Unilac Sanowara (BD) Ltd. Vs. Bonlac Foods Limited and another, 60 DLR (AD) (2008) 161

Case No: Civil Appeal No. 217 of 2005

Judge: Md. Abdul Matin,

Court: Appellate Division ,,

Advocate: Mr. Rafique-ul-Huq,Dr. Kamal Hossain,,

Citation: 60 DLR (AD) (2008) 161

Case Year: 2008

Appellant: Unilac Sanowara (BD) Ltd.

Respondent: Bonlac Foods Limited

Subject: Trade Mark, Intellectual Property,

Delivery Date: 2008-7-15

 
Supreme Court
Appellate Division
(Civil)
 
Present:
MM Ruhul Amin CJ
Mohammad Fazlul Karim J
Md. Tafazzul Islam J
Md. Abdul Matin J
 
Unilac Sanowara (BD) Ltd.
..........................Appellant
Vs.
Bonlac Foods Limited and another
……..................Respondents
 
Judgment
July 15, 2008.
 
The Trade Mark Act, 1940
Sections 8, 24 and 46
The appellant having entered into the User Agreement with the Respondents and having full knowledge of the ownership of trademark of the respondents, committed fraud upon the Registrar of Trademarks in obtaining the registration. Therefore, the High Court Division rightly cancelled the registration in exercise of its power under section 46(4) of the Trademark Act…………………..(39 and 40)
 
Cases Referred to-
Jabed Ali Sarker vs. Dr Sultan Ahmed 11 DLR (AD) 78; Secretary, Ministry of Industries, Nationalised Industries Division vs. Saleh Ahmed and BTMC vs. Saleh Ahmed 1981 BLD (AD) 91; New Light Chemical Industries vs. Registrar of Trade Marks PLD 1963 Dacca 75 = 13 DLR 657; South Indian Manufacturing Co. Madura AIR 1958 Bombay 56 (V 45 C 21) and Societe De Fabrication Et De Distribution De Parfumeric Et Costnetique (Diparco) Societe Anonyme vs. Deputy Registrar of Trade Marks, Government of Pakistan PLD 1979 Karachi 83; KR Chinna Krishna Chettiar vs Sri Ambal and Co., AIR 1970 SC 146.
 
Lawyers Involved:
Rafique-ul-Huq, Senior Advocate (Kamal-ul-Alam, Advocate and Ahasanul Karim, Advocate with them) instructed by ASM Khalequzzaman, Advocate-on-Record—For the Appellant.
Dr. Kamal Hossain, Senior Advocate and Mahmudul Islam, Senior Advocate (Ziaul Hasan, Advocate with them) instructed by Mahmuda Begum, Advocate-on-Record— For Respondent No. 1.
Respondent No. 2-Not represented.
 
Civil Appeal No. 217 of 2005
(From the judgment and order dated 5-3-2005 passed by the High Court Division allowing the Trade Mart Application No. 9 of 2002).
 
JUDGMENT
 
Md. Abdul Matin J.
 
1. This appeal arises out of. leave granted by this Court on 3-7-2005 in Civil Petition for Leave to Appeal No. 326 of 2005 preferred by the opposite party No.1 appellant herein against the judgment and order dated 5-3-2005 passed by the High Court Division allowing the Trade Mark Application No. 9 of 2002 filed under section 46 of the Trade Marks Act, 1940 for rectification of the Registrar of Trade Marks by removing the appellant's trade mark registration No. 33243 in Class-29,
 
