MARK,CLASS,REGN. NO.,DATE
Toshiba,9,160442,5.9.1953
Toshiba,9,273759,26.7.1971
Toshiba,9,404344,16.4.1983
Toshiba,9,404435,16.4.1983
Toshiba,11,160443,5.9.1953
Toshiba,11,273760,26.7.1971
Toshiba,7,273758,26.7.1971
Toshiba,7,404341,
Toshiba,8,404342,16.4.1983
Toshiba,8,404343,16.4.1983
of the mark is exclusively entitled to use the said mark.,,,
7. The Petitioner had initiated civil proceedings against the 1st Respondent on coming to know that they had adopted a phonetically and visually similar,,,
trade mark Tosiba. The Petitioner had also filed this petition for removal of the mark bearing Registration No. 510314 in class 5 dated 12.5.1989. The,,,
first Respondent had filed several rectification proceedings and opposition proceedings against the Petitioner and are now under appeals before the,,,
Hon'ble High Court of Calcutta. In view of the above facts, the Petitioner is an aggrieved party.",,,
8. The main points raised by the Petitioner was that the mark ""Tosiba"" registered under No. 510314 in class 5 was to be removed on the following",,,
grounds:,,,
(a) The marks were deceptively and visually similar.,,,
(b) Possibility of confusion was certain which would be violative of Section 11(a) of the Act.,,,
(c) First Respondent's adoption dishonest and hence not proprietors of the mark as per the provisions of Section 18(1) of the Act.,,,
(d) Registration obtained by fraud.,,,
(e) Mark registered in contravention of Section 11 of the Act.,,,
(f) Registration contrary to the provisions of Section 9 of the Act as it was not distinctive of the goods.,,,
(g) Registration obtained without any bona fide intention to use for a continuous period of five years or longer.,,,
(h) Existence of the mark on the Register would result in dilution and erosion of the reputation and goodwill of the Petitioners.,,,
(i) User claimed is dishonest,,,
9. The first Respondent filed their counter statement denying the various allegations made by the Petitioner. The main issue in the counter was that the,,,
petition was not signed by a duly authorised and competent person. The first Respondent had denied that the Petitioners were using the mark,,,
Toshiba"" since 1939. The first Respondent averred that the Petitioners had no sale in India. They also denied the statement that the mark was",,,
invented or coined and stated that even after the liberalisation of import policy the Petitioners had no sale in India. The first Respondent denied the,,,
statement that the appeals were pending before the Hon'ble High Court of Calcutta, where in fact the marks were ordered to be removed. The first",,,
Respondent further stated that their trade mark has been registered and renewed for seven years and has thus become conclusive. The first,,,
Respondent denied the statement that the Petitioner had entered into a licence agreement with Toshiba Anand and stated that the company has,,,
already been ordered to be wound up.,,,
10. The first Respondent stated that in the suit filed by the Petitioner against the first Respondent, the Petitioner had failed to make out a case and",,,
were forced to withdraw the application for injunction. The first Respondent had stated that they had rightly adopted the trade mark ""Tosiba"" in the",,,
year 1975 and had been using the same since then. Their sales turn over runs to several crores per annum and have received various National,,,
Awards from the Government of India for excellence. The first Respondent denied the statement that confusion and deception was being caused by,,,
the use of mark ""Tosiba"" by the Respondents and stated that the Petitioner had no sale in India and to say loss to their reputation and goodwill does not",,,
arise.,,,
11. The first Respondent denied the various averments made in the petition and prayed for the dismissal of the petition for cancellation of the mark,,,
from the Register of Trade Marks.,,,
12. The matter was heard of Circuit Bench hearing at New Delhi on 22.11.2006. M/s Sudhir Chandra and Binni Kalra, advocates appeared on behalf",,,
of the applicant and Shri H.P. Singh advocate on behalf of the first Respondent.,,,
13. The Learned Counsel for the applicant contended that they were multinational company and that they had adopted the trade mark ""Toshiba"" and",,,
had been using the same since 1939 for various electronic goods like personal computers including laptops etc. He further contended that the first,,,
Respondent had adopted the Trade Mark ""Tosiba"" which was deceptively and phonetically similar with that of the applicants. He also contended that",,,
the adoption of the mark by the first Respondent was dishonest.,,,
14. The applicant drew our attention to para 4 of the petition wherein it was stated that the mark ""Toshiba"" was a coined word and how it was derived",,,
from the irate name of their company. He also submitted that it was not a dictionary word. He also drew our attention to para 9 of the petition in,,,
regard to annual export Figures for the export of assembly kits under the trade mark ""Toshiba"".",,,
15. The applicant also submitted that they had issued a legal notice on 24.4.1989 calling upon the first Respondent to cease and desist from using the,,,
mark Tosiba as it was a deceptively and phonetically similar mark which was likely to cause confusion among the public. The applicant mainly,,,
