//
you're reading...
legal issues

INTELLECTUAL PROPERTY APPELLATE BOARD- The appellant’s mark is Magic Laxmanrekha which is how all along he has been using the mark. The respondent’s mark as directed for registration is KRAZYLINES LAXMANREKHA all the words in the same line. Krazylines per se has been in the market for long. Even if the application for this mark is subsequent to the appellants mark, in view of the fact that for a long time, the respondent’s carton and label have admittedly shown not only the word KRAZYLINES but also the Slogan “Draw a Laxmanrekha,” the conditions imposed by the Registrar should be sufficient to protect public interest. 15. So for the above reasons, we think this is a case where we must justifiably exercise our discretion in favour of the respondent. The adoption is not dishonest as the respondent has been using the Slogan containing the word LAXMANREKHA for a long time. It is possible that the appellant was inspired to adopt the name from the Slogan. At the same time, we have also given our reason why we do not think there was any dishonesty or fraudulent conduct on the part of the appellant in adopting Magic Lines Laxman Rekha. So the order does not warrant interference. For all the reasons, the appeal is dismissed. No order as to costs.

INTELLECTUAL PROPERTY APPELLATE BOARD

Trade Star - Infrasofttech HeadOffice, Mumbai

Image via Wikipedia

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

CIRCUIT BENCH SITTING AT MUMBAI

M.P. NOS.57/2004, 112/2006, 286/2010 & 293/2010

IN

TA/62/2003/TM/MUM AND TA/62/2003/TM/MUM

AND

M.P. NOS.285/2010 &  291/2010

IN

OA/20/2004/TM/MUM AND OA/20/2004/TM/MUM

 FRIDAY, THIS THE 3RD DAY OF FEBRUARY, 2012

 

Hon’ble Smt. Justice Prabha Sridevan                                    … Chairman      

Hon’ble  Ms. S. Usha                                                                     … Vice-Chairman

 

Mr. Sudhir Bhatia,

M/s. V. Bhatia International,

Indian National

2, Laxmi Niwas, Off. Aarey Road,

Goregoan (East),

Mumbai – 400 063, Maharashtra                                             … Appellant

(By Advocate – Shri Shailen Bhatia)

Vs.

 

1.         Midas Hygiene Industries Pvt. Ltd.,

D-46, S-4, Sector 14,

Amar Jyoti MGH Complex,

Vashi Navi Mumbai – 400 705

 

2.         The Registrar of Trade Marks

Central Building,

Maharshi Karve Road,

Mumbai – 400 020..                                                    … Respondents

 

(By Advocate – Shri T.N. Dharuwala and Shri Darius Dalal)

 

ORDER   (No.34 of 2012)

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

 

TA/62/2006/TM/MUM has been filed against the order passed in the matter of application No.545610 in Class 5 for registration of Trade Mark “LAXMAN REKHA” and opposition No.BOM-52971 dated 30.1.2003.

 

OA/20/2006/TM/MUM has been filed against the order passed in the application No.545609 in Class 5 for registration of trade mark “KRAZYLINES LAXMAN REKHAA and Opposition No.BOM-53516 dated 7.7.2003.  In both the cases registration was accepted and opposition was disallowed.  The parties are the same.  As regards, the mark LAXMAN REKHA originally the mark was for goods described as “Ayurvedic Medicinal Preparation for insects”.  Subsequently by filing Form TM-16, it was amended to read as “insecticides and pesticides preparation.”

 

2.         KRAZYLINES was accepted for registration subject to condition that the mark should be shown in a single line.  The user was claimed from January 1988 by amendment and the place of business was also amended.  The original owner of the trade mark was Midas Marketing House.  By a deed of assignment dated 1.4.1997 between Midas Marketing House and the present respondent, the rights are said to have been transferred.

 

3.         The appellants are aggrieved by the orders for registration and dismissal of the oppositions.  The amended applications were advertised in the trade Mark Journal.  The appellant filed notices of opposition, broadly the grounds are the same in both.

