This order will dispose of J. M. Nos. 30 and 31 of 1975 as both petitions are between the same parties and common questions arise for decision !Hereof.
2. The facts necessary for the decision of this case are mostly undisputed and may be briefly stated. The Seven-Up Company incorporated in the State of Missouri In the United States of America (hereinafter referred to as respondents), are the registered Proprietors of Trade Mark '7- Up' in class 32 of the Fourth Schedule to the Revised Trade Mark Rules, 1963, framed by the Government of Pakistan, since 1948 in respect of 'carbonated, non. Alcoholic, non-cereal, maltless, beverages sold as soft drinks and preparations for making such beverages'. The goods enumerated in class 32 of the Fourth Schedule referred to above are as under t 'Beer, ale and porter; mineral and aerated water and other non-alcoholic drinks ; syrups and other preparations for making beverages.'
Trade Mark 'Seven-Up' (word) bearing Registration No. 1583 was registered on 25th September 1948, and Trade Mark '7-Up' (label) Bearing Registration No. 28680 was registered on 25th February 1958, in class 32 in respect of 'soft drink beverages and syrups, flavour and extracts for making soft drink beverages, all being goods included in class 32'. It would appear that the said Trade Marks have been used In Pakistan continuously at least since 1962 in relation to soft drink beverages by the authorised users of the respondents as registered users pursuant to section 39 of the Trade Marks Act, 1940 and in relation to preparations for making soft drink beverages by the respondents and/or its registered users.
3. The respondents obtained registration of their Trade Mark '7-Up" under Registration No. 46175 dated 22nd October 1966, in class 30 in respect of 'candy and confectionary of all kinds and flavour ice'. It also obtained registration of Trade Mark. 'Seven-up' under Registration No. 46176 dated 22nd October 1966, in class 30 in respect of the same goods.
4. The petitioner Abdul Aziz has sought the rectification of the register by removal of the last- mentioned two registered Trade marks under section 37 of the Trade Marks Act, 1940. The case of the petitioner as set out in the petition is that he has been carrying on his business dealing in 'Pan Masala'. 'Sweet Scented Soopari', etc. Under various Trade Marks including labels comprising "7 up" for many years without any let or hindrance from any quarter. The grounds urged in support of the petition are that the respondents have sot used the Trade Marks on any goods covered by the two Registrations Nos. 46175 and 46176 except for soft drinks for which the respondents have been dealing through Registered Users.
5. The respondents do not dispute the fact of non-user of the Trade Mark In relation to the goods for which it was registered under the impugned registrations but alleged that in course of the long period during which the respondents have been doing business under the Trade Mark relating to soft drinks since the year 1920 in various countries of the world, they have come to establish a goodwill which is attached to the Trade Mark through extensive advertising of the "Seven-Up" and "7 up; products of the company. It is submitted by them that due to the tremendous sale and advertising of the "Seven-Up" (7-Up) brand soft drinks continuously for more than 40 years in the United States Markets and in foreign markets and since its registration in Pakistan. The Trade Mark has come to acquire immense reputation and goodwill associated with the respondents. It was alleged that the attempt to have the Trade Mark removed under the aforesaid registrations is motivated by mala fide intention of wrongfully appropriating the Trade Mark and reputation and goodwill of the respondents.
6. In support of the petition Syed Shaukat A.I contended that the Trade Mark is liable to be taken off the register in respect of the goods in class 30 for which the same was registered under the two registrations on the ground that the Trade Mark was registered for these goods without, on the part of respondents any bona fide intention, which according to the counsel is clear from the admitted fact of non-user of the Trade Mark in relation to such goods upto a date one month prior to the date of application. This has reference to the ground for removal provided for in section 37(1)(x) of the Trade Marks Act. He next submitted that the case of the petitioner is also covered by clause (b) of section 37(1) on the admitted position that there was no bona floe use of the Trade Marie in relation to those goods.
7. Mr. Fateh Ally Vellani, learned counsel appearing for the respondents candidly conceded that the respondents have not used the Trade Mark under class 30 for confectionary nor appointed registered users. Him submission however was that the actual user at the time of the registration fir not a necessary precondition for valid registration and that more non-use Ipso facto was not sufficient to infer abandonment of intention to use the Trade Mark.
