REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDCTION

CIVIL APPEAL N1O.   3639              OF 2008

(Arising out of SLP (C) No.5542 of 2006)

Kabushiki Kaisha Toshiba … Appellant

Versus

TOSIBA Appliances Co. & Ors. … Respondents

J U D G M E N T

S.B. Sinha, J.

1. Leave granted.

INTRODUCTION  

2. Jurisdiction of a Registrar  of Trade Mark to remove the registered

mark  from  the  register  maintained  by  it  on  the  ground  of  non-use  as

contained in Section 46 of the Trade and Merchandise Marks Act, 1958 is

the question involved in  this  appeal  which arises  out  of  a judgment  and

order  dated  8.12.2005  passed  by a Division Bench  of  the  Calcutta  High

Court dismissing an appeal being CAL No.573 arising out of a judgment

and order  dated 28.9.1993 passed by a learned Single Judge of the High

Court  affirming  the  final  order  dated  24.2.1992  passed  by  the  Deputy

Registrar, Trade Marks.

BACKGROUND FACTS

3. The factual matrix obtaining herein shorn of all unnecessary details is

as under :

Appellant  claims  itself  to  be  the  largest  manufacturer  of  Heavy

Electrical  apparatus  in  Japan.   The establishment  started  in  the  name of

Shibaura Engineering Works in the year 1857.  In 1890, Hakunetshu-Sha

and Company Ltd. established the first plant for electric incandescent lamps

in  Japan.   It  later  on  diversified  its  product  into  consumer  products.

Hakunetshu-Sha and Co. Ltd. was renamed as Tokyo Electric Company in

the year 1899.  Shibaura Engineering Works Company Ltd.  merged with

Tokyo Electric Company to form Tokyo Shibaura Electric Company in the

year 1939. However, the name of the company was changed to Kabushiki

2

Kaisha  Toshiba  (for  short,  TOSHIBA).   Appellant  adopted  the  mark

TOSHIBA in  which  ‘TO’ was  taken  from the  Tokyo  and  ‘SHIBA’ was

taken from the word Shibaura.   

4. An application was filed for registration of eight items of electrical

apparatuses which fall in Class 07 of the Rules framed under the 1958 Act

being :

“Current  generators,  induction  motors  (electric), electric  washing  machines,  compressors (machinery)  and  electric  tool  set  consisting  of electric  drills  (machines),  spin  dryers  and  can openers being electrically operated tools, all being goods include in class 7.”

5. Registration  was  granted  in  respect  of  the  said  items  being  Trade

Mark No.273758.  Other registeration numbers were given in favour of the

said group in respect of some other goods falling under Class IX and XI.

6. Respondent  herein  is  an  Indian  company.   It  claims to  have  been

carrying  on business  of  various  electrical  appliances  and  marketing  auto

irons, toasters,  washing machine, extension cords, table lamps, etc.  under

the trademark TOSIBA since 1975.

3

7. The following chart will show the range of goods registered in favour

of TOSHIBA and which had been sought to be rectified by the respondent :

        “Mark Registration Number

Date Clas s

Goods

Toshiba (Logo) 160442 5.9.1953 9 Scientific,  nautical, surveying  &  electrical apparatus, etc.

Tosiba (Logo) 160443 5.9.1953 11 Installations  for  cooking, refrigerating,  drying, ventilating,  water  supply and sanitary purposes

TOSHIBA 273758 26.7.1971 7 Current  generators, induction  motors (electrical),  electric washing machines, etc.

TOSHIBA 273759 26.7.1971 9 Various  electronics  & electrical  goods falling  in Cl.9.

TOSHIBA 273760 26.7.1971 11 Various  goods  including lamps,  ovens,  water heaters,  fans,  toasters, cookers, etc.”

8. It is stated that the appellant had since acquired about 35 trade marks

registrations in India.  The period of seven years expired in 1978.  On the

4

expiry thereof, it became conclusive of its validity in terms of Section 32 of

the Act.  The said registration has been extended from time to time. It has

been extended upto 2016.

9. In the year 1984, the name of the Tokyo Shibaura Electric Company

was changed to Kabushiki Kaisha Toshiba (Toshiba Corporation).  The said

change was also duly incorporated in the trademarks register.   

On  the  premise  that  the  respondent  which  had  although  not  been

producing  or  marketing  washing  machines  or  spin  dryers,  but  has  been

using the trade name, which was deceptively similar to that of the appellant,

a lawyer’s notice was served upon it, stating:

“The trade mark TOSHIBA is such a well known trade mark in India and abroad that its use or the use  of  a  phonetic  equivalent  mark in  respect  of electronic  and  electrical  goods  would  cause immense  confusion  and  deception  amongst  the purchasing public and the trade.

Our  clients  were  surprised  when  they  recently learnt  of  the  adoption  and  use  of  the  mark TOSIBA both as your trade mark and an essential feature of your trading style in respect of a range of electrical goods including electric irons.