2. The facts, in short, are that the respondent No.1 filed the Trade Mark Application No. 9 of 2002 before the High Court Division under section 46 Of the Trade Marks Act, 1940 stating, inter alia, that the petitioner Bonlac Foods Limited has been engaged in the business of manufacturing and mar­keting of dairy products including powdered milk, butter, cheese, ghee, edible oils and fats and blends of edible oils and fats With dairy products in Class 29 throughout the world with reputation for its unrivalled quality for about three decades. With a view to giving a distinct identity and nomenclature to the products manufactured and marketed by the respondent they adopted a trade mark consisting of the word 'Diploma'. Due to superior quality of goods offered under the trade mark 'Diploma' and due to various promotional measures undertaken the trade mark 'Diploma’ has become very popular throughout the world as a product of quality bearing confidence and the trade mark has attained distinctiveness and has become distinctive of the products manufactured and marketed by the respondent No.1 under the aforesaid trade mark 'Diploma'. The trade mark connotes and denotes the property of the respondent alone and none else, hi fact, the trade mark 'Diploma' has become integrated with the business of the respondent. It was stated that Unilac Australia Pty Ltd formed a joint venture company with Sanowara Corporation on 21st June 1990 under the name and style 'Unilac Sanowara (Bangladesh) Limited' 4 Sanowara Corporation holds major shares in the appellant's company. The respondent No.1 Bonlac Foods Ltd. with a view to sell its dairy products under the trade mark 'Diploma' came to Bangladesh in the year of 1991 and entered into an User Agreement of 1st July, 1991 with the appellant. As per the terms and conditions of the said User Agreement, the respondent is only entitled to use the impugned trade mark for the purpose of marketing dairy products with the trade mark 'Diploma'. In the said Users Agreement, Bonlac Foods Ltd. was clearly mentioned as the 'Owner’ of the trade mark 'Diploma' and the appellant was clearly mentioned as the 'User' of the said mark. Therefore, it is crystal clear that in the eye of law the appellant Unilac Sanowara (Bangladesh) Limited was not the owner of the trade mark 'Diploma'. Rather Bonlac Foods Limited is the owner of the impugned trade mark. It was stated that Mr. Nurul Islam, Proprietor of Sanowara Corporation, executed the said User Agreement dated 1st July, 1991 as a representative of the 'User' i.e. appellant. With a view to seeking legal protection of the mark adopted by the respondent, for the first time in Ban­gladesh, they applied to the Trade Marks Registry under No. 33342 in Class 29 on 25th August, 1991. The Registrar of Trade Marks being satisfied about the right of property involved in the trade mark ordered the same to be advertised in the journal and accordingly, the trade mark was so advertised. As there was none who had any right, title and interest over the trade mark in question, there was no oppo­sition to the advertisement of the aforesaid appli­cation and the application proceeded with regis­tration unhindered. The trade mark so registered was renewed for a period of 15 years from 25-8-1998. After entering into the User Agreement dated 1st July, 1991, the appellant in a most unscrupulous manner and with malafide intention fully knowing that they were mere user of the said trade mark 'Diploma" most illegally and in gross violation of the stipulation contained in the said User Agreement dated 1st July, 1991, secretly applied for registration of a trade mark consisting of the word 'Diploma' and accordingly, the same was registered in favour, of the appellant under Application No. 33243 of 11th August, 1991  for Powdered Milk in complete derogation of the provisions laid down in Sections 10(1) and 8(a) of the Trade Marks Rules, 1963 where there is prohibition for registration of identi­cal or similar trade mark and therefore, the application filed by the appellant ought to have been refused. But with utter surprise the Registrar of Trade Marks without adhering to the specific provision of law as laid down in sections 10(1) and 8(a) of the Trade Marks Act, 1940 and Rule 24 of the revised Trade Marks Rules, 1963 granted registra­tion in favour of the appellant. The grant of regis­tration has been quite illegal creating confusion amongst the traders and the buyers about the true origin of the goods as the people of Bangladesh are used to purchasing 'Diploma' products for a long time with confidence. The result is that the said res­pondent has been suffering in terms of decreasing turnover of their products and also loss of their goodwill and business reputation. Many traders and customers have been complaining of low quality products manufactured and marketed by the appel­lant thinking the same as the products emanating from the respondent. This has caused an embarras­sing and alarming situation for the respondent as the continuation of the present position might lead to the closure of the business for which they have invested huge sums of money. The public interest thus suffers in the hands of the unscrupulous traders. The respondent not being aware of legal provisions of law relating to registration of trade marks failed to oppose registration of the trade mark No. 33243 in Class-29 of the appellant in time and the mark was registered quite secretly. The respondent being a foreign company, totally relied upon the appellant herein who was the agent and by taking advantage of that the appellant registered the trade mark in question in its favour. Moreover, Sanowara Corpo­ration who is the major share holder of the appellant company, very cleverly and secretly got the impugned trade mark registered in the name of appellant without the knowledge of the Unilac Aus­tralia Pty Limited as well as the respondent Bonlac Foods Limited. Only recently when the respondent terminated the User Agreement on 7th March, 2002 with the appellant respondent came to know that the trade mark 'Diploma' was also illegally registered in the name of the appellant under registered trade mark No.33243 in Class-29. In accordance with clause 14 of the said User Agreement dated 1st July, 1991; the Bonlac Foods Limited issued a notice of termination dated 7th March 2002 upon the appel­lant herein terminating the said User Agreement dated 1st July, 1991. It was stated that New Zealand Milk Brands Limited was subsequently appointed as the user of the said trade mark 'Diploma'. The registration of the trade mark No.33243 in Class-29 consisting of the word 'Diploma' was obtained by the appellant by practicing fraud upon the Trade Marks Registry as the appellant was never the owner of the impugned trade mark and the trade mark was obtained by the appellant by gross viola­tion of the stipulation as contained in the User Agreement. The respondent is a party aggrieved within the meaning of section 46 of the Act, The res­pondent has got strong prima facie case and the balance of convenience and inconvenience is in favour of the respondent and against the appellant.
 
