Case No: Civil Appeal No. 176 of 2002
Judge: Mohammad Fazlul Karim ,
Court: Appellate Division ,,
Advocate: Mr. Rafique-ul-Huq,Dr. M. Zahir,,
Citation: II ADC (2005) 593
Case Year: 2005
Appellant: M/s. Supermax International Private Ltd.
Respondent: Samah Razor Blades Industries
Subject: Trade Mark, Intellectual Property,
Delivery Date: 2004-1-20
KM Hasan CJ
Mohammad Fazlul Karim J
Md. Tafazzul Islam J
M/s. Supermax International Private Ltd.
Samah Razor Blades Industries
January 20, 2004.
The Paris Convention
Section 6, 2(2)
Trade Marks Act, 1940
Section 6(2),14, 27(1)(b),37,46
Thus a review is subject to law and rules and by no means an appeal in disguise whereby an erroneous decision is reheard and corrected but lies only for patent error apparent on the face of the record. Unless the impugned order show as such merely reversing the order basing on the evidence on record would not render the order in review on those jurisdiction. Similarly, an error which has to be established by a long process of reasoning on points where there may conceivably be two opinions can hardly be said to be an error apparent on the face of the record….. (38)
Cases Referred to-
21 DLR (SC) (1969); 357 7 BLC AD 67; 44 DLR 39; Friends and Company Vs. Gorubedi Shah 21 DLR (SC) 351; SM Towfiq Vs. National PLD 1962 Karachi 355; 21 DLR (SC) 357; Wright, Crossly and Co. S.T.M. 15 RFC 131; Ellis & Co. T.M. 21 RFC 617; G.C.H.Q. Case (Council of Civil Service Unions V. Minister for the Civil Service 1985 A.C. 374); British Airways Board v. Laker Airways Ltd ((1985) A.C. 58); Kynaston V. Secretary of State for the Home Department (1981) 73 Cr. App. R. 281); Trawnik v. Lennox ((1985) 1 WLR 532); Malone v. Commissioner of Police of the metropolis ((1979) Ch 344; R. vs. Immigration Appeal Tribunal ex.p. Ali Ajmal, ((1982) Imm. A.R. 102, C.A.); R. v. Home Secretary ex. p. Brand ((1991) 1 A.C. 696); H.M. Ershad v. Bangladesh and others 7 BLC (AD) 67; Vishaka and others Vs. State of Rajsthan (Writ Petition Nos. 666-670 of 1992); Ekushey Television Ltd. Vs. Dr. Chowdhury Mahmood Hasan reported in 55 DLR (AD) (2003) 26; Zulfikar Ali Bhutto Vs. The State, PLD 1979 SC 741 PLD 1979 SC 741.
Rafique-Ul-Huq, Senior Advocate, (Abdul Malek, Senior Advocate with him), Instructed by Mvi. Md. Wahidullah, Advocate-on-Record - For the Appellant.
Dr. M. Zahir, Senior Advocate, instructed by Md. Nawab Ali, Advocate-on-Record - For the Respondent No. 1.
Not represented - Respondent Nos. 2.
Civil Appeal No. 176 of 2002
This appeal arising out of a review petition by leave is directed against the judgment and order dated 16.03.1999 passed by this Court in Civil Petition for Leave to Appeal No. 27 of 1999 filed against the judgment and order dated 3.11.1998 passed by the High Court Division in Trade Mark Appeal No. 4 of 1995.
2. The appellant being aggrieved by the said impugned judgment filed review petition and this appeal by leave arose to consider the submission of the learned Counsel for the appellant as under:
3. He further submits that question of application of section 6 of the Paris Convention was agitated before the High Court Division which will be apparent on the judgment itself where it is argued that though the petitioner's mark has not been registered yet it is entitled to protection under Article 6 of the Paris Convention to which Bangladesh is a signatory.
4. Mr. Rafique-Ul-Huq further argues that under Article 6 of the Paris Convention once a mark is registered in one country of the union protection is given to other countries of the union.
5. He further submits that under Article 6(2) once a mark is registered in one country of the union a period of at least five years from the date of registration shall be allowed for requesting cancellation of such a mark. The petitioner has come within the period since the mark of the opposite party No. 1 was registered on 7.12.1991 and the petitioner applied for verification of "SUPERMAX" under Class-8 on 22.6.1993 on coming to know about the registration of the opposite party No. 1 mark. The petitioner filed an application for rectification under section 46 and rectification Case No. 166 of 1993 was initiated.
