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Judgment
S. Usha, J
The original rectification application has been filed for cancellation of registered trade mark Shri Dhanalakshmi registered under No. 1190216 in
class 16 under Section 47 and 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The case of the applicant is that the company is
incorporated under the provisions of Indian Companies Act, 1956. The applicant is the successor-in-interest of Shri Saraswathi Publishing Company a
partnership firm consisting of Shri D. N. Shirke one of the partners. Shri D.N. Shirke along with his father were carrying on the business of printing,
photography and astrology. They were also doing business as a rubber stamp producer and photo frames. In the year 1944, Shri D.N. Shirke started
printing calendars in Marathi language under the name and style M/s. D.N. Shirke & Sons where he had incorporated authentic and useful information
of the yearly almanac. The said yearly calendars became very popular among the Marathi speaking areas.
In the year 1962, Shri D.N. Shirke renamed the said business as Saraswathi Agency and continued till date. In the year 1977, along with the
calendars known as Shri D.N. Shirke & Sons also started printing, publishing and improved version of Marathi calendar under the trade name ""Shri
Mahalaxmi"" with two lamps hanging on either side and a pictorial block of Goddess Mahalaxmi of Kolhapur on the left and top corner of each front
page. The said calendar under the trade mark Shri Mahalaxmi since the year 1977 till today has acquired reputable position in Maharashtra and in
Marathi speaking areas of Karnataka, Gujarat and Goa. The said trade mark has acquired distinctiveness by virtue of long and continuous use.
The firm Saraswathi Publishing Company was constituted as Saraswathi Publishing Private Limited Company for the sake of smooth working
better and able management and advancement of business.
The applicant is also marketing the calendar in Kanada, Gujarathi, English and Hindi besides Marathi. The applicant has spent considerable amount
towards expenses on advertisement and the sales turnover runs to several lakhs of rupees. The sales figure which runs to several lakhs of rupees will
go to prove that the trade mark Shri Mahalaxmi has acquired tremendous goodwill among the public.
The applicant in order to obtain statutory protection for the said trade mark Shri Mahalaxmi filed an application for registration of the trade mark on
25.07.1990 under application No. 533984 in class 16 with the Registrar of Trade Marks, Mumbai and obtained registration of the same on 29.07.2001.
The said registration is valid and subsisting.
The applicant also filed another application for registration of trade mark Shri Mahalaxmi on 30.11.1995 under application No. 688716 in class 16 on
30.11.1995 and obtained registration on 21.07.2005. The said registration is also valid and subsisting.
The trade mark Shri Mahalaxmi has also been copyrighted under the Copyright Act, 1957, under registration No. L-14534/95. The artistic work Shri
Mahalaxmi has also been registered under registration No. A-68149/2005.
The Respondent No. 2 herein was running a photo studio and had close acquaintance with the applicants herein. The applicant had approached the
Respondent No. 2 for preparation of brochures of their company by which the Respondent No. 2 had an opportunity of closely observing the working
and publication of Shri Mahalaxmi.
In the year 2001, the applicant noticed that the sales of the almanacs rapidly reduced and on investigating found that the Respondent No. 2 herein
had started printing, publishing and marketing of their calendar under the name Jay Mahalaxmi in Marathi.
The applicant being aggrieved by the Respondent No. 2 almanacs bearing Jay Mahalaxmi filed a Civil Suit before the District Court of Kolhapur.
The learned District Judge passed an order restraining the Respondent No. 2 herein from using the trade name Jay Mahalaxmi till the disposal of the
suit. By virtue of the order of the District Judge, the Respondent No. 2 was not only restraining from using the trade mark Jay Mahalaxmi, but also
marks which were deceptively similar to the applicants mark Shri Mahalaxmi. The Respondent No. 2 herein has appealed against the said order
before the Hon'ble High Court of Mumbai and the said appeal is pending. No interim orders have been granted by the Hon'ble High Court.
In the year 2002, the Respondent No. 2 with a view to avoid court's above mentioned order started printing, publishing and selling calendars under
the name Vijayalaxmi and also tried to distribute pocket calendar under the name of Jay Mahalaxmi. The applicant therefore moved the District Court
in R.C.S. No. 02 of 2001 in a contempt application against the Respondent No. 2 for violating the orders of the District Court passed on 07.12.2001.
