 to 91 cm) at the shoulder, and it weighs about 40 pounds (18 kg). The gazelle is sociable and associates in herds consisting of up to 40 or 50 individuals. It is a fast runner, and some species have been credited with a speed of 60 miles (97 km) per hour. The gazelle is found over most of the plains, grasslands, open park country, and desert regions of North Africa and South Asia.
The name "gazellla" is from the Arabic word "ghazal", meaning wild goat. There are at least 60 species of gazelles, with numerous local names. Among them are: the Atlas gazelle, found in Tunisia and Morocco; the dorcas gazelle, ranging from Sudan to Syria, Jordan and Israel; the rhim, native to the sand dunes of the Libyan and Sahara deserts; the Korin, found in equatorial Africa; Thompson's gazelle and Grant's gazelle, well known and quite common in Zaire, Tanzania, Kenya, Ethopia; and Robert's gazelle, restricted to the region around Lake Victoria...'
The family of Deer is also very large and are widely spread in Southern Asia, North America, Europe and South America. As reported in Collier's Encyclopaedia (volume 8, page 19), there are over 30 different kinds of deers, like, Red Deer, Barasingha, Brocket, Chital, Hangul, Barking Deer, Musk Deer, Pampas Deer, Spotted Deer, Sambar Deer and so many others. Barasingha is also known as the Indian Swamp Deer. The pictures given in these two volumes of different kinds of deers, antelopes, gazelles and impalas when printed in a small size on pencils and ball point pens, the impression of getting confused and deceived cannot be ignored altogether. Following is the characteristic of Deer as defined in Collier's Encyclopaedia (ibid):-- "DEER, a cud-chewing, even-toed ungulate (hoofed mammal) in the order Artiodactyla and family Cervidae. Deer are separable into two groups: the typical deer of the Old World, such as the red deer and its related forms; and the American white-tailed deer and its allied species.... ...The outstanding characteristic of the deer is the presence of solid antlers, or horns, that are shed, usually in mid-winter, and regrown during the following spring and summer... ..Deer range from the size of a small dog to that of a large ox. They are, in general, browsing animals and feed largely on the twigs, leaves, and sprouts of trees or bushes. They eat some grasses but do not graze...."
18. In the aforesaid circumstances, I am of the considered view that since the mark 'Impalais likely to cause deception and confusion in reference to the petitioner's mark, the petitioner was entitled to a notice. It was done previously by the office of Registrar in the case of Crescent Pencils Ltd.
(supra). At the same time, I am also of the considered view that the mark 'Impalawas registered in violation of section 8(a) of the Act 1940.
Issue No,3
19. It was argued by Mr. Habibur Rehman, learned counsel for the respondent that the petitioner has acquiesced in grant of the mark 'Impalato the respondent as the instant petition was filed after a lapse of more than seven years. It was vehemently argued that during this whole period, the petitioner did not obtain any prohibitory injunction from this Court and that the respondents are using the mark 'Impalaon a large scale. The case of the petitioner is that they came to know about this mark in the year 1986 and, as such, filed the instant application. It was denied by the petitioner that the respondent is using the mark 'Impalaon a large scale. Mr. Habibur Rehman has referred to a Division Bench case of Madras High Court in Messrs Devidoss & Co. Alathur Abboyee Chetty & Co.
(AIR 1941 Madras 31). In that case, a suit was filed on the original side of Madras High Court for declaration and perpetual injunction which was dismissed and an appeal was also filed. The mark involved in that suit, for which the plaintiff/appellant was claiming the exclusive right of user in respect of a figure of a baby sitting on four pieces of a cloth and holding a rattal in the right hand.
The doctrine of acquiescence was considered as it was pleaded by the respondent/defendant that they were using the said mark since long. Reference was made to the cases Wiilmott v. Barber ((1880) 15 Ch. D 96), Rowland v. Michell ((1896) 13 RPC 464), Codes v. Addis & Son (1923) 40 RPC 133) and McCAW Stevenson & On Ltd. v. Lee Bros. ((1906) 23 R P C 1) whereafter it was held as follows:-- "Delay simpliciter may be no defence to a suit for infringement of a trade mark, but the decisions to which I have referred to clearly indicate that where a trader allows a rival trader to expend money over a considerable period in the building up of a business with the aid of a mark similar to his own he will not be allowed to stop his rival's business. If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood. A village may develop into a large town as the result of the building up of a business and most of the inhabitants may be dependent on the business. No hard and fast rule can be laid down for deciding when a person has, as the result of inaction, lost the right of stopping another using his mark. As pointed out in (1897) 14 R P C 37 (Rowland v. Michel) at p.43, each case must depend on its own circumstances, but obviously a person cannot be allowed to stand by indefinitely without suffering the consequence."
20. In the case of CIBA Ltd. Basle, Switzerland (supra), the question of delay was considered by a Division Bench of Bombay High Court in a petition filed under section 46 of the Indian Trade Marks Act for rectification of mark CIBOL where one of the contention was that the appellants have filed application under section 46 after considerable delay and that no relief could be granted to them.
