M/S Yellow Pages (Pvt.) Ltd. Vs. M/S Business Data Information Ltd. and another, VI ADC (2009) 505

Case No: Civil Review Petition No.172 of 2008

Judge: M. M. Ruhul Amin ,

Court: Appellate Division ,,

Advocate: Mr. Abdul Wadud Bhuiyan,,

Citation: VI ADC (2009) 505

Case Year: 2009

Appellant: M/S Yellow Pages (Pvt.) Ltd.

Respondent: M/S Business Data Information Ltd.

Subject: Trade Mark, Intellectual Property,

Delivery Date: 2008-12-4


Supreme Court
Appellate Division
(Civil)
 
Present:
MM Ruhul Amin CJ
Mohammad Fazlul Karim J
Md. Tafazzul Islam J
Md. Joynul Abedin J
 
M/S Yellow Pages (Pvt.) Ltd.
...............Petitioner
Vs
M/S Business Data Information Ltd. and another
…...........Respondents
 
Judgment
December 4, 2008.
 
Trade Marks Act, 1940
Section 6(1)(d),  46 (2)
Application under section 46 of the Trade Marks Act, 1940 for rectification of the Register of Trade Marks by removing the registered Trade Marks. …. (2)
 
Lawyers Involved:
Abdul Wadud Bhuiyan, Senior Advocate, instructed by Mrs. Sufia Khatun, Advocate-on-record-For the Petitioner.
Not represented-the Respondents.
 
Civil Review Petition No.172 of 2008
(From the judgment and order dated 30th May, 2007 passed by the Appellate Division in Civil Petition for Leave to Appeal No.1354 of 2004)
 
JUDGMENT
 
MM Ruhul Amin CJ.
 
By this petition the petitioner seeks review of the judgment and order dated 30th May, 2007 passed in Civil Petition for Leave to Appeal No. 1354 of 2004 dismissing the same.
 
2. Short facts are that an application under section 46 of the Trade Marks Act, 1940 for rectification of the Register of Trade Marks by removing the registered Trade Marks No.50431 in class-16 from the Registrar was filed by the petitioner com­pany stating, inter alia, that the company started its business of publication of "Yellow Pages" directory from the year 2003 and with a view to give a distinctive identity and nomenclature to its Yellow Pages Directory it adopted a trade mark consisting of the letter "DYP" under line by a redline with "Y" red colour so as to create an impressive look of the trade mark and accordingly applied for the trade mark consisting of the letter "DYP" followed by the words "Dhaka Yellow Pages" and the application was numbered as 75352 in class-16 as on 15.05.2003 and subsequent­ly the said application was declared as abandoned at the instance of the opposite party No. 2 and that then the petitioner company filed an application for restora­tion of the abandoned application in form TM-56 and the hearing date was fixed on 10.5.2004 but the hearing could not take place. Due to high quality of Yellow Pages Directory containing maximum informa­tion about the business houses within Bangladesh and abroad it became a favourite to the business houses and differ­ent sections of business community so much so that by the expression "DYP" ref­erence is made to the "Dhaka Yellow Pages" Directory published with the trade mark "DTP" and such business success of the petitioner company and has infuriated the opposite party No. 2, Company and they have filed Title Suit No.10 of 2001 in the Court of District Judge, Dhaka for per­manent injunction and for damages for a sum of Tk. 5,00,000/-claiming that they are the registered holders of Trade Mark of "Bangladesh Yellow Pages" bearing Trade Marks Registry No. 50431 in class-26 and the suit has been decreed in part on contest without costs restraining the petitioner company and its men, servant and agents by an order of permanent injunction from infringing the opposite party No. 2 Trade Mark for passing of its directory with Trade Mark "Yellow Pages" and all books, plates and objective material relating thereto and thereby totally stopped the business of the petitioner company. The Trade Mark consisting of the words "Bangladesh yellow Pages" of the opposite party No. 2 is neither distinctive nor adapt­ed to distinguish the goods i.e. books pub­lished under the brand name "Yellow Pages" denote the type of directory where­in one would get all information's about the types of business of the different busi­ness whose name appear in the directory. The "Yellow Pages" is published with dif­ferent headings for example under the heading Doctors, Engineering houses, TT houses, shops selling, jewelry, cosmetics, computers, furniture, restaurants, hotels, tourist guides, insurance and bank etc. In view of the descriptive characters of vari­ous words, the legislature has made those as inadmissible for registration as trade marks and as such word come under the mischief of section 6(1) (d) and (e) of the Trade Marks Act, and can not be appropri­ated by a single individual and as such the registration of "Yellow Pages" as Trade Mark has affected the business community inasmuch as such registration is not per­mitted under law and that the Trade Mark No. 50431 in respect of Bangladesh "Yellow Pages" cannot remain in the regis­ter of Trade Marks and hence the registry need be rectified by removal of the said Trade Mark from registry under section 46(2) of the Trade Marks Act,1940 and that the said Trade Mark was registered without sufficient cause and without pro­viding legal coverage.
 
3. The defendant No.2 by filing affidavit-in-opposition stated, inter alia, that the application for registration No.75351 in class 16 was opposed by the opposite party No.2 by filing written objection before the Trade Mark Registrar and the said application of the petitioner was abandoned. However, the petitioner filed an application for restoration and the matter in pending and the petitioner Company published its publication for the 1st time in February, 2003.
 
4. Being aggrieved the opposite party No. 2 filed Title Suit No.10 of 2001 in the Court of District Judge, Dhaka for perma­nent injunction and for damages and the suit has been decreed in part on contest restraining the petitioner Company from publication of "Yellow Pages" directory and marketing of the same. But in spite of temporary injunction granted on 11.02.2003 the petitioner company pub­lished the "Yellow Pages" directory for the year 2004 in violation of the Court's order and in view of the decree passed in Title Suit No.10 of 2001, the petitioner compa­ny was not entitled to get an order of stay of operation of the registered Trade Mark No. 50431 in class-16 of the opposite party No. 2 inasmuch as the opposite party No. 2 would suffer irreparable loss and injury. The opposite party No. 2 applied for regis­tration of its product namely "Bangladesh "Yellow Pages" in due course and proper scrutiny by the Registrar and publication of required notice in the Trade Marks Journal No.205 for the month of July and August, 2002 published on 31.08.2000 at page 289 registration was given as Trade Mark No.50431 in Class-16 which is ear­marked for books publication in the name of the "Bangladesh Yellow Pages" keeping the word "Bangladesh" outside exclusive use thereof by the opposite party No. 2. The "Bangladesh Yellow Pages" as appearing is distinctive and distinguishable with the brand name "Yellow Pages" and that the opposite party No.2 has earned distinctiveness of the Trade Mark "Bangladesh Yellow Pages" by using the name continuously for 13 years and as such Trade Mark do not come under the mischief of section 6(1) (d) and (e) of the Act. The opposite party No. 2 is the propri­etor of the Trade Mark of "Bangladesh Yellow Pages" and the same having given in due course with due notice to all in accordance with law, the same cannot be removed from the register and the applica­tion has not been filed bonafide and that there is no allegation the said Trade Mark is not being used regularly by the opposite party No. 2 and in the rectification applica­tion the petitioner Company has not asserted any special circumstances for which the registered Trade Mark may not be removed from the register. The allega­tion as made is not bonafide and is harass­ing in nature and the opposite party No. 2 is continuously using the Trade Mark for the last 13 years.
 
5. We have heard Mr. Abdul Wadud Bhuiyan, the learned Counsel for the peti­tioner and perused the impugned judg­ment.
 
6. On consideration of the materials on record, we are of the view that the points raised by Mr. Bhuiyan in the review appli­cation were duly considered in the impugned judgment.
 
A review is by no means rehearing of the original matter.
 
Accordingly, the review petition is dis­missed.
 
Ed.