THE ASSISTANT REGISTRAR OF TRADE MARKS, KARACHI vs Messrs LAKSON

' ZAFFAR HUSSAIN MIRZA, J.---The Assistant Registrar of Trade Marks, Karachi, the petitioner herein, seeks leave to appeal against the judgment of a learned Single Judge of the High Court of Sindh, Karachi, dated 21-12-1987, whereby the order passed by him declining the application of the respondent was set aside and the case was remitted to him for fresh decision after publication and inviting objections in accordance with law. In these terms the appeal of the respondent under section 76 of the Trade Marks Act, 1940 (hereinafter referred to as 'the Act') was allowed.

2. The respondent company known as Lakson Tobacco Company Limited, filed an Application No,86499 dated 28-5-1985 for registration of a mark comprising the word "Clipper" in class 34 in respect of "Cigarettes, tobacco manufactured and raw, smoker's articles, matches, gas lighters and cigars". The application was subsequently allowed to be amended and ultimately registration was sought of the trade mark "LAKSON CLIPPER". The petitioner declined the application on the ground that the mark "CLIPPER" has been earlier registered as "PLAYER'S CLIPPER NOTINGHAM CASTLE" and "CLIPPER" in favour of two different applicants. On comparison, the petitioner formed the opinion that the prominent and common feature between the, proposed marks and those already registered, was the word "CLIPPER" and therefore, would deceive or cause confusion in the minds of purchasers. The application of the respondent for registration of the aforesaid mark was refused under sections 10(1) and 8(a) of the Act.

3. The respondent, however, filed appeal against the aforesaid order and .Ie appeal was accepted, by a learned Single Judge of High Court of Sindh, and the case remitted to the petitioner to issue notices to the proprietors of the registered trade marks and for decision after publication in accordance with law.

4. In upsetting the decision of the petitioner, the learned Judge in the High Court was pursuaded to follow the dictum laid down in an earlier case of the Court reported as David Waughan Racklin v.

Deputy Registrar Trade Marks, Karachi 1986 M LD 1666, in which it was held that where there were already two owners in whose name a trade mark was registered, the application of the third applicant for registration of such trade mark, should not be refused at the preliminary stage but should be proceeded with and notices issued to previous proprietors and also the application be published for inviting opposition.

5. Mr. Shahudul Haque, the learned counsel representing the petitioner contended that the petitioner was not bound to accept the application and advertise it, in law, but was competent to refuse the same before advertising the application or without inviting objections. There can be no cavil with the proposition as such, that it is for the Registrar to exercise his discretion in the matter of acceptance of an application and if it patently comes within the prohibitions of the provisions of the Act ex facie, not to accept it. In that case he may not advertise the application. The question here is not of competency but of the exercise of discretion on the part of the Registrar. The discretion vested in him can be exercised on sound principles in accordance with law and not arbitrarily.

6. Mr. A. Aziz Khan, the learned counsel for the respondent has brought to our notice various decisions in which in similar circumstances, the action of the Registrar to prematurely refuse application for registration of a trade mark, without advertising the application has been consistently held as improper and the practice was deprecated. He referred to unreported judgments of Sindh High Court in Misc. Appeal No,42 of 1987 (Lakson Tobacco Company Limited v.

The Assistant Registrar of Trade Marks-II and Misc. Appeal No,8 of 1988 (Lakson Tobacco Company Ltd. v. The Registrar of Trade Marks) i.e, both in the cases of respondent. Reference was also made to the case of David Waughan Racklin 1986 M LD 1666 relied on in the impugned judgment and a judgment of the Bombay High Court in Misc. Petition No,1522 of 1976 (Central Camera Company Ltd. v. The Registrar of Trade Marks) reported in the Industrial Property Law Reporter at p.1.

7. After careful consideration of the arguments and the law cited before us, we feel it is a sound principle that in cases like the present one it is not proper to refuse the application for registration at initial stage without advertisement. It will be appropriate to advertise the trade mark and invite opposition, as in such case a decision taken will avoid multiplicity of litigation, besides enabling the Registrar to have his decision on material produced by holders of trade marks who file opposition.

8. We, therefore, see no reason to interfere with the judgment of the learned Judge in the High Court and dismiss this petition.