Trademark Tribunal
Kabushiki Kaisha Toshiba vs Tosiba Appliances Co. on 12 January, 2005
Equivalent citations: 2005(30)PTC188(REG)
JUDGMENT
Dharam Singh, ARTM
1. This order disposes of two rectification proceedings dated 7.8.1989. In these proceedings, Tosiba Appliances Co., having place of business at A-24-A, Street No. 4, Industrial Area Anand Parbat, New Delhi (hereinafter referred to as applicant for rectification or petitioner) applied for rectification of the register by removal therefrom the trade mark TOSHIBA' registered under Nos. 160442 & 160443 in class 9 & 11 respectively in the name of Kabushiki Kaisha Toshiba also trading as Toshiba Corporation, Japan who are hereinafter referred to as registered proprietor or respondent under the provisions of the Trade & Merchandise Marks Act, 1958 and Rules framed thereunder read with the relevant provisions of the Trade Marks Act, 1999 and Rules framed thereunder on the following grounds:-
(1) That the said trade mark TOSHIBA was wrongly registered and wrongly remains on the Register of Trade Marks and the entry of the mark was made without sufficient cause.
(2) That the trade mark was registered under Section 9 of the Act by committing fraud and misrepresenting and suppressing the facts.
(3) That the registration of the mark was obtained without bona fide intention in relation to goods.
(4) That the trade mark TOSHIBA' has not been used by the registered proprietors for a continuous period of five years and one month or a longer period prior to the date of applications for rectification.
(5) That the respondents are blocking the registration.
(6) That the proprietors of the mark TOSHIBA have been changed from time to time and the assignments and entries made in pursuance thereto on the Register are wrong; and the change of partnership has been wrongly recorded on the Register.
(7) That the petitioners are using the trade 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 which has acquired good will and reputation of immense value during the course of trade and the mark in question offends against the provisions of Section 11 of the Trade & Merchandise Marks Act, 1958 on the date of commencement of the proceedings.
(8) That the mark sought to be removed is not distinctive as on the date of application for rectification under Section 9 of the Act.
(9) That the mark in question being disentitled for protection in the Court of law offends against the provisions of Section 11(e) of the Act.
(10) That the petitioners are aggrieved as they have been served with a legal notice dated 24.4.1984 on behalf of the respondents to discontinue the use of the trade mark TOSIBA which the petitioners adopted in the year 1975. The respondents have no business in India.
(11) That no action concerning the trade mark in question is pending in any Court of law in India.
2. It is humbly prayed that in view of the ground made as above, the said trade mark TOSHIBA be removed from the register or any other such appropriate order be passed which may be deemed proper under the circumstances of the case.
3. In their counter statement filed on 15.11.1990, the registered proprietors denied all averments made in the application for rectification inter-alia stating as follows:-
(1) That the present rectification proceedings are totally misconceived and mala fide and have been filed as a counter blast by the applicants for rectification after receiving a legal notice dated 24.4.1989 from the registered proprietors asking them to desist from using the well known trade mark TOSHIBA.
(2) The registered proprietors are the world renowned industrial corporation which is engaged in diversified activities. The proprietors' predecessors in title were established in the year 1875. In the year 1939, Shibaura Engineering Works Co. Ltd., and Tokya Electric Company merged to Tokyo Shibaura Electric Company Ltd. The trade mark TOSHIBA was coined in the year 1939 by deriving letters 'TO' from the word Tokyo and 'SHIBA' from the word 'Shibaura'. In the year 1978, Tokyo Electric Co Ltd., changed its name to Tokyo Shibaura Denki Kabushiki Kaisha trading as Toshiba Corporation. This change was duly incorporated in all registrations of trade mark TOSHIBA. Subsequently, around in 1984 the registered proprietors' name was again changed to Kabushiki Toshiba Toshiba also trading as Toshiba Corporation. This change was also duly incorporated relation to in the said registrations.
(3) That the trade mark TOSHIBA coined as such is' an invented word and has no meaning other than as a world known trade mark and is 100% inherently distinctive their goods. Further, by virtue of continuous & extensive use on their goods, it became the proprietors' house mark and was exclusively associated with them, therefore, the mark was rightly registered in respect of their products and the objection raised under Section 9 is duly frivolous. Secondly, the registrations of trade mark TOSHIBA under No. 160442 in respect of Scientific, nautical, surveying and electrical apparatus and instruments (including wireless) photographic, cinematographic, optical, weighing, measuring, apparatus and instruments, coin or counter freed apparatus, talking machine, cash registers, calculating machines, fire extinguishing apparatus falling in class 9 and under No. 160443 in respect of installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes falling in class 11 are conclusively valid under Section 32 of the Act of the Trade & Merchandise Marks Act, 1958 and the validity cannot be challenged as such by resort of frivolous objections raised under Section 9 of the Act.
(4) That the registered proprietors hold registrations of the trade mark TOSHIBA in more than 140 countries of the world including India holding about 2500 registration and that the registration in class 9 & 11 in India dates back to the year 1953.
(5) That the impugned trade mark has been continuously and extensively used since the year 1939 and in India since 1951. The goods bearing the trade mark TOSHIBA have been regularly sold and exported to various companies in India including HCL, Jyoti Ltd., Videocon International Ltd., Kirloskar Electric Go. Ltd., Instrumentation Ltd., etc. The registered proprietors have entered into various range of agreements such as technology transfer agreement, trade mark licence agreement, joint venture agreement and the service agreement with various companies in India.
(6) That the registered proprietors has also been extensively advertising the trade mark TOSHIBA not only through the international media having circulation in India but also through the Indian media. The registered proprietors have various service centers in India for providing services for Toshiba goods sold or exported to the Indian customers. The consumers in India very well know the trade mark TOSHIBA and the said mark has become a household word and the provisions of Section 47 of the Act are totally inapplicable as the extensive nexus by way of agreement, joint venture etc. with India shows the registered proprietors' intention to use the trade mark TOSHIBA in India. The reasons for which the certain goods have not been directly sold by the registered proprietors to India obviously are the 'special circumstances' prevailing on account of the import trade restrictions imposed by the Govt. of India, and if the ban on import of certain goods is lifted in future those goods also would be sold & exported to Indian customers and in any case it does not entitle in law the applicant for rectification to use the world famous trade mark and preempt the registered proprietor from entering the petitioners' goods in the Indian market. Moreover, as stated above, the registered proprietor has a large customer base in India even for the goods which is currently debarred from direct selling to India, as the customers bring in such goods to India under luggage rules and at the same time the registered proprietors have set up service centers in India with a view to keep up the high standard of its reputation and providing repair, maintenance and service and as such the grounds of non-use is totally misconceived.
(7) The registered proprietors of the trade mark TOSHIBA have not been changed from time to time as alleged by the petitioners, what has been changed is the only name of registered proprietors which has been recorded on the Register of Trade Marks well within the time by taking appropriate steps.
(8) That although the trade mark TOSHIBA being an invented word is inherently distinctive, however, on account of vast international and Indian use and reputation, the trade mark has acquired high level of distinctiveness and as such there has been no loss of distinctiveness as the registered proprietors are vigilant not only in the classes of interest, but in all classes of the Act. Therefore, the allegation by the petitioner that the trade mark TOSHIBA as on the date of commencement of the present proceedings is not distinctive has no force. On the contrary, the applicants for rectification have infringed the registered TOSHIBA trade mark for which legal proceedings have already been initiated before the High Court of Delhi in a Civil Suit No. 1623 of 1990.
(9) That the registered proprietors have filed several legal proceedings including the aforesaid civil suit in Delhi High Court. Some of these have since been decided in favour of the registered proprietor and some are still pending. It is misconceived and suppression of the fact on the part of the applicants for rectification that no action concerning the trade mark in question is pending in the Court of law.
(10) That the applicants for rectification cannot be called a "person aggrieved" for the conduct of adopting the registered proprietors' world famous trade mark on their goods hence they have no locus standi to file the present petition. It cannot be agreed that the registered proprietors have no business in India, the registered proprietors have not only the local office in India, but also important sales, joint ventures, collaborations, licensing arrangement, after sales service centers, extensive local advertising and all backed by a world famous trade mark TOSHIBA.
4. In view of the foregoing, the rectification petitions are simply a pressure device and the same being totally frivolous and misconceived ought to be dismissed with a heavy costs.
5. The applicants for rectification filed evidence in support of rectification proceedings by way of affidavit dated 5.8.1991 of one N.K. Suri, a partner of their partnership firm alongwith certain documents including invoices, advertisements, catalogues etc. The registered proprietors have also filed evidence in support of registrations by way of an affidavit dated 7.11.1991 of Mr. Kensuke Norichika, in his capacity of General Manager of their company alongwith voluminous supporting documents marked as annexure which run from pages 1 to 311. The applicants for rectification filed reply evidence by way of another affidavit dated 21.2.1992 of the same deponent as called upon vide this office letter dated 17.12.1991. They also filed further evidence on 1.6.1992 by way of an another affidavit thereby submitting copies of orders dated 12.5.1992 of the Dy. Registrar of Trade Marks, Kolkata in rectification bearing Nos. CAL-573, CAL-574, CAL-575 to the registered Trade Mark Nos. 273758, 273759 and 273760 in class 7, 11 & 9 respectively and the same was taken on record vide this office letter dated '8.6.1992.
6. Eventually, the matter was set down for hearing and the first hearing posted in the matter on 29.8.2001. The registered proprietors notified their intention to appear for hearing by filing a request on form TM-7. The hearing was adjourned thrice on the requests the parties herein. At fourth time, the matter came up before the undersigned for final hearing on 10.3.2004, when Mr. Safir Anand, Advocate instructed by The Acme Company appeared for the registered proprietors and none appeared for the applicants for rectification. Neither the applicants notified their intention to the present at hearing by filing the requisite application on form TM-7. The hearing was concluded as exrparte on the same day. I reserved my order and decision in the matter.
7. Mr. Safir Anand, Advocate present at hearing submitted that he had appeared on behalf of the registered proprietors. He referred to the grounds raised in the application for rectification one after another and argued at length inter alia submitting that the trade mark 'TOSHIBA' was coined by the registered proprietors from the word Tokyo" and "Shibaura" a early as in the year 1939 and was registered in various classes in respect of diversified range of goods. He said that the said trade mark had been continuously and extensively used since the year 1939 and in India since the year 1953. He stated that the applicants for rectification had filed the rectification proceedings on the ground of non use claiming the user since the year 1975. He contended that the applicants had not filed even a single documents to prove non-use of the mark TOSHIBA and few invoice's filed by them in support of rectification are not tenable and cannot be relied upon. He said that initially the onus to prove non use of the mark was on the petitioners which they had not discharged. Mr. Safir Anand submitted that although the registered proprietors had established the use of the registered during the relevant period by filing evidence alongwith voluminous documentary proof; however, they relied on the judgment of the Hon'ble Supreme Court in Hardia Trading Ltd. v. Addissions Paints & Chemicals Ltd., 2003 (27) PTC 241 (SC) and a decision of Calcutta High Court on Ravlon case. He submitted that a well known trade mark cannot be removed even on the ground of non use under the provisions of the Trade Marks Act, 1999. He referred to para 7 of the rectification and denied that the applicants had been using the trade mark and adoption of the trade mark TOSIBA by them was honest. He contended that they had adopted the trade mark TOSIBA' with dishonest and mala fide intention to trade upon the use and reputation of the well known trade mark of the registered proprietors. He said that various Courts on different Forums including the Tribunal and other officers of Trade Mark Registry have decided the following cases between the parties in favour of the registered proprietors by uphelding the proprietary rights of the trade mark 'TOSHIBA' in their favour and restraining the other side from infringing the well known registered trade mark.
1. In Kabushiki Kaisha Toshiba also trading as Toshiba Corporation v. Tosiba Appliances Co. in opposition Nos. DEL-9858 and DEL-9860.
2. In Kabushiki Kaisha Toshiba also trading as Toshiba Corporation v. Tosiba Appliances Co. in opposition No. DEL-9014.
3. In Toshiba Cable Industries v. Toshiba Corporation in opposition No. DEL-8710.
4. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. in opposition No. BOM-9935.
5. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. in opposition No. BOM-10257.
6. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. in opposition No. BOM-10198.
7. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. in opposition No. BOM-7480.
8. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. in opposition No. BOM-7716.
9. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. in opposition No. BOM-7477.
8. Mr. Safir Anand asserted that no appeal except in 2 or 3 cases in High Court of Mumbai has been filed against the orders and even in the aforesaid appeal no final order is passed against the registered proprietor so far. He submitted that as far copies of orders dated 12.5.1-992 of the Dy. Registrar of Trade Marks, Calcutta in rectification bearings Nos. CAL-573, CAL-574 & CAL-575 against registered trade mark Nos. 273758, 273759 & 273760 respectively filed as further evidence by applicant are concerned, appeals in all three cases are pending in Division Bench of Kolkata High Court and there is no final order against the registered proprietor so far. The Ld. Advocate referred to para 11 of the rectification and drew the attention of this Tribunal toward the conduct of the applicants, stating that the petitioners had misguided the Hon'ble Tribunal and suppressed the facts stating that no case concerning the trade mark was pending against them in the Court of law. He said that the registered proprietors had filed a case against them for infringement of their well known trade mark TOSHIBA under Civil Suit No. 1623 of 1990 in Delhi High Court.
9. Mr. Safir Anand contended that there is no merit in the applicants' case and the present rectification proceedings have been filed by the petitioners as a counter blast after receiving a legal notice dated 24.4.1989 from the registered proprietors inter-alia asking them to desist from using the world renowned trade mark TOSHIBA and as such are fictitious and frivolous and are liable to be dismissed with exemplary costs, he prayed.
10. As summarized, the grounds taken in the rectification proceedings come within the ambit of Sections 47, 57, 9(1)(a), 9(2)(a), 11(l)(a), 11(3) and 18(1) of the Trade Marks Act, 1999. At the out set and without prejudice, I would like to state that the petitioners have not honored the procedural law and have neither attended the hearing held on 10.3.2004, nor notified their intention to appear for hearing by filing the requisite application on form TM-7 under Rule 56(1) Even the notice fixing the last hearing on 10.3.2004 issued to the petitioners' counsel in both proceedings vide this office letters dated 5.2.2004 have been received back undelivered with postal remarks 'shifted'. It means the petitioners' attorney had shifted his office and the new address for service was to be brought on record as far these proceeding were concerned, but he has not done so and kept the Registrar in dark about his new address and as such has violated the procedure. This leads an inference that either the petitioners' are no longer interested in prosecution of the present proceedings or they have ignored the procedure, which cannot be excused. Besides, the practitioners had never attended the hearing posted earlier in the matter on 29.8.2001, 29.10.2001, 28.12.2001 and 5.2.2004 but sought adjournment on general grounds without filing appropriate request on TM-56 except once on 28.12.2001 and as such they are procedurally at default and deem, to have abandoned the present proceedings for want of prosecution under Rule 56(4) of the Trade Marks Rules, 2002 as such the same are liable to be dismissed summarily. But in the larger interest of justice I will prefer to examine the case on the material available on record having the provisions & law points in view and deliver the judgment on merit.
11. The present proceedings are mainly based on the grounds of non use of the registered trade mark and that entries in relation thereto are wrongly made and are wrongly remaining on the register under Section 47 of the Act. Before the Appellate Board or the Registrar directs the removal of the registered trade mark under Section 57, they must be satisfied as follows:
(1) That the applicant for rectification is a person 'aggrieved';
(2) That the trade mark has not been used by the registered proprietor for continuous period of at least five years and one month prior to the date of application for rectification;
(3) There was no special circumstances which affected the use of the registered trade mark during this period.
12. The onus to establish the first two conditions obviously lies with the applicant for rectification, whereas the burden of proving the existence of special circumstances is on the registered proprietor of the trade mark. These conditions are not to be cumulatively proved but established seriatim. There is no question of the third condition on being established unless the second one has already been proved and there is no question of the second one even being considered unless the Appellate Board or the Registrar is satisfied as to the locus standi of the applicant for rectification.
13. It is well established that a trade mark dealing with same class of goods to which the registered trade mark relates or person, who has in some way or otherwise substantial interest in having the mark removed from the Register is 'person aggrieved'.
14. In judgment of the Apex Court in Hardie Trading Co. and Ors. v. Addisons Paint & Chemicals Ltd., it is held as follows:-
"Phrase 'person aggrieved' for the purpose of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for canceling or expunging or varying an entry wrongly made or remaining in the Register.
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 the same trade out also in the interest of the public to have such wrongful entry removed.
But if the ground for rectification is merely based on non-user i.e. under Section 46 of the Act, that is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person, whose interest is affected to apply for its removal. An applicant must therefore show, that in some possible way he may be damaged or injured if the Trade Marks is allowed to stand; and by 'possible' it is meant possible in a practical sense, and not«-merely in a fantastic view......All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and the Applicants ought to show something approaching a sufficient or proper reason for applying to have the Trade Mark expunged. It certainly is not sufficient reason that they are at loggerheads with the Respondents or desire in someway to injure them".
15. Let me examine, whether the petitioner has discharged the onus cast upon him and established non use of the mark and that he is a person aggrieved and showed that in some possible way he may be damaged or injured in the trade mark is allowed to stand.
16. The petitioner has filed evidence by way of an affidavit dated 3.8.1991 of one Mr. N.K. Suri, a partner of the petitioners' partnership firm alongwith a list of certain documents. In para 4 & 5 of the aforesaid affidavit, the applicant for rectification has stated and affirmed that he has an old established firm since the year 1975 and is in the business of electrical appliances like auto iron, non auto iron, toaster, oven, extension cord etc; and has adopted the trade mark TOSIBA in relation to the above goods in the year 1975 and has been continuously using of the said trade mark since then. In para 6 of the said affidavit, the petitioner has referred to an extract of year-wise sales figures of his goods under the trade mark TOSIBA from the years 1974-75 to 1989-90. The applicant for rectification has stated and affirmed that due to continuous and extensive sales of his goods and huge expenses incurred towards sales promotion and advertisement, the trade mark TOSIBA has acquired valuable goodwill and reputation. The petitioner has filed certain documents i.e. bills, excise gate pass, application for central excise licence, letters from Indian Standard Institute and shop and establishment office, factory licence, renewal licence, registration certificate from Chief Inspector, shops and establishment etc. The applicant for rectification has also filed few copies of advertisements of his mark TOSIBA, catalogue of products, certificate for advertisement, National Productivity council award 1985-86, National Quality Award 1987, National Productivity Council Award 1988-89. A few copies of bills and challans found enclosed with the affidavit reveal that the petitioners commenced the use of trade mark TOSIBA on his products from 2.6.1975 onwards. Likely, the earliest advertisement of the petitioner's trade mark TOSIBA is of the year 1989. However, it is seen from the evidence filed in support of application for rectification that no bona fides or clarifications regarding adoption of the trade mark as well as trade name TOSIBA by the applicant for rectification is given. Even there is no whisper in the evidence as to why and how the applicant for rectification adopted the said trade mark and trade name during the course of trade without having knowledge of the proprietor's registered trade mark therefore, the adoption of the identical or deceptively similar trade mark in relations to the same or similar goods by the applicant does not seem to be honest and bona fide. Further, he has not stated that he has taken any precautionary steps before adopting & using the mark on his goods. Now, the question arise whether the use of the applicants' mark which adoptions is dishonest and mala fide can be considered as bona fide, the answer is no, because the applicants has not come with clear hands and as such he is not entitled to any benefit under Section 12 of the Act. However, the applicant has not filed even a single document to prove non use of the trade mark TOSHIBA during the period of 5 years and one month prior to the date of application for rectification as alleged by him. Therefore, he has failed to discharge the onus cast upon him and as such he cannot be considered the person aggrieved.
17. Now, let me peruse the evidence filed by the registered proprietor in support of use of the registered trade mark TOSHIBA by way of affidavit dated 7.11.1991 of one Mr. Kensuke Norichika in his capacity of General Manager of Kabushiki Kaisha Toshiba (Toshiba Corporation) with documentary proof marked as Annexure A to F which all along run from pages 1 to 311. In para 2 and 3 of the aforesaid affidavit, the registered proprietor has stated and affirmed that the company has made an extensive sales of various goods all over the world under trade mark TOSHIBA and in consequence thereof the trade mark has required enviable goodwill and reputation and become 24th largest industrial corporation in the world as evidenced from the business magazine namely Fortune dated 14.7.1990. In para 6 of the aforesaid affidavit, the registered proprietor has stated and affirmed to have entered into agreements with various Indian companies, public undertaking and Enterprises as a Joint venture. In para 8 of the aforesaid affidavit the registered proprietor has stated the lack of bona fides as a conduct of the applicant for rectification and contended that the applicants must certainly have been aware . of reputation of the proprietors trade mark TOSHIBA before they adopted a confusingly similar trade mark TOSIBA. In para 9 of the affidavit, the registered proprietor has referred to photo copies of registration of trade mark granted by the Trade Marks Registry, Mumbai. In para 10 of the affidavit, he has stated and affirmed that the registered trade mark TOSHIBA consists of an invented word and he has called upon the applicant to depose as to how and why he came to adopt the proprietor's identical trade mark trade mark TOSIBA. In para 13 (a) of the affidavit, the registered proprietor has stated & affirmed that TOSHIBA has several joint venture agreements in India, for various products including VCRs, Colour picture tubes, dry cell batteries etc. In para 13(c) of the aforesaid affidavit the registered proprietor has stated & affirmed that TOSHIBA has several service centers 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 machines etc. In para 13(e) of the said affidavit the registered proprietor has stated & affirmed that customers from India, have been buying TOSHIBA products, in several foreign countries and in particular Singapore, Hong Kong and Middle East, including refrigerators, air conditioners, food processors, ovens, electric irons bearing the trade mark TOSHIBA and carrying the same to India under personal baggage rules. In para 11 of the aforesaid affidavit, the registered proprietor has affirmed and stated that he is the proprietor of word TOSHIBA.
18. As referred to in para 9 of the affidavit, the registered proprietor has filed copies of registration/renewal intimations, which all along run from pages 251 to 292. The earliest registration of trade mark TOSHIBA in India are of 5.7.1953 under Nos. 160442 in respect of Scientific, nautical, surveying and electrical apparatus and instruments (including wire legs), photographic, cinematographic, optical, weighting, measuring, signaling checking, supervision life saving and teaching apparatus and instrument, coin or counter freed apparatus, talking machine, cash registers, calculating machines, fire extinguishing apparatus falling in class 9 and 160443 in relation to installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes falling in class 11. Subsequently to these registrations the registered proprietor has registered the said trade mark TOSHIBA under Nos. 273758, 273759, 273760 and 273761 as of 26.7.1971 and 404332, 404333, 404335, 404338, 404339, 404347, 404348, 404352, 404353, 404356, 404357, 404358, 404359 and 404560 as of 16.4.1983 in relations to different diversions of goods mostly falling in class 9, 11 & 7. On perusal of bills/invoices, it is seen that the goods under the trade mark TOSHIBA are sold & exported to Indian companies, enterprises and autonomous bodies such as Jyoti Ltd., Vadodara, Instrumentation Ltd., BHEL Calcutta, MPP Equipment services, WEBEL, Calcutta, Videocon International Ltd., Aurangabad, India (SER), HCL Ltd., New Delhi, Hindustan Reporsprahes Ltd., New Delhi, Eastern Peripherals Pvt. Ltd., Mumbai, ITDC Ltd., Eastern Railway, Calcutta, India, Northern Railway India, Southern Railway, Madras etc. during the period from 1960 to 1990. On perusal of document at page 82, the earliest consignment of the proprietor's goods namely Reflex Rlystnon-N-40 for Toshiba Radio equipment under the trade mark TOSHIBA to India (SER) on 15.8.1960 can be seen. Further the goods spare units for 7D15 equipment multiple chain was supplied to India SER vide annexure dated 24.9.1961 which can be seen from page No. 73. I am citing some more consignments of the proprietor's merchandise sold & exported to India among others as follows :-
--------------------------------------------------------------------------------
Goods under Sold & Exported to Vide invoice No. & Can be seen From T.M. TOSHIBA dated Page
--------------------------------------------------------------------------------Components of HCL Ltd., New 15A-6292(AP 87
Photocopying Delhi 70509) dt. 20.3.1989 machine as per list
---------------------------------------------------------------------------------do- -do- AP-54699 (15A 88
6316)dt. 30.1.1988
--------------------------------------------------------------------------------
Kit Parts for FDD Eastern Peripherals 15A-SO 48 Dt. 91 Model 8.9.1989
--------------------------------------------------------------------------------Toshiba MP Uni Megna 86/0613 106
Ultrasound Tech Ltd. Dt.30.7.1986 Tomogrcopieraphic Apparatus
---------------------------------------------------------------------------------do- -do- 86/0755 Dt. 107
30.7.1986
--------------------------------------------------------------------------------
Toshiba whole -do- 87/0188-0189 Dtd. 108 Body CT scanner 24.2.1987
--------------------------------------------------------------------------------
-do- -do- 87/0234 Dtd. 10924.3.1987
--------------------------------------------------------------------------------
Toshiba -do- KS88/0177 110Ultrasound 23.11.1987 Tomographic Apparatus
--------------------------------------------------------------------------------
Toshiba -do- 88/0600 Dtd. 111Sonolayer-Vq 17.3.1988
--------------------------------------------------------------------------------
-do- -do- 88/0601 dtd. 11217.3.1988
--------------------------------------------------------------------------------
Toshiba -do- 88/0603 Dtd. 113Ultrasound 11.2.1988 Equipment
--------------------------------------------------------------------------------
Toshiba -do- 88/0619 Dtd. 114Sonolayer-V 23.4.1988
--------------------------------------------------------------------------------
-do- -do- 88/0620 Dtd. 11523.4.1988
--------------------------------------------------------------------------------
Consumables for Hindustan AP-57357 Dtd. 90Plain Paper Reprofraphic 21.1.1985 copier
--------------------------------------------------------------------------------
Goods supplied as HCL Ltd., AP-78664 Dtd. 86Per proforma AP-78664 Dtd. 26.9.1989 Invoice 26.9.1989
--------------------------------------------------------------------------------
-do- Hindustan AP-74620 Dtd. 89Reprographic 28.1.1987
--------------------------------------------------------------------------------
Apart from selling and exporting the goods to Indian companies, the registered proprietors have carried out promotional activities and advertised the trade mark TOSHIBA at large scale as per Annexure 'C' which all along runs from Pages 116 to 138. One of the business magazines namely Fortune dated 30.7.1990 has placed proprietors' company at 24th largest industrial corporation in the world. Besides, the registered proprietor has registered the trade mark TOSHIBA in most of countries of the world as per Annexure 'E'. The registered proprietor has entered into technical collaboration agreements with various Indian companies namely Jyoti Ltd., M. P. Uni Megna Technology Ltd., NGFE Ltd., ECE Industries Ltd., Kirloskar Electric Co. Ltd., Instrumentation Ltd., Chaudhary International, Vidiocon International Ltd., as per Annexure 'D' which all along runs from pages 139 to 240.
19. The above evidence filed in support of the registrations as such establishes not only the use of the mark TOSHIBA during the period of 5 years and one month or longer prior to the date of application but also proves that the registered proprietor is a world renowned and 24th largest industrial corporations in the world and the trade mark TOSHIBA by virtue of continuous and extensive use across the world including India & promotional and advertisement activities carried out on a large scale has acquired worldwide goodwill and reputation and as such has become not only well known trade mark but the house mark of the proprietor.
20. In Diamler Benz Aktiegesellchaft and Anr. v. Hydo Hindustan, 1994 PTC 287 (supra). The Hon'ble Mr. Justice Mahendra Narayan of the High Court of Delhi observed as under while deciding the adoption of the trade mark BENZ by the defendants in respect of under garments:-
"There are marks which are different from other marks. They are names which are different from other names. There are names and marks which have become household words "Benz' as name of a Car would be known to every family that has ever used a quality car. There is hardly one who is conscious of existence of the cars/automobiles, who would not recognize the name 'Benz' used in connection with cars. Nobody can plead in India where 'Mercedes Benz' cars are seen on roads; where 'Mercedes' have collaborated with TATAs, where there are Mercedes Benz-Tata trucks have been on roads in very large number, (known as Mercedes Benz Turcks, so long as the collaboration was there), who can plead that he is unaware of the word 'Benz' as used with reference of car or trucks.
21. In my view, the Trade Mark Law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide. By no stretch of imagination can it be said that use for any length of time of the name 'Benz' should not be objected to.
22. We must keep in mind that the plaintiff company exists in Germany. An insignificant use by too small a product may not justify spending large amounts needed in litigation. It may not be worth while.
23. However, if despite legal notice, any one big or small, continues to carry the illegitimate use of a significant world wide renowned name/mark as is being done in this case despite notice dated 9.12.1989, there cannot be any reason for not stopping the use of a world reputed name. None should be continued to be allowed to use a world famed name to goods which have generated the world wide reputation.
24. In the instant case, 'Benz' is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user of the name 'Benz' with respect to a product like underwears."
25. Likewise, in the present case, the use of the trade mark TOSIBA claimed by the applicant for rectification from the year 1975 cannot be rewarded and as such it cannot dilute the use & reputation of the proprietor's world renowned trade mark and allegation that the registered proprietor had not been using the registered trade mark TOSHIBA on their goods upto a date of one month prior the date of application, a continuous period of five years or longer cannot be admitted at all.
26. I do not find any reason for the applicant for rectification to adopt the identical trade mark TOSIBA on his goods subsequently in the year 1975 after a long time of its adoption and registration by the registered proprietor in the year 1953 in India. Here, an inference can be easily drawn that the applicant for rectification has adopted the said trade mark in respect of their goods to encash the goodwill and reputation acquired by the registered proprietors' well known trade mark TOSHIBA and determined as such under Clause (1) of Sub-section (6) of Section 11 of the Trade Marks Act, 1999.
27. It is well settled principle that the proprietary rights in a trade mark can be acquired by honest & bona fide adoption and use of the same mark. Honesty in adoption is the main essence of the user of a mark. If there is no honesty in adoption of a mark, any length of subsequent user cannot launder the voice of dishonesty of adoption. If a person or applicant for rectification adopts a trade mark having knowledge of an earlier existing identical or deceptively similar trade mark, such adoption is to be considered dishonest. Therefore, the applicant cannot claim any benefit in respect of any goods out of dishonest user as he adopted the trade mark TOSIBA in relation to his goods with mala fide intention to trade upon the good will and reputation of the world wide registered and well known trade mark TOSHIBA. Applicant for rectification cannot not be considered as a person aggrieved and as such he has no locus standi to apply for removal of the well known registered trade mark TOSHIBA from the Register and expunging or varying the entries in relation thereto. Once the applicant for rectification is refused to be considered as a person aggrieved, the question of proving that in some possible way he may be damaged or injured if the trade mark is allowed to stand, does not arise therefore, the evidence filed by the applicant since the year 1975 cannot be considered bona fide, hence stands rejected.
28. Now, let me examine the objections raised in the rectification proceedings one by one. For the sake convenience. I shall take up the objections raised under Section 47 of the Act first.
29. The first and foremost ground taken in the application for rectification is under 47 of Trade Marks Act, 1999. While taking this ground the applicants alleged that the trade mark TOSHIBA was wrongly registered without bona fide intention and wrongly remained on the Register without sufficient cause upto a date of one month before the date of application, a continuous period of 5 years or longer had elapsed during which the trade mark was not used.
30. The relevant extract of Section 47 of the Act read as follow:-
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 application; or
(b) that up to a date three months before the date of 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 On application made in the prescribed manner to the appellate board or to the Registrar by any person aggrieved the Tribunal may make such order as it may think fit for canceling or varying the registration of trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto under Section 57.
31. The Tribunal may refuse an application under Clause (a) & (b) in relation to any good if it is shown that has been, before the relevant date or during the relevant period as the case may be bona fide use of trade mark by any proprietor thereof for the time being in relation to goods of same description, being goods in respect of the trade mark is registered.
32. As held in the preceding paragraphs, the applicant for rectification has not filed any documents to show non-use of the trade mark TOSHIBA and evidence whatsoever filed in support of application has already been rejected holding that the adoption of the mark by the applicants being dishonest & mala fide evidence based on such use cannot be considered as bona fide and the applicant for rectification cannot be held a person aggrieved and as such has no locus standi to file the present rectification proceedings. The initial onus to prove non-use is cast upon the applicant, he has failed to discharge the same.. At the same time the evidence filed in support of registration has established that various goods under the trade mark TOSHIBA had been sold and exported to various companies in India since the year 1960. Apart from selling and exporting the proprietor's goods to India. Indian public is going abroad and bringing the certain goods under the trade mark TOSHIBA from the duty free shops under the baggage rules. The word 'use' is defined in Section 2(2)(b) of the Act as follows:
"To the use of a mark in relation to goods shall be construed as a reference to use of the mark upon, or in any physical or in any other relation whatsoever, to such goods."
33. In Bon Martin Trade Mark, 1989 RPC 536 "The trade mark registered in the United Kingdom in 1979 in respect of a range of cosmetics. The registered proprietor was a resident of France and manufactured and sold the goods there. In 1984, an application was made to expunge the registration on the ground that there had been no bona fide use of the mark in the United Kingdom for a continuous period of five years. The only use of the mark prior to the date of application was by issue of price lists and promotional literature on two occasions. A distributor was appointed by the proprietor in the United Kingdom subsequent to the application for rectification and the first sale of the goods took place 3 years after that. The Court held that the intention of the registered proprietor to seek to establish a market not on any temporary basis but on the basis of continuous sales had been proved. As they had been struggling to market the goods in the United Kingdom -and ultimately were successful in finding a distributor, it was held that this was sufficient use of the mark by the proprietor for the purpose of defeating the application for its removal.
34. In Americal Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Anr., 1986 (1) SCC 465 "the Court held that both the intention of the proprietor not to use the trade mark at the time of registration and also the actual non-use of the trade mark subsequent thereto had to be proved. The evidence in that case was that prior to registration, the proprietor had entered into a collaboration agreement with an Indian company to manufacture and market its products. Subsequent to the registration, the Indian company obtained a licence for the purpose of imposing a machine to manufacture proprietor's goods, obtained samples from the proprietor and took other steps to manufacture the goods, but no products were in fact put on the market. After the application for rectification was filed, a registered user agreement was entered into between the proprietor and the Indian company. It was not in dispute that the goods has not been sold during the alleged period of non-use. Dismissing the application for rectification, this Court held:
"A person who intends to manufacture goods or has made preparations for the manufacture of goods but the manufacture has not commenced and, therefore, goods have not been marketed is nonetheless entitled to get the trade mark which he proposes to use in relation to those goods registered. In the present day world of commerce and industry, a manufacturing industry can neither be commenced nor established overnight. There are innumerable preparatory steps required to be taken and formalities to be complied with before the manufacture of goods can start and the manufactured goods marketed. The process must of necessity take time. If the position were that the mere non-user of a trade mark for the period mentioned in Clause (a) of Section 46(1) would make a trade mark liable to be taken off the Register, it would result in great hardship and cause a large number of trade marks to be removed from the Register because the moment one month has elapsed after the registration of a trade mark has been ordered, a trade rival can make an application on the ground set out in Clause (a) of Section 46(1) claiming that there has been no bona fide use of the mark up to a date one month before the date of his application".
35. Although the decision was given in the context of Section 46(1) (a) nonetheless it would show that an intention to use does not necessarily mean that the proprietor must show the marketing of the goods under the trade mark. This decision is also an authority for the proposition that the intention to use the trade mark required to the proprietor would include the intention to permit the user of the trade mark by the registered use. Indeed that would be the inevitable and logical result of reading Section 46(1) with Section 48(2) of the Act.
"The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of Section 46 or for any other purpose for which such use is material under this Act or any other law."
In rectification matters, it is not essential that the mark should be used on physical goods it can be used in any other relations to the goods.
In Hermes Trade Mark, 1872 RFC 425, the registered proprietor had inserted advertisement in which the trade mark appeared in relation to the watches it manufactured in annual trade publication. It was also in evidence that the registered proprietor placed an order for parts of the watches during the period of alleged non although the actual sale of watches took place subsequently.
In Monson & Co. v. Biochem (supra), it was said 'A man who has a trade mark may properly have regard to the state of the market and the demand for the goods; it would be absurd to suppose the lost his trade mark by not putting more goods in the market when it was glutted.
However, it may be stated that all the goods in relation to which the proprietor has registered the trade mark TOSHIBA may not have been sold to India for the reason of the special circumstances i.e. restriction or ban imposed by the Indian Government on import of the certain goods, This has affected the sale and export of the proprietor's goods to India but the applicants cannot avail the circumstances as a ground for removal of the trade mark.
36. A trade mark may be removed from the register for non-use continuously for five years except when it is shown that the non-use has been due to existence of 'special circumstances' in the trade and not due to any intention to abandon or not to use the trade mark. In the instant case, the applicants failed to prove such 'special circumstances'. As to user, the Court said that word 'use' does not necessarily mean an imply actual physical sale and even more advertisement without having even the existence of the goods can be said to be a 'use' of the mark- J.N. Nichols Ltd. v. Rose & Thistle, 1993 (11) CHN 395 (Cal)(DB).
37. A.J. Vulcan v. Palanichamy, AIR 1969 Cal. and Express Bottles Services Pvt. Ltd. v. Pepsi Inc. and Ors., 1989 PTC (14). The law therefore is that even an commercial impracticability would amount to the special circumstances.
38. The use of the registered trade mark TOSHIBA during the relevant period of 5 years and one month prior to the date of application is proved in different mode as follow:-
(1) By using on physical good, (2) By advertisement, (3) By carrying out the promotional activities, (4) By entering into an agreement as a joint venture with different companies in India, (5) By entering into technology collaboration, (6) By opening service centers in India to provide facilities to the Indian customers to repair their goods bearing the trade mark TOSHIBA.
39. This leads to an inference that the proprietor had a bona fide intention before registration to use the mark TOSHIBA in relation to those goods for which he registered the trade mark and still intends to use in future.
40. However, copies of the order of the Dy. Registrar, Kolkata by way of filing further evidence, in my opinion does not put any weight to the applicants' case as the appeals against all three orders are pending in Div. Bench of Kolkata High Court and there is nothing against the proprietor as an out come of those appeals so far. The conduct of the applicant for rectification whether towards not attending hearing and filing requisite request on form TM-7 or not recording the change in address for service by filing an appropriate request on form TM-16 and as such violating the provisions of the Trade Marks Rules, 2002 or misguiding the Tribunal stating that no case concerning the trade mark in question against him is pending in any Court of law is disgrace for him and as such is against the spirit of the prosecution. I do not agree with the contentions of the applicant that the trade mark TOSHIBA was wrongly registered without bona fide intention and wrongly remained on the Register without sufficient cause upto a date of one month before the date of application, a continuous period of 5 years or longer had elapsed during which the trade mark was not used.
41. Since the applicants for rectification has not satisfied the Registrar as to his locus standi to file the present applications for rectification and as such he has failed to be considered as a man aggrieved, the question of proving non-use for a period of 5 years & one month prior to the date of application as well as special circumstances otherwise does not arise, although the proprietor has proved all three conditions in his favour. The objections raised on the ground as such is not maintainable, hence stands rejected.
42. Next, I will come to the objection raised under Section 9 of the Act. Under this objection the applicant for rectification has alleged that the trade mark TOSHIBA is not registrable under Section 9. However he has not specifically mentioned as to how and why the trade mark TOSHIBA is not registrable. The trade mark in question has been coined by the registered proprietor from the words Tokyo & Shibaura by deriving letters TO from the first word and SHIBA from the latter. The trade mark TOSHIBA coined as such by the registered proprietor being an invented word is an inherently distinctive trade mark on which he has exclusive right to use the same on their manufacture and no one is supposed adopt the same in relations to his goods and even to come close to the said trade mark during the course of trade. The registered proprietor adopted and used the trade mark TOSHIBA, in 1939 and in India in the year 1953 and since then the trade mark has been extensively & continuously been used in India on his goods by way of selling & exporting the same to India and under the baggage system. By virtue of extensive use & world wide registration and advertisement & promotional activities carried out at large scale, the said invented word TOSHIBA has not only become world famous trade mark but also a house mark of the proprietor as held in preceding, paragraphs. However, the applicant for rectification having adopted the deceptively similar trade mark TOSIBA in relations to his goods has no locus standi to raise the objection regarding registrability, therefore, the objection raised under Section 9(1) of the Act stands rejected.
43. Next, I will proceed to the objection raised under Section 9(2)(a) of the Act. This objection is based on the ground of deception and confusion and can be raised if the trade mark in question is of such nature as to deceive the public or cause confusion during the course of trade irrespective of the nature of goods. In the present case, the trade mark of the applicant is TOSIBA and the registered proprietors trade mark is TOSHIBA. Prima facie, both the trade marks visually, phonetically and structurally are same with negligible difference of letter 'I' and are summarily held identical to each other and I need not to go for further analyses of the marks as far deception and confusion is concerned. Accordingly, the applicant for rectification has invoked the provisions of Sub-section (2)(a) of Section 9 of the Act on the ground of deception and confusion. The deception or confusion can only be proved on evidence of user which has already been rejected by this Tribunal holding the adoption of the mark TOSIBA by the applicant dishonest and mala fide and subsequent to the adoption and use of the mark by the registered proprietor in India. At the same time, the proprietor's trade mark TOSHIBA is held as an existing registered well known trade mark in India. It is entitled for protection in the Court of law. Therefore, the objection raised under Sections 9(2)(a) and 11(3) of the Act are not maintainable, hence, summarily stand rejected.
44. Next, coming to the objection raised Section 18(1) of the Act, I will examine the question of proprietorship of the mark in question. While raising this objection, the applicant has alleged that the registered proprietor is no longer the owner of the trade mark TOSHIBA as the same has not been used for a continuous period of 5 years and one month prior to the date of application for registration. The rights in a trade mark can be acquired by any of the following three modes.
(1) By honest adoption and use (2) By transfer or assignment, and (3) By registration.
45. In the present case, the applicant for rectification claimed to have adopted the trade mark TOSIBA in the year 1975 and used the same in relation to his goods since then which in any case is subsequent to the use & adoption of the mark by the registered proprietor. However, on perusal of evidence filed by the applicant, the said adoption of the mark by the applicant is already held dishonest & mala fide and as such evidence of user filed by the applicant has been rejected in the preceding paragraphs. Further, the trade mark TOSHIBA being an invented word, 'the registered proprietor has the exclusive rights thereon during the course of trade and no one including applicant for rectification has right to adopt and use the same or deceptively similar trade mark on his goods irrespective of nature, therefore, the applicant for rectification, who has tried to snatch the rights of the registered proprietor in world renowned & well known trade mark TOSHIBA by adopting an identical or deceptively similar trade mark SIBABA in relation to the same goods or the goods of same description subsequently in no way can be termed as the proprietor of the mark in question. At the same time, the registered proprietor is an old & established industrial establishment, who adopted the trade mark TOSHIBA in relation to his goods as back as in the year 1939 and had been using the same on his goods of different diversion since the year 1939 and in India since the year 1953. He registered the said trade mark TOSHIBA in relation to the various goods falling in class 9 & 11 as earliest as in the year 1953 in India under Nos. 160442 & 160443 respectively following the subsequent registrations in various classes including class 9, 11 & 7. The present rectification proceedings have been filed against these earliest registrations, wherein the applicant has failed to prove non-use of the mark and at the same time, the registered proprietor has been enjoying the goodwill and reputation of the mark TOSHIBA as proved. Therefore he is the proprietor of the existing registered well known trade mark TOSHIBA. The objection raised under Section 18(1) is not maintainable, hence, is rejected.
46. Finally, I am called upon to use the discretion vested in me under Section 18(4) of the Act. As all the objections raised in the applications for rectification have already been rejected. There is no reason for me to exercise the said discretion adverse to the registered proprietor in the circumstances wherein he has exhibited the use of the mark categorically. I am more than satisfied that the well known trade mark cannot be removed even on non-use under Section 11(2) of the Act and that applicants had a knowledge of use reputation and registration of the trade mark TOSHIBA at the time of adoption of his mark and filed these proceedings as a counter blast after receiving a legal notice from the registered proprietor and as such the present proceedings of rectification being absured fictitious, frivolous and concoctous and are not maintainable and liable to be dismissed.
47. It is hereby ordered that application for rectification bearing Nos. MAS-327 & MAS-328 are dismissed.
48. It is hereby further that the applicant for rectification shall forthwith pay a sum of Rs. 12,900 (Twelve Thousand Nine Hundred only) to the registered proprietor as costs of these proceedings.
49. Signed at Ahmedabad on 12th day of January, 2005 and sealed at Chennai on 31.1.2005.