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Petitioner: ADIDAS SALEMON VS Respondent: ABDULLAH ISMAIL and others
Court Name: Sindh High Court Judge(s): Shabbir Ahmed Title: ADIDAS SALEMON vs ABDULLAH ISMAIL and others Case No.: Judicial Miscellaneous No,57 of 1988 Date of Judgment:1999-03-22 Reported As: 1999 YLR 832 Result: Application dismissed
JUDGMENT
JUDGMENT ' The petitioner seeks rectification of the Trade Mark registration by removal of Trade Mark "Adidas" registered as No, 6616 and entered in Class 3 on 19-9-1997. 2. The facts which have given rise to this application are that the petitioner claimed to be the real owner of the trade mark "Adidas" which the applicant have been using all over the world on a large scale in respect of wide variety of production including cosmetic preparations. The products of the petitioner are very popular all over the world and are recognized and sold by trade mark "Adidas" which is indication that the products bearing said trade mark emanate from the petitioner and none else. The petitioners have obtained registration of the trade Mark "Adidas" in many countries of the World including Pakistan. The particulars of some registration of Adidas in Pakistan have been shown as under: - {{TABLE}} R.No, Class Date of registration 69961 16 25-7-1979 51121 25 5-3-1969 56048 25 26-8-1971 76192 25 16-2-1982 62415 28 16-6-1975 {{TABLE}} 3. By virtue of above registrations of the trade mark "adidas" the petitioner have claimed exclusive right to use the trade mark in relation to goods covered by such registrations and other allied goods. The petitioners also filed an Application No:85351 in class 3, dated 7-2-1985 for registration
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of the trade mark "adidas" in respect of the goods falling in class 3. On examination, the Registrar, respondent No, 3, raised. The objection against the registration thereof on the basis of an already registered trade mark "adidas" under No,66160, dated 19-9-1977 in respect of "bleaching preparations, clearing, polishing, scoring and abrasive. Soap (toilets only), perfumes, cologne, heir lotions shampoo, after shave lotion and dentifrices. 4. The petitioners terming itself as "aggrieved persons" within the meaning of sections 37 and 46 of the Trade Mark Act (hereinafter referred to as the Act) have sought the rectification of said trade mark on the following grounds:-- (1) That the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used by them in relation of the goods covered by registration and there has in fact been bona fide use of the trade mark in relation to the goods covered by the registration by airy proprietor thereof for the time being up to a date one month before the date of the application for rectification. 2. That up to a date one month before the date of registration application for rectification, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there has been no bom. Fide use thereof in relation to the goods covered by the registration by any proprietor thereof for the time being (section 37 (ibid). 3. That the trade mark was registered without sufficient cause and the entry is wrongly remaining on the register of trade mark (section 46(2).. 6. The affidavits in support of the application for rectification have been filed by (i) Mahmood Ali, Managing Director, BEECHM Pakistan (Pvt.) Ltd. Karachi, (ii) M.A. Rehmatullah, partner of Sohalia Drug Store, Karachi, (iii) Nooruddin, a General Merchant, Karachi, (iv) Muhammad Yousuf, Partner of Pak Chemist and General Store, Karachi (v) Mubashir Azim, partner of Latif Construction, Lahore a (Wholesaler), (vi) Abid Hussain General Merchant, Lahore and (vii) Zafar Mahmood Dhain, a general merchant of Lahore. The facts stated in the affidavits of above said persons are on the point that the trade mark are not in use by the registered proprietor and goods under the trade mark "adidas" in clause (3) are not available in market. Bleaching proportions, soaps (toilet) perfumes, cologne, hair lotion, shampoo, after shave, lotions and dentines bearing trade mark "adidas" are not available in market. 7. The application has been opposed by the respondents except respondent No,3 (Registrar Trade Mark) who has not filed any objection but submitted the R&Ps of the application for Registration No,661,60 under class 3, dated 19-9-1977 under the Court order, dated 2-12-1988. 8. Respondent No,1 namely Abdullah Ismail in his counter-affidavit has denied that the trade mark was registered without sufficient cause or there has been no bona fid Use of the trade mark "adidas". The petitioner is not entitled to the relief against him for the reasons that the respondent No,1 secured the registration of trade mark "adidas" in his name under No,66160 in class 3, dated 19-9-1977, he later, on assigned the said trade marking favour of respondent No,2 who was registered as subsequent proprietor of the trade mark "adidas" as from 1-8-1980 by virtue of assignment deed. The respondent No,1 has been wrongly impleaded. The petitioner are not an aggrieved person. 9. Respondent No,2 Director, Khalid Saeed, filed the counter-affidavit, wherein the facts stated by respondent No,1 have been reiterated and it has been pleaded that respondent No,2 assigned the trade mark "adidas" on 20-8-1986 in favour of Syed Imran Shah through deed of assignment, dated 28-8-1986. The registrar trade mark accepted the Form TN 24 and said Imran Shah is registered subsequent proprietor as from 20-8-1986. 10 Respondent No,4, namely Syed Imran Shah, in the counter-affidavit has maintained that he enjoys exclusivity in ownership of the trademark in question. M/s Kosmetic International are registered user throughout the territory of Pakistan vide Trade Mark Licence agreement, dated 17-1-