3. The appellant contested the said applica­tion by filing affidavit-in-opposition contending, inter alia, that his trade mark was registered on 11-8-1991 whereas the trade mark of the respondent was registered on 25-8-1991, The appellant was registered as Joint Venture Company with Unilac Australia (Pty) Limited, a sister concern of the appellant. So, the trade mark of the respondent was registered before the respondent got their trade mark registered. There was no contravention of or failure to observe any condition under the Trade Marks Act, 1940 and the Trade Marks Rules, 190 in entering the trade mark of the petitioner in the register of the Registry office of Trade Marks. The application is an abuse of the process of the Court. The Trade Mark of the appellant has been entered in the regis­ter legally on sufficient cause and the same is remaining in the Register legally. There is no error or defect in such entry in the Register. The respon­dent filed the application on the contention that they obtained registration of the Trade Mark prior to the respondent. This is a false statement/In fact, the respondent obtained the registration of the Trade Mark through fraud because they knew about earlier registration made by the appellant. That a joint venture agreement was executed between Unilac Australia Limited and Messrs Sanowara Corporation for incorporation of appellant for repackaging milk powder and other dairy products. The appellant was incorporated on 21-6-1990 and set up a most modern industry in the year 1990 and got the trade mark registered on 11-8-1991, under the name and style 'Diploma' with a distinct device whereas the respondent got the trade mark registered on 25-8-1991 under the name and style 'Diploma' without any device. So, in fact, their registration was obtained through fraud. The appellant has been using the trade mark since 1991 whereas respondent never used its trade mark in Bangladesh, The Inter­national Business Distribution Officer of the respondent company made survey of the products of the appellant in Bangladesh and prepared a report on the basis of such survey where he acknowledged that trade mark has been obtained by appellant. So the respondent has no cause of action to file the present petition. In fact, this is a frivolous gambling in litigation. The aforesaid trade mark application was filed by Bonlac Foods Limited but the affidavit therein has admittedly been sworn by one Mr. Syed Sanaul Hoque, Advocate in his capacity as attorney of New Zealand Milk Brands Limited. It is apparent that the affidavit in the said trade mark application filed by Bonlac Foods Limited has been sworn by unauthorised persons and, as such, the trade mark application is liable to be rejected. The present trade mark application having been filed 11 years after the registration of the impugned trade mark on 11th August 1991 the present trade mark application is barred under the provision of section 25 of the Trade Marks Act, 1940. It is now too late to file this appli­cation under section 46 of the Act. The present trade mark application is barred by the principle of waiver, estoppel and acquiescence. The present application is barred under section 24 of the said Act also. The respondent has no cause of action to file the present trade mark application under section 46 of the Trade Marks Act, 1940 and, as such, the same is liable to be rejected. The respondent company being admittedly a company registered outside Ban­gladesh and having no assets whatsoever in Ban­gladesh is liable to furnish security for cost under Order XXV, rule 2 of the Code of Civil Procedure before the respondent could proceed further with the said trade mark application. An application has already been filed for furnishing security for cost which may be disposed of before proceeding further with the application. The respondent is not an aggrieved person within the meaning of section 46 of the Trade Marks Act, 1940 and, as such, is not entitled in law to maintain the application for rectifi­cation under section 46 of the Trade Marks Act, 1940 and consequently, the same is liable to be rejected with cost. The respondent never used the said trade mark in Bangladesh. The appellant has been using the trade mark within the full knowledge of the respondent since 1991. The respondent has also taken full advantage from the trade mark of the appellant who got the same registered in its own name with the knowledge of the respondent. It was stated that appellant is a joint venture company formed between Unilac Australia (Pty) Limited (UNILAQ and Sanowara Corporation under a joint venture agreement dated 20-6-1989. Unilac Austra­lia Limited is a sister concern of the respondent company which holds 49% shares in the appellant company The Company Secretary of the respondent company and Unilac Australia Pty Limited is the same person who since 1991 knows that the appellant has been using the trade mark in question. They never lodged any objection as to the trade mark registered in the name of the appellant. It was stated that UNILAC used to supply raw materials to the appellant from Australia. The so-called user agreement dated 1st July 1991 has no binding effect on the appellant because it was never signed by any person on behalf of the company, Nurul Islam nor Sanowara Corporation was a party to so-called user agreement which was signed by Nurul Islam as user. So-called user agreement was never executed by the appellant company. It had no binding effect on the appellant company who never authorised Nurul Islam, Proprietor of Sanowara Corporation to execute the so-called user agreement for the com­pany. It was stated that Nurul Islam signed not as the proprietor of Sanowara Corporation but as user. Further, as on 1st July 1991 respondent has no registered trade mark under name 'Diploma' and, as such, has no authority to execute any such user agreement. The said user agreement is void ab initio. The respondent never used its trade mark in Bangladesh. The trade mark of the respondent is quite different from that of the appellant. The appli­cation is a vexatious litigation and is nothing but an abuse of the process of the Court. It is liable to be rejected in limine. The said user agreement does not show that the respondent is the registered or unregistered owner or user of the mark 'Diploma' in any country including Bangladesh. It was further stated that it is an admitted fact that prior to and/or at the date of execution of the said user agreement on 1-7-1991 the respondent did not have any adoption, use or registration of their alleged mark 'Diploma' in Bangladesh or any other country. It was further stated that the said user agreement does not contain any provision prohibiting the appellant from registering the mark 'Diploma' as its own trade mark. In fact, now when the appellant has well established its business in Bangladesh with its own registered trade mark, the respondent has been tempted to file this vexatious and frivolous appli­cation as an attempt to make some illegal gain. The appellant got its trade mark registered on 11 -8-1991. The trade mark of the respondent is latter in point of time who by practicing fraud obtained the said trade mark registration No. 33342 dated 25th August 1991. It is an admitted fact that the respondent never marketed any goods under the trade mark 'Diploma' in Bangladesh nor has ever exported any goods under the trade mark 'Diploma' in Bangladesh nor any goods of the respondent under their trade mark 'Diploma' were available in the market of Bangla­desh at any time prior to and/or at the date of filing of the said trade mark application No.33342 dated 25th August, 1991 and, as such, it is apparent that the respondent has obtained the registration of the said trade mark 'Diploma' under No. 33342 dated 25th August 1991 by practicing fraud on the Trade Mark Registry. The certificate of trade mark registration of the appellant is already in the record of the Court. As stated above the so-called user agreement is not binding on the appellant as the same is admittedly not executed by them. So-called user agreement having been executed prior to obtain­ing of trade mark by the respondent the same has no legal effect. The said user agreement is void ab initio. It was further stated that the appellant having obtained registration of the trade mark in question prior to the respondent, sections 8(a) and 10 of the said Act and Rule 24 of the said Rules have no man­ner of application in the present case; on the contrary, the registration of trade mark fraudulently obtained by the respondent is liable to be rectified under section 46 of the said Act. The respondent never used its trade mark and thus there is no scope to deceive or confuse the consumer and, as such, section 8(a) and 10 have no manner of application in this regard. It was stated that the appellant has been adopting and using the trade mark consisting of the word 'Diploma' along with a device represented by a picture of a glass containing milk and fastened outside with a red coloured ribbon since 1991. The appellant with a view to protect their said trade mark adopted and used by them filed trade mark application No.33243 dated 11th August 1991 for powdered milk before the Registrar of Trade Marks, Dhaka, Bangladesh. The said trade mark application No. 33243 dated 11th August 1991 was duly advertised in the trade mark journal published on 31-10-2000 under the direction of the Registrar of Trade Marks, Dhaka. As there was no opposition filed against the advertisement of the said Trade Mark application the same was registered under No. 33243 dated 11th August 1991 by the Registrar of the Trade Marks Registry in the name of the appel­lant. It was stated that the appellant was never the agent of the respondent as alleged. It is not correct that the appellant got the trade mark registered in its name surreptitiously. The journal published by Trade Marks Registry is a notice to public at large and the respondent had sufficient knowledge of the trade mark of the appellant. Further, UNILAC, a shareholder of appellant, is the sister concern of the respondent No. 1 who always knew about such trade mark. The Company Secretary of both the compa­nies is same persons and had knowledge of the trade mark. Moreover, the appellant having obtain­ed the registration of the trade mark prior in time, the allegation made by respondent has no basis. The packets of the products containing the trade mark of the appellant was supplied by the respondent and, as such, had sufficient knowledge of the trade mark in question and that they were not aware of legal provision of law has no legal basis. Ignorance of law is no defence. It was stated that UNILAC had knowledge about the trade mark of appellant and its registration No.33243 in Class-29 on 11-8-1991 since the date of its registration and both of them are the beneficiaries of the registration of the said trade mark in the name of the appellant. It was stated that the Bonlac Foods Limited in the year 1991 in its quarterly News bulletin 'BONELINK' published a news item as to the commencement of operation of the milk powder packs in Diploma in sachets in Bangladesh along with a photograph of the Diploma sachet which clearly shows that the impugned 'Diploma' trade mark with device belonged to the appellant. Since 1991 on the instruction of the appellant both the respondent and its sister concern UNILAC supplied printed Sachet Flexo Pack and printed Rewinding Film with the print thereon of the impugned 'Diploma' trade mark belonging to die appellant which were used for packing the milk powder in the factory of the appellant. A perusal of the minutes of the meeting of the Board of Directors of the appellant held on 30-7-1995 in Melbourne, Australia, evidence that a decision therein was taken to the effect that the respondent would continue to supply the said Rewind material from Australia. A perusal of the Bangladesh market report compiled by Mr. David Weber on behalf of the respondent Bonlac Foods Limited on the basis of his market visit in April 2001 would show that it contains news and photographs of advertisement and billboards in Bangladesh of the impugned Diploma trade mark belonging to the appellant. It was stated that the respondent having never used or adopted the trade mark 'Diploma' illegally obtained by them has no cause of action to maintain the application. The said so-called user agreement had/has no effect on the appellant. The termination of the same marks no dif­ference so far appellant is concerned. The so-called user agreement is void ab initio. It is no agreement in the eye of law. It is further stated that it is abso­lutely false and incorrect that the New Zealand Milk Brands Limited was subsequently appointed by the respondent as the user of the said trade mark 'Diploma'. The appellant having obtained the regis­tration of the trade mark prior in time and the respondent having obtained the registration of the same trade mark by resorting to fraudulent means, the registration of trade mark of the respondent is liable to be rectified. It was stated that the respondent is required to produce the originals of all the annexures to the application and prove the same in accordance with law.
 