The adoption of the mark TOSIBA is clearly mala fide and amounts  to  infringement  of our  clients’ various registered trade marks including numbers 160443 and 273760.

5

The  word  TOSIBA  is  phonetically  and  visually similar to our clients’  trade mark TOSHIBA and by the use of the said mark in respect of electrical goods, you are likely to cause immense confusion and deception amongst the purchasing public and the trade.”

10. Respondent  was  called  upon  to  desist  from  using  the  trademark

TOSIBA in respect of electrical goods including electric irons or any other

goods whatsoever.  No reply thereto was given.   

PROCEEDINGS BEFORE THE REGISTRAR  

11. It, however, filed an application purported to be under Section 46 and

56 of the Act read with Rule 94 of the Rules before the Registrar, Trade

Marks  which  was  marked  as  Application  No.  CAL No.573,  praying  for

rectification  of  the  said  registered  trade  mark  No.273758  in  Class  7

alleging:

“7. That  the  petitioners  are  using  the  mark TOSIBA  in  respect  of  Domestic  Electrical Appliances  viz.  Auto  Irons,  Non-Auto  Irons, Ovens,  Toasters,  Immersion  Rods,  Extension Cords, Table Lamps and Airy Fans etc. in class 9 since the year 1975.  The mark in question offends against the provisions of section of the Trade and Merchandise  Marks  Act  on  the  date  of

6

commencement  of  the  proceedings  between  the parties.

8. That the mark sought to be removed was not on  the  commencement  of  the  proceedings, distinctive  of  the  goods  of  the  Registered proprietor.

9. That the mark also offends Section 11(e) of the Trade and Merchandise Marks Act, being dis- entitled to protection in a Court of Law.

10. That the applicants are aggrieved parties as they  have  been  served  with  a  notice  dated  24th April  1989  on  behalf  of  the  respondents  to discontinue  the  use  of  the  word  TOSIBA which the  petitioners  adopted  in  the  year  1975.   They have  been  threatened  with  action  under  various provisions  of  Trade and Merchandise Marks Act and also under Article 36A of the Monopoly and Restrictive  Trade  Practices  Act,  1969  alleging unfair  trade practices.   The respondents  have no business in India.

The  threats  made  were  unjustified.   That  the petitioners  even  approached  the  respondents attorneys  for  not  to  interfere  with  their  long- standing  business,  but  without  any  result,  hence the  petitioner  are  the  aggrieved party  within  the meaning of Section 56 of Trade and Merchandise Marks Act competent to file the present petition.”

Two other applications were also filed for rectification of two other

trade marks wherewith we are not concerned.   

12. Appellant filed a suit in the Delhi High Court against the respondent

praying for a decree for permanent injunction for using the mark TOSIBA

7

or  any  other  deceptively  similar  mark  in  respect  of  electrical  goods

including electric irons,  immersion rods,  toasters,  table  lamps,  ovens and

stoves.  The said suit is still pending.

13. In its  affidavit  before  the  Registrar  of  Trade  Marks,  the  appellant

contended:

“14.  Annexed  to  my  affidavit  and  marked Annexure  H  are  extracts  from  the  Import  and Export  Policy  of  the  Government  of  India (Ministry of Commerce) for the years:

i) April 1985 to March 1988;

ii) April 1988 to March 1991;

iii) April 1990 to March 1992.

Thus, the import and export policies for the period April  1985  to  March  1991  show  that  electric motors,  compressors  and  generators  fall  under Appendix 3 Part A of the policy which is a list of limited permissible items for which the import is not free but only against a licence.

Washing  machines  being  consumer  goods  fall under  Appendix  2  part  B  which  is  the  list  of restricted items.

It  is,  therefore,  evident  that  the  import  of  goods covered by registration No.273758 is not free but restricted.”

8

14. By reason of an order dated 12.5.1992, the Deputy Registrar of Trade

Marks  partially  allowed  the  application  for  rectification  filed  by  the

respondent being Application No.CAL.573 and directed that the register of

Trade Mark be rectified by deleting the goods ‘washing machines’ and ‘spin

dryers’  from Trade  Mark  No.273758  in  Class  7.   Rectification  was  also

directed on the other applications filed by the respondent being CAL-574

and 575.   

APPEAL BEFORE THE HIGH COURT

15. An appeal was preferred thereagainst before the Calcutta High Court

in terms of Section 109 of the Act.   Appeals  were also preferred against

orders in respect of Class 9 and Class 11 registrations.  The said appeal was

allowed in part by the learned Single Judge of the High Court of Calcutta by

an order dated 28.9.1993, upholding the order of the Deputy Registrar so far

as the application related to Section 46(1)(a) of the Act but rejected the plea

as regards Section 46(1)(b) thereof, holding:

“The  first  point  to  my  mind  which  should  be disposed of is the point as to the locus standi of Mr. Gupta’s client.  It is the admitted position that until now the respondents have manufactured and sold  articles  only  in  class  11,  and  those  are household electrical articles like electric iron, fan

9

and  toaster.   They  sell  these  under  the  mark ‘TOSIBA’.