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1987, and respondent No,3 vide letter, dated 16-10-1988 has, accepted Mears Kosmetic International as Registered user. The registered user obtained Excise Licence for manufacturing kosmetic and consequently advertised the retail prices for adidastooth the power, shampoo talcum powder on 16 -10-1988. Fixation of retail price was communicated to Superintendent Central Excise and Land Customs on 1-10-1988. The registered user commenced the production from 23-11-1988. Clearance memos. Gate bass, production referred for payment of excise printed advertisement have been filed with the said affidavit of Imran Shah as well. 11. Shahzad Mehmood, the General Manager of respondent No,5 (Kosmetic International), has filed counter-affidavit in opposition to the application for rectification. 12. He maintained that respondent No,4 (Imran Shah) enjoys exclusivity of ownership of trade mark and the respondent No,5 is "registered user" of the trade mark by virtue of trade mark agreement, dated 7-1-1987. On application, dated 2-2-1988 Report No,090133, the respondent No,3 vide letter, dated 16-10-1988 accepted Messrs Kosmetic International as "registered user". Licence for manufacturing cosmetic was obtained- on 22-3-1988 from Government of Pakistan. Intimation for fixation of prices was given to Excise Department on 1-10-1988. The retail price was advertised as per Central Excise Rules on 6-10-1988, thereafter, the respondent No,5 commenced the production from 23-11-1988. On 3-3-1988 before filing of the present application, the respondent No,5 got the labels printed. The samples of the products i,e, tooth powder, talcum powder, shampoo were dispatched to various customers in Karachi, Lahore, Rawalpindi etc. First commercial production and sales of 'cosmetic under "Adidas" trade mark started on 23-11-1988. The memos. Gate pass, sales invoices, photos of hoardings were also annexed with counter-affidavit. It has been maintained that Cosmetic International is bona fide "registered user" and the petitioner are not aggrieved persons, who are engaged in different trade. 13. Rejoinder, to the counter-affidavit flied on behalf of the respondent No,5, has been filed by petitioner with permission of the Court vide order dated 14-10-1998 wherein they have denied the claim of Imran Shah, (respondent No,4) enjoyment of exclusivity in the ownership of the trade mark "Adidas" and assertion has been reiterated that the petitioner are true and bona fide owner of trade mark "Adidas" which is invented word, invented from the name of fonder of the petitioner's company ADI DASS LER, which is registered in Pakistan much prior to unauthorizsed adoption and registration of "Adidas" by respondent No,1 admitted by him while seeking the registration. The registered user., and licence agreement are based on forged and fabricated document only' to defeat the process of law, they have also disputed the date of application for registration of "user" under licence and maintained that formalities for rectification of registered user were completed much after the filing of application for rectification on 26-5-1988, only to defeat the title application. It has been denied that NA Printers printed the labels in March, 1988 as well as the assertion that Cosmetic International introduced "Adidas" cosmetic in Pakistan during March, 1988 (contents of D/12 filed with counter-affidavit of Shahzad Mehmood). They have also denied that samples were dispatched in the month of March, April, May, 1988 to various customers in Karachi, Lahore, Rawalpindi and other cities. It has been maintained that trade mark "Adidas" is known to the Pakistani Public since at least 1973, as the applicant is obtaining supplies of world renowned "Adidas" football from Pakistan. The petitioner was branded as official supporter of World Cup event of 1974. World Cup events have been extensively advertised and promoted through press media and television. Various documents, showing use of trade mark "Adidas" in relation to a wide variety of goods including class 3 goods have been enclosed. 14. The facts on the file of the Registrar are as follows:- That Abdullah Ismail obtained Registration No,66160, dated 19-9-1977 in respect of trade mark "Adidas" in class 3 for following claims.
