Full Judgment Text
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDCTION
CIVIL APPEAL N1O. 3639 OF 2008
(Arising out of SLP (C) No.5542 of 2006)
Kabushiki Kaisha Toshiba … Appellant
Versus
TOSIBA Appliances Co. & Ors. … Respondents
J U D G M E N T
S.B. Sinha, J.
1. 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
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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
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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.
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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 Clas
Goods
Number
s
Toshiba (Logo) 160442 5.9.1953 9 Scientific, nautical,
surveying & 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
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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.
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 lawyer’s notice was served upon it, stating:
“The trade mark TOSHIBA is such a well known
trade mark in India and abroad that its use or the
use of a phonetic equivalent mark in respect of
electronic and electrical goods would cause
immense confusion and deception amongst the
purchasing public and the trade.
Our clients were surprised when they recently
learnt of the adoption and use of the mark
TOSIBA both as your trade mark and an essential
feature of your trading style in respect of a range
of electrical goods including electric irons.
The adoption of the mark TOSIBA is clearly mala
fide and amounts to infringement of our clients’
various registered trade marks including numbers
160443 and 273760.
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The word TOSIBA is phonetically and visually
similar to our clients’ trade mark TOSHIBA and
by the use of the said mark in respect of electrical
goods, you are likely to cause immense confusion
and deception amongst the purchasing public and
the trade.”
10. Respondent was called upon to desist from using the trademark
TOSIBA in respect of electrical goods including electric irons or any other
goods whatsoever. No reply thereto was given.
PROCEEDINGS BEFORE THE REGISTRAR
11. It, however, filed an application purported to be under Section 46 and
56 of the Act read with Rule 94 of the Rules before the Registrar, Trade
Marks which was marked as Application No. CAL No.573, praying for
rectification of the said registered trade mark No.273758 in Class 7
alleging:
“7. That the petitioners are using the mark
TOSIBA in respect of Domestic Electrical
Appliances viz. Auto Irons, Non-Auto Irons,
Ovens, Toasters, Immersion Rods, Extension
Cords, Table Lamps and Airy Fans etc. in class 9
since the year 1975. The mark in question offends
against the provisions of section of the Trade and
Merchandise Marks Act on the date of
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commencement of the proceedings between the
parties.
8. That the mark sought to be removed was not
on the commencement of the proceedings,
distinctive of the goods of the Registered
proprietor.
9. That the mark also offends Section 11(e) of
the Trade and Merchandise Marks Act, being dis-
entitled to protection in a Court of Law.
10. That the applicants are aggrieved parties as
th
they have been served with a notice dated 24
April 1989 on behalf of the respondents to
discontinue the use of the word TOSIBA which
the petitioners adopted in the year 1975. They
have been threatened with action under various
provisions of Trade and Merchandise Marks Act
and also under Article 36A of the Monopoly and
Restrictive Trade Practices Act, 1969 alleging
unfair trade practices. The respondents have no
business in India.
The threats made were unjustified. That the
petitioners even approached the respondents
attorneys for not to interfere with their long-
standing business, but without any result, hence
the petitioner are the aggrieved party within the
meaning of Section 56 of Trade and Merchandise
Marks Act competent to file the present petition.”
Two other applications were also filed for rectification of two other
trade marks wherewith we are not concerned.
12. Appellant filed a suit in the Delhi High Court against the respondent
praying for a decree for permanent injunction for using the mark TOSIBA
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or any other deceptively similar mark in respect of electrical goods
including electric irons, immersion rods, toasters, table lamps, ovens and
stoves. The said suit is still pending.
13. In its affidavit before the Registrar of Trade Marks, the appellant
contended:
“14. Annexed to my affidavit and marked
Annexure H are extracts from the Import and
Export Policy of the Government of India
(Ministry of Commerce) for the years:
i) April 1985 to March 1988;
ii) April 1988 to March 1991;
iii) April 1990 to March 1992.
Thus, the import and export policies for the period
April 1985 to March 1991 show that electric
motors, compressors and generators fall under
Appendix 3 Part A of the policy which is a list of
limited permissible items for which the import is
not free but only against a licence.
Washing machines being consumer goods fall
under Appendix 2 part B which is the list of
restricted items.
It is, therefore, evident that the import of goods
covered by registration No.273758 is not free but
restricted.”
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14. By reason of an order dated 12.5.1992, the Deputy Registrar of Trade
Marks partially allowed the application for rectification filed by the
respondent being Application No.CAL.573 and directed that the register of
Trade Mark be rectified by deleting the goods ‘washing machines’ and ‘spin
dryers’ from Trade Mark No.273758 in Class 7. Rectification was also
directed on the other applications filed by the respondent being CAL-574
and 575.
