Kabushiki Kaisha Toshiba Vs. Tosiba Appliances Co. & Ors. 
INSC 962 (16
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
S.B. Sinha, J.
1. Leave granted.
2. Jurisdiction of a Registrar of
Trade Mark to remove the registered mark from the register maintained by it on
the ground of non-use as 2 contained in Section 46 of the Trade and
Merchandise Marks Act, 1958 is the question involved in this appeal which
arises out of a judgment and order dated 8.12.2005 passed by a Division Bench
of the Calcutta High Court dismissing an appeal being CAL No.573 arising out of
a judgment and order dated 28.9.1993 passed by a learned Single Judge of the
High Court affirming the final order dated 24.2.1992 passed by the Deputy
Registrar, Trade Marks.
3. The factual matrix obtaining
herein shorn of all unnecessary details is as under :
Appellant claims itself to be the
largest manufacturer of Heavy Electrical apparatus in Japan. The establishment
started in the name of Shibaura Engineering Works in the year 1857. In 1890,
Hakunetshu-Sha and Company Ltd. established the first plant for electric
incandescent lamps in Japan. It later on diversified its product into consumer
Hakunetshu-Sha and Co. Ltd. was
renamed as Tokyo Electric Company in the year 1899. Shibaura Engineering Works
Company Ltd. merged with Tokyo Electric Company to form Tokyo Shibaura Electric
Company in the year 1939. However, the name of the company was changed to
Kabushiki 3 Kaisha Toshiba (for short, TOSHIBA). Appellant adopted the mark
TOSHIBA in which `TO' was taken from the Tokyo and `SHIBA' was taken from the
4. An application was filed for
registration of eight items of electrical apparatuses which fall in Class 07 of
the Rules framed under the 1958 Act being :
induction motors (electric), electric washing machines, compressors (machinery)
and electric tool set consisting of electric drills (machines), spin dryers and
can openers being electrically operated tools, all being goods include in class
5. Registration was granted in
respect of the said items being Trade Mark No.273758. Other registeration
numbers were given in favour of the said group in respect of some other goods
falling under Class IX and XI.
6. Respondent herein is an Indian
company. It claims to have been carrying on business of various electrical
appliances and marketing auto irons, toasters, washing machine, extension
cords, table lamps, etc. under the trademark TOSIBA since 1975.
7. The following chart will show
the range of goods registered in favour of TOSHIBA and which had been sought to
be rectified by the respondent :
"Mark Registration Date Clas
Goods Number s Toshiba (Logo) 160442 5.9.1953 9 Scientific, nautical, surveying
& electrical apparatus, etc.
Tosiba (Logo) 160443 5.9.1953 11
Installations for cooking, refrigerating, drying, ventilating, water supply and
sanitary purposes TOSHIBA 273758 26.7.1971 7 Current generators, induction
motors (electrical), electric washing machines, etc.
TOSHIBA 273759 26.7.1971 9 Various
electronics & electrical goods falling in Cl.9.
TOSHIBA 273760 26.7.1971 11
Various goods including lamps, ovens, water heaters, fans, toasters, cookers,
8. It is stated that the appellant
had since acquired about 35 trade marks registrations in India. The period of
seven years expired in 1978. On the 5 expiry thereof, it became conclusive of
its validity in terms of Section 32 of the Act. The said registration has been
extended from time to time. It has been extended upto 2016.
9. In the year 1984, the name of
the Tokyo Shibaura Electric Company was changed to Kabushiki Kaisha Toshiba
(Toshiba Corporation). The said change was also duly incorporated in the
On the premise that the respondent
which had although not been producing or marketing washing machines or spin
dryers, but has been using the trade name, which was deceptively similar to
that of the appellant, a lawyer's notice was served upon it, stating:
"The trade mark TOSHIBA is
such a well known trade mark in India and abroad that its use or the use of a
phonetic equivalent mark in respect of electronic and electrical goods would
cause immense confusion and deception amongst the purchasing public and the
Our clients were surprised when
they recently learnt of the adoption and use of the mark TOSIBA both as your
trade mark and an essential feature of your trading style in respect of a range
of electrical goods including electric irons.
The adoption of the mark TOSIBA is
clearly mala fide and amounts to infringement of our clients' various
registered trade marks including numbers 160443 and 273760.
6 The word TOSIBA is phonetically
and visually similar to our clients' trade mark TOSHIBA and by the use of the
said mark in respect of electrical goods, you are likely to cause immense
confusion and deception amongst the purchasing public and the trade."
10. Respondent was called upon to
desist from using the trademark TOSIBA in respect of electrical goods including
electric irons or any other goods whatsoever. No reply thereto was given.