In the year 2003, the Respondent No. 2 started the business using the trade mark Soubhagyalaxmi which was again violation of the Court order
dated 07.12.2001. The applicant herein filed a Civil Suit in R.C.S. No. 02 of 2003 against the Respondent No. 2 for injunction. The learned District
Judge was pleased to passed an order on 22.08.2005 restraining the Defendants and the agents from printing, publishing and marketing the impugned
Marathi calendars in the name of Soubhagyalaxmi or under any similar name. The Respondent No. 2 herein appeal against the said order before the
Hon'ble High Court of Mumbai and had also made a statement before the Hon'ble High Court that they shall not publish any calendar under the name
and style Soubhakyalaxmi or any other similar name. The appeal was accordingly disposed of on 17.11.2005. The order dated 22.08.2005 has thus
become final and conclusive.
On 07.04.2004, the Respondent No. 2 herein despite the repeated orders of the Courts had filed an application for registration of the label trade
mark Shri Dhanalaxmi copying of the essential features of the applicants calendars Shri Mahalaxmi claiming user since 2001. The said application was
advertised and applicant could not appose the same as they became aware of the application subsequent to the limitation period of opposing the said
registration. The registration has been obtained suppressing the orders of the court and has been obtaining by playing fraud. The applicant is person
aggrieved because of the existence of the impugned registered trade mark which cause and illegal hindrance to the business of the applicant. The
Respondent No. 2 had no bonafide intention to use the trade mark Shri Dhanalaxmi in respect of goods for which its registered. The registration of the
trade mark is therefore liable to be cancelled under Section 47 of the Act.
The applicant has filed the rectification application on the following grounds:
i) the use of the impugned registered trade mark is likely to deceive and cause confusion among the public,
ii) that the impugned registration is contrary to provisions of Section 11(1) of the Act,
iii) the impugned registration would be contrary to Trade Mark Law and Common Law,
iv) that the impugned registered trade mark would otherwise be disentitled to protection in the court of law because of prior use and registration of the
applicant's trade mark ""Shri Mahalaxmi"".
v) despite the court orders, any use of the same and similar trade mark by the Respondent No. 2 would be illegal and would amount to passing off the
registered proprietor's goods as and for the applicants goods,
vi) the impugned registered trade mark is identical with and deceptively similar to the applicant's trade mark Shri Mahalaxmi,
vii) the trade and public would associate the Respondent No. 2 goods bearing the impugned trade mark as to the applicant's trade origin,
viii) the impugned registration has been obtained by suppressing the material relevant facts,
ix) the impugned registered trade mark was not distinctive and the date of application of the registered proprietor had no bonafide intention to use the
registered trade mark in respect of the goods on the date of application for registration,
x) the impugned trade mark has word ""Shri"" as the main and prominent feature which is not registerable and has been wrongly remaining in the
register.
The applicant therefore prays that the registration of the trade mark Shri Dhanalaxmi under registration No. 1190216 in class 16 may be removed
from the register of trade marks
The Respondent No. 2 herein filed their counter statement denying the various averments made in the grounds of application for rectification. The
Respondent No. 2 stated that the application is neither maintainable in law nor on the facts of the case. The applicant has suppressed the material
facts and miserably failed to approach this Hon'ble forum with clean hands and on this reason alone the application is liable to be dismissed in lemini.
The Respondent No. 2 stated that the applicant namely Shri D.N. Shirke was not a pioneer in incorporating Marathi calendar. In fact there are
many calendars in which information is so arranged that any man could easily get laborious almanac information since last so many years. The
Respondent No. 2 also stated that the Respondent No. 2's calendar is entirely different and dissimilar with the applicant's calendar.