APPEAL BEFORE THE HIGH COURT
15. An appeal was preferred thereagainst 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, holding:
“The first point to my mind which should be
disposed of is the point as to the locus standi of
Mr. Gupta’s client. It is the admitted position that
until now the respondents have manufactured and
sold articles only in class 11, and those are
household electrical articles like electric iron, fan
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and toaster. They sell these under the mark
‘TOSIBA’.
It is not that the respondent has manufactured or
sold washing machines or spin dryers at all or
even that they have any finalized plans for so
commencing the manufacture or sale of any of
these items.
In a paper book running to no fewer than 725
pages, not to mention a comparatively slim
supplementary paper book, the only place where a
connection between the respondent and washing
machines or spin dryers is mentioned is at page
542, where it is recorded as stated before the
Deputy Registrar in his order that the respondent
also deals in some goods falling in class 7 such as
washing machines and spin dryers and some other
allied goods. If that statement was made before
the deputy registrar, then that was a misstatement.
XXX XXX XXX
The mark of the appellant ‘TOSHIBA’ and the
status of the said word as a registrable mark is
beyond dispute. It is almost admittedly an
invented word, a hybrid between the name of the
city Tokyo and the name of the company of origin,
Shibaura.
It is also in my opinion beyond dispute that the
mark ‘TOSIBA’ is so similar to the mark
‘TOSHIBA’ as to give the appellant an
indisputable right to call upon the respondent to
cease to use that mark in relation to goods for
which the appellant is registered, in case such
registration can be maintained by the appellant on
the register.”
(emphasis supplied)
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16. However, with regard to the contention of the appellant that the
respondent was not a person aggrieved or that the Registrar should not have
used its discretionary jurisdiction, the learned judge held:
“If a person obtains a registration at a time when
the mark, according to his own estimate, is
economically unusable, then he cannot be said to
have had a bona fide intention at the time of
registration that the mark should be used in
relation to the goods. If, however, he waits and
watches the market of the country in which he
wishes to have registration, and then, as soon as
the restriction is lifted, he obtains registration
without delay, he can indeed then be said to have a
bona fide intention that the goods should be used
in the market in question.
It is possible that if he waits for so long as
that, he will no longer be able to get his
registration at all, for another trader within the
country might well have used up his name by then
for the same goods. This is an unpreventable
hazard. The trade mark law is a national code and
not an international treaty, speaking broadly. If a
country blocks international trade within itself,
international names only cannot be registered and
preserved in the blocked market. This would
mean allowing international names to hold the
market totally without goods, or give international
marks a copyright value, and both these are
impermissible and against the first principles of
trade mark law.
It cannot therefore in my opinion be said
that in 1971 the appllenats had a bona fide
intention that the goods, namely, washing
machines and spin dryers, should be traded in
India under their trade mark ‘TOSIBA’. Without
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the economic restrictions being lifted from the
Indian market, trading, according to themselves,
was and continued to be an unprofitable
proposition. Such lack of intention can be
gathered from the admitted stand taken by the
appellant before me, and in the registry, where it
was the respondent. The onus upon the
respondent in appeal to show such lack of
intention is thus fully discharged.”
The contention of the appellant was rejected, opining:
“Mr. Gupta has conceded even from the time of
the interlocutory application was heard in aid of
this appeal that the order of the Deputy Registrar
is to be so read as to restrict the rectification to the
two items of washing machines and spin dryers
only and it should not be read as the rectification
application succeeding for the entire class.
With recording of such concession, I dismiss the
appeal but I do it on grounds of my own which I
have mentioned above and not necessarily on the
grounds given by the Deputy Registrar. The
respondents would entitle to the costs of this
appeal.”
It was furthermore held that the special circumstances mentioned
under sub-section (3) of Section 46 were not applicable.
17. An intra court appeal was preferred thereagainst. Cross-objections
were also filed by the respondent on the pleas that the mark should also be
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rectified under Section 46(1)(b), i.e., no bona fide use for a continuous
period of five years and one month.
IMPUGNED JUDGMENT
18. By reason of the impugned judgment dated 8.12.2005, the said appeal
was dismissed holding that the respondent was a person aggrieved, stating:
“The purpose of introducing the expression
‘person aggrieved’ in the statute is obviously to
prevent action from persons who are interfering
only from merely sentimental notions or personal
vengeance and act as mere common informers.
