Supreme Court of India
KABUSHIKI KAISHA TOSHIBAversusTOSHIBA APPLIANCES CO. AND ORS .
- Citation
- 2008 INSC 726
- Decided
- 16 May 2008
- Disposal
- Appeal(s) allowed
- Bench
- S B SINHA
Holding
The Court held that the respondent was a person aggrieved and that the appellant’s registration failed to meet the bona‑fide intention requirement under s.46(1)(a); therefore the rectification order deleting washing machines and spin dryers from the TOSHIBA registration was valid.
Summary
Kabushiki Kaisha Toshiba (the appellant) held a registration for the mark TOSHIBA covering washing machines and spin dryers. The Indian respondent, using the similar mark TOSIBA for electrical appliances, applied to the Registrar for rectification of the registration under sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. The Registrar ordered deletion of washing machines and spin dryers from the registration, a decision upheld by the Calcutta High Court in part. The appellant challenged the order, arguing that the respondent was not a "person aggrieved" and that the appellant had a bona‑fide intention to use the mark despite a government ban. The Supreme Court held that the respondent was a person aggrieved, that clauses (a) and (b) of s.46(1) are distinct and can be invoked together, and that the appellant lacked a genuine intention to use the mark for the goods in question. Consequently, the rectification order was affirmed and the appeal was allowed.
Issues considered
- The respondent's status as a "person aggrieved" under s.46 and s.56 of the Trade and Merchandise Marks Act, 1958.
- Whether clause (a) of s.46(1) requiring bona‑fide intention to use the mark is satisfied by the appellant.
- Whether clause (b) of s.46(1) concerning continuous non‑use for five years applies, and the relevance of the s.46(3) exception.
- The permissibility of a composite application under s.46 and s.56.
- The scope of the Registrar's and High Court's discretionary jurisdiction in rectifying the register.
- The effect of the government ban on the appellant's use of the mark and whether it constitutes a "special circumstance" under s.46(3).
- The plenary nature of the High Court's appellate jurisdiction under s.109 of the Act.
Legislation cited
- Trade and Merchandise Marks Act, 1958s. 109, s. 45, s. 46, s. 47, s. 56, s. 57
Subjects
trade markrectificationnon‑useperson aggrievedbona fide intentionsection 46section 56section 109India
Judgment
ec [2008] 9 S.C.R. 670
fe sr KABUSHIKI KAISHA TOSHIBA ...
v
TOSHIBA APPLIANCES CO. AND ORS .
.A (Civil Appeal No.3639 of 2008)
m
.9·.: MAY 16, 2008
@
91 I-
lS.B. SINHA AND LOKESHWAR SINGH PANTA, JJ.]
-i?.(
ni TRADE AND MERCHANDISE MARKS ACT, 1958:
21
-io ss. 46 and 56 - Application for rectification of registered
§ f'(ff!de mark - Trade mark sought to be rectified, being renewed
_frfym time to time - Company maintaining service centers in
~ia - No intention on its part to abandon the right - Suit filed
Jilljainst applicant - No injunction against applicant granted -
tf.pp/icant not manufacturing relevant items - HELD: There
@ was delay on part of applicant in filing application - Applicant
did not show as to how it would be injured if trade mark was
'fillowed to stand - Suit to be decided expeditiously - Trade
Mark and Merchandise Marks Rules, 1959 - r94 - Delay/
-
/aches.
E bt s.23 - Registration of trade mark - Purpose of - Ex-
plained.
ss.46 (1) (a) and (b), 46 (3) and 56 - Applicability of -
Explained.
•
F ss. 46 and 56 - Application for rectification of registered
-.
trade mark - 'Aggrieved person' - Explained - In instant case
applicant was an 'aggrieved person' and application was main-
tainable uls 46 - Party
G ss. 109 - Appellate jurisdiction of High Court - Scope of
- Explained.
WORDS AND PHRASES: y
'Aggrieved person' - Connotation of in the context of s. 46 >--
H 670
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 6"11
APPLIANCES CO. AND ORS .