4. It was submitted that the High Court Divi­sion having noticed the facts that the applicant has neither pleaded nor adduced any evidence with regard to the issue of misrepresentation in the application of the respondent filed before the Registrar of Trade Marks and the issue of interpolation in the Trade Marks record and the issue of abandonment of the respondent's trade mark application, was wrong in law in considering the aforesaid issues beyond pleading and reaching the adverse findings thereon against the appellant solely relying on the oral submission of the learned Advocate of the respondent made at the time of hearing and scrutiny of the office record of the trade mark application No.33243 transmitted to the Court by the Registrar of Trade Marks and without reference to any legal evidences thereon and, as such, the impugned decision is liable to be set aside. The learned Coun­sel further submitted that the impugned decision and the findings of the learned Judge of the High Court Division on the issues beyond pleadings to the effect that the applicant's application has been filed on a misrepresentation of fact and that there is interpolation of the records and that there has been illegal restoration of the respondent's abandoned application and that the Registrar failed in his duty and wrongly restored the abandoned application, bringing all issues relating to the notice of the trade mark Registry and the decision given by the Registrar, and such findings having not been based on consideration of the legal evidences obtained from the Registrar in accordance with the provisions of section 74 of the Trade Marks Act, 1940 the impugned decision is not sustainable in law. The learned Counsel further submitted that having regard to the fact that appellant was not given any notice as required under the provision of section 46(4) of the Trade Marks Act, 1940 or sufficient opportunity to address the issues not pleaded in the application but taken up for consideration by the High Court Division at the time of hearing nor there is anything on the record to show that any such notice was given to the appellant and having further regard to the facts that the respondent has not been able to substantiate by any legal evidences their case under section 46(2) of the Trade Marks Act, 1940 that the original registration of the appellant's trade mark was illegal or improper being violative of any provisions of Trade Marks Act, 1940, the learned Judge of the High Court Division was not justified in law in exercising his jurisdiction under section 46(4) of the Trade Marks Act, 1940 in interfering with the registration of appellant's trade mark. The learned Counsel further submitted that having regard to the definite case of the appellant to the effect that the respondent never used their alleged trade mark 'Diploma' and never marketed any goods under the said Trade Mark 'Diploma' in Ban­gladesh and, as such, the respondent is not a person aggrieved within the meaning of the provision of section 46 of the Trade Marks Act, 1940 and the learned Judge of the High Court Division having in a way accepted the aforesaid claim of the appellant that the respondent is not a person aggrieved, erred in law in not holding that the respondent not being a person aggrieved, is not entitled to any protection under the provision of section 46 of the Trade Marks Act, 1940.
 
