Laxmi Engineering Works vs Laxmi Industrials And Anr.

S. Jagadeesan, J

The appeal is directed against the order of the Deputy Registrar of Trade Marks, dated 14th April, 2000 rejecting the opposition of the

appellant for the registration of the first respondent's trade mark “LAXMI†and device of electricity sign in respect of “Jet pumps

and monoblocsâ€​ being goods included in class 7.

The proprietrix of the first respondent, Smt. Rukmaniammal, filed an application No. 461304 on 7th October, 1986, for registration of

the trade mark label consisting of the word “LAXMI†and device of electricity sign in respect of jet pumps and monoblocs being

goods included in Class 7. The respondent claimed to have been using the said trade mark since 27th October, 1979. Preliminary

objection was raised by the Registrar under Sections. 9 and 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to

as the Act). On such objections, the respondent amended the specification of the goods to read as Jet pumps and monoblocs.

Thereafter the respondent's application was ordered to be advertised before acceptance and the same was advertised in the Trade

Marks Journal with specifications of goods amended to read as “Jet pumps and Monoblocks†for sale in the State of Tamil Nadu,

Kerala, Karnataka, Andhra Pradesh, Madhya Pradesh, Uttar Pradesh, Maharashtra and Union Territory of Delhi. The appellant herein

filed an opposition to the registration of the respondents mark under No. MAS 2406 contending that they are the registered proprietors of

the trade mark consisting of the word “LAXMI†registered under trade mark Nos. 31227, 354179 and 354180 in respect of Diesel

Engines (not for land vehicles) electric motors (not for land vehicles), monobloc pump sets, centrifugal pumps, etc. and that the trade

mark sought to be registered by the respondent is identical with and deceptively similar to that of the appellant's trade mark. Moreover,

the goods are also of the same description. The appellants further stated in their opposition that they have developed an extensive use

and reputation and as such the registration of the respondent's trade mark would be contrary to the provisions of Sec. 11(a) of the said

Act the respondent is also not entitled for concurrent registration under Sec. 12(3) of the Act and the impugned mark of the respondent is

neither adopted to distinguish nor it is capable of distinguishing the goods of the respondents.

The counter-statement was filed by the respondents denying the averments of the appellants made in their notice of opposition and

emphasized that the respondent has been using the trade mark for the last seven years and as such they are entitled for registration.

The Deputy Registrar accepted the plea of the respondent and under the impugned order over-ruled the opposition of the appellant and

directed the registration of the respondent's mark. Hence the appeal.

We have heard Shri Mohan Dewan, the learned counsel for the appellant and Shri B.T. Seshadri, the learned senior counsel for the

respondents.

The learned counsel for the appellants contended that the respondent's proposed trade mark “LAXMI†is very much identical to

that of the appellant's. The appellant's mark was registered as early as 10th February, 1976, in respect of Engines (not for land

vehicles), pumps, foot valves and parts thereof. So far as the diesel engines (not for land vehicles) are concerned, the trade mark was

registered as early as on 6th October, 1979, and in respect of diesel engines (not for land vehicles), electric motors (not for land

vehicles), monobloc pump sets, etc., are concerned, the same was registered on the same date, i.e., 6th October, 1979. He further

contended that the invoices produced by the respondent do not disclose the brand name except the invoices in pages 82 and 83 of the

typed set. The respondent is also using other trade marks such as “ELLENâ€. Hence, it is clear that the respondent is using two

brand names for their jet pumps and monoblocs. The sales figures of the appellants stated in the affidavit would clearly establish that the

appellants had used the trade mark and it is identified with their goods since 1970â€"71. He contended that when the appellant's trade

mark is registered for use in any place without any restriction, the respondent is not entitled for the registration of an identical trade mark

especially in respect of the very same description of goods.

The learned counsel for the appellant further contended that the respondent's claim in respect of bona fide use cannot be accepted in

the absence of any plea that the proprietrix made a search in the Registry of Trade mark to find out as to whether there is any other

proprietor in respect of the same mark by way of registration. He further contended that the evidence filed on behalf of the respondent

alongwith the

affidavit of one Shri Lakshminarayanaswamy claiming to be the son of proprietrix cannot be accepted in the absence of any mandate or

authorization. He also pointed out that the Deputy Registrar, in the impugned proceedings has stated that the said

Lakshminarayanswamy is Manager of the respondent firm which is incorrect and consequently the impugned order is liable to be set

aside.

On the contrary, the learned senior counsel for the respondent contended that the respondent had selected the word “LAXMI†as

their trade mark since to the best of the proprietrix's knowledge, there was none using a similar trade mark in respect of Jet pumps and

monoblocs and further the word “LAXMI†was honestly adopted from her son's name Lakshminarayanaswamy and from her grand

daughter's name Lakshmi. He further contended that the registration of the appellant's mark refers to the description of goods

“pumps†which is a generic term and do not specify jet pumps and monoblocs. The evidence produced by the appellants at pages

16 to 32 of the typed set are relating to Laxmi Sales Corporation and Laxmi Sales, whereas the appellant firm is Laxmi Engineering

Works. In the absence of any evidence to co-relate both, the evidence produced by the appellant cannot be accepted. The respondent's

evidence with regard to the advertisement and turn over was not challenged by the appellant and hence the same had been rightly

accepted by the Deputy Registrar. The respondent also produced the orders placed for the purchase of “LAXMI†brand jet pumps

which was also not challenged. The respondent had established the concurrent use of the trade mark as well as the volume of sale of

their goods. The Deputy Registrar, having accepted the same had exercised his discretion in favour of the respondent and hence the

impugned order needs no interference.