..,
) of Trade and Merchandise Marks.Act, 1958. A
The appellant company, which had adopted the mark
TOSHIBA, obtained, in the year 1971, trade mark registra-
tion No.273758 under the Trade and Merchandise Marks
Rules, 1959, in respect of electrical appliances including
washing machines, spin dryers etc. It served a notice B
upon the respondent, an Indian company, carrying on
business of marketing various electrical appliances un-
'r
der the trademark 'TOSIBA,' calling upon it to desist from
using the said trademark in respect of electrical goods
including electric iron or any other goods whatsoever. The c
respondent in turn filed Application No. CAL No. 573 pur-
ported to be u/ss 46 and 56 of the Trade and Merchandise
Marks Act, 1958 read with Rule 94 of the Rules, before the
Registrar, Trade Marks seeking rectification of the regis-
tered trade mark no.273758 in respect of items covered in D
Class 7 of the Fourth Schedule to the Rules, alleging that
.. it wasusing the mark 'TOSIBA' in respect of Domestic
Electrical Appliances viz., auto irons, etc. covered in Class
9 of the Fourth Schedule to the Rules since the year 1975
and the mark in question offended the provisions of the E
Act; that the mark sought to be removed was not on the
commencement of the proceedings distinctive of the
goods of the registered proprietor. The respondent also
averred that it was an aggrieved party as it was served
r with a notice by the appellants to discontinue the use of F
the word 'TOSIBA' which the respondent adopted in 1975.
It filed two more applications bearing CAL No. 574 and
CAL No. 575. The a~pellant also filed a suit in the High
Court praying for a decree for permanent injunction re-
straining the respondent from using the mark 'TOSIBA'
G
or any other deceptively similar mark in respect of electri-
cal goods including electric irons, immersion rods, toast-
~
ers, table lamps, ovens and stoves. The Deputy Registrar
of Trade Marks partly allowed Application No. CAL No. 573
filed by the respondent and directed .that the register of
H
672 SUPREME COURT REPORTS [2008] 9 S.C.R.
A 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 CAL No. 574 and CAL No. 575. The appellant
filed appeals before the High Court. The appeal arising
B out of CAL no. 573 was allowed partly by the Single Judge
upholding the order of the Deputy Registrar so far as the
application related to s. 46 (1) (a) of the Act. But the plea of
~
the appellant was rejected as regards s. 46 (1) (b). The
intra-court appeal filed by the appellant was dismissed
c by the Division Bench of the High Court.
In the instant appeal, it was contended for the appel-
lant that the respondent having not been dealing with ei-
ther washing machine or spin dryer, was not a 'person
aggrieved' within the meaning of s. 46 of the Act; and the
D name 'TOSHIBA' being well known and the word being
an innovated one, although not directly, but the spirit of
the provisions of s. 47 of the Act should have been con-
•
sidered by the Registrar in exercise of his jurisdiction
under the Act.
E Allowing the appeal, the Court
HELD: 1.1 The intention to use a trade mark sought
to be registered must be genuine and real. The person,
who does not have any bona fide intention to use the trade
F mark, is not expected to get his product registered so as
y
to prevent any other person from using the same. In that
way trafficking in trade mark is sol!ght to be restricted.
[para 41] (696-C-D]
1.2 In the instant case, the appellant had obtained
G registration of trade mark in 1971 in respect of certain
products falling in Classes 7 and 11 of the Fourth Sched-
y
ule to the Trade and Merchandise Marks Rules, 1959 and
mentioned in the registration certificates. The respondent
was not in picture at that point of time. The appellant, af-
H ter expiry of the validity of a period of seven years, has
•
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 673
APPLIANCES CO. AND ORS.
