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Judgment
S. Usha, J
The original rectification application has been filed for removal of the trade mark LT under No. 1169161 in class 25 from the Register of Trade
Marks under Sections 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The applicant is carrying on business and activities under the name and style of M/s Life Time Fashion - manufacturing, distributing and selling
readymade garments including jeans, trousers and shirts. The applicant is the owner and proprietor of the trade mark L.T. in respect of the above
mentioned goods falling in class 25. In the year 1998, the applicant along with his partner honestly adopted and bone-idle used the trade mark L.T.
which was in fact abbreviation of the firm name M/s Life Time Fashion and applied for registration of the trade mark under No. 806336 in class 25 on
16.6.1998 as a proposed to be used mark. By virtue of extensive and continuous use, the trade mark has acquired enviable goodwill and reputation.
The trade and people recognize the trade mark L.T. with the applicant's source and origin and from none else.
The Respondent has obtained registration of the trade mark LT in class 25 under No. 1169161 in respect of clothing and wearing apparels of all
sorts including hosiery and boots, shoes, slippers included in class 25. The applicant has filed the rectification application for removal of the said
impugned registration on the ground that:
(a) the applicant is the owner and proprietor of the trade mark LT in respect of readymade garments including jeans, trousers and shirts since the year
1998;
(b) the impugned trade mark was applied for and obtained fraudulently and malafidely and on false claims, assertions and documents by willful
suppresio veri & suggestion falsi all of which amounting to fraud. Therefore, the mark is wrongly remaining on the Register without sufficient cause;
(c ) the impugned registration has been obtained on the basis of false user as the Respondent never used the trade mark LT for clothing and wearing
apparels of various sorts;
(d) the applicant had filed a suit No. 341 of 2005 for a declaration that the applicant is the proprietor and in another suit No. 336 of 2004 by the
Respondent against a third party, the applicant was impleaded as the Defendant and the Additional District Judge rejected the prayer for interim
injunction;
(e) the Respondent has claimed fraudulent proprietary right over the impugned trade mark in relation to goods falling under class 25;
(f) the Respondent has sought dishonest proprietary right when they were aware of the applicant's proprietary right;
(g) the Respondent is guilty of fraud in alleging wrong user since 1.1.1946 in relation to clothing and wearing apparels in as much as the Respondent
has never used the impugned trade mark for goods mentioned till date;
(h) the Respondent cannot claim monopoly over the mark consisting of two letters L and T and they have abandoned the opposition to application in
class 9 in respect of electric fittings and accessories including switch gear and cables;
(i) the impugned registration is in contravention of the provisions of Section 9 of the Act as the trade mark was not distinctive of the impugned goods
neither at the time when the impugned application was filed nor at the time when the impugned registration was obtained nor even till date;
(j) the impugned trade mark is identical with the applicant's trade mark and the goods are also same;
(k) the applicant is prior adopter and continuous and exclusive user of the trade mark;
(l) the impugned registration is barred by Section 11 of the Act as the impugned trade mark would deceive and cause confusion;
(m) the impugned registration has been obtained to gain profit earned by the applicant on account of extensive and continuous use;
(n) the Respondent is guilty of passing off;
(o) the Respondent has not used the trade mark in respect of the goods for which registration was obtained for a period of more than five years and
three months nor does he intend to use the same;
(p) there was no special circumstances or factor which exists in favour of the Respondent, on the basis of which the impugned registration may be
sustained;
(q) the impugned registration is contrary to the provisions of Sections 9,11,12 and 18 of the Act;
( r ) the impugned registration is void ab-initio;
(s ) the impugned registration exists on the register without sufficient cause;
(t ) it is in the interest of the purity of the register that the entry be removed;
(u) it is in the interest of justice, equity and good conscience that present application be allowed;
The Respondent herein filed their counter-statement denying the averments made in the grounds of rectification. At the outset, the Respondent
stated that the present rectification application was not maintainable in view of the provisions of Section 124 (b) (ii) of the Act.
They further stated that they are well established and reputed business house of long standing international repute carrying on business inter alia, as
engineers, construction contractors, manufacturers of switchgears, heavy engineering goods, electrical and electronic equipments having diverse usage
and application through their predecessors since last nearly several decades. The Respondents were a partnership firm in the year 1938 for the
purpose of carrying on business as engineers - the partners were Henning Holck -Larsen and Soren Kristian Toubro. On 7th February, 1946, the
partnership firm was incorporated as a limited company with the names of the parners Larsen & Toubro. In the year 1938, the Respondents were
carrying on business of construction work and over the years they had diversified their business into various fields. They are renowned and known by
their short name i.e. L & T, which is the abbreviation of the word Larsen & Toubro. The said LT logo is in continuous use since January, 1946. the
House of Larsen & Toubro and LT log is synonymous with and is exclusively identified with them and their business.
