M/S. The Lovesac Company vs Avneet Kaur

Applicant Mark,Respondent No.1 Mark

LOVESAC,

person is allowed to file the application before the Hon’ble Board without approaching the Registrar, the Hon’ble Board will be flooded with such petitions, hence, bypassing the provisions should not be allowed in",

any eventuality. And further there is no suit is pending between the parties, therefore, section 125 is also not applicable.",

The respondent no.1 submitted that it has prior applied for registration of her trade mark(logo) in India i.e 08-08-18, Journal no.1868 dated 24-09-18 with class 20 for bean bags only and it got registered on 09-02-19,",

whereas the applicant trade (name) with regard to product bean bags so far is not registered in India. The applicant company applied for registration with IRDI on 11-09-18 Journal no. 1914 dated 12-08- 19, which got",

registered on 10-01-2020.,

The Respondent no.1 submitted that no objection of any kind has been filed by any party within 3 months from the date of registration, hence the application of the applicant is totally devoid of any merits.",

The Respondent No.1 submitted that as per page no.207 of the petition, the applicant has applied for registration of its Trade Mark “LOVESAC†with IRDI on 11-09-18 with class of goods bearing",

NO.18,20,22,24,25 & 35 and in class of goods bearing no.20 nothing has mentioned about bean bags and as per page no.209 of the petition subsequently on 08-06-19 amendment application is being filed with IRDI with",

regard to category of goods of Class 20 and in which bean bags knowingly and with malafide intentions got included in the list, but so far the amendment application is not being decided and is still pending, hence the",

contention with regard to using the trade name on the bean bags is totally after thought. It is submitted that as per the petition, the applicant company is in the business of fixed furnitures and sanctionals only, and to take the",

business from the small business personnel in India, the present petition is being filed.",

The Respondent No.1 submitted that moreover as per page no.626 & 627 of the petition, in the notification dated 28-02-19 of WIPO in the categories of goods of Class 20 nothing is mentioned about bean bags, hence it",

is clear that they had no intention while applying for registration to indulge in the business of manufacturing bean bags.,

The Respondent No.1 submitted that as per page no.207 & 209, it is mentioned that “proposed to be used†on user detail while applying for registration by the applicant, hence both the applicant and respondent no.1",

stands on same footing.,

The Respondent No.1 submitted that as per the documents placed on record, it is confirmed by the applicant company- that they will going to operate/sell their product in India, hence the question of any financial loss",

does not arise.(page no.201 to 206 of the petition are relevant in this regard).And moreover, the applicant company has not placed on record about the details of their consumers of bean bags in India.",

The Respondent No.1 further submitted that there is no similarity in the trade name of the applicant company and the logo of the respondent No.1. It is submitting applicant company could not produce any document on,

record that with regard to any sale in India of bean bags. The mark/logo of the respondent no.1 is totally different and is not deceptive. There is symbol of worm over the small letters of L-o-v-e-s-a- c, hence the question of",

confusion in the minds of educated consumers does not arise.,

The Respondent No.1 submitted that Love and Sac are common words and are being used rampantly and that is why over and above worm was used as a symbol. The worm above the lovesac letters is a distinguishing,

feature to separate from the mark of the applicant company.,

FINDINGS OF THIS BOARD,

It is an application in bad faith if the filing of a trademark with the sole purpose of hindering a foreign competitor on the market, as well as the trademark filing made by those who, being aware of the advertising carried",

out by an foreign undertaking to launch its brand and having had the opportunity to see the mark not on the Registered in India, file the trademark application before such undertaking file and secure registration in its name.",

And thus we found that the Application for the impugned mark by the Respondent No.1 has been made in Bad faith and therefore cannot be allowed to be remaining on the Register. Section 11(10)(ii) of the Trademark,

Act, 1999 suggests to take into account of such bad faith if any in filing Trademark Applications. The acts of the Respondent No.1 constituted bad faith trade mark registrations and prejudiced to the Applicant’s",

competitive strength and goodwill and can be termed as unfair competition.,

The Application of the Applicant though filed after the Application of the Respondent No.1 but takes the Priority and hence the Application of the Applicant that has been filed through Madrid Route vide IRDI,

No.4234845 on 11/09/2018 claiming priority of convention dated 14/06/2018; hence the Applicant’s Application is prior in date and Respondent No.1 Application though filed on 8th August 2018 is subsequent application.,

It is inadvertence by which the Respondent No.2 has not cited the application of Applicant in the examination report issued to Respondent No.1 pursuant to its application. Section 11 of the Trademark Act read with Rule 33,

make it clear that the Registrar (Respondent No.2) is duty bound to cite all prior applications before according any acceptance to the Applications before him.,

Further there are plethora of judgments that trans-border reputation is recognized in India and it is not in dispute that the Applicant has used the mark in USA since the year 2002 for the similar products i.e., Bean Bags.",

With regards to the Respondent No.1 argument of non-description of Bean Bags in the description of goods of Applicant application in India. The broader terminology “Furniture†in our opinion covers Bean Bags too,

and in any case the Amendment application is pending before the Respondent No.2.,

The argument of the Respondent No.1 that the word “LOVE†and “SAC†are descriptive in nature cannot be sustained as the uncommon combination of the word “LOVESAC†for the products are,

arbitrary and protection to the same cannot be denied.,

At present, we are of the opinion that the Applicant has made out a strong prima facie case of granting the relief prayed for. And since such dishonesty/bad faith factor holds the cardinal principle and thus until the",

Rectification Application is finally decided the operation of the registration under 3910894 in class 20 Registered under Certificate No. 2095114 in the name of Respondent No.1 shall remain stayed.,

At this stage, we have arrived to this conclusion only as prima facie view. Once the pleadings are filed, this Board will deal the matter accordingly on merits on such completion of pleading of the parties and shall not take",

any of present observations into account while dealing with the main Rectification Application. There shall be no orders as to the costs.,

List the main Rectification Application on 03/05/2021.,