Biswanath Hosiery Mills Ltd. vs Friends Hosiery And Ors.

Manmohan Singh, J

The applicant has filed the present application for removal of Registration No. 706382 for LUK (word mark) in class 25 in the name of respondent

No. 1.

The representation filed by the applicant for early hearing. The same is allowed in view of reasons are given. The respondent No. 1 was served

notice by way of, publication published in Danik Jagran, Bhopal on 23.11.2018. No counter statement has been filed despite of service. There is no

appearance on behalf of respondent No. 1. It appears that the respondent No. 1 not interested to contest the matter.

Case of the applicant:

The Applicant for Rectification herein, Biswanath Hosiery Mills Ltd., is a reputed company engaged in the business of manufacture and marketing of

clothing, hosiery items and inner wear under the trade mark LUX and other LUX-formative marks including LUX COZI, LUX COZI ONN, LUX

EBONY, LUX CLIK, LUX NANO, etc.

3.1. The word ""LUX"" was first adopted as a trademark for innerwear and hosiery goods by the Applicant's predecessor and founder of the company,

Giridharilal Todi in the year 1957 and has been in use ever since in respect of clothing, hosiery garments, innerwear, socks, vests, etc. (""the said

goods"") on an international scale. The word LUX does not have any significance in relation to the Applicant's goods on which it is applied and as such,

it is a distinctive trademark for the said goods. The Applicant has also conceived and adopted a number of LUX-formative marks (""the LUX marks"")

all of which are in continuous and extensive use all over India. The expression LUX also forms the dominant/distinguishing part of the name of the

Applicant's associate company Lux Industries Ltd. (earlier known as Lux Hosiery Industries Ltd.), which was incorporated on 21 July 1995. The

Applicant maintains a corporate website www.luxinnerwear.com, which is accessible to the public in India and other countries.

3.2. The Applicant has been using its LUX mark in India since 1957 and internationally since at least since 2003. Owing to the superior quality of the

Applicant's products, the LUX marks of the Applicant have acquired tremendous reputation and goodwill. The Applicant's various LUX trademarks

are well-known trademarks within the ambit of Section 2(1)(zg) of the Trade Marks Act, 1999 in respect of the said goods.

3.3. The Applicant was compelled to file an application for substituted service by way of a Miscellaneous Petition No. 210/2015, which was allowed

and an order for substituted service was issued on 31 August, 2015, by the Hon'ble IPAB, which is a matter of record. Accordingly, the Applicant

published notice of the rectification proceeding in DAINIK JAGRAN on 23 November, 2018, at a substantial cost. The Registered Proprietor ignored

service of the notice through newspaper publication, who failed to respond to the rectification application.

Case set-up by the applicant against the respondent No. 1

i. The impugned mark LUK is near-identical and/or confusingly/deceptively similar to the Applicant's prior adopted, registered, much used and well-

known trademark LUX in respect of goods in Class 25. There exists a likelihood of confusion on the part of the public, including the likelihood of

association with the Applicant's earlier, registered and well-known trademark. The impugned registration is in relation to goods that are identical to the

Applicant's goods; and therefore, it stands in violation of Sections 11(1), 11(2) and 11(3) of the Act.

ii. The Applicant's mark LUX and other LUX-formative marks - in respect of clothing, hosiery items and inner wear are well known and inextricably

associated with the Applicant alone and entitled to protection by law against identical and/or deceptively similar trade marks even in respect of

dissimilar goods/services. The Registered Proprietor was fully aware of the reputation and goodwill attached to the Applicant's mark LUX when it

dishonestly adopted the near-identical impugned mark LUK in respect of identical/similar goods and applied for registration thereof. The Registered

Proprietor had not come with clean hands in seeking registration of the impugned mark and as such, the application ought to be regarded as having

been made in ""bad faith"". The impugned registered mark is liable to be cancelled under the provisions of Section 11(10) of the Act.