 

4.         The appellant claims that they are engaged in the business of manufacturing and marketing “Non Staining Chalks for Killing insects”.  They have conceived and adopted the trade mark MAGIC LAXMAN REKHA in 1989.  They are also proprietors of the same trade mark under No.568046 B in Class 5.  The mark applied for by the respondents for LAXMAN REKHA is similar to the appellant’s trade mark; and further it was also contended by the appellants that LAXMAN REKHAA is non distinctive, it is a common term and the respondents cannot claim an exclusive right.  They also contended that the mark will cause confusion and deception, since the appellants mark is well known in respect of the goods insecticides and pesticides preparation.

 

5.         The evidence in support of opposition filed by the appellants in both the cases are identical.  According to them, they have been engaged and carrying business under the name and style of V. Bhatia International and their business consists of marketing insecticides and pesticides including Non Staining Chalks.  They began the business in 1985.  In 1989, they adopted the trade mark MAGIC LAXMAN REKHA.  They use the word Magic as the house mark and this mark has been used openly, extensively, continuously and uninterruptedly.  They had also supplied these chalks to Midas Marketing House.  After sometime they stopped supply.  By vigorous promotion, the goods became popular.  So, registration of the marks was applied and they are pending.  Owing to the excellence, the trade mark was an instant success.  The statement showing annual sales is marked as Annexure A.  In 1989-92 one Shrusthi Sales Corporation was appointed to distribute the goods, subsequently only Plasfab Private Limited, Bombay marketed the goods.  The copy of the carton used by this Plasfab is Annexure B.  Annexure C is a copy of the affidavit filed by one Satish Muraka in C.S. No.1821 of 1999 before the High Court at Delhi.  This affidavit speaks to Plasfab Private Limited.  Annexure D is the copy of the carton used in respect of the product marketed through Magic products.  They have also sponsored various programmes and publicized numerous adds in various TV channels.  Annexure E is a collection of  such advertisement.  Annexure F is a collection of publicity materials.  Annexure G is a collection of bills of TV companies.  They export the chalks and also supply to the government.  Annexure H is a collection of invoices.  According to them, the respondent has no right over the trade mark and could not have assigned.  Annexure I is a legal notice signed by Midas Marketing House.  Annexure J is a reply which shows that the respondent’s predecessors never use the word LAXMAN REKHA as trade mark.

 

6.         The appellant has issued a series of caution and warning notice reiterating the proprietary rights and Annexure L is a collection of warning notice.  Various orders have been obtained by the appellant from the Delhi High Court against imitators who copied the trade mark LAXMAN REKHA.  The claim originally made was for Ayurvedic Medicine for insects by amendment it has been changed to insecticides.  A medicine for insects and medicine to kill insects cannot be same.  By the amendment, the specification of the goods has completely changed.  Such total change cannot be allowed.  Annexure M is the report of the Crime Branch Control, CID presented to the Hon’ble 37thCourt Mumbai, claim of assignment is dishonest.   The learned counsel appearing for the appellant submitted that the specification has been totally changed and it is possible to restrict kind of goods, but cannot totally change the goods.  On all these grounds they sought to oppose the registration.

 

7.         The case of the respondents on the other hand is that Swadesh Kumar  Kapoor, the proprietor of the Midas Marketing House, the assignor of the respondent invented the mark called LAXMAN REKHA.  The appellant Sudhir Bhatia is his nephew and worked with him since 1985.  This is recorded by the learned judge of the Delhi High Court in the order passed in the injunction application that “the defendant admittedly worked with the plaintiff prior to launching its business.”  The predecessor in title of the respondent had commenced insecticides preparation under the mark LAXMAN REKHA in 1988.  The promotional expenses in the sales bills are also given.  In 1990 Sudhir Bhatia left Midas Marketing House and had started dealing in insect repellants in the form of chalk.  There is an affidavit filed by him in respect of sales tax for the period from 01.04.1990 to 31.03.1991 and 01.04.1991 to 31.03.1992 that no sale or purchase was done.  There are letters right from 1991 which show that Swedesh Kumar Kapoor was doing business with reference to products such as LAXMANREKHA etc. In 1992, the respondent served a cease and desist notice on Sudhir Bhatia.  There is the statement of Mr. Oswald Patrick D’Silva before the police station who was working for the appellant that Sudhir Bhatia was working as a business partner with his uncle Swadesh Kumar Kapoor, that he left the company and formed his own company and that the marks LAXMANREKHA KRAZYLINES belong to his owner’s/uncle’s company and that his boss is “packing and selling the same in the market.”  This is a statement recorded in the Goregaon Police Station and is inadmissible.

