Trade Marks
Act, 1940

Section—15(2)

Trade Marks
Rules 1963, RuIe—30

The
date of advertisement of an accepted application for registration of a trade
mark, from which date the limitation period of four months for filing an
opposition is computed, means the date on which the advertisement was actually
published in the Trade Marks Journal and the date on which it was circulated
among members of the public for subscription.

The
registration of the mark, before expiry of the period of limitation for filing
an appeal, cannot be a ground for treating the instant appeal as infructuous.

Philip
Morris Products Inc. v. National Tobacco Co. Ltd. and another, 22 BLD (HCD) 227.

Ref:
Province of West Pakistan v. Muhammad Jaman PLD 1960 Kar. 908; Aktiebola Get
Jonkoping Vulcan v. The Register of Trade Marks PLD 1968Kar. 363.

Section—70
(c) and 80

Section
70(c) of the Act provides that the Registrar shall not exercise any power
vested in him by the Act or the rules made thereunder adversely to any party
duly appearing before him without (if required in writing within the prescribed
time so to do) giving such party and opportunity of being heard. The Registrar
rejected the prayer for adjournment solely on the ground that the appellant did
not appear before him in accordance with law as he did not file any power of
attorney or vokalatnama.

Section
80 of the Act provides that whereby or under this Act, any act other than the
making of an affidavit, is required to be done by any person, the act may,
subject to prescribed conditions or in special cases with the consent of the
government, be done in lieu of by that person himself, by a duly authorised
agent being either a legal practitioner or a person registered in the
prescribed manner as a Trade Marks agent. The application for time, as has
already been said, was not filed either by the person required to file the same
under law or by a duly authorised agent. The provisions of section 70(c) or 80
of the Act have no manner of application in the instant case. Section 70 (c)
could have come it into play had the opposition been duly filed and in case of
rejection or abandonment of such opposition but in the instant case extension
of time was sought for filing opposition and that too not by any duly
authorised person. Rule 76 of the rule framed under the Act empowers the
Registrar to extend time for doing act in any particular case under certain
circumstances. This rule apparently does not contemplate extension of time for
doing any act by a person who is not party to a proceeding or is not an
authorised agent of a party.

Nabisco mc,
U.S.A Vs The Registrar of Trade Marks, 21 BLD (HCD) 402.

Ref:
Anath Bandhu Guha and sons Ltd. through its attorney Md. Sirajul Huq Vs. Babu
Sudhangshu Shekhar Halder, in 42 DLR(AD) 1990 page 244.—Not applicable.

Section—73

Code of
Civil Procedure, 1908, Order 39 rules 1 and 2

The
pendency of an application for registration before the Registrar of Trade Marks
or even the granting of a provisional certificate of registration of the mark
does not debar a civil court in a suit for infringement of a trade mark from
passing an order of temporary injunction against the use of the mark where
there is the likelihood that the mark would deceive or cause confusion in the
minds of unwary purchasers, or passing off.

In
disposing of a prayer for temporary injunction against use of an alleged
infringing trade mark, in a suit for infringement of a trade mark, the High
Court should not take into consideration the registration of the alleged
infringing trade mark after institution of the suit, as the questions whether
the suit is maintainable and whether the registration is proper or not ate to
be decided at the time of trial and not at the time of hearing of temporary
injunction.

There
is no restriction against a person who obtained registration of a trade mark
prior to the registration of an alleged infringing trade mark from filing an
action for infringement against the person who obtained the subsequent
registration.

Abdul Mannan
Miah v. Md. Solaiman Miah, 22 BLD (HCD) 11O.

Ref:
48 DLR28; 50 DLR548; 1987 BLD (AD)130; 28DLR1171; Burneys Industrial and
Commercial Co. Ltd. v. Rahman Match Works PLD1983 Karachi 357; Flowerdale v.
Hale Electric (1949) 66RPC33; Berloi v. Bali (1970) RPC 469; 1984 SCMR 1024;
A.R.Gonga Dhara and Co. Nirmal and another v. Firmot Police Mallaih Rajeswar
and Co. AIR 1962 AP5IO.

Section—76

Since
the proceeding was at the stage of hearing, the registrar ought to have fixed a
date of hearing for disposal of the case giving notices to the parties. The law
enjoins that the registrar shall not exercise any power vested in him by the
act or rules adversely to any party duly appearing before him without giving
the parties concerned an opportunity of being heard. The registrar without
giving the parties a chance of being heard cannot dispose of the matter and
that is contemplated of section 70(c) of Act, 1940.

Nabisco inc.
U.S.A. v. The Registrar of Trade Mark & Another, 22 BLD (HCD) 640.