It is not that the respondent has manufactured or sold  washing  machines  or  spin  dryers  at  all  or even  that  they  have  any  finalized  plans  for  so commencing  the  manufacture  or  sale  of  any  of these items.

In  a  paper  book  running  to  no  fewer  than  725 pages,  not  to  mention  a  comparatively  slim supplementary paper book, the only place where a connection  between  the  respondent  and  washing machines  or  spin  dryers  is  mentioned is  at  page 542,  where  it  is  recorded  as  stated  before  the Deputy Registrar in his order that the respondent also deals in some goods falling in class 7 such as washing machines and spin dryers and some other allied goods.   If that  statement was made before the deputy registrar, then that was a misstatement.

XXX XXX XXX

The  mark  of  the  appellant  ‘TOSHIBA’  and  the status  of  the  said  word  as  a  registrable  mark  is beyond  dispute.   It  is  almost  admittedly  an invented word, a hybrid between the name of the city Tokyo and the name of the company of origin, Shibaura.

It  is  also in  my opinion beyond dispute  that  the mark  ‘TOSIBA’  is  so  similar  to  the  mark ‘TOSHIBA’  as  to  give  the  appellant  an indisputable  right  to  call  upon the respondent  to cease  to  use  that  mark  in  relation  to  goods  for which  the  appellant  is  registered,  in  case  such registration can be maintained by the appellant on the register.”

(emphasis supplied)

10

16. However,  with  regard  to  the  contention  of  the  appellant  that  the

respondent was not a person aggrieved or that the Registrar should not have

used its discretionary jurisdiction, the learned judge held:

“If a person obtains a registration at a time when the  mark,  according  to  his  own  estimate,  is economically unusable, then he cannot be said to have  had  a  bona  fide  intention  at  the  time  of registration  that  the  mark  should  be  used  in relation to the goods.  If,  however, he waits and watches  the  market  of  the  country  in  which  he wishes to have registration,  and then, as  soon as the  restriction  is  lifted,  he  obtains  registration without delay, he can indeed then be said to have a bona fide intention that the goods should be used in the market in question.

It is possible that if he waits for so long as that,  he  will  no  longer  be  able  to  get  his registration  at  all,  for  another  trader  within  the country might well have used up his name by then for  the  same  goods.   This  is  an  unpreventable hazard.  The trade mark law is a national code and not an international treaty, speaking broadly.  If a country  blocks  international  trade  within  itself, international names only cannot be registered and preserved  in  the  blocked  market.   This  would mean  allowing  international  names  to  hold  the market totally without goods, or give international marks  a  copyright  value,  and  both  these  are impermissible  and  against  the  first  principles  of trade mark law.

It  cannot  therefore  in  my opinion  be  said that  in  1971  the  appllenats  had  a  bona  fide intention  that  the  goods,  namely,  washing machines  and  spin  dryers,  should  be  traded  in India under their trade mark ‘TOSIBA’.  Without

11

the  economic  restrictions  being  lifted  from  the Indian  market,  trading,  according  to  themselves, was  and  continued  to  be  an  unprofitable proposition.   Such  lack  of  intention  can  be gathered  from  the  admitted  stand  taken  by  the appellant before me, and in the registry, where it was  the  respondent.   The  onus  upon  the respondent  in  appeal  to  show  such  lack  of intention is thus fully discharged.”

The contention of the appellant was rejected, opining:

“Mr. Gupta has conceded even from the time of the interlocutory application was heard in aid  of this appeal that the order of the Deputy Registrar is to be so read as to restrict the rectification to the two items of  washing  machines  and  spin  dryers only and it should not be read as the rectification application succeeding for the entire class.

With recording of such concession, I dismiss the appeal but I do it on grounds of my own which I have mentioned above and not necessarily on the grounds  given  by  the  Deputy  Registrar.   The respondents  would  entitle  to  the  costs  of  this appeal.”

It  was  furthermore  held  that  the  special  circumstances  mentioned

under sub-section (3) of Section 46 were not applicable.

17. An intra court appeal was preferred thereagainst.   Cross-objections

were also filed by the respondent on the pleas that the mark should also be

12

rectified  under  Section  46(1)(b),  i.e.,  no  bona  fide  use  for  a  continuous

period of five years and one month.

IMPUGNED JUDGMENT

18. By reason of the impugned judgment dated 8.12.2005, the said appeal

was dismissed holding that the respondent was a person aggrieved, stating:

“The  purpose  of  introducing  the  expression ‘person  aggrieved’  in  the  statute  is  obviously  to prevent  action  from persons  who  are  interfering only from merely sentimental notions or personal vengeance  and  act  as  mere  common  informers. But in case where one trader, by means of having a trade  mark  wrongly  registered  in  his  name, narrows the area of business open to his rivals, in that case the rival is a person aggrieved.  It may be that  the  rival  is  not  immediately carrying on  the trade.  But if there is a reasonable possibility for the rival to carry on that trade in future in view of his presently carrying on a trade in the same class of  goods  then  the  rival  trader  is  a  person aggrieved.   In  other  words,  if  a  person  or  a corporation  is  in  the  trade  of  the  same class  of goods  along  with  the  company which  has  got  a mark  registered  in  its  name  and  is  thus  the hampered in the possible expansion of his trade in that case the person or the corporation is a person aggrieved.’

