ORDER SHEET
IN THE HIGH COURT OF SINDH, KARACHI
J.M No.27 of 2009
Date Order with signature of
Judge
Date of hearing: 7.10.2010
For hearing of CMA-2926/2010 & CMA-10499/2009
Petitioner: Royal PVC (Pvt) Ltd.
Respondents: Registrar of Trade Marks and another
Ms.Shazia Tasleem advocate for the petitioner.
Mr.Saleem Ghulam Hussain advocate for Respondent No.1.
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This petition is brought under Section 73 of the Trade Marks Ordinance, 2001 for revocation of trade mark “Royal Pvc Pipe”, (hereinafter referred to as “the Ordinance) with the following prayer:
“That for the sake of justice, equity, fair play and for the purity of the Trade Mark Register, the entry of registration No.84678 in Class-17 for trade mark Royal PVC Pipe may completely be expunged from the Register as the same is in contravention of the provisions of section 73 of the Ordinance”.
The brief facts of the petition are that the petitioner established its business in the year 1990 and engaged in the business of manufacturing, distributing and selling of Unplasticized Poly Vinyl Chloride (UPVC) pressure and non-pressure pipes. In order to distinguish the goods, the petitioner uses trademark “Royal PVC Pipes” which is well-known trade mark and for its protection, the petitioner obtained registration in respect of goods falling in Class-17 of International Classification from Trade Mark Registry, Government of Pakistan which is intact and valid. It is further stated in the petition that the petitioner has spent substantial amount, time and labour to promote its product under the trade name “Royal”. It is further stated that the petitioner has learnt that respondent No.2 has got the trade mark “Royal PVC Pipe” registered with respondent No.1 in Class-17, under Registration No.84678 dated 3.12.1984 and according to petitioner’s knowledge, the aforesaid mark was never used by the respondent No.2 in Pakistan even after the lapse of 25 years from the date of its registration. It is further alleged that the petitioner is using the trade mark Royal for PVC pipe since 1989 as such the existing and future business would be affected if the entry of the impugned mark “Royal” in the name of respondent No.2 remains on the Register.
The respondent No.1 and 2, both have filed applications under Section 73 (4) of the Ordinance in which it has been stated that this court has no jurisdiction to entertain and proceed with the matter. An application for revocation of the trade mark can only be filed by an interested person to the Registrar and no direct application can be filed in this court, unless the proceedings concerning the trademark in question are pending in this court. Since, on the same subject-matter, no case regarding the same trademark is pending adjudication in this court, hence, no petition could be filed by the petitioner directly in this court under sub-section 4, Clause (a) of Section 73 of the Ordinance. The crux of the application is that the petition is barred under Section 73 of the Ordinance and liable to be dismissed.
Learned counsel for the respondent No.1, argued that the jurisdiction to entertain the petition for revocation of trademark lies with the Registrar and no direct petition is maintainable in this court and he reiterated that no litigation or dispute is sub-judice in this court permitting the petitioner to file the direct petition in this court without availing the appropriate remedy provided under the law. He has also referred to Section 116 of the Ordinance, which provides the option of making applications either to the High Court or District court or Registrar but the provision for applying directly to this court is always subject to the pendency of suit or proceedings concerning the trademark in question before the High Court or a District court, which is a mandatory qualification for direct approaching this court instead of Registrar Trade Marks. The learned counsel for the Respondent No.1 referred to following books:-
1. Volume 1 (Judicial Review of Publications page 423) authored by Justice (R) Fazal Kareem, former learned Judge of Supreme Court of Pakistan in which excerpt from the judgment reported in the case of Sukhlal vs. Tarachand (1905), 33 Cl. 68 (F.B) has been quoted with the words that a court cannot adjudicate upon a subject-matter which does not fall within its province as defined or limited by law, this jurisdiction may be regarded to be essential, for jurisdiction over the subject-matter is a condition precedent to the conclusion of authority over the parties and if a court has no jurisdiction over the subject-matter of the controversy, consent of the parties cannot confer such jurisdiction and judgment made without jurisdiction in such a case is absolutely null and void.