8. Now it cannot be disputed that a proprietor of 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 parson claiming to be the proprietor of Trade Mark used 'or proposed to be used by him' in the course of his business would be entitled to apply for registration. 1t therefore, follows that if the applicant does not currently use the Trade Mark but plans to do so can legitimately avail of the right to register the proposed Trade Mark. But the submission of Mr. Shaukat A.I was that the fact that licensees were appointed by the respondents in respect of beverages marketed under the Trade Mark but no registered user was appointed in respect of candy, ere., clearly leads to the inference that at the inception the respondents had no bona fide intention to use the Trade Mark in relation to the goods in question. The first question therefore, that falls for consideration is whether the respondents obtained registration of the Trade Mark in class 30 without bona fide intention. It would be advantageous to reproduce the provisions of section 37(1) of the Trade Marks Act which are as follows :- "37. Removal from register and imposition of limitations on ground of non-use.-(1) Subject to the provisions of section 38. a registered Trade Mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either-
(a) that the Trade Mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the Trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of application ; or
(b) that upto a date one month before the date of the application, a continuous period of five years or longer elapsed during which the Trade Mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being : Provided that, except where the applicant has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a Trade Mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the Trade Mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the Trade Mark is registered."
The perusal of the above-cited provisions will show that an applicant inter alia must establish for purposes of clause (a) the following two facts
(l) That the Trade Mark was registered without bona fide intention of using the same in relation to the goods in respect of which it was registered, and
(ii) That there has in fact been no bona fide use of the Trade Mark in relation to those goods up to a date one month before the application.'
So far as the second point is concerned, admittedly there has been no use of the Trade Mark in relation to the goods for which it was registered. The only point at issue is the question of bona fide intention as required by this clause. Intention is a fact which is not capable of direct proof and can be established only by inference from evidence of conduct. Mr. Vellani referred me, on this question to a passage from Karly's Law of Trade Marks and Trade Names (10th Edn.) at paras. 11-16 at page 210 where the learned Author expressed an opinion that in the absence of an intention to abandon the mark, a mere non-use of the mark does not amount to abandonment of Trade mark rights in respect of it. The author referred to the observations of Chitty, J., who said: "a man who has a Trade Mark may properly have regard to the state of the market and demand for the goods; it would be absurd to suppose that he lost his Trade Mark by not putting more goods on the market when it was glutted." In the same passage, however, Kerly says that an intention to abandon might be inferred from long disuse and in modern practice the matter is concluded one way or the other by terms of section 26 (U. K. Act equivalent to section 37 of Trade Marks Act, 1940), under which non- use for 5 years in connection with any goods for which the Trade Mark is registered may be a cause for removal of mark except when it is shown to be due to special circumstances in the trade.
I therefore, do not agree with Mr, Vellani in his submission that nonuse of the Trade Mark right from the date of its registration from 1966 until the present day is not a relevant consideration.
9. However, since a period of more than 5 years has elapsed from the date of the registration of the impugned Trade Marks it seems to me and as rightly submitted by Mr. Vellani, the ease of the applicant falls under clause (b) of subsection (1) of section 37, which from its perusal will show, has no reference to the intention of the applicant for registration at the time of registration of tie mark.
A mere non-use for a period of 5 years or loner up to a date one month before the application under this clause, is sufficient ground for removal of the mark. In the present case it was conceded by the respondents that the Trade Mark was not used in C relation to the goods for which it was registered, by the respondents during the statutory period. Prima facie therefore, the mark is liable to be removed but the respondents have sought the aid of the proviso and their contention is that they have during the relevant period used the Trade Mark bona-fide in relation to the goods of the same description. In other words the case of the respondent is that although admittedly there has been no user of the Trade Mark in relation to candy and confectionery etc. In class 30 but by virtue of the use of the 'Trade Mark upon the soft drink beverages in class 32 during the relevant period, the application is liable to be refused as soft drink beverages are goods of the same description.
10. The entire fate of this petition depends upon the true interpretation of the proviso to subsection
(J) of section 37 of the Trade Marks Act. Elaborate arguments were advanced by the learned counsel on either side over the question whether soft drink non-alcoholic beverages on which the Trade Mark 'Seven-Up' has been used are the goods of the same description _ as 'candy and confectionery of all kinds and flavoured ice'. Mr. Shaukat A.I besides vehemently contesting the submission that the soft drinks are goods of the same description as candy etc. In Class 30, contended that the proviso extends to the use of the mark only to such goods that fall under the same registration and since beverages do not fall under the impugnedregistration, the protection extended under the proviso is not available to the respondents. In this behalf learned counsel referred me to the commentary in Kerly's book on Trade Marks, paras. 