But in case where one trader, by means of having a
trade mark wrongly registered in his name,
narrows the area of business open to his rivals, in
that case the rival is a person aggrieved. It may be
that the rival is not immediately carrying on the
trade. But if there is a reasonable possibility for
the rival to carry on that trade in future in view of
his presently carrying on a trade in the same class
of goods then the rival trader is a person
aggrieved. In other words, if a person or a
corporation is in the trade of the same class of
goods along with the company which has got a
mark registered in its name and is thus the
hampered in the possible expansion of his trade in
that case the person or the corporation is a person
aggrieved.’
19. The question as to whether requirements of Section 46(1)(a) of the
Act were fulfilled or not was answered thus :
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“Here the date of registration was 26.7.1971 and
the date of rectification application was 30.5.1989.
In between there has been no use of the concerned
goods by the registered proprietor except one
advertisement which has already not been
accepted by this Court as an instance of use.
Therefore, in the facts of this case, the order of the
Deputy Registrar of rectification by deletion of
two items namely electric washing machine and
spin dryers from the registered Trade Mark
No.273758 in Class 7 goods is quite justified. It
appears that the registration in favour of the
appellant in Class 7 goods was in respect of
various other goods and out of those goods only
two have been deleted.
This is quite permissible and is within the object
and scope of Section 46 of the said Act.”
20. The Division Bench of the High Court did not go into the contention
of the respondent that the appellant was not entitled to any relief in terms of
Section 46(1)(b), stating :
“The learned Counsel for the respondents on the
basis of the cross appeal has urged that the
appellants are not entitled to the relief under
Section 46(1)(b). But in view of the facts of this
case which make the case against the appellants
under Section 46(1)(a) so very clear that this Court
need not decide the said cross appeal in any detail.
This Court is of the view that the decision of the
learned Judge under Section 46(1)(a) was right
and the rectification which has been ordered by
the Registrar cannot be interfered with.”
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CONTENTIONS
21. Mr. F.S. Nariman, learned Senior Counsel appearing on behalf of the
appellant, would urge:
1) Respondent 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.
2) The statutory scheme must be gathered from reading the provisions of
Section 46, 47 and 56 conjointly and so read it would be evident that
as 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.
3) The name ‘TOSHIBA’ being well known and the word being an
innovated one, 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.
22. Mr. Ajay Gupta, learned counsel appearing on behalf of the
respondent, on the other hand, would urge:
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(1) The application for rectification being a composite one being under
both Sections 46 and 56, the respondent was a person aggrieved, as
envisaged under sub-section (2) of Section 56 of the Act.
(2) In any event, the appellant having served the respondent with a notice
of action, it was a ‘person aggrieved’.
(3) The matter having remained pending for 19 years during which
period, the appellant having not been able to obtain any order of stay
from any court and/or having not entered into any arrangement for
using its registered mark in India either by itself or through an Indian
company, the impugned judgment should not be interfered with.
(4) The distinction between clauses (a) and (b) of sub-section (1) of
Section 46 being clear and explicit, it is idle to contend that only
because the respondent’s claim under the latter clause has been
negatived, its claim under clause (a) would also necessary fail.
(5) The provisions of Section 45 of the Act should be kept in mind while
interpreting Sections 46 and 56 of the Act.
Statutory Provsions
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23. Chapter VI of the 1958 Act deals with use of trade mark and
registered users. Section 45 provides for proposed use of trade mark by
company to be formed. Section 46 is in two parts. It is subject to
provisions of Section 47. In terms of the said provision, the registered mark
may be taken off the register in respect of any of the goods for which it was
registered on application made in the prescribed manner by any person
aggrieved on the grounds envisaged either clause (a) or (b). Section 47,
however, provided for a defense registration of well known trade marks;
sub-section (1) whereof reads as under :
“Section 47 - Removal from register and
imposition of limitations on ground of non-use.
(1) A registered trade mark may be taken off the
register in respect of the goods or services in
respect of which it is registered on application
made in the prescribed manner to the Registrar or
the Appellate Board by any person aggrieved on
the ground either--
(a) that the trade mark was registered without any
bona fide intention on the part of the
applicant for registration that it should be
used in relation to those goods or services by
him or, in a case to which the provisions of
section 46 apply, by the company concerned
or the registered user, as the case may be, and
that there has, in fact, been no bona fide use
of the trade mark in relation to those goods or
services by any proprietor thereof for the time
being up to a date three months before the
date of the application; or
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(b) that up to a date three months before the date
of the application, a continuous period of five
years from the date on which the trade mark
is actually entered in the register or longer
had elapsed during which the trade mark was
registered and during which there was no
bona fide use thereof in relation to those
goods or services by any proprietor thereof
for the time being:
Provided that except where the applicant has been
permitted under section 12 to register an identical
or nearly resembling trade mark in respect of the
goods or services in question, or where the
tribunal is of opinion that he might properly be
permitted so to register such a trade mark, the
tribunal may refuse an application under clause (a)
or clause (b) in relation to any goods or services, if
it is shown that there has been, before the relevant
date or during the relevant period, as the case may
be, bona fide use of the trade mark by any
proprietor thereof for the time being in relation
to--
(i) goods or services of the same description; or
(ii) goods or services associated with those goods
or services of that description being goods or
services, as the case may be, in respect of
which the trade mark is registered.”