iii. The Registered Proprietor has obtained the registration of the impugned mark LUK by making a false claim of use of the mark ""Since 01-01-1992"",

although the Registered Proprietor has not used the mark since 1992, or at all, in respect of the specified goods. The application was filed with a false

use claim and therefore, the Registered Proprietor is guilty of wilful and deliberate misrepresentation. Therefore, the legal validity of the mark is

impaired and the impugned registration is vitiated. The registered mark is an entry made in the Register without sufficient cause and is wrongly

remaining on the Register as per Section 57 (2) of the Trade Marks Act, 1999 (hereinafter, also referred to as ""the Act""), and ought to be rectified by

total expunction from the Register.

iv. The Registered Proprietor had applied for and registered the impugned mark LUK without any bona fide intention of using the mark, and in fact

has not used the mark till date, in respect of the specified goods in Class 25. In any case, since the very adoption of the impugned mark by the

Registered Proprietor was tainted with dishonesty, no amount of use thereof, if any, by the Registered Proprietor can inure to the benefit of the

Registered Proprietor. Therefore, the Registered Proprietor was not, at the time of adoption and application of the mark, and still is not entitled to

claim any benefit under Section 12 of the Act for the registration of this application.

v. The impugned mark LUK was registered without any bona fide intention on the part of the Registered Proprietor to use the same in relation to the

goods covered by the registration and there has, in fact, been no use of the mark in relation to those goods upto a date of three months before the date

of this application and as such the mark is liable to be expunged under Section 47(1)(a) of the Act.

vi. Up to a date of three months before the date of this application, a continuous period of five years and longer has passed from the date on which the

mark LUK was actually entered in the register, during which there was no use of the mark in relation to the goods covered by registration; and hence

the mark is liable to be expunged under Section 47(1)(b) of the Act.

vii. The adoption, use and registration of the Applicant's mark LUX are prior to that of the Registered Proprietor's mark LUK, which is near-identical

and confusingly/deceptively similar to the Applicant's mark LUX and has been registered for identical/similar goods as those of the Applicant under

the mark LUX. Therefore, the Registered Proprietor could not, and even now, the Registered Proprietor cannot claim proprietorship to the impugned

mark under Section 18 of the Act and therefore, the impugned registration is contrary to the provision of Section 18 of the Act.

viii. The impugned mark LUK is wrongly remaining on the register without any benefit to the public. The subsistence of the impugned registration is

contrary to public interest, and hence the mark is liable to be expunged and/or suitably rectified under Section 57 of the Act, as also under the Learned

Registrar's discretion to maintain the purity of the Register.

ix. The Applicant is the prior adopter, user and registered proprietor of the well known mark LUX as well as several other LUX-formative trademarks

in India in respect of goods in Class 25, which mark is in use not only in India but also in a number of other countries. The subsistence of the impugned

registered mark LUK in the Register is contrary to the Applicant's business interests as the impugned mark LUK is deceptively/confusingly similar to

the Applicant's well known mark LUX and the goods thereunder are identical/similar to those of the Applicant. Therefore, the Applicant is a ""person

aggrieved"" by the impugned registration as per Section 57 of the Act.

Admittedly the Applicant is the proprietor of the following trade applications/registrations for the mark LUX and LUX-formative marks:

As per averment made, it has come on record that the Applicant for Rectification herein, Biswanath Hosiery Mills Ltd., is a reputed company

engaged in the business of manufacture and marketing of clothing, hosiery items and inner wear under the trade mark LUX and other LUX-formative

marks including LUX COZI, LUX COZI ONN, LUX EBONY, LUX CLIK, LUX NANO, etc. (hereinafter for the sake of convenience referred to

as ""LUX trademarks"").