11-39 on page 220 where the learned Author says : "the substantial effect (of the proviso) is that the registered proprietor may seek to excuse the absence of use in relation to the registered mark by proof of use upon goods of the same description, provided those goods also fall within the registration." This seems to be the obvious intention from the reading of the relevant part of the proviso and specially the words "in relation to the goods of the same description, being goods in respect of which the Trade Mark is registered". Now it is conceded by the respondents that the use upon which they rely for the purposes of the proviso is not in relation to goods within the same registration, as obviously beverages fall within class 32 for which separate registration was obtained. Mr. Vellani endeavoured to construe the words "being goods in respect of which the Trade Mark is registered" to refer to such goods in respect of which the Trade Mark was registered either under the impugned registration or otherwise. In other words his submission was that it was sufficient to show the use of the Trade Mark in relation to goods covered by some registration not necessarily the one under challenge. I am, however, unable to accept this construction. It will be seen that before a registered proprietor can claim the protection of the proviso, two things inter alia are necessary pro-conditions to be established by him, namely, (1) that the Trade Mark has been used in relation to goods of the same description and (2) that such goods in relation to which the Trade Mark has been used are goods in respect of which the Trade Mark is registered. The word "the" is very significant and clearly refers to the disputed Trade Mark whose removal is sought. The opening part of subsection (1) of section 3't refers to the power of the Court to take off the register, a Trade Mark in respect of "any of the goods in respect of which, It is registered". Here the word "any" makes the Legislative intendment unambiguously clear that the Legislature had in its contemplation the removal of the Trade Mark in respect of particular goods in respect of which It Is registered, which may be one of the several types of the goods in the same registration. This is clear by the use of the expression "those goods" In clauses (a) and (b) of this sub-section. Those words namely "any of the goods", "those goods" and lastly "any goods" in the proviso clearly provide the clue to the meaning of the proviso that it was meant to relieve the registered proprietor of the consequence of non-use of the Trade Mark in relation to particular type of goods if he could show use of the Trade Mark in relation to the other goods for which the same Trade Mark wasp registered under the same registration provided they were goods of the same description. To my mind, the proviso is attracted in a case where the registration of Trade Mark is obtained in relation to several goods and there has been non-use in relation to one or more of the goods for which the Trade Mark is registered. In such a case if the registered proprietor could establish use in relation to at least one of the goods which is of the come description as the one or more for which the removal application is made on the ground of non-use, and in respect of which the Trade Mark. Is registered, he would be entitled to the retention of the Trade Mark in respect of those goods for which the same was not used. To illustrate with the concrete example in relation to the facts of the present case, if the application for expungement was moved in respect of candy alone and the registered proprietor had proved the use of the Trade Mark on flavoured ice (one of the goods included in the registration) this would have constituted case falling within the purview of the proviso as a defence to application.
However, in the present case the respondents are invoking the proviso in respect of the use of the Trade Mark on soft drinks which are included in the two separate registrations under class 32.
11. I have tried to examine the correctness of my view with reference to the other provisions of the Trade Marks Act and I am fortified in my opinion upon the over all scheme of the Act that is the only correct Interpretation of the proviso. Section 5 of the Trade Marks Act provides that a Trade Mark may be registered only in respect of 'particular' goods or classes of goods. Rule 13 of the Trade Marks Rules, 1953 stipulates that every application for registration of the Trade Mark shall be in respect of goods in one class only of the Fourth Schedule to the Rules and application for registration of the same Trade Mark is different classes shall be treated a separate and distinct application. Kerly at page 77 para. 3.01 says that the use of the marks in connection with goods of the particular kind identified with it was the foundation of Trade Mark rights and at para. 5-05 at page 79 states that what is of real importance in determining the rights of the parties i3 the specification of goods entered on the register. It is no doubt true that the fact that certain goods may fall within the same class ii no evidence that they are goods of the same description. It therefore, follows that to avail himself of the privilege conferred by the said R proviso, it is rot sufficient to show that the Trade Mark was used on an other goods in class for which the mark was registered but further must be shown that such goods were of the same description.
12. The learned counsel appearing for the parties were not able to cite any direct authority from our jurisdiction or any English decision where the use of the mark in respect of goods under a different registration was set up as a defence against a motion for removal of the mark. It seems that all the reported decisions related to cases where the registered proprietor invoked the proviso in connection with goods of the same description within the same registration. One English decision, however, throws some light indirectly on this aspect of the law which is reported as J. Lyons h Company Limited's Application for Rectification (1959 R P Q 120) This was a case of a registration in respect of "dunks and preparations for making drinks and goods of the sane description". The registered proprietor had not used the Trade Mark on "ice cream" and Lyons & Company moved for removal of the mark in respect J "ice cream". The registered proprietor resisted the application by invoking the proviso on the plea that the Trade Mark bad been used within the statutory period on jellys. Commencing the discussion, Lord Everghed, M. R. Remarked in his judgment that there is no doubt that ice cream and similar food stuffs would be within the scope of the registration. On an over all consideration of the provisions of the Trade Marks Act and as a result of the above discussion, therefore, I am clearly of the opinion that the proviso would be attracted only in case of use in respect of goods in the same registration. P As a result therefore, the respondents are not entitled to invoke the ass; stand of the proviso to subsection (1) of the section 37 of the Trade Marks Act.
13. In the view that I have taken, it becomes unnecessary to consider the further contention advanced by Mr. Vellani that 'Seven up' beverages and candy etc. Are goods of the same description.
