S. Jagadeesan, Chairman - (1.) 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.
(2.) 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.
(3.) 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:- 1. LAXMAN Agency and Investment Private Limited. 2. LAXMAN Electro Mechanical Private Limited. 3. LAXMAN Foundation. 4. LAXMAN Public School;