Skip to content


Hayakawa Denki Kogyo Kabushiki Kaisha (Hayakawa Electric Company Ltd) Vs. Associated Electronic and Electrical Industries and anr. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Reported in(1974)1MLJ392
AppellantHayakawa Denki Kogyo Kabushiki Kaisha (Hayakawa Electric Company Ltd)
RespondentAssociated Electronic and Electrical Industries and anr.
Cases ReferredIn Consolidated Foods Corporation v. Brandon. and Company
Excerpt:
- n. s. ramaswami, j.1. this letters patent appeal is against the judgment of venkatadri, j. in c.ma. no. 391 of 1965. the dispute is regarding the question whether the first respondent before us is entitled to have the word 'sharp' registered as its trade mark in respect of transistor radios, radio amplifiers and inter-communication apparatus, in part a of the register. the first respondent is associated electronic and electrical industries by its partners, m.b. lal, m.b. hiranand and l. mangharam doing business at bangalore, hereinafter referred to as the indian firm. the appellant is hayakawa danki kogyo kabushiki 'kaisha (hayakawa electric company limited) doing business at okasa, japan hereinafter referred to as the japanese firm. the indian firm filed an application under the.....
Judgment:

N. S. Ramaswami, J.

1. This Letters Patent Appeal is against the judgment of Venkatadri, J. in C.MA. No. 391 of 1965. The dispute is regarding the question whether the first respondent before us is entitled to have the word 'Sharp' registered as its trade mark in respect of Transistor Radios, Radio Amplifiers and Inter-communication apparatus, in Part A of the Register. The first respondent is Associated Electronic and Electrical Industries by its partners, M.B. Lal, M.B. Hiranand and L. Mangharam doing business at Bangalore, hereinafter referred to as the Indian firm. The appellant is Hayakawa Danki Kogyo Kabushiki 'Kaisha (Hayakawa Electric Company Limited) doing business at Okasa, Japan hereinafter referred to as the Japanese firm. The Indian firm filed an application under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) before the Assistant Registrar of Trade Marks, Madras for registering the word 'Sharp' as its trade mark. It was so filed on 7th December, 1961 and was duly advertised in the Trade Marks Journal. Then the Japanese firm lodged a notice of Opposition. Affidavits by way of evidence as contemplated under the Act were filed by the respective parties before the Assistant Registrar, who refused to register the trade mark in the name of the Indian firm. Then the Indian firm filed an appeal to this Court which was heard by Venkatadri, J. The learned Judge held that the Indian firm was entitled to registration of the trade mark 'Sharp' and therefore, the order of the Assistant Registrar Was set aside and the appeal was allowed. It is against this judgment of Venkatadri, J. the present Letters Patent Appeal is filed by the Japanese firm.

2. First we shall notice the facts established in this case. The Japanese firm is a reputed one and it seems to have celebrated its Golden Jubilee in 1961 or so. The word 'Sharp' is its trade mark in Japan. Under this trade mark the Japanese firm was selling Radios, Television sets etc. for a long number of years. The Japanese firm has international reputation and it is stated that its goods are marketed in many other countries though there is no evidence to show that the word 'Sharp' had been registered as a trade mark for the said firm in any other country than Japan. However, the goods of the Japanese firm had never entered the Indian market. The Japanese firm claimed before the Assistant Registrar that prior to 1939, that is the year in which Japan entered the second World War, Transistor Radios of the Japanese firm were being sold in India and that only because of the War, the export of Transistor Radio sets to India had been stopped. It was also its case that some years after the War came to an end, it corresponded with an Indian firm in Calcutta and also sent its catalogues to the Calcutta firm with the idea of recapturing the Indian market. The Assistant Registrar has not accepted the case of the Japanese firm that it had been selling its Transistor sets in India up to the year 1939. The Assistant Registrar also found that even though the Japanese firm had sent its catalogues to the Calcutta firm that fact is no avail regarding the present controversy. It is now accepted by the Japanese firm that prior to 1969, its goods had never entered the Indian market.

3. The Indian firm has an associate concern which is a proprietary one under the name and style of Lekhraj Jassumal and Sons. Mangharam, one of the partners of the Indian firm is the proprietor of the above concern and he is no other than the father of M. B. Lal and M.H. Hiranand, the two other partners of the Indian firm. Hiranand was the person who was actively engaged in the affairs of the Indian firm as well as its associate, Lekhraj Jassumal and Sons. Hiranand had been to Japan in or about June 1959 and then, for the first time, he contacted the Japanese firm. The Japanese firm agreed to supply kits of Transistor Radio sets of a particular model to the Indian firm which the Indian firm Was to assemble and sell in the Indian market. Accordingly the Japanese firm did supply 5oo kits of Transistor Radio sets of a particular model, on the Indian firm getting the necessary import licence therefor. The kits so imported formed the major components for the Transistor Radio sets and the Indian firm assembled them at Bangalore, using some more components, than the kits supplied by the Japanese firm. The Japanese firm had supplied along with the goods the metal badge containing the word 'Sharp'. The Indian firm marketed the Transistor Radios so assembled by it as its goods.

4. Even before there was any contact between the Indian firm and the Japanese firm, the Indian firm had been using the trade mark 'Sharp' for certain of its goods, viz-, for Radio Amplifiers, Intercommunication sets as well as Hearing-aids. The finding of the Assistant Registrar is that the Indian firm was so using the trade mark 'Sharp' from 2nd January, 1959. It may be particularly noted that as per his finding, which is now accepted by both the parties, the contact between the Indian firm and the Japanese firm was only in June 1959, while the Indian firm has started using the trade mark 'Sharp' even from 2nd January, 1959, though such user was only in relation to Radio Amplifiers, Intercommunication sets and Hearing-Aids and not to Transistor Radios. The Indian firm did not even have the know-how for making Transistor Radios prior to its contact with the Japanese firm. The latter supplied the technical know-how and also the kits for assembling.