19. The question as to whether requirements of Section 46(1)(a) of the

Act were fulfilled or not was answered thus :

13

“Here the date of registration was 26.7.1971 and the date of rectification application was 30.5.1989. In between there has been no use of the concerned goods  by  the  registered  proprietor  except  one advertisement  which  has  already  not  been accepted  by  this  Court  as  an  instance  of  use. Therefore, in the facts of this case, the order of the Deputy  Registrar  of  rectification  by  deletion  of two items namely  electric  washing  machine  and spin  dryers  from  the  registered  Trade  Mark No.273758 in Class 7 goods is quite justified.  It appears  that  the  registration  in  favour  of  the appellant  in  Class  7  goods  was  in  respect  of various other goods and out of those goods only two have been deleted.

This is quite permissible and is within the object and scope of Section 46 of the said Act.”

20. The Division Bench of the High Court did not go into the contention

of the respondent that the appellant was not entitled to any relief in terms of

Section 46(1)(b), stating :

“The learned Counsel for the respondents  on the basis  of  the  cross  appeal  has  urged  that  the appellants  are  not  entitled  to  the  relief  under Section 46(1)(b).  But in view of the facts of this case which  make the case against  the appellants under Section 46(1)(a) so very clear that this Court need not decide the said cross appeal in any detail. This Court is of the view that the decision of the learned  Judge  under  Section  46(1)(a)  was  right and the  rectification  which  has  been  ordered  by the Registrar cannot be interfered with.”

14

CONTENTIONS

21. Mr. F.S. Nariman, learned Senior Counsel appearing on behalf of the

appellant, would urge:

1) Respondent having not been dealing with either washing machine or

spin  dryer,  was  not  a  ‘person  aggrieved’  within  the  meaning  of

Section 46 of the Act.

2) The statutory scheme must be gathered from reading the provisions of

Section 46, 47 and 56 conjointly and so read it would be evident that

as  the  appellant  having been found  to  have  abandoned its  right  to

continue  to  be  registered,  it  should  have  been  held  that  the

requirements under Section 46(1)(a) have also not been fulfilled.

3) The  name ‘TOSHIBA’  being  well  known  and  the  word  being  an

innovated one, although not directly but the spirit of the provisions of

Section 47 should have been considered by the Registrar in exercise

of its discretionary jurisdiction under the Act, particularly when no

public interest was found to be involved.

22. Mr.  Ajay  Gupta,  learned  counsel  appearing  on  behalf  of  the

respondent, on the other hand, would urge:

15

(1) The application for rectification being a composite one being under

both Sections 46 and 56, the respondent was a person aggrieved, as

envisaged under sub-section (2) of Section 56 of the Act.

(2) In any event, the appellant having served the respondent with a notice

of action, it was a ‘person aggrieved’.

(3) The  matter  having  remained  pending  for  19  years  during  which

period, the appellant having not been able to obtain any order of stay

from any court  and/or having not  entered into any arrangement for

using its registered mark in India either by itself or through an Indian

company, the impugned judgment should not be interfered with.

(4) The  distinction  between  clauses  (a)  and  (b)  of  sub-section  (1)  of

Section  46 being  clear  and  explicit,  it  is  idle  to  contend that  only

because  the  respondent’s  claim  under  the  latter  clause  has  been

negatived, its claim under clause (a) would also necessary fail.   

(5) The provisions of Section 45 of the Act should be kept in mind while

interpreting Sections 46 and 56 of the Act.

Statutory Provsions

16

23. Chapter  VI  of  the  1958  Act  deals  with  use  of  trade  mark  and

registered users.   Section 45 provides for proposed use of trade mark by

company  to  be  formed.   Section  46  is  in  two  parts.   It  is  subject  to

provisions of Section 47.  In terms of the said provision, the registered mark

may be taken off the register in respect of any of the goods for which it was

registered  on  application  made  in  the  prescribed  manner  by  any  person

aggrieved on the grounds envisaged either clause (a) or (b).  Section 47,

however,  provided for a defense registration of  well  known trade marks;

sub-section (1) whereof reads as under :

“Section  47  -  Removal  from  register  and imposition of limitations on ground of non-use.

