Section- 10(1)
It appears that the registered mark No.3 1509 is ‘PUDLO’ with a decorative device of coat of arms in the label whereas the marks applied for by the appellant are ‘POWERER’ and ‘POWERER-Q’ with a device of coat of arms in the labels. Thus, it appears that prima facie there is no phonetically or visual resemblances between the marks applied for and the registered mark. It further appears that at the hearing stage before the Registrar the appellant expressed their desire to delete the device of coat of arms from their label and in that view of the matter it appears to ask that the Registrar ought to have proceed with the applications for registration after allowing the appellant to delete the device
of coat of arms from their label.
Sudhir Kanti Shil Vs. Registrar of Trade Marks 9 BLT (HCD)-74.
Section- 10(2)
“Honest Concurrent Use”
Since 1992 the appellants and the respondents are in litigation in respect of the Trade Mark “Banoful” and that the appellant got registration of the Trade Mark “Banoful” in his favour and at one stage the respondent no. 1 hereof got an order for registration of the Trade Mark “Banoful”, which has been disallowed by the High Court Division in Trade Mark Appeal No. 7 of 2000, against which the respondent No. 1 hereof preferred appeal in the Appellate Division and the same is pending and the operation of said judgment and order of the High Court
Division has been stayed till disposal of the appeal. This shows that the appellant hereof is the registered owner of the Trade Mark “Banoful” in respect of this various items including Chanachur, Sweetmeat and laccha Semai and Confectionery and they are carrying on their business lawfully with the Trade Mark “Banoful”, whereas the contending respondent has applied for registration of the Trade Mark “Banoful” against which the appellants have filed the opposition cases. The respondent no. 1 is using the Trade Mark “Banoful” illegally and therefore the claim of use of the Trade Mark “Banoful” for over 14 years by the respondent hereof has no legal value and said period cannot be
counted for the purpose of section- 10 (2) of the Trade Mark Act to get benefit as honest concurrent user and hence granting of registration of Trade Mark “Banoful” in favour of Respondent No. 2 under Section 10(2) of the Trade Marks Act is illegal.
Abdul Motaleb & Ors Vs. Haji Aftab Miah & Ors 16 BLT (HCD) 138.
Section-14(1) read with Trade Marks Rules, 1963 Rule-24(1)
In the present case the elements of rule 25(1) are missing and as such the instant appeal is maintainable without any grounds of decision. In the instant case in response to the notice served upon him under Section 14(1) of the Act the appellant did not take any steps whatsoever till the impugned order was passed by the Registrar and in that view of the matter it appears that the Registrar out stepped his authority in disposing the same on merits on the ground that the mark offends the provision of Section 10(1) and 8(a) of the Act. In the facts and circumstances of the case the Registrar ought to have resorted to rule 24(1) and treat the application as abandoned.
Md. Sekander Ali Vs. The Registrar of Trade Marks & Ors. 9BLT(HCD)-355
Sections- 15 and 73
Section 15 of the Act has empowered the Registrar to exercise certain powers in respect of registration of Trade Marks whereas Section 73 of the Act has given the rights to sue for infringement of a Trade Mark. None of the provisions is alternative to each other, nor resort to the Section 73 of the Act is made subject to Section 15 of the Act.
M/S Hamja Robber Industries Vs. Golam Dostogir Gazi 9BLT(HCD)-280
Section—37 and 46
The respondent No.2 being an Indian company trading there adopted Trade Mark Liberty for use of the mark for their product shoes and they had got their registration in India in 1985 which is prior to the registration of the mark Liberty in the name of the appellant in Bangladesh. —As a matter of fact the respondent company claimed In their rectification application that the company is a registered proprietor of the trade mark Liberty and they are using the said mark for their products liberty shoes since its adoption and selling their products in Bangladesh. Therefore, there is no doubt that their business in respect of export and sale of liberty
shoes in Bangladesh is being substantially damaged and the respondent company has substantial interest in having the mark removed from the register and the respondent No.2 as such is a person aggrieved within the meaning of section 37 and 46 of the Trade marks Act.
Md. Mofidul Haque Vs. Govt. of Bangladesh & Ors. 15 BLT (HCD)258
Section —37 & 46
The petitioners’ case is that they only intended to manufacture OLYMPIC BALPEN at the time of incorporation of the company. Thus it appears that the commodity of respondent No. 2 was already in the market and naturally became popular among the people and they also obtained registration of the trade mark on 15.08.1990 and subsequently the same was renewed for another period for 15 years as per law. hence it is clear that the petitioners’ commodity was not in the market when the respondent’s commodity namely OLYMPIC BALPEN was in the market since 1988 and its registration was obtained —Held; The High Court Davison, therefore rightly held that the petitioners were not entitled to file applications for rectification of the trade mark registry as prayed for.
Tripti Industries Ltd & Ors Vs. Govt. of Bangladesh. 15 BLT (AD)163
Section-46
Expunging the trade mark
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, mere likelihood of confusion or deception will be enough even if the product is in the market for some time-relied on 1927 AC 632.
Jamal Uddin Ahmed Vs. Abdul Haque & Anr. 10 BLT (HCD)-418
Section-46(2)
Aggrieved—In the present case the applicant respondent is a foreigner whose mark has not yet been registered in Bangladesh and they are also not manufacturing the blades in this country with the Trade Mark—we hold that the respondent is not a person aggrieved as contemplated under the law. Admittedly the importer also is not coming with any action against the registration of the marks of the appellant on the ground that use of the mark by the appellant has jeopardized his business as that mark was registered in Indian and the products were legally imported. The consumers are also not coming with any such grievance. In that view of the matter we hold that the respondents before the Registrar failed to make out any case as a person aggrieved.