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"Bleaching preparation, cleaning, polishing, scouring and abrasive preparation, soap (toilets only), perfumes, cologne, hair lotion shampoo, after shave lotion and dentifrices. The objection was raised under section 6(1) and Trade Mark "Adidas" being a personal name, it was maintained that "Adidas" is not a personal name and mark is already registered under clause 25. Abdulla. Ismail was called upon to file meaning of the "Adidas" by way of affidavit. It was replied that the word "Adidas" is an "invented word" and has no meaning in the dictionary. The Trade Mark was assigned on lst August, 1980, in favour of Messrs Unichem Corporation (respondent No,2) through deed of assignments together with goodwill. Respondent No,2 assigned the trade mark in favour of respondent No, 4, by virtue of deed of assignment, dated 20-8-1996. Respondent No,4, Syed Imran Shah vide licence agreement dated 17-1-1987 appointed respondent No, 5 as "registered user" ' The application' for rectification was filed be petitioner on 26-5-1988. 15. The substantial question that are is in this case turn almost entirely upon consideration of section 37 of the Tra' Mark, which reads as under:-- "37. Removal from register and Imposition of Limitations on ground of non-use.--- (1) Subject to the provisions of section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, on the ground either. (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: ' Provided that, except where the applicant has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted also to register such a trade mark, the Tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2)Where in relation to any goods in respect of which a trade mark is registered: (a)the circumstances referred to in clause (b)of subsection (1) are shown to exist so far as regards non-use-of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Pakistan therwise than for export from Pakistan), or in relation to goods to be exported to a particular market outside Pakistan: and (c) a person has been permitted under subsection (2) of section 10 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to a High Court or to the Registrar, the Tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that, registration shall cease to extend to such use. (3) An applicant shall not be entitled to rely for the purpose of clause (b) of subsection (1) or of subsection (2) on any non-use of the trade mark which is shown to have been due to special
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circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates." 16. It is plain from reading of above provisions that the following grounds can be spelt out on which an "aggrieved party" can apply for taking off a registered trade mark from the register. 1(a) That applicant for registration has obtained registration without any bona fide intention to use it in relation to the goods, and (b) There has been no bona fide use of the trade mark in relation to those goods by any proprietor up to a date one month before the filing of application under section 37. (c) For a continuous period of five years or longer up to one month period to filing the application under section 37 of the Trade Mark was registered there was no bona fide use of the trade mark in relation to the goods for which it was registered. 17. The first objection that has been taken on 'behalf of the respondents by Mr. Yawar Farooqi, learned counsel, before me that the application is not maintainable inasmuch as the applicants were not "an aggrieved person" within the meaning of section 37. The maintainability of an action cannot depend on the merit of the claim but upon the standing of a party who makes a claim inasmuch as it must be asked whether there is a real interest which he is attempting to enforce. ' Who could be "aggrieved person" the observation of Bowen, Li in re Powell, TM (1) RPC, 195 can be referred. "Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register or persons who also would be substantially damaged if the mark remained." 18. In Powell v. Birmingham Vinegar Brewery Coy. The Yorkshir Relish case, (1894) A.C. 8, the House of Lords' considered the qualifications of "aggrieved persons" for the purposes of section 90 of the 1883 Act. Lord Watson, so far as material expressed himself as follows:-- "In my opinion any trader is, in the sense of the statute 'aggrieved' whenever the registration of a particular trade operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon the trade who might possibly have had occasion to use the mark in the course of his business. It is implied of course, that the person aggrieved must manufacture or deal in the same class of goods to which the registered mark applied and that there shall be a reasonable possibility of his finding occasion to use it. But the fact that the trader deals in the same class of goods and could use it is, prima facie, sufficient evidence of him being aggrieved which can only be displaced by the person who registered the mark upon whom the onus lies, showing that there is no reasonable probability that the objector would have used it, although he was free to do so. ' In Wright Crossley and Coy's Trade Mark 15 R.P.C. 377 Rigby, L.J. Said with regard to the last mentioned case. ' I will only add that I have carefully considered the passages cited from the Yorkshire Relish case in the House of Lords, and so far from assenting to the statement that the mere fact that a man is engaged in the same trade is ,sufficient to make him a person aggrieved, I think it is carefully guarded against in the very passages in the judgment which has been cited." ' In National Bell Company v. Meta Goods Manufacturing Company AIR 1971 SC 898, the expression "aggrieved person" has been illustrated as follows:-- "The expression 'aggrieved person' has received liberal construction from Courts and includes a person who has, before registration, used the trade mark in question as also a persons against whom an infringement action is taken or threatened by the proprietor of such mark." 19. The learned counsel for the petitioner has referred the following cases, herein the term "aggrieved person" has been illustrated and view has been expressed that it should be given a liberal interpretation.
