S. Jagadeesan, J. (Chairman) - (1.) THE appeal is directed against the order of the Assistant Registrar of Trade Marks, New Delhi dated 19.01.1998 rejecting the application of the appellant for registration of the trade mark "LAXSONS".
(2.) The appellant herein filed an application No.498869 for the registration of trade mark "LAXSONS" in respect of air cooling, heating and cooking range included in clause 11 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellant filed the said application as a proposed user of the mark. The said application was advertised before acceptance in the Trade Marks Journal No.1040 dated 01.10.1992 at page 724. The first respondent herein on 15.12.1992 filed notice of their intention to oppose the proposed registration of the impugned mark on the grounds of its violation of the provisions of the Act. On 26.04.1994 the appellant filed their counter statement stating the grounds in support of the registration of the impugned mark as well as the grounds of rebuttal to the objections taken by the first respondent. Thereafter, the first respondent filed evidence by way of affidavit in the name of Shri Pradeep Singhal, their Deputy Manager and the appellant also filed their evidence by way of affidavit in the name of Shri N.K.Batra. After the completion of the formalities the matter was heard by the Assistant Registrar of Trade Marks. Ultimately he rejected the application of the appellant on the ground that the impugned mark is similar to the registered mark of the first respondent "LEXUS", which is under clause 11 and as such the prohibition imposed under section 12(1) of the Act is attracted and consequently the impugned mark cannot be registered. The first respondent being the prior user, they are entitled for the protection under the Act. The appellant being a proposed user neither section 9 or 11 is attracted. Further the appellant is not the owner of the trade mark as contemplated under section 18(1) of the Act as he has not used the same and on this ground also the registration of the impugned mark fails. Aggrieved by the same the appellant filed the appeal C.M.(main) No. 238 of 1998 on the file of the High Court of Delhi at New Delhi. By virtue of Section 100 of the Trade Mark Act, 1999, the said appeal was transferred to this Board and numbered as TA/139/2003/TM/DEL During our sitting at New Delhi we heard the appeal on 16.02.2005. Shri M.K.Miglani appeared on behalf of the appellant and Shri N.K.Anand appeared on behalf of the first respondent.
(3.) THE learned counsel for the appellant contended that the appellant filed the application on 05.10.1988 for registration of the impugned mark claiming the mark as proposed to be used. THE first respondent filed the application on 30.05.1990, which is subsequent to the appellant. THE respondent's statement also reveals that the mark is proposed to be used. Only in the rebuttal evidence the respondent produced the registration certificate dated 13.09.1994. Since the first respondent being the subsequent applicant, there is every possibility that the first respondent had adopted their mark by copying the appellant's. THE second respondent, the Assistant Registrar totally failed to consider the material date of the application. Consequently he also failed to consider the right of the appellant under section 12(2) of the Act. THE Registration Certificate was produced by the first respondent only at the time of the hearing before the Assistant Registrar and hence it is clear that when the application of the appellant was pending for registration, the first respondent not only applied for the registration of their mark but also pursued the matter and got the registration. THE first respondent being the subsequent applicant is not entitled to claim the mark as prior user or bonafide adopter, especially when admittedly the appellant is the earlier applicant. Apart from this, he also contended that the impugned mark is not similar to that of the first respondent's mark. THE first respondent's mark being "LEXUS" and the appellant's mark being "LAXSONS', both are visually and phonetically different and as such the findings of the Assistant Registrar that the marks are identical cannot not be sustained. So far as the ownership of the trade mark is concerned, he contended that the word was coined taking LAX from the word Laxmi being first part of the firm name and the name of the appellant's grandmother and the 'SONS" being a common suffix .;