Trade Marks
Act [V of 1940]

Word and
device ‘Globe’ were declared common to trade by Pakistan authority.

Abdul Quayum
vs Taj Iron Industry 38 DLR 249.

Section 8—

If mere use
of the trade mark from an earlier date by the respondent were to satisfy the
requirements of section 8 of the Act without looking into the volume of goods
sold for a number of years by the respondent then there was no need to have his
mark registered at all.

Bally
Schutrabriken Ag, Switzerland vs Hosnara Begum 52 DLR 546.

Section 8—

In deciding
an objection the Registrar cannot go beyond the contents of the objection. He
did not commit illegality in rejecting the objection application as the grounds
taken in the objection are not tenable in law.

Bally
Schutrabriken Ag, Switzerland vs Hosnara Begum 52 DLR 546.

Section 8—

For the
purpose of registration under the Act, the Registrar should ordinarily consider
the user in this country to which the Act applies.

Bally
Schutrabriken Ag, Switzerland vs Hosnara Begum 52 DLR 546.

Section 8—

The
registrar may, consider the conduct of the applicant, the manner in which he
has used the mark and all the circumstances in deciding whether the mark is one
which is not to be protected.

Anil Kumar
Ghosh vs Shamir Kumar Ghosh 54 DLR 273.

Section 8(a)—

Registration
of their Trade Mark in foreign countries without the user of the same in
Bangladesh is of no relevance.

Bally
Schutrabriken Ag, Switzerland vs Hosnara Begum 52 DLR 546.

Section 8(a)—

Non user of
the Trade Markin Bangladesh for a statutory period disentitles one to raise any
objection whatsoever under this section.

Bally
Schutrabriken Ag, Switzerland vs Hosnara Begum 52 DLR 546.

Section 16—

Forthe
purpose of this section it is sufficient to show that two marks are so alike
that they are likely to deceive and cause confusion.

Anil Kumar
Ghosh vs Shamir Kumar Ghosh 54 DLR 273.

Section 10 —

This section
applies in cases where a party has established that its trademark has been
registered for description of the· goods and the other party has applied for
registration of the same trademark for the goods of same description.

Anil Kumar
Ghosh vs Shamir Kumar Ghosh 54 DLR 273.

Sections 10 & 46—

Registration
of identical or similar trade mark—Such registration in favour of two
persons—About the propriety of such registration the Register has to satisfy
himself and he may put conditions and limitations as he may think fit to
impose. In permitting identical trademarks he has to provide for some ways and
devices for protecting the interest of competing proprietors and the interest
of the public in general to save them from possible deception and confusion. In
the absence of fraud, there could be no direction under section 46 of the Act
with regard to registration of trade mark.

BCIC vs
Sattar Match Works 44 DLR (AD) 208.

Sections 10, 46 & 72—

Honest user
of a trade mark for a long time—Registrar fails to exercise jurisdiction to
dispose of the petition for registration of the trade mark—Petitioner Sattar
Match Works acquired a right to use the trade mark ‘Cock’ and got summary
registration for the same by concurrent . and honest user for about three
decades along with Ujala Match Factory. In order to do complete and substantial
justice the Court in exercise of its inherent discretionary jurisdiction gives
direction to the Registrar of Trade Marks to grant summary registration for the
trade mark without prejudice to the Ujala Match Factory for its concurrent use
of the same trade mark ‘Cock’.

Sattar Match
Works vs BCIC 43 DLR 532.

Section 10(1)—

The
pre-condition for resorting to section 10(1) is that the objector must be a
proprietor of the registered trade mark otherwise he cannot raise any objection
under section 10(1) of the Act.

Bally Schutrabriken
Ag, Switzerland vs Hosnara Begum 52 DLR 546

Section 10(3)—

If separate
applications have been made by different persons in respect of the trade mark
which are identical and closely resemble each other in respect of the same
goods or description of goods the Registrar is authorised to refuse to register
any of them and leave the parties to get their rights determined by a Civil
Court.

Bally
Schutrabriken Ag, Switzerland vs Hosnara Begum 52 DLR 546.

Section 13—

Trademarks
granted in Pakistan cancelled by PO 9 of 1972.

Abdul Quayum
vs Taj Iron Industry 38 DLR 249.

Section 13—

Since 1972
till 1979 the mark was not common to trade in Bangladesh.

Abdul Quayum
vs Taj Iron Industry 38 DLR 249.

Section 13—

The trade
mark ‘Globe’ which the respondent obtained in 1974 without objection from any
quarter. Now, therefore, it cannot be declared as a mark common to trade.

Abdul Quayum
vs Taj Iron Industry 38 DLR 249.