24. Chapter VII of the Act provides for rectification and correction of the
register. Section 57 confers a power upon the Registrar to cancel or vary
the registration and to rectify the registrar, inter alia, on the ground of any
contravention or failure to observe a condition entered on the register in
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relation thereto. Sub-section (2) of Section 57 provides that any person
aggrieved by the absence or omission from the register of any entry, or by
any entry made in the register without sufficient cause or by any entry
wrongly remained on the register or by any remedy or defect in any entry in
the register may apply in the prescribed manner to the Registrar and the
Tribunal may make such order for canceling or varying the entry as it thinks
fit.
The Central Government, in exercise of its rule making power, made
rules known as Trade Marks Rules, 1959. The Fourth Schedule appended
to the Rules classified different products; Class 7 whereof reads as under:
“THE FOURTH SCHEDULE
Classification of Goods – Names of the Classes
(Parts of an article or apparatus are, in general,
classified with the actual article apparatus, except
where such part constitutes articles included in
other classes).
1 to 6 …
7. Machines and machine tools; motors
(except for vehicles); machine couplings and
belting (except for vehicles); large size
agricultural implements; incubators.”
Statutory Interpretation/Application
20
25. The Act is a complete Code in itself. Section 6 of the Act provides
for the maintenance of a record called register of trademarks.
26. Indisputably, application for registration of the trademark filed by the
appellant herein had been allowed way back in 1971 in respect of the items
mentioned in the registration certificates.
27. Respondent was not in picture at that point of time. It, however,
obtained registration in respect of certain products which fall in Classes 7
and 11.
28. Chapter IV of the Act provides for the effect of registration. When a
trade mark is infringed, the consequences laid down under Section 29 would
ensue. Section 32 provides for the registration to be conclusive as regards
the validity after seven years. Indisputably, the appellant, after expiry of the
validity of a period of seven years, had been getting its registration renewed
from time to time. Chapter V provides for assignment and transmission. It
is not necessary to notice any of the provision contained in the said Chapter
as admittedly, the appellant has not assigned the same in favour of any
person or granted any licence in respect thereof.
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Chapter VI provides for use of trade mark and registered users.
Section 45 provides for proposed use of trade mark by company to be
formed. Chapter VI, inter alia, lays down the guidelines as regards the
mode and manner in which the trade mark can be used. Section 45 provides
for proposed use of trade mark by company to be formed which is indicative
of the fact that the plan to obtain registration of a trade mark may begin
even before the company is formed. Section 47 provides for defensive
registration of well known trade marks; such defensive registration was,
however, not resorted to by the appellant herein.
29. As noticed hereinbefore, appellant contended that the said provision
should also be taken into consideration for proper constructions of Section
46 of the Act to which we shall advert to a little later. Section 48 provides
for the registered users. Whenever the user’s right to use a trademarked is
assigned or a licence is given to any third party, the user by the assignee or
the licensee to the benefit of the register to the person who has obtained the
registration.
30. Apart from Section 46, the power of rectification and correction of
the register is also contained in Section 56 of the Act.
Construction of the Statute
22
31. In the aforementioned backdrop of the statutory provisions, we are
called upon to interpret clauses (a) and (b) of sub-section (1) of Section 46
of the Act.
It is beyond any doubt or dispute that sub-section (1) of Section 46
confers a discretionary jurisdiction on the Registrar. The jurisdiction may
be exercised if any application is filed by a person aggrieved. The said
application has to be filed in the manner prescribed therefor. Whence it is
found that the application is filed by a person aggrieved in the prescribed
manner, the grounds which would be available to the Registrar for exercise
of its discretionary jurisdiction are stated in clauses (a) and (b) of sub-
section (1) of Section 46. We may, at the outset, notice that clauses (a) and
(b) are disjunctive and not cumulative. Recourse may be taken to either of
them or both of them. A combined application even under Section 46 and
56 of the Act is permissible in law.