PROCEEDINGS BEFORE THE REGISTRAR
11. It, however, filed an
application purported to be under Section 46 and 56 of the Act read with Rule
94 of the Rules before the Registrar, Trade Marks which was marked as
Application No. CAL No.573, praying for rectification of the said registered
trade mark No.273758 in Class 7 alleging:
"7. That the petitioners are
using the mark TOSIBA in respect of Domestic Electrical Appliances viz. Auto
Irons, Non-Auto Irons, Ovens, Toasters, Immersion Rods, Extension Cords, Table
Lamps and Airy Fans etc. in class 9 since the year 1975. The mark in question
offends against the provisions of section of the Trade and Merchandise Marks
Act on the date of 7 commencement of the proceedings between the parties.
8. That the mark sought to be
removed was not on the commencement of the proceedings, distinctive of the
goods of the Registered proprietor.
9. That the mark also offends
Section 11(e) of the Trade and
Merchandise Marks Act, being dis- entitled to protection in a Court of Law.
10. That the applicants are
aggrieved parties as they have been served with a notice dated 24th April 1989
on behalf of the respondents to discontinue the use of the word TOSIBA which
the petitioners adopted in the year 1975. They have been threatened with action
under various provisions of Trade and
Merchandise Marks Act and also under Article 36A of the Monopoly and
Restrictive Trade Practices Act, 1969 alleging unfair trade practices. The
respondents have no business in India.
The threats made were unjustified.
That the petitioners even approached the respondents attorneys for not to
interfere with their long- standing business, but without any result, hence the
petitioner are the aggrieved party within the meaning of Section 56 of Trade
and Merchandise Marks Act competent to file the present petition."
Two other applications were also
filed for rectification of two other trade marks wherewith we are not
12. Appellant filed a suit in the
Delhi High Court against the respondent praying for a decree for permanent
injunction for using the mark TOSIBA 8 or any other deceptively similar mark in
respect of electrical goods including electric irons, immersion rods, toasters,
table lamps, ovens and stoves. The said suit is still pending.
13. In its affidavit before the
Registrar of Trade Marks, the appellant contended:
"14. Annexed to my affidavit
and marked Annexure H are extracts from the Import and Export Policy of the
Government of India (Ministry of Commerce) for the years:
i) April 1985 to March 1988;
ii) April 1988 to March 1991;
iii) April 1990 to March 1992.
Thus, the import and export
policies for the period April 1985 to March 1991 show that electric motors,
compressors and generators fall under Appendix 3 Part A of the policy which is
a list of limited permissible items for which the import is not free but only
against a licence.
Washing machines being consumer
goods fall under Appendix 2 part B which is the list of restricted items.
It is, therefore, evident that the
import of goods covered by registration No.273758 is not free but restricted."
14. By reason of an order dated
12.5.1992, the Deputy Registrar of Trade Marks partially allowed the
application for rectification filed by the respondent being Application
No.CAL.573 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
filed by the respondent being CAL-574 and 575.
APPEAL BEFORE THE HIGH COURT
15. An appeal was preferred
thereagainst before the Calcutta High Court in terms of Section 109 of the Act.
Appeals were also preferred against orders in respect of Class 9 and Class 11
registrations. The said appeal was allowed in part by the learned Single Judge
of the High Court of Calcutta by an order dated 28.9.1993, upholding the order
of the Deputy Registrar so far as the application related to Section 46(1)(a)
of the Act but rejected the plea as regards Section 46(1)(b) thereof, holding:
"The first point to my mind
which should be disposed of is the point as to the locus standi of Mr. Gupta's
client. It is the admitted position that until now the respondents have
manufactured and sold articles only in class 11, and those are household
electrical articles like electric iron, fan 10 and toaster. They sell these
under the mark `TOSIBA'.
It is not that the respondent has
manufactured or sold washing machines or spin dryers at all or even that they
have any finalized plans for so commencing the manufacture or sale of any of
In a paper book running to no
fewer than 725 pages, not to mention a comparatively slim supplementary paper
book, the only place where a connection between the respondent and washing
machines or spin dryers is mentioned is at page 542, where it is recorded as
stated before the Deputy Registrar in his order that the respondent also deals
in some goods falling in class 7 such as washing machines and spin dryers and
some other allied goods. If that statement was made before the deputy
registrar, then that was a misstatement.
XXX XXX XXX The mark of the
appellant `TOSHIBA' and the status of the said word as a registrable mark is
beyond dispute. It is almost admittedly an invented word, a hybrid between the
name of the city Tokyo and the name of the company of origin, Shibaura.
It is also in my opinion beyond
dispute that the mark `TOSIBA' is so similar to the mark `TOSHIBA' as to give
the appellant an indisputable right to call upon the respondent to cease to use
that mark in relation to goods for which the appellant is registered, in case
such registration can be maintained by the appellant on the register."
(emphasis supplied) 11
16. However, with regard to the
contention of the appellant that the respondent was not a person aggrieved or
that the Registrar should not have used its discretionary jurisdiction, the
learned judge held:
"If a person obtains a
registration at a time when the mark, according to his own estimate, is
economically unusable, then he cannot be said to have had a bona fide intention
at the time of registration that the mark should be used in relation to the
goods. If, however, he waits and watches the market of the country in which he
wishes to have registration, and then, as soon as the restriction is lifted, he
obtains registration without delay, he can indeed then be said to have a bona
fide intention that the goods should be used in the market in question.