5. The question for consideration is whether on the above established facts the Indian firm is entitled to have the trade mark 'Sharp' registered in India in relation to Transistor Radio sets, Radio Amplifiers and Inter-communication sets. The application for registration is under Section 18 of the Act. That section says that any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner. Section 2(i)(j) of the Act defines the word 'mark' as including a device, brand, heading, label' ticket, name, signature, word, letter or numeral or any combination thereof. Therefore, even a word will be a 'mark'. Section 2(1)(v) of the Act defines the term 'trade mark'. We are not concerned with Sub-clause (i) of that subsection for the present purpose. Under Sub-section (ii), it is provided that 'trade mark' means a mark used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user to use the mark. There is no dispute that the word 'Sharp' is a. trade mark as defined above, but the dispute is whether the Indian firm is a person claiming to be the proprietor of the said trade mark. According to the Japanese firm, the Indian firm had been using the trade mark only on behalf of the Japanese firm, that the Indian firm had never used the said trade mark as proprietor thereof and, therefore, the Indian firm is not entitled to registration of it. The Japanese firm had been contending that the sales of Transistor Radio sets under the trade mark 'Sharp' effected by the Indian firm in the Indian market go only to the credit of the Japanese firm who is the proprietor of the mark, that, therefore, it is the Japanese firm which is entitled to have the trade mark registered in its name in this country and that the Indian firm cannot have any such right In fact the Japanese firm filed an application before the Registrar of Trade Marks, Calcutta for registering the trade mark 'Sharp' for transistor, radios in its name. This was some time after the Indian firm filed the application before the Assistant Registrar, Madras out of which the present appeal has arisen, and the said application before the Registrar at Calcutta was pending when the Assistant Registrar at Madras disposed of the present application. The Japanese firm had also entered into an agreement with a Bombay Company by name Indian Plastics Limited, and it is stated that the said company filed yet another application for registering the trade mark 'Sharp' in its name at Bombay.

6. The main question for consideration is whether the Indian firm has a proprietary right to the trade mark 'Sharp' as far as this country is concerned. The registration of the trade mark in the name of the Indian firm is opposed not only on the ground that the Indian firm is not the proprietor of the said trade mark but also on the ground that none of the requirements contained in Section 9 of the Act is satisfied and also by virtue of the prohibition in Section 11(a) of the Act. It is not disputed that in order to get registration of a trade mark, the applicant should not only be the proprietor of the trade mark but should also satisfy the requirements mentioned in Section 9. Section 9(i) says that a trade mark shall not be registered in Part A of the Register unless it contains or consists of at least one of the five essential particulars mentioned as (a) to (e) in that sub-section. It is not claimed that any of the requirements mentioned under (a) to (d) are satisfied in the present case. But it is claimed that the requirement (e) which is, 'any other distinctive mark' is satisfied. Sub-section 5(b) of Section 9 provides that if by reason of the use of the trade mark (or of any other circumstances) the trade mark is in fact so adopted to distinguish or is in fact capable of distinguishing the goods of the applicant, it can be taken to be a distinctive mark. While it is the case of the Indian firm that the trade mark 'Sharp' has become distinctive of its goods by virtue of its user of the mark in relation to its goods, the case of the Japanese firm is that the Indian firm has not acquired any such distinctiveness in respect of the mark inasmuch as the user of the mark by the Indian firm was only on behalf of the Japanese firm.

7. Section 11 speaks of prohibition of registration of certain marks. Even if the Indian firm is the proprietor of the trade mark and has acquired distinctiveness of the mark by user in relation to its goods, still registration of the mark has to be refused if any one of the clasues under Section 11 is attracted. According to the Japanese firm, Section 11(a) which says that a mark, the use of which would be likely to deceive or cause confusion, shall not be registered as a trade mark, is applicable to this case. According to the Japanese firm, as the trade mark 'Sharp' is being used by it for a long number of years in Japan and other countries in relation to Transistor Radios, (and Television sets), the registration of the said mark, in the name of the Indian firm would be likely to deceive or cause confusion as contemplated under Section 11(a) of the Act.

8. The main contention of Mr. Vijayaraghavan, the learned Counsel for the Japanese firm is that the Indian firm has no proprietary interest in the trade mark 'Sharp', that the Indian firm had been using the trade mark only on behalf of the Japanese firm and that, therefore, the Indian firm is not entitled to apply for registration of the said mark. The contention is that as far as Transistor Radios are concerned, the Indian firm had been using the trade mark only in pursuance of an arrangement between the two firms under which the Japanese firm had been supplying the know-how and the kits and the Japanese firm had only permitted the Indian firm to use the said mark in relation to Transistor Radio sets sold in India. It is further contended that under the above circumstances, even though the Indian firm had been using the trade mark in relation to Transistor Radios the said mark cannot be considered as distinctive of the goods of the Indian firm.

