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Judgment
Prabha Sridevan, J
1 . The petition is for grant of stay of the registration of the mark No. 1584216 registered for Class 7 in the name of respondent. The matter came up
on 25.04.2012, the counsel for the applicant pressed for stay. The counsel for the respondent was appearing on change of vakalathnama and sought
for adjournment and submitted that the requisite NOC for change of advocate from the previous counsel will be filed on the next date of hearing.
Therefore inspite of strong objections of the counsel for the applicant, the matter was adjourned and both the counsel agreed to argue on the
adjournment date, which was 24.07.2012.
On 24.07.2012, when the matter was listed, the counsel for the respondent again prayed for adjournment and said that if it is adjourned to
26.07.2012, he will be able to produce the client if possible. This was only an oral submission for granting adjournment and inspite of objections of the
counsel for the applicant, the matter was adjourned to 26.07.2012. On that day again, though the counsel was present, the NOC was not filed and the
party was also not present. We therefore felt ample opportunity had been given to the respondent to make his submissions on the stay petition.
3 . The mark that is ought to be stayed is SHUBH LUX. The status report shows the mark both in English and Devanagari script. It was advertised
on 16.03.2009 in the Trade Mark Journal No. 1412 user from 01.05.1998.
The learned counsel for the applicant produced documents to show prior user and also the dishonesty in adoption. The applicant's mark LUXMI has
been a label mark was registered on 10.01.1952 in the name of C.R. Auluck & Sons firm which was subsequently incorporated as the applicant for
which documents have been produced. Alongwith the application, the details of sales and details of advertisement expenses have been produced as
evidence to prove the applicant's user. The applicant is the proprietor of not only the mark LUXMI but allied marks for example LUXMI ZIG ZAG
LUXMI POPULAR etc. The certificate of registration of these marks have also been enclosed. He has produced the proceedings under the General
Sales Tax; Bureau of Indian Standards certifying their products and also invoices in the name of the applicant showing sales of LUXMI TAILOR or
LUXMI FAMILY or LUXMI DELUXE. T invoices commences from 1991 onwards. There are also advertisements of the product all over India in
various Indian languages. The dealer price lists and the model have also been produced.
5 . In 2010, the counsel for the applicant issued a legal notice to Bajaj Sewing Machine which is the respondent, calling upon him to cease and desist
using the mark LAXMI or LUXMI or LX with or without prefix SHUBH. A reply was sent b Md.Nazim to this notice which is in Hindi and which is
to the effect if the applicant has objection to the manufacture of SHUBH LUX machines he will stop manufacturing, and he has no problem. This is
annexed in N-163.
6 . On 23.02.2011, again a legal notice was sent by the applicant giving details of their registration and also stating that they had adopted the mark
LUXMI as early as 1951, reiterating that the respondent should cease and desist using the name. To this a reply has been given through a counsel on
03.03.2011, where the contrary to the adoption indicating that they had been using the mark and had command lot of respect and popularity. In the
earlier reply given by the respondent himself in N-163 it was stated that they are a very small unit and they manufacture only 200 machines. The
contrast in the two replies is startling.
7 . The learned counsel for the applicant pointed out to this change and submitted that at the time of early reply the registration was pending and
therefore he adopted the conciliatory tone but after the registration of the impugned mark was complete his stand totally changed. The learned counsel
referred to the trade mark search report, it showed clearly the various marks registered in the applicant's name and submitted that by no stretch of
imagination, the adoption can be said to be honest.
The respondent had filed a counter, where there is only a blanket denial. There is no specific denial of the applicant's earlier adoption namely in
1952 itself. It is stated merely that the two marks are different and nobody can assume that LUXMI stands for LX. It is a bald denial and it is alleged
that there is huge scale of sale of SHUBH LUX machine. Documents are filed alongwith it, where the hand written invoices are not clear, but
anyway they do not seem to bear the words SHUBH LUX. Even the printed invoices which commence only from the year 2011 only show that Bajaj
Sewing Machines is the seller of BAJAJ & AJANTA, HONDA, UJALA & SHUBHLUX. taking the best case for the respondent, there is evidence
of user only from 2011 which is after the cease and desist notice which was issued in 2010. The photographs enclosed with the counter statement
shows Sewing Machines where SHUBH is shown in a tiny script and LUX in a prominent font. This is why the applicant complaints of dishonesty.
9 . It is also seen that on 16.07.2008, the Examination Report from the respondent had raised the following objections Inter alia that an identity with an
earlier trade mark. It is true that this search report enclosed does not contain the applicant's mark. The learned counsel for the applicant submits that
this is only because the officers in the Trade Mark Registry only type the first syllable of any trade mark to find out if there are identical marks so in
all probability they would have type the word SHUBH. According to the learned counsel, the proper approach would be to type both the words
'SHUBH' and 'LUXMI' to obtain a correct search. He is right.
Considering the fact that the registration of the applicant's mark is earlier, the use of X in the word LUXMI and LAXMI, and the use of SHUBH
in a small font, th earlier reply stating that they manufacture only 200 machines and the fact that the evidence shows the user of SHUBH LUX only
from 2011, we are of the opinion that the applicant has established prima facie case. The balance of convenience and irreparable injury are not in
favour of the respondent, since the quantum of manufacture is very limited and the commencement of use of the mark appears to be only from 2011
and there is no rebuttal to any of the contentions of the applicant raised in the either the statement of case or in the stay petition. We have already
observed that the counter statement is a bald denial. There is no specific denial to the applicant's case of date of their user, the quantum of the sales
their reputation and the dishonesty of adoption by the respondent. Therefore the applicant has made out a case for grant of stay of the registration of
the mark SHUBHLUX under No. 1594216 in Class 7. Accordingly, Miscellaneous Petition No. 151/2011 is allowed. However, there will be no order
as to costs.