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Judgment
S. Usha, J
Original rectification application is for removal of the trade mark LAVANYA (label mark) under No. 1004039 in class 3 under the provisions of the
Trade Marks Act, 1999. The applicants case is that they are one of the leading manufacturers of Talcum Powder and perfumes in powder form for
application on fabrics. They honestly adopted and used the trade mark LAVANYA since 1977. They applied for and obtained registration of the trade
mark LAVANYA under No. 405463B in class 3.
The mark was registered in the name of M/s. Hirusah Cosmetics (P) Ltd. and was subsequently assigned to the applicants herein in the year 2003.
The recordal of assignment is pending before the Registrar of Trade Marks.
The applicants goods bearing the trade mark LAVANYA is known for its quality and standards. By efforts, promotional activities and
advertisements they have build up a substantial reputation among the trade and public. The applicant is the first adopter and user of the trade mark
LAVANYA for collar perfume. The applicants registered trade mark is written in an artistic foil based sheet and all descriptive matters appearing
thereon in red colour. The applicants have adopted a peculiar colour scheme and artistic work. The public identify the goods bearing the trade mark
LAVANYA with the peculiar colour scheme as that of the applicants and with none else. By nature of continuous use and extensive sale, the
applicants goods have earned a good and enviable reputation.
4 . During the second week of February 2001, the applicants came across the respondents products bearing the identical trade mark ""LAVANYA
with similar colour scheme and/or carton. On 21/02/2001, the applicants visited the respondents unit and came to know that the respondent is none
other than the applicants assignor's dealer and immediately issued a legal notice. On perusal of the applicants products bearing the trade mark
LAVANYA, the respondents admitted their mistake and have given a letter of undertaking, along with one N. Surendran, that they will not use
thetrade mark LAVANYA.
5 . During the mid week of September 2002, the applicants again came across the respondents goods. On 25/11/2002, the applicants therefore, issued
a cease and desist notice. On 10/12/2002, the respondents sent a reply stating that thy are not aware of the applicants goods and trade mark and also
that they are not manufacturing the goods. On 20/12/2002, the applicant issued a legal notice to M/s. Lavanya Cosmetics, which was acknowledged
by them but not replied. The said N. Surendran, on 21/01/2003 sent a reply denying the averments made in the legal notice. On 22/02/2003, he sent
another reply stating that he is not the proprietor of M/s. Lavanya Cosmetics. In fact, it is the same Mr. N. Surendran who had given a written
undertaking that he will not use the trade mark LAVANYA.
The applicant's assignors filed a suit C.S. No. 603 of 2003 before the Hon'ble High Court of Madras against the respondent and Mr. N. Surendran.
In the interim application - injunction was granted, which was subsequently made absolute. The respondents had not preferred any appeal against the
said order. On 27/08/2009, the said suit has been decreed. During the proceedings, the applicant came to know that the respondents have registered
their trade mark LAVANYA under No. 1004039 in class 3. The applicants have therefore filed this application on the following grounds:-
(a) the impugned registration is illegal, unlawful and against the provisions of the Act;
(b) the impugned trade mark is neither distinctive nor capable of being distinguished and therefore prohibited under section 9(1)(a) of the Act;
(c) the impugned trade mark is likely to cause confusion and deception under section 9(2)(a) of the Act;
(d) the adoption of an identical mark is only to pass off their goods by using the applicants reputed trade mark;
(e) the impugned trade mark is to be removed in order to maintain the purity of the register; and
(f) the respondents are not the proprietors of the trade made within the meaning of section 18 of the Act.
7 . The respondents filed their counter statement stating that the application is not maintainable as the applicant has no authority to file the above
application. The applicants are not the manufacturers of talcum powder and perfumes in powder form. The applicants are not the honest adopters of
the trade mark. The goods are different. The mark has been assigned to the applicant in the year 2003 and the same has not come into effect for non-
performance of the requisite formalities under the Act.
The respondent has filed a civil suit in O.S. No. 3/2011 before the District Court, Kozhikode against the applicant and has obtained interim injunction
restricting the applicant from infringing the trade mark and copyright. The applicants are infringing/imitating the respondents trade mark and artistic
work. The wrongful act of the applicant has adversely affected the goodwill and reputation of the respondents business. The applicant is passing off
his products which is inferior in quality thanthe respondents goods.
The civil suit referred to by the applicant before the Hon'ble High Court of Madras has been decreed for our absence and necessary steps are
being taken to set it aside. This fact is known to the applicants. The decree has been obtained fraudulently and does not bind the respondents.
The respondents have not copied the applicants trade made. On the contrary the applicants have copied the respondents trade mark and the get up
and are trading upon the respondents goodwill and reputation. The rest of the averments were denied by the respondents.
