The Trade Marks Act, 1940

The Trade Marks Act, 1940

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.