Minor Alterations To "Lord Ayyappa" Logo Do Not Constitute Case For Rectification : Madras High Court Dismisses Plea Against Sri Lakshmi Venkateswara Rice Industries

​The Bench of Justice Senthilkumar Ramamoorthy observed, “As discussed earlier, the earlier invoices contain a pictorial depiction of Lord Ayyappa, which does not tally with the pictorial depiction in the registered mark. They also contain the trading name of the first respondent. Such trading name is, however, not written within the ring surrounding the pictorial depiction of Lord Ayyappa, as is the case in the registered trademark. Nonetheless, it cannot be said that the alteration substantially affects the identity. Therefore, I conclude that use of the mark by the first respondent as evidenced by invoices issued from 10.06.1993 to 03.10.2015 qualify as proof of use in terms of Section 55 of the TM Act. I also conclude that such use is bona fide. The period of use extended, as per evidence, at least until 03.10.2015. The assertion in the counter statement is that the mark has been used continuously since 1992. As a consequence, the petitioner has failed to make out a case for rectification under Section 47 of the TM Act.”

Advocate R. Sathish Kumar appeared for the Petitioner, while Deputy Solicitor General Rajesh Vivekanandan and Advocate B. Karthick appeared for the Respondents.

Facts of the Case

The First Respondent, i.e. Sri Lakshmi Venkateswara Rice Industries, filed the Original suit before the District Court for remedy in respect of alleged infringement of its registered trade mark by use of a pictorial representation of Lord Ayyappa by the petitioner. The rival marks were applied in relation to rice and related products. During the pendency of said suit, the Petitioner, i.e. Sree Lakshmi Balaji Industries, lodged the petition before the Intellectual Property Appellate Board under Sections 47 and 57 of The Trade Marks Act, 1999 (47 of 1999) (‘TM Act’).

Contention of the Parties

The Petitioner pointed out that the respondent claimed a "user date" (the date they started using the mark) of January 14, 1999, in their application, but later listed it as July 13, 1992, in a trade journal. The petitioner claimed there was no official evidence that the Registrar ever approved this change.

The Petitioner showed that the trademark actually used by the respondent on their products looked significantly different from the version they officially registered. Because the registered version wasn’t being used, the petitioner argued it should be cancelled for "non-use." The Petitioner noted that the Registrar of Trademarks had previously found the respondent guilty of misrepresenting their mark in certain invoices.

The Respondent argued that the Registrar would not have updated the user date in the official journal unless an amendment application had already been reviewed and accepted. The Respondent produced invoices dating back to June 1993 to support their claim that they had been using the mark since the early 1990s. While they admitted the picture of Lord Ayyappa on their invoices did not perfectly match the registered drawing, they argued the use was in good faith. They claimed the changes did not "substantially alter" the identity of the brand, which is a defence allowed under the law.

Observations of the Court

The question which was considered by the Court was whether the impugned mark is liable to be removed from the register on account of the discrepancy in the user date between the application and the advertisement.

The Court said that the registered trade mark contains three elements: (i) Pictorial depiction of Lord Ayyappa; (ii) The trading name Sri Lakshmi Venkateswara Rice Industries, Siruguppa, written in a ring surrounding the pictorial device; (iii) Ayyappan Brand, written in words in a rectangular box beneath the ring.

In this regard, the Court observed, “Out of these three elements, only the pictorial depiction finds place as a mark on the invoices issued between 10.06.1993 and 09.04.1998. As recorded earlier, the invoices clearly indicate, however, that they are being issued by Sri Lakshmi Venkateswara Rice Industries. This leaves no room for confusion with regard to identity or source. Invoices issued later, from about 28.10.1999, also contain the words ‘Ayyappan Brand’ beneath the pictorial device of Lord Ayyappa.”

As there was a variation in the pictorial depiction of Lord Ayyappa when the mark as registered was compared with the mark as used in the invoices, the Court dealt with the question whether the mark was liable to be rectified by exercising the power under Section 57(1) or 57(2) of the TM Act.

The Court said that while it was not possible to conclude on the basis of records that an application for amendment was made with regard to user date and that such application was accepted, it cannot equally be concluded that the first respondent indulged in misrepresentation or fraud with regard to the change of the user date.

The Court held that the alleged contravention in relation to the registration did not constitute a valid reason to direct removal of the mark by exercising power under Section 57.

“A trade mark can be removed from the Register on the ground of non-use if the petitioner establishes that the case falls either within clause (a) or clause (b) of sub-section (1) of Section 47. In order to fall within clause (a), the trade mark should have been registered without any bona fide intention on the part of the applicant to use it in relation to the relevant goods or services and such mark should not have been bona fide used in relation to such goods or services upto a date ending three months before the date of application. In order to fall within the scope of clause (b), there should have been no bona fide use of the mark in respect of the relevant goods or services for a continuous period of five years from the date on which the mark was entered in the Register and ending on a date three months prior to the date of application for rectification”, the Cout observed.

The Court concluded that the variations in the Lord Ayyappa image and the placement of the company name were minor. Since the respondent proved they had been consistently using the brand since 1993, the Petitioner failed to prove "non-use" under Section 47. Additionally, the Court dismissed a previous complaint about misrepresentation, noting that a related legal order had already been set aside.

The Court dismissed the petition for rectification, allowing the Respondent to keep their trademark registration. However, the Court clarified that if the respondent ever sues for infringement in the future, their rights will be measured against the mark as it was officially registered, not the modified versions found on their invoices.

Cause Title: M/s Sree Lakshmi Balaji Industries v. Sri Lakshmi Venkateswara Rice Industries and Anr. [Neutral Citation: 2026:MHC:1056]

Appearances:

Petitioner: Advocates R. Sathish Kumar and Ramji G

Respondents: Deputy Solicitor General Rajesh Vivekanandan and Advocate B. Karthick

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