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Petitioner: Gallup Business Research Services (Pvt.) Limited VS Respondent: Registrar Of Trade Marks and another
Court Name: Sindh High Court Judge(s): Syed Hassan Azhar Rizvi Title:Gallup Business Research Services (Pvt.) Limited vs Registrar Of Trade
Marks and another Case No.: M.A. No. 11 of 2006 Date of Judgment:2019-11-11 Reported As: 2020 CLD 1404 Result: Appeal allowed Judgment ORDER SYED HASAN AZHAR RIZVI, J.---This appeal under section 76 of the Trade Marks Act, 1940 read with section 114 of the Trade Marks Ordinance, 2001, is filed by the appellant to challenge the order dated 12.04.2006 passed by the respondent No.1, whereby refused the appellant's Trade Mark Application No. 124363 for registration of appellant's trade mark "GALLUP" in class 16, accepted Opposition No.56/1999 filed by Respondent No.2 and allowed its Trade Mark Application No.129970 for registration of the same mark. 2. The brief facts of this case are that the appellant is a private limited -compan y incorporated in Pakistan. The dispute involves ownership rights of trademark "GALLUP" in Pakistan in respect to Class 16 of the international classification of goods. The parent organization of the appellant, Pakistan Institute of Public Opinion (PIPO), introduced public survey and public opinions research in Pakistan. PIPO and its affiliate organization Gallup Pakistan (Pvt.) Limited and the appellant are the only members of Gallup International Association in Pakistan and are the exclusive users of trade mark GALLUP in Pakistan till to date. In 1981, PIPO became the exclusive Associate Member of Gallup International in Pakistan. In 1984, PIPO became the exclusive full member of Gallup International in Pakistan and PIPO and its affiliates have been consistently using the trademark GALLUP and 'Gallup Pakistan together with Pakistan Institute of Public Opinion since at least 1981. Gallup Pakistan has been existing for nearly forty years and has been the exclusive user of the trade mark "GALLUP" in Pakistan. The joint names of Gallup Pakistan and Gallup Organization in the International Gallup Directories illustrate that respondent No. 2 never claimed any right for use of name "Gallup" in Pakistan nor objected to the use of the said name by the appellant and its affiliates in Pakistan. Respondent No. 2 accepted throughout the right of Gallup Pakistan to use the name "Gallup" in Pakistan exclusiv ely. The appellant on 07.5.1994 filed an Application No. 124363 for registration of its trademark "GALLUP" in Class 16 and the application was accepted for advertisement.
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Respondent No. 2 filed Opposition No. 56 of 1999 alleging that it was the proprieto r of Trade Mark "GALLUP" and also disclosed pendency of its Application No. 129970 dated 02.5.1995 for registration of same mark in same class. Respondent No. 2 has failed to file a single document showing use of the name "Gallup" by them in Pakistan. The appellant filed a counter statement to the opposition along with documentary evidence and affidavit supporting such counter statement. Respondent No. 2 never filed any reply or rejoinder to the counter-statement of the appellant the contents of the, appellant's counter statement therefore remain un-rebutted till date. The respondent No.1 settled the following issues:- (1) Who is the proprietor of the trademark "Gallup" in Pakistan? (2) Whether use of the trademark "Gallup" in Pakistan by the Appellant would entitle it to secure registration in its name? (3) Whether the adoption of the trademark "Gallup" by Applicant constitutes honest concurrent user? 3. After settlement of Issues, the respondent No. 1 (Registrar) through the impugned order accepted the Opposition of respondent No. 2 and allowed respondent No. 2's application for registration of trade mark "GALLUP" whereas, the appellant's application was refused. The appellant challenged the said order through the instant appeal on the plea that the impugned order is not tenable in law and is liable to be set aside with the following prayer:- "In view of the above it is most respectfully prayed that Impugned Order may kindly be set aside and respondent No.1 be directed to register the Trade Mark "GALLUP" in favour of the appellant and refuse the application filed by respondent No.2. The Impugned Order may kindly be suspended during the pendency of this appeal. Cost of the appeal may also be granted. Any other relief to the appellant which this Hon'ble Court deems fit in the circumstances of the case may also be granted." 4. I have heard the arguments of the learned counsel for the appellant and learned counsel for the respondent No.2 and perused the material available on record. 