On completion of the pleadings, we heard learned counsel Ms. N. Devi for the applicants and learned counsel Shri N. Bhaskaran Nair for the
respondents.
The learned counsel for the applicant contented that the civil suit was filed in the year 2003 and the same was decreed on 27/08/2009. The
impugned trade mark was registered in the year 2008 when the interim injunction order was subsisting. The learned counsel placed a list of dates and
events. The list contained the dates. In 1977, he applicants adopted the trade mark LAVANYA and on 12/05/1983 applied for and obtained
registration of the trade mark. During the year 1993-1994 the respondents were the agents of the applicants for selling the applicants products bearing
the trade mark LAVANYA. The other facts were reiterated.
The counsel further pointed out that the respondents have claimed user since 01/04/1998 in their application for registration but have created
documents/bills to prove their user. This fact is clear from the evidence filed by the respondents along with their counter statement. The two cash bills
at page 26 of the documents are dated is 01/01/1998 which is prior to their claim date.
The learned counsel for the applicant also submitted that the respondent had given an undertaking that they will not use the trade mark and had
surrendered their products bearing the trade mark LAVANYA which letter is at page 33-34 of the applicants documents. The application for
registration was filed on 18/04/2001 after the undertaking dated 21/02/2001. The counsel therefore prayed that the trade mark is wrongly remaining on
the register and ought to be expunged.
The learned counsel for the respondent contended that the goods are different and there is no reason for any confusion or deception.
16 . Regarding the undertaking given, not to use the trade mark, the respondents counsel submitted that the same was taken by coercion and it was
not signed by the respondents out of their free will. The applicants are not the proprietors of the trade mark and therefore have no LOCUS STANDI
to file this application for rectification. The mark was assigned to the applicants and the assignment is yet to be recorded and therefore the applicants
are not the proprietors of the trade mark.
In rejoinder, the counsel for the applicant submitted that respondents have not given any explanation as to how they have produced cash bill dated
01/01/1998 when they claim user only since 01/04/1998. The counsel pointed out to the averments made in the civil suit filed before the District Court
of Kozhikode against the applicant. It was stated tat they obtained registration in the year 1998 and introduced their products in the market only in the
year 2001.
1 8 . On 02/07/2012, during the hearing, the counsel for the respondent filed a Miscellaneous Petition for taking on record certain additional documents
viz. sales receipts, tax returns, invoices and applications made before the Trade Marks Registry in connection with the impugned trade mark. As we
have already observed, the public documents alone are taken on record the rest are not considered. The Miscellaneous Petition No. 327/2012 is
ordered accordingly.
We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
The applicant is a person aggrieved for various reasons. The marks are identical on perusal of the labels. The rival marks are phonetically and
visually similar and the goods are also similar. The other reason is that the respondent was an agent of the applicants predecessor which fact has not
been denied by the respondent. The applicants have filed a civil suit against the respondents and the same has been decreed. The respondents have
now subsequently obtained injunction order against the applicant before the District Court, Kozhikode suppressing the fact that in the suit the interim
order has been made absolute. The rectification application is therefore maintainable.
The respondents have not given any reason for their adoption of the trade mark ""LAVANYA"". The respondents have in fact given an undertaking
that they will not use the trade mark on 21/02/2001 which is filed as Exhibit at page 33 & 34 of the applicants typed set of papers. The impugned trade
mark application has been filed on 18/04/2001. This clearly shows that the adoption is not honest. When the adoption is not honest, any amount of use
does not help the mark to acquire distinctiveness. The adoption when considered not to be honest, the mark shall not be allowed to continue in the
register.
The date of user claimed in the application for registration is 01/04/1998. The documents produced as cash bills are dated 01/01/1998. The
respondents own averments in the plaint filed before the District Court, Kozhikode is that they obtained registration in 1998 and introduced the product
in the market in the year 2001. Except for the two cash bills (which cannot be considered), there is no evidence to prove their user since 01/04/1998
as claimed. This Board has held in earlier matters viz. (1) IPAB Order No. 91 of 2012 -- M/s. The Financial Times Limited, New Delh Vs. M/s. The
Financial Times Limited, London; and (2) IPAB Order No. 126 of 2012 - M/s. Khushiram Beharilal, Delhi Vs. Ms. Jaswant Singh, Balvant Singh,
Amritsar & Others) that if the user is not proved as claimed in the application for registration, the mark deserves to be removed for wrong statement.
Therefore, this impugned trade mark also is ordered to be removed.
We find force in the arguments of the applicant's counsel that after the letter of undertaking on 22/02/2001, the applicant has filed this application
for registration of the impugned trade mark on 18/04/2001. This only shows the intention of the respondents. For the reasons stated above, the
impugned trade mark No. 1004039 in class 3 is directed to be cancelled and the application for rectification is allowed with no order as to costs. The
Miscellaneous Petition No. 24/2011 is closed.