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.

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