5. Mr. Ijaz Ahmed, learned counsel for the appellant has argued that the impugned order has been passed without taking into consideration the fact that the appellant is the exclusive user of trademark "Gallup" in Pakistan, which is established by admitted documents. He has further argued that it is an established fact that the name of the appellant or its parent organization has appeared several times in Gallup International Directories along with and to the knowledge of respondent No.2. He has also argued that respondent No.2's use of this trademark anywhere else in the world is irrelevant as respondent No.2 has failed to prove any work carried out by them in Pakistan. He has urged that the entire project of Gallup Pakistan was started by Dr. Ijaz Shafi Gilani upon encouragement of Dr. Gallup since 1978. He has also urged that Dr. Gallup and scholars from their respe ctive countries established "The International Association of Public Opinions Institutes" which was later conve rted into "Gallup International Research Institutes and thereafter Gallup International Association was incorporated, which took over the business of Gallup International Research Institutes and Gallup International only makes one member in every country , these members also had the right to use the name "Gallup" in Dr. Gallup's own life time as well as afterwards. He has argued that the Appellant is honest, concurrent user in terms of international usage and reputation of the trademark "Gallup". He made reference to various local and international publications to show the reputation of the appellant as Gallup, which reads as under:- (1) Publication in Pakistan. (2) Subscriber list of Political W eather Report as referred. (3) Pakistan Television V ision Programme. (4) List of Reports and Clients of Gallup Pakistan 1980-2005. (5) 3-day International Marketing Congress, Marcon 99 held at Karachi. (6) Award of Excellence for the year 2003. (7) MRSP Newsletter . (8) CBR Survey documents and magazine advertisements.
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(9) Herald News clippings. International reputation of the Appellant as Gallup Pakistan in: (1) Gallup International Conferences. (2) Gallup International Directories. (3) Gallup V oice of the People 2006. (4) ESOMAR directory . (5) Article in Asian Survey 1988. (Asian Survey was at the time America's leading academic journal on Asia, published by the University of California Berkeley). (6) The Economist Magazine (U.S. Edition) dated May 22, 1999. (7) The Economist dated September 18, 1999. (8) The Economist dated July 14, 2001. (9) The Economist dated October 8, 2001. (10) Newsweek dated October 18, 2001 (reputation is distinct for Respondent No. 2's reputation). (11) Newsweek (Atlantic Edition) dated October 22, 2001. (12) Asian Survey 2001. (13) Time Magazine dated April 29, 2002. (14) Gallup International Letter dated March 12, 1984. (15) Telefax Transmission by Asian Mass Communication .Research and Information Centre dated February 6, 1992. (16) Opinion Research Business London letter dated December 16, 1994. (17) lope Test letter dated May 1995. (18) Gallup A/s Denmark dated September 14, 1995. (19) V ilstrup Research. Denmark letter dated May 1996. (20) NIPO letter dated February 27, 1996. (21) TNA (TAYLOR NELSON AGB) letter dated June 16, 1995. (22) Gallup London U.K. letter dated September 22, 1994. 6. Learned counsel for the appellant has urged that the impugned order is a non-speaking order and does not contain any reasoning at all for arriving at the conclusion. It merely reproduces the contention of the parties and nothing more as the only discussion made by the Registrar does not contain any reasoning and completely ignores the evidence produced by the appellant. He has urged that Registrar has failed to mention a single document filed by the appellant. Therefore, the impugned order has been passed by completely ignoring the relevant facts and evidence. In this regard he made reference to Section 10(3) of the Trade Marks Act 1940 clearly states that disputed issues relating to title of a trademark cannot be decided without proper evidence. Respondent No. 1 has neither himself recorded the evidence nor referred the parties to a competent civil court for decision of the disputed issues and in absence of proper evidence this Court in appeal cannot properly appreciate the issues involved in the matter . For convenience sake, section 10(3) of the Trade Marks Act, 1940 is reproduced below:- "10(3). Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other , in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court." 7. Learned counsel for the appellant has urged that if this issue is to be decided vis--vis worldwide use of the name, then the Court would also have to look at the details of global dispute between Gallup International Association ("GIA") (of which the Appel lant is a member) and Respondent No. 2 (Gallup Inc.). GIA, which is repeatedly mentioned in Appellant's Affidavit submitted before the Registrar . He has also urged that GIA is an association of independent Gallup companies from all over the world and Respondent No. 2 remained a member of GIA starting in the late 1940s. But in the early 1992, Respondent No. 2 had a fallout with the GIA and since then, it has been litigating against GIA members in various jurisdictions of the world. He has further urged that the dispute between Respondent No. 2 and GIA over worldwide use of the name is exactly the kind of complex factual