(1) A registered trade mark may be taken off the register  in  respect  of  the  goods  or  services  in respect  of  which  it  is  registered  on  application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either--  

(a) that the trade mark was registered without any bona  fide  intention  on  the  part  of  the applicant  for  registration  that  it  should  be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being  up  to  a  date  three  months  before  the date of the application; or  

17

(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is  actually  entered  in  the  register  or  longer had elapsed during which the trade mark was registered  and  during  which  there  was  no bona  fide  use  thereof  in  relation  to  those goods  or  services  by  any  proprietor  thereof for the time being:  

Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods  or  services  in  question,  or  where  the tribunal  is  of  opinion  that  he  might  properly  be permitted  so  to  register  such  a  trade  mark,  the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be,  bona  fide  use  of  the  trade  mark  by  any proprietor  thereof  for  the  time  being  in  relation to--  

(i) goods or services of the same description; or  

(ii) goods or services associated with those goods or services of that description being goods or services,  as  the  case  may be,  in  respect  of which the trade mark is registered.”

24. Chapter VII of the Act provides for rectification and correction of the

register.  Section 57 confers a power upon the Registrar to cancel or vary

the registration and to rectify the registrar, inter alia, on the ground of any

contravention or failure to observe a condition entered on the  register in

18

relation  thereto.  Sub-section  (2)  of  Section  57  provides  that  any  person

aggrieved by the absence or omission from the register of any entry, or by

any  entry  made  in  the  register  without  sufficient  cause  or  by  any entry

wrongly remained on the register or by any remedy or defect in any entry in

the register  may apply in the prescribed manner to  the Registrar  and the

Tribunal may make such order for canceling or varying the entry as it thinks

fit.   

The Central Government, in exercise of its rule making power, made

rules known as Trade Marks Rules, 1959.  The Fourth Schedule appended

to the Rules classified different products; Class 7 whereof reads as under:

“THE FOURTH SCHEDULE

Classification of Goods – Names of the Classes

(Parts  of  an  article  or  apparatus  are,  in  general, classified with the actual article apparatus, except where  such  part  constitutes  articles  included  in other classes).

1 to 6 …

7. Machines  and  machine  tools;  motors (except  for  vehicles);  machine  couplings  and belting  (except  for  vehicles);  large  size agricultural implements; incubators.”

Statutory Interpretation/Application

19

25. The Act is a complete Code in itself.  Section 6 of the Act provides

for the maintenance of a record called register of trademarks.   

26. Indisputably, application for registration of the trademark filed by the

appellant herein had been allowed way back in 1971 in respect of the items

mentioned in the registration certificates.   

27. Respondent  was  not  in  picture  at  that  point  of  time.   It,  however,

obtained registration in respect of certain products which fall in Classes 7

and 11.

28. Chapter IV of the Act provides for the effect of registration. When a

trade mark is infringed, the consequences laid down under Section 29 would

ensue. Section 32 provides for the registration to be conclusive as regards

the validity after seven years.  Indisputably, the appellant, after expiry of the

validity of a period of seven years, had been getting its registration renewed

from time to time.  Chapter V provides for assignment and transmission.  It

is not necessary to notice any of the provision contained in the said Chapter

as admittedly,  the  appellant  has  not  assigned  the  same in  favour  of  any

person or granted any licence in respect thereof.   

20

Chapter  VI  provides  for  use  of  trade  mark  and  registered  users.

Section  45  provides  for  proposed  use  of  trade  mark  by  company  to  be

formed.   Chapter  VI,  inter  alia,  lays  down the  guidelines  as  regards  the

mode and manner in which the trade mark can be used.  Section 45 provides

for proposed use of trade mark by company to be formed which is indicative

of the fact that the plan to obtain registration of a trade mark may begin

even  before  the  company is  formed.   Section  47  provides  for  defensive

registration  of  well  known trade  marks;  such  defensive  registration  was,

however, not resorted to by the appellant herein.   

29. As noticed hereinbefore, appellant contended that the said provision

should also be taken into consideration for proper constructions of Section

46 of the Act to which we shall advert to a little later.  Section 48 provides

for the registered users.  Whenever the user’s right to use a trademarked is

assigned or a licence is given to any third party, the user by the assignee or

the licensee to the benefit of the register to the person who has obtained the

registration.   

30. Apart from Section 46, the power of rectification and correction of

the register is also contained in Section 56 of the Act.

Construction of the Statute  

21

31. In the aforementioned backdrop of the statutory provisions, we are

called upon to interpret clauses (a) and (b) of sub-section (1) of Section 46

of the Act.   

It is beyond any doubt or dispute that sub-section (1) of Section 46

confers a discretionary jurisdiction on the Registrar.  The jurisdiction may

be exercised if  any application  is  filed by a person aggrieved.   The said

application has to be filed in the manner prescribed therefor.  Whence it is

found that the application is filed by a person aggrieved in the prescribed

manner, the grounds which would be available to the Registrar for exercise

of  its  discretionary  jurisdiction  are  stated  in  clauses  (a)  and  (b)  of  sub-

section (1) of Section 46.  We may, at the outset, notice that clauses (a) and

(b) are disjunctive and not cumulative.  Recourse may be taken to either of

them or both of them.  A combined application even under Section 46 and

56 of the Act is permissible in law.   