~
been getting its registration renewed from time to time and A
the same stands extended upto 2016. The appellant has
not assigned the same in favour of any person or granted
any licence in respect thereof. It specifically brought to
the notice of the Registrar that it had been maintaining
service centres in India in respect of washing machines. B
Though the appellant was not in a position to manufac-
ture washing machines or spin dryers or market the same
~
because of the ban imp9sed by the Central Government,
but it had been rendering the services to those who had
been importing the said machines. Although the appel- c
lant had not been using its registered trade mark effec-
tively yet, there is a finding that it did not intend to aban-
don the said right. It intended to enforce its right under
the Act as it had filed a suit against the respondent as far
back as in the year 1990. [Paras 26, 27, 28, 53 and 54] [691-
D
B,C,E, 701-A-C, 703-A-C]
2.1 In an application filed in the prescribed manner by
a person aggrieved, the grounds available to the Registrar
for exercise of discretionary jurisdiction are as stated in
clauses (a) and (b) of sub-section (1) of Section 46 of the E
Trade and Merchandise Marks Act, 1958. Clauses (a) and (b)
are disjunctive and not cumulative. Recourse may be taken
to either of them or both of them. [para 31] [962-E & F]
2.2 A combined application even under Sections 46
r
and 56 of the Act is permissible in law. No doubt, a statute F
is required to be read as a whole. 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-a-vis
Section 56 of the Act, on the other, have been enacted,
require consideration. They appear to have been enacted G
for different purposes. Clauses (a) and (b) of Sub-Section
(1) of s.46 operate in different fields. Sub-section (3) of
S.46 covers a case falling within clause (b) and not clause
(a) of s.46 (1 ). There may be a case where owing to cer-
tain special circumstances, a continuous use is not pos- H
674 SUPREME COURT REPORTS [2008] 9 S.C.R.
~
A sible. 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 stat-
ute, or a policy decision of the government or any action
taken against the registrant. Moreover, in cases of inter-
B mittent use, clause (b) shall not apply. [Para 33, 35, 37
and 38) [692-E,F & G; 693-B & C; 694-C,D,F & G]
Mis. Plaza Chemical Industries v. Kohinoor Chemicals f
Co. Ltd. AIR 1975 Bombay 191; Express Bottlers Services
Pvt. Ltd. v. Pepsico Inc & Ors. 1988 (1) CLJ 337; referred to.
c Bali Trade Mark (Rectification Ch.D 1966 (16) RPC 387; Bali
Trade Mark (Rectification C.A.) 1968 (14) RPC 426; "BULOVA"
Trade Mark (Rectification Ch.D) 1967 (9) RPC 229; and
American Home Products Corporation vs. Mac Laboratories
Pvt. Ltd. & Anr. 1986(1) SCC 465 - referred to.
D
2.3 Clause (a) of sub-section (1) of Section 46 takes
within its sweep a situation where registration has been
obtained without any bona fide 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
E fide use. Clause (a), therefore, provides for more than one
contingency. Both the pre-conditions laid down therein
are required to be fulfilled. Furthermore, it is not a case
where the appellant had taken recourse to Section 47 of
the Act. [para 39) [695-A, B & C)
F
2.4 Clauses (a) and (b) of sub-section (1) of Section
46 are in two different water tight compartments. It con-
fers, therefore, two remedies. The ingredients to estab-
lish that a case has been made out for removal of the reg-
istration of the appellant from the register, thus, are on
G
separate grounds. If the High Court has refused to con-
sider one of the grounds, applicant's 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
H
KABUSHIKI KAISHA TOSHIBA v TOSHIBA @-§
APPLIANCES CO. AND ORS.
wholly distinct and different, the principles of Order Xtf/1;
Rule 33 of the Code of Civil Procedure, would not be 4~r
plicable. The causes of action for invoking clauses (a) ariJ
(b) are different and, thus, when a composite application
is filed, only different causes of action are joined togethe~
If one cause of action fails, the remedy by way of appeal ~
thereagainst must be availed. [para 47] [699-C,D & E]
srlt
3.1 The concept of the term 'person aggrieved' is dffrt
ferent in the context of Section 46 and 56. Section Mt
speaks of a private interest while Section 56 speaks of;~
public interest. Respondent filed a composite applicatio.E1:, 2
Registrar did not think it fit to consider the case from t"1Rl
point of view of public interest and confined the case :#Pl
Section 46 of the Act. Reference to Section 56(2) of tl.iw.t
Act in his order appears to be a typographical mistake~n.t. D
is palpably wrong. No deliberation was made on the saj~ LJ'
question. No fact or contention has been taken note of.
