India: Toshiba Moves to SC: Appeal Allowed

Last Updated: 2 September 2008

Toshiba is one of the largest manufacturers of Heavy Electrical apparatus in Japan. The establishment started in the name of Shibaura Engineering Works in the year 1857 and later changed its name to Kabushiki Kaisha Toshiba (for short, TOSHIBA).They adopted the mark TOSHIBA in which `TO' was taken from the Tokyo and `SHIBA' was taken from the word Shibaura. Pursuant to such a unique adoption and acquiring repute, Toshiba moved to the Supreme Court to vouch their rights vide Kabushiki Kaisha Toshiba v. TOSIBA Appliances [2008 (37) PTC 394 (SC)]

TOSIBA Appliances, an Indian company 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.

Toshiba stated that they had acquired about 35 trademark registrations in India. The period of seven years expired in 1978. They contended that 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, and the mark stands registered until 2016.

On the premise that TOSIBA 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. Accordingly, proceedings took place forth the Deputy Registrar of Trade Marks. Following this, a suit before the Delhi High Court was filed, that prayed for a decree for permanent injunction for using the mark TOSIBA or any other deceptively similar mark in respect of a range of electrical goods. The said suit is still pending. Deputy Registrar of Trade Marks partially allowed the application for rectification filed by the respondent.

An Appeal against the order of the Deputy Registrar was preferred 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.

Forth the Supreme Court, the Counsel appearing on behalf of the Toshiba urged that Tosiba having not been dealing with either washing machine or spin dryer was not a `person aggrieved' within the meaning of Section 46 of the Act. Further, he contended that the statutory scheme must be gathered from reading the provisions of Section 46, 47 and 56 conjointly and would be evident that as the on doing so, the appellant having been found to have abandoned its right to continue to be registered, it should have been held that the requirements under Section 46(1)(a) have also not been fulfilled. They also raised contentions with respect to TOSHIBA being a well-known and innovated word and stated that although not directly but the spirit of the provisions of Section 47 should have been considered by the Registrar in exercise of its discretionary jurisdiction under the Act, particularly when no public interest was found to be involved.

The counsel on behalf of TOSIBA on the other hand, retorted by averring that the application for rectification being a composite one both Sections 46 and 56, the respondent was a person aggrieved, as envisaged under sub-section (2) of Section 56 of the Act. Further, they asserted on the inability of Toshiba to obtain a stay during the pendency of the suit, as also the interpretation of the provisions enshrined.

The Supreme Court commented that in the event of no evidence being placed on record to depict Toshiba's intention to abandon the use of the said trademark, the High Court ought to have held that Toshiba had the intention to bona fide use the trade mark not only at a point of time when an application for registration was filed but also continuously thereafter. The Supreme Court also duly analyzed the various statutes and provisions quoted by the parties, whiling turning its attention to cited case laws.

The Supreme Court opined that the concept of `person aggrieved' is different from that enshrined in Section 46 and 56. Section 46 speaks of a private interest while Section 56 speaks of a public interest. Respondent filed a composite application. The Court also opined that merely because Tosiba could not prove one of its grounds, namely as under Section 56, it could not be held that it lost its locus as well. They opined that in view of Section 46, Tosiba would continue to be a person aggrieved. The Court stated that the petition, therefore, which was maintainable, did not cease to be so when Tosiba was not only faced with a legal action but, in fact, later filed a suit against Toshiba as well.

On the issue of the High Court exercising discretional jurisdiction, they opined that the High Court having been vested with plenary jurisdiction, thus, was not only entitled to take into consideration the materials placed on record as also the finding of the Registrar, but it could have also arrived at its own finding on the basis of the materials on record. The Court held that the impugned judgment was unsustainable and accordingly allowed the appeal.

© Lex Orbis 2008

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions