Wella's WELLAFORM mark cancelled on non-use grounds

In Wella AG v Akhar (Case 2006 CLC 1414), the High Court of Sindh in Karachi has dismissed Wella AG's appeal against the decision of the registrar of trademarks to cancel its registration for WELLAFORM on the grounds of non-use.

Wella's predecessor in title, Rapid Limited London, registered the trademark WELLAFORM in Class 3 of the Nice Classification on September 28 1949. This trademark was assigned to Wella with effect from August 19 1971. An individual named Shammim Akhtar challenged this registration on the grounds of (i) non-use by Wella for a period of five years and one month; and (ii) his use of the mark WELLA FORM since 1984.

Wella argued that the trademark WELLAFORM was not in use for the period of 1979 to 1985 on account of legal restrictions in force in Pakistan at that time, including an official ban imposed on the import of cosmetics. Wella further contended that the cosmetics bearing the trademark WELLAFORM were supplied to members of diplomatic staff of certain embassies in Pakistan.

The registrar of trademarks upheld Akhtar's claim for rectification of the Trademarks Register and the registrar cancelled the mark on the grounds of non-use. Wella appealed.

After going through the record and the precedents cited by both sides, the court concluded that Wella had failed to establish bona fide use of the mark WELLAFORM for a continuous period of five years and one month before the commencement of the rectification application. It therefore affirmed the decision of the registrar of trademarks.

Wella has challenged this decision before the Supreme Court of Pakistan.

Salman Ahmed Sheikh, Sheikh Brothers, Karachi