The trade marks LARSEN & TOUBRO, the LT logo and the abbreviated corporate name and the marks L& T are marks of high esteem and
reputation and have become a household symbol/name in India. The trade marks are distinctive indicia of high quality, excellence, achievement,
success and such other traits. By virtue of continuous use, prior honest adoption, the trade mark has acquired valuable common law rights. The said
logo is identified by the large section of our society, the trade and the public as a well known trade mark distinctive of our merchandise. The trade
mark which is a well known trade mark is entitled to be protected under the provisions of Sections 11(9), 11(10) and 11 (11) of the Act. The impugned
trade mark is distinctive and the mark is not likely to cause any confusion or deception among the public and hence does not offend the provisions of
Section 9 of the Act. The impugned trade mark is highly symbolic of and is exclusively identified and associated with the Respondent and with none
else by which the registration would not offend the provisions of the Act. The use of the Respondent's mark would not result in any passing off being
caused especially when the Respondents are using their trade mark and are not misrepresenting the same in any manner and hence the registration
would not offend the provisions of Section 11(3) of the Act. The said trade mark has acquired a secondary meaning.
The impugned registration has been obtained with an aim of using the said trade mark in the near future in relation to the goods under class 25. The
Respondent therefore denied the allegation that the impugned trade mark was registered without any intention on the part of the Respondent to use the
same and ought to be removed under the provisions of Section 47 of the Act. The rectification application has been filed in the year 2007 within a
period of two years i.e. 2005 the date of registration hence the rectification application is premature and the mark cannot be removed from the register
of trade marks.
The present application for rectification is a counterblast to the civil suit filed by the Respondent in C.S. No. 336 of 2004 for infringement and
passing off. It is denied that the registration is malafide and the same is secured playing fraud and the entry in the register is wrongly remaining on the
register without sufficient cause. The balance of convenience is in favour of the respondent and the registered trade mark ought not to be removed
from the register.
On completion of the pleadings, the matter was listed for hearing the matter. Meanwhile, in the stay application in M.P. No. 69/2007 an order
dismissing the miscellaneous petition was passed by this Appellate Board on 13.03.2009, the applicant had filed a review petition to review the order.
The Registry of this Board has raised the issue of maintainability of the review petition and the matter was listed for hearing to decide the
maintainability issue on 07.06.2010. The counsel for the applicant considering the fact that this Board is of the view that the review petition is not
maintainable as this Board has no powers to review its own orders had consented not to press the review petition and argued the main matter.
Accordingly the review petition was dismissed as not pressed and the main matter was heard where learned Counsel Shri S.K. Bansal appeared for
the applicant and learned Counsel Shri Vinod Bhagat appeared for the Respondent.
Learned Counsel for the applicant submitted that the impugned application for registration under No. 1169161 in class 25 was made on 24.1.2003
claiming user since 01.01.1946 and the same was advertised before acceptance. The user claimed is fraud as the Respondent had never used the
trade mark for goods in class 25. In fact even as on date the Respondent is not dealing with goods falling in class 25.
The applicant had filed an application for registration of their trade mark L.T. under No. 806336 in class 25 as proposed to be used. The
Respondent had filed a civil suit against a third party for infringement and passing-off and subsequently imploded the applicant as a Defendant.
Thereafter, in the year 2005 the applicant filed a suit for declaration that the applicant is the proprietor of the trade mark and for an injunction
restraining the Respondent from interfering with their business. The applicant is an aggrieved person as the Respondent had filed a civil suit against
them as well the trade of business was same.
The applicants submitted that the provisions of Section 124 of the Act were not applicable. The main ground of rectification was that the
Respondent had not carried business in respect of the goods for which registration was obtained. The counsel drew our attention to ground two of the
rectification application where it was clearly stated that not a single document out of 1185 pages filed to prove use of the trade mark in respect of
goods falling under class 25 though user is claimed since 01.01.1946.