contended that they were manufacturing wide range of goods under the said mark and had thus gained reputation and acquired goodwill among the,,,
public. He submitted that the trade mark ""Toshiba"" was a well known mark both abroad and in India and use of the mark by any third person would",,,
cause confusion and will attract the provisions of Section 11 of the Act. He forcefully submitted that the marks Toshiba and Tosiba were rather,,,
identical than similar.,,,
16. The applicant further submitted that they had coined the mark Toshiba and had been using the mark for their wide range of goods since 1939. The,,,
applicants as prior user than the Respondents were entitled to protection under the Act. As per the provisions of Section 19(1) of the Act, they were",,,
the proprietors of the mark.,,,
17. The applicant also submitted that they had registered the mark Toshiba in their name in various countries and in India under various class and as,,,
such the mark has become a well known mark by its reputation and goodwill. Moreover, they also contended that they have been successful in various",,,
proceedings against the Respondent.,,,
18. The applicant drew our attention to typed set of documents filed in support of their application. He referred to volume 3 of the typed set of the,,,
documents and drew our attention to pages starting from 788 to 1162 which gives a detailed annual report starting from the year 1964. The applicant,,,
also referred to various Judgments of the Assistant Registrar of Trade Marks in the opposition proceedings against the first Respondent.,,,
19. The applicant referred to various Judgments in support of his contentions in the application.,,,
20. The applicant relied on the judgment reported in 2001 PTC 643 Del (DB) - Columbia Pictures Industries, Inc. and Ors. v. Siti Cable Network L.td",,,
in support of his contention that there was no legal bar for an advocate to act as a constituted power of attorney for the purpose of the case.,,,
21. AIR 1977 Del 152 - Jugmug Electric and Radio Company v. M/s Telead Pvt. Lt.d was relied on by the applicant to support his contention that,,,
they have coined the word Toshiba and extensively used and acquired reputation and are thus entitled for protection against use by any third party.,,,
22. 2004 (28) PTC 585 (SC) - Mulment Oftho v. Allrgan Inc. was relied on to support his claim that the prior user of the mark has valid rights than the,,,
subsequent user.,,,
23. Based on the above contentions, the applicants prayed that the application be allowed removing the trade mark from the Register of Trade Marks.",,,
24. The Learned Counsel for the first Respondent mainly contended that the petition has not been signed by a duly authorised and competent person.,,,
The application has been signed by an advocate and as such the application is not maintainable. The counsel drew our attention to the averments made,,,
in para 2 of the application and submitted that goods dealt in by the Petitioner were only b electronic goods and computers and that the applicant had,,,
nothing to do with the goods under class 5 of the Fourth Schedule of the Trade and Merchandise Marks Rules, 1959.",,,
25. The first Respondent vehemently argued that the mark has become conclusive valid, subsisting and renewed and cannot be challenged in any",,,
Court of law. The mark has been on the Register of Trade Mark for more than seven years and as per Section 32 of the Act, the mark is prima facie",,,
valid. The Respondent further submitted that the applicants have not filed any evidence to show any confusion of deception in the market on account,,,
of the Respondent's similar mark on the Register.,,,
26. In reply to the contention of the applicant that they have been successful in various opposition proceedings, the Respondent submitted that they",,,
have preferred appeals against these orders and the appeals are either pending or the applicant has miserably failed. The Respondent also submitted,,,
that the Petitioner had filed a suit for infringement against the Respondent and the Petitioners had withdrawn their application for injunction as they,,,
were not able to make out a prima facie case.,,,
27. The first Respondent further submitted that the two Indian companies namely, the Toshiba Anand Batteries Limited and Punjab Anand Batteries",,,
Limited with whom the Petitioner had entered into a trade mark licence agreement have been wound up and are not in existence and as such are not,,,
using the mark ""Toshiba"" in India. The Petitioner as such have not traded in India and have never exported their goods bearing the Trade Mark",,,
Toshiba to India.,,,
28. The first Respondent submitted that the Respondents have been using the mark since 1975 i.e., for a continuous period of 31 years. The applicant",,,
though said to have been using the mark since 1939 have not proved their actual use. In the case of application for rectification, the onus to prove",,,
always lies on the applicant. The first Respondent referred to page 1162-Vol.3 of the typed set of documents and submitted that it only referred to,,,
electronic goods and not pharmaceutical goods falling under class 5 of the Fourth Schedule.,,,
29. The first Respondent also drew our attention to the averments made in the application wherein it was admitted by the applicant that only since,,,