It was observed that granting relief under section 46 is discretionary and that the Legislature has not laid down any period of limitation for making an application under section 46. It was further held, "Therefore, the question of delay must be approached from this point of view whether the applicant stood by and therefore caused substantial injury to the respondent and the injury was so substantial that that injury would outweigh the interest of public which the Court must consider where a trade mark is likely to deceive." In the case of B. Monappa (AIR 1956 Madras 184), the question of delay was also considered and it was held that it assumes importance only if it puts the opposite-party to serious unfair disadvantage by the loss of evidence or the like. It was further held that in the matters concerning rectification of the register public interest is of paramount importance and the merits and demerits of the application for rectification are of little importance.
In the case of B.M. Kharwar v. A.A.M. Motiwala Ltd. (AIR 1939 Rangoon 98 at 107), the question of acquiescence was considered in the following manner:- "As regards acquiescence, I would agree with the trial Court that the defendants are not entitled to set up such a defence. No doubt had they been so entitled, and had they proved that the plaintiffs stood by knowingly and let them build up an important trade until it had become necessary to crush it, then the plaintiffs would have been stopped by their acquiescence. But in the present case there is no reason whatever, in my opinion, to believe that the plaintiffs knew of the defendantstrade in the nine Mongoose mark at all. There could therefore be no acquiescence: (1878) 10 Ch. D 247 (Rodgers v. Rodgers. Acquiescence is one aspect of delay. Delay will in itself, quite apart from acquiescence, be a bar to a suit, but only if such delay has caused a change in the subject-matter of the action, or brought about a state of things where justice cannot be done: (1878) 3 A C 1218 (Erlanger v. New Sombrere Phosphate Co.). Such is not the case here."
21. Justice Aftab Hussain (as his lordship then was), has also considered matter of acquiescence in the case of S. Muhammad Din & Sons v. Sh. Nabi Bakhsh & Sons (Regd.) etc. (1987 CLC 759) where, after making reference to the case Tekronix Incorporated v. M. Abdul Mannan (PLD 1973 Karachi 14), it was observed that the question of delay is immaterial for issuance of temporary injunction where similar mark is.Used by the respondent. It was further observed that the reason for using a similar mark is motivated with the intention of fraud. This view was upheld by a Full Bench of Hon'ble Supreme Court as the civil petition for special leave to appeal bearing No,263/1973 was dismissed which fact is apparent from the Editor's note mentioned below the title of the case.
22. An act of acquiescence is a conduct recognizing the existence of a transaction, and intended, in some extent at least, to carry the transaction, or permit it to be carried, into effect. (See Black's Law Dictionary, page 24, 6th Edition, 1990). It further defines acquiescence as "Submission to an act of which one had knowledge and silent appearance of consent. Failure to make any objection". The ground of delay is raised and set up by a respondent or by a defendant, as the case may be, where a specific time has been provided to file some legal proceedings as provided in the Schedule to the Limitation Act, 1908. Since the legislators have not provided any framework for time limitation to file an application under section 46, therefore, the question of delay is not relevant. However, the ground of waiver or acquiescence is raised and set up by a respondent in order to show that the petitioner is estopped from claiming any right or interest against the respondent as he has accepted the stand duly taken by the respondent. Thus, in my considered view, the matter of waiver and acquiescence is a question of fact and should not be decided without resorting to the process of recording evidence which is absent in this case. It is very difficult to decide this question merely on the basis of documents which have not been admitted or denied by the parties. It was held by Madras High Court in the case of T.G. Balaji Chetti v. Hindustan Liver Ltd. (AIR 1967 Madras 148), in which case the appellant had failed to furnish any evidence on the factual question of user.
In such circumstances, it was observed, "that the evidence must be evidence of user of trade mark as a whole and documentary evidence must be furnished to prove the same when challenged. In the instant case, there is no evidence to the extent that the petitioner waived its right or acquiesced in the acts of the respondents. This being the factual and legal position, I answer this issue in negative and against the respondent.
23. As a result of above discussion, I am inclined to hold that this petition is maintainable; that the petitioner who is the owner of the similar trade mark as of the respondent and who are both in similar trade and since the petitioner's trade mark was registered earlier to the respondent's mark, the petitioner was entitled for a notice; that there is no delay in filing the instant application and, therefore, it is not fatal and that the respondent obtained the registration of trade mark 'Impalafor the use of it on the ball point pens and pencils which is in contravention of section 8(1) and section 10(1) of the Trade Marks Act, 1940. I am also of the considered view that section 24 of the Act, 1940 will not lend any help to the respondent as no finality is attached to a registered trade mark if it is obtained by fraud or if it offends against section 8 of the Act. The net result of such findings is that the petition under section 46 is granted with no order as to cost and the trade mark 'Impalaor 'Impallais declared cancelled and removed from the Register of the Registrar, Trade Marks.
However, this order will come into operation after expiry of the period prescribed for filing of the appeal against such order.