It is possible that if he waits
for so long as that, he will no longer be able to get his registration at all,
for another trader within the country might well have used up his name by then
for the same goods. This is an unpreventable hazard. The trade mark law is a
national code and not an international treaty, speaking broadly. If a country
blocks international trade within itself, international names only cannot be
registered and preserved in the blocked market. This would mean allowing
international names to hold the market totally without goods, or give
international marks a copyright value, and both these are impermissible and
against the first principles of trade mark law.
It cannot therefore in my opinion
be said that in 1971 the appllenats had a bona fide intention that the goods,
namely, washing machines and spin dryers, should be traded in India under their
trade mark `TOSIBA'. Without 12 the economic restrictions being lifted from the
Indian market, trading, according to themselves, was and continued to be an
unprofitable proposition. Such lack of intention can be gathered from the
admitted stand taken by the appellant before me, and in the registry, where it
was the respondent. The onus upon the respondent in appeal to show such lack of
intention is thus fully discharged."
The contention of the appellant
was rejected, opining:
"Mr. Gupta has conceded even
from the time of the interlocutory application was heard in aid of this appeal
that the order of the Deputy Registrar is to be so read as to restrict the
rectification to the two items of washing machines and spin dryers only and it
should not be read as the rectification application succeeding for the entire
With recording of such concession,
I dismiss the appeal but I do it on grounds of my own which I have mentioned
above and not necessarily on the grounds given by the Deputy Registrar. The
respondents would entitle to the costs of this appeal."
It was furthermore held that the
special circumstances mentioned under sub-section (3) of Section 46 were not
17. An intra court appeal was
preferred thereagainst. Cross-objections were also filed by the respondent on
the pleas that the mark should also be 13 rectified under Section 46(1)(b),
i.e., no bona fide use for a continuous period of five years and one month.
18. By reason of the impugned
judgment dated 8.12.2005, the said appeal was dismissed holding that the
respondent was a person aggrieved, stating:
"The purpose of introducing
the expression `person aggrieved' in the statute is obviously to prevent action
from persons who are interfering only from merely sentimental notions or
personal vengeance and act as mere common informers.
But in case where one trader, by
means of having a trade mark wrongly registered in his name, narrows the area
of business open to his rivals, in that case the rival is a person aggrieved.
It may be that the rival is not immediately carrying on the trade. But if there
is a reasonable possibility for the rival to carry on that trade in future in
view of his presently carrying on a trade in the same class of goods then the
rival trader is a person aggrieved. In other words, if a person or a
corporation is in the trade of the same class of goods along with the company
which has got a mark registered in its name and is thus the hampered in the
possible expansion of his trade in that case the person or the corporation is a
19. The question as to whether
requirements of Section 46(1)(a) of the Act were fulfilled or not was answered
14 "Here the date of
registration was 26.7.1971 and the date of rectification application was
In between there has been no use
of the concerned goods by the registered proprietor except one advertisement
which has already not been accepted by this Court as an instance of use.
Therefore, in the facts of this
case, the order of the Deputy Registrar of rectification by deletion of two
items namely electric washing machine and spin dryers from the registered Trade
Mark No.273758 in Class 7 goods is quite justified. It appears that the
registration in favour of the appellant in Class 7 goods was in respect of
various other goods and out of those goods only two have been deleted.
This is quite permissible and is
within the object and scope of Section 46 of the said Act."
20. The Division Bench of the High
Court did not go into the contention of the respondent that the appellant was
not entitled to any relief in terms of Section 46(1)(b), stating :
"The learned Counsel for the
respondents on the basis of the cross appeal has urged that the appellants are
not entitled to the relief under Section 46(1)(b). But in view of the facts of
this case which make the case against the appellants under Section 46(1)(a) so
very clear that this Court need not decide the said cross appeal in any detail.
This Court is of the view that the
decision of the learned Judge under Section 46(1)(a) was right and the
rectification which has been ordered by the Registrar cannot be interfered
21. Mr. F.S. Nariman, learned
Senior Counsel appearing on behalf of the appellant, would urge:
1) Respondent having not been
dealing with either washing machine or spin dryer, was not a `person aggrieved'
within the meaning of Section 46 of the Act.
2) The statutory scheme must be
gathered from reading the provisions of Section 46, 47 and 56 conjointly and so
read it would be evident that as the appellant having been found to have
abandoned its right to continue to be registered, it should have been held that
the requirements under Section 46(1)(a) have also not been fulfilled.
3) The name `TOSHIBA' being well
known and the word being an innovated one, although not directly but the spirit
of the provisions of Section 47 should have been considered by the Registrar in
exercise of its discretionary jurisdiction under the Act, particularly when no
public interest was found to be involved.