The applicant had business firm in the name of premier printers, Trimurti Colony, Kalamba, Kolhapur, where offset printing, business is carried on,
since long back. During the year 1985 to 1990, the applicant had no sufficient volume of business even to meet break even point, as compared to
investment made for the set up of offset printing unit. During the course of the business, the applicant approached the Respondent No. 2 for a solution
to meet necessary volume of business, idea and wished to start calendars publishing in other languages so that they can easily circulate in other states
also and requested the Respondent No. 2 to start publishing and circulating the almanacs in Kannada language. After a long discussion, the applicant
permitted the Respondent No. 2 to use mark MAHALAXMI on its calendar in Kannada language. The business of the applicant grew up and in the
year 1994, the applicant received confirmed order of two lakhs of copies. The applicant on the contrary having granted permission to the Respondent
No. 2 to publish calendars in Kannada warned the Respondent No. 2 to stop publishing stating that he has started circulation in Kannada in the name
of Bhagyalaxmi. Inspite of Respondent No. 2 explaining the loss which would be incurred if the circulation in Kannada is stopped suddenly, the
applicant refused to agree to the same.
The Respondent No. 2 denies the fact that the applicant is the owner/author of the artistic work within the meaning of copyright Act. The
Respondent No. 2 submits that the trade mark Shri Dhanalaxmi is totally different from the applicant's trade mark Shri Mahalaxmi. The applicant
cannot claim monopoly for the device of the Goddess Shri Mahalaxmi. The averments that the suit was filed against the Respondent No. 2 for
infringement of the trade mark Soubhagyalaxmi is denied. In fact at no point of time the Respondent No. 2 dealt with the trade mark Soubhagyalaxmi.
The applicant has played mischief in obtaining interim order. The Respondent No. 2 also submits that they had used and adopted the trade mark Shri
Dhanalaxmi since the year 2005 and the provisions of Section 47 does not apply in his case on hand. The rival trade marks Shri Mahalaxmi and Shri
Dhanalaxmi are phonetically not similar apart from the trade marks the design, features, contentions, colour combinations are not same and hence
there is no chance of confusion or deception. The device of Goddess Laxmi cannot be monopolized by any one person including the applicant. It is
common among the public.
The application therefore is neither maintainable in law nor on the facts of the case and is devoid of merits and is liable to be dismissed.
The counsel for the applicant filed their reply to the counter statement denying the various statements, allegations made in the counter statement
by the Respondent No. 2.
We have heard Shri T.N. Daruwallah, learned Counsel for the applicant and Shri Ashok Kumar J. Daga, learned Counsel for the Respondent No.
2 at the Circuit Bench Sitting at Mumbai on 10th June, 2010.
Learned Counsel for the applicant submitted that the mark Shri Dhanalaxmi registered under No. 1190216 in class 16 was wrongly remaining on
the register without sufficient cause as per Section 57 of the Act. The Respondent No. 2 was not the proprietor of the impugned trade mark Shri
Dhanalaxmi as per the provisions of Section 18 of the Act. The counsel also stated that the Respondent No. 2 was injuncted by an order of District
Court dated 07.12.2001. The Respondent No. 2 has played fraud by suppressing the material fact that they were injuncted by order of the court and
had obtained registration on which ground alone the mark deserves to be removed. The registration ought to be removed on the ground that the
applicants are aggrieved as the goods dealt in by both the applicant and the Respondent are similar.
The counsel also relied on the following judgments:
The counsel relied on the passage from the book ""Shavaksha The Trade and Merchandise Marks Act, 1958"" at page 205 and brought to our notice,
the definition of person aggrieved as held by Lord Herschel in Powell's Trade Mark and stated that the applicants were persons aggrieved as they
were trading in the same business.
The counsel relied on the judgment quoted in AIR 1958 Bom 56 Ciba Ltd. v. M. Ramalingam (Chagla C.J.) in respect of the contention that the
applicants are aggrieved persons.
The counsel relied on the judgment report in 2004 (28) PTC 121 (SC) Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors. In support
of contention that the Respondent No. 2 who had been working along with the applicant had acquired the knowledge of the business and had started
the business and had adopted the similar trade mark only to trade upon the goodwill earned by the applicants.
The counsel further relied on the judgment report in AIR 1970 SC 146 K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. and Anr. 1889 RPC 531
Slazenger & Sons v. Feltham & Co. to say that the marks are to be compared as a whole and not split for the purpose of comparison.
Learned Counsel for the Respondent in reply mainly contended that the applicants have not in any way proved that they are persons aggrieved.
