Prabha Sridevan, J
1 . 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 an 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 sam 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 th 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 37th Court 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 hi 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 BOM 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 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 Cal 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 th 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 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 hi 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 on AIR
1958 Bom 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 favor 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.