9. As already noted, Hiranand of the Indian firm had been to Japan in or about June 1969 and then, for the first time, he had contacted the Japanese firm after which there was an arrangement between the two firms and the Japanese firm had supplied not only kits of a particular make of Transistor Radios but also the know-how of assembling the same. The correspondence between the two firms, started from June, 1969 are on record and the learned Counsel for the Japanese firm invited our particular attention to the letter dated 13th September, 1961 written by the Indian firm to the Japanese firm as well as a cable from the Japanese firm and a reply cable from the Indian firm, at about the time when the two firms fell out. It may be mentioned here that by the end of the year 1961, the arrangement between the two firms under which the Japanese firm had been supplying kits of Transistor Radio sets for assembly by the Indian firm had come to an end. By its letter dated 25th December, 1961, the Japanese firm wrote that it had appointed Messrs. Indian Plastics Limited (a Bombay Company) as its agents in India, and therefore, the Indian firm may correspond with that Bombay Company for any of its further requirements. It is sometime prior to the writing of the abovesaid letter, the cable from the Japanese firm and the reply from the Indian firm came to be given. The letter dated 13th September, 1961 written by the Indian firm to the Japanese firm relied on by the learned Counsel, is also at a time when the arrangement between the two firms was nearing its end.

10. The abovesaid letter dated 13th September, 1961 is in reply to a letter of the Japanese firm which is dated 17th August, 1961. It is seen from these letters that the Indian firm had been requesting the Japanese firm to supply kits of another model than the one for which kits had already been supplied, and in that connection the Japanese firm expressed its doubt as to whether the Indian firm would be in a position to assemble the particular model asked for by the Indian firm. In that connection the Japanese firm asked the Indian firm to send samples of assembled Transistor Radio sets of the previous model of which kits had been supplied by the Japanese firm. In the above letter (dated 17th August, 1961) the Japanese firm also hinted that another Indian firm was ready to enter into negotiations with it (Japanese firm) for purchasing kits of Transistor Radio sets and also pay a royalty of a certain percentage on the sales in the Indian market to the Japanese firm. In its reply dated 13th September, 1961, the Indian firm had agreed to send samples of assembled sets of the previous model (the kits of which had been supplied by the Japanese firm) for examination by the Japanese firm and also stated that its associates (Lekhraj Jassumal and Sons) had been taking pains and good care 'to establish the reputation of 'Sharp' in India'. The Indian firm also enclosed a copy of a Journal called 'Radio Times of India' in which an advertisement under the name of Lekhraj Jassumal and Sons had been made. A reading of the above letter of the Indian firm dated 13th September, 1961, goes to show that the Indian firm was anxious that the arrangement under which the Japanese firm had been supplying kits of Transistor Radio sets should continue.

11. In the advertisement referred above, it is stated that the Transistor Radio sets sold by Lekhraj Jassumal and Sons (the associates of the Indian firm) are assembled in India in collaboration with the Japanese firm who is the largest manufacturer of Transistor Radios in the world. The words ''Golden Jubilee' are also mentioned over the description of the model of the Radio set available for sale. The learned Counsel for the Japanese firm contends, on these facts that the Indian firm had been using the trade mark 'Sharp' only on behalf of the Japanese firm and not as proprietor thereof. However, we are unable to agree with this contention.

12. It must be remembered that the Indian firm had been using the trade mark 'Sharp' even from January, 1959, while the first contact between the two firms was only in June, 1959. No doubt, before the contact between the two firms, the Indian firm was manufacturing only Radio Amplifiers, Inter-communication sets and Hearing-aids and it had nothing to do with Transistor Radios. As already mentioned, the Indian firm had not even the know-how to make Transistor Radio sets before it came into contact with the Japanese firm. Even so the fact remains that the Indian firm adopted the trade mark 'Sharp' for certain class of goods manufactured and marketed by it in this country, even before it had anything to do with the Japanese firm. It has not been the case of the Japanese firm that such adoption of the trade mark 'Sharp' even in January, 1959 by the Indian firm was a dishonest user. It has not been the case of the Japanese firm that the Indian firm had copied its trade mark. The word 'Sharp' is not per se distinctive. The Japanese firm had not sold any of its goods in India prior to the Indian firm adopting the abovesaid word 'Sharp' as its trade mark. Anyway in the objections taken by the Japanese firm for the registration of the mark in the name of the Indian firm, it is not stated that the Indian firm had adopted the mark dishonestly. The only case put forward is that the Indian firm had been using the trade mark only on behalf of the Japanese firm and that, therefore, the said trade mark has become distinctive in India only in relation to the goods of the Japanese firm and not that of the Indian firm.

13. Mr. Vijayaraghavan, the learned Counsel for the Japanese firm had to concede that he cannot object to the registration of the trade mark 'Sharp' in the name of the Indian firm in relation to the Inter-communication sets, Radio Amplifiers etc., and the objection can be only in respect of Transistor Radios. The learned Counsel contends that the mere fact that a particular person has established a right to register a trade mark in relation to some of his goods does not mean that the said person would be entitled to have the mark registered in respect of all of Jus other goods as well. It is stated that a particular trade mark can be that of a particular person in relation to certain class of goods and that of another in relation to certain other classes of goods. Philips Milk of Magnesia and Phillips Radio sets were mentioned as examples for the same trade mark being owned by different persons in relation to different classes of goods. Bat the question here is not Whether a particular trade mark can be owned by two different persons in relation to two different classes of goods. The question is whether the Indian firm had been using the trade mark 'Sharp' in relation to Transistor Radio sets as proprietor thereof, or whether it was using it on behalf of the Japanese firm. The fact that the Indian firm has started using the trade mark 'Sharp' even from January, 1959 though in relation to Inter-communication sets and Radio Amplifiers (and not to Transistor Radios), becomes important. Undoubtedly the Indian firm has been using the trade mark from January, 1959 as proprietor thereof. The question is whether the user of the same trade mark in relation to Transistor Radio sets was in any other capacity.

