Trade
Marks Act, 1940
Registrar of Trade Mark can rectify his own
error
High
Court Division
(Civil Statutory Appellate Jurisdiction)
Trade Mark Appeal No. 4 of 1996
Md.Sukkur Miah
Vs
Md.Shamsuddin Khan and another
Mr. Justice Syed AmirulIslam and Mr. Justice AKM Shafiuddin
Date of judgement: July 12, 2003
Background
This appeal filed under section 76 of the Trade Marks Act, 1940 against
the decision dated 16.6.1996 passes by the Registrar of Trade Mark canceling
the earlier order dated 18.4.1996 by which he accepted the application
of the appellant for advertisement in the Trade Marks Journal.
The appellant
filed an application being No. 40725 in class-24. After receipt of the
application the third party respondent filed an application before the
Registrar bringing to his knowledge that the same mark has already been
registered under No. 40201 and that mark is identical in all respects
with the mark applied for by the appellant. On a perusal of the record
of the registry it appears that thereafter a notice was issued to the
appellant to show cause why his application shall not be rejected but
he failed to do so within the prescribed time whereupon the application
was treated as abandoned by the Registrar. Against that order they filed
TM-56 on the ground that they could not reply to that show cause as
they received the show cause on later date. In TM-56 it has been categorically
stated that they had replied on 13.1.1995 and as such applied for allowing
TM-56 but unfortunately that reply dated 13.1.1995 is neither in the
record of the Registrar nor a copy of the same could be produced by
the appellant.
Thereafter
the Registrar asked the appellant to deposit requisite fees for publication
of the mark in the Trade Mark Journal, whereupon the owner of the Registered
Mark No. 40202 again brought to the notice of the Registrar that the
mark applied for has already been registered. Thereafter the appellant
was notified by the Registrar in this regard and after hearing both
the parties by the impugned order he cancelled the earlier order dated
18.4.1996 for advertisement in the Trade Mark Journal of the Trade Mark
application of the appellant being No. 40725 in class-24 and set aside
all actions taken pursuant to the application.
Deliberation
The learned advocate appearing for the appellant has pressed four grounds.
On a perusal of all these four grounds it appears that the main submission
of the learned Advocate for the appellant is after the acceptance of
the application of the appellant for advertisement and after taking
request fee along with the block, the Registrar had no authority whatsoever
in law to set aside the earlier order and the Registrar most illegally
recalled the earlier order in flagrant violation of the provision of
law. The learned Advocate for the appellant in support of his contention
cited the decision in the case of David Vaughan Racklin V Deputy Registrar
of Trade Marks, Karachi, 1986 MLD 1666 reported in the Annual Law Digest,
1986, 2959 Part IV.
On a perusal
of the impugned order it appears that the Registrar has refused the
application only on the ground that the mark applied for by the appellant
has already been registered i.e. the appellant is disentitled to get
the mark registered in his name.
We have
examined the provisions of the act and the rules framed and it appears
that, no doubt, when a proceeding is initiated by way of an application
for Registration of a mark the matter remains confined within the applicant
and the Registrar and with that and in view certain legal duties has
been cast upon the Registrar to satisfy himself about the register ability
of the mark before acceptance of any application for advertisement in
the Trade Mark Journal under Section 15. If the mark applied for offends
any of the provisions of the Act particularly the provision of section
8(a) or 10 of the Act, the Registrar will refuse the registration and
that is why rule 23 enjoins a duty upon the Registrar to cause a search
amongst registered marks and the handing applicants for the purpose
of ascertaining whether they are on record in respect of the same goods
any marks identical with the mark sought to be registered and the Registrar
may cause the search to be renewed at any time before acceptance of
the application.
The contention
of the appellant is that the Registrar could suo motu make the search
and reject the application but he had no authority to allow a third
party to enter appearance in the matter at that preliminary stage. On
a perusal of the Rules it appears that the rule does not provide for
the appearance of a third party. But a definite duty is cast upon the
Registrar to make a search to see if such mark has already been registered
or not. In the present case the Registrar failed to discharge that legal
obligation and the respondent No. 1 by filing an application simply
brought to the notice of the registrar that the mark applied for by
the appellant is already registered and he is the owner of that registered
mark. At this stage the registrar could himself reject the application
by himself after hearing the appellant. But without doing that what
he did is that after issuing a show cause to the appellant he rejected
the application of the appellant after hearing both the parties.
Now the
pertinent question is if the Registrar has committed any substantial
error of law by allowing the third party to enter appearance. The appellant
could not refute the allegation of the respondent No. 1 that the mark
applied for by the appellant is identical with the registered mark of
the respondent No. 1 and it is not denied by the appellant. On this
ground alone the appellant is not entitled to get the registration as
it offends the provision of section 10 (1) of the Act and it was the
primary responsibility of the Registrar to address that aspect of the
case. But for reasons best known to him, he failed to discharge his
duties properly. It appears that the registrar awoke from his long sleep
and realised that by accepting the application for advertisement he
has committed an illegality. It was also found that the respondent No.
I had already served a legal notice upon the appellant for copying their
Registered mark.
Now it
is to be seen if the Registrar has the power to rectify his own error.
On a perusal of the provisions of the Act it appears that even after
the acceptance of an application the Registrar may still refuse the
registration on the ground that the application has been accepted in
error. This power is vested in the Registrar under sections 14(3) and
16(1) of the Act and there is no dispute between the parties on this
point. On a perusal of section 14(3) of the Act it appears that the
Registrar has been given the power to rectify any error committed by
him earlier. Similar power has been given to him under section 16(1)
as well. This power vest with in the Registrar is akin to the power
vest with conferred upon a Civil Court under section 151 of the Code
of Civil Procedure.
On a perusal
of the Act it appears to us that the Registrar has ample power to rectify
or correct any error committed by him by revising or setting aside the
earlier illegal order. In the instant case we find that the registrar
most illegally accepted the application and accepted the same for advertisement
in the Trade Mark Journal and that error of the Registrar was brought
to his notice by respondent No. 1 when the Registrar after hearing both
the applicant and the owner of the Registered mark passed the impugned
order.
Result
Since admittedly the Registrar is invested with the power to rectify
an error, he did not commit any illegality in the instant case in correcting
his earlier mistake after hearing both the interested parties. In the
facts and circumstances of the case the presence of the respondent No.
1 did not vitiate the impugned order and the appellant has not been
prejudicial in any way as he had all the opportunities to place his
case and admittedly the mark applied for by the appellant is identical
to the registered mark of the respondent No. 1. The result of the above
discussions should be that the appeal should be dismissed. Accordingly
the appeal is dismissed with a cost of Tk. 5,000/- only.
Advocate
Mr. Md. Ismail Miah and Advocate Mr. Md. Zahirul Islam for the appellant.
No one for the respondent.