5. The respondent, with reference to section 4 of the Trade Marks Act and the user agreement dated 1-7-1991 has submitted that there was admis­sion on the part of the appellant that it will not claim any ownership right of the trade mark 'Diploma' in respect of the user thereof and thereby the appellant admitted that it was not the proprietor of the trade mark as was claimed in the application for registra­tion which nullifies the claim of the appellant that it will be proprietor of the trade mark and to have been using since 1989. The learned Counsel has further submitted that the clause of the user agreement showing that the ownership right of the trade mark Diploma was not assigned to the user Unilac Sanowara (Bangladesh) Ltd. is a total contradiction to the appellant's assertion of user of the trade mark since 1989 but, as a matter of fact, on the basis of the said agreement the trade mark has been used by it since 1991 upon its incorporation in 1990 and accord­ingly, the claim of the appellant for the use of the trade mark since 1989 is based on false representa­tion made with fraudulent intent. The learned Counsel has accordingly, submitted that the fraud has vitiated the registration, for section 24 of the Trade Marks Act, 1940 provides that the registration will be taken to be valid unless such registration was obtained by fraud.
 
6. Leave was granted to consider the above submissions.
 
7. Heard the learned Counsels and perused the petition and the impugned judgment and order of the High Court Division and other papers on record.
 
8. Mr. Rafique-ul Huq, learned Counsel sub­mits that the learned Judge of the High Court Division having himself noticed the facts that the applicant has neither pleaded nor adduced any evidences in regard to the issue of misrepresentation in the application of the appellant party filed before the Registrar of Trade Marks and the issue of inter­polation in the Trade Marks record and the issue of abandonment of the appellant's trade mark appli­cation, was wrong in law in considering the aforesaid issues beyond pleading and reaching the adverse findings thereon against the appellant solely relying on the oral submission of the learned Advocate of the applicant made at the time of hearing and scrutiny of the office record of the Trade Mark Application No.33243 transmitted to the Court by the Registrar of Trade Marks and with­out reference to any legal evidences thereon and, as such, the impugned decision is liable to be set aside.
 