14. In the entire correspondence between the two firms, there is nothing about the trade mark itself. Admittedly there is no written agreement between the two firms for one firm to supply kits of Transistor Radio sets to the other. It is only from the correspondence, one has to gather the nature of the arrangement between the two firms. It appears to us that the arrangement amounted to the Japanese firm selling kits of Transistor Radio sets to the Indian firm with the know-how to assemble the same and nothing more. Even though the Indian firm might have said that the Radio sets sold by it in India were the 'merchandise' of the Japanese firm and in the advertisement it mentioned the words. 'Golden Jubilee' which may possibly refer only to the Japanese firm, it is impossible to hold that the Transistor Radio sets marketed by the Indian firm in this country were not its goods. It may be noted that the Indian firm was not importing Transistor Radio sets. The import licence was only for getting the kits of Radio sets which might form the major components of the Radio set. The Indian firm had to utilise other components in assembling the Radio set. Anyway the Radio sets marketed in this country were really the goods of the Indian firm. This position cannot be disputed and it is not disputed either. The Japanese firm had also been supplying the Badge containing the Word 'Sharp' but that fact does not advance the case of the Japanese firm to any extent, for, one is not concerned as to who supplied the metal Badge but the real question is regarding the user of the trade mark 'Sharp'. The metal Badges were being supplied as any other component of the Radio sets and that fact should not be confused with the question as to user of the trade mark. Even if the Badge had not been supplied by the Japanese firm there was nothing in the arrangement which prevented the Indian firm from using the trade mark 'Sharp' for the Radio sets assembled and sold by it The Japanese firm supplied only the metal containing the name 'Sharp' and not the trade mark. In the cable referred to above, the Japanese firm said that it can supply kits of earlier model of the Transistor Radio sets only without the Badge. The Indian firm in its reply cable stated that the kits of Radio sets which they required might be supplied without the Badge. The learned Counsel for the Japanese firm heavily relied on the above fact, namely that the Japanese firm wanted to withhold the Badge and the reply of the Indian firm agreeing to it, in support of his contention that the Indian firm had been using the trade mark only on behalf of the Japanese firm. It is contended that in any event the Indian firm had not been claiming any proprietory interest in the trade mark. However, we are unable to agree. The supply of the metal Badge containing the word 'Sharp' or the withholding of the same by the Japanese firm does not seem to have any relevance to the question whether the Indian firm had been using the trade mark 'Sharp' as proprietor thereof in relation to Transistor Radio sets as well other items sold by it in India. As we said, there is nothing in the entire correspondence between the parties to show that there was any agreement between them regarding the user of the trade mark 'Sharp'. As the Indian firm was marketing the Transistor Radio sets as its goods (and not that of the Japanese firm), the user of the trade mark in relation to such goods is only in exercise of proprietory right thereof. In any event, it is not possible to hold that the Indian firm had been using the trade mark only on behalf of the Japanese firm. It is needless to stress that the Radio sets marketed in India were not those of the Japanese firm, the latter having supplied only some components (it may be the major components) for manufacturing the sets. Further there can be no doubt that such components which were supplied by the Japanese firm were so done only on the basis of seller and buyer and there was no other relationship between the parties. The imports were being made by the Indian firm and not the Japanese firm. Under all these circumstances, we are unable to agree with the contention of the learned Counsel for the Japanese firm that the Indian firm had not been using the trade mark as proprietor thereof.

15. The contention on behalf of the Indian firm has been that the Japanese firm had acquiesced in the Indian firm using the trade mark as its own in relation to Transistor Radio sets sold in India and, therefore, the Japanese firm cannot be heard to say that the Indian firm cannot have the trade mark registered in Part A of the Register. It is stated that the Japanese firm had full knowledge that the Indian firm had been marketing Transistor Radio sets assembled by it in India with the trade mark 'Sharp' and the Japanese firm never demurred to this. It is unnecessary to pursue this aspect of the argument because we are clear, whether the Japanese firm acquiesced in it or not, the Indian firm had acquired a proprietory right to the same inasmuch as it had marketed its Transistor Radio sets in this country with the trade mark 'Sharp', and the Japanese firm had never come into the Indian market.

16. It has also been contended on behalf of the Indian firm that as far as the Indian market is concerned, the Japanese firm should be deemed to have abandoned the trade mark 'Sharp'. It is also contended that under the circumstances of the case the Japanese firm is estopped from objecting to the registration of the trade mark in the name of the Indian firm. For reasons stated supra, we are of the opinion, that the question of abandonment or estoppel need not be pursued.

17. Now turning to the case-law regarding the question as to under what circumstances a person can claim proprietary right in a trade mark, the learned Counsel for the Japanese firm says that all the decisions referred to by the learned Judge (Venkatadri, J.) are really supporting the position taken by the Japanese firm and that the learned Judge has misapplied the principles stated in those cases. However, we are unable to agree with this contention. The decisions discussed by the learned Judge in his judgment are:

Lavergne v. Hooper I.L.R. (1885) Mad. 149, Ibrahim Currim v. Essa Abba Suit I.L.R. (1901)Mad. 163, Meera Sahib v. Abdul Azeez : AIR1938Mad1 , Consolidated Foods Corporation v. Brandon and Company : AIR1965Bom35 , In the matter of the Trade Marks Act, 1938 and In the matter of Vitamins Ltd.'s application for a trade mark (1965) R.P.C. 1 : (1955) 3 All E.R. 827, Brown Shoe Company's case (1959) R.P.G. 29 and Blackadder v. Good Roads Machinery Company Incorporated 38 G.L.R. 332.