22. Mr. Ajay Gupta, learned
counsel appearing on behalf of the respondent, on the other hand, would urge:
16 (1) The application for
rectification being a composite one being under both Sections 46 and 56, the
respondent was a person aggrieved, as envisaged under sub-section (2) of
Section 56 of the Act.
(2) In any event, the appellant
having served the respondent with a notice of action, it was a `person
(3) The matter having remained
pending for 19 years during which period, the appellant having not been able to
obtain any order of stay from any court and/or having not entered into any
arrangement for using its registered mark in India either by itself or through
an Indian company, the impugned judgment should not be interfered with.
(4) The distinction between
clauses (a) and (b) of sub-section (1) of Section 46 being clear and explicit,
it is idle to contend that only because the respondent's claim under the latter
clause has been negatived, its claim under clause (a) would also necessary
(5) The provisions of Section 45
of the Act should be kept in mind while interpreting Sections 46 and 56 of the
Statutory Provsions 17
23. Chapter VI of the 1958 Act
deals with use of trade mark and registered users. Section 45 provides for
proposed use of trade mark by company to be formed. Section 46 is in two parts.
It is subject to provisions of Section 47. In terms of the said provision, the
registered mark may be taken off the register in respect of any of the goods
for which it was registered on application made in the prescribed manner by any
person aggrieved on the grounds envisaged either clause (a) or (b). Section 47,
however, provided for a defense registration of well known trade marks;
sub-section (1) whereof reads as under
"Section 47 - Removal from
register and imposition of limitations on ground of non-use.
(1) A registered trade mark may be
taken off the register in respect of the goods or services in respect of which
it is registered on application made in the prescribed manner to the Registrar
or the Appellate Board by any person aggrieved on the ground either-- (a) that
the trade mark was registered without any bona fide intention on the part of
the applicant for registration that it should be used in relation to those
goods or services by him or, in a case to which the provisions of section 46
apply, by the company concerned or the registered user, as the case may be, and
that there has, in fact, been no bona fide use of the trade mark in relation to
those goods or services by any proprietor thereof for the time being up to a
date three months before the date of the application; or 18 (b) that up to a
date three months before the date of the application, a continuous period of
five years from the date on which the trade mark is actually entered in the
register or longer had elapsed during which the trade mark was registered and
during which there was no bona fide use thereof in relation to those goods or
services by any proprietor thereof for the time being:
Provided that except where the
applicant has been permitted under section 12 to register an identical or
nearly resembling trade mark in respect of the goods or services in question,
or where the tribunal is of opinion that he might properly be permitted so to
register such a trade mark, the tribunal may refuse an application under clause
(a) or clause (b) in relation to any goods or services, if it is shown that
there has been, before the relevant date or during the relevant period, as the
case may be, bona fide use of the trade mark by any proprietor thereof for the
time being in relation to-- (i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that
description being goods or services, as the case may be, in respect of which
the trade mark is registered."
24. Chapter VII of the Act
provides for rectification and correction of the register. Section 57 confers a
power upon the Registrar to cancel or vary the registration and to rectify the
registrar, inter alia, on the ground of any contravention or failure to observe
a condition entered on the register in 19 relation thereto. Sub-section (2) of
Section 57 provides that any person aggrieved by the absence or omission from
the register of any entry, or by any entry made in the register without
sufficient cause or by any entry wrongly remained on the register or by any
remedy or defect in any entry in the register may apply in the prescribed
manner to the Registrar and the Tribunal may make such order for canceling or
varying the entry as it thinks fit.
The Central Government, in
exercise of its rule making power, made rules known as Trade Marks Rules, 1959.
The Fourth Schedule appended to the Rules classified different products; Class
7 whereof reads as under:
"THE FOURTH SCHEDULE
Classification of Goods - Names of the Classes (Parts of an article or
apparatus are, in general, classified with the actual article apparatus, except
where such part constitutes articles included in other classes).
1 to 6 ...
7. Machines and machine tools;
motors (except for vehicles); machine couplings and belting (except for
vehicles); large size agricultural implements; incubators."
25. The Act is a complete Code in
itself. Section 6 of the Act provides for the maintenance of a record called
register of trademarks.
26. Indisputably, application for
registration of the trademark filed by the appellant herein had been allowed
way back in 1971 in respect of the items mentioned in the registration
27. Respondent was not in picture
at that point of time. It, however, obtained registration in respect of certain
products which fall in Classes 7 and 11.
28. Chapter IV of the Act provides
for the effect of registration. When a trade mark is infringed, the
consequences laid down under Section 29 would ensue. Section 32 provides for
the registration to be conclusive as regards the validity after seven years.
Indisputably, the appellant, after expiry of the validity of a period of seven
years, had been getting its registration renewed from time to time. Chapter V
provides for assignment and transmission. It is not necessary to notice any of
the provision contained in the said Chapter as admittedly, the appellant has
not assigned the same in favour of any person or granted any licence in respect
21 Chapter VI provides for use of
trade mark and registered users.