There are no discussions; no findings. Respondent, how-
ever, was found to be a person aggrieved upon takirijf
into consideration a large number of decisions. The Singf&
Judge as also the Division Bench of the High Court rW-1 E3
ferred to a large number of decisions to hold that the rd~
spondent was the person aggrieved within the meanin~
of Sections 46 and 56 of the Act. [Paras 42, 43, 45 and 4i!l,
[696-E; 697-A,D & G] sC!
rla :;i
Hardie Trading Ltd. & Anr. v. Addisons Paint & Cherwif F
cats Ltd. (2003) 11 sec 92 - relied on
3.2 It cannot be said that only because respondenit
had not been able to prove one of the grounds, namety,1
applicability of Section 56 of the Act, it loses its locus alS&lfl (]
It would continue to be a person aggrieved even within'
the purview of Section 46 of the Act, as it was slappim,
with a notice of action and it had a cause of action. It ha:A,
a remedy. A suit was also filed by appellant against it. :ltt
invoked the jurisdiction of the Registrar on a large nulljrf ilif
676 SUPREME COURT REPORTS [2008] 9 S.C.R.
A ber of grounds. One of it was accepted, others were not. •
The petition, therefore, was maintainable. [paras 50 and
51] [700-B & C]
Ravinder Kumar Sharma V State of Assam & Ors. (1997)
7 SCC. 435 - Distinguished.
IB
4. Appellate jurisdiction of the High Court u/s 109 of
the Act is not restricted or limited. Sub-section (6) of Sec-
f
ti on 109 of the Act stipulates that the High Court shall have
the power to make any order which the Registrar could
•C make under the Act. The High Court having a plenary ju-
risdiction, thus, was not only ent.itled to take into consid-
eration the materials placed on record and the finding of
the Registrar, but it could also arrive at its own finding on
the basis of the materials on record. For the said purpose,
·the basic admitted fact could have been taken into con-
D
sideration. [par.as 52 and 53] [700-F,G & H; 701-A]
5.1 There has been no injunction as against the re-
spondent. It was free to market its products in the name
of TOSIBA, but, it had not been manufacturing washing
E machine and spin dryers. A finding of fact has been arrived
at by the Single Judge, which has not been overturned by
the Division Bench that the respondent never had any in-
tention to manufacture the said goods. The balancing act
between the user of registered trade mark and non-user
F should be such which leads to the possibility of neither of
..
the parties being injured. [ para 55] [703-E & F]
5.2 There was delay on the part of the respondent in
filing the application under Section 46 of the Act, The de-
lay, if any, on the part of the appellant did not cause any
G 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. The Single Judge and the Division Bench have
not considered that the respondent did not show as to
H how it would be damageri or injured if the Trade Marr. is
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 677
APPLIANCES CO. AND ORS. [S.S. SINHA, J.]
>allowed to stand. The impugned judgment cannot be sus- A
tained. It is set aside accordingly. The High Court would
consider the desirability of disposing of the suit filed by
the appellant against the respondent as expeditiously as
possible. [ paras 56, 57 and 58] [704-8,C,D,E & F]
The Trade Mark No. 70, 078 of Wright, Crossley, and 8
Co. (1898) 15 RPC 131 - referred to .
• CIVILAPPELLATE JURISDICTION: Civil Appeal No. 3639
of 2008
From the Judgment and Order dated 8.12.2005 of the High C
Court of Judicature at Calcutta in A.P.O. No. 1030 of 1993
Fali S. Nariman, Mukul Rohatgi, PraveenAnand, Subhash
Sharma, Hari Shankar K., Shweetha Shree Majumdar, Diva
Arora, Vikas Singh for the Appellant.
D
-.i Ajay Kr. Gupta, Sanjeev Sachdeva, H.P. Singh and Chetan
Chopra for the Respondents.
The Judgment of the Court was delivered by
S.8. SINHA, J. 1. Leave granted. E
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 Mer- F
chandise Marks Act, 1958 is the question involved in this ap-
peal which arises out of a judgment and order dated 8.12.2005
passed by a Division Bench of the Calcutta High Court dismiss-
ing an appeal being CAL No.573 arising ·out of a judgment and
order dated 28.9.1993 passed by a learned Single Judge of G
the High Court affirming the final order dated 24.2.1992 passed
i by the Deputy Registrar, Trade Marks.
