Case: Kabushiki Kaisha Toshiba Vs. Tosiba Appliances Co.

that it had been maintaining service centres in India in respect of washing machines, stating: "Thus, to summarize:(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 published on the 27th 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 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 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, 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: "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 ‘possible I mean possible in a practical sense, and not merely in a fantastic view."

Decision (1 = appeal accepted, 0 = rejected): 1

Explanation:
1[ds]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.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 (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.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.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; and3. 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 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.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, 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 alsomark 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.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.