18. In Laverane v. Hooper, the question was whether a French Company doing business at Cognac (France) in brandy, possessed a proprietary right in the trade mark 'Maltese Cross' as far as India is concerned. On facts it was found that the French Company had three classes of trade marks some of which were used by it for brandy specially prepared on order, and which the French Company regarded as the property of the person who gave the order. The trade mark 'Maltese Cross' came under that category. It was also in evidence that the representative of the defendant in the case, doing business in brandy in India, had been to Cognac and selected the trade mark 'Maltese Cross' for brandy to be supplied by the French Company to the defendant and the said trade mark 'Maltese Cross' was used only in respect of brandy so supplied to the defendant. A Division Bench of this Court held that under the circumstances of the case, the said mark 'Maltese Cross' was intended to be the special trade mark of the importer (defendant who was doing business in India) and not of the exporter (French company). The Court also found that the French company had failed to prove that they had adopted the 'Maltese Cross' as one of its trade marks up to the date on which the defendant chose the said mark for imports to be made by it in India. It was also found that the representative of the defendant was shown the 'Maltese Cross' mark with the representation that it was open to the defendant to use the mark as its own. Under such circumstances, it was held that the defendant in India was the proprietor of the trade mark 'Maltese Cross' and not the French company. As the said mark which the French company originally possessed (though it had not used) had been chosen by the defendant in India on the mark being shown to its representative by the French company and in view of the attendant circumstances, it was held that the French company should be deemed to have abandoned the mark and if it had not so abandoned its conduct estopped it from denying the right of the defendant so adopting it. Mr. Vijayaraghavan, learned Counsel for the Japanese firm points out, we think justifiably, that the above decision would not help the Indian firm regarding the question of abandonment or estoppel, for the facts in the above case are clearly distinguishable from those in the present case. As already noted, in the above case the French company had never used the 'Maltese Cross' mark though it had that mark in its possession along with several other marks for being used for brandy specially prepared on orders. Further the French company while showing the mark to the representative of the defendant represented that the defendant can use the mark as its own. But in the present case no such thing happened. Therefore, the above case may not be of any help to the Indian firm if it Wanted to press the question of abandonment or estoppel.

19. The learned Counsel for the Japanese firm contends that the above case is an authority for the proposition that if a person possesses and uses a trade mark in one market as to constitute a right in it, he would have an exclusive right to that trade mark in any other market. In the above case as the French company had never entered the Indian market by itself, one of the questions was whether it had any right to the mark 'Maltese Cross' as far as India is concerned. Though the Division Bench posed the question, it did not give a specific finding regarding the same. At page 152, the question is raised but at the end of page 153, the learned Judges concluded as far as that point is concerned with the remark that in the view that they are taking of the case it is unnecessary to determine the point. As already seen the view taken by the Division Bench of the case was that the French company must be deemed to have abandoned the mark, or at any rate, by its conduct, estopped from denying the right of the defendant to adopt it as far as India is concerned. The first head-note in the above decision 'such possession and use of a trade-mark in one market as to constitute a right in it, establishes in the owner thereof an exclusive right to that trade mark in other markets, although the owner may not have used it in such markets', is rather misleading because such a finding has not been given by the learned Judges. As already seen, the point had not been decided.

20. Ebrahim Currim v. Essa Abba Sait I.L.R. (1901) Mad. 163 is a case decided by a single Judge of this Court on the original side. In that case the plaintiff's firm had been importing umbrellas bearing the trade mark 'Stag', into this country from a firm in Glasgow, Scotland. The umbrellas so imported were being marketed by the plaintiff in the Indian market as its own goods. It complained that the defendant had commenced importing and selling in Madras, umbrellas which bore the trade mark so similar as was calculated to deceive the purchasers. The prayer was for an injunction and damages against the defendant. The defendant contended that the trade mark 'Stag' belonged to and had, since 1884, been used by the firm at Glasgow who manufactured the umbrellas and that, therefore, the plaintiff cannot claim exclusive right to the said mark. The contention was that inasmuch as the trade mark had originally belonged to the Glasgow firm it could not be lawful to use, or be claimed by the plaintiff, notwithstanding the fact that the Glasgow firm had never used it in India. This contention was negatived by the learned Judge holding that the prior use of the mark by the Glasgow firm in Scotland would not justify that firm as well as the defendant in claiming that the plaintiff's use of the trade mark was illegal or otherwise than an exclusive user. We think, to that extent, the above decision is against the present contention of the learned Counsel for the Japanese firm. In that case the trade mark in question was that of the Glasgow firm as far as Scotland was concerned. But that fact did not prevent the Indian importer from acquiring a right to the mark in this country. The learned Judge observed at page 168:

Yet it was mainly on the strength of the theory that trade mark is property that it was contended before me that prior ownership of a trade mark in Scotland excluded the possibility of ownership of the same symbol in India. The proposition seems to me to go a great deal beyond what is required for the protection of traders. * * * No case was cited in support of the proposition that the Scotch firm could maintain an action here against the plaintiff.

At page 169, the learned Judge observed that there was no authority that a man can maintain an action for infringement of his trade mark without proof that his goods have ever been brought into the market. This observation, however, may not be applicable to the present case, as here, we are concerned only with the right of the Indian firm to the trade mark in question and once it does not establish such right, it is not disputed that the Japanese firm can validly oppose registration.

