Toshiba

TRADE AND MERCHANDISE MARKS ACT, 1958: ss. 46 and 56 – Application for rectification of registered trade mark – Trade mark sought to be rectified, being renewed from time to time – Company maintaining service centers in India – No intention on its part to abandon the right – Suit filed against applicant – No injunction against applicant granted – Applicant not manufacturing relevant items – HELD: There was delay on part of applicant in filing application – Applicant did not show as to how it would be injured if trade mark was allowed to stand – Suit to be decided expeditiously – Trade Mark and Merchandise Marks Rules, 1959 – r.94 – Delay/laches. s.23 – Registration of trade mark – Purpose of – Explained. ss.46 (1) (a) and (b), 46 (3) and 56 – Applicability of -Explained. ss. 46 and 56 – Application for rectification of registered trade mark – `Aggrieved person’ – Explained – In instant case applicant was an `aggrieved person’ and application was maintainable u/s 46 – Party. ss.109 – Appellate jurisdiction of High Court – Scope of – Explained. Words and Phrases: `Aggrieved person’ – Connotation of in the context of s.46 of Trade and Merchandise Marks Act, 1958. The appellant company, which had adopted the mark TOSHIBA, obtained, in the year 1971, trade mark registration No.273758 under the Trade and Merchandise Marks Rules, 1959, in respect of electrical appliances including washing machines, spin dryers etc. It served a notice upon the respondent, an Indian company, carrying on business of marketing various electrical appliances under the trademark `TOSIBA,’ calling upon it to desist from using the said trademark in respect of electrical goods including electric iron or any other goods whatsoever. The respondent in turn filed Application No. CAL No. 573 purported to be u/ss 46 and 56 of the Trade and Merchandise Marks Act, 1958 read with Rule 94 of the Rules, before the Registrar, Trade Marks seeking rectification of the registered trade mark no.273758 in respect of items covered in Class 7 of the Fourth Schedule to the Rules, alleging that it was using the mark `TOSIBA’ in respect of Domestic Electrical Appliances viz., auto irons, etc. covered in Class 9 of the Fourth Schedule to the Rules since the year 1975 and the mark in question offended the provisions of the Act; that the mark sought to be removed was not on the commencement of the proceedings distinctive of the goods of the registered proprietor. The respondent also averred that it was an aggrieved party as it was served with a notice by the appellants to discontinue the use of the word `TOSIBA’ which the respondent adopted in 1975. It filed two more applications bearing CAL No. 574 and CAL No. 575. The appellant also filed a suit in the High Court praying for a decree for permanent injunction restraining the respondent from using the mark `TOSIBA’ or any other deceptively similar mark in respect of electrical goods including electric irons, immersion rods, toasters, table lamps, ovens and stoves. The Deputy Registrar of Trade Marks partly allowed Application No. CAL No. 573 filed by the respondent and directed that the register of Trade Mark be rectified by deleting the goods `washing machines’ and `spin dryers’ from Trade Mark No. 273758 in Class 7. Rectification was also directed on the other applications CAL No. 574 and CAL No. 575. The appellant filed appeals before the High Court. The appeal arising out of CAL no. 573 was allowed partly by the Single Judge upholding the order of the Deputy Registrar so far as the application related to s. 46 (1) (a) of the Act. But the plea of the appellant was rejected as regards s. 46 (1) (b). The intra-court appeal filed by the appellant was dismissed by the Division Bench of the High Court. In the instant appeal, it was contended for the appellant that the respondent having not been dealing with either washing machine or spin dryer, was not a `person aggrieved’ within the meaning of s. 46 of the Act; and the name `TOSHIBA’ being well known and the word being an innovated one, although not directly, but the spirit of the provisions of s. 47 of the Act should have been considered by the Registrar in exercise of his jurisdiction under the Act. =Allowing the appeal, the Court HELD: 1.1 The intention to use a trade mark sought to be registered must be genuine and real. The person, who does not have any bona fide intention to use the trade mark, is not expected to get his product registered so as to prevent any other person from using the same. In that way trafficking in trade mark is sought to be restricted. [para 41] [696-C-D] 1.2 In the instant case, the appellant had obtained registration of trade mark in 1971 in respect of certain products falling in Classes 7 and 11 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959 and mentioned in the registration certificates. The respondent was not in picture at that point of time. The appellant, after expiry of the validity of a period of seven years, has been getting its registration renewed from time to time and the same stands extended upto 2016. The appellant has not assigned the same in favour of any person or granted any licence in respect thereof. It specifically brought to the notice of the Registrar that it had been maintaining service centres in India in respect of washing machines. Though the appellant was not in a position to manufacture washing machines or spin dryers or market the same because of the ban imposed by the Central Government, but it had been rendering the services to those who had been importing the said machines. Although the appellant had not been using its registered trade mark effectively yet, there is a finding that it did not intend to abandon the said right. It intended to enforce its right under the Act as it had filed a suit against the respondent as far back as in the year 1990. [Paras 26, 27, 28, 53 and 54] [691-B,C,E, 701-A-C, 703-A-C] 2.1 In an application filed in the prescribed manner by a person aggrieved, the grounds available to the Registrar for exercise of discretionary jurisdiction are as stated in clauses (a) and (b) of sub-section (1) of Section 46 of the Trade and Merchandise Marks Act, 1958. Clauses (a) and (b) are disjunctive and not cumulative. Recourse may be taken to either of them or both of them. [para 31] [962-E & F] 2.2 A combined application even under Sections 46 and 56 of the Act is permissible in law. No doubt, a statute is required to be read as a whole. However, the purpose for which clauses (a) and (b) of sub-section (1) of Section 46, on the one hand, and sub-section (3) thereof vis-

REPORTABLE IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDCTION CIVIL APPEAL N1O. 3639 OF 2008 (Arising out of SLP (C) No.5542 of 2006) Kabushiki Kaisha Toshiba … Appellant Versus TOSIBA Appliances Co. & Ors. … Respondents JUDGMENT S.B. Sinha, J. 1. Leave granted. INTRODUCTION 2. Jurisdiction of a Registrar of Trade Mark to remove … Continue reading →