S. Jagadeesan, J. (Chairman)
1. The appeal is directed against the order of the Assistant Registrar of Trade Marks, New Delhi dated 19.01.1998 rejecting the application of the appellant for registration of the trade mark "LAXSONS".
2. The appellant herein filed an application No.498869 for the registration of trade mark "LAXSONS" in respect of air cooling, heating and cooking range included in clause 11 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellant filed the said application as a proposed user of the mark. The said application was advertised before acceptance in the Trade Marks Journal No.1040 dated 01.10.1992 at page 724. The first respondent herein on 15.12.1992 filed notice of their intention to oppose the proposed registration of the impugned mark on the grounds of its violation of the provisions of the Act. On 26.04.1994 the appellant filed their counter statement stating the grounds in support of the registration of the impugned mark as well as the grounds of rebuttal to the objections taken by the first respondent. Thereafter, the first respondent filed evidence by way of affidavit in the name of Shri Pradeep Singhal, their Deputy Manager and the appellant also filed their evidence by way of affidavit in the name of Shri N.K.Batra. After the completion of the formalities the matter was heard by the Assistant Registrar of Trade Marks. Ultimately he rejected the application of the appellant on the ground that the impugned mark is similar to the registered mark of the first respondent "LEXUS", which is under clause 11 and as such the prohibition imposed under section 12(1) of the Act is attracted and consequently the impugned mark cannot be registered. The first respondent being the prior user, they are entitled for the protection under the Act. The appellant being a proposed user neither section 9 or 11 is attracted. Further the appellant is not the owner of the trade mark as contemplated under section 18(1) of the Act as he has not used the same and on this ground also the registration of the impugned mark fails. Aggrieved by the same the appellant filed the appeal C.M.(main) No. 238 of 1998 on the file of the High Court of Delhi at New Delhi. By virtue of Section 100 of the Trade Mark Act, 1999, the said appeal was transferred to this Board and numbered as TA/139/2003/TM/DEL
3. During our sitting at New Delhi we heard the appeal on 16.02.2005. Shri M.K.Miglani appeared on behalf of the appellant and Shri N.K.Anand appeared on behalf of the first respondent.
4. The learned counsel for the appellant contended that the appellant filed the application on 05.10.1988 for registration of the impugned mark claiming the mark as proposed to be used. The first respondent filed the application on 30.05.1990, which is subsequent to the appellant. The respondent's statement also reveals that the mark is proposed to be used. Only in the rebuttal evidence the respondent produced the registration certificate dated 13.09.1994. Since the first respondent being the subsequent applicant, there is every possibility that the first respondent had adopted their mark by copying the appellant's. The second respondent, the Assistant Registrar totally failed to consider the material date of the application. Consequently he also failed to consider the right of the appellant under section 12(2) of the Act. The Registration Certificate was produced by the first respondent only at the time of the hearing before the Assistant Registrar and hence it is clear that when the application of the appellant was pending for registration, the first respondent not only applied for the registration of their mark but also pursued the matter and got the registration. The first respondent being the subsequent applicant is not entitled to claim the mark as prior user or bonafide adopter, especially when admittedly the appellant is the earlier applicant. Apart from this, he also contended that the impugned mark is not similar to that of the first respondent's mark. The first respondent's mark being "LEXUS" and the appellant's mark being "LAXSONS', both are visually and phonetically different and as such the findings of the Assistant Registrar that the marks are identical cannot not be sustained. So far as the ownership of the trade mark is concerned, he contended that the word was coined taking LAX from the word Laxmi being first part of the firm name and the name of the appellant's grandmother and the 'SONS" being a common suffix .