32. Whereas clause (a) refers to bona fide use of the trade mark; clause
(b) stipulates the period upto a date of one month before the date of
application, a continuous period of five years or longer elapsed during
which the trade mark was registered and during which there was no bona
fide use thereof in relation to those goods by any proprietor thereof for the
time being. Sub-section (3) postulates an exclusion clause as regards
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application of clause (b) of sub-section (1) of Section 46 if any non-use of a
trade mark which is shown to have been due to special circumstances in the
trade or not to any intention to abandon or not to use the trade mark in
relation to the goods to which the application relates.
33. No doubt, a statute is required to be read as a whole, Chapter by
Chapter, Section by Section and clause by clause. However, the purpose
for which clauses (a) and (b) of sub-section (1) of Section 46 on the one
hand and sub-section (3) thereof, vis-à-vis Section 56 of the Act on the
other have been enacted require consideration. The appeared to have been
enacted for different purposes.
ANALYSIS
34. We may now consider the three-fold submission of Mr. Nariman that:
i) the Registrar has not exercised its jurisdiction under Section 56 of the
Act;
ii) the learned Single Judge while exercising its appellate jurisdiction
has found that no case has been made out for invoking clause (b) of
sub-section (1) of Section 46; and
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iii) The trade mark consists of an invented word and is very well known
in the international market.
The basis of the said submission, thus, appear to be two-fold:
(1) As there is no evidence that the appellant had any intention to
abandon the use of the said trademark, as a logical corollary thereof,
the High Court ought to have held that the appellant had the intention
of bona fide use of the trade mark not only at a point of time when an
application for registration was filed but also continuously thereafter;
(2) The provisions of clauses (a) and (b), if read in the aforementioned
context, sub-section (3) of Section 46 would also come into play
particularly when the words ‘non-use’ therein and clause (a) of sub-
section (1) are identical, namely ‘not to have any intention to abandon
or not to use the trade mark in relation to the goods to which the
application relates’ and save and except in clause (a), the word ‘bona
fide’ has been added.
35. We do not find any force in the aforementioned submission. Clauses
(a) and (b) operate in different fields. Sub-section (3) covers a case falling
within clause (b) and not the clause (a) thereof. Had the intention of the
Parliament been that sub-section (3) covers cases falling both under clause
25
(b) and clause (a), having regard to the similarity of the expressions used,
there was no reason as to why it could not be stated so explicitly.
36. If the submission of Mr. Nariman is to be accepted, the result thereof
would be that for all intent and purport, no distinction would exist in the
situations covered by clause (b) and clause (a) except that whereas in the
former no period is mentioned, in the latter a specific period is provided.
37. There may be a case where owing to certain special circumstances, a
continuous use is not possible. The trade mark for which registration is
obtained is used intermittently. Such non-user for a temporary period may
be due to any exigency including a bar under a statute, or a policy decision
of the Government or any action taken against the registrant.
38. Moreover, in cases of intermittent use, clause (b) shall not apply.
[See M/s. Plaza Chemical Industries v. Kohinoor Chemicals Co. Ltd. [AIR
1975 Bombay 191]; Express Bottlers Services Pvt. Ltd. v. Pepsico Inc &
Ors. [1988 (1) CLJ 337]; Bali Trade Mark (Rectification Ch.D [1966 (16)
RPC 387]; Bali Trade Mark (Rectification C.A.) [(1968 (14) RPC 426]; and
“BULOVA” Trade Mark (Rectification Ch.D) [1967 (9) RPC 229].
39. Clause (a) of sub-section (1) of Section 46 takes within its sweep a
situation where registration has been obtained without any bona fide
26
intention on the part of the registrant that it should be used in relation to
those goods by him and that there has, in fact, been no bona fide use.
Clause (a), therefore, provides for more than one contingency. Both the
pre-conditions laid down therein are required to be fulfilled and not the
contingency which is contemplated by clause (1).
Furthermore, it is not a case where the appellant had taken recourse to
Section 47 of the Act.
40. In American Home Products Corporation v. Mac Laboratories Pvt.
Ltd. & Anr. [(1986 (1) SCC 465], this Court categorically noticed the
aforementioned distinction, stating:
“32. Clause (b) of Section 46(1) applies where for
a continuous period of five years or longer from
the date of the registration of the trade mark, there
has been no bona fide use thereof in relation to
those goods in respect of which it is registered by
any proprietor thereof for the time being. An
exception to Clause (b) is created by Section 46
(3). Under Section 46(3), the non-use of a trade
mark, which is shown to have been due to special
circumstances in the trade and not to any intention
to abandon or not to use the trade mark in relation
to the goods to which the application under
Section 46(1) relates, will not amount to non-use
for the purpose of Clause (b).
