JUDGMENT

S.B. Sinha, J. - Leave granted.

INTRODUCTION

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. BACKGROUND FACTS

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 Goods

Number

Toshiba 160442 5.9.1953 9 Scientific, nautical, surveying &

(LOGO) electrical apparatus, etc.

Tosiba (LOGO) 160443 5.9.1953 11 Installations for cooking,

refrigerating, drying, ventilating, water supply and sanitary purposes

TOSHIBA 273758 26.7.1971 7 Current generators, induction motors

(electrical), electric washing

machines, etc.

TOSHIBA 273759 26.7.1971 9 Various electronics & electrical

goods falling in Cl.9.

TOSHIBA 273760 26.7.1971 11 Various goods including lamps, ovens, water heaters, fans, toasters, cookers, 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.

10. 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 lawyers notice was served upon it, stating:

"The trade mark TOSH