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2005 Supreme(Cal) 729
High Court Of Calcutta
Asok Kumar Ganguly, Tapan Kumar Dutt
KABUSHIKI KAISHA TOSHIBA - Appellant
Versus
TOSHIBA APPLIANCES CO. - Respondent
Appeal 1030 Of 1993
Decided On : 12/08/2005
A.K.GUPTA, A.SARKAR, BHASKAR SEN, BISWARUP DAS GUPTA, G.CHAKRABORTY, P.Basu
Headnote:
TOSHIBA - TRADEMARK - SUIT FOR INFRINGEMENT AND PASSING OFF - RECTIFICATION OF REGISTER - LOCUS STANDI - BONA FIDE USE - SPECIAL CIRCUMSTANCES - BURDEN OF PROOF - INTERPRETATION OF SECTIONS 46 AND 56 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.
Fact of the Case:
The appellant, a Japanese company, registered the trademark 'Toshiba' in 1971 for various electrical goods, including washing machines and spin dryers. The respondent, an Indian company, started using the mark 'Tosiba' for electrical appliances in 1975. The appellant filed a suit for infringement and passing off in the Delhi High Court and also applied for rectification of the trademark register under sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. The Deputy Registrar of Trade Marks allowed the rectification application and deleted 'electric washing machines and spin dryers' from the appellant's registered trademark. The appellant challenged this order before the High Court.
Finding of the Court:
The High Court held that the respondent had the locus standi to file the rectification application as it was a person aggrieved within the meaning of sections 46 and 56 of the Act. The Court also held that the appellant did not have the bona fide intention to use the trademark in relation to the goods for which it was registered and that the only intention of the appellant company was to block the register of trademarks. The Court further held that the appellant was not entitled to the benefit of special circumstances under section 46(3) of the Act.
Issues: 1. Whether the respondent had the locus standi to file the rectification application? 2. Whether the appellant had the bona fide intention to use the trademark in relation to the goods for which it was registered? 3. Whether the appellant was entitled to the benefit of special circumstances under section 46(3) of the Act?
Ratio Decidendi: 1. The expression 'person aggrieved' in sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 should be given a liberal interpretation. A person who is in the same trade as the person who has registered the trademark and if such trademark remains on the register it might limit the legal rights of the applicant to do something which, for the existence of the mark upon the register, he cannot lawfully do, it appears that the person has a locus standi to be heard as a person aggrieved. 2. Bona fide use of a trademark means use in the ordinary course of trade and not merely for the purpose of registering the mark or preventing others from using it. In the present case, the appellant had only used the trademark once in an advertisement in 1985, which was not sufficient to constitute bona fide use. 3. The benefit of special circumstances under section 46(3) of the Act is available only in cases where the registered proprietor was prevented from using the trademark due to circumstances beyond his control, such as import restrictions. In the present case, the appellant was aware of the import restrictions at the time of registration of the trademark and therefore, could not claim the benefit of special circumstances.
Final Decision: The appeal was dismissed and the order of the Deputy Registrar of Trade Marks was upheld.
( 1 ) THIS is an appeal from the judgment and order passed by a learned Single Judge on the appeal filed by the appellant under section 109 of the Trade And Merchandise Marks Act, 1958 from the order of the Deputy Registrar of Trade Marks, Calcutta.
( 2 ) THE relevant facts of the case are that the appellant is a company incorporated under the laws of Japan and carries on business in various electronic and electrical goods. The appellant claims to be the proprietor of the registered trade mark Toshiba having trade mark No. 273758 in respect of class 7 goods. Such registration is dated 26th July, 1971 and is in respect of current Generators, Induction Motors (Electric), Electric Washing Machines, compressors (Machinery), Electrical Tool Set consisting of Electric Drills (Machines), Spin Dryers and Can Openers.
( 3 ) THE respondent Tosiba Appliances Company Ltd. , an Indian company, claims to have been carrying on business in various electrical appliances and have been selling Auto Irons, Toasters, Immersion Rods, Extension Cords, Table lamps, Airy Fans under the trade mark Tosiba since 1975. It is claimed that for the years 1985, 1986, 1987, 1988 and 1989 advertisement expenses incurred by the respondent in connection with its business are as follows: 72,750. 00 "year ending 31st March, 1985
Year ending 31 st March, 1986 Year ending 31 st March, 1987 Year ending 31 st March, 1988 Year ending 31 st March, 1989
89,958. 00
1,27,606. 00
1,19,878. 00
1,02,380. 00"
( 4 ) THE above figures are certified by the Chartered Accountant of the company.
( 5 ) THE sale figures of the respondent company for the financial years 1984 - 85 to 1989 - 90 are as follows:
"1984-85 52,29,506=05 1985-86 1,02,69,697=18 1986-87 1,11,88,182=05 1987-88 1,11,38,966=96 1988-89 1,31,36,354=22 1989-90 2,78,01,387=52"
( 6 ) IT has been alleged by the appellant that the products in which the respondent company deals are class 11 goods and it does not deal in any class 7 goods.
( 7 ) SOMETIME in the month of April, 1989 the appellant company served a legal notice of infringement and passing off in respect of their registered trade mark on the respondent company. In the said notice it was alleged by the appellant that it was surprised to see the use of the mark Tosiba both as a trade mark and as an essential feature of the trading style of the respondent in respect of various range of electrical goods including electric irons. It was also alleged that the adoption of that trade mark amounts to infringement of the petitioner's trade mark inasmuch as the word "tosiba" is phonetically and visually similar to the appellant's trade mark "toshiba". As such, the appellant called upon the respondent to immediately desist from using the trade mark tosiba in respect of electrical goods including electric irons or any other goods within a period of 20 days from the date of the notice and failing which the appellant shall institute appropriate legal proceedings against the respondent.
( 8 ) AFTER receiving the said notice, the respondent on 30th May, 1989 filed an application for rectification and removal of the trade mark of the appellant from the trade mark register bearing trade mark No. 273758 in class 7 goods. The said application was filed under sections 46 and 56 of the Trade and merchandise Marks Act, 1958 (hereinafter referred to as the said Act) read with the Rule 94 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as the said rules ).
( 9 ) THEREAFTER, a suit was filed by the appellant alleging infringement against the respondent in Delhi High Court sometime in the month of April, 1990. The said suit was for permanent injunction against the respondent and restraining it from causing any infringement of registered trade mark, passing off, rendition of accounts and so on. This Court has not been categorically told by the appellant about the fate of the said suit.
( 10 ) ON the application for rectificat
