Dharam Singh,ARTM - (1.) THIS order disposes of two rectification proceedings dated 7.8.1989. In these proceedings, Tosiba Appliances Co., having place of business at A-24-A, Street No. 4, Industrial Area Anand Parbat, New Delhi (hereinafter referred to as applicant for rectification or petitioner) applied for rectification of the register by removal therefrom the trade mark TOSHIBA' registered under Nos. 160442 & 160443 in class 9 & 11 respectively in the name of Kabushiki Kaisha Toshiba also trading as Toshiba Corporation, Japan who are hereinafter referred to as registered proprietor or respondent under the provisions of the Trade & Merchandise Marks Act, 1958 and Rules framed thereunder read with the relevant provisions of the Trade Marks Act, 1999 and Rules framed thereunder on the following grounds:- (1) That the said trade mark TOSHIBA was wrongly registered and wrongly remains on the Register of Trade Marks and