21. Meera, Sahib v. Abdul Azeez : AIR1938Mad1 , is a decision of a Division Bench of this Court in a passing-off action. Two plaintiffs brought the action one of whom the first plaintiff was a company carrying on business in London and the second plaintiff was a piece-goods merchant doing business in Madras. The second plaintiff had been purchasing twill from the first plaintiff and importing the same and selling them in Madras. The trade mark on which the twill was sold is 'Diamond'. That was the trade mark designed by the first plaintiff (Company in London) and as far as the business in England was concerned, the said trade mark 'Diamond' belonged to the first plaintiff. However, the first plaintiff had not sold goods in India bearing the said mark. Only the second plaintiff had been purchasing the goods (twill) from the first plaintiff and importing the same to India and selling it under the same mark 'Diamond'. The question arose whether the first plaintiff can maintain an action for passing off against the defendant in that case. The Court held that the first plaintiff cannot maintain the suit, and that only the second plaintiff can. The learned Counsel for the Japanese firm points out that rights of the two plaintiffs inter se had not been decided in that case and, therefore, that is not an authority regarding the question in this case as to who owned the proprietary right in respect of the trade mark 'Sharp' as far as this country is concerned. This contention of the learned Counsel does not appear to be sound as the Court had decided that the first plaintiff was not entitled to maintain the suit as it had never marketed its goods in the Indian market. However the above decision is not applicable to the present case for another reason. That case was in a passing-off action, the same having arisen before the Trade Marks Act, 1940, came into force. In that case the question was not whether the defendant was entitled to registration of the mark. In the present case the Indian firm has to establish a right to have the word 'Sharp' registered as its trade mark. The fact that the mark has not become distinctive of the goods of the Japanese firm (on the ground that the Japanese goods had never come into the Indian market) by itself would not entitle the Indian firm for registration of the mark. Therefore, we think, the above case (Meera Sahib v. Abdul Azeez : AIR1938Mad1 , is not of help to the Indian firm. At the same time, it would not help the Japanese firm either.

22. In Consolidated Foods Corporation v. Brandon and Company : AIR1965Bom35 , an American firm by name Consolidated Foods Corporation had been importing, into India food products and marketing the same under the trade mark 'Monarch'. Such, imports began in 1935, but had to be suspended during the Second World War. It was resumed in 1947 but had to be stopped in 1950 due to import restriction imposed by the Indian Government. In 1957, a company by name Brandon and Company, filed an application for registration of the trade mark 'Monarch' on the footing that it had started using the said mark for its food products from 1951. The Consolidated Foods Corporation opposed registration and that opposition was ultimately sustained by the Bombay High Court in the above case. That was on the ground that it was the Corporation which began using the said trade mark in relation to food products in this country in the first instance and that there was nothing to show that the said Corporation had abandoned the trade mark. This case would in no way help the Japanese firm in the present case, for the simple reason that the Japanese firm had never used the trade mark 'Sharp' in the Indian market, unless it can be held that the Indian firm had been using the trade mark only on behalf of the Japanese firm. The above case proceeds on the footing that the person who uses a particular trade mark in the first instance would be the proprietor of the said mark entitled to registration. As, in the present case, the Japanese firm had never entered the Indian market and had never used the trade mark in relation to its goods, it is the Indian firm who should be considered to own the proprietary right in the mark.

23. Incidentally it may also be noted that for the purpose of claiming proprietorship of a trade it is not necessary that the mark should have been used for a considerable length of time. Even a single actual use with intent to continue such use confers a right to such mark as a trade mark. There can be no doubt in the present case that the Indian firm had been using the trade mark 'Sharp' with intent to continue such use in relation to Transistor Radio sets apart from other goods.

24. Re Application of Vitamins Limited (1955) 3 All E.R. 827 : (1956) R.P.C. 1, is a case where an American Company had been marketing its pharmaceutical goods under the trade mark 'Pabalate'. The said goods had not entered the English market, but there was evidence that the American Company had advertised its goods in England, at least once. An English Company, by name Vitamins Limited, filed an application to register the trade mark 'Pabalate' in its name in England. That was opposed by the American Company and ultimately the Chancery Court upheld the opposition and refused registration in favour of the English Company. Even though in that case, the American goods had not entered the English market as noted earlier, the American Company had advertised its goods under the trade mark 'Pabalate' in England. Further, the American Company itself had originally applied for registration of the trade mark in its name in England though that application had been withdrawn. The Chancery Court held under the circumstances of that case that the American Company had been claiming to be the proprietor of the trade mark 'Pabalate' even very much prior to the English Company applying for registration and that the English Company had no proprietary right in the same. At page 834, Lloyd-Jacob, J., who decided the above case, observed:

A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in my judgment, it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated. Whereas here another party in respect of precisely the same field of activity in commerce or industry had already put forward, by an application to the trade marks registry, a claim to be the proprietor of the identical trademark and had withdrawn the application because of a desire to avoid a controversy over the mark, it seems to me to be straining language to suggest that the party who had by opposition secured that result had, as the result of the withdrawal, acquired proprietary rights.

It may be noted that the English Company had opposed the application originally made by the American Company for registration of the trade mark 'Pabalate' in England. It was after such opposition by the English Company, the American Company withdrew its application. Later the English Company itself filed an application for registration of the said trade mark. It was refused, as already seen on the ground that the English Company had never acquired any proprietary right, in the said trade mark. Mr. Vijayaraghavan, the learned Counsel for the Japanese firm contends that in the above case in spite of the American Company not having established proprietorship in respect of the trade mark 'Pabalate' as far as England was concerned, registration of the said trade mark in the name of the English Company was refused and that, therefore, in the present case even if the Japanese firm has not established a right to have the trade mark 'Sharp' registered in its name in this country, that by itself would not entitle the Indian firm to have the mark registered in its name. But the difference between the above case and the present one is that while in the former the English Company did not acquire proprietorship of the mark 'Pabalate' because of the circumstances in that case, in the present case there are circumstances to indicate that the Indian firm had been using the trade mark 'Sharp' claiming proprietary right thereof. As already noted in the case before the Chancery Division, even though the American Company had not marketed its goods in England it had advertised the goods in that country and had also applied for registration of the trade mark in its own name, very much prior to the English Company applying for the same.

