ISLAMABAD: The Supreme Court has reserved the judgment against the Sindh High Court’s ruling regarding the dispute of trademark between two private companies.
A two-judge bench, headed by Justice Qazi Faez Isa, and comprising Justice Yahya Afridi, heard the appeal of Shezan Services (Private) Limited, a private company. The SHC on May 14, 2018 had dismissed the Shezan Services’ petition.
Sultan Ahmed Sheikh, representing Shezan Services, argued that the SHC has incorrectly interpreted the provisions of Section 149(1) of the Trade Marks Act, 1940. The High Court has incorrectly interpreted and applied Section 10(2) of the Act 1940, and also failed to interpret and take into consideration the principals laid down in 2005 CLD, 1805.
Shezan Services (petitioners) had filed a civil petition for leave to appeal before the Supreme Court under Article 185(3) of Constitution against the SHC’s judgment.
Sultan Ahmed submitted that his clients are internationally-renowned manufacturers and merchants of jam, jellies, syrups, and squashes. They market and sell their products throughout Pakistan. He said the petitioners are the proprietor of several hundred trademarks, which are registered in Pakistan and some are registered abroad.
In view of the continuous and extensive use under trademark Shezan Label have become very popular in the Pakistani market. In fact, the trademark is associated with the petitioners only.
The counsel said the Shezan Bakers and Confectioners (Pvt) Ltd (respondent No 1) imitated the trademark Shezan of the petitioner and adopted the same for bakery and confectionery products.
The respondent applied for the registration of the trademark Shezan Label in class 29 in respect of, all kinds of patties, cheese, straw, chicken sandwiches, chicken spring rolls, vegetable spring rolls, fish rolls, fish kababs, pizza (minced), meat, fish, poultry, meat extracts, and preserved. Dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products; edible oils and fats, salad dressings; preserves being goods included in class 29.
Sultan Ahmed told that the Registrar Trademarks examined the respondent application and accepted the same erroneously and subsequently, advertised the same in the Trade Marks Journal No 574 dated 1st November, 2001 at page 922 for the purpose of inviting oppositions.
“Consequent upon the advertisement of the Trade Mark in the Trade Marks Journal, his client had filed notice of opposition on Form TM-5 under the provisions of Trade Marks Act, 1940, along with the complete evidence in support of the opposition, by way of affidavit,” the counsel said.
The Registrar Trademarks duly served the notice of opposition upon the respondent, who filed counter-statement on Form TM-6, along with the evidence by way of affidavit. The respondent also filed an agreement dated February 19, 1975, with a third party and heavily relied upon the same.
The petitioner counsel argued that first the agreement has not been executed by his client, but with the third party. Second, it was granted for running the two restaurants in Lahore only. It did not confer any rights upon the respondent of claiming concurrent use, let along apply for the registration of the trademark Shezan in their favour.
The matter came up before the registrar for hearing, who after relying heavily upon the agreement dated 19-02-1975, wrongly dismissed the opposition filed by the petitioners.
The petitioner preferred an appeal in the SHC, which has dismissed the same vide judgment dated 14th May 2018. The petitioner being aggrieved by and dissatisfied with the said judgment filed the petition before the SC for leave to appeal.
Copyright Business Recorder, 2022