Registered trademark deleted from trademark register for non-use

Facts
Decision

Facts

The appellant, Muhammad Ismail of Royal Enterprises, Lahore, filed two appeals at the Lahore High Court(1) after the registrar of trademarks had passed an order dated 8 May 2012 in favour of the respondent, Royal PVC (Pvt) Ltd, in the following cross-rectification proceedings involving the parties:

• Rectification 15/2010. The appellant filed for the cancellation of the respondent's ROYAL trademark (Registration 158845) on the grounds that:
  • the appellant was the prior proprietor of said trademark (Registration 84678), which had been used and registered as of 3 December 1984; and
  • the registration of the respondent's ROYAL trademark had been made in bad faith, without sufficient cause and to wrongly gain profit from the goodwill and reputation of the appellant's mark.

• Rectification 26/2011. The respondent filed for the cancellation of the appellant's trademark (Registration 84678) on the grounds of non-use under Section 73(1) of the Trademarks Ordinance 2001, which states that:

where the registration of a trademark may be revoked on the grounds that (a) within the period of five years following the date of completion of registration procedure, it has not been put in bona fide use in Pakistan and (b) the bona fide use has been suspended for an interrupted period of five years and there are no proper reasons for its non-use.

After examining the parties' pleadings and supporting documents, the registrar of trademarks deleted the appellant's ROYAL trademark on the grounds of non-use and retained the respondent's trademark in the register of trademarks.

The parties filed documentary evidence in support of their respective rectification applications, which ultimately decided the fate of the appellant's appeal.

Decision

The documentary evidence that the appellant provided was insufficient to prove its use of the ROYAL trademark. The respondent challenged the appellant's trademark registration under Subsections (a) and (b) of Section 73(1) of the Trademarks Ordinance, which cover the periods for proving the use of a trademark, and the appellant failed to provide proof of sales or the supply of products bearing the ROYAL trademark during the relevant periods of 1984 to 1989 (ie, the first five years from the date of completion of the registration procedure) and 2006 to 2011 (ie, the last five years from the filing date of the respondent's rectification application).

Conversely, the respondent filed extensive documentary evidence to show that it was registered with the Pakistan Standards and Quality Control Authority, the Water and Sanitation Agency Department and several other health departments in Balochistan, Khyber Pakhtunkhwa and Jammu and Kashmir for unplasticised polyvinyl chloride (UPVC) pipes bearing the Royal brand, which clearly proved that the respondent had complied with manufacturing requirements and was an approved contractor for the supply of UPVC pipes under the ROYAL trademark.

The most crucial documents that the respondent submitted were sales tax invoices, sale tax returns and export documents (including export invoices) for 2006 to 2011, which clearly mentioned the mark ROYAL, the value of the products and the sales tax paid thereon. Thus, the respondent filed important pieces of evidence that clearly supported its claim of being a bona fide manufacturer of UPVC pipes and user of the ROYAL trademark.

By contrast, the appellant failed to prove its use of the ROYAL trademark and as such was unable to establish that it was the aggrieved party. As a result, the registrar of trademarks rightly deleted the appellant's trademark and retained the respondent's.

In view of the above findings, the appellant's appeals were accordingly dismissed and the court upheld the registrar of trademarks' decision.

For further information on this topic please contact Seema S Mansoor or Sumera Feroz at Vellani & Vellani by telephone (+92 21 3580 1000) or email (seema.mansoor@vellani.com or sumera.feroz@vellani.com). The Vellani & Vellani website can be accessed at www.vellani.com.

Endnotes

(1) Muhammad Ismail v Royal PVC (Pvt) Ltd, (2018 C L D 766), 12 February 2018.