The applicant brought to our notice the averments made in the counter-statement and stated that in para 3 of the counter-statement it is seen that
the use has been in respect of goods other than garments falling under class 25, the other averment in para 6 was that the impugned application was
made with an aim of diversifying their business activities and in order to protect their statutory rights. In para 11 it is stated that the registration was
obtained with an aim of using the said trade mark in the near future in respect of garments. The counsel submitted that the counter-statement was
filed on 02.07.2008 and it only shows that even on the date of filing of the counter-statement there had been no use.
The applicant finally submitted that they are the prior adopters and users of the trade mark and their rights are to be protected. The trade mark
registered is wrongly remaining on the register as the mark was not put to use and was therefore remaining on the register without sufficient cause.
In reply to the applicant's arguments, the learned Counsel for the Respondent submitted that the applicant's trade mark was proposed to be used as
on the date of application -16.6.1998, whereas the Respondent's mark was in use since 01.01.1946. The applicant's trade mark LT was identical in all
respects which gave a cause of action to file the civil suit. When the Respondent's mark is a well known mark then the user need not be proved. The
applicant though claim user since 1998 have not produced any document in proof of the same. The sales figures mentioned at page 18 of the typed set
of papers, no brand name is given nor is it certified by the chartered accountant. The other documents filed also do not bear the trade mark. The
counsel referred to an order passed by the Division Bench of Delhi High Court in a case between the Respondent and the third party. The counsel
pointed out the sales figures and submitted that the sales figures runs to several crores of rupees and the advertisement and publicity expenses also
run to several crores of rupees.
The impugned registration certificate was issued in 2005 and the application for rectification filed in 2007 under Section 47(1) (b) for non user is a
premature application and ought to be dismissed. The mark when advertised in the trade marks journal was not opposed. The counsel submitted that
the application for rectification was filed without following the provisions of Section 124 of the Act and further relied on the judgment reported in 2008
(36) PTC 531 (IPAB) Reckitt Benckiser (India) Ltd. v. Godrej Sara Lee Ltd. and Anr.
The Respondent finally submitted that the applicant had not produced anything to show that the mark was wrongly remaining on the register. He
also relied on the order passed in the miscellaneous petition No. 69/07 and prayed that the registration granted be allowed to continue on
The counsel for the applicant in rejoinder stated that the Respondent has no dispute about the applicant being an aggrieved person. The
Respondent has not given any answer as to whether it is used for the goods for which registration has been obtained. There is no bar to file a
rectification application if it is not opposed. Counsel for the applicant also stated that the impugned trade mark is not a well known trade mark as per
the provisions of Section 2(1) (zg) of the Act.
We have heard and carefully considered the arguments of both the counsel and have also gone through the documents and pleadings.
The main issue to be considered and dealt with in an application for rectification is whether the applicant is a person aggrieved to maintain and file
an application for rectification. As per the provisions of Section 21 of the Act, any person may file notice of opposition to oppose the application for
registration, whereas an application for rectification can be filed only by a person aggrieved. The term aggrieved person though has not been defined
under the Act but has been liberally construed by various courts. The classic case in this respect is Powell's TM (1893) 10 RPC 195 P 201 It was
held,
I should be very unwilling unduly to limit the construction to be placed upon these words, because although they were no doubt inserted to prevent
officious interference by those who had no interest at all in the Register being correct, and to exclude a mere common informer, it is undoubtedly of
public interest that they should not be unduly limited, in as much as it is a public mischief that there should remain upon the register a mark which
ought not to be there and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of
litigation. Wherever it can be shown, as here, that the applicant in the same trade as the person who has registered the trade mark, and wherever the
trade mark, if remaining on the Register, would or might limit the legal rights of the applicant, so that by reason of the existence of the entry on the
Register he could not lawfully do that which, but for the existence of the mark upon the register he could lawfully do, it appears to me he has a locus
standi to be heard as a person aggrieved.
Based on the above observations, we are of the view that the applicant is a person aggrieved. The marks are identical and the goods are also
identical. The Respondent had filed a civil suit against the applicant based on the registration for infringement and passing off. The applicant is
therefore a person aggrieved and has a locus standi to maintain and file an application for rectification of the impugned trade mark.
The next ground is that the impugned registration of the mark is wrongly remaining on the register without sufficient cause as the user is wrongly
given and the registration has been obtained fraudulently. The main contention of the applicant was that registration was obtained claiming user since
1.1.1946 for the goods in class 25 whereas the Respondent had no use in respect of garments but was dealing only with engineering and construction
business. We also find force in the arguments of the applicant. The court has to decide whether in the facts and circumstances of the case the trade
mark was registered without any bonafide intention on the part of the proprietor and that the mark would be used by him in relation to the
goods/services in respect of which the mark was sought to be registered. The onus to establish is on the applicant.
