ORDER
1. Plaza Chemical Industries, the petitioners, have filed this Petition by way of an appeal against an order passed by the Joint Registrar of Trade Marks rejecting their application for rectification. As from April 16, 1943 a trade mark consisting of a label containing a device of a head of a woman, snow clad mountains and the word “TIBET” was registered in the name of the respondents. Kohinoor Chemical Company Ltd, in respect of facial cream. Upon partition of India the respondents migrated to Pakistan. It is the case of the petitioners that since 1962 they started manufacturing and marketing a facial cream under a label containing the words “TIBET SNOW”. On March 6, 1964 the Petitioners filed an application in the office of the Trade Marks Registry at Delhi for registration of the said label as a trade mark. That application was refused stating that the respondents were Registered Proprietors of a trade mark containing the word “TIBET SNOW”. On March 4, 1966 the Petitioners made an application in the office of the Trade Marks Registry at Bombay for removal of the Registered Trade-Mark in the name of the Respondents. In support of this application they alleged that the respondents got the said trade mark registered without any bona fide intention on their part to use it in respect of facial cream. They further alleged that upto one month before the date of the application for rectification, the respondents have not used the said trade mark for a continuous period of five years in respect of facial cream. According to them, under circumstances, this should be regarded as an abandoned mark by the respondents.
2. The application for removal of the trade mark was resisted by the Respondents. In their affidavit in reply they contended that prior to partition of the country they were carrying on business at Delhi and after the partition of the country they shifted to Karachi in West Pakistan. They also stated that the goods covered by the registration of the trade mark were being sold in India until a ban on imports by the Government of India was imposed. In spite of the ban, according to them, the mark was being used in India through the medium of advertisement in leading newspapers and journals, all of which had circulation in India as well. They also stated that no sooner the embargo placed on import of cosmetics in India is lifted by the Central Government, they would readily and immediately export their goods to India. They submitted that the temporary suspension of export due to restrictions imposed by the Government was not a ground for rectification.
3. Before the Joint Registrar of Trade Marks the application of the Petitioners of removal was supported in view of the provisions of Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958. The ground was that upto one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being. It was admitted by the respondents that for the requisite period the mark was not used in India. It was however alleged that such a non-user was due to special circumstances in the nature of import restrictions imposed by Government and, therefore, in view of the provisions of Section 46(3) of the Act the petitioners were not entitled to rely upon such non-use. That contention was accepted by the Joint Registrar of Trade Marks and the application of the petitioners was rejected.
4. The present petition is filed by way of appeal against that order.
5. Mr. Shah on behalf of the petitioners contended that a continuous period of five years has elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by the respondents for the time being. His submission is that imposition of restrictions qua import by the Central Government, cannot be regarded as a special circumstance and that the Joint Registrar was in error in not allowing the petitioners’ application for removal of registration of the trade mark.
6. Section 28 enunciates the rights conferred by registration. Under that section, subject to the other provisions of the Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. It is not disputed that as from April 16, 1943 the respondents are the registered proprietors of a trade mark consisting of a label containing a device of a head of a woman, snow-clad mountains and the word “TIBET” in respect of face cream. As such registered proprietors the respondents have the exclusive right to the use of the trade mark in relation to face cream.
7. Section 46 of the Act lays down the circumstances under which a trade mark may be removed from register. Reliance is placed upon the provisions of Section 46(1)(b) in the present case to support the application for removal. It is as under :
“46 (1) Subject to the provisions of Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either-
(a) x x x x x x
(b) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being.”
On the evidence before the Joint Registrar the conditions laid down in sub-section 1 (b) above, were fulfilled. However, that by itself is not sufficient to remove the trade mark register in view of the provision of sub-section (3) of S. 46. The relevant part of sub-section (3) lays down that an applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade mark in relation to the goods to which the application relates. Question arises whether it is established in the present case that the non-use of the trade mark for the requisite period constitutes a special circumstance within the meaning of Section 46(3) of the Act. It is well settled in view of the decision in Bali Trade Mark, (1966) RPC 387 that import restrictions constitute special circumstances within the meaning of Section 46(3) of the Act. It was laid down in that case that “special circumstances in the trade” justifying non-use of the trade mark did not end when the Government restrictions on importation from America were eased, but continued as long as importation was impracticable in a business sense. It is not disputed in the present case that right from the year 1954 onwards in view of the import policy declared from time to time by the Government of India, import of cosmetics is prohibited in this country. These special circumstances exist due to which the respondents were unable to use their registered trade mark in India. Their case is, therefore, covered by the provisions of Section 46(3) and even though the conditions laid down in Section 46(1)(b) are fulfilled in the present case, they will not be entitled to have the respondents’ registered trade mark removed from the register.
8. In the result, the appeal fails and is dismissed with costs. Costs quantified at Rs. 400/-.
9. Appeal dismissed.