Section 45 provides for proposed
use of trade mark by company to be formed. Chapter VI, inter alia, lays down
the guidelines as regards the mode and manner in which the trade mark can be
used. Section 45 provides for proposed use of trade mark by company to be
formed which is indicative of the fact that the plan to obtain registration of
a trade mark may begin even before the company is formed. Section 47 provides
for defensive registration of well known trade marks; such defensive
registration was, however, not resorted to by the appellant herein.
29. As noticed hereinbefore,
appellant contended that the said provision should also be taken into
consideration for proper constructions of Section 46 of the Act to which we
shall advert to a little later. Section 48 provides for the registered users.
Whenever the user's right to use a trademarked is assigned or a licence is
given to any third party, the user by the assignee or the licensee to the
benefit of the register to the person who has obtained the registration.
30. Apart from Section 46, the
power of rectification and correction of the register is also contained in
Section 56 of the Act.
Construction of the Statute 22
31. In the aforementioned backdrop
of the statutory provisions, we are called upon to interpret clauses (a) and
(b) of sub-section (1) of Section 46 of the Act.
It is beyond any doubt or dispute
that sub-section (1) of Section 46 confers a discretionary jurisdiction on the
Registrar. The jurisdiction may be exercised if any application is filed by a
person aggrieved. The said application has to be filed in the manner prescribed
therefor. Whence it is found that the application is filed by a person
aggrieved in the prescribed manner, the grounds which would be available to the
Registrar for exercise of its discretionary jurisdiction are stated in clauses
(a) and (b) of sub- section (1) of Section 46. We may, at the outset, notice
that clauses (a) and (b) are disjunctive and not cumulative. Recourse may be
taken to either of them or both of them. A combined application even under
Section 46 and 56 of the Act is permissible in law.
32. Whereas clause (a) refers to
bona fide use of the trade mark; clause (b) stipulates the period upto a date
of one month before the date of application, a continuous period of five years
or longer elapsed during which the trade mark was registered and during which
there was no bona fide use thereof in relation to those goods by any proprietor
thereof for the time being. Sub-section (3) postulates an exclusion clause as
regards 23 application of clause (b) of sub-section (1) of Section 46 if any
non-use of a trade mark which is shown to have been due to special
circumstances in the trade or not to any intention to abandon or not to use the
trade mark in relation to the goods to which the application relates.
33. No doubt, a statute is
required to be read as a whole, Chapter by Chapter, Section by Section and
clause by clause. 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-`-vis Section 56 of the Act on the other have been enacted require consideration.
The appeared to have been enacted for different purposes.
ANALYSIS 34. We may now consider
the three-fold submission of Mr. Nariman that:
i) the Registrar has not exercised
its jurisdiction under Section 56 of the Act;
ii) the learned Single Judge while
exercising its appellate jurisdiction has found that no case has been made out
for invoking clause (b) of sub-section (1) of Section 46; and 24 iii) The trade
mark consists of an invented word and is very well known in the international market.
The basis of the said submission,
thus, appear to be two-fold:
(1) As there is no evidence that
the appellant had any intention to abandon the use of the said trademark, as a
logical corollary thereof, the High Court ought to have held that the appellant
had the intention of bona fide use of the trade mark not only at a point of
time when an application for registration was filed but also continuously
(2) The provisions of clauses (a)
and (b), if read in the aforementioned context, sub-section (3) of Section 46
would also come into play particularly when the words `non-use' therein and
clause (a) of sub- section (1) are identical, namely `not to have any intention
to abandon or not to use the trade mark in relation to the goods to which the
application relates' and save and except in clause (a), the word `bona fide'
has been added.
35. We do not find any force in
the aforementioned submission. Clauses (a) and (b) operate in different fields.
Sub-section (3) covers a case falling within clause (b) and not the clause (a)
thereof. Had the intention of the Parliament been that sub-section (3) covers
cases falling both under clause 25 (b) and clause (a), having regard to the
similarity of the expressions used, there was no reason as to why it could not
be stated so explicitly.
36. If the submission of Mr.
Nariman is to be accepted, the result thereof would be that for all intent and
purport, no distinction would exist in the situations covered by clause (b) and
clause (a) except that whereas in the former no period is mentioned, in the
latter a specific period is provided.
37. There may be a case where
owing to certain special circumstances, a continuous use is not possible. The
trade mark for which registration is obtained is used intermittently. Such
non-user for a temporary period may be due to any exigency including a bar
under a statute, or a policy decision of the Government or any action taken
against the registrant.
38. Moreover, in cases of
intermittent use, clause (b) shall not apply.
[See M/s. Plaza Chemical
Industries v. Kohinoor Chemicals Co. Ltd. [AIR 1975 Bombay 191]; Express
Bottlers Services Pvt. Ltd. v. Pepsico Inc &
Ors. [1988 (1) CLJ 337]; Bali
Trade Mark (Rectification Ch.D [1966 (16) RPC 387]; Bali Trade Mark
(Rectification C.A.) [(1968 (14) RPC 426]; and "BULOVA" Trade Mark
(Rectification Ch.D) [1967 (9) RPC 229].
