Laxmi Engineering Works vs Laxmi Industrials And Ors.

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 monoblocs -- 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 - ELLEN --. 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 1970-71. 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 are bona fidely 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 pumps --. 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 - LAXMI --, 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 are 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.