Baby Food Products Ltd. Vs. Nabisco Biscuit & Bread Factory Ltd., VII ADC (2010) 320

Case No: Civil Review Petition No. 1 of 2009

Judge: Md. Abdul Matin,

Court: Appellate Division ,,

Advocate: Mr. Mahmudul Islam,Mr. Rokanuddin Mahmud,,

Citation: VII ADC (2010) 320

Case Year: 2010

Appellant: Baby Food Products Ltd.

Respondent: Nabisco Biscuit & Bread Factory Ltd.

Subject: Trade Mark, Intellectual Property,

Delivery Date: 2009-7-16

 
Supreme Court
Appellate Division
(Civil)
 
Present:
MM Ruhul Amin, CJ.
Mohammad Fazlul Karim, J.
Md. Tafazzul Islam, J.
Md. Joynul Abedin, J.
Md. Abdul Matin, J.
Shah Abu Nayeem Mominur Rahman, J.
 
Baby Food Products Ltd., 4, Aga Nawab Dewry, Dhaka
…………….…..........Petitioner
Vs.
Nabisco Biscuit & Bread Factory Ltd., 262, Tejgaon Industrial Area Dhaka and another
……….………........Respondents
 
Judgment
July 16, 2009.
 
It appears that whatever product the petitioner is producing and selling in the trade name of NABICO is likely to deceive the people at large who will presume the products to be of NABISCO being misled by the similarity in sounds and as such this is no ground to review our judgment already passed. ….. (14)
 
Lawyers Involved:
Rokouddin Mahmud, Senior Advocate, instructed by Md. Nawab Ali, Advocate-on-Record- For the Petitioner.
Mahmudul Islam, Senior Advocate, instructed by Mrs. Sufia Khatun, Advocate-on-Record- For Respondent No.1.
Not represented-Respondent No. 2.
 
Civil Review Petition No. 1 of 2009.
(From the judgment and order dated 09.06.2008 passed by the Appellate Division in Civil Petition for Leave to Appeal No.71 of 2006.)
 
JUDGMENT
Md. Abdul Matin J.
 
This review petition is directed against the judgment and order dated 09.06.2008 passed by the Appellate Division in Civil Petition for Leave to Appeal No.71 of 2006 dismissing the petition.
 
2. Civil Petition for Leave to Appeal No.71 of 2006 arose out of the judgment and order dated 28.06.2005 passed by the High Court Division in Trade Mark Application No.13 of 2002 filed by the respondent No.1 under Section 46 of the Trade Marks Act, 1940, allowing the application and making the Rule absolute and directing the registered Trade Mark No.21508 dated 18.12.1984 in Class-30 to be varied by way of deletion or omission of the words "NABICO/নেবিকো" both English and Bangla.
 
3. The facts, in short, are that the respon­dent No.1 has been engaged in the busi­ness of manufacturing and marketing of biscuits of various types of best possible quality for the last five decades.
 
4. With a view to distinguishing the prod­ucts of the respondent from the rest of oth­ers, the respondent adopted a trade mark consisting of the word "NABISCO" on a label with a distinctive colour scheme, design and get up for the first time in the whole of erstwhile   Pakistan when Bangladesh was a province of Pakistan. However, the respondent applied for reg­istration of the trade mark "NABISCO" to the Trade Marks Registry, Dhaka under application No.1713, 1723, 1733 and 1734, in class-30 in the year 1973. The applications were duly advertised in the Journal. As there was none to oppose the right of property involved in the mark, here was no opposition from any quarter and eventually the trade marks proceeded to smooth registration. In addition to the aforesaid registration the respondent have also obtained registration of associated trade marks of various types of Biscuits.
 
5. Due to superior quality of the biscuits manufactured and marketed by the respondent, long and continuous use and various sales promotion measures under­taken by the respondent form time to time, the trade mark "NABISCO" acquired great reputation in the market in relation to bread and biscuits of various kinds and the trade marks "NABISCO" attained distinctiveness in the market and became dis­tinctive of the goods covered under the registration, so that any reference as to the trade mark "NABISCO" would always make a reference to the biscuits manufac­tured and marketed by the respondent No.1  and none else. The trade mark "NABISCO" connotes and denotes to the order as well as to the consumers the prop­erty of the respondent and the same has become integrated with the business of the respondent, in fact, the aforesaid trade mark has assumed the property of a great significance to the owner of the trade mark.
 