39. Clause (a) of sub-section (1)
of Section 46 takes within its sweep a situation where registration has been
obtained without any bona fide 26 intention on the part of the registrant that
it should be used in relation to those goods by him and that there has, in
fact, been no bona fide use.
Clause (a), therefore, provides
for more than one contingency. Both the pre-conditions laid down therein are
required to be fulfilled and not the contingency which is contemplated by
Furthermore, it is not a case
where the appellant had taken recourse to Section 47 of the Act.
40. In American Home Products
Corporation v. Mac Laboratories Pvt.
Ltd. & Anr. [(1986 (1) SCC
465], this Court categorically noticed the aforementioned distinction, stating:
"32. Clause (b) of Section
46(1) applies where for a continuous period of five years or longer from the
date of the registration of the trade mark, there has been no bona fide use
thereof in relation to those goods in respect of which it is registered by any
proprietor thereof for the time being. An exception to Clause (b) is created by
Section 46 (3). Under Section 46(3), the non-use of a trade mark, which is shown
to have been due to special circumstances in the trade and not to any intention
to abandon or not to use the trade mark in relation to the goods to which the
application under Section 46(1) relates, will not amount to non-use for the
purpose of Clause (b).
33. The distinction between Clause
(a) and Clause (b) is that if the period specified in Clause (b) has elapsed
and during that period there has been no 27 bona fide use of. the trade mark,
the fact that the registered proprietor had a bona fide intention to use the
trade mark, at the date of the application for registration becomes immaterial
and the trade mark is liable to be removed from the Register unless his case
falls under Section 46(3), while under Clause (a) where there had been a bona
fide intention to use the trade mark in respect of which registration was
sought, merely because the trade mark had not been used for a period shorter
than five years from the date of its registration will not entitle any person
to have that trade mark taken off the Register."
41. The intention to use a trade
mark sought to be registered must be genuine and real. When a trade mark is
registered, it confers a valuable right. It seeks to prevent trafficking in
trade marks. It seeks to distinguish the goods made by one person from those
made by another. The person, therefore, 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.
42. The concept of the term
`person aggrieved' is different in the context of Section 46 and 56. Section 46
speaks of a private interest while Section 56 speaks of a public interest.
Respondent filed a composite application.
28 Registrar did not think it fit
to consider the case from the point of view of public interest and confined the
case to Section 56 of the Act, as would appear from the fact that while
sustaining the respondent's objection under Section 46(1) and (b) on the ground
that the same had not been used by the appellant for the last twenty years, it
"Having held that Section
46(1)(a) is a bar to the continuation of the impugned mark on the Register as
above, I hold that the entry in respect of those goods for which the Registered
Proprietors could not prove their user of the Registered Trade Mark 273758 was
wrongly made in the Register and is wrongly remaining on the Register under
Section 56(2) of the Act."
43. Reference to Section 56(2) of
the Act at that place appears to be a typographical mistake. It is palpably
wrong. No deliberation was made on the said question. No fact or contention has
been taken note of. There are no discussions; no findings.
44. The learned Single Judge found
that the respondent No.1 had never manufactured or sold washing machine and
spin dryers at all. They did not have even any plan for commencing the
manufacture or sale thereof. It, in that backdrop, was observed:
29 "If that statement was
made before the Deputy Registrar, then that was a misstatement."
45. Respondent, however was found
to be a person aggrieved upon taking into consideration a large number of
decisions. It was held:
"The respondent is anything
but a common informer or an officious person. It deals in articles of class 11
and it uses the mark TOSIBA. If it were to go into the trade of washing
machines or spin dryers, and if the mark TOSHIBA were to remain on the
register, with the appellant as its proprietor, the respondent could not in
that event, use its mark for washing machines and spin dryer too. This is
enough, I think, to com to the conclusion without any hesitation that the
respondent had a sufficient and impeachable locus standi to maintain the
rectification application in the registry."
46. The learned Single Judge as
also the Division Bench referred to a large number of decisions to hold that
the respondent was the person aggrieved within the meaning of Sections 46 and
56 of the Act. It is beyond any doubt that the question has authentically been
answered by a Division Bench of this Court in Hardie Trading Ltd. & Anr. v.
Addisons Paint &
Chemicals Ltd. [(2003) 11 SCC 92],
holding "30. The phrase "person aggrieved" is a common enough
statutory precondition for a valid complaint or appeal. The phrase has been 30
variously construed depending on the context in which it occurs. Three sections
viz. Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals
with the removal of a registered trademark from the register on the ground of
non- use. This section presupposes that the registration which was validly made
is liable to be taken off by subsequent non-user. Section 56 on the other hand
deals with situations where the initial registration should not have been or
was incorrectly made. The situations covered by this section include: - (a) the
contravention or failure to observe a condition for registration; (b) the
absence of an entry; (c) an entry made without sufficient cause; (d) a wrong
entry; and (e) any error or defect in the entry. Such type of actions are
commenced for the "purity of the register" which it is in public
interest to maintain. Applications under Sections 46 and 56 may be made to the
Registrar who is competent to grant the relief. "Person's aggrieved"
may also apply for cancellation or varying an entry in the register relating to
a certification trademark to the Central Government in certain circumstances.