 

8.         The Hon’ble Delhi High Court found that the respondent is the first adopter and first user of the mark and that there is no explanation why the appellant adopted Magic LAXMANREKHA and that the appellant has not come with clean hands.  The order of the learned Single Judge of the Delhi High Court was confirmed by Supreme Court.

 

9.         The learned counsel for the appellant relied on the following judgments:

AIR 1994 SC 853 – S.P. Chengalvaraya Naidu Vs. Jagannath – “The courts of law are meant for imparting justice between the parties.  One who comes to the court, must come with clean hands.  It can be said without hesitation that a person whose case is based on falsehood has no right to approach the Court.  He can be summarily thrown out at any stage of the litigation.  A litigant, who approaches the court, is bound to produce all the documents executed by him which are relevant to the litigation.  If he withholds a vital document in order to gain advantage on the other side then he would be guilty of playing fraud on the court as well as on the opposite party.”

 

This was cited by the appellant to show that the respondent has not come to the court with the clean hands.

 

AIR 1953 SC 357 – National Sewing Thread Co. Ltd. Vs. James Chadwick and Bros. Ltd. – “The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant.  It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered.”

 

 

 

2007 (34) PTC 346 (IPAB) – Titan Industries Limited Vs. Registrar of Trade Marks & Anr. – “We are of the opinion that any amendment which will materially change the nature of the application should not be allowed.  Here in the instant case, the second respondent has taken out the application on Form TM-16 to amend the date of user after a long delay of 11 years.  When procedures are followed before advertisement, the second respondent could have taken out the application at the pre-advertisement stage itself if they had been really interested and vigilant.  Here we only observe this application has been taken after receipt of the Notice of opposition is only to gain right over the mark as prior users.  Moreover, the well settled proposition of law in Trade Mark law is that the prior user of a trade mark has more valid rights in a mark than the registered proprietor.  The second respondent, we observe, is trying to take advantage of the proposition of law and has taken out this application at this belated stage.  As seen from the act of the second respondent it is very clear that they have filed this application with malafide intentions.”

 

This was cited to support their case as prior user.

 

AIR 1958 BOMBAY 47 – Scientific Soap Works and Anr. Vs. Dalsukhbhai Mangaldas Shah and Anr. – “unless the amended trade mark is again advertised, because in the eye of the law a trade mark which is so amended as to alter its identity requires a fresh application because the application is no longer for the registration of the original trade mark but the application is for the registration of a new trade mark.”

 

This is not relevant because the advertisement has been made after amendment.

 

2005 R.P.C. 5 – Nestle SA’s Trade Mark Application

“This relates to amendment and inadequate description and does not apply to this case.”

 

1993 PTC Vol.XIII – Gopal Krishnan Vs. M/s. Mex Switchgear (P) Ltd. & Anr. – “This decision relates to legality of amendment and does not arise in the case”

 

AIR 1977 Calcutta 413 –  The Imperial Tobacco Co. of India Ltd. Vs. The Registrar of Trade Marks and Anr. – “Where the Learned Judge had dealt with the question, whether the mark had become distinctive, satisfying the clause (b) of Section 9 (5) and whether the mark could have attain distinctiveness on the date of application.”

 

 

10.       There is evidence to show use by the appellant of the mark MAGIC LAXMANREKHA from 1990.  There is also the affidavit of Satish Muraka, who is the partner of Shrusthi Sales.  Challans of Shrusthi Sales right from 1990 have been marked.  The evidence of Muraka shows that he had a business relationship with the appellant, both as the partner of Shrusthi Sales and as the person responsible for development of Sales of Plasfab.  He had marketed various products developed by Sudhir Bhatia and one such product was the LAXMANREKHA insecticide chalk.