6. He further submits that this Court committed an error of law in holding that the petitioner in the application for rectification did not pray for cancellation of the trade mark on the basis of Article 6 of the Paris Convention."
7. The case of the appellant in brief is that the appellant filed an application under section 46 of the Trade Marks Act, 1940 read with Rule 65 made there under before the Register, Trade Marks Registry, Dhaka for rectification of the register removing there from the Trade Mark No.28355 in Class 8 for the Trade Mark "SUPERMAX" registered in the name of the respondent No.1 contending, inter alia, that they are the proprietor of the said Trade Mark. The word "SUPERMAX" with distinctive device was registered in India in the year 1966. Subsequently, the appellant got the Trade Mark "SUPERMAX' registered in their name in a number of Countries including member countries of the Union of Paris Convention for the Protection of Industrial Property, 1883 (hereinafter referred to as said Convention). The appellant exported the said product "SUPERMAX" blades to Bangladesh in 1984. In the same year, the Government of Bangladesh imposed ban on the import of blades. When the ban was lifted in 1993 their distributor M/s. Anwar and Brothers Company imported two consignments of "SUPERMAX" blades. The appellant then applied for registration of their Trade Mark "SUPERMAX" under Class 8 on 22.6.1993 before the Registrar of Trade Marks Trade Marks Registry at Dhaka under section 14 of the Trade Mark Act, 1940. After filing of the above application for registration, the appellant for the first time came to learn that the respondent No.1 filed an application for registration of the Trade Mark "SUPERMAX" with identical design and get up in every respect before the Registrar, Trade Marks Registry, Dhaka on 2.3.1989 and eventually it was registered on 7.12.1991. The appellant having come to know about the registration, filed an application for rectification before the Registrar under section 46 of the Trade Mark act, 1940 praying for removal of the Trade Mark "SUPERMAX".
8. The respondent No. 1 entered appearance in the said Rectification Case No. 166 of 1993 and contested the said proceeding.
The Registrar of Trade Marks after hearing the parties and perusing the documents allowed the Rectification Case by judgment and order dated 31.1.1995, against which the respondent No. 1 filed Trade Mark Appeal No. 4 of 1995 before the High Court Division, The appellant submitted before the High Court Division that under Article 2(1) of the said Convention Bangladesh having ratified and adopted the said Convention on 1.3.1991 is obliged to protect the Trade Mark of the appellant registered in any member Country of the Union of the said Convention. Under Article 2(2) of the said Convention to seek such protection, a national of a member Country is not required to be domiciled or have establishment in such Country Under Article 6 of the said Convention any Country being a member of the Union is obliged to grant protection of the well-known Trade Marks and "SUPERMAX" being a well-known Trade Mark, Bangladesh is obliged to grant protection of the said Mark. Article 6A (1) provides that every Trade Mark duly registered in the country of original shall be accepted for filling and protected as is in other Countries of the Union. Article 6A(1) is applicable to all Trade Marks, whether the same is well known or not.
9. The High Court Division after hearing the parties vide judgment and order dated 03.1.1998 allowed the appeal holding as follows:
10. This Division by judgment and order dated 16.3.1999 summarily dismissed the Civil Petition for Leave to Appeal No. 27 of 1999 as there was no point to interfere with the judgment passed by the High Court Division.
11. Mr. Rafique-Ul-Huq, the learned Counsel appearing for the appellant in support of the appeal submits that this Court committed an error of law apparent on the face of the record in refusing to grant leave to appeal relying on the decision reported in 21 DLR (SC) (1969) 357 which was not applicable in the instant case in view of Articles 2 and 6 of the Paris Convention for the Protection of Industrial Property, 1883 (as amended from time to time), which was ratified and adopted by Bangladesh on 01.03.1991. The learned Counsel further submits that this Court committed an error of law apparent on the face of the record in refusing to grant leave to appeal on the ground of Article 6 of the Paris Convention for the Protection of Industrial Property, 1883 relying on a wrong quotation of the relevant provision of Article 6 by the High Court Division whereas under Article 6A(1) read with Article 2(2) of the said Convention it is not necessary for the appellant to prove domicile or establishment in Bangladesh when the same was admittedly registered by the appellant in other member countries of the Union such as India in 1966, UK in 1968, Australia in 1969, New Zealand in 1969, Singapore in 1988, Belgium in 1989, Italy in 1989 etc. Once it is registered in any member country of the Union of Paris Convention, it is entitled to get its Trade Mark to be protected in any other member countries including Bangladesh.
12. The learned Counsel further submitted that under the article 6A (1) read with Article 2(2) it is not necessary for the appellant to prove domicile or establishment in Bangladesh when the same is admittedly registered by the appellant in other member countries of the Union including India which is the member of the Union of the said Convention inasmuch as Bangladesh is a signatory to the said Convention. The learned Counsel has further submitted with reference to Article 25(1) of the Constitution that the State is obliged to respect the Paris Convention and on the basis of the said Convention should uphold the right freely to determine and built up its social and economic upliftment by way of system and means of its own choice and accordingly submitted that any Trade Mark registered in any member State is entitled to protect the said Mark in Bangladesh which is in use in Bangladesh by rectification of the registered of trade mark removing the trade mark of respondent No. 1, not in use for more than 5 years under the provision of section 27(1) (b) of the Trade Mark Act. The learned Counsel has also referred to a decision reported in 7 BLC (AD) 67 as regards the effect of Convention in our country and also decision reported in 44 DLR 39 regarding Article 13 of Universal Declaration of Human Rights having the spiritual dimension of man. The learned Counsel has further submitted with reference to GATT i.e. General Agreement of Tariff and Trade for the protection of intellectual property right and the trade related aspect of intellectual property right providing exclusive right and as such once a mark is registered in one country of the Union protection is given to other countries to the Union under Article 6 of Paris Convention and that once a mark is registered in one country of the Union a period of at least 5 years from the date of registration shall be allowed for requesting cancellation of such a mark as provided in Article 6(2) thereof and accordingly the appellant's goods having been imported earlier than the registration of the mark of the respondent No. 1 who did not manufacture it so long, is protected under the Trade Mark Act until 12.6.1993 and balance of convenience and inconvenience is in favour of the appellant's products and the respondent's registration is liable to be struck off the Register.
13. Dr. M. Zahir, the learned Counsel appearing for the respondents has, however, submitted that although the appellant's trade mark was registered in India and other countries but it was never registered in Bangladesh. That mere use of the trademark from an earlier date was no ground to entitle the appellant to any protection as has been held in the case of Friends and Company Vs. Gorubedi Shah reported in 21 DLR (SC) 351 supported by another case of SM Towfiq Vs. National reported in PLD 1962 Karachi 355 and accordingly the High Court Division has rejected the said submission regarding protection of trade mark of the appellant in Bangladesh inasmuch as the appellant has failed to prove itself to be an "aggrieved person" for maintaining an application for cancellation of the trade mark under section 46 of the Trade Marks Act read with Rule 65 of the Trade Mark Rules which the appellant has only sought to avail invoking the definition in section 2(2) of the Paris Convention.
14. The learned Counsel for the respondents as well submitted that in order to enable the appellant to file an application under section 46 of the Trade Marks Act the said person has to be an 'aggrieved' one in order to maintain on application for rectification of the trade mark register on the ground of contravention, failure to observe a condition mentioned in section 37 or any person or without sufficient cause wrongly remaining in the register or any error or defect in entering the register inasmuch as section 37 of the Trade Marks Act has no manner of application in the instant case. The learned Counsel has further submitted that Bangladesh being an independent country has the sovereignty to legislate any law and under the provision of Article 145 A of the Constitution though could ratify and enter into any treaty with the foreign countries but the same would not be the laws of the land unless ratified by the Parliament.
15. Dr. M. Zahir, the learned Counsel appearing for the respondent, however, submitted that this Court in its judgment under review considered the decisions reported in 21 DLR (SC) 357 inasmuch as dismissed the leave petition considering the provisions of Paris Convention for the protection of Industrial Property, 1883 and that it has been rightly found that the appellant is not an aggrieved person to maintain its application for rectification of the trade mark register.
16. Section 46(1) of the Trade Mark Act, 1940 authorizes that the High Court Division or the Registrar or the Tribunal may make such order as it feels proper for canceling or varying the registration of a trade mark on the ground of contravention or failure to observe a condition entered in the register in relation thereto at the instance of any 'person aggrieved' and in the explanation thereto a person who has registered a trade mark in any acceding State or a non-acceding State under section 82A for the time being applies.
17. Section 6(2) of the Trade Mark Act, 1940 provides that any person aggrieved by the absence or omission or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register or any error or defeat in the entry may apply and the tribunal may make such order expunging or varying the entry.
18. Under section 37(1) of the Trade Mark Act, 1940 a registered trade mark may be taken off the register in respect of any goods registered on the application of any 'person aggrieved' on the ground either (a) that the trade mark was registered without any bonafide intention for registration that it should be used in relation to those goods on the part of the applicant or in case of the company and there has in fact been no bonafide use of the trade mark in relation to those goods by any proprietor up to a date one month before the date of application or (b) that upto a date one month before the date of application, a continuous period of five years or longer has elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods by any proprietor therefor for the time being.