5. On the contrary, the learned counsel for the first respondent contended that the user is the material fact to claim the registration as per clause 11 of the Act. Though the first respondent was a subsequent applicant, admittedly they being the first to use the trade mark, they are entitled to oppose the registration of the impugned mark on the grounds open under the statute. By virtue of their use they also obtained their registration and being a registered proprietor of a similar mark, the first respondent has got every right to oppose the registration of the impugned mark. He further contended that the spelling in the name of the grandmother of the appellant i.e. Laxmi is an unusual one. Normally for the proper noun they do not use letter 'X' and they use the letter 'KSH' and hence the contention of the learned counsel for the appellant that it is an invented word or coined word, cannot be accepted. Even now the learned counsel for the respondent has no objection for the registration of the impugned mark provided they adopt the spelling "LAKSHSONS". Since the appellant is not using the mark, neither section 12(1) nor Section 12(3) is attracted. The first respondent being the user of the identical mark, the registration of the impugned mark would necessarily cause a confusion as contemplated under section 11(a) of the Act and on this short ground the impugned order of the Assistant Registrar can be sustained.
6. By way of reply the learned counsel for the appellant contended that the explanation offered by the appellant so far as the coining of the word to form the mark is concerned, the same was accepted by the Assistant Registrar. In fact the said plea of the appellant was not challenged by the first respondent in their rebuttal. When that be so, it is not open to the respondent's counsel to raise any objection with regard to the proprietorship of the mark and as such the impugned order is liable to be set aside.
7. We carefully considered the contentions of both counsels. In view of the stand taken by Mr. N.K.Anand, the learned counsel for the respondent that he has no objection for the registration of the impugned mark provided the appellant changed the spelling from "LAXSONS" to "LAKSHSONS" it is for us to consider as to how the impugned mark offends Section 11(a) of the Act. Factually with regard to the other aspect i.e. the appellant is the earlier applicant and the first respondent though filed the application subsequent to the appellant they became the earlier user are all admitted one. The entire issue depends upon the similarity of the mark. When we compare the marks, we are keeping in mind the principles laid down in Pianotist Case (1906) 23 RPC 774.
8. The appellant's mark is "LAXSONS" and now we are told that the same had been modified as "LAXSON". The first respondent's mark is "LEXUS". Both are dealing with the house hold articles like air cooling, heating and cooking range falling under clause 11. Even apart from the phonetic similarity the objection of the learned counsel for the first respondent is only with regard to the spelling of the appellant's mark. In our view even if the spelling is changed to "LAKSHSON" as suggested by the learned counsel for the respondent there may not be any poignant change phonetically. We have to consider the pronunciation not by a well qualified English scholar or one who has complete education having in English medium. We have to consider the mark keeping the minds of the consumers of average intelligence, keeping the minds of the average intelligence because the goods involved under both the marks are house hold goods, which are bought by the consumer of all walks of life including even illiterates. When the changed spelling, as suggested by the learned counsel for the respondent in respect of the impugned order, do not signify any phonetic change, we are of the view that the objection with regard to the similarity taken by the first respondent is only for the sake of objection and not otherwise.
9. Even apart from this when we compare the marks, definitely there is some difference to distinguish one another. The appellant's mark is "LAXSON" and the first respondent's mark is "LEXUS". The suffix word "SON" in the appellant's mark is totally different both phonetically and visually from the suffix word "US" in the mark of the first respondent.
10. When there is a distinguished difference between the two marks phonetically as well as visually, we are unable to agree with the finding of the Assistant Registrar that the marks are identical.
11. So far as the argument of the learned counsel of the respondent that the proper noun may not contain the spelling with letter "X" is concerned, even the appellant has stated that his grandmother's name is Laxmi having the spelling Laxmi. It is not for the first respondent to dispute the same. In fact the well known cricket player is having the name Laxman . The well known commercial and residential habitation in East Delhi is spelled as " Laxmi Nagar". So it cannot be said that the proper noun do not have the spelling with "X". It depends upon the person who spells the name. Hence we agree with the plea of the learned counsel of the appellant that it is a coined word. When the appellant is the earlier applicant 2 years prior to the filing of the respondent's application, there is every possibility that the respondent might have adopted the appellant's mark and also got the application disposed of at an early date. At the time of filing of the application, the respondent was also not using the mark. Only at the later point of time i.e. subsequent to the filing of the application, the first respondent used the mark.
12. In view of the finding that the marks are not similar and in view of the suggestion made by the learned counsel for the respondent to change the spelling of the impugned mark, which may not make any phonetic difference between the marks, we set aside the impugned order of the Assistant Registrar. Accordingly the appeal is allowed. However, there will be no order as to cost.