14. The only questions that remain to be determined are whether the petitioner is a "person aggrieved" within the meaning of section 37 Trade Marks Act and whether in the facts and circumstances of the present case, discretion be exercised in favour of the registered proprietor by refusing the application. In regard to the first question, it was contended on behalf of the respondents that the petitioner has no locus stands to seek the expungement of the impugned Trade Marks as he is not an aggrieved person within the meaning of the section. In this behalf is was stated that the application had applied to the Registrar vide Application No. 38910 dated 27-3- 1963 for the registration of the Mark '7-Up' for Pan Massala under clause 30. Consequent to the advertisement of this application therespondents filed notice of opposition and upon consideration of the matters the Registrar accepted the application on t3-4-70. Aggrieved by this decision the respondents tiled Appeal No. 113 of 1970 in this Court which was decided by Judgment dated 27-10- 75 by Dorab Patel, J. Which happens to be reported in PLD 1976 Kar. 895. In the meantime, however, on 17-5-75 the present applications were submitted for rectification. Now it is the submission of Mr. Vellani that the applicant having been granted registration, is no longer an aggrieved party as he shall suffer no prejudice. I would once again quote Kerly on Trade Marks where the learned Author observes that persons who are aggrieved are, as is held, all persons who are in some way or other substantially interested in having the mark removed from the register; including all persons who would be substantially damaged if the mark remain and all trade rivals over whom an advantage was gained by a trader who was getting a benefit of a registered Trade Mark to which he was not entitled. Lord Watson is quoted having said that the fact that a trader deals in same class of goods, and could use the mark, was prima facie sufficient evidence of his being aggrieved In Bosnian, etc. Company v. John Griffths Cycle Corporation Limited (15 R P C 105).
It was not considered necessary that the applicant should actually trade in the goods for which the mark is registered but the view was taken that it is sufficient if there is such a close connection between the business and the applicant's business that there is a probability that he may wish to extend his business to other goods. The late Chief Justice Tufail A.I A. Rehman in Chiswick Products Ltd. v. The Registrar of Trade Marks (PLD 1975 Kar. 421) held that the applicant in that case was "a person aggrieved" within the meaning of section 32 as he was interested in having the mark removed from the register in as much as he himself was using it. It seems that the phrase "person aggrieved--" has consistently received liberal construction. In this case it appears that the applicant had been doing business under the Trade Mark for some time and when he sought to have it registered in respect of his goods comprising Pan Massala, the respondents opposed the registration. Clearly therefore, the applicant is a person aggrieved and in the course of arguments, Mr. Vellani also stated that the question regarding person aggrieved has been touched in the context of the question relating to the exercise of discretion as after the grant of registration to the applicant he would suffer no prejudice if the mark remains on the register in the name of the respondents. No exception can therefore, be taken to the maintainability of the application,
15. This brings me to the last point regarding discretion. The power to remove a registered Trade Mark vested in the Court under section 37(1) Trade Marks Act is governed by the words "may be taken o8'" in the opening part of the section which involves a discretion not to remove. These words were construed (in connection with section 26 of the U. K. Act) in Lyons & Company's case (1959 R P 0 120) referred to above. Lord Evershed. M. R. Observed; "in my Judgment, the terms of the proviso carry with them the unavoidable implication that, if such use is not shown, then prima facie the Tribunal ought not to refuse the application. That is not,, to say that no discretion whatever is left by the use of the word "may" in the second line of the subsection. Exceptional circumstances may arise, for example from the special nature of the mark, which would make it just to refuse the application even though if the proviso were not at all called into play. The onus is therefore, heavily upon the respondents to establish these special circumstances for the exercise of discretion against the removal of tine mark, having regard to the fact that the grounds prescribed by section 37(1) have been clearly made out. It is not the case of the respondents that they proposed to extend their business to the goods in relation to which the Trade Mark has been registered under Class 30, in the near future or indeed at any specified time in tie near future. There are no other exceptional circumstances in this case to justify the exercise of discretion to favour of the respondents. The scope of discretion under section 23(1) of the Australian Trade Marks Act, 1953 (which is equivalent to section 37 of the Trade Marks Act) was examined in the case of Carl Zeuss Stiftung's Trade Mark (3) where after a review of English precedents on the point, a view was expressed that the terms of the proviso carry the implication that where the special facts there referred to are not shown the Tribunal prima facie ought not to refuse the application. It was noticed that this view has been consistently held in England. In view of the established position, therefore and having regard to the fact that no special circumstances have been pleaded, I have come to the conclusion that the discretion in this case cannot be exercised against removal of the Trade Marks.
16. No other argument was advanced by the learned counsel for the respondents. For reasons stated, I am of the opinion that the application should succeed anti the two registered Trade Marks taken off the register. In the circumstances of this case, there will be no order as to costs.