Sections 15(4)—

Sub-section
15( 4) if read in conjunction with Rufo 33(1) it becomes clear that the
opposition must be deemed to have been abandoned. In the present case there is
non­compliance with the provision of Rule 33(1) and the Registrar had the
discretion to treat the matter as abandoned.

Abdul
Motaleb and others vs Aftab Miah and another 56 DLR 145.

Section 21—

In trade
mark matters it is now necessary to go into the question of ‘comparable
strength’ of the cases of either party, apart from balance of convenience.

Hamza Rubber
Industries vs Golam Dastagir Gazi 53 DLR 430

Section 21—

If the
offending Trade Mark of the defendants infringes the Trade Mark rights of the
plaintiff then no amount of monetary consideration can come in the way to
restrain the defendants from using a Trade Mark even nearly resembling that of
the plaintiff.

Hamza Rubber
Industries vs Golam Dastagir Gazi 53 DLR 430

Section 25—

lmplication
of section 25 appears to be that it is only the person who obtained
registration of · trade mark at a subsequent date cannot maintain an action for
infringement against a person who got the registration earlier, and in the
entire statute there is no such restriction upon the person who obtained
registration earlier to file action for infringement against a person who gets
the registration at a subsequent date.

Abdul Mannan
Miah vs Md Salaiman Miah 54 DLR 394.

Section 37—

Rectification—”State
Express” is a world famous trade mark and if the appellant is allowed to
use a part of the mark that would give rise to confusion among the members of
the public—It also infringes the right of the registered proprietor of the
trade mark.

Virginia
Tobacco Company (BD) Ltd vs Registrar of Trade Marks and another 56 DLR 362.

Sections 37 & 4—

Rectification
of Trade Mark—Maintainability of application for rectification—Question of
right to use Trade Mark later applied for—The petitioner is competent to file
such an application before the Court as the petitioner company is aggrieved by
the very granting of certificate in favour of the respondent. The preliminary
objection against the application is, therefore, not acceptable. It was found
that the respondent had no bonafide intention to use the Trade Mark ‘Capri’
although he declared that since 1983 he had been using the trade name ‘Capri’
for his toilet soap. The impugned registration leaving aside the application of
the petitioner Company, though made later in 1987, cannot be sustainable when
the company had reasonable and legal grounds to apply.

Haque and
Company Ltd. vs Mis Western Soap Factory 43 DLR 304.

Sections 37, 46 & 72—

The question
as to whether the petitioner has been an earlier user of the trade mark cannot
be gone into in an application under section 46 of the Trade Marks Act 1940 as
their rights to the trade mark has been dealt with by the office of the
Registrar by his order dated 31-3-1983 without any appeal by the petitioner
against the said order.

Kohinoor
Chemical Co Bangladesh Ltd vs Kohinoor Chemical Co Ltd 48 DLR 376.

Section 4—

In deciding
the question of similarity between the two marks the test is whether a member
of the public is at risk to be confused or deceived. Actual confusion or
deception is not necessary.

Jamal Uddin
Ahmed vs Abdul Haque and another 55 DLR 102.

Sections 46 & 10—

Registration
of identical or similar trademark—Such registration in favour of two
persons—About the propriety of such registration the Registrar has to satisfy
himself and he may put conditions and limitations as he may think fit to
impose. In permitting identical trademarks he has to provide for some ways and
devices for protecting the interest of competing proprietors and the interest
of the public in general to save them .from possible deception and confusion.
In the absence of fraud, there could be no direction under section 46 of the
Act with regard to registration of trade mark.

BCIC vs
Sattar Match Works 44 DLR (AD) 208.

Section 46(2)—

There was no
long user of the respondent’s product in this country and the people here are
also not acquainted with the product and the respondents are also not
“persons aggrieved” to bring .any dispute.

Samah Razor
Blades Industries Ltd vs Supermax International Pvt Ltd and another 51 DLR 237.

Section 7—

The
registration of the latter company is provisional and it has started marketing
and selling its product “Oralsaline” from the last part of 1994. But
the respondent started marketing and selling its product Orsaline from 1984. So
it is a clear case of “passing off”.

Universal
Pharmaceutical Ltd and another vs Social Marketing Company 50 DLR 548.

Section 7—

The pendency
of an application for registration before the Registrar of Trade Marks or even
the. granting of a provisional certificate of registration of the mark does not
debar a civil Court in a suit for infringement of a trade mark from passing an
order of temporary injunction against the use of the mark where there is the
likelihood that the mark would deceive or cause confusion in the minds of
unwary purchasers.

Abdul Mannan
Miah vs Md Salaiman Miah 54 DLR 394.