The word ""LUX"" was first adopted as a trademark for inner wear and hosiery goods by the Applicant's predecessor and founder of the company

Giridharilal Todi in the year 1957 and has been in use ever since in respect of the said goods on an international scale. The word LUX has been

fancifully adopted by the Applicant as its trademark in relation to a range of clothing, hosiery items, inner wear, etc. (hereinafter also referred to as

the said goods""). The word LUX does not have any significance in relation to the Applicant's goods on which it is applied and as such, it is a

distinctive trademark for the said goods. The Applicant is also the copyright owner of the LUX label under no. A-8141/72 dated 8 August 1972. In

addition to the word LUX, the Applicant has also adopted a number of expressions as its trademarks, as well as the expression LUX COZI, which

was put to use as a trademark since 21st June 2002. The expression LUX also forms the dominant/distinguishing part of the name of the Applicant's

associate company Lux Industries Ltd. (earlier known as Lux Hosiery Industries Ltd.), which was incorporated on 21 July 1995. The Applicant has

permitted its associate entities Lux Industries Ltd. and J.M. Hosiery Factory by virtue of two separate agreements dated 1 April 2004, under which

the afore-stated entities were granted the right to sell the products bearing the Applicant's LUX trademarks. The Applicant maintains a corporate

website www.luxinnerwear.com, which is openly accessible to the public in India and other countries. Annexed hereto and marked as Annexure-C

colly. are documents including pages downloaded from the Applicant's website containing information about the Applicant-company, its history, its

products, copy of its copyright registration certificate no. A-8141/72 dated 8 August 1972, etc.

The Applicant has been using its LUX trade marks in India and in a number of other countries as well. One of the Applicant's popular variant of its

LUX brand, is the trademark LUX COZI which has been in use in India since 21 June 2002. Annexed hereto and marked as Annexure-D colly are

documents including a table showing the Applicant's total revenues earned from the sale of LUX-marked products, copies of sales invoices, shipping

bills, product packaging, etc.

The Applicant's said LUX trademarks, including the trademark LUX COZI, have acquired tremendous reputation and goodwill. Further, through

extensive and continuous use, including wide publicity and promotion of the Applicant's goods bearing the LUX trademarks, have acquired factual

distinctiveness and have become inextricably linked with the Applicant-company. The Applicant's various LUX trademarks are well-known

trademarks within the ambit of Section 2(1)(zg) of the Trade Marks Act, 1999 in respect of the said goods. It is submitted that the use of the mark

LUX or any other trademark comprising the word LUX as a part thereof, or any other mark deceptively/confusingly similar to the Applicant's mark

LUX, in relation to the said goods and/or related goods would connote and denote the Applicant as the exclusive source thereof. Annexed hereto and

marked as Annexure-Ecolly. are documents in support of advertisement and reputation of the Applicant's LUX trade marks, including a table showing

annual expenditure incurred by the Applicant for the past few years for its LUX trademarks, photographs of hoardings/displays at prominent locations

such as bus stops/train stations/road crossings, etc., copies of articles/write-ups published in newspapers, copies of bills and invoices issued by

Advertisement agencies, etc., towards promotional activities commissioned by the Applicant, etc.

Sometime in June 2014, the Applicant came to know that the Registered Proprietor was manufacturing inner-wear products bearing the mark ""JUX

COZY"" that is deceptively similar to our mark LUX COZI. An FIR was filed at the Annapurna Police Station at Indore, Madhya Pradesh, and a raid

was conducted by the police, during which several counterfeit products were seized from the Registered Proprietor's premises

at Indore, including products bearing the deceptively similar mark JUX COZY represented on the packaging in the following manner -

- that made it deceptively similar to the Applicant's mark LUZ COZI. Annexed hereto and marked as Annexure-I colly.

comprise a copy of the FIR, copy of packaging of the JUX COZY product manufactured by the Registered Proprietor as well as copies of newspaper

reports reporting the raid conducted at the Registered Proprietor's premises.