Since we are not concerned with a
certification trademark, the process for registration of which is entirely
different, we may exclude the interpretation of the phrase "person
occurring in Section 69 from
consideration for the purposes of this judgment.
31. In our opinion the phrase
for the purposes of removal on the
ground of non- use under section 46 has a different connotation from the phrase
used in section 56 for cancelling or expunging or varying an entry wrongly made
or remaining in the Register.
32. In the latter case the locus
standi would be ascertained liberally, since it would not only be against the
interest of other persons carrying on 31 the same trade but also in the
interest of the public to have such wrongful entry removed."
Section 46(1)(b) issue
47. Mr. Gupta would contend that
the respondent is entitled to raise the question of applicability of clause (b)
of sub-section (1) of Section 46 although no cross-objection has been filed, on
the principles analogous to Order XLI Rule 33 of the Code of Civil Procedure.
Strong reliance in this behalf has been placed on Ravinder Kumar Sharma v.
State of Assam &
Ors. [(1999) (7) SCC 435]. We do
Mr. Gupta himself submitted that
clauses (a) and (b) of sub-section (1) of Section 46 are in two different water
tight compartments. It confers, therefore, two remedies. The ingredients to
establish that a case has been made out for removal of the registration of the
appellant from the register, thus, are on separate grounds. If the High Court
has refused to consider one of the grounds, its right was affected to urge the
applicability of clause (b) being separate and distinct from the grounds on
which contention can be raised for applying the ingredients of clause (a) being
wholly distinct and different, the principles of Order XLI Rule 33 of the Code
of Civil Procedure, in our opinion, would not be applicable. The causes of
action 32 for invoking clauses (a) and (b) are different and, thus, when a
composite application is filed, only different causes of action are joined
together. If one cause of action fails, the remedy by way of appeal
thereagainst must be availed.
48. Mr. Gupta submits that therein
the application was filed under Section 46 and not under Section 56 whereas
grounds have been raised both under Sections 46 and 56 of the Act.
49. A situation of this nature has
not been considered in any of the precedents. The original application filed by
the respondent was maintainable on three counts:
1. Application of Section 46, both
under clauses (a) and (b);
2. Application of Section 56; and
3. The common law principle that
he had been served with a legal notice by the appellant desisting from using
the word TOSIBA.
50. It is difficult to hold that
only because respondent had not been able to prove one of the grounds, namely,
applicability of Section 56 of the Act, it loses its locus also. It would
continue to be a person aggrieved even within the purview of Section 46 of the
Act as it was slapped with a notice 33 of action and it had a cause of action.
It had a remedy. It invoked the jurisdiction of the Registrar on a large number
of grounds. One of it was accepted, others were not.
51. The petition, therefore, which
was maintainable, did not cease to be so particularly when the respondent not
only faced with a legal action but, in fact, later on a suit has also been
filed by the appellant against it. We would leave the question at that.
Exercise of Discretional
52. This brings us to the question
as to whether it was a fit case where the Registrar and consequently the High
Court should have exercised its discretionary jurisdiction.
Sub-section (2) of Section 109
provides for an appeal from any order or decision of the Registrar under the
Act or the Rules made thereunder. An appeal is to be heard by a learned Single
Judge. A further appeal is provided before a Division Bench in terms of
sub-section (5) of Section 109 of the Act. Appellate jurisdiction of the High
Court is not restricted or limited. Sub-section (6) of Section 109 stipulates
that the High Court shall have the power to make any order which the Registrar
could make under the 34 Act. In other words, if the Registrar exercises a
discretionary jurisdiction, the High Court while exercising its appellate
jurisdiction would continue to do so. The High Court having a plenary jurisdiction,
thus, was not only entitled to take into consideration the materials placed on
record as also the finding of the Registrar, but it could also arrive at its
own finding on the basis of the materials on record.
53. For the said purpose, the
basic admitted fact could have been taken into consideration. It may be true
that the appellant whether from the date of registration, or from the date of
order of rectification or even a post rectification period did not use the
registered trade mark. It did not enter into any collaboration agreement with
an Indian company. It did not grant any licence to any other person to use the
We may, however, notice that at
least in the year 1985 it had issued an advertisement before any controversy
arose. It renewed the registration every seven years. Its registration stands
extended upto 2016 A.D. It specifically brought to the notice of the Registrar
that it had been maintaining service centres in India in respect of washing
"Thus, to summarize:
35 (a) TOSHIBA has several joint
venture agreements in India, for various products including VCRS, colour
picture tubes, batteries. etc.