1991 the applicants were able to trade in India i.e., after the liberalisation of Import Policy. The Respondent submitted that they were using the mark",,,
since 1975 whereas the applicants were using the mark since 1991 only and denied the statement that the Petitioners were prior user of the mark,,,
Toshiba"".",,,
30. The Respondent contended that the applicants did not oppose the mark when it was advertised in the Trade Marks Journal and the Registrar,,,
proceeded with the registration rightly and the mark having remained on the Register of Trade Marks for a period of 31 years is valid and conclusive.,,,
31. The Respondent cited few Judgments in support of his claim. He relied on the judgment reported in 1994 (14) PTC 53 (Cal) - Kabushiki Kaisha,,,
Toshiba (Toshiba Corporation) v. Toshibha Appliances Company and Ors. - in support of his argument that the use of the mark can be considered,,,
only if the goods are in physical existence. Even if the mark is well known to qualify for use of the mark on the goods, the use must be in India and not",,,
abroad.,,,
32. AIR 1993 Bom 217 - Oil and Natural Gas Commission, Petitioner v. Offshore Enterprises In.c - was relied on in support of his contention that if a",,,
firm of advocates is engaged by a litigant, none of the partners of the Advocates' firm can act as a recognised agent concerning the same cause.",,,
33. The Learned Counsel for the first Respondent concluded his arguments praying for the dismissal of the application for removal of the Trade mark,,,
Tosiba"" registered under No. 510314 in class 5.",,,
34. We have heard the rival submissions of the counsels and also have considered the written arguments of both the parties.,,,
35. The main issue for consideration is whether the applicant is an aggrieved person. To expunge or remove a mark from the register the locus standi,,,
would be ascertained liberally since it would not be against the interest of other person carrying on the same trade but also in the interest of the public,,,
to have such wrongful entry removed. The House of Lords in the matter of Powell's Trade Mark, 1894 RPC (11) 4: defined aggrieved person as:",,,
although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct and to exclude,,,
a e mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is a public mischief that there",,,
should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be",,,
willing to enter upon the risk and expense of litigation.,,,
Wherever, it can be shown, as here, that the applicant is in the same trade as the person who has registered the Trade Mark and wherever the trade",,,
mark, if remaining on the Register, would or might limit the legal rights of the applicant so that by reason of the existence of the entry on the Register",,,
he could not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me, he has a locus standi to",,,
be heard as a person aggrieved.,,,
36. Thus, when the rights of the Petitioner is being interfered by the Respondent as the Registered Proprietor under the impugned mark, the Petitioner",,,
is constrained to be a aggrieved person. Here we may observe that the applicant is not an aggrieved person, as the applicants have not had real use of",,,
the goods in India. The annual reports are from the year 1964 whereas the user is claimed from the year 1939 for which no explanation was given by,,,
the applicant. Moreover, mere production of advertisement and annual reports will not prove their user.",,,
37. The impugned trade mark ""Tosiba"" was registered as of 12.5.1989 and as of the date of filing of the petition for rectification a period of seven",,,
years had already lapsed and as such the petition is attacked by the provisions of Section 32 of the Act. Hence, the registration has become conclusive",,,
and is prima facie valid.,,,
38. The next ground for expunging the mark from the register was that registration has been obtained by fraud. In fact, there is nothing in the",,,
pleadings before us to substantiate the allegation of fraud. In the absence of any specific details in the pleadings with regard to fraud, such a plea",,,
cannot be considered without any evidence. The applicant has not given any detail which constitutes fraud and hence the plea of fraud is rejected.,,,
39. The other point for consideration for removal is that the registration of the impugned trade mark is in contravention of the provisions of Section 9,,,
and 11 of the Act. We find that the impugned mark had acquired distinctiveness by long user and is not in contravention to the provisions of Section 9,,,
of the Act. As far as Section 11 of the Act is concerned, the applicants have not filed any material to show that there has been some confusion among",,,
the public. Hence, the plea of confusion and deception also does no sustain and falls to ground.",,,
40. The applicant has claimed that he is a prior user of the trade mark ""Toshiba"" since 1939. In fact, in his application he submits that due to restrictive",,,
import policy, the goods of the applicant were sold in India, only after 1991. The certificate of registration of trade mark produced before us pertaining",,,
to the year 1953 under Class 11 will not help the claim of the applicant as there was no user in India since then. On perusal of the documents filed by,,,
the applicant, we found that the applicants have claimed user since 1971 which is also not substantiated with proper proof. The use of the year 1939 of",,,