We have carefully considered the above contentions of both the learned counsels.

The appellant's trade mark “LAXMI†was undisputedly registered under three registrations. The first No. 312270, dated 10th

February, 1976 was registered in respect of engines (not for land vehicles); pumps, foot valves and parts thereof included in Class 7.

This had been registered for sale in Maharashtra, Madhya Pradesh and Karnataka States. The next registered trade mark of the

appellant is No. 354179, dated 6th October, 1979 is in respect of diesel engines (not for land vehicles), electric motor, monobloc pump

sets, coupled pumps, foot valves, centrifugal pumps, starts, parts thereof, all being included in Class 7. The third registered trade mark

is No. 354180 also dated 6th October, 1979, is in respect of diesel engines (not for land vehicles), electric motors (not for land vehicles)

mono block pump sets, centrifugal pumps, starting devices for motors and pumps, all being goods included in Class 7. The respondent

filed the application for registration of their trade mark “LAXMI†on 7th October, 1986 claiming that they areb onafidely using the

same since 27th October, 1979. Hence, it is clear that the respondent had commenced the use of the trade mark “LAXMI†only

after the registration of the mark “LAXMI†by the appellant. There is nothing on recorded to show that the respondent had made any

earnest attempt to verify with regard to the use of the same trade mark by any other person. The respondent's claim is that they adopted

the device from the name of her son Lakshminarayanaswamy and her grand daughter Lakshmi. Here again there is no record to show

that the grand daughter of the proprietrix of the respondent is named Lakshmi. When the appellant's trade mark is registered much

earlier to the use of the same trade mark by the respondent, the respondent is not entitled to claim the benefit of concurrent user.

The only ground on which the learned counsel for the respondent wanted to distinguish the claim of the appellant from that of the

respondent is that the respondent is seeking registration for their goods “Jet pumpsâ€. It is his contention that the appellant's trade

mark is not in respect of the Jet pumps and as such there cannot be any objection for the registration of the trade mark by the appellant.

We are unable to appreciate the contention of the learned counsel for the respondent. When the learned counsel for the respondent

pointed out that the description of goods ‘pumps’ in the registered trade mark of the appellant is a generic term, in our view it

would include jet pumps also. Hence, it cannot be said that the jet pumps is totally a different category which do not fall within the

description of the goods ‘pumps’ mentioned in the registered trade mark of the appellant. The appellant has also registered the

trade mark for mono blocs. Furthermore, when the appellants are engaged in the manufacture of diesel engine and pumps under their

registered trade mark “LAXMIâ€, the use of the same trade mark for the same goods by the respondent would definitely cause

confusion in the trade. There is every possibility that the purchasers or the consumers may likely mistake the respondent's goods as

that of the appellants. Hence, we me of the view that the respondent had not discharged their burden of proving honest concurrent use of

their mark under Section 12(3) of the Act.

The Deputy Registrar has over-ruled the objections of the appellant mainly on the ground that the appellants had not established the

use of their trade throughout India and as such the respondent's restricted area of trade can be accepted.

When the registration of the appellants mark is not restricted to any place of trade, in our view, the appellant is entitle to object to the

registration of an identical trade mark especially by the respondents in respect of the same description of goods. Hence, we are unable

to agree with the view expressed by the Deputy Registrar of Trade mark.

Coming to the contention of the learned counsel for the appellant that the evidence produced by the respondent cannot be accepted

since the same was produced by a person who did not possess any mandate or authority, we are of the view that the same cannot be

accepted. There is nothing on record to show that the  appellant raised any objection before the Deputy Registrar when such evidence

was produced with the affidavit of the son of the proprietrix of the respondent firm. When the affidavit was filed by Mr.

Lakshminarayanaswamy who is the son of Smt. Rukmaniammal, the proprietrix of the respondent, the appellant did not dispute their

relationship and hence there is nothing wrong in accepting the evidence produced by him on record.

So far as the evidence of the appellant at pages 16 to 32 of the typed set are concerned, the learned counsel for the appellant

explained that Laxmi Sales Corporation and the Laxmi Sales are their sole distributors in respect of the pumps. In fact, every bill clearly

mentions that they are the sole distributors for Laxmi Diesel engine pumps. In the absence of any contra evidence from the respondents

and on the basis of the registration of the appellant's trade mark and the statement of turn over furnished by the appellant in their

affidavit, we are of the view that the appellant had established their case that they are the registered proprietors of the trade mark in

question. Consequently, the order of the Deputy Registrar that the respondents are entitled to registration of their mark under Section

12(3) of the Act cannot be sustained as the respondents have started adopting and using the mark later than that of the appellants. The

objections of the appellant is upheld. Accordingly, the appeal is allowed. No order for costs.