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Judgment
S. Jagadeesan, J
This is a petition filed by the petitioner under Sections 46 and 56 read with Section 107 of the Trade and Merchandise Marks Act, 1958, for
cancellation of the first respondent's registration No. 415136 B in class 11.
The case of the petitioner is that the petitioner Company was originally incorporated in the year 1962 under the name LAXMAN ELECTRICALS
LIMITED. In the next year, in 1963, the name of the petitioner company was changed to SYLVANIA and LAXMAN LIMITED. The petitioner
company is engaged in the manufacture, sale and marketing of, inter alia installations for lightings and parts thereof including bulbs, tubes, chokes,
patties, starters etc., and has always used the expression 'LAXMAN' as a key, leading and essential feature of their corporation name. In the year
1965, the petitioner adopted the trade name 'SYLVANIA' in respect of goods of their merchandise. In 1975, the petitioner also adopted the expression
LAXMAN as a trade name in respect of the goods of their merchandise. Their trademark 'SYLVANIA' as well as 'LAXMAN' was extensively used
in the course of the trade. In the year 1982, the petitioner combined the two trade names 'SYLVANIA' and 'LAXMAN' in respect of the goods of
their merchandise. In the year 1987, the said trade name was amended to be known as 'LAXMAN SYLVANIA'. By virtue o the long adoption and
usage of the tradename, the petitioner has acquired and retained an exclusive right to the use of the trademark 'LAXMAN', 'SYLVANIA LAXMAN'
and/or 'LAXMAN SYLVANIA'. The turnover of Rs. 6,57,000/- in the year 1967 had increased to Rs. 56,94,00,000/- in 1992. 'LAXMAN' being the
first name of the Promoter, Chairman and Managing Director of the petitioner company, the company's sister concerns are 1. LAXMAN Agency and
Investment Private Limited 2. LAXMAN Electro Mechanical Private Limited 3. LAXMAN Foundation 4. LAXMAN Public School 5. LAXMAN
Public School Society, and 6. LAXMAN international Limited. All these associated companies, trusts and institutions of the petitioner have also used
the expression 'LAXMAN' as the essential key and leading posts of their corporate names in relation to their respective business activities, in addition
to the use of the said expression as a trade mark in relation to goods of the petitioner's merchandise. In the year 1990, the petitioner expanded their
trade activities and also started dealing in domestic electrical appliances such as fans, electric iron, immersion heaters, geysers, heat-converters and
exhaust fans under the trademark 'LAXMAN'. The first respondent is a firm engaged in the manufacture and sale of installation for lighting and parts
thereof including bulbs, tubes, chokes, patties and starters, etc. The first respondent is trying to take undue advantage of the reputation of the
petitioner, which the petitioner achieved through various sources. The first respondent's application No. 415136 B was advertised in the Trade Mark
Journal 937 dated 16th June, 1988. The petitioner did not file the opposition to the registration of the impugned mark as the petitioner did not notice the
said advertisement since they are not subscribing for the Trade Mark Journal. The impugned trademark was registered in the year 1990 without any
legal basis and as such the registration is void ab initio. The first respondent sent a letter on 25th July 1990 objecting to the reference of 'RAM
LACHMAN' bulbs in the petitioners advertisement campaign broadcasting. The petitioner sent a reply on 04.08.1990 and a further reply on
31.08.1990. The first respondent, after one year, sent another letter dated 19.06.1991 and also on 20.06.1991, to the artist who had acted in the
advertisement film of the petitioner. The first respondent also lodged a complaint before the Monopolies and Restricted Trade Practices Commission
on 29th July 1991, objecting to the use of the said reference in the petitioner's advertisement campaign. The MRTP Commissioner by their order dated
27th September 1991, dismissed the first respondent's interim application. The first respondent not only copied the petitioner's trademark/tradename
'LAXMAN' but also reproduced all the distinctive and artistic features of the petitioner's wrapper/carton of bulbs. The first respondent has done the
same with mala fide intention and their action would constitute infringement of the petitioner's copyright. The use of the impugned trademark by the
first respondent is bound to cause confusion and deception amounting to passing off of their goods and business as and for the goods and business of
the petitioner. The whole of the petitioner's trademark 'LAXMAN' is contained in the first respondent's mark 'RAM LACHMAN'. Since the
impugned trademark is identical with that of the petitioner's mark and the goods are of same kind, the use of the impugned trademark has caused
confusion and deception in the minds of the public and as such, the same has to be removed from the register of the Trade Mark Registry,
The first respondent filed reply stating that the marks are not identical and they are totally different and distinct. It is further stated that the
petitioner having admitted the want of knowledge about the advertisement of the respondent's mark, now trying to confuse the real issue. The filing of
this petition by the petitioner is an after thought. The wrapper as well as carton of the first respondent is not similar to that of the petitioner. The
petition has been filed with mala fide intention to harass the first respondent.