9.  In support of his contention the learned Counsel has referred to Order VI, rule 4 and a decision in the case of Jabed Ali Sarker vs. Dr. Sultan Ahmed reported in 27 DLR (AD) 78.
 
10. We have gone through the records trans­mitted to this Court of Trade Mark Application Nos. 33243 and 35243 from the Assistant Registrar, Patents, Designs and Trade Marks (Trade Marks Wing) Dhaka which was called for by this Court for scrutiny.
 
11. In view of the materials on record the learned Counsel for the respondents did not contest this point in respect of interpolation and therefore, in absence of any pleading alleging interpolation and in view of the explanation by the Registrar about overwriting, the finding of the High Court Division on the question of interpolation appears to be wrong. But it has no bearing on the ultimate merit of the case.
 
12. Mr. Huq next submits that appellant has not been given any notice as required in the case. Suo moto exercise of power of the Court under the pro­vision of section 46(4) of the Trade Marks Act, 1940 or sufficient opportunity to address the issues not pleaded in the application but taken up for consi­deration by the High Court Division at the time of hearing nor there is anything on the record to show that any such notice was given to the appellant and having further regard to the facts that the respondent has not been able to substantiate by any legal evi­dences their case under section 46(2) of the Trade Marks Act, 1940 that the original registration of the appellant's trade mark was illegal or improper being violative of any provisions of Trade Marks Act, 1940 the learned Judge of the High Court Division was not justified in law in exercising his suo moto jurisdiction under section 46(4) of the Trade Marks Act,1940 in passing the impugned order interfering with the registration of appellant's trade mark.
 
13. So far as this argument is concerned it appears that this Court in the case of Unilac Sanowara (ED) Ltd vs. New Zealand Milk Brands in Civil Petition for Leave to Appeal No. 402 of 2006 consi­dered section 46 of the Trade Marks Act, 1940 and held as under:

"From a reading of sub-section (4), it is clear that the High Court Division has the power under sub-section (1) of section 46 to cancel the registration and rectify the register of its own motion. Since the present petitioner was very much before the High Court Division there was no need for any further notice. Besides, the petitioner was fully heard in the matter and no prejudice has been caused due to the non-service of any notice."
 
14. The learned Counsel submits that the defi­nite case of the appellant to the effect that the respondent never used their alleged trade mark 'Dip­loma' and never marketed any goods under the said Trade Mark 'Diploma' in Bangladesh and, as such, the respondent is not a person aggrieved within the meaning of the provision of section 46 of the Trade Marks Act, 1940 and the learned Judge of the High Court Division having in a way accepted the afore­said claim of the appellant that the respondent is not entitled to any protection under the provision of section 46 of the Trade Marks Act, 1940.
 
15. The definite case of the respondent before the High Court Division in their application under section 46 of the Trade Marks Act, 1940 is that the registration of the Trade Mark No. 33243 in Class 29 consisting of the word 'Diploma' was obtained by the appellant by practicing fraud upon the Trade Marks Registry as the appellant was never the owner of the impugned trade mark and the trade mark was obtained by the appellant by gross viola­tion of the stipulation as contained in the User Agreement.
 
16. The further case of the respondent in the said application before the High Court Division is that as the appellant has been the agent of the respondent they are under law debarred from making any claim whatsoever over the trade mark 'Diploma' owned by the respondent and which exclusively belongs to the respondent. The registration has thus been obtained by exercising fraud upon the Trade Mark Registry and also upon the respondent. In view of the circumstances it is necessary for the ends of justice and fair play that the aforesaid regis­tered trade mark may be removed from the register under the provision of section 46 of the Trade Marks Act, 1940.
 
17. Dr Kamal Hossain, learned Counsel appear­ing for the respondents, has referred to paras 10 and 12 of the petition under section 46 of the Act and has referred to the application dated 11 August 1991 appearing at page 285 of the paper book and sub­mits that in the said application the appellant assert­ed that they are the owner of the Trade Mark 'Dip­loma' and therefore, practiced fraud upon the Regis­trar in obtaining the registration.
 
18.  Dr Kamal Hossain, learned Counsel, has referred to the supplementary affidavit on behalf of the opposite party appellant and drew our attention to para 4 thereof which runs as under:
 
"Subsequently an User Agreement was entered into between the petitioner and opposite party No. 1 on 1-7-1991 where it was clearly stated:

"This agreement relates to the use of the Diploma Trade Mark for the re-packing of milk powders in Bangladesh."
 
This agreement was executed by Unilac Sanwara (Bangladesh) Ltd. i.e. the opposite party No.1, and Bonlac Foods Ltd. i.e. the petitioner in this case. The said User Agreement is annexed hereto as Annexure-2."
 