The applicants in fact had filed the suit against the Respondent and cannot be called to be persons aggrieved. In fact, the marks are not deceptively
similar. The Respondent No. 2 also stated that the impugned trade mark Shri Dhanalaxmi is a Hindi version of a label mark and therefore cannot be
said to be similar. In fact the Registrar was satisfied that the mark was registerable and registration was granted . The applicants cannot claim any
monopoly over the device of Goddess Mahalaxmi. The application for rectification has no merits and deserves to be dismissed;
The counsel also relied on the following judgment:
AIR 1970 SC 2062 F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd. to say that when the test of deceptive similarity
is to be conducted, the marks are to be compared as a whole and it is not right to take a portion of the word and to say it is not deceptively similar.
2002 (24) PTC 510 (Bom)Ranbaxy Laboratories Ltd. v. Indohemie Health Specialities Pvt. Ltd.
1988 PTC 258 S.M. Chopra & Sons v. Rajendra Prosad Srivastava
1997 PTC (17) (DB) SBL Limited v. Himalaya Drug Co.
2003 (27) PTC 213 (DB) (Ker) Three-N-Products Pvt. Ltd. v. Amrutha Trading Corporation and Ors.
2003 (26) PTC 175 (Del) Kewel Krishnan Kumar v. Rudi Roller Flour Mills (P) Ltd. and Anr.
We have heard both the counsel and have gone through the pleadings and documents. We shall first decide the issue as to whether the applicant is
a person aggrieved and has a locus standi to file and maintain the application for rectification. The settled principle of law is that any person may file a
notice of opposition against an application for registration whereas an application for rectification can be filed only by a person aggrieved.
The term person aggrieved though has not been defined but has received literal construction from the courts. Powells trade mark is a classic
judgment in this regard. Lord Herschel stated in Powells Trade Mark - (1894) 11 RPC 4 at 7;
Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the Trade Marks, 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.
Lord Watson had also held,
In my opinion, any trader is, in the sense of the statute, ""aggrieved"" whenever the registration of a particular trade mark operates in restrained of what
would otherwise have been his legal rights. Whatever benefit is gained by registration must instant a corresponding disadvantage upon a trader who
might possibly have had occasion to use the mark in the course of his business.
Every person who will in a reasonable probability suffer any injury or loss is a person aggrieved. In the case on hand, there is no doubt the
applicant is a person aggrieved. The business of both the applicant and the Respondent are the same printing and selling almanacs. There is no doubt
that the applicants are in the business prior to that of the Respondent No. 2. The applicant therefore has locus standi to file and maintain the
application for rectification.
On perusal of the facts of the case which is that the Respondent No. 2 had adopted the trade mark ""Jay Mahalaxmi"" was restrained by an order
of injunction from selling the panchang/almanacs by the Additional District Judge, Kolhapur on 30.10.2001 which was confined on 07.12.2001. The
Respondent No. 2 then adopted the trade mark Soubhagyalaxmi. The applicant herein filed another suit before the District Judges Kolhapur in R.C.S.
No. 02/2003 for infringement and passing off on 04.04.2003. The Hon'ble District Judge was pleased to pass an order on 22.08.2005 wherein a
preliminary decree was passed. Meanwhile, the Respondent adopted the impugned trade mark ""Shri Dhanalaxmi"" and applied for registration in class
16 on 07.04.2003 claiming user since 01.01.2002. On perusal of the counter-statement filed by the Respondent they have admitted in para 23 that they
adopted the trade mark in the year 2005. From the admission made by the Respondent, there are contra statements as to the date of user.
Based on the facts and circumstances of the case on hand, we do not think it necessary to go into the legal aspect or into the merits of the case.
The intention of the Respondent is not bonafide. The Respondent is only trying to earn profit by adopting similar trade marks upon the goodwill earned
by the applicant by sheer hardwork. The Respondent seems to have adopted the trade mark only after the District Judge passed an order in R.C.S.
02/2003. It is in our view that the Respondent has applied for registration of the impugned trade mark on 07.04.2003 even without proposing to use.
The adoption therefore cannot be said to be honest and deserves to be removed.
For the fore-going reasons, we are of the view that the impugned trade mark ""Shri Dhanalaxmi"" registered under No. 1190216 in class 16 be
cancelled. The rectification application is therefore allowed with a direction to the Registrar of Trade Marks to cancel/rectify the Trade Mark ""Shri
Dhanalaxmi"" registered under No. 1190216 in class 16. There shall be no order as to costs.