2. Interpretation of Statutes 7th Edition (1984 N.S. Bindra) 661 in which it is clearly mentioned that when an affirmative direction is followed by a negative or limiting provision, the negative or limiting provision makes the statutes mandatory (Annotation from matter of Douglas, 49 N.Y. 42 cited by Frances, J. McCaffrey, 109). Another annotation is taken from the case of (Rama Chandra Rao vs. Lakshaminarayana Sastri, (1963) 2 Andra W R 235) which provides that statutory provisions which abridge right and are declared to be mandatory are to be strictly construed.
In rebuttal, Ms. Shazia Tasleem, the learned counsel for the petitioner argued that under Section 73 of the Ordinance, an option has been given to the petitioner to file petition for revocation of the trademark either in the High Court or to the Registrar. She focused her arguments on the word “may” used in the sub-section (4) of Section 73 of the Ordinance. The learned counsel, however, admits that except this petition, there is no other case pending in this court concerning the said trade mark between the same parties or otherwise. The learned counsel argued that the word “may” used in the aforesaid section is discretionary and enabling word and unless the subject-matter shows that the exercise of power given by the provision using the word “may” always intended to be imperative for the person to whom the power was given. Use of word “may” in statute in plain reading is to give discretion to the public authorities to act in their option in the manner in which they deem it proper. The learned counsel further argued that it was not mandatory for the petitioner to first approach the Registrar for the revocation of the trademark and the petitioner has rightly exercised an option for invoking the jurisdiction of this court. In support of her arguments the learned counsel for the petitioner relied upon the following cases:
1.2003 CLD 1052, (M/s Feroze Sons Private Limited vs. Dr. Col. (Retd.) K.U.Qureshi). This matter pertains to section 39 of the Copyright Ordinance 1962 in which it was held that use of expression “may” is permissive and does not make it obligatory for an author to get the copyright registered.
2.2007 CLD 143, (Port Qasim Authority vs. Official Assignee of Karachi). This matter pertains to the admiralty jurisdiction of High Court Ordinance 1980 in which the learned single judge of this court observed that use of expression “any party may” in Rule 731 of Sindh Chief Court Rules (O.S) made it clear that any proceedings initiated in rem, relief of arrest of property (ship) might or might not be sought. Relief of seeking arrest of a ship was optional.
3.PLD 1963 SC 704, (Badrul Haque vs. Election Tribunal, Dacca). In this matter, the honorable supreme court held that the fundamental rule of interpretation to which all others are subordinate is that a statute is to be expounded according to the intent of them that made it.
4.PLD 1985 Karachi 132, (M/s Universal Brushes Limited vs. Superintendent Central Excise and Land Custom). In this matter, it was held that it is a well-settled principle of interpretation of statutes and documents that in case of ambiguity reference can be made to the other relevant portion of statute or document.
5.PLD 1988 Lahore 49, (Malik Ghulam Mustafa Khar vs. Pakistan and others). In this matter, it was held that statutes must be interpreted according to the intention of the legislature and if the words adopted therein are clear and unambiguous, these should be expounded in their natural and ordinary sense. For expounding an act not only its words are to be considered but the intent of the legislature may also be gathered from the cause and necessity of making the Act.
6.PLD 1984 Karachi 503, (Karachi Pipe Mills Limited vs. Sindh Labour Appellate Tribunal). In this case, the learned full bench of this Court held that first object of Court should be to discover intention of the legislature and such intention was to be gathered from the words used in the statutes or instrument itself. Rule of interpretation should be in aid to discover legislative intention behind an enactment. Where words are plain and unambiguous, intent could be best judged by giving full effect to ordinary grammatical meaning of those words.
7.1989 SCMR 1892, (Pakistan Burma Shell vs. Nasreen Irshad). In this matter, the honorable supreme court held that where the law takes notice of a particular situation and makes a provision of it, then the legislative intent must be given effect to and respect it.
Learned counsel for the petitioner concluded her arguments that the petition is not barred under Section 73 of the Ordinance and rightly moved in this court directly.