 

11.       On 28.02.1992, the respondent had issued the legal notice claiming that they are manufacturers of a herbal preparation against house hold insects, under the trade mark KRAZYLINES LAXMANREKHA.  To this, a reply has been given stating as follows.  “The name of your clients’ product is Herbal Crazy Lines.  Thereafter on the packing your client has two slogans to make.  (i) First time in India and  (ii) Draw a Laxman Rekha to your cockroach problems.”  Therefore the defense in the reply notice was that the respondent’s trade mark was Herbal Crazy Lines and the slogan was “Draw a Laxman Rekha.”  Whereas the appellant’s mark was “Laxmanrekha White Chalks” after the word MAGIC and the slogan was “Draw Magic Lines.”

 

12.       The case of the respondent is that Sudhir Batia who was associated with them, had taken advantage of the knowledge that he had gained and had used the mark belonging  to the respondent.  We are not sure, if this contention can be accepted.  For example, let us assume that there is a pen manufacturer who markets his pen under the trade mark “Contact” and the slogan  “Writes as smooth as silk.”  His associate leaves him and thereafter adopts “Silk” as a trade mark for his pens.  We are not sure, whether we can label it as dishonest.  The word “Silk” may show how smoothly the pen writes.  The word “Silk” per se is not descriptive of a pen.  It is true that the inspiration for the mark “Silk” may have come from the slogan.  But that by itself may not render the adoption of the trade mark as dishonest.  Similarly here goods of the respondent were called Krazylines and not Laxmanrekha.  We understand why the owner of KRAZYLINES trade mark used the word LAXMANREKHA as a slogan.  It was a line that should not be crossed or cannot be crossed and it was drawn for cockroaches.  But it is not directly descriptive.  The appellant has taken the word “LAXMANREKHA” in combination with Magic.  So the mark “Magic Laxmanrekha” is his own combination.  The allegation that the appellant is dishonest cannot be accepted.

 

13.       According to the appellant, originally the description of the goods was Ayurvedic Medicine for insects.  Then by filing TM-16, the specification was changed to Insecticides.   The appellant’s case is that by the amendment, the specification of the goods has been completely changed and relied onAIR 1958 Bombay 47 cited supra to support their case.  We cannot accept this objection.  The mark was re-advertised, after the amendment was accepted and it is in accordance with the judgment in the above case.

 

14.       The appellant’s mark is Magic Laxmanrekha which is how all along he has been using the mark. The respondent’s mark as directed for registration is KRAZYLINES LAXMANREKHA all the words in the same line.  Krazylines per se has been in the market for long.  Even if the application for this mark is subsequent to the appellants mark, in view of the fact that for a long time, the respondent’s carton and label have admittedly shown not only the word KRAZYLINES but also the Slogan “Draw a Laxmanrekha,” the conditions imposed by the Registrar should be sufficient to protect public interest.

 

15.       So for the above reasons, we think this is a case where we must justifiably exercise our discretion in favour of the respondent.  The adoption is not dishonest as the respondent has been using the Slogan containing the word LAXMANREKHA for a long time.  It is possible that the appellant was inspired to adopt the name from the Slogan.  At the same time, we have also given our reason why we do not think there was any dishonesty or fraudulent conduct on the part of the appellant in adopting Magic Lines Laxman Rekha.  So the order does not warrant interference.    For all the reasons, the appeal is dismissed. No order as to costs.

 

 

(S.Usha)                                                                                 (Justice Prabha Sridevan)                                                                  

Vice-Chairman                                                                      Chairman

 

 

 

 

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

 

About advocatemmmohan

ADVOCATE

Discussion

Comments are closed.

Blog Stats

  • 2,881,343 hits

ADVOCATE MMMOHAN

archieves

Enter your email address to subscribe to this blog and receive notifications of new posts by email.

Join 1,905 other followers

Follow advocatemmmohan on WordPress.com
%d bloggers like this: