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 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 products. 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 Kaisha Toshiba (for short, TOSHIBA). Appellant adopted the mark TOSHIBA in which `TO' was taken from the Tokyo and `SHIBA' was taken from the word Shibaura.
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:
Current generators, 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 7.
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 Class GoodsNumber Toshiba (Logo) 160442 5.9.1953 9 Scientific, nautical,surveying & electricalapparatus, etc.Tosiba (Logo) 160443 5.9.1953 11 Installations for cooking,refrigerating, drying,ventilating, water supplyand sanitary purposesTOSHIBA 273758 26.7.1971 7 Current generators,induction motors(electrical), electricwashing machines, etc.TOSHIBA 273759 26.7.1971 9 Various electronics &electrical; goods falling inCl.9.TOSHIBA 273760 26.7.1971 11 Various goods includinglamps, ovens, waterheaters, fans, toasters,cookers, etc.
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 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 trademarks register.
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 trade.
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.
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 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 concerned.
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 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 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 these items.
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 XXXThe 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.
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 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 class.
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 applicable.
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 rectified under Section 46(1)(b), i.e., no bona fide use for a continuous period of five years and one month.