INDUS PENCIL INDUSTRIES (Pvt.) Ltd. Versus CRESCENT PENCILS (Pvt.) Ltd.
I intend to dispose of the above two appeals by this common judgment as they are directed against a common order dated 31‑12‑1986 passed by respondent No. 2.
M.A. No. 12 of 1987
2. The Brief facts leading to the filing of the above appeals are that the appellant filed application No. 81254 in Class‑16 for the registration of the word `SAFARI' for pencils and ball point pens. The respondent No. 1 had also filed application No. 81391 in the above Class‑16 for registration of the word "KIWI SAFARI" for the above items. Both the parties filed opposition to their opponent's application. Respondent No. 2 instead of deciding the application and opposition himself passed the above order dated 31‑12‑19$6 ordering that the parties should get the dispute resolved through the Civil Court. It may be observed that respondent No.l by their letter dated 21‑2‑1987 informed respon dent No.2 that they did not wish to oppose their application for registration but respondent No.2 informed respondent No.l that he has already passed the order.
M.A. No. 13 of 1987
3. The appellant in the above case through application No. 81255 applied for registration for the word "DEER SAFARI" in Class‑16 for pencils and ball point pens whereas respondent No. 1 by their application No. 81391 applied for the word "KIWI SAFARI" in the above Class‑16 for pencils and ball point pens. Each of the parties filed opposition to the application of the other. The rest of the facts are same as to the above Misc. Appeal No. 12 of 1987. The appellant being aggrieved by the above order have filed the above two appeals.
4. Mr. Munawar Ghani, learned counsel for respondent No. 1 has made a statement on behalf of respondent No. 1 that they do not wish to oppose the appellant's application nor they wish to get the word "KIWI SAFARI" registered under Class‑16 for pencils and ball pens. Whereas Mr. S. Shaukat Ali, learned counsel for the appellant has submitted that respondent No. 2 was not justified in ordering the parties to have resort to the Civil Courts in terms of section 10(3) of the Trade Marks Act as not in every case the parties are to have resort to the Civil Court othcn6se it would defeat the very object of the Trade Marks Act. The reliance has been placed on the case of Sanjeda Bano v. Muhammad Saeed Jehangir (P L D 1987 Kar. 53) wherein Saleem Akhtar, J. of this Court has made the following observations:
"Under section 10(3) if separate applications have been made by different persons in respect of the trade marks which are identical and closely resemble each other in respect of the same goods or description of goods the Registrar is authorised to refuse to register any of them and leave the parties to et their rights determined by a Civil Court. Therefore, the dispute should be between different persons n respect of the trade marks which are identical or similar and should relate to the same goods or description of goods. The question arises when the Registrar should leave the parties for determination of their rights by the Civil Court. The Trade Marks Act provides a self‑contained machinery and procedure for registration of trade marks and comprehensive remedies has been provided under the Act itself. Even in cases where the parties are different and dispute relates to registration of trade marks which are similar or closely resemble each other in respect the same or similar description of goods, the Registrar can grant or refuse to register the trade mark. Section 10(3) should be involved only in cases of special circumstances and exceptional nature. The parties should be left for determination of their rights by the Civil Court in cases where substantial rights of the parties are involved and on the preponderance of evidence produced by both the parties it is not possible to determine the same within the scope of jurisdiction conferred on the Registrar. The disputes, and rights between the parties which fall within the exclusive domain of the Registrar must be decided by him. However, if parties raise disputes, claims and rights which cannot be, decided without proper evidence and investigating section 10(3) may be invoked. The question relating to similarity of mark s confusion, deception, honest and concurrent user do arise in the normal course during the registration proceedings and they should be decided by the Registrar. If such dispute are left to be determined by the Civil Court it will defeat the very object of the Trade Marks Act.
5. In the present case there seems to be no contest between the private parties in view of the above new development namely, that respondent No. 1 has withdrawn the opposition as well as their application for registration. Respondent No. 2 has not made out a case for ordering the parties to have resort to the civil A Court. I would, therefore, set aside the order dated 31‑12‑1986 and would remand the case to respondent No. 2 who will proceed with the case from the stage at which the order under appeal was passed. However, there will be no order as to costs.
Case remanded.
M.Y.H./I‑45/K