32. Whereas clause (a) refers to bona fide use of the trade mark; clause

(b)  stipulates  the  period  upto  a  date  of  one  month  before  the  date  of

application,  a  continuous  period  of  five  years  or  longer  elapsed  during

which the trade mark was registered and during which there was no bona

fide use thereof in relation to those goods by any proprietor thereof for the

time  being.   Sub-section  (3)  postulates  an  exclusion  clause  as  regards

22

application of clause (b) of sub-section (1) of Section 46 if any non-use of a

trade mark which is shown to have been due to special circumstances in the

trade or not  to any intention to  abandon or not  to use the trade mark in

relation to the goods to which the application relates.

33. No doubt,  a  statute  is  required  to  be  read  as  a  whole,  Chapter  by

Chapter, Section by Section and clause by clause.  However,  the purpose

for which clauses (a) and (b) of sub-section (1) of Section 46 on the one

hand and sub-section  (3)  thereof,  vis-à-vis  Section  56 of  the Act  on  the

other have been enacted require consideration.  The appeared to have been

enacted for different purposes.

ANALYSIS

34. We may now consider the three-fold submission of Mr. Nariman that:

i) the Registrar has not exercised its jurisdiction under Section 56 of the

Act;

ii) the learned  Single  Judge while  exercising  its  appellate  jurisdiction

has found that no case has been made out for invoking clause (b) of

sub-section (1) of Section 46; and

23

iii) The trade mark consists of an invented word and is very well known

in the international market.

The basis of the said submission, thus, appear to be two-fold:

(1) As  there  is  no  evidence  that  the  appellant  had  any  intention  to

abandon the use of the said trademark, as a logical corollary thereof,

the High Court ought to have held that the appellant had the intention

of bona fide use of the trade mark not only at a point of time when an

application for registration was filed but also continuously thereafter;

(2)  The provisions of clauses (a) and (b), if read in the aforementioned

context,  sub-section  (3)  of  Section  46  would  also  come into  play

particularly when the words ‘non-use’ therein and clause (a) of sub-

section (1) are identical, namely ‘not to have any intention to abandon

or not to use the trade mark in relation to  the goods to which the

application relates’ and save and except in clause (a), the word ‘bona

fide’ has been added.   

35. We do not find any force in the aforementioned submission.  Clauses

(a) and (b) operate in different fields.  Sub-section (3) covers a case falling

within clause (b) and not the clause (a) thereof.  Had the intention of the

Parliament been that sub-section (3) covers cases falling both under clause

24

(b) and clause (a), having regard to the similarity of the expressions used,

there was no reason as to why it could not be stated so explicitly.   

36. If the submission of Mr. Nariman is to be accepted, the result thereof

would be that for all intent and purport, no distinction would exist in the

situations covered by clause (b) and clause (a) except that whereas in the

former no period is mentioned, in the latter a specific period is provided.

37. There may be a case where owing to certain special circumstances, a

continuous use is  not  possible.   The trade mark for which registration is

obtained is used intermittently.  Such non-user for a temporary period may

be due to any exigency including a bar under a statute, or a policy decision

of the Government or any action taken against the registrant.   

38. Moreover,  in  cases  of  intermittent  use,  clause  (b)  shall  not  apply.

[See M/s. Plaza Chemical Industries v. Kohinoor Chemicals Co. Ltd. [AIR

1975 Bombay 191];  Express Bottlers Services Pvt. Ltd. v.  Pepsico Inc &

Ors. [1988 (1) CLJ 337];  Bali Trade Mark (Rectification Ch.D [1966 (16)

RPC 387]; Bali Trade Mark (Rectification C.A.) [(1968 (14) RPC 426]; and

“BULOVA” Trade Mark (Rectification Ch.D) [1967 (9) RPC 229].

39. Clause (a) of sub-section (1) of Section 46 takes within its sweep a

situation  where  registration  has  been  obtained  without  any  bona  fide

25

intention on the part of the registrant that it should be used in relation to

those  goods  by him and  that  there  has,  in  fact,  been  no  bona  fide  use.

Clause (a), therefore,  provides for more than one contingency.  Both the

pre-conditions  laid  down therein  are  required  to  be  fulfilled  and not  the

contingency which is contemplated by clause (1).

Furthermore, it is not a case where the appellant had taken recourse to

Section 47 of the Act.

40. In  American  Home Products  Corporation  v.  Mac Laboratories  Pvt.

Ltd.  &  Anr. [(1986  (1)  SCC  465],  this  Court  categorically  noticed  the

aforementioned distinction, stating:

“32. Clause (b) of Section 46(1) applies where for a continuous period of five years or longer from the date of the registration of the trade mark, there has been no bona  fide  use thereof  in  relation to those goods in respect of which it is registered by any  proprietor  thereof  for  the  time  being.  An exception to Clause (b)  is  created by Section 46 (3).  Under Section 46(3),  the non-use of a trade mark, which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to  the  goods  to  which  the  application  under Section 46(1) relates, will not amount to non-use for the purpose of Clause (b).