It is submitted on behalf of applicant that during the police investigation of the Registered Proprietor's business activities, it was revealed that the

Registered Proprietor was the proprietor of the impugned trade mark -LUK - under registration no. 706382 in respect of ""Readymade garments &

hosiery"" in Class 25. The impugned mark of the Registered Proprietor is near-identical to the Applicant's prior adopted, prior used and well known

mark LUX, and the goods thereunder are also identical. The mark under the impugned registration would therefore give the impression that it belongs

to the Applicant and/or is associated with the Applicant or has some connection with the Applicant and its products; and the use of the registered

mark on the specified goods shall lead to the Registered Proprietor deriving unfair advantage out of the ready brand recall of the Applicant's well-

known mark LUX trademarks, besides diluting the exclusivity attached to the Applicant's mark LUX trademarks and damaging the goodwill and

reputation associated thereto.

It is also alleged that the Registered Proprietor was fully aware of the reputation and goodwill attached to the Applicant's LUX trademarks, when

it adopted the impugned near-identical mark LUK as well as the near-identical mark JUX COZY in respect of identical goods and commenced use

thereafter. The Applicant's products bearing the LUX trademarks were not only available but also well-known in India at the time when the

Registered Proprietor dishonestly copied the Applicant's mark with the sole intention to trade off the goodwill and reputation associated with the LUX

trademarks including the LUX COZI mark. The dishonesty of the Registered Proprietor is prima facie evident. The Registered Proprietor seems to

have embarked on a well-planned strategy to trade upon the reputation and goodwill of the Applicant's trademarks and has not just adopted and

obtained registration of the mark LUK, which is near-identical and deceptively similar to the Applicant's mark LUX, but has also adopted and used the

mark , which is deceptively similar to the Applicant's mark LUX COZI. The Registered Proprietor's adoption of the impugned

mark LUK is dishonest from the very inception and has been made with a view to ""cash in"" on the tremendous reputation and goodwill of the

Applicant's well-known LUX trademarks and to derive unlawful gains. It is submitted that since the very adoption of the impugned mark LUK is

tainted with dishonesty, the Registered Proprietor can neither be deemed to be the proprietor of the impugned mark nor claim any benefit from use of

the dishonestly adopted mark. Discussions and finding

Thus, the impugned mark is near-identical and/or confusingly/deceptively similar to the Applicant's prior adopted, registered, much used and well-

known trademark LUX in respect of goods in Class 25. There exists a likelihood of confusion on the part of the public, including the likelihood of

association with the Applicant's earlier, registered and well-known trademark. The impugned registration is in relation to goods that are identical to the

Applicant's goods; and therefore, it stands in violation of Sections 11(1), 11(2) and 11(3) of the Act.

12.1. The Applicant's mark LUX and other LUX-formative marks -in respect of clothing, hosiery items and inner wear are well known and

inextricably associated with the Applicant alone and entitled to protection by law against identical and/or deceptively similar trade marks even in

respect of dissimilar goods/services. The Registered Proprietor was fully aware of the reputation and goodwill attached to the Applicant's mark LUX

when it dishonestly adopted the near-identical impugned mark LUK in respect of identical/similar goods and applied for registration thereof. The

Registered Proprietor had not come with clean hands in seeking registration of the impugned mark and as such, the application ought to be regarded as

having been made in ""bad faith"". The impugned registered mark is liable to be cancelled under the provisions of Section 11(10) of the Act.

12.2. The Registered Proprietor has obtained the registration of the impugned mark by making a false claim of use of the mark ""Since 01-01-1992"",

although the Registered Proprietor has not used the mark since 1992, or at all, in respect of the specified goods. The application was filed with a false

use claim and therefore, the Registered Proprietor is guilty of wilful and deliberate misrepresentation. Therefore, the legal validity of the mark is

impaired and the impugned registration is vitiated. The registered mark is an entry made in the Register without sufficient cause and is wrongly

remaining on the Register as per Section 57 (2) of the Trade Marks Act, 1999 (hereinafter, also referred to as ""the Act""), and ought to be rectified by

total expunction from the Register.