19. Rule 65 of Trade Mark Rules 1963 provide for the 'Forms' as to how any application to rectify or remove a trade mark from the register has to be filed with the Trade mark Registry.
20. Thus in order to file an application under section 46(2) the appellant has to be an 'person aggrieved' and the main criteria to hold a 'person aggrieved' is that he must be in the trade.
21. In the case of Wright, Crossly and Co. S.T.M. reported in 15 RFC 131 it has been held that the applicant in order to show that he is a person aggrieved must show that in some possible way he may be damaged or injured, if the trade mark is allowed to stand.
22. Similarly in the case Ellis & Co. T.M. reported in 21 RFC 617 it has been held that "every person also will in a reasonable probability suffer any injury or loss (using those words in a legal and not in a sentiment sense) from the other persons claiming to use it may be construed as a 'person aggrieved.'
23. From the above, the appellant by no stretch of imagination could be a 'person aggrieved' and had suffered or possibility of suffering loss or injury or damage, if the trade mark is allowed to stand as its products admittedly were not in use or in circulator in this Country when the respondent's trade mark was registered in 1991.
24. It is the case of the appellant that it once exported blades to Bangladesh in 1984 and it never ever exported the blades either before or after liberation until the import was prohibited in 1984 or that after lifting of the ban in 1993 its product was found or in use in Bangladesh. Since there is no material and as a matter of fact the appellants' products were not in use in this Country or it was not even registered here, the appellant's claim of prior adoption and user of the trade mark or by virtue of long user a vested right has been accrued to them for rectification of the Register does not arise.
25. Now as regards the submissions of the Mr. Rafique-Ul-Huq, the learned Counsel for the appellant with reference to the Articles 2(2) and 6A(a) of the Paris Convention that the appellant could very well maintain the application as his trade mark has been registered in India and Bangladesh being a signatory to the said Paris Convention, the appellant's right is protected under the said Convention, Article 2 of the Paris Convention for the Protection of Industrial Property, 1883 (as amended from time to time) which was ratified and adopted by Bangladesh on 1.3.1991 read as under:
(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.
(3) The provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.
26. Article 6 of the Paris Convention for the Protection of Industrial Property, 1883 (as amended from time to time) which was ratified and adopted by Bangladesh read as under:
(1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicted in the Articles, Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate.
(2) The country of origin shall be considered the country of origin the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national."
27. Apart from the legal aspect as to whether the appellant could protect his interest in this Country on the basis of registration of trademark in India, the factual aspect of proof of well-known or wide use of the appellant's products in that Country has to be established. In that view as well the appellant could not claim any protection under the said Articles.
28. As regards legal aspect, the said provision of Paris Convention could not override the laws of the land, which presupposes a prior registration of the trademark to avail the protection.
29. The applicability of the convention hi any domestic Court has been aptly discussed by O. Hood, Phillips and Jackson, in Constitutional Law and Administrative law, 8th Edition pages 4707 471 and 474 and we feel tempted to quote the passage as under:
30. No decision of the British Courts before the coming into effect of the Human Rights Act was actually based on the European Convention. The dicta on the construction of statutes not purporting to implement a treaty do not follow from precedents concerned with construing statutes consistently with the general principles of international law or statutes designed to implement particular treaties on such matters as diplomatic privilege. It is submitted, further, that their approach is potentially dangerous. The Judges wish to keep government officers of their international obligations, but in fact they are challenging the cardinal principle laid down in the Case of Proclamations and our own Bill of Rights of 1688, that the Executive by itself cannot make law for this realm. Indeed, one might argue that the fact that Parliament had refrained from incorporating the European Convention into our law indicated an intention that its provisions should not be taken into account by the Courts, so that Convention ought not to be cited by counsel or looked at by judges."
31. Under our Constitution it is the Parliament in general or the President under certain circumstances legislate and not the Government of the People's Republic of Bangladesh and the Courts of law does not require to have regard to the acts of the Government including entering into treaties or adopting the convention when interpreting the law.