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controversy which attracts the scope of section 10(3) of the Trademarks Act (and its successor section 17(6) of the Trademarks Ordinance, 2001). It cannot be decided by the Registrar using affidavits only, and should go to the civil courts for proper determination. He has contended that the core competence of the Registrar set up under the Trademark Act is to determine disputes which are relatively simple and can be decided using affidavits only. However , determining the nature of a commercial arrangement between two foreig n entities - GIA and Respondent No. 2 all the way from 1940 till their fall-out in 1992, is well beyond the Registrar's scope. He has also contended that wherever the matter was properly tried by courts on the basis of evidence, respondent No. 2 lost the case. This includes, inter alia, South Korea, Japan, Netherlands, Switzerland and Czech Republic. After taking into account evidence about the long history of the GIA, domestic courts in these and many other countries came to recognize that Respondent No. 2 is just a rich American corporation which is trying to unfairly bag the fruits of the labor of independent scholars from all over the world. 8. Besides, learned counsel for the appellant has made reference to the earlier litigation between the appellant and respondent No.2 and stated that respondent No.2 filed a Case No.0 08-01577 WHA in the Court of Northern District of California (Gallup, Inc. v. Business Research Bureau (Pvt.) Ltd. Gallup Pakistan). However , the learned counsel has urged that appellant was not in a position to afford the very expensive legal fees for a full trial in the USA and in fact even the summary proce edings were conducted in person, as such, the appellant entered into a settlement agreement dated 30.09.2010 with respondent No.2 with only agreeing not to use the Gallup mark in the USA and to provide a disclaimer in respect of internet publications, written materials and interviews that the appellant was not associated with respondent No.2. He has also urged that appellant has in fact never intended to use the mark in the USA nor it has ever claimed an association with respondent No.2 except as a fellow member of GIA, until the time that respondent No.2 was a member of GIA. He has further urged that though the settlement agreement was not inconsistent with the legal position of the appellant, however , the appellant's rights with regard to the Pakistan proceedings i.e. the present case were completely protected in terms of Clause 8 of the settlement agreement, which reads as under:- "8. Trademark Rights in Pakistan. The restrictions and rights set forth in this Agreement are solely limited to the United States and its territories. This Agreement has no relation to, bearing on, or consequence regarding the Parties' rights to and use of the GALLUP mark in Pakistan or elsewhere, including but not limited to the Parties' participation in the case before the Registrar of Trade Marks at Karachi, captioned In the matter of Opposition No. 56/1999 to Application No. 124363 in class 16 for the Trade Mark GALLUP . The Parties make no representations in this Agreement regarding their respective rights, use, or ownership of the GALLUP mark in Pakistan. By way of this Agreement, Gallup does not authorize or consent to Defendants' use of the GALLUP mark in Pakistan or any other territory or country of the United States." 9. Learned counsel has next contended that no rejoinder was filed by respondent No. 2 to the appellant's affidavit in support of the counter-statement before the Registrar . He has contended that the appellant's contentions and documents produced remained unrebutted. In such circumstances respondent No. 1 (Registrar) had no basis to reject the same. He has further contended that respondent No. 2, in paragraph 10 of the Opposition No. 56 of 1999 had stated that respondent No. 2 is not aware of any use of the mark by the appellant, however , realizing that respondent No. 2's stance was not sustainable in view of the documents filed by the appellant, respondent No. 2 has now changed its stance and in parag raph 5 of the Counter Affidavit to the Injunction Application stated that the appellant was using the trade mark 'Gallup' as respondent No. 2's agent. Learned counsel for the appellant, therefore, prayed for allowing the instant appeal and setting aside the impugned order passed by respondent No.l. 10. Learned counsel for the appellant in support of his submissions, has placed reliance on the cases of Basic Trade Mark S.A. v. Kapur and Company (2004 CLD Karachi 1454) , Wella Aktiengesellschaft v. Shamim Akhtar (2006 CLD Karachi 1414), Cluett Peabody and Company Inc. v. Assistant Registrar of Trade Marks (1988 CLC Karachi 880), Indus Pencil Industries (Pvt.) Ltd. v. Crescent Pencils (Pvt.) Ltd. (1988 MLD 268), Sanjeda Bano v. Muhammad Saeed Jehangir (PLD 1987 Karachi 53), Solo Susice Narodni Podnik v. Sindh Match Works (Pvt.) Limited (1991 CLC Karachi 37), Pakistan Soap Factory v. Chittagong Soap Factory (PLD 1970 SC 460), Aktiebolaget Jonkoping Valcan, Swed en v. Registrar of Trade Marks, Kara chi (PLD