(b) TOSHIBA has technical
collaboration agreements for manufacture of various products in India including
body scanners, ultra sound equipments, PIP televisions etc.
(c) TOSHIBA has several service
centres in India in the cities of New Delhi, Bombay, Madras, Calcutta, Baroda,
Bhopal, Cochin, Kerala and Bangalore for repairing various electronic and
electrical products including televisions, VCRS, ovens, music systems, washing
(d) TOSHIBA has sold several goods
in India under the trade mark TOSHIBA including electric motors and
accessories, generators, fax machine, whole body C.T.
scanners & ultrasound
equipment, circuit breakers, transistors, integrated circuits, colour TV sets,
engineering, samples and spare parts for televisions, VCRs, cassette recorders,
microwave equipment and various other goods to actual users and authorized
The learned Single Judge also
noticed the said contention in the following terms:
"I come now to the two limbs
of Section 46(1)(a).
I propose to take up first the
limb regarding use of the mark in relation to washing machines and spin dryers
upto a date when one month prior to the rectification application.
The only evidence of use of the
mark, produced by the appellant, if use it can be called is at page 190 of the
paper-book which is an advertisement of a freezer and a washing machine of
Toshiba 36 published on the 27th August 1985 in the Indian Express, New Delhi,
also mentioning therein certain service centres.
Now, this is no use of the mark in
relation to the goods within the meaning of the Trade Marks Act."
The Division Bench also did so,
"On the merits the learned
Judge also found and this has not been disputed in appeal that the only
evidence of the use of the registered mark produced by the appellant is an
advertisement of a freezer and washing machine of Toshiba published on 27th
August, 1985 in the Indian Express, New Delhi and in that advertisement there
was mention of five service centres. The learned Judge also found that such a
solitary advertisement is not use of the mark in relation to the goods within
the meaning of Section 2(2)(b) of the Act. The learned Judge found that when
there are no goods at all in physical existence, there can be no use of the
mark in relation to those goods. The learned Judge also found that however, big
or famous the establishment of the appellant may be, the use of the mark must
be made in India and not abroad and that mere use of the mark for one
advertisement is insufficient as use otherwise such a use may amount to
trafficking in trade mark."
54. Appellant had to maintain the
service centres because although they were not in a position to manufacture
washing machines or spin dryers or market the same because of the ban imposed
by the Central Government, 37 but it had been rendering the services to those
who had been importing the said machines. On the one hand, appellant had not
been using its registered trade mark effectively but on the other hand there
was a finding that it did not intend to abandon the said right. It intended to
enforce its right under the Act as against the respondent, suit was filed by it
as far back as in the year 1990. Mr. Gupta commented that the very fact that
the appellant did not obtain any order of injunction as against the respondent
for more than 17 years itself indicates that it was not serious in pursuing its
case before the High Court.
55. This is one side of the
picture. The other side is that there has been no injunction as against the
respondent. It was free to market its products in the name of TOSIBA. It had
also, however, not been manufacturing washing machine and spin dryers. A
finding of fact has been arrived at by the learned Single Judge, which has not
been overturned by the Division Bench that the respondent never had any
intention to manufacture the said goods.
The balancing act between the user
of registered trade mark and non- user should be such which leads to the
possibility of neither of the parties being injured. The learned Single Judge
has also held :
38 "The mark of the appellant
`TOSHIBA' and the status of the said word as a registrable mark is beyond
dispute. It is almost admittedly an invented word, a hybrid between the name of
the city Tokyo and the name of the company of origin Shibaura.
It is also in my opinion beyond
dispute that the mark `TOSIBA' is so similar to the mark `TOSHIBA' as to give
the appellant an indisputable right to call upon the respondent to cease to use
that mark in relation to goods for which the appellant is registered, in case
such registration can be maintained by the appellant on the register."
56. There was delay on the part of
the respondent in filing the application under Section 46 of the Act. The
delay, if any, on the part of the appellant did not cause any harm to the
respondent. It had been using the word TOSIBA for such a long time without in
any way being obstructed to do so by reason of an order of the Court or
57. In the matter of The Trade
Mark No.70,078 of Wright, Crossley, and Co. [1898) 15 RPC 131], it was stated:
"I think, notwithstanding
what was said in that case, and has been said in other cases dealing with Trade
Marks , that an applicant in order to show that he is a person aggrieved, must
show that in some possible way he may be damaged or injured if the Trade Mark
is allowed to stand; and by 39 `possible' I mean possible in a practical sense,
and not merely in a fantastic view."
58. It is this aspect of the
matter which has been missed by the learned Single Judge and the Division Bench
of the Calcutta High Court.
59. We, therefore, are of the
opinion that on this short ground, the impugned judgment cannot be sustained.
It is set aside accordingly. We would, however, request the Delhi High Court to
consider the desirability of disposing of the suit filed by the appellant
against the respondent as expeditiously as possible. The appeal is allowed. No