After hearing the arguments, I have reached to the conclusion that under Section 73 of the Ordinance, an explicit precondition has been provided for the revocation of registration. Sub-section (1) of Section 73 of the Ordinance provides the grounds for revocation and under sub-section (4), procedure for moving an application for revocation has been provided. Sub-section (4), clearly provides that an interested person may apply for revocation to the Registrar. However, in clause (a), it is further provided that if proceedings concerning the trade mark in question are pending in the High Court or a District Court, the application shall be made to the High Court or as the case may be to the District Court. In the same sub-section, clause (b), further gives powers to the Registrar to refer to the application to this court or district court at any stage of proceedings. The purpose of this clause shows that if at any stage of proceedings before the Registrar, it comes into his knowledge that any proceedings are already pending in this court or district court concerning the same trade mark, he may refer to the application to this court or district court as the case may be. The word “may” has not been used under Sub-section (4) in the context to confer an option to the interested party either to move application to the Registrar or the High Court for revocation, but it only gives a right to apply so that any interested person who wants to file revocation, he may file application to the Registrar for revocation proceedings. The precise remedy provided under the law for revocation is the forum of Registrar and direct application for revocation can only be moved in the High Court in exceptional circumstances where the proceedings concerning the trade mark in question is pending in the High Court, therefore, the argument of the learned counsel for the respondent No.1 that no direct application can be filed in this Court seems to be logical while the arguments of the learned counsel for the petitioner that use of word “may” is merely directory and law gives an option to interested party either to move revocation application to the Registrar or the High Court is not well-structured or lucid argument for the plain reasons that for direct application in this court, pending proceedings concerning the trademark in question is a condition precedent. Section 116 of the trademark Ordinance 2001, further clarifies the position in unambiguous terms that where under the Ordinance, an applicant has the option of making an application either to the High Court or a District Court or the Registrar, the application shall be made to the High Court or as the case may be the District Court if any suit or proceedings concerning the trademark in question are pending before the High Court or a District Court.
The case law relied upon by the learned counsel for the petitioner hardly gives any help and assistance to the case of the petitioner rather it helps the cause of respondent No.1 who moved application under Section 73 of the Ordinance. Mostly the cases relied upon by the learned counsel for the petitioner relating to old age principle of interpretation of statutes in which it was held that statute is to be interpreted according to the intent of them that made it. In one case, it was held that first object of Court should be to discover the intention of the legislature, hence such intention was to be gathered from the words used in statute or instrument itself. Rule of interpretation should be in aid to discover legislative intent behind an enactment. In the case reported in 1989 SCMR 1892, it was held by the honorable supreme court that where the law takes notice of a particular situation and makes a provision of it, then the legislative intent must be given effect to and respect it.
In my view there is no ambiguity under Section 73 of the Trade Marks Ordinance 2001 and this special law is very clear with specific provision, therefore, an application for revocation should have been filed before the Registrar Trade marks and not in this Court. Court is bound to act in accordance with the procedure provided by law. Any deviation therefrom, may result in refusal to exercise of jurisdiction or the exercise of jurisdiction not vesting in the court. It is the duty of court to interpret the law as it stands, yet it is well recognized principle of the interpretation that if possible, a statute must be interpreted in such a manner as would make it workable. It is cardinal principle of interpretation that redundancy must not be attributed to the legislature. Each word used in statute is to be read as integral part thereof, carrying the meaning if in the circumstances not impracticable which is assigned to it in the ordinary parlance. Where general obligation is created by a statute and a specific statutory remedy is provided, that statutory remedy is the only remedy. It is also well settled principle of interpretation that where the legislature has in a special Act laid down particular conditions for the exercise of a power by the court, the court is not justified in disregarding those conditions and holding by reference to a general Act that it has powers beyond those given by the special Act.
In my view, it is abundantly clear that under Section 73 of the Ordinance, no direct application can be moved in this court for revocation of any trade mark, unless the proceedings concerning the trademark in question are pending before this court. At this juncture, I would also like to point out Rule 68 of Trademark Rules 2004, in which, a proper mechanism and procedure for applying revocation, invalidation and rectification has been provided with specific “Form T.M.26” which is required to be filed by an interested person for revocation of trade mark together with a statement of the grounds on which the application is made.
For the foregoing reasons, C.M.A.NO.10499/2009 is allowed, petition is dismissed. However, the petitioner is at liberty to move appropriate application for revocation of registration if any, to the Registrar Trade Marks.
Since the petition has been dismissed, all pending applications have become infructuous.
Karachi: Judge
Dated.29.12.2010