Samah Razor Blades Industries Ltd. Vs. M/S, Supermax International Pvt. Ltd. 7BLT (HCD)-70
Section-70(c)
Registration of the Trade Marks SONYO in view of the repeated adjournments taken by the opponent appellant in connection with adducing of evidence
The applicant’s trade-mark SONYO being in continuous and extensive use has become very familiar with the consumers and earned goodwill by this time. However, the opponent has no cause of action to file the Opposition Case and the same has been filed on account of business rivalry and to delay the registration of the trade-mark SONYO and thereby to harass the applicant. The words “SONY” and “SONYO” are not visually and phonetically similar to an identical with each other. There is no chance on the part of the customers or consumers to get confused and embarrassed because of the two appellations, namely, SONY and SONYO Virtually, the initiation of the Opposition Case No. 1543 of 2000 is an exercise in futility. The said case is founded on false and frivolous allegations — After filing of the Opposition Case No. 1543 of 2000 as against the Trade Mark Application No.48468 in Class-9, the opponent—appellant filed a number of applications in Form TM-55 for extension of time and those were allowed. Lastly on 05.09.2001 the appellant put in another application in Form TM-55 for extension of time, but that was turned down on 09.09.2001 and the application for registration of the trade-mark SONYO filed by the respondent no. 1 was accepted. —Held it was incumbent upon the Registrar of Trade Marks to afford an opportunity to the opponent-appellant of being heard prior to disposal of the Opposition Case No. 1543 of 2000. Admittedly the Registrar did not comply with the mandatory provisions of Section 70 (c) of the Trade Marks Act and he having not complied therewith illegally and erroneously rejected the
Opposition Case No. 1543 of 2000 and accepted the application of the applicant-respondent no.1 for registration of the trade-mark SONYO. The entire exercise undertaken by the Registrar of Trade Marks appears to be ‘de hors’ the law. Against this backdrop, the impugned order is liable to be struck down.
Sony Kabushika Kaisha Vs. Sonyo Industrial Co. Pvt. Ltd. & Anr. 16 BLT (HCD)49
Section-72 Read with Section-37
The respondent No. 1 which is a Pakistani company after emergence of Bangladesh neither used Trade Mark Tibet-570 in Bangladesh nor exported any laundry soaps under the Trade Mark Tibet-570 to Bangladesh. Further neither respondent No. 1 nor its alleged registered user of the trade mark MIS Medley Industries has used the registered trade mark Tibet-570 for 5 continuous years until I month before the application as made. It is prayed that the registration of trade mark under Registration No. c-i 525 in class-3 in favour of respondent No. 1 be expunged on the ground of non-use of the trade mark under section 37 of the Trade Marks Act, 1940 as contended by the petitioner’s Advocate.
Held: In the instant case there Was an agreement entered into between MIS. Medley Industries and Kohinoor chemical Co, Ltd. Karachi, Pakistan, MIS. Medley Industries was also recorded as registered user of the Trade Mark — The customs authorities have also described Medley Industries as a concern manufacturing laundry soaps under Trade Mark Tibet-570 and they assessed custom duty for the period 1992-93. These evidence in my opinion to indicate that MIS. Medley Industries was manufacturing laundry soaps under the said trade mark at least one month before filing of this application — so the claim of the petitioner as an aggrieved person to have the trade mark expunged from the registry on the ground of non-use in the facts and circumstances of the case does not lie.
Kohinoor Chemical Co (Bangladesh) Ltd. Vs. Kohinoor Chemical Co. (Pakistan) Ltd. 4BLT (HCD)-212
Section-76
Miscarriage of Justice—it appears that on review the rectification case was restored to its original file and number and the appellant was given an opportunity to file the necessary documents within two months, that is, by 26.4.97, but the appellant failed to procure the necessary documents and as such they filed T.M. 55 on 15.4.97 praying for further three months’ time but that application for extension of time was disposed of by the Registrar on 30.4.97 after expiry of the time limit on 26.4.97 and as such it appears that the appellant have been deprived of the opportunity of filing the documents within time allowed as the application has not been disposed of prior to 26.4.97. It, thus, appears that miscarriage of justice has been occasioned as the application praying for further time was disposed of on 30.4.97 after the expiry of the granted time and as such in the interest of justice the appellant should be given a chance to file the necessary documents.
Industro Chemic B. V Vs. Saman & Mishu Traders. 9BLT(HCD)- 76
Trade Marks Rules, 1963 [As Revised]
Rule-23
A notice to the concerned applicants by the Registrar should be impliedly read in the relevant section of the Act and Rule 23 of the Revised Trade Marks Rules, 1963 framed thereunder to avoid abuse of power and for the sake of public interest. The words “…but shall not be bound to do so”, used in the last part of Rule 23 in my opinion refers to “renewed search” by the Registrar Trade Mark but not to the initial search as required under the Rule. Consequently, the duty with which the Registrar is entrusted with under the Rule 23 of the Trade Marks Rules, 1963, to search all the pending application is binding upon him for public interest so that no confusion can be created in the minds of the public by not doing so and then give notice if other applications are pending.
Aarman Soap Factory Vs. Munni Soap & Anr. 10 BLT(HCD)-269.