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(i) Sindh Match Works (Pvt). - Ltd. v. Deputy Registrar of Trade Marks 1991 CLC 47. (ii) National Disnfeclant Company v. National Detergent Ltd. PLD 1983 Karachi 402. (iii) Chiswich Product Ltd. v. The Registrar of Trade Marks, Karachi, PLD 1975 Karachi 421. 20. The petitioner 'branded itself as "aggrieved person" as its application for registration of mark "Adidas" was opposed by Registrar on the ground, the Mark was already registered in class 3. The petitioner has to establish use of said mark in Pakistan in the same class as the person aggrieved must be engaged in manufacturing or deals in the same class of goods. The applicant claimed registered proprietor of the mark in classes 16, 25 and 28-, i,e, paper printed materials, periodical etc. Sports goods, sports shoes and sportswear etc. Though it has been pleaded that it deals in cosmetic preparation but no evidence has been led to prove that the petitioner's goods in class 3, were available in Pakistan market when application for rectification was moved. An attempt has been made to show that the petitioner is marketing the goods in class 3, by presenting cash memos from Al Fatah, Liberty Market, Lahore for "Adidas" Deo Sprey body Spray and Sports fresh, dated 6-7-1998 but the same is not of crucial date. Other documents rare Advertisement, registration of trade mark in class 3 in foreign country, same will not make the petitioner as "person aggrieved" under the provisions of section 37 of the Act, applying above principles the petitioner is not and "aggrieved person" and has no locus sfandi to file application under section 37. 21. The learned counsel contended that the respondent No,1 has obtained the registration of the Mark without having any bona fide intention to use the same in respect of the class of goods for which he obtained the registration. He also contended that the word "adidas" is an invented work from the name and - surname of the founder of the petitioner firm. Adi Dass LER. He further contended that the respondent had the knowledge that it is a German term and the petitioner are the inventor but obtained the registration claiming its proprietor with prior knowledge that same is on registrar in the name of petitioner in other class of goods. 22. What the expression "invented word" means perhaps standing interpretation is contained in the words of Mr. Justice Parker in Philippart v. Williams Whitely Ltd. 1908) 2Ch 274 at Page 279. "To be an invented words within the meaning of the Act a word must not only be newly coined, in the sense of not being already current in the English Language, but must be such as not to convey any meaning, or at any rate, any obvious meaning, to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has been assigned to it". 23. The other side has not disputed the stand taken by the petitioner that word "adidas" is an invented word of German origin. 24. Section 37 contemplates that the trade mark be removed if there was no bona fide intention on the part of the applicant for registration that it should be used in relation to the goods in question and that there has in fact been no bona fide use up to a date one month by any proprietor, before the date of rectification application, a continuous period of five years or longer has elapsed during which there has been no bona fide use. The first class of cases is covered by clause (a) and the second class by clause (b) of section 37(1) 25. The expression "bona fide intention to use by applicant for registration" and "bona fide use by any proprietor" used in section 37, are of much significant and convey that the bona fide intention to use by applicant for registration at the time of registration, whereas, bona fide use by any proprietor, it encompass applicant and assignee of the mark. 26. The learned counsel for the petitioner has argued before me that on the material brought on record, it can be safely concluded that there has been no intention on the part of the applicant for registration. He contended that the respondent from the day of registration till he assigned the mark to 27. Respondent No, 2 viz. From 19-9-1997 to 1-8-1980, has not used the trade mark. This fact is sufficient to demonstrate that he has no intention to use the same.
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28. It is not possible to obtain direct evidence of intention, which can only be inferred from conduct. The word "intention" in clause (a) of section 37(1) connotes a present and definite intention at the date of application for registration. The absence of such intention may be inferred when there has not been any use of the mark for years after its registration. On the basis of material available I am persuaded to conclude that there was no bona fide intention on the part of the respondent to use the trade mark. 29. The learned counsel for the petitioner further contended that the petitioner has been successful in establishing that in fact there has been no bona fide user by any proprietor of the trade mark up to one month prior to the filing of the rectification application. He further contended that there has been no bona fide use for five years proceedings one month before the filing of the application. 29. The dates, which are relevant to examine this contention are the date of application for rectification i,e, 26-5-1988. One month before the application i,e, 26-4-1983 and preceding five years i,e, 26-4-1983. The burden is on the petitioner to establish that there has been no bona fides user of the trade mark upto one month before the filing of application and there has been no bona fide use by any proprietor for a period of five years or longer, at least between the period between 26-4-1983 to 26-4-1988. There has been no user of the trade mark by respondents Nos.1 and 2, right from 19-91977 till second assignment i,e, 20-8-1986, in favour of respondent No,4 Syed Imran Shah. ' Bona fide user of the trade mark had been claimed by respondent Imran Shah and Cosmetic International. 30. Respondent Imran Shah in his counter-affidavit, has stated that he enjoys exclusivity in the ownership of the trade mark who has licensed the said trade mark for user in favour of cosmetics International by licence agreement, dated 17-1-1987. 31. Cosmetic international obtained central excise licence concurrently advertised the retail prices for "adidas" tooth powder Shampoo and talcum powder on 6-10-1988. Fixation of retail prices was communicated to Superintendent Excise on 1-10-1988. The production commenced…
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