It is worthwhile to quote the observation of Lord Lindsay in Batt & Co's TM (1898) 15 RPC 53 P 538 is -Can a man properly register a trade
mark for goods in which he does not deal, or intent to deal - meaning by intending to deal having at the time of registration some definite and present
intention to deal in certain goods or description of goods and not a mere general intention of extending his business at some future time to anything
which he may think desirable? This question we answer in the negative. The answer it otherwise would unduly strain the language of the Act relating
to the trade mark and to render those Acts extremely mischievous, instead of beneficial to the trade and commerce.
If an man procures a trade mark to be registered for goods in which he does not deal either when he applies for registration or within a reasonable
time afterwards, he does so at his peril and he exposes himself to the risk of having his mark expunged or having his registration restricted to the
legitimate requirement.
A mark could be removed from the register either it was applied for without a bonafide intention to use it and it had not in fact been used prior to
the application to remove it from register, or alternatively if it has not been used bone-idle for five years prior to the application. Bonafide intention or
bonafide use is as per the provisions of Section 47 of the Act in relation to the goods or services in respect of which the mark is registered.
The only submission made by the Respondent was that their mark L & T or LT logo or LARSEN & TOUBRO are well known trade marks as
they had been using the same for several decades in respect of engineering and construction goods whereas no plea as to the use of the marks in
respect of garments falling in class 25. We find in para 11 at page G and para 15 at page K of the counter-statement, the Respondent has averred:
As....and with an aim of using the said trade mark in the near future in relation to the goods covered under class 25."" And ""15....we submit that
we have intention to use the trade mark consisting of the LT logo in respect of the goods falling under class 25.
These averments in our opinion is an admission made by the Respondent that the trade mark in respect of the goods falling in class 25 has not
been put to use. It is also pertinent to observe that the application was made on 24.1.2003 claiming user since 01.01.1946 and the impugned trade
mark was registered on 17.05.2005. The counter statement was filed on 5.8.2008 where it has been stated that the mark is likely to be used in the
near future in relation to the goods for which registration has been obtained. If non user is seen, however high the reputation be, the proprietor's plea
of reputation will be of no use.
The Respondent had opposed a third party who had applied for registration of the trade mark by M/s Larsen Trading Company in class 9 and the
same was abandoned. The applicant had placed before us the copy of the order and submitted that as they were not dealing in respect of the goods
falling under class 9, they did not pursue the matter. This fact was not rebutted to or denied by the Respondent.
The other plea of the Respondent was that the applicant had not used the trade mark though claim to have used the same since 1998. The
Respondent's plea cannot be accepted as the Respondents have themselves stated that a civil suit for infringement of their registered trade mark was
filed in the year 2004 before the Tiz Hazari Court.
The impugned trade mark has not been put to use either before the date of application or between the period of the date of application and the
date of the application for rectification or thereafter. The impugned trade mark is therefore wrongly remaining on the register without
The user claimed in the application for registration is 01.01.1946 for the goods falling under class 25 in respect of garments but it is admitted fact
by the Respondent that they intend to use in future. This itself prove the malafides of the Respondent. On this account, the impugned trade mark is to
be expunged. There is no doubt that the mark was in use for other goods specifically in respect of engineering and construction goods but not in
respect of garments. The intention to use a trade mark sought to be registered must be genuine and real. If the mark is thought to be something which
might be useful some day, it would not amount to any definite and precise intention to use the mark.
In view of the foregoing reasons, we are of the opinion that the impugned registration of the trade mark be removed / cancelled. Accordingly the
original rectification application is allowed with a direction to the Registrar of Trade Marks to remove the trade mark No. 1169161 in class 25. There
shall be no order as to costs.
The above matter was heard on 07.06.2010 and orders were reserved. Due to administrative reasons, there has been a delay in the sufficient
cause and has to be expunged from the register of trade marks. Pronouncement of orders. Meanwhile on 28.07.2010 the counsel for Respondent had
filed their written submissions in the Registry of the Appellate Board which was put up in the file for our perusal and consideration. We are of the
opinion that the same is not considered as there was no direction while reserving orders and also that no copy has been marked to the other side -
applicant's counsel even if served an opportunity is to be given and that will only further delay the pronouncement of orders.