1971 is to be strictly construed and the Appellant cannot be given any advantage of the mistake in his pleadings. Thus, there is no iota of claim of user",,,
from a specific date.,,,
41. The other issue for consideration is non use of the mark in relation to the goods upto a date one month before the date of this petition for a period,,,
of five years. Section 46 of the Act reads as follows:,,,
46. REMOVAL FROM REGISTER AND IMPOSITION OF LIMITATIONS ON GROUND OF NON-USE. - (1) Subject to the provisions of,,,
Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made",,,
in the prescribed manner to a High Court or to the Registrar 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 by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bona fide",,,
use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application;,,,
or,,,
(b) that up to a date one month before the date of the application, continuous period of five years or longer has 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:,,,
Provided that, except where the applicant has been permitted under Sub-section (3) of Section 12 to register on identical or nearly resembling trade",,,
mark in respect of the goods 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, 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 goods of",,,
the same description, being goods in respect of which the trade mark is registered.",,,
(2) Where in relation to any goods in respect of which a trade mark is registered-,,,
(a) the circumstances referred in Clause (b) of Sub-section (1) are shown to exist so far as regards non-use of the traded mark in relation to goods to,,,
be sold, or otherwise traded in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a e",,,
particular marked outside India; and,,,
(b) a person has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of those goods,,,
under a registration extending to use in relation to goods to be sold, or otherwise traded in, or in relation to goods to be so exported, or the Tribunal is",,,
of opinion that he might properly be permitted so to register such a trade mark:,,,
on application by that person in the prescribed manner to a High Court or to the Registrar, the Tribunal may impose on the registration of the first-",,,
mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.,,,
(3) An applicant shall not be entitled to rely for the purpose of Clause (b) of Sub-section (1) or for the purposes of Sub-section (2) on any 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 relates.,,,
42. Mere reading of the provisions of Section 46 makes it clear that only if the registered trade mark was not used for a period of one month and five,,,
years prior to the filing of the petition for rectification or if there is no bona fide intention on the part of the applicant for registration to use the said,,,
trade mark from the inception in respect of the goods for which the same was registered, then rectification can be ordered. The Respondent has been",,,
using the mark and the applicant has not substantiated his claim that the Respondent has not been using the mark.,,,
43. We also observe that the Respondents' mark having acquired distinctiveness by long user are the proprietors of the same within the provisions of,,,
Section 18(1) of the Act. It is well settled proposition of law that onus is on the applicant to prove his case by adducing valid evidence. Here, we are",,,
of the view that the Petitioner has failed to adduce any cogent evidence to prove the registration was obtained by fraud or the registration was in,,,
contravention of Section 11 or offends against the provisions of that section.,,,
44. Besides the above, we quote the observations made in 2000 (20) PTC 561 (DB) by the Division Bench of the Hon'ble High Court of Delhi -",,,
Hindustan Pencils Private limited and Anr. v. Universal Trading Company-,,,
The application for rectification filed in the year 1982 and as on that date Respondent was using the trade mark for almost nine years. As of today he,,,
is in use of the said trade mark for more than 26 years.,,,
Respondents' business has expanded and prospered during this period. If the rectification application is allowed at this stage, it would definitely cause",,,
serious prejudice and hardship to the Respondent and this ground also compels not to exercise any discretion in favour of the Appellants.,,,
45. The above observations squarely apply to this case. With due respect to the Hon'ble Judge, we agree with their observations. Here, the",,,
Respondent had made an application for registration of the impugned mark as early as 1989 claiming user since 1975 and the certificate of registration,,,
was issued in the year 1995. The application for rectification was filed in the year 1998. Taking into consideration the date of application i.e., 1989 as",,,
the date of registration as per Section 23 of the Act, the mark has been on the Register for a period of nine years on the date of application for",,,
rectification, In such circumstances, we are not inclined to allow this application causing unnecessary hardship and prejudice to the Respondents.",,,
46. On recording our observations, we accordingly dismiss the rectification application/petition for expunging the registered trade mark No. 510314 by",,,
removal of the Trade Mark from the Register of Trade Marks. No order as to costs.,,,
