SUMITOMO RUBBER INDUSTRIES Versus DEPUTY REGISTRAR OF TRADE MARKS, TRADE MARKS REGISTRY, KARACHI

1. Messrs Sumitomo Rubber Industries, the appellants herein, applied for registration of a trademark comprising the word "WINDSOR" in repsect of automobiles, tyres and wheels, in class 12. Their application was numbered as Application No.102154.

2. The Deputy Registrar Trade Marks, respondent herein, by his notice addressed to the appellant required them to file an affidavit indicating their definite intention to use the mark applied for registration.

3. The Agent of the appellants replied to the notice and pointed out that, by filing application for registration of the trademark they clearly intended to use the mark in Pakistan and in absence of any provision in law or the rules to file such an affidavit, the requisition made by the respondent was not justified.

4. The reply given by the appellant was not accepted. The appellants were then heard by the respondent who in exercise of his discretion under section 14(1) of the Trade Marks Act, 1940 refused the application by his decision passed on 30‑5‑1991. This appeal has been filed under section 76 of the Trade Marks Act, 1940 against that decision.

5. Mr. Abdul. Rasheed, Advocate for the appellants, contends that the decision of the respondent refusing their application for registration of trademark is not justified on the reasoning given by the respondent. The trademark applied for is being used by the appellants in Japan and they positively intend to use it in Pakistan in near future. Although there is no provision of any law or rule in this country which makes it obligatory on the appellants to file the affidavit as indicated by the respondent. The appellants are ready and willing to do so either before this Court or even before the respondent.

6. The respondent relied on the case reported in R.P.C. 1898, Vol. 15, page 534 and refused the application. That is a case of expunging a registered trade mark that was neither in use before registration was applied for nor was used till' reasonable time had passed after registration of the mark was procured and facts of that case are different from the facts of the present case.

7. A person can apply for registration of a trademark under section 14(1) of the Trade Marks Act, 1940 if he has been using it for his products or proposes to use the same in future. Plain reading of the said section clearly indicates that the person applying for registration must either have used it prior to the making of the application or intends to use it after registration of mark is procured by him. No doubt the registration of a trade mark, contemplated by section 14 of the Trade Marks Act, 1940 has to be such a mark which is already in use or intended to be used.

8. In case where mark which is registered without any bona fide intention of the applicant to use it such a mark can always be removed from the register if its non‑use is established under section 37 of the Trade Marks Act, 1940. Till such time when the proceedings are initiated and decided in terms of section 37 of the Act and in absence of any provision of law or rules or evidence on record the respondent cannot refuse the application under section 14(1) of the Trade Marks Act, 1940 on that ground.

9. The trademark applied for registration in Pakistan is already being used by the appellants in Japan and it cannot at this stage be said that they do not intend to use it here. The decision of the respondent being devoid of sound reasoning, is set aside, appeal allowed and the respondent directed to proceed further in the matter

10. H.B.T./S‑832/K ????????????????????????????????????????????? ??????????????????????????? Appeal allowed.