ISLAMABAD: The Supreme Court on Thursday set aside the judgment of the Sindh High Court (SHC) and the decision of the Registrar dated 25 June 2003 regarding the trademark “Shezan” written in a particular manner.
A two-judge bench, headed by Justice Qazi Faez Isa, and comprising Justice Yahya Afridi on February 9 had reserved its ruling on a trademark dispute, instituted by Shezan Services (Private) Limited (appellant).
The apex court held that application No 100857 dated 29 December 1988 of the respondent is dismissed, and the respondent shall pay the costs of the appellant throughout.
The SHC on May 14, 2018 had upheld the decision dated June 25, 2003 of the Registrar of the Trade Marks.
Shezan Bakers & Confectioners (Private) Limited, (respondent) on 29th December 1988 had filed an application with the Registrar to seek the registration of the trade mark “Shezan” written in a particular manner.
The Registrar allowed the respondent’s application in terms; “That Applicant’s Application No.100857/29 is released from Opposition and proceed to Registration subject to conditions that the word “SHEZAN” in the mark will always be used in collaboration with either (Lahore) continental, (Lahore) oriental or (Lahore) bakery and will only be used within the territory of Lahore Division.”
The Registrar based on the basis of an agreement dated 19 February 1975 between the alleged predecessors of the parties. The appellant had an appeal against the Registrar’s order before the SHC, which was dismissed. The SHC’s judgment was also based upon the agreement.
The application of the respondent could also not be allowed because it had sought registration of a trade mark which was identical to already registered trademarks, belonging to the appellant, and, obtaining such registration is not permissible under subsection (1) of section 8 of the Act.
The agreement was relied upon and it was alleged that pursuant thereto the “Shezan”/Shezan trademarks had been assigned to the respondent. This was simply incorrect. The agreement states that Shezan Limited was “running two restaurants … together with a bakery” and these businesses were sold to a partnership firm.
The Court on 9 February 2022 provided an opportunity to the respondent to establish its succession to the said firm, and directed it to file, “certificate of incorporation and certificate issued by the Registrar of Firms of “Shezan, Lahore” if it was registered as a partnership firm, but if the firm was not registered than a copy of its partnership deed”. However, the requisite documents, which may have shown some connection of the respondent with the said firm, were not filed.
“Consequently, an adverse presumption may be drawn, ‘that evidence which could be and is not produced would, if produced, be unfavourable to the person who withholds it’ (article 129(g) of the Qanun-e-Shahadat, 1984),” said the judgment.
The Court noted that the Agreement itself had stated, “The firm will not use the word “Shezan” in any other manner whatsoever, except as provided (clause one of the Agreement), and that, ‘The firm will not open any restaurant or hotel or motel or bakery or catering concern neither under the style or title of ‘Shezan’ nor will it use the word ‘Shezan’ by prefixing or suffixing any word or expression with the same, at any place in Pakistan except as provided in clause-one.”
The judgment noted that the agreement was in respect of the sale of the certain businesses, and was not for the sale (or assignment) of “Shezan”/Shezan trademark(s). Regrettably, neither the learned Registrar nor the learned Judge read the Agreement in its entirety and/or in its correct perspective.
It is significant that the said firm, who the respondent claims to have succeeded, did not itself seek registration of the trade mark “Shezan”/Shezan, nor called upon the other party to the Agreement to assign to it the said trademarks.
The respondent’s claim is also undermined by the fact that it was only after about fourteen years of the execution of the Agreement that it submitted the Application. This confirms that neither the said firm nor the respondent had ever considered or understood that through the Agreement the “Shezan”/Shezan trademarks were transferred, assigned or relinquished in favour of the said firm.
Copyright Business Recorder, 2022