BACKGROUND FACTS
3. The factual matrix obtaining herein shorn of all unnec- H
678 SUPREME COURT REPORTS [2008) 9 S.C.R.
A essary 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
B plant for electric incandescent lamps in Japan. It later on diver-
sified its product into consumer products. Hakunetshu-Sha and
Co. Ltd. was renamed as Tokyo Electric Company in the year 1
1899. Shibaura Engineering Works Company Ltd. merged with
Tokyo Electric Company to form Tokyo Shibaura Electric Com-
e pany 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
0
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
E 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 •
F 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
G and marketing auto irons, toasters, washing machine, exten-
sion cords, table lamps, etc. under the trademark TOSI BA since
1975.
7. The following chart will show the range of goods regis-
tered in favour of TOSHIBA and which had been sought to be
H rectified by the respondent :
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 679
APPLIANCES CO. AND ORS. [S.8. SINHA, J.]
"Mark Registration Date Class Goods A
Number
Toshiba (Logo) 160442 5.9.1953 9 Scientific, nautical,
surveying & electri-
cal apparatus, etc.
B
Tosiba (Logo) 160443 5.9.1953 11 Installations for cook-
ing, refrigerating, dry-
ing, ventilating, water
supply and sanitary
purposes
TOSHIBA 273758 26.7.1971 7 Current generators, C
induction motors
(electrical), electric
washing machines,
etc.
TOSHIBA 273759 26.7.1971 9 Various electronics D
& electrical goods
falling in Cl.9.
TOSHIBA 273760 26.7.1971 11 Various goods in-
cluding lamps, ov-
ens, water heaters, E
fans, toasters, cook-
ers, 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 F
its validity in terms of Section 32 of the Act. The said registra-
tion has been extended from time to time. It has been extended
upto 2016.
9. In the year 1984, the name of the Tokyo Shibaura Elec- G
tric Company was changed to Kabushiki Kaisha Toshiba
(Toshiba Corporation). The said change was also duly incorpo-
rated in the trademarks register.
On the premise that the respondent which had although
not been producing or marketing washing machines or spin H
680 SUPREME COURT REPORTS (2008] 9 S.C.R
A dryers, but has been using the trade name, which was decep-
tively 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
B 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
c adoption and use of the mark TOSI BA 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 TOSI BA is clearly mala fide and
D amounts to infringement of our clients' various registered
trade marks including numbers 160443 and 273760.
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
E cause immense confusion and deception amongst the
purchasing public and the trade."
10. Respondent was called upon to desist from using the
trademark TOSI BA in respect of electrical goods including elec-
F Irie 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
G Section 46 and 56 of the Act read with Rule 94 of the Rules
before the Registrar, Trade Marks which was marked as Appli-
cation No. CAL No.573, praying for rectification of the said reg-
istered trade mark No.273758 in Class 7 alleging:
"7. That the petitioners are using the mark TOSIBA in
H respect of Domestic Electrical Appliances viz. Auto Irons,
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 681
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
Non-Auto Irons, Ovens, Toasters, Immersion Rods, A
Extension Cords, Table Lamps and Airy Fans etc. in class
9 since the year 19.75. The mark in question offends
against the provisions of section of the Trade and
Merchandise Marks Act on the date of commencement of
the proceedings between the parties. B
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 c.
and Merchandise Marks Act, being dis-entitled to
protection in a Court of Law.
10. That the applicants are aggrieved parties as they have
been served with a notice dated 24th April 1989 on behalf
of the respondents to discontinue the use of the word D
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 E
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 F
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.
G
12. Appellant filed a suit in the Delhi High Court against
the respondent praying for a. decree for permanent injunction
for using the mark TOSI BA or any other deceptively similar mark
in respect of electrical goods including electric irons, immer-
sion rods, toasters, table lamps, ovens and stoves. The· said H
682 SUPREME COURT REPORTS [2008] 9 S.C.R.
A 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 Hare
B 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;
c 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
D
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
E
registration No.273758 is not free but restricted."
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
F 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 respon-
dent being CAL-574 and 575.
