Madras High Court
Lm Wind Power A/S vs The Assistant Registrar Of Trade Marks on 12 December, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 12.12.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/65/2023
(OA/2/2018/TM/CHN)
LM Wind Power A/S,
a Danish Company, Jupitervej 6,
6000 Kolding, Denmark . ... Appellant
-vs-
The Assistant Registrar of Trade Marks,
Trade Marks Registry,
Chennai. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) filed
under Section 91 of the Trade Marks Act, 1999, praying that the order
dated 22 September 2015 and 21 March 2017, respectively, issued by
the Respondent be set aside and consequently accept Application
No.2110960 for advertisement.
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https://www.mhc.tn.gov.in/judis
For Appellant : Mr.Arun C.Mohan
For Respondent : Mr.J.Madanagopal Rao, SPC
**********
JUDGMENT
The appellant challenges an order dated 22.09.2015 by which Application No.2110960 for the registration of the mark "LM WIND POWER" was refused, along with a review refusal order dated 21.03.2017.
2. The above mentioned application was filed by the appellant on 07.03.2011 by asserting use since 01.04.2010 in relation to wind mills. An examination report was issued on 23.05.2012 raising objections under Section 11 of the Trade Marks Act, 1999 (the Trade Marks Act). The search report annexed to the examination report cited six marks. The appellant responded to the examination report 2/8 https://www.mhc.tn.gov.in/judis on 02.07.2012 and stated that the conflicting marks have no similarity with the appellant's mark and that the appellant's mark was adopted from the trading name of the appellant. After a hearing on 02.09.2015, the respondent rejected the application by drawing reference to Sections 9 / 11 of the Trade Marks Act. Thereafter, the statement of grounds of decision was issued on 18.02.2016. The review application was filed on 23.03.2016 and an order was passed refusing to take Form TM-57 on record as being belated. The present appeal was filed for the above facts and circumstances.
3. Learned counsel for the appellant submitted that the appellant is a Danish Company and that it was originally incorporated with the name Lunderskov Mobelfabrik, which was subsequently abbreviated as LM. He further submitted that the appellant has used the trade mark LM WIND POWER since April 2010 in India. In order to substantiate this contention, learned counsel relied upon the affidavit by way of evidence filed before the 3/8 https://www.mhc.tn.gov.in/judis Trade Marks Registry and the documents annexed thereto. He pointed out that the sales turnover by use of the relevant trade mark was Rs.3,524,964,341 in the year 2011. He also referred to the invoices annexed to the affidavit, including the invoice dated 26.09.2010.
4. Learned counsel also pointed out that out of the six cited marks, three marks are marks of the appellant which were being examined at the relevant point of time. As regards the other three marks, he submitted that the marks are clearly distinguishable from the appellant's mark and that they do not relate to similar goods or services.
5. In response to these submissions, Mr.J.Madanagopal Rao, learned SPC, referred to the examination report and impugned order and pointed out that the application was rejected in view of the 4/8 https://www.mhc.tn.gov.in/judis existence of prior conflicting marks. He also pointed out that the appellant's use of the impugned mark was for a limited period.
6. From the examination report, it is clear that three out of six marks are marks of the appellant. These marks are clearly liable to be disregarded. All the other three marks are identical marks of Lal Mahal Limited in different classes. The relevant mark is LM 365 and the status thereof is shown as objected.
7. Apart from the objected status of the cited marks, if viewed as a whole, the mark applied for by the appellant does not appear to be deceptively similar to the cited marks.
8. The appellant has placed on record an affidavit setting out the sales turnover in the year 2011 and has also annexed thereto invoices evidencing use from September 2010. The impugned order contains no reasons and merely refers to Sections 9 / 11 of the Trade 5/8 https://www.mhc.tn.gov.in/judis Marks Act. Turning to the statement of grounds of decision, the respondent has recorded a finding that the prominent part of the applicant's mark is deceptively similar to the cited marks. For reasons set out earlier, this approach is untenable and calls for interference. The respondent has also concluded that not a single user document was produced. This conclusion is contrary to the evidence placed by way of affidavit and the invoices annexed thereto.
9. Therefore, the impugned order dated 22.09.2015 is unsustainable and is, hereby, set aside. Consequently, the review order is also set aside. By taking into consideration the evidence of use and the origin of the mark from the corporate name of the appellant, the application shall proceed to advertisement. However, it is made clear that this order will not be binding on opponents, if any.
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10. Accordingly, (T)CMA(TM)/65/2023 is disposed of with the above terms without any order as to costs.
12.12.2023 rna Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No 7/8 https://www.mhc.tn.gov.in/judis SENTHILKUMAR RAMAMOORTHY,J rna (T)CMA(TM)/65/2023 (OA/2/2018/TM/CHN) 12.12.2023 8/8 https://www.mhc.tn.gov.in/judis