Shri Deeraj Seth, the learned counsel for the petitioner appeared before the Board on the day of hearing. There was no representation on behalf of
the first respondent. However, on behalf of the first respondent, a written gist was sent to the Appellate Board Registry. We perused the same. The
short question for consideration before us is whether the first respondent had copied or adopted the trademark/tradename of the petitioner herein?
From the above material averments of the petitioner, it is clear that the petitioner company was originally incorporated under the name of 'LAXMAN
ELECTRICALS LIMITED' in the year 1962. In the later year 1963, the name of the petitioner company was changed to 'SYLVANIA AND
LAXMAN'. In 1982, the petitioner adopted the name 'SYLVANIA LAXMAN' by combining the two trade names in respect of the goods of their
merchandise. In the year 1987, the tradename of the petitioner was amended as 'LAX-MAN SYLVANIA'. In Para 10 of the petition, the petitioner
has given the details of other companies/trusts/institutions, where the promoter of the petitioner company or the family members of the promoter are
concerned with all the names starts with 'LAXMAN', which are as follows:-
LAXMAN Agency and Investment Private Limited.
LAXMAN Electro Mechanical Private Limited.
LAXMAN Foundation.
LAXMAN Public School
LAXMAN Public School Society, and
LAXMAN International Limited.
Now the petitioner claims that they are the proprietors of the trademark LAXMAN/SYLVANIA/ LAXMAN SYLVANIA/SYLVANIA
LAXMAN.
The first respondent has adopted their trademark 'RAM LACHMAN' since 01.04.1981 and applied for registration on 28.12.1983 and was
registered on 31.12.1990 under application No. 415136. The petition has been filed by the petitioner on 16th November 1992 stating that the first
respondent had adopted the petitioner's trademark.
We have perused the entire records, which contains the advertisements of the petitioner's firm. Most of the advertisements are in the trade name
'SYLVANIA LAXMAN'. On comparison of both the trademarks of the petitioner and the first respondent, we are of the view that both are not
identical.
The petitioner's tradename as admitted by them are four, namely, 1. LAX-MAN 2. SYLVANIA 3. SYLVANIA LAXMAN and 4. LAXMAN
SYLVANIA. The trade mark registration in different order and style have been periodically obtained. The last name 'LAXMAN SYLVANIA' is
being used by the petitioners since 1987. Except that the sister concerns or the associated companies of the petitioner having the name 'LAXMAN' as
firm or Trust or institution name and not for any merchandise. There is nothing on record to show that the tradename of the petitioner continues to be
'LAXMAN' alone, subsequent to the adoption of the tradename 'LAXMAN SYLVANIA' in the year 1987. Even assuming that the petitioner is using
the name 'LAXMAN', the first respondent's trademark being 'RAM LACHMAN' cannot said to be identical or similar to that of 'LAXMAN'.
In order to appreciate the contention of the learned counsel of the petitioner that the wrappers of the first respondent are also identical with the
petitioner's wrapper/carton, we perused the same. The wrapper of the petitioner contains the name 'LAXMAN SYLVANIA' and the colour scheme
is yellow, white and red in 'waves' style. Whereas the first respondent's wrapper contains in bold letters the name 'RAM LACHMAN' in light red
colour back ground with the figures of bulbs and the entire wrapper contains 'RAM LACHMAN' name in small letters. For a sheer look, both the
wrappers have their own colour scheme and both cannot be said to be identical or similar. In fact, on seeing the trade mark of both, we have no
hesitation to conclude that the rectification petition has been filed only to harass the first respondent. When the first respondent has been in the trade
since 1983 and the registration has been obtained in 1990, the petitioner has filed the petition for the removal of the first respondent's tradename,
which is no way connected with the trademark of the petitioner. Hence, we do not find any merit in the petition.
Though on the date of hearing, the counsel for the first respondent did not appear, we are inclined to award cost because the first respondent
engaged their counsel through whom the reply was filed and on the earlier occasion, the counsel for the first respondent also appeared. After the
orders were reserved, the first respondent promptly sent their notes of points also.
Accordingly, the application is dismissed with cost of Rs. 5,000/- to be paid to the first respondent.