G APPEAL BEFORE THE HIGH COURT
15. An appeal was preferred thereagainst before the y
Calcutta High Court in terms of Section 109 of the Act. Appeals
were also preferred against orders in respect of Class 9 and
H Class 11 registrations. The said appeal was allowed in part by
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 683
•
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
~the learned Single Judge of the High Court of Calcutta by an A
order dated 28.9.1993, upholding the order of the Deputy Reg-
istrar 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 B
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 and
toaster. They sell these under the mark 'TOSIBA'. C
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.
D
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 E
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. F
1
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 G
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 H
684 SUPREME COURT REPORTS [2008] 9 S.C.R.
A 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)
B
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:
c
"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
D
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.
E
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
F 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
G
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,
H washing machines and spin dryers, should be traded in
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 685
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
India under their trade mark 'TOSIBA'. VVithout the A
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. B
.j
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 c
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
D
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 E
costs of this appeal."
It was furthermore held that the special circumstances
" mentioned under sub-section (3) of Section 46 were not appli-
'!' cable.
F
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 rectified under Section 46(1 )(b),
i.e., no bona fide use for a continuous period of five years and
one month.
G
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:
H
686 SUPREME COURT REPORTS [2008] 9 S.C.R.
A "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 )iy~
mere common informers. But in case where one trader, •
B 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
c 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
D
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 : ,
E "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
F
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
G the appellant in Class 7 goods was in respect of various
other goods and out of those goods only two have been
deleted. •
ii
This is quite permissible and is within the object and scope "
of Section 46 of the said Act."
H
l'
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 687
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
20. The Division Bench of the High Court did not go into A
the contention of the respondent that the appellant was not en-
titled 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 B
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 C
which has been ordered by the Registrar cannot be
interfered with."
CONTENTIONS
21. Mr. F.S. Nariman, learned Senior Counsel appearing D
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 E
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 F
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 G
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.
H
688 , SUPREME COURT REPORTS [2008] 9 S.C.R.
A 22. Mr. Ajay Gupta, learned counsel appearing on behalf
of the respondent, on the other hand, would urge:
(1) The application for rectification being a composite
one being under both Sections 46 and 56, the
respondent was a person aggrieved, as envisaged
B 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'.
c (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
D 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 '
E 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
F the Act.
Statutory Provsions
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
G
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 regis-
tered on application made in the prescribed manner by any
person aggrieved on the grounds envisaged either clause (a)
H
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 689
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
\ or (b). Section 47, however, provided for a defense registration A
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.
B
(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- c
(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 D
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 E
application; or
{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 F
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:
G
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
H
690 SUPREME COURT REPORTS [2008] 9 S. C.R.
A 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
B 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,
c 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 reg-
D istrar, inter alia, on the ground of any contravention or failure to
observe a condition entered on the register in relation thereto.
Sub-section (2) of Section 57 provides that any person ag-
grieved by the absence or omission from the register of any
entry, or by any entry made in the register without sufficient cause
E or by any entry wrongly remained on the register or by any rem-
edy or defect in any entry in the register may apply in the pre-
scribed 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
F power, made rules known as Trade Marks Rules, 1959. The
Fourth Schedule appended to the Rules classified different prod-
ucts; Class 7 whereof reads as under:
"THE FOURTH SCHEDULE
G Classification of Goods - Names of the Classes
(Parts of an article or apparatus are, in general, cla1sified y
with the actual article apparatus, except where such part .
constitutes articles included in other classes).
H 1 to 6
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 691
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
7. Machines and machine tools; motors (except for A
vehicles); machine couplings an"d belting (except for
vehicles); large size agricultural implements; incubators."
Statutory Interpretation/Application
25. The Act is a complete Code in itself. Section 6 of the B
Act provides for the maintenance of a record called register of
trademarks.
,.
26. Indisputably, application for registration of the trade-
mark filed by the appellant herein had been allowed way back
in 1971 in respect of the items mentioned in the registration c
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.
• D
28. Chapter IV of the Act provides for the effect of regis-
tration. 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 V'!lidity after
seven years. Indisputably, the appellant, after expiry of the va- E
lidity of a period of seven years, had been getting its registra-
tion renewed from time to time·. Chapter V provides for assign-
ment and transmission. It is not necessary to notice any of the
provision contained in the said Chapter as admittedly, the ap-
pellant has not assigned the same in favour of any person or F
·granted any licence in respect thereof.
