NATIONAL DETERGENTS LIMITED Versus NIRMA CHEMICALS WORKS

1. This is an appeal preferred under section 76 of the Trade Marks Act, . 1940 (hereinafter referred to as `the Act') to challenge the legality of the order, dated June 24, 1989 passed by the Registrar of Trade Marks allowing the notice of opposition filed by the first respondent and refusing the appellant's Trade Mark "Nirma" (Label).

2. The appellants had filed an Application No.86680 dated June 13, 1985 in Class‑3 for registration of the Trade Mark "Nirma" (Label) in respect of goods, "Bleaching preparations and other substances of laundry use; cleaning; polishing, scouring and abrasive preparations; soaps, perfumery, essential oil, cosmetics, hair lotions, shampoos, dentifrices and detergents".

3. The Examiner of Trade Marks, on examination, raised objections and issued a show‑cause notice to the appellants wherein it was pointed out that the Trade Mark "Nirma" was not registrable under section 6(i)(a) of the Act being the personal name. The appellants sent a suitable reply and counsel for the appellants was also herd. Ultimately the application was advertised for registration in the Trade Marks Journal No.431 of December 1, 1986 at page No.340. The first respondent had Filed a notice of opposition on various grounds along with documents in support thereof. The appellants riled their reply by way of counter‑statement.

4. The Registrar of Trade Marks, after giving hearing to both the parties, pissed the impugned order allowing opposition and refusing registration of the appellants' Trade Mark "Nirma". The Registrar of Trade Marks came to the conclusion that the first respondents are the proprietors of the Trade Mark "Nirma" and the appellants have falsely and dishonestly claimed proprietorship. He observed that it would be against the public interest that products of different origins were sold with the same Trade Mark. He found that the mark has been extensively advertised in journals, through the Video films and Press. The mark has also been registered in several countries of the world.. The impugned order of the Registrar of Trade Marks is under challenge.

5. Mr. Salim Ghulam Hussain, learned counsel appearing for the appellants very strenuously urged that the conclusion recorded by the Registrar is erroneous and contrary to the evidence on record. The learned counsel urged that the Registrar erred in coming to the finding that the first respondents are the proprietors of Trade Mark "Nirma" in Pakistan. While the first respondent have had no existence in Pakistan with respect to Trade Mark "Nirma" for detergents. The learned counsel urged that the Registrar has seriously erred in reaching the conclusion that the appellants are attempting to appropriate the Trade Mark of foreign owner. Mr. Salim vehemently urged that the finding of the second respondent that the rights of the owner of foreign Trade Mark are to receive some safeguard, is erroneous and (sic).

6. Mr. Khawaja Mansoor, learned counsel appearing for the first respondent, on the other hand, urged that the Registrar had marshalled the evidence and applying correct principles, had recorded conclusion which cannot be branded as perverse and therefore it is not necessary to disturb the finding of the Registrar while exercising powers under section 76 of the Act.,

7. Under section 14(1) of the Act any person claiming to be the proprietor of a Trade Mark used or proposed to be used by him who is desirous of registering, shall apply in writing to the Registrar in the prescribed manner and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.

8. I shall now take up the point as to whether the appellants are the proprietors of the mark in question within the meaning of section 14 of the Act. Section 14 of the Act is already reproduced hereinabove. The first respondent asserted in para. 20 of the notice of opposition that "the claim of the applicant in its application that it is the proprietor of the `Nirma' mark is a claim which is false and untrue and the adoption of the mark by the applicant is not honest. The applicant is not in any sense the proprietor and has no right or basis for claiming to be a proprietor of the `Nirma' mark. The subject application seeks to appropriate for the applicant what is essentially the Trade Mark and property of the applicant". The appellants dealt with the contents of paras. 19 and 20 of the notice of opposition in para. 18 of the counter statement. The appellants staled that "the contents of paras. 19 and 20 of the Notice of Opposition are mischievous, imaginary, false, denied and disputed. The applicants are required to strict proof thereof. That the applicant are the true and bona ride proprietor of the said mark. The applicant are using the mark since long time in Pakistan without any let or hindrance from any quarter and even ' from the opponent: The opponents have acquired sufficient reputation and goodwill due to extensive sale throughout Pakistan due to the applicant's nationwide distribution network system. The people of Pakistan are well aware that the Trade Mark Nirma (detergents) belongs to the applicants and nobody else and if the opponents arc allowed it will create confusion and deception. Further the mark `Nirma' is riot an .invented word but it is a personal name and the opponents cannot claim any monopoly rights over the same". It was contended by Mr. Salim Ghulam Hussain that under section 14, it .is not; necessary for the applicant to establish as a matter of fact, that the applicant was the. proprietor of the mark. His contention was that no further proof was necessary and that the applicant will be obliged to establish his ownership, only if the opponent claims for himself the ownership of the mark.