33. The distinction between Clause (a) and Clause
(b) is that if the period specified in Clause (b) has
elapsed and during that period there has been no
27
bona fide use of. the trade mark, the fact that the
registered proprietor had a bona fide intention to
use the trade mark, at the date of the application
for registration becomes immaterial and the trade
mark is liable to be removed from the Register
unless his case falls under Section 46(3), while
under Clause (a) where there had been a bona fide
intention to use the trade mark in respect of which
registration was sought, merely because the trade
mark had not been used for a period shorter than
five years from the date of its registration will not
entitle any person to have that trade mark taken off
the Register.”
41. The intention to use a trade mark sought to be registered must be
genuine and real. When a trade mark is registered, it confers a valuable
right. It seeks to prevent trafficking in trade marks. It seeks to distinguish
the goods made by one person from those made by another. The person,
therefore, who does not have any bona fide intention to use the trade mark,
is not expected to get his product registered so as to prevent any other
person from using the same. In that way trafficking in trade mark is sought
to be restricted.
PERSON AGGRIEVED
42. The concept of the term ‘person aggrieved’ is different in the context
of Section 46 and 56. Section 46 speaks of a private interest while Section
56 speaks of a public interest. Respondent filed a composite application.
28
Registrar did not think it fit to consider the case from the point of view of
public interest and confined the case to Section 56 of the Act, as would
appear from the fact that while sustaining the respondent’s objection under
Section 46(1) and (b) on the ground that the same had not been used by the
appellant for the last twenty years, it was observed:
“Having held that Section 46(1)(a) is a bar to the
continuation of the impugned mark on the Register
as above, I hold that the entry in respect of those
goods for which the Registered Proprietors could
not prove their user of the Registered Trade Mark
273758 was wrongly made in the Register and is
wrongly remaining on the Register under Section
56(2) of the Act.”
43. Reference to Section 56(2) of the Act at that place appears to be a
typographical mistake. It is palpably wrong. No deliberation was made on
the said question. No fact or contention has been taken note of. There are
no discussions; no findings.
44. The learned Single Judge found that the respondent No.1 had never
manufactured or sold washing machine and spin dryers at all. They did not
have even any plan for commencing the manufacture or sale thereof. It, in
that backdrop, was observed:
29
“If that statement was made before the Deputy
Registrar, then that was a misstatement.”
45. Respondent, however was found to be a person aggrieved upon
taking into consideration a large number of decisions. It was held:
“The respondent is anything but a common
informer or an officious person. It deals in articles
of class 11 and it uses the mark TOSIBA. If it
were to go into the trade of washing machines or
spin dryers, and if the mark TOSHIBA were to
remain on the register, with the appellant as its
proprietor, the respondent could not in that event,
use its mark for washing machines and spin dryer
too. This is enough, I think, to com to the
conclusion without any hesitation that the
respondent had a sufficient and impeachable locus
standi to maintain the rectification application in
the registry.”
46. The learned Single Judge as also the Division Bench referred to a
large number of decisions to hold that the respondent was the person
aggrieved within the meaning of Sections 46 and 56 of the Act. It is beyond
any doubt that the question has authentically been answered by a Division
Bench of this Court in Hardie Trading Ltd. & Anr. v. Addisons Paint &
Chemicals Ltd. [(2003) 11 SCC 92], holding
“30. The phrase "person aggrieved" is a common
enough statutory precondition for a valid
complaint or appeal. The phrase has been
30
variously construed depending on the context in
which it occurs. Three sections viz. Sections 46,
56 and 69 of the Act contain the phrase. Section
46 deals with the removal of a registered
trademark from the register on the ground of non-
use. This section presupposes that the registration
which was validly made is liable to be taken off by
subsequent non-user. Section 56 on the other hand
deals with situations where the initial registration
should not have been or was incorrectly made. The
situations covered by this section include: - (a) the
contravention or failure to observe a condition for
registration; (b) the absence of an entry; (c) an
entry made without sufficient cause; (d) a wrong
entry; and (e) any error or defect in the entry. Such
type of actions are commenced for the "purity of
the register" which it is in public interest to
maintain. Applications under Sections 46 and 56
may be made to the Registrar who is competent to
grant the relief. "Person's aggrieved" may also
apply for cancellation or varying an entry in the
register relating to a certification trademark to the
Central Government in certain circumstances.
Since we are not concerned with a certification
trademark, the process for registration of which is
entirely different, we may exclude the
interpretation of the phrase "person aggrieved"
occurring in Section 69 from consideration for the
purposes of this judgment.
31. In our opinion the phrase "person aggrieved"
for the purposes of removal on the ground of non-
use under section 46 has a different connotation
from the phrase used in section 56 for cancelling
or expunging or varying an entry wrongly made or
remaining in the Register.