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1975 Karachi 478), Lallubhai-Amichand v. The Punjab Aluminium Factory , Gujranwala (PLD 1960 Karachi 545), Messrs Sadhana Ausadhalaya v. Messrs Rackitt, Colman, Chiswick Ltd. (PLD 1965 Decca 41), In The Matter of Applications by the Alligator Company and by the London Waterproof Company (Silkmac) Ld., (1958 R.P.C. 420), In the matter of Application by Brown Shoe Company Inc. (1959 R.P.C. 29), Levi Strauss and Co. v. The Assistant Registrar of Trade Marks (1987 MLD 466), Jehan Khan v. Province of Sindh and others (PLD 2003 Karachi 691), Excelsior Cotton Company v. Trading Corporation of Pakistan (Pvt.) Ltd. (2003 YLR Karachi 461), The Assistant Registrar of Trade Marks, Karachi v. Messrs Lakson Tobacco Company Ltd. (1992 SCMR 2323 ). 11. Mr. Shoaib Mansoor , learned counsel for the respondent No.2 while supporting the impugned order passed by respondent No.1 stated that after detailed deliberation the respondent No.1 refused the application of the appellant and allowed the opposition of responden t No.2 by applying the correct principle of law and keeping in view the precedents of the cases decided by the superior Courts in Pakistan and abroad. He has argued that the correspondence and documentary evidence filed by the appellant either at the Trade Marks Registry in Opposition Proceeding No. 56/1999 or before this honourable Court it is crystal clear that the appellant was a member of respondent No. 2. He has further argued that the appellant's use of the trademark "GALLUP" was subject to the permission of respondent No.2 after fulfilling the procedural requirements of the Gallup International Business Strategy , which did not give any right to the appellant to apply for the registration of the trademark "GALLUP" in its own name and filing of the application with the Trade Marks Registry under No. 124363 dated 20 March 1994 was illegal and blatant attempt on the part of the appellant to capitalize the proprietary right of the respondent No.2 in the trade mark GALLUP . 12. Learned counsel for the respondent No.2 has contended that the facts establish that the operation of business and use of the trademark "GALLUP" by the appellant was subject to the permissio n of the respondent No. 2 being its member and the Gallup Organization. He has contended that in accordance with section 74 of the Trade Marks Ordinance 2001, the use of the mark through license and/or permission does not give right to the licensee to capitalize the trade mark of its principal. Thus, the alleged use of the appellant inure to the benefit of the Licensor/Respondent No. 2. He has further contended that the appellant alleged that on 3 February 1997 he has obtained a letter of consent from Gallup International wherein it is stated that Gallup International has no objection whatsoever to the Application No. 124363 , in this regard it has been asserted that Gallup International from whom the appellant obtained a letter has no authority to issue such concerned as the respondent No. 2 holds the proprietary rights in the trademark 'GALLUP' across the globe. He has also contended that any purported letter of Gallup International is null and void in the eyes of law as Gallup International does not have any right in the trademark "GALLUP" or has any authority to issue such concerned letter to any member to seek registration in its name as the authority letter is nothing but to misguide this honourable Court. 13. Learned counsel for the respondent No.2 has further argued that the appellant has alleged that the Registrar has erred in concluding the matter and has wrongly refused registration of the mark "GALLUP", it has been submitted that the facts narrated by the appellant in the appeal are evident that the appellant was member/af filiate of the Gallup International whose Chairman was Dr. George Gallup the founder of Gallup Poll Survey . Therefore the decision given by the Registrar of Trade Marks after considering the documents available on record and arguments advanced by the learned coun sel was on the correct principles of law. Additionally , he has argued that the appellant had not filed an opposition to the application of the respondent No.2, which tantamount to accept the claim of the respondent No.2. 14. Learned counsel for the respondent No.2 has argued that the proprietorship of a trademark is acquired either by virtue of long and extensive use, or vide registrations. The Respondent No. 2 has secured registrations for the trade mark, GALLUP around the world and has also been carrying on its business over the seventy years and has therefore met both the above mentioned criteria. He has also argued that the appellant was member/af filiate of respondent No. 2 the adoption of the mark GALLUP by the appellant is dishonest and that Gallup Pakistan had prior knowledge of the proprietary rights of Gallup Inc.'s trademark "GALLUP ." He has also argued that the respondent No 2 also filed an action for infringement against the appellant in the United States District Court,