33. The distinction between Clause (a) and Clause (b) is that if the period specified in Clause (b) has elapsed and during that period there has been no

26

bona fide use of. the trade mark, the fact that the registered proprietor had a bona fide intention to use the trade mark, at the date of the application for registration becomes immaterial and the trade mark  is  liable  to  be  removed  from the  Register unless  his  case  falls  under  Section  46(3),  while under Clause (a) where there had been a bona fide intention to use the trade mark in respect of which registration was sought, merely because the trade mark had not been used for a period shorter than five years from the date of its registration will not entitle any person to have that trade mark taken off the Register.”

41. The intention  to  use a trade mark sought  to  be registered must  be

genuine and real.  When a trade mark is  registered, it  confers a valuable

right.  It seeks to prevent trafficking in trade marks.  It seeks to distinguish

the goods made by one person from those made by another.  The person,

therefore, who does not have any bona fide intention to use the trade mark,

is  not  expected  to  get  his  product  registered  so  as  to  prevent  any other

person from using the same.  In that way trafficking in trade mark is sought

to be restricted.  

PERSON AGGRIEVED

42. The concept of the term ‘person aggrieved’ is different in the context

of Section 46 and 56.  Section 46 speaks of a private interest while Section

56 speaks of a public interest.  Respondent filed a composite application.

27

Registrar did not think it fit to consider the case from the point of view of

public interest  and confined the case to Section 56 of the Act,  as  would

appear from the fact that while sustaining the respondent’s objection under

Section 46(1) and (b) on the ground that the same had not been used by the

appellant for the last twenty years, it was observed:

“Having held that Section 46(1)(a) is a bar to the continuation of the impugned mark on the Register as above, I hold that the entry in respect of those goods for which the Registered Proprietors could not prove their user of the Registered Trade Mark 273758 was wrongly made in the Register and is wrongly remaining on the Register under Section 56(2) of the Act.”

43. Reference to Section 56(2) of the Act at that place appears to be a

typographical mistake.  It is palpably wrong.  No deliberation was made on

the said question.  No fact or contention has been taken note of.  There are

no discussions; no findings.

44. The learned Single Judge found that the respondent No.1 had never

manufactured or sold washing machine and spin dryers at all.  They did not

have even any plan for commencing the manufacture or sale thereof.  It, in

that backdrop, was observed:

28

“If  that  statement  was  made  before  the  Deputy Registrar, then that was a misstatement.”

45. Respondent,  however  was  found  to  be  a  person  aggrieved  upon

taking into consideration a large number of decisions.  It was held:

“The  respondent  is  anything  but  a  common informer or an officious person.  It deals in articles of class  11 and it  uses  the mark TOSIBA.  If  it were to go into the trade of washing machines or spin  dryers,  and  if  the  mark  TOSHIBA were  to remain  on  the  register,  with  the  appellant  as  its proprietor, the respondent could not in that event, use its mark for washing machines and spin dryer too.   This  is  enough,  I  think,  to  com  to  the conclusion  without  any  hesitation  that  the respondent had a sufficient and impeachable locus standi  to maintain  the rectification application in the registry.”

46. The learned Single Judge as also the  Division Bench referred to  a

large  number  of  decisions  to  hold  that  the  respondent  was  the  person

aggrieved within the meaning of Sections 46 and 56 of the Act.  It is beyond

any doubt that the question has authentically been answered by a Division

Bench of this  Court in  Hardie Trading Ltd. & Anr. v.  Addisons  Paint  &

Chemicals Ltd. [(2003) 11 SCC 92], holding

“30. The phrase "person aggrieved" is a common enough  statutory  precondition  for  a  valid complaint  or  appeal.  The  phrase  has  been

29

variously  construed  depending  on the context  in which it  occurs.  Three sections viz.  Sections 46, 56 and 69 of the Act contain the phrase. Section 46  deals  with  the  removal  of  a  registered trademark from the register on the ground of non- use. This section presupposes that the registration which was validly made is liable to be taken off by subsequent non-user. Section 56 on the other hand deals with situations where the initial registration should not have been or was incorrectly made. The situations covered by this section include: - (a) the contravention or failure to observe a condition for registration;  (b)  the  absence  of  an  entry;  (c)  an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. Such type of actions are commenced for the "purity of the  register"  which  it  is  in  public  interest  to maintain. Applications under Sections 46 and 56 may be made to the Registrar who is competent to grant  the  relief.  "Person's  aggrieved"  may  also apply for cancellation or varying an entry in the register relating to a certification trademark to the Central  Government  in  certain  circumstances. Since  we  are  not  concerned  with  a  certification trademark, the process for registration of which is entirely  different,  we  may  exclude  the interpretation  of  the  phrase  "person  aggrieved" occurring in Section 69 from consideration for the purposes of this judgment.

31. In our opinion the phrase "person aggrieved" for the purposes of removal on the ground of non- use under  section  46 has a different  connotation from the phrase used in section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register.

32.  In  the  latter  case  the  locus  standi  would  be ascertained  liberally,  since  it  would  not  only  be against  the  interest  of  other  persons  carrying  on

30

the same trade but also in the interest of the public to have such wrongful entry removed.”