32. In the latter case the locus standi would be
ascertained liberally, since it would not only be
against the interest of other persons carrying on
31
the same trade but also in the interest of the public
to have such wrongful entry removed.”
Section 46(1)(b) issue
47. Mr. Gupta would contend that the respondent is entitled to raise the
question of applicability of clause (b) of sub-section (1) of Section 46
although no cross-objection has been filed, on the principles analogous to
Order XLI Rule 33 of the Code of Civil Procedure. Strong reliance in this
behalf has been placed on Ravinder Kumar Sharma v. State of Assam &
Ors. [(1999) (7) SCC 435]. We do not agree.
Mr. Gupta himself submitted that clauses (a) and (b) of sub-section
(1) of Section 46 are in two different water tight compartments. It confers,
therefore, two remedies. The ingredients to establish that a case has been
made out for removal of the registration of the appellant from the register,
thus, are on separate grounds. If the High Court has refused to consider one
of the grounds, its right was affected to urge the applicability of clause (b)
being separate and distinct from the grounds on which contention can be
raised for applying the ingredients of clause (a) being wholly distinct and
different, the principles of Order XLI Rule 33 of the Code of Civil
Procedure, in our opinion, would not be applicable. The causes of action
32
for invoking clauses (a) and (b) are different and, thus, when a composite
application is filed, only different causes of action are joined together. If
one cause of action fails, the remedy by way of appeal thereagainst must be
availed.
48. Mr. Gupta submits that therein the application was filed under
Section 46 and not under Section 56 whereas grounds have been raised both
under Sections 46 and 56 of the Act.
49. A situation of this nature has not been considered in any of the
precedents. The original application filed by the respondent was
maintainable on three counts:
1. Application of Section 46, both under clauses (a) and (b);
2. Application of Section 56; and
3. The common law principle that he had been served with a legal notice
by the appellant desisting from using the word TOSIBA.
50. It is difficult to hold that only because respondent had not been able
to prove one of the grounds, namely, applicability of Section 56 of the Act,
it loses its locus also. It would continue to be a person aggrieved even
within the purview of Section 46 of the Act as it was slapped with a notice
33
of action and it had a cause of action. It had a remedy. It invoked the
jurisdiction of the Registrar on a large number of grounds. One of it was
accepted, others were not.
51. The petition, therefore, which was maintainable, did not cease to be
so particularly when the respondent not only faced with a legal action but,
in fact, later on a suit has also been filed by the appellant against it. We
would leave the question at that.
Exercise of Discretional jurisdiction
52. This brings us to the question as to whether it was a fit case where the
Registrar and consequently the High Court should have exercised its
discretionary jurisdiction.
Sub-section (2) of Section 109 provides for an appeal from any order
or decision of the Registrar under the Act or the Rules made thereunder. An
appeal is to be heard by a learned Single Judge. A further appeal is
provided before a Division Bench in terms of sub-section (5) of Section 109
of the Act. Appellate jurisdiction of the High Court is not restricted or
limited. Sub-section (6) of Section 109 stipulates that the High Court shall
have the power to make any order which the Registrar could make under the
34
Act. In other words, if the Registrar exercises a discretionary jurisdiction,
the High Court while exercising its appellate jurisdiction would continue to
do so. The High Court having a 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 also arrive at its own finding on the
basis of the materials on record.
53. For the said purpose, the basic admitted fact could have been taken
into consideration. It may be true that the appellant whether from the date
of registration, or from the date of order of rectification or even a post
rectification period did not use the registered trade mark. It did not enter
into any collaboration agreement with an Indian company. It did not grant
any licence to any other person to use the trade mark.
We may, however, notice that at least in the year 1985 it had issued
an advertisement before any controversy arose. It renewed the registration
every seven years. Its registration stands extended upto 2016 A.D. It
specifically brought to the notice of the Registrar that it had been
maintaining service centres in India in respect of washing machines, stating:
“Thus, to summarize:
35
(a) TOSHIBA has several joint venture agreements in India,
for various products including VCRS, colour picture
tubes, batteries. etc.
(b) TOSHIBA has technical collaboration agreements for
manufacture of various products in India including body
scanners, ultra sound equipments, PIP televisions etc.
(c) TOSHIBA has several service centres in India in the
cities of New Delhi, Bombay, Madras, Calcutta, Baroda,
Bhopal, Cochin, Kerala and Bangalore for repairing
various electronic and electrical products including
televisions, VCRS, ovens, music systems, washing
machines etc.