25. In Brown Shoe Company Inc.'s Application (1959) R.P.G. 29, is really a case of copying another mark. There also the controversy was between an American Company and an English Company as far as the English market was concerned. The American Company had been using the trade mark 'Naturalizer' in relation to ladies' shoes. Those shoes Avere very popular in America and certain other countries. However, the goods of the American Company had not entered the English market. An English Company got the trade mark 'Naturalizet' registered in its name in England. The Amercian Company applied for expunction of the said mark from the Register. It was held that the English Company had copied the trade mark from the American Company, and, therefore, the English Company was not entitled to be the proprietor of the mark 'Naturalizet'. It has to be noted that though the American Company had not actually sold its goods in the English market, it had advertised its goods in that market. The American Company had also applied for registration of the mark in England very much prior to the English Company applied for registration and got it registered, though that application had been withdrawn by the American Company. In 1955, when the American Company tried to renew its application for registration of the trade mark 'Naturalizer' in its name, it came to know that the English Company had already registered the trade mark 'Naturalizet' in its name and it was thereafter the application for expunction was filed. It was in these circumstances, it was held that the English Company had copied the trade mark from the American Company and therefore the English Company had not acquired any proprietorship in the mark. This cannot apply to the present case.

26. Blackadder v. Good Reads Machinery Company Incorporated 38 G.L.R. 332, is a case on which the learned Counsel for the Japanese firm placed great reliance. That was a case where an Australian Company by name British-Australian Machinery Company Limited had been importing road-grading machines from America. The American exporters had been using the trade mark 'Winner' as well as 'Champion' for their road-grading machines. The machines imported by the abovesaid Australian Company were 'Winner' machines. However, the Australian Company had been marketing those machines in Australia after removing the name-plate 'Winner' and substituting it with the word 'Champion'. The Australian Company failed and the debenture-holders seized the assets of the said Company. While one Blackadder, one of the debenture-holders, took over the assets of the Company in the tramway, tubes and fittings, and general machinery departments, a company by name Armstrong Holland Limited took over the assets of the abovesaid Australian Company in the road machinery department. Armstrong Holland Limited continued to trade with the American Company and they had been importing 'Winner' road-grading machines but had been marketing them in Australia after replacing the name 'Winner' with the name 'Champion'. Blackadder formed, a partnership with another and got the word 'Winner' registered as his own trade mark in respect of machinery of all kinds. The American Company which had been supplying road-grading machines applied for rectification of the Register contending that Blackadder cannot have the word 'Winner' registered in his name. The contention of the American Company was accepted and rectification ordered by a single Judge of the Australian High Court. An appeal to the Full Court of the High Court of Australia by Blackadder was dismissed.

27. Mr. Vijayaraghavan, learned Counsel for the Japanese firm contends that the above case is on all fours with the present one as in that case also the American Company had no reputation of its own in the Australian market and that the word 'Winner' had not become distinctive of the goods of the American Company and in spite of that the registration of the word in the name of Black-adder came to be expunged. But a careful examination of the facts of the above case reveals several circumstances which are absent in the present case. The question in that case was whether Blackadder and his partner had established a right to the registration of the word 'Winner', or, in other words, whether they were the proprietors of the word 'Winner'. Both Blackadder and hi? partner had been originally working in the British-Australian Machinery Company Limited which had been importing the 'Winner' machines from America and later, Blackadder with his partner had also been employed by Armstrong Holland Limited and in that way, they became intimately acquainted with the business of those Companies and with the trade of the American Company with Australia. They simply appropriated the word 'Winner' which the American Company had used in Australia. It was also found by the learned Judge Starke, J.) of the Australian High Court that the transaction between the American Company and the Australian Company constituted a trade with Australia on the part of the American Company in road-grading machines bearing the words 'Champion' and 'Winner'. It was also found that the American Company had lawfully used the word 'Winner' in Australia in a limited way though it had acquired no exclusive right to its use. It was under the above circumstances it was held that Blackadder and his partner had not established a proprietary right to the mark.

28. Knox, G.J., one of the Judges Who heard the appeal by Blackadder and his partner observed:

The inference which I draw from the facts proved is that the object of the appellant in applying to register the mark now in question was either to obtain the sole right of selling in Australia goods bearing the mark which to his knowledge was used by the respondent or to prevent the respondent from selling, in Australia or for sale on the Australian Market, goods bearing that mark. In those circumstances it appears to me that the decision of my brother Starke, supported, as it is, by the reasoning in In re Rivere's Trade mark (1884) 26 Ch.D 48 is correct.

Therefore, that was not a case where the American Company had nothing to do with the Australian market as far as 'Winner' road-grading machines were concerned. The road-grading machines which were imported into Australia did bear the name 'Winner' though while marketing, the name was changed from 'Winner' to 'Champion'. Therefore the above decision would not help the Japanese firm in the present case.

29. The foregoing discussion will show that the Indian firm had been using the word 'Sharp' as proprietor thereof not only in respect of Inter-communication sets and Radio Amplifiers etc., but also in respect of Transistor Radio sets. It is also clear that the said word had become distinctive of the goods of the Indian firm. The requirements of Section 18(i) land that under Section 9(i) arc therefore satisfied.