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 G
mark can be used. Section 45 provides for proposed use of
1 trade mark by company to be formed which is indicative of the
fact that the plan to obtain registration of a trade mark may be-
gin even before the company is formed. Section 47 provides
for defensive registration of well known trade marks; such de- H
692 SUPREME COURT REPORTS [2008] 9 S.C.R.
A tensive registration was, however, not resorted to by the appel-
lant 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
8 to a little later. Section 48 provides for the registered users.
When the right to use a trade mark is assigned or licence is
granted to any third party, the user of the trade mark by the as-
signee or the licensee shall be deemed to be used by the pro-
prietor thereof.
c
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
D
31. In the aforementioned backdrop of the statutory provi-
sions, 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
E 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 appli-
cation is filed by a person aggrieved in the prescribed manner,
F the grounds which would be available to the Registrar for exer-
cise 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 cumula-
tive. Recourse may be taken to either of them or both of them. A
G 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
·• H or longer elapsed during which the trade mark was registered
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 693
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
and during which there was no bona fide use thereof in relation A
to those goods by any proprietor thereof for the time being. Sub-
section (3) postulates an exclusion clause as regards applica-
tion 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 B
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-sec- C
ti on (1) of Section 46 on the one hand and sub-section (3) thereof,
vis-a-vis Section 56 of the Act on the other have been enacted
require consideration. The appeared to have been enacted for
different purposes.
D
ANALYSIS
34. We may now consider the three-fold submission of
Mr. Nariman that:
i) the Registrar has not exercised its jurisdiction under E
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 F
iii) The trade mark c; nsists of an invented word and is
very well known f 1 the international market.
'"
The basis of the said s~~n, thus, appear to be two-
fold: ~ G
(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 H
694 SUPREME COURT REPORTS [2008] 9 S.C.R.
A 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
B 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
c been added.
35. We do not find any force in the aforementioned sub-
mission. 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
0
sub-section (3) covers cases falling both under clause (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.
E 36. If the submission of Mr. Nariman is to be accepted, the
result thereof would be that for all intent and purport, no distinc-
tion 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.
F 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 Gov-
G. ernment or any action taken against the registrant.
38. Moreover, in cases of intermittent use, clause (b) shall
not apply. [See Mis. Plaza Chemical Industries v. Kohinoor
Chemicals Co. Ltd. [AIR 1975 Bombay 191]; Express Bottlers
H Services Pvt. Ltd. v. Pepsico Inc & Ors. [1988 (1) CLJ 337];
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 695
APPLIANCES CO. AND ORS. [S.8. SINHA, J.]
~ Bali Trade Mark (Rectification Ch.D (1966 (16) RPC 387]; Bali A
Trade Mark (Rectification C.A.) [(1968 (14) RPC 426]; and
~BULOVA" Trade rvtark (Rectification Ch.DJ [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 with-
out any bona fide intention on the part of the registrant that it B
should be used in relation to those goods by him and that there
has, in fact, been no bona fide use. Clause (a), therefore, pro-
vides for more than one contingency. Both the pre-conditions
laid down therein are required to be fulfilled and not the contin-
gency which is contemplated by clause (1 ). c
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 Labo-
ratories Pvt. Ltd. & Anr. [(1986 ('1) SCC 465], this Court cat- D
egorically 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 E
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 F
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 G
that if the period specified in Clause (b) has elapsed and
during that period there has been no 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
H
696 SUPREME COURT REPORTS [2008) 9 S.C.R.
A 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
B 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 regis-
tered must be genuine and real. When a trade mark is regis-
C tered, 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
D 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
E 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. 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 ap-
F pear from the fact that while sustaining the respondent's objec-
tion 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
G continuation of the impugned mark on the Register as
above, I hold that the entry in respect of those goods for
f
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
H Register under Section 56(2) of the Act."
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 697
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
43. Reference to Section 56(2) of the Act at that place A
appears to be a typographical mistake. It is palpably wrong. No
deliberation was made on the said question. No fact or conten-
tion has been taken note of. There are no discussions; no find-
ings.