19. Dr Kamal Hossain also referred to the User Agreement Annexure-II at page 315 of the paper book and the User Agreement provides the following clause:
 
20. "This agreement in no way assigns any ownership rights of the 'Diploma' trade mark to the User." and submits that the appellant is not permit­ted to claim ownership in view of such agreement and admission in the affidavit mentioned above but deliberately misled the registering authority and practiced fraud upon them in obtaining the regis­tration by claiming ownership of the trade mark to the serious prejudice and detriment of the respon­dent.
 
21. Mr. Mahmudul Islam, learned Counsel who also appeared for the respondent, submits that the User Agreement is dated 1st July 1991 and the appel­lant appeared before the Registrar only after 10 days of the agreement and claimed themselves to be the owner of the trade mark.
 
22. While refuting the argument of Mr. Rafique-ul-Huq that the respondents cannot file the petition under section 46 of the Act Mr. Islam refers to section 20 of the Act and submits that nothing in the section shall be deemed to affect right of any person for passing off goods as the goods of another person or the remedies in respect thereof which is provided in sub-section 2 of section 20 of the Act.
 
23. In support of his contention Mr. Mahmudul Islam, learned Counsel has referred to Kerly's Law of Trade Marks and Trade Names, Twelfth Edition (by TA Blanco White, one of Her Majesty's Counsel and Robin Jacob, one of Her Majesty's Counsel, London Sweet & Maxwell 1986). The relevant portion runs as under:
 
"Subject to two qualifications, nothing in the Trade Marks Act affects a trader's right against another in an action for passing-off. It is, therefore, no bar to an action for passing off that the trade name, get-up or any other of the badges identified with the plaintiff's business, which are alleged to have been copies or imitated by the defendant, might have been, but are not registered as trade marks, even though the evidence is wholly addressed to what may be a mark capable of registration. Again, it is no defence to passing-off that the defendant's mark is registered. The Act offers advantages to those who register their trade marks, but imposes no penalty upon those who do not. It is equally no bar to an action for passing-off that the false representation relied upon is imitation of trade mark that is incapable of registration. A passing-off action can even lie against a registered proprietor of the mark used upon."
 
24. Referring to section 18A of the Foreign Exchange Regulation Act, 1947. Mr. Rafique-ul Huq argued that the very User Agreement was illegal and in breach of section 18A of the Foreign Exchange Regulation and section 56 of the Contract Act.
 
25. Section 18A runs as under:
 
"185A. Restriction on agents.— (1) Notwith­standing anything contained in any other law for the time being in force, no person shall, except with the general or special permission of the Bangladesh Bank, act or accept an appoint­ment to act as an agent in the trading or com­mercial transactions, or as a technical or management adviser or any other employee' in Bangladesh (whether or not a citizen of Bangladesh) or a person resident in Bangladesh (but not a citizen of Bangladesh) or of a com­pany (other than a banking company) not incorporated under any law in force in Ban­gladesh.
(2) A person acting or holding an appoint­ment to act as an agent or as an adviser or any other employee in Bangladesh of a person or company referred to in sub-section (1) imme­diately before the commencement of the Foreign Exchange Regulation (Amendment) Ordinance, 1976 (Ord. No. LXXVI of 1976), may continue to so act for a period not exceeding six months from such commencement unless the Bangladesh Bank has, upon an application made in this behalf in such form and containing such particulars as the Bangla­desh Bank may direct, granted him permission to continue to so act thereafter."
 
26. Mr. Huq submits that since no permission was taken from Bangladesh Bank the User Agreement is an illegal agreement.
 
27.  Refuting the argument of Mr. Rafique-ul Huq, Mr. Mahmudul Islam has referred to the case of Secretary, Ministry of Industries, Nationalised Industries Division vs Saleh Ahmed and Bangladesh Textile Mills Corporation vs. Saleh Ahmed reported in 1981 BLD (AD) 91 where it was held that no per­son can take advantage of his own wrong.
 
28. Mr. Mahmudul Islam submits that as per section 18A of the Foreign Exchange Regulation if it was the duty of the user to take permission and if he did not he cannot take advantage of his own failure.
 
29. Mr. Islam has referred to section 8 of the Trade Marks Act and submits that the Registrar should not have registered the trade mark of the appellant as it was likely to deceive or to cause con­fusion in the minds of the people using the goods in question under the trade mark.
 
30. He also referred to section 24 of the Act and submits that the registration if obtained by fraud acquires no validity even after seven years.
 
31. He submitted that while granting registra­tion the pending application of the respondent was not considered which was the duty of the Registrar to consider as mandated by Rule 23 of the Trade Marks Rules, 1963.
 
32. Mr. Islam has referred to the case of New Light Chemical Industries vs. Registrar of Trade Marks reported in PLD 1963 Dacca 75 = 13 DLR 657. In that case it was held:
 
"In this connection, I may observe that in a case under section 10 the evidence of user is entirely irrelevant. The only test that has to be applied when the Court is considering a case under section 10 is the test of identity or resem­blance. Even if the applicant could establish a long user, if the respondent could establish no user at all, if there was resemblance between the marks of the applicant and the respondent, and if there was likelihood of deception, and if the respondent was first in the field and had their Trade Mark registered, the applicant's Trade Mark could not be registered."
 