6. The petitioner being a clever person imitated the trade mark of the respondent and secretly filed application for registra­tion of the impugned trade mark consist­ing of a deceptively similar trade mark "NABICO" under No. 21508 in class-30 in the Trade Marks Registry, Dhaka. In spite of registration of almost identical trade mark of the respondent under Nos.1713,1723,1733 and 1734, in class-30, the petitioner managed to get the said application No.21508 in class-30 regis­tered in favour of the petitioner.
 
7. While making examination of the appli­cation No.21508 in class-30 of the peti­tioner the prohibition as laid down in sec­tion of 10(1) and 8(a) was not adhered to by the respondent No. 2. In that case the application ought to have been refused registration. But the respondent No.2 has acted against the specific provision of sec­tion 10(1) and 8(a) of the Trade Marks Act,1940 by ordering the application No.21508 in class-30 of the petitioner to be advertised in the Journal on considera­tion of two affidavits without sales figures or advertisements figures or any other documents which could have empowered the registrar to waive the objection under the aforesaid sections to allow the applica­tion to proceed to advertisement under the provision of section 10(2) on the honest and concurrent user.
 
8. Although the respondent No. 1 engaged a lawyer to oppose registration of the impugned trade mark No. 21508 in class-30 he left the proceeding and the applica­tion was allowed to proceed to registra­tion. As a matter of fact, the Registrar of trade marks ought to have examined the evidence further and ought to have consid­ered the application in the light of statuto­ry objections under sections 10(1) & 8(a) of the Act. It therefore transpires that the impugned trade mark was allowed to be registered without proper examination as to the eligibility of the mark to be regis­tered which is otherwise disentitled to be registered.
 
9. The respondent No.2 has not only regis­tered the same mark in favour of the petitioner in violation of the statutory prohibi­tion as laid down in sections 10(1) and 8(a) of the Act, but has also allowed regis­tration of almost identical trade mark in the application Nos. 4638, 35138, 36566, 45164, 45284, 45285 and 56085 in class-30 in gross violation of the provisions of the Trade Mark Act, 1940 which show that the Registrar has no respect for the law of which he is the administrator by virtue of his position conferred upon him by the Statute.
 
10. On the application filed by the respon­dent No.1 the High Court Division allowed the same and directed the trade mark of the petitioner to be varied by way of deletion and omission of the words "NABICO".
 
11. This Court by the impugned order dis­missed the petition holding, inter alia, that the NABICO and NABISCO has a simi­larity which is prone to deceive the con­sumers.
 
12. Heard Mr. Rokounuddin Mahmud, learned Counsel appearing for the peti­tioner and Mr. Mahmudul Islam, learned Counsel appearing for the respondent No.1 and perused the petition and the impugned judgment and order of this Division and other papers on record.
 
13. The learned Counsel submits that this Court failed to consider that both the peti­tioner and the respondent No.1 are mar­keting candy (Logenge) wrapped in cello­phane paper which  itself has  various design on it as that findings of the Court is beyond the pleadings of the parties and in fact the case of the respondent No.1 was that they are manufacturer of biscuits of various types and the case of the petitioner is that they have been manufacturing and selling lozenge and subject matter of the impugned registered Trade Mark No.21508 dated 18.12.1984 in class-30 is in respect of logenge, so as per the above findings of the High Court Division has made out a third case beyond the plead­ings of the parties and as such the impugned judgment and order passed by this Court which deserves consideration for review.
 
14. It appears that whatever product the petitioner is producing and selling in the trade name of NABICO is likely to deceive the people at large who will pre­sume the products to be of NABISCO being misled by the similarity in sounds and as such this is no ground to review our judgment already passed.

In such view of the matter we find no substance in this review petition which is accordingly dismissed.
 
Ed.