44. The learned Single Judge found that the respondent B
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 ob-
served:
c
"If that statement was made before the Deputy Registrar,
then that was a misstatement."
45. Respondent, however was found to be a person ag-
grieved upon taking into consideration a large number of deci-
sions. It was held: D
"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 E
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 F
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 respon-
dent was the person aggrieved within the meaning of Sections
G
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 & Chemi-
cats Ltd. [(2003) 11 SSC 92], holding
"30. The phrase "person aggrieved" is a common enough H
698 SUPREME COURT REPORTS [2008] 9 S.C.R.
A statutory precondition for a valid complaint or appeal. The
phrase has been 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
B 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.
c 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
D
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 vatylng'.an entry in the register relating
to a certificatipn trademark to the Central Government in
E certain circumstances. Since we are not concerned with
a certification trader:nark, 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.
F •
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.
G
32. In the latter case the locus standi would be ascertained
liberally, since it would not only be against the interest of f
other persons carrying on the same trade but also in the
interest of the public to have such wrongful entry removed."
H
KABUSHIKI KAISHA TOSHIBA vTOSHIBA 699
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
• Section 46(1)(b} issue A
. 47. Mr. Gupta would contend that the respondent is en-
titled 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 XU Rule 33 of the
Code of Civil Procedure. Strong reliance in this behalf has been B
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 c
compartments. It confers, therefore, two remedies. The ingre-
dients 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
D
clause (b) being separate and distinct from the grounds on which
-i contention can be raised for applying the ingredients of clause
(a) being wholly distinct and different, the principles of Order
XU Rule 33 of the Code of Civil Procedure, in our opinion, would
not be applicable. The causes of action for invoking clauses (a)
and (b) are different and, thus, when a composite application is E
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 F
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 re-
spondent was maintainable on three counts: G
1. Application of Settion 46, both under clauses (a)
~
and (b);
2. Application of Section 56; and
H
700 SUPREME COURT REPORTS [2008] 9 S.C.R.
A 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
B of Section 56 of the Act, it loses its locus also. It would continue
/o
to be a person aggrieved even within the purview of Section 46
of the Act as it was slapped with a notice 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,
c 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 ques-
D
tion 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
E 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
F 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
G make under the 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
H
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 701
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
on the basis of the materials on record. A
53. For the said purpose, the basic admitted fact could
have been taken into consideration. It may be true that the ap-
pellant 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 collabo- B
ration 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 c
.:.. 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 cen-
tres in India in respect of washing machines, stating:
"Thus, to summarize: D
(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 E
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, F
Baroda, Bhopal, Cochin, Kerala and Bangalore for
repairing various electronic and electrical products
including televisions, VCRS, ovens, music systems,
washing machines etc.
G
(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
H
702 SUPREME COURT REPORTS (2008) 9 S.C.R.
A sets, engineering, samples and spare parts for
televisions, VCRs, cassette recorders, microwave
equipment and various other goods to actual l!Sers
and authorized service centres."
The learned Single Judge also noticed the said conten-
B tion 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
c 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 published on the 27th August
D 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."
E 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
F Toshiba published on 27th 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
G 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
H rnust be made in India and not abroad and that mere use
KABUSHIKI KAISHA TOSHIBA v TOSHIBA 703
APPLIANCES CO. AND ORS. [S.B. SINHA, J.]
of the mark for one advertisement is insufficient as use A
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 B
ban imposed by the Central Government, but it had been ren-
dering 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 C
intended to enforce its right under the Act as against the re-
spondent, 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 D
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 E
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.
F
The balancing act between the user of registered trade
mark and non-user should be such which leads to the possibil-
ity of neither of the parties being injured. The learned Single
Judge has also held :
"The mark of the appellant 'TOSHIBA' and the status of G
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.
H
704 SUPREME COURT REPORTS [2008] 9 S.C.R.
A It is also in my opinion beyo!W 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 appel-
lant is registered, in case such registration can be maintained
B 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 respon-
dent. It had been using the word TOSI BA for such a long time
c 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:
D "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
E stand; and by '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.
F
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 pos-
G
sible. The appeal is allowed. No costs.
R.P. Appeal allowed. ~
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