Section 46(1)(b) issue

47. Mr. Gupta would contend that the respondent is entitled to raise the

question  of  applicability  of  clause  (b)  of  sub-section  (1)  of  Section  46

although no cross-objection has been filed, on the principles analogous to

Order XLI Rule 33 of the Code of Civil Procedure.  Strong reliance in this

behalf has been placed on  Ravinder Kumar Sharma v.  State of Assam &

Ors. [(1999) (7) SCC 435].  We do not agree.   

Mr. Gupta himself submitted that clauses (a) and (b) of sub-section

(1) of Section 46 are in two different water tight compartments.  It confers,

therefore, two remedies.  The ingredients to establish that a case has been

made out for removal of the registration of the appellant from the register,

thus, are on separate grounds. If the High Court has refused to consider one

of the grounds, its right was affected to urge the applicability of clause (b)

being separate and distinct from the grounds on which contention can be

raised for applying the ingredients of clause (a) being wholly distinct and

different,  the  principles  of  Order  XLI  Rule  33  of  the  Code  of  Civil

Procedure, in our opinion, would not be applicable.  The causes of action

31

for invoking clauses (a) and (b) are different and, thus, when a composite

application is filed, only different causes of action are joined together.  If

one cause of action fails, the remedy by way of appeal thereagainst must be

availed.

48. Mr.  Gupta  submits  that  therein  the  application  was  filed  under

Section 46 and not under Section 56 whereas grounds have been raised both

under Sections 46 and 56 of the Act.

49. A  situation  of  this  nature  has  not  been  considered  in  any  of  the

precedents.   The  original  application  filed  by  the  respondent  was

maintainable on three counts:

1. Application of Section 46, both under clauses (a) and (b);

2. Application of Section 56; and  

3. The common law principle that he had been served with a legal notice

by the appellant desisting from using the word TOSIBA.

50. It is difficult to hold that only because respondent had not been able

to prove one of the grounds, namely, applicability of Section 56 of the Act,

it  loses its  locus also.   It  would continue to be a person aggrieved even

within the purview of Section 46 of the Act as it was slapped with a notice

32

of action and it  had a cause of action.   It  had a remedy.  It invoked the

jurisdiction of the Registrar on a large number of grounds.  One of it was

accepted, others were not.

51. The petition, therefore, which was maintainable, did not cease to be

so particularly when the respondent not only faced with a legal action but,

in fact, later on a suit has also been filed by the appellant against it.  We

would leave the question at that.   

Exercise of Discretional jurisdiction  

52. This brings us to the question as to whether it was a fit case where the

Registrar  and  consequently  the  High  Court  should  have  exercised  its

discretionary jurisdiction.   

Sub-section (2) of Section 109 provides for an appeal from any order

or decision of the Registrar under the Act or the Rules made thereunder.  An

appeal  is  to  be  heard  by  a  learned  Single  Judge.   A  further  appeal  is

provided before a Division Bench in terms of sub-section (5) of Section 109

of  the  Act.   Appellate  jurisdiction  of  the High Court  is  not  restricted  or

limited.  Sub-section (6) of Section 109 stipulates that the High Court shall

have the power to make any order which the Registrar could make under the

33

Act.  In other words, if the Registrar exercises a discretionary jurisdiction,

the High Court while exercising its appellate jurisdiction would continue to

do so.  The High Court  having a plenary jurisdiction, thus, was not only

entitled to take into consideration the materials placed on record as also the

finding of the Registrar, but it could also arrive at its own finding on the

basis of the materials on record.

53. For the said purpose, the basic admitted fact could have been taken

into consideration.  It may be true that the appellant whether from the date

of  registration,  or  from the  date  of  order  of  rectification  or  even a  post

rectification period did not use the registered trade mark.  It did not enter

into any collaboration agreement with an Indian company.  It did not grant

any licence to any other person to use the trade mark.   

We may, however, notice that at least in the year 1985 it had issued

an advertisement before any controversy arose.  It renewed the registration

every  seven  years.   Its  registration  stands  extended  upto  2016  A.D.   It

specifically  brought  to  the  notice  of  the  Registrar  that  it  had  been

maintaining service centres in India in respect of washing machines, stating:

“Thus, to summarize:

34

(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

35

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,

36

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 :

37

“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

38

‘possible’ I mean possible in a practical sense, and not merely in a fantastic view.”

58. It is this aspect of the matter which has been missed by the learned

Single Judge and the Division Bench of the Calcutta High Court.   

59. We,  therefore,  are  of  the  opinion  that  on  this  short  ground,  the

impugned judgment cannot be sustained.  It is set aside accordingly.  We

would, however, request the Delhi High Court to consider the desirability of

disposing  of  the  suit  filed  by  the  appellant  against  the  respondent  as

expeditiously as possible.  The appeal is allowed.  No costs.

……………..…………J. [S.B. Sinha]

                .………………….……J.

      [Lokeshwar Singh Panta]

New Delhi May 16, 2008

39