9. `I am clearly of the opinion that there is no substance whatsoever in the points urged by the learned counsel for the appellants on this portion of the case. The first respondents in their opposition have clearly disputed that the appellants are not the proprietors of the mark of which registration was sought and in the counter‑statement riled by the appellants, they have merely stated that the applicants are the true and bona* fide proprietors of the said mark. The appellants asserted that "the applicants are using the mark since long time in Pakistan, without any let or hindrance from any quarter and even from the opponent". The‑ argument that it is sufficient if an applicant for registration simply claims to be the proprietor has to be stated merely to be rejected. 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 proprietor of the Trade Mark he cannot obtain registration of it. The observations of Fry L.J. in Re Appollinaris Company's Trade Marks (1891) 2 Ch. at p.226=(1891) 8 RPC 1.'36‑61 L.J. Ch. 625 will clearly show that it is incumbent 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 used a Trade Mark first is the person entitled to claim the proprietorship thereof unless subsequently he has dealt with the same and stone other has obtained rights thereto in the manner known to and recognized by law.

10. In the case of Vitamins Ltd.'s Application ((1956) RPC 1 = (1955)3 A R 826), an American Company had originally applied for registration of the Trade Mark `Pabalate' for medical substances, but withdrew the application when it was opposed by Vitamins Ltd. on the basis of its registration for `Papa Vel'. A few months later, Vitamins Ltd. itself applied for registration of 'Pabalate' claiming to be the proprietor of the Trade Mark. The American company opposed the application contending that the claim to proprietorship of the Trade Mark was false. The Registrar dismissed the opposition of American company on the ground that there was no user or reputation of the mark of the American company in Great Britain. But on appeal, the decision was reversed. It was held that Vitamins Ltd. when it applied for registration of the Trade Mark `Pabalate' knew that the American company had already put forward a claim of proprietorship of the said Trade Mark and, therefore, the British company's claim to be proprietor of the Trade Mark being improper, the application was refused by the Court in the exercise of its discretion. There was also another reason for exercising the Court's discretion against the British Company's application. As medical products of American origin are generally advertised in American medical journals, which are likely to reach Great Britain, public interest required that articles of different origin should not be advertised and sold in Great Britain and abroad under the same name.

11. In Brown Shoe Company's Application ((1959) RPC'29), the mark "Naturalizet" was expunged from the register on the grounds inter alia that the mark was copied from "Naturalizer", which was used exclusively in U:S.A. although an application to register the same in U.K. was not successful; and the respondents were not in truth proprietors of the Trade Mark. Wynn‑Parry, J. observed at p.33, line 22 as follows:‑‑

12. "It is incumbent on an applicant for registration of a Trade Mark which has not yet been used in trade to assert that it is proposed to be used by him and that he claims to be the proprietor thereof. If there is an owner of a similar Trade Mark who has made an earlier assertion of proprietorship and who has not abandoned that claim, then the claim of the applicant is not well founded and the application should ,trot be allowed to go forward:"

13. In Gynomin Tm. ((1961) RPC 408), registration of the Trade Mark "Gynomin" obtained by a former agent of a foreign manufacturer was expunged from the register on the ground that the registered proprietors at the time of making the application for registration knew that the mark was that of their former principal and that in the circumstances they could not claim to be the proprietors of the Trade Mark. It was also held that where an applicant for registration knowingly made a false claim to be proprietor of the Trade Mark, the registration was obtained by fraud.

14. In a case reported in PLD 1973 Kar. 24, the appellants had imported radio parts and kits from the respondents firm of Tokyo, Japan under the latter's mark. "Crown". The appellants applied for registration of that Trade Mark in their name. The respondents filed notice of opposition. It appears that the respondents had themselves applied for the registration of the Trade Mark with the device of "Crown" on the 28th April, 1963 in Class IX. In their counter‑statement, the appellants denied the allegations made in the notice of opposition and alleged that the user claimed by the respondents was dishonest. The Deputy Registrar, on the basis of the evidence led by the parties in the form of affidavits, came to the conclusion that no deception or confusion was involved as the user and reputation of the respondents' Trade Mark has hardly enjoyed any reputation in Pakistan. The. Deputy Registrar, however, being of the opinion that since that the appellants used to import Crown Radio goods from the respondents, they could claim the borrowed mark of the respondents as their own. The claim being improper, it was' not a case in which discretion could be exercised in. favour of the appellants. The discretion was, therefore, not permitted to proceed. On appeal, it was held that although the Japanese firm acquired no reputation for its Trade ,Mark in Pakistan in the absence of the use, the Deputy Registrar of the Trade Marks rightly refused the application in the exercise of discretion vested under section 14(1) of the Act on the ground that the claim by the appellants to be the proprietor of the' Trade Mark which they knew to be the Trade Mark of the Japanese firm, was improper.

