P. Mittulaul Lalah And Sons vs Lal Products And Anr.

S. Jagadeesan, J

From the above statistics furnished by the appellant, it is clear that from 1968-69 to 1977-78, it specifically reflects the export sale of appellant's goods.

The column relating to indigenous sale specify a note ""Both Export/indigenous sales together"" The appellant had not furnished any details with regard to

the places of their sales and the separate sales figures in respect of each area. Of-course, the appellant has claimed that they are having their trade

throughout India. In the absence of any proof of evidence that the appellant is having the trade in the place of the first respondent and the first respondent

is fully aware about the appellant's trade mark, the adoption of the impugned mark by the first respondent cannot be said to be dishonest.

The first respondent has claimed the benefit of Section 12(3) only in the counter statement since the appellant in their opposition has averred that the

first respondent is not entitled for the registration of the impugned mark even under Section 12(3). When the first respondent has claimed the benefit of

Section 12(3) in the counter statement because of the denial by the appellant, it cannot be said that the first respondent had made such claim or adopted

the impugned mark with the knowledge of the appellant's registered mark.

Coming to the use of the first respondent's mark, there is no doubt that the first respondent is using the impugned mark since 1971. In fact, even in the

grounds of appeal, the appellant has stated as follows:

The necessary pre-condition that when the mark are identical, and the goods are identical, the use should be extensive and for a considerable length of

time, has not been identified. Whereas the word LALAH'S has been associated with the appellant since the year 1920, the respondent's use has only been

in the year 1971 abut 50 years later.

This statement would definitely be an admission with regard to the use of the impugned mark by the first respondent since 1971. Though the appellant

claimed that the first respondent has admitted knowledge of the appellant's mark while adopting the impugned mark, nothing has been pointed out from the

records, with regard to the admission of such knowledge by the first respondent. The first respondent has also along with his counter statement filed the

sales statistics. As per the said sales statistics, their turn over in the year 1971-72 was Rs. 79,913.16.

The sales had increased in the year 1987-88 to 7,85,291.97. On the date of the application, i.e., in the year 1981, the turn over of the first respondent is

nearly Rs. 3.00 lakhs. Hence, it is clear that the first respondent has been extensively using the impugned trade mark in the State of Uttar Pradesh for a

considerable length of 10 years prior to the date of the application and thereafter also continued to use the same. The period of long use as well as the

extent of use from the sales statistics would satisfy the honest concurrent use of the impugned trade mark by the first respondent.

So far as the confusion or deception is concerned, there is absolutely no evidence from the side of the appellant. Not even a single affidavit has been

filed in this regard. Considering the question of balance of convenience also, the first respondent has been suing the impugned trade mark since 1971. The

use of the impugned trade mark has in no way affected the sales of the appellant. The sales statistics of the appellant shows a phenomenal increase in the

sales as the years passed. The 1968-69 sales of Rs. 47,05,528.00 of the appellant has increased in the year 1985-86 to Rs. 2,07,03,273.14, so far as the

export is concerned and Rs. 72,88,420.58 insofar as indigenous sales are concerned. Similarly, the appellant's promotional expenses had also increased

from Rs. 12,643.00 during the period 1968-69 to Rs. 7,08,398.24 during the period 1985-86. Hence, the sales of the appellant seems to have never been

affected.

The other special circumstance can be the inaction on the part of the appellant. If the first respondent is to the construed with the knowledge of the

appellant's mark because of the registration, the appellant can also be imputed with the knowledge of the use of the impugned mark. If the appellant is

aware of the use of the impugned mark, if not since 1971, atleast at a later point of time, there is absolutely no explanation from the appellant for not

taking any action against the use of the impugned mark. The net result is that the first respondent had been using the mark for more than a decade till the

date of the application and nearly for a quarter century subsequent to the filing of the application for registration. In such circumstances, we do not think, it

would be proper to refuse the registration of the impugned mark.

However, taking into consideration of the fact that the first respondent is having the major trade in the State of Uttar Pradesh alone, we are inclined to

impose a restriction for the use of the impugned trade mark in the Northern India alone. Accordingly, the appeal is dismissed with a direction to the

Registrar of Trade Marks, Delhi, to restrict the use of the impugned trade mark 'LALA' in respect of application No. 371404 in class 30 within the States

of Uttar Pradesh and Uttaranchal alone. There will be no order as to costs.