12.3. The Registered Proprietor had applied for and registered the impugned mark without any bona fide intention of using the mark, and in fact has

not used the mark till date, in respect of the specified goods in Class 25. In any case, since the very adoption of the impugned mark by the Registered

Proprietor was tainted with dishonesty, no amount of use thereof, if any, by the Registered Proprietor can inure to the benefit of the Registered

Proprietor. Therefore, the Registered Proprietor was not, at the time of adoption and application of the mark, and still is not entitled to claim any

benefit under Section 12 of the Act for the registration of this application.

12.4. The impugned mark was registered without any bona fide intention on the part of the Registered Proprietor to use the same in relation to the

goods covered by the registration and there has, in fact, been no use of the mark in relation to those goods upto a date of three months before the date

of this application and as such the mark is liable to be expunged under Section 47(1)(a) of the Act.

12.5. Up to a date of three months before the date of this application, a continuous period of five years and longer has passed from the date on which

the mark was actually entered in the register, during which there was no use of the mark in relation to the goods covered by registration; and hence

the mark is liable to be expunged under Section 47(1)(b) of the Act. There is no evidence of record to show about user of the mark of the respondent

No. 1

It appears to us that the impugned registration was obtained through false and misleading statements on the part of the Registered Proprietor.

Therefore, the legal validity of the trademark being vitiated, the impugned registered trademark is an entry wrongly remaining on the register and

remains so without sufficient cause and the registration is liable to be expunged from the register under Section 57(2) of the Act. The impugned mark

was wrongly registered and is wrongly remaining on the register, without any benefit to the public; on the other hand, the impugned registration is

contrary to public interest.

It is evident that the Registered Proprietor has dishonestly adopted and obtained registration of impugned trademark with the dishonest intention of

passing off its goods bearing the mark LUK as those of the Applicant or somehow connected to the Applicant's goods bearing the LUX trademarks

and deriving unlawful gains therefrom. The Registered Proprietor cannot claim proprietary rights to the impugned mark LUK and therefore, the

Registered Proprietor will not suffer any harm or loss by the cancellation of the impugned registration. On the other hand, since the mark LUX is

exclusively associated with the Applicant alone, the impugned registration for the near-identical and confusingly/deceptively similar mark LUK in

respect of identical/similar goods as those of the Applicant, stands contrary to the Applicant's business interests and also to the interest of the public at

large and therefore, the balance of convenience is in favour of ordering cancellation of the impugned registration.

The Applicant is the prior adopter, user and registered proprietor of the well known mark LUX in India in respect of goods in Class 25, which mark is

in use not only in India but also in a number of other countries. The subsistence of the impugned registered mark in the Register is contrary to the

Applicant's business interests as the impugned mark LUK is deceptively/confusingly similar to the Applicant's well known mark LUX and the goods

thereunder are identical/similar to those of the Applicant. Therefore, the Applicant is a ""person aggrieved"" by the impugned registration as per Section

57 of the Act. The filing of application for registration itself was fraud committed by the respondent No. 1 before respondent No. 2 and the applicant.

It is a matter of fact that the respondent No. 1 has failed to rebut the case of applicant who has been able to establish the case of rectification as

per material placed on record. The trade mark of respondent No. 1 attend under section 9, 11 and 18 of the Act. The filing of application for

registration was fraudulent act on the part of respondent No. 1. Thus the Trade mark No. 706382 in class -25 is removed from the Register in order to

maintain purity of the Register.

The prayer is allowed with cost of one lac to be paid by the respondent No. 1 to the applicant. The applicant has also spent Rs. 48000/- as

publication charges for the service of respondent No. 1, who was playing hide and seek with the parties and IPAB. The applicant is entitled for the

said cost also.

Copy of the order be sent to the respondent No. 2 to take the necessary steps for removal of entry.

The petition is disposed.