15. 1n case reported in PLD 1979 Kar. 83; the appellant was a French Company which carried on business as manufacturers and merchants of perfumery, cosmetics, essential oils and variety of toilet and allied articles which it markets in many countries of the world under the Trade Mark CHERAMY. The Trade Mark CHERAMY has been registered in several countries of the world. The products under the said Trade Mark have been advertised in international journals and periodicals, which have a worldwide circulation. On 24th May 1972 the appellant filed an application under No.57340 for registration of the Trade Mark CHERAMY in Pakistan in respect of perfumery, essential oils, cosmetics and other allied goods in Class‑3 claiming to be proprietor of the Trade Mark and stating that it was proposed to be used.

16. In the other Misc. Appeal, Guerlian Societe Anonyme, which is also French company, carries on business in France as manufacturer and merchants of perfumery, cosmetics; essential oils and other toilet and allied articles which are marked in many countries of the world under the Trade Mark CHANT D'AROMES. The said mark was adopted by the appellant in the year 1962 and the mark has been advertised in foreign journals and periodicals which have worldwide circulation. The appellant filed an application for registration of the said mark in Class‑3.

17. The second respondent is a Pakistan company and carries on business as manufacturer and merchant of chemical and pharmaceutical products in Lahore. It filed two applications for registration of Trade Mark CHANT D'AROMES and CHERAMY in Class‑3 claiming to be proprietor of the two Trade Marks which, it stated, were proposed to be used. When these two applicants were advertised in the Trade Marks Journals, both the appellants filed respective notices of opposition on the ground inter alia that the appellants were the proprietors of the respective Trade Marks and that the respondent falsely and dishonestly claimed to be their proprietor and that if registrations were allowed to the respondent, confusion and deception would be inevitable. The Deputy Registrar, on the basis of the evidence led by the parties, dismissed both the oppositions but at the same time, he refused the Trade Mark applications of both the appellants as well as the application of the second' respondent. The appellants challenged the impugned decisions. Mr. I. Mahmood, J. (as he then was) came to the conclusion that the respondent has deliberately copied the Trade Marks of the appellants and claims to be their proprietor. In that view of the matter, the appeals were allowed and the Trade Marks Officer was directed to proceed with the applications of the appellants in accordance with the law. He further held that the application of the second respondent ought to have been refused by the Deputy Registrar in the exercise of his discretion under section 14(1) of the Act.

18. A reference to the observations of Abaid Ullah Khan, J. in Messrs Irshad Sewing Machine Company v. Registrar of Trade Marks etc. 1990 ALD 438(2) is to be made. The. learned Judge: at p 533 held as follows:‑‑‑

19. "It need hardly be reiterated that the law of registration operates not merely for the benefit of the traders but also for the benefit of the public‑at‑large and its main object is to secure free enjoyment of the right of manufacturing and marketing of one's products under one's registered Trade Mark and also to save the general public from being deceived by the acts of unscrupulous manufacturers and sellers of goods bearing the fake trade mark of others. For maintaining the purity of the Trade Marks Register and for safeguarding the interests of the public it is the duty of the Tribunal administering the law of registration to disallow misuse of another's Trade Mark by a person like the appellant which is not entitled to use it:"

20. I have examined a number of decisions including PLD 1991 Kar. 425; PLD 1990 SC 33; PLD 1990 SC 1074 and PLD 1991 SC 27. The principles of law laid down in the above decisions are applicable to the facts of the instant case. '

21. In the instant case, the Registrar was satisfied with the evidence on record that ‑the first respondents before me arc the proprietors of the Trade Mark `Nirma' and the appellants were aware that this mark belonged to the first respondents. He has found that the appellants have falsely and dishonestly claimed proprietorship. He has found that the mark has been extensively advertised in journals and periodicals over the radio and television through the radio, films and press. The mark has also been registered in 'several countries of the world.

22. In view of the findings of face recorded 'by the Registrar while there is no reason to differ from I agree that the Registrar has answered the question of law correctly. The appellants ,have not "alleged that the first respondents had abandoned any intention to use their foreign Trade Mark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word `Nirma' is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating Trade Mark of foreign owners is not proper.

23. Mr. Salim tried to attack the impugned order on the ground that the Registrar ought not to have decided the application for registration as the application of the first respondent was not taken up with the notice of opposition. This contention is devoid of force for more than one reason. Firstly this point was not taken before the Registrar and secondly the conduct of the appellants in appropriating the mark of foreign owners is not proper. Thirdly the appellants have not come with clean hands and in the interest of purity of the register the law ought not to' grant registration to an applicant whose conduct is not beyond reproach.

24. For the reasons stated above, I uphold the decision of the Registrar of Trade Marks dated 24‑6‑1989 and dismiss the appeal.

25. A.A./N‑429/K Appeal dismissed.