32. Though International Convention, however, could be recognized upon ratification but could only be applied in our Country only when its provisions are incorporated in our Municipal laws and thus for enforcing any International Covenants under any Convention to which this Country is a signatory, the provisions of the Convention have to be incorporated in our domestic law. This principle find support in the case of H.M. Ershad v. Bangladesh and others reported in 7 BLC (AD) 67 wherein Chowdhury J. held: -
33. In the case of Vishaka and others Vs. State of Rajsthan (Writ Petition Nos. 666-670 of 1992) the Indian Supreme Court asserted its power under Article 32 of the Indian Constitution for enforcement of fundamental rights and executive power of the Union to meet the challenge to protect the working women from sexual harassment and to make their fundamental rights meaningful giving direction using the International Convention on Elimination of Discrimination Against Women (CEDAW) and norms in construing fundamental rights expressly guaranteed in the Constitution which embody the basic concept of gender equality in all spheres of human activity in the absence of any specific legislation to that effect in the country.
34. But in the instant case, we have the Municipal legislation i.e. Trade Marks Act, 1940 and rules framed thereunder to regulate, register, protect and cancel etc. of the Trade Mark and as such the International Convention, to which though we are signatories but the provisions thereof which are available in the member Countries are inoperative in this Country for the reasons aforesaid and as such the provisions of Paris Convention on Intellectual property right are not applicable in this Country.
35. Furthermore, arguments on Article 6 of the Paris Convention were put forward before this Court at the hearing of the leave petition and this Court in the impugned judgment found as under:
36. In view of the above, we find no substance in the submissions of the learned Counsel for the appellant that once a trade mark is registered in any member country of the Union of Paris Convention it is entitled to get its trade mark protected in any other member countries.
37. Review under Order XXVI of the Supreme Court of Bangladesh (Appellate Division) Rules, 1988 is subject to the law and practice of the Court and the Court may of its own motion, or on the application of a party to a proceeding on the ground and sailor to those mentioned in Order XLVI rule 1 of the Code of Civil Procedure could review its own order/decision.
38. Thus a review is subject to law and rules and by no means an appeal in disguise whereby an erroneous decision is reheard and corrected but lies only for patent error apparent on the face of the record. Unless the impugned order show as such merely reversing the order basing on the evidence on record would not render the order in review on those jurisdiction. Similarly, an error which has to be established by a long process of reasoning on points where there may conceivably be two opinions can hardly be said to be an error apparent on the face of the record. In the instant case the learned Counsel has submitted the grounds based on some material which were in existence at the time of disposal of the petition by the High Court Division and submitted before this Court and answered by the impugned judgment. There may be cases where a review is allowed on any ground urged at the original hearing whenever the Court considers that it is necessary to correct an evident error apparent on the face of the record or omission. But the case referred to by the learned Additional Attorney General in the case of Ekushey Television Ltd. Vs. Dr. Chowdhury Mahmood Hasan reported in 55 DLR (AD) (2003) 26 held as under: "A case is decided on its factual matrix. When the facts materially vary, the law carefully shifts its focus. Therefore, the conspectus of facts on which the decision is founded is always critical. In a granted situation the conclusion remains impeccable, But if it can be shown that the situation differs from that which was taken for granted at the time of hearing of the appeal or the petitions for leave to appeal the decision in a review petition may be different. But no alternative situations were presented before us at the hearing of the review petitions. On the other hand the facts upon which our judgment in the petitions for leave to appeal rests, have remained undisputed throughout the different stages of the litigation and all the Courts, on the facts, found malafide in processing the evaluation report." "It may be stated here that the learned counsels for the petitioners, in their review petitions, have advanced submissions, which went deep into the merits of the case. They also relied on the points raised by them in the leave petitions in this respect to show that the Court has committed error apparent on the face of the record. The elaborate arguments that have been advanced was done at the leave petitions but those have come to an end with the rejection of the leave petitions by the petitioners and now cannot be reopened in a review petition."
39. The error apparent on the face of the record has been considered by this Court in the case of Zenith Packages Ltd. Vs. Member, Labour Appellate Tribunal, Dhaka and others reported in 52 DLR (AD) 160 as under:
40. Error apparent on the face of the record" cannot be said to be so where a lengthy argument is required as is argued by the petitioner, Therefore on the grounds urged for review of judgment by the appellant and the way it was argued before us it seems to us that we are asked to sit over our judgment by way of appeal in circuitous way addressing a lengthy and repeated submissions which already received our due notice in the judgment sought to be reviewed.
41. In the case Zulfikar Ali Bhutto Vs. The State reported in PLD 1979 SC 741 it was held on review as under:
42. In the aforementioned decision PLD 1979 SC 741 Supra it has further been held that:
43. We are in respectful agreement with the aforesaid observations, which manifests the correct exposition of law and fact on the subject.
This appeal is, accordingly, dismissed without any order as to cost.