(d) TOSHIBA has sold several goods in India under the
trade mark TOSHIBA including electric motors and
accessories, generators, fax machine, whole body C.T.
scanners & ultrasound equipment, circuit breakers,
transistors, integrated circuits, colour TV sets,
engineering, samples and spare parts for televisions,
VCRs, cassette recorders, microwave equipment and
various other goods to actual users and authorized
service centres.”
The learned Single Judge also noticed the said contention in the
following terms:
“I come now to the two limbs of Section 46(1)(a).
I propose to take up first the limb regarding use of
the mark in relation to washing machines and spin
dryers upto a date when one month prior to the
rectification application.
The only evidence of use of the mark, produced by
the appellant, if use it can be called is at page 190
of the paper-book which is an advertisement of a
freezer and a washing machine of Toshiba
36
th
published on the 27 August 1985 in the Indian
Express, New Delhi, also mentioning therein
certain service centres.
Now, this is no use of the mark in relation to the
goods within the meaning of the Trade Marks
Act.”
The Division Bench also did so, stating:
“On the merits the learned Judge also found and
this has not been disputed in appeal that the only
evidence of the use of the registered mark
produced by the appellant is an advertisement of a
freezer and washing machine of Toshiba published
th
on 27 August, 1985 in the Indian Express, New
Delhi and in that advertisement there was mention
of five service centres. The learned Judge also
found that such a solitary advertisement is not use
of the mark in relation to the goods within the
meaning of Section 2(2)(b) of the Act. The
learned Judge found that when there are no goods
at all in physical existence, there can be no use of
the mark in relation to those goods. The learned
Judge also found that however, big or famous the
establishment of the appellant may be, the use of
the mark must be made in India and not abroad
and that mere use of the mark for one
advertisement is insufficient as use otherwise such
a use may amount to trafficking in trade mark.”
54. Appellant had to maintain the service centres because although they
were not in a position to manufacture washing machines or spin dryers or
market the same because of the ban imposed by the Central Government,
37
but it had been rendering the services to those who had been importing the
said machines. On the one hand, appellant had not been using its registered
trade mark effectively but on the other hand there was a finding that it did
not intend to abandon the said right. It intended to enforce its right under
the Act as against the respondent, suit was filed by it as far back as in the
year 1990. Mr. Gupta commented that the very fact that the appellant did
not obtain any order of injunction as against the respondent for more than
17 years itself indicates that it was not serious in pursuing its case before the
High Court.
55. This is one side of the picture. The other side is that there has been
no injunction as against the respondent. It was free to market its products in
the name of TOSIBA. It had also, however, not been manufacturing
washing machine and spin dryers. A finding of fact has been arrived at by
the learned Single Judge, which has not been overturned by the Division
Bench that the respondent never had any intention to manufacture the said
goods.
The balancing act between the user of registered trade mark and non-
user should be such which leads to the possibility of neither of the parties
being injured. The learned Single Judge has also held :
38
“The mark of the appellant ‘TOSHIBA’ and the
status of the said word as a registrable mark is
beyond dispute. It is almost admittedly an
invented word, a hybrid between the name of the
city Tokyo and the name of the company of origin
Shibaura.
It is also in my opinion beyond dispute that the
mark ‘TOSIBA’ is so similar to the mark
‘TOSHIBA’ as to give the appellant an
indisputable right to call upon the respondent to
cease to use that mark in relation to goods for
which the appellant is registered, in case such
registration can be maintained by the appellant on
the register.”
56. There was delay on the part of the respondent in filing the application
under Section 46 of the Act. The delay, if any, on the part of the appellant
did not cause any harm to the respondent. It had been using the word
TOSIBA for such a long time without in any way being obstructed to do so
by reason of an order of the Court or otherwise.
57. In the matter of The Trade Mark No.70,078 of Wright, Crossley, and
Co. [1898) 15 RPC 131], it was stated:
“I think, notwithstanding what was said in that
case, and has been said in other cases dealing with
Trade Marks , that an applicant in order to show
that he is a person aggrieved, must show that in
some possible way he may be damaged or injured
if the Trade Mark is allowed to stand; and by
39
‘possible’ I mean possible in a practical sense, and
not merely in a fantastic view.”
58. It is this aspect of the matter which has been missed by the learned
Single Judge and the Division Bench of the Calcutta High Court.
59. We, therefore, are of the opinion that on this short ground, the
impugned judgment cannot be sustained. It is set aside accordingly. We
would, however, request the Delhi High Court to consider the desirability of
disposing of the suit filed by the appellant against the respondent as
expeditiously as possible. The appeal is allowed. No costs.
……………..…………J.
[S.B. Sinha]
.………………….……J.
[Lokeshwar Singh Panta]
New Delhi
May 16, 2008