33. Mr. Islam has also referred to the case of Ciba Ltd. Basle Switzerland vs M Ramalingam and S Subramaniam Trading in the name of South Indian Manufacturing Co. Madura reported in AIR 1958 Bombay 56 (V 45 C 21) where it was held as under:
 
"Now, in considering both section 46 and section 10 it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out-that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or incon­venience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore, essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a parti­cular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry."
 
34. Mr. Mahmudul Islam has referred to the case of Societe De Fabrication Et De Distribution De Parfumerie Et Cosmetique (Diparco) Societe Anonyme vs Deputy Registrar of Trade Marks, Government of Pakistan reported in PLD 1979 Karachi 83. In that case it was held:
 
"The main question is, whether the respon­dent knew or was aware that the Trade Marks applied for by it were the property of the appel­lants. I am satisfied from the evidence and the circumstances that the respondent was aware that these marks belonged to the appellants. In the first place, it was not the case of the res­pondent that it had selected these two words of the French Language which appeared to it to be attractive for adoption as Trade Marks for perfumery and other allied goods. In the second place, the respondent did not seriously deny prior knowledge of the appellants' marks. Its case was that whatever be the position in foreign countries, the appellants could not claim to be the proprietors of those marks in Pakistan for the reason that they had neither been used nor advertised in this country prior to the date of the respondent's applications. The respondent has not alleged that the appellants had abandoned any intention to use their foreign Trade Marks in Pakistan for the goods and such inference cannot also be drawn in this case as the appellants have now themselves filed applications for registration of their marks and have expressed their intention to use them in Pakistan. Therefore, there is no doubt that the respondent has deliberately copied the Trade Marks of the appellants and now claims to be their proprietor. In similar circumstances, the respondent has applied for registration in its name of six other marks of foreign owners which comprise of the words of the French lan­guage, as will appear from the affidavits filed on behalf of the appellants, which fact is not denied by the respondent. There is, therefore, little doubt that the object of the respondent in applying for registration of words of the French language, and that too, the Trade Marks of the former owners, could be no other than to induce purchasers of perfumery and allied goods to believe that they are of French origin.
 
The conduct of the respondent in appro­priating Trade Marks of foreign owners is not proper. The respondent has not come to the Tribunal with clean hands and in the interest of the purity of the Register the law ought not to grant registration to an applicant whose conduct is not beyond reproach. There is also another factor which should be kept in mind. It is common knowledge that trade in French perfumery is of international character. With the revival of international trade and interna­tional publicity, the rights of owners of foreign Trade Marks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country."
 
35. Mr. Islam has also referred to Reports of Patent, Design and Trade Marks Cases and the case of 'Gynomin' Trade Mark.
 
36. It was held that in these circumstances, the former agent could not claim to be the proprietor of the mark for the purpose of registration, and further that the former agent's mark, being an appropriation of the property of the former principal, was disentitled to protection in a Court of Justice.
 
37. It was further held that where an applicant for registration knowingly makes a false claim to be the proprietor of the mark, the registration is 'obtained by fraud,'
 
38. Mr. Islam has also referred to the case of KR Chinna Krishna Chettiar vs Sri Ambal and Co, reported in AIR 1970 SC 146 where it was held:
 
"The vital question in issue is, whether if the appellant's mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered? (See In the matter of Broadhead's Application for Registration of a trade mark, 1950-67 RFC 209). It is for the Court to decide the question on a compari­son of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature 'Andal'. There is a striking similarity and affinity of sound. There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal."
 
39. Mr. Islam concludes by submitting that the appellant having entered into the User Agreement with the respondents and having full knowledge of the ownership of the respondents deliberately misre­presented before the Registrar of Trade Marks and in the very application claimed Ò`iLv¯—Kvix cb¨ cÖZxKwUi gvwjKvbv `vex`viÓ and thus committed fraud upon the Registrar in obtaining the registration and the High Court Division committed no wrong in cancelling the registration in exercise of power under section 46(4) of the Act which calls for no interference by this Court.
 
40. We have perused the User Agreement and the application dated 11 August, 1991 filed by the appellant before the Registrar, the supplementary-affidavit filed by the appellant before the High Court Division admitting the User Agreement and we have considered the important clause of the agreement which says that the agreement in no way assigns any ownership right of the Diploma Trade Mark to the user and we are of the opinion that the finding of the High Court Division that the appellant committed fraud upon the Registrar by claiming the ownership themselves in order to obtain the regis­tration is based on proper appreciation of materials on record.
 
41. We further hold that what is important in a case like this is a likelihood of deception of the people at large in buying the goods independent of the interest of the contesting parties and the High Court Division duly appreciated this aspect of public interest and rightly cancelled the registration.
 
In such view of the matter, we find no merit in this appeal which is accordingly, dismissed.
 
Ed.