Hamdard National Foundation (India) v Hamdard Laboratories (WAQF) Pakistan

The decision concerned an opposition filed by Hamdard National Foundation (India) against a trade mark application by Hamdard Laboratories (WAQF) Pakistan. The dispute revolved around the registrability of the applicant's trade mark for certain goods and services. The matter was heard by Nicholas Smith, a Hearing Officer acting as Delegate of the Registrar of Trade Marks.

The primary legal issue before the Delegate was whether the opposition, which had been established in respect of some, but not all, of the applicant's goods and services, should lead to the rejection of the entire application. The Delegate also considered whether, in such circumstances, an amendment to the application should be offered to the applicant.

The Delegate reasoned that while the Registrar has a discretion to offer an amendment to remove goods or services for which an opposition has been established, this discretion is not automatically exercised. In this instance, neither party had filed evidence or submissions regarding the possibility of an amendment, nor was there evidence that the applicant had used or intended to use the trade mark for the remaining goods. Given that the opposition was established for a majority of the goods and there was no compelling reason to offer an amendment, the Delegate determined it was not appropriate to do so. The Delegate applied the principle that if an applicant wishes to register a trade mark for a narrower range of goods, a separate application should be made.

Consequently, the Delegate found that the opponent had established the ground of opposition raised under s 58 of the relevant legislation. The Delegate refused to register the trade mark and directed that the refusal be recorded one month from the date of the decision, unless a notice of appeal was filed. The opponent was awarded costs against the applicant.