Point of Law: Intellectual of Property Law - Infringement of Registered Trade mark - Plaintiffs has not applied for their trademark to be treated as a well known trademark in terms of Rule 124 of Trade Marks Rules, 2017.

JUDGMENT :

DEBANGSU BASAK, J.

1. In a suit for infringement of trademark and passing off the plaintiffs have sought interim protection by way of the present application.

2. Learned advocate appearing for the plaintiffs has submitted that, the plaintiff No. 1 is a registered proprietor of various “LUX” trademarks. The mark “LUX” had been adopted by the founder of the plaintiff No. 1 in the year 1957. The plaintiff No. 1 has also copyright over “LUX” label having certificate of registration dated August 8, 1972. The plaintiff No. 2 is a subsidiary of the plaintiff No. 1 and that the plaintiff No. 2 has been using the name “LUX” since 1995 as its corporate name. He has relied upon the photographs of the packaging of the products of the plaintiffs. According to him, the packaging of the plaintiffs is distinct.

3. Learned advocate appearing for the plaintiffs has submitted that, the plaintiffs have in total 22 registrations in India. He has referred to the sales figure and the advertisement and promotional expenses of the plaintiffs from the year 2008-2009 onwards. He has also referred to the sale invoices of the plaintiff from the year 1986 showing massive business and popularity of the trademark “LUX.” According to him, the sales, publicity, quality and product and uninterrupted and continuous user of the word “LUX” has been recognised by the Intellectual Property Appellate Board in Biswanath Hosiery Mills Ltd. versus Friends Hosiery and Another on July 15, 2020. He has referred to the other orders which the plaintiffs have obtained from various Court proceedings in order to protect the trademark “LUX.” He has contended that, by virtue of such popularity, brand value, public demand and quality of products the mark “LUX” of the plaintiffs has become well-known. The plaintiffs have received awards. The launch events of various “LUX” brands by the plaintiffs have been usually covered by leading media houses. He has referred to the personalities who have been the brand ambassador of the plaintiffs. He has submitted that, the products of the plaintiffs are sold all over the world. The plaintiffs have market presence in 47 countries around the world. The plaintiffs have obtained trademark registration in various countries abroad.

4. Learned advocate appearing for the plaintiffs has submitted that, the defendant applied for registration of “LUX TMT” as a device in class 6 on October 25, 2019 on proposed use basis. Such application had been withdrawn by the defendant. The defendant had obtained registration of the word “LUX TMT 500+ ISI” in class 6, for TMT Bars and Rods on April 30, 2012 with User Date shown as January 1, 2008. The plaintiffs have challenged the same. The defendant has obtained registration of “LUX TMT DURGAPUR” mark in class 6 on proposed to be used basis. Such application is also under challenge by the plaintiffs. The defendant had applied for registration of the mark “LUX-EK SOLID SOCH” on December 5, 2019 “on proposed to be used basis” and the same is also under challenge at the behest of the plaintiffs.

5. Learned advocate appearing for the plaintiffs has submitted that the defendant is a subsequent user of an identical and deceptively similar mark as that of the plaintiffs. He has referred to the affidavit in opposition of the defendant and submitted that, the defence that the defendant have put forward, are unacceptable.

6. Learned advocate appearing for the plaintiffs has referred to the conduct of the parties subsequent to the cease and desist notice issued on November 18, 2019. He has submitted that, since the plaintiffs are the prior users of the mark “LUX” the rights of the plaintiffs are superior to the registration and are unaffected by registrations obtained under the Trade Marks Act, 1999. He has relied upon S. Syed Mohideen vs. P. Sulochana Bai, 2016 (2) SCC 683. He has contended that, the Court while assessing whether a mark is well-known or not has to refer to Section 11(6) of the Trade Marks Act, 1999. He h