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Northern District, California for its GALLUP trademark and after the summons the Court were served, the appellant deliberately chose not to appear before the said court and as such a default judgm ent was passed in favour of the respondent No. 2 which judgment has also been provided to the Appellant. He has urged that the appellant was not authorized by Gallup Inc., the proprieto r of the trademark "GALLUP" worldwid e to obtain any registration in Pakistan of the trademark "GALLUP" in its name. He has further urged that in any event, throughout the world, Gallup Inc. is the registered proprietor of the trade mark GALLUP and as a general rule it does not authorize any affiliates or subsidiaries to apply for registrations of the trademark GALLUP in its names. As such the appellant has no justification as to why it has attempted to adopt the trademark of Gallup Inc. being used by it across the world over more than 50 years. In the end learned counsel has also urged that the use of the mark by any person with fraudulent intention does not vest right to him, and that dishonest adoption cannot be protected. 15. Learned counsel for the respondent No.2 in support of his submissions has placed reliance on the case of Cooper's Incorporated v. Pakistan General Stores and another (1981 SCMR 1039 ), Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant (1987 SCMR 1090 ), Abdus Salam and 2 others v. Crown Radio Corporation, Karachi (PLD 1973 Karachi 24), Societe De Fabrication Et. De -- Distribution De Parfumeri Et Cosmetique (Diparco) Societe Anonyme v. Deputy Registrar of Trade Marks, Government of Pakistan and others (PLD 1979 Karachi 83), National Detergents Ltd., Karachi v. Nirma Chemical Works, Gujrat State, India and another (1992 MLD 2357 ), Dabur India Ltd. v. Hilal Confectionery (Pvt.) Ltd. (PLD 2000 Kar. 139), Kabushiki Kaisha Toshiba v. Ch. Muhammad Altaf (PLD 1991 SC 27), Essa Engineering Industries (Pvt.) Ltd. v. Registrar of Trade Marks and another (2009 CLD 805), Javed Akhtar Chauhan v. JKS (Privates) Limited and others (2016 CLD 2260 ), Messrs Farooq Ghee and Oils Mills (Pvt.) Ltd. v. Registrar of Trade Marks and others (2015 CLD 1245 ), unreported judgment in the case of ALDO Group International AG v. The ALDO Shoes (H.C.A. No.309 of 2015), Allergan Inc. v. Milment Oftho -Industries and others (AIR 1998 Calcutta 261), In the matter of Vitamins Ld.'s Application for a Trade Mark (1956 RPC 1) and Calvin Klein Inc. v . International Apparel Syndicate cind others [FSR 1995 (515)]. 16. In rebuttal, Mr. Ijaz Ahmed, learned counsel for the appellant has urged that respondent No. 2 submitted that they were not aware of the use of the Gallup mark by the appellant, it has been submitted that this statement is contradicted by the several documents available on record. Furthermore, it is contrary to the stance taken by respondent No.2 in the present appeal. He has submitted that respondent No.2 and the appellant were members of GIA and continued to participate in its conference until the exit of respondent No.2 in 1992. He also submitted that respondent No.2 was therefore fully aware of the use of the mark Gallup during and after the life of Dr. George Gallup and has never taken any step to stop use of the same by the appellant in Pakistan. 17. With regard to the submission of the respondent No. 2 that it is entitled to global exclusive use of the trademark "Gallup", it is submitted that this submission is factually incorrect as apart from the USA, respondent No. 2 has mostly registered in the countries that had no significant history of public opinion surveys and accordingly registration in such countries cannot in any manner improve their chances of registration in Pakistan. He made reference to the foreign judgments, which clearly shows that in the countries where GIA members like the appellant are using the trademark "Gallup", the claims of respondent No.2 have been consistently rejected. 18. With regard to the next submission of the counsel for the Respondent No. 2 that the correspondence exchanged between Dr. George Gallup or respondent No. 2 and the appellant does not contain any express permission to allow the use of the name, it is respectfully submitted that there was no requirement of such permission since the members of GIA were allowed to use the name and accordingly the appellant's predecessor pursued membership of the GIA instead of seeking a separate permission to use the trademark…
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