30. The only question that remains for consideration is whether the prohibition contained in Section 11(a) of the Act is applicable. In other words, the question is whether the mark is one which would be likely to deceive or cause confusion. In this connection, the learned Counsel for the Japanese firm contends that even though 'Sharp' Radio sets of Japanese firm had not come into the Indian Market they have world wide reputation and, therefore, the registration of the word 'Sharp' in the name of the Indian firm would cause confusion. But we are of the opinion that in a case like this, Section 11(a) of the Act can be invoked to prevent registration of a trade mark only if the goods of the objector had a reputation in this country. In Consolidated Foods Corporation v. Brandon. and Company : AIR1965Bom35 , already referred to regarding the other point, it has been held that for the purpose of Section 11(a) it is necessary that the mark should have attained such reputation among the members of the public as would lead them to associate the mark only with the product of the objector and of no one else. It may be remembered that in that case the dispute was between Consolidated Foods Corporation an American firm, and Brandon and Company Private Limited, a Company doing business in Bombay, regarding the trade mark 'Monarch' in relation to food products. Considering the fact that the said Corporation had imported its goods into India earlier, though after 1950 it could not do so, due to import restriction, and certain other circumstances, it was held that Brandon and Company Private Limited, had not acquired any right of proprietorship in the trade mark 'Monarch' and that, therefore, they were not entitled to have it registered. The said Corporation in its objection had raised various contentions, one of which was that Brandon and Company Private Limited, were not the proprietors of the mark. This was accepted by the Bombay High Court and registration of the mark was refused, Another contention raised by the Corporation was one under Section 11(a) of the Act but that contention was not accepted, the Bombay High Court holding that the Corporation did not adduce evidence to establish the necessary degree of reputation of the mark 'Monarch' in India on the relevant date and that therefore the objection raised under Section 11(a) of the Act was not tenable. This is clearly against the present contention on behalf of the Japanese firm. In the above case, as noted earlier, the Corporation had in fact marketed its goods under the trade mark 'Monarch' prior to 1950, but after that year, as imports have been prohibited, the Corporation's goods had not entered the Indian market. So it was held that the Corporation had not established such reputation in the Indian market which would attract Section 11(a) as a ground to refuse the registration of the trade mark in the name of Brandon and Company, Private Limited. In the present case the goods of the Japanese firm had never come into the Indian market and therefore, there is no question of reputation for its goods in this country.

31. In Brown Shoe Company Inc's Application (1959) R.P.C. 29, which was also noticed for the earlier point, the finding regarding the question of confusion is against the present contention of the Japanese firm. As noticed earlier, the dispute in that case was between an American Company and an English Company regarding the marks 'Naturalizer' and 'Naturlizet' in relation to ladies shoes. Even though the goods of the American Company had not entered the English market, there were circumstances to indicate (as already pointed out) that the English Company had copied the trade mark and that therefore, 'it was not the proprietor thereof. But, on the question whether registration could be refused on the ground of c infusion it was held by the Chancery Court that although advertisements of the ladies shoes of the American Company ('Naturalizer') had appeared in papers circulated in England and was known to certain persons resident in England, there was no ground for rejecting the mark 'Naturlizet' under Section 11(2) of the Trade Marks Act, 1938 (corresponding to Section 11(a), of the Act). This again is clearly against the contention of the Japanese firm in the present case.

32. But in this connection, Mr. Vijayaraghavan, learned Counsel for the Japanese firm relies upon Re-Application of Vitamins Limited (1955) 3 All E.R. 827 : 1956 R.P.C. 1 which again is a case already referred to in respect of the earlier point. In that case again, the pharmaceutical goods of the American Company under trade mark 'Pabalate' had not entered the English market, but advertisements had been made in magazines circulated in England, and there was also the circumstance that the American Company itself had applied for the registration of the word 'Pabalate' in respect of its goods earlier, though that application came to the withdrawn. Apart from holding that the English Company was not the proprietor of the word 'Pabalate' and hence not entitled to registration of the same, regarding the question of confusion, Lloyd-Jacob, J., observed:

Having regard to the international character which medicine and the allied sciences have assumed and increasingly assumed during the last two decades, the Court must be particularly careful to see that in exercising its discretion under the Act the public interest is not in any way imperilled. I am not satisfied that, in allowing to be used by manufactures in this country as a brand name for a pharmaceutical substance a word which is in fact used by an American Corporation in respect of the same material and advertised in journals which on the evidence are received and referred to in this country, the public interest will be best served by permitting registration.

Therefore, it was on the special circumstances of that case that medicine and allied sciences have international character and that the goods of the American Company were also being advertised in journals which were circulated in England, that it was held that Section 11 was attracted. Such special circumstances are not present in this case.

33. Therefore we hold that section 11(a) of the Act is not applicable.

34. The only other contention raised by the learned Counsel for the Japanese firm is under Section 11(e) of the Act. By that provision, a mark, which would otherwise be not entitled to protection in a Court, shall not be registered. From what we said earlier, it will be clear that the above provision is not attracted in respect of the trade mark 'Sharp' and the Indian firm is entitled to have it registered in its name.

35. In the course of the arguments, Section 12(3) of the Act was also referred to and it was contended on behalf of the Indian firm that in any event it was entitled to registration of the mark by virtue of its concurrent use of the trade mark as contemplated under Section 12 (3). But in view of our findings earlier, this question does not arise.

36. Mr. Sastry, learned Counsel for the Indian firm referred to the decisions in Weston Trade Mark (Registration Ch.D.) (1968) R.P.C 167, G. E. Trade Mark (1970) R.P.C. 339 and 'Diehl' Trade Mark (1970) R.P.C. 435, in support of his case that the Indian firm is entitled to registration of the trade mark 'Sharp'. But we are not referring to those decisions in detail as we think it is not necessary. Suffice it to state that those cases are distinguishable on facts from the present case.

37. The result is the Letters Patent Appeal fails and is dismissed. However, there will be no order as to costs.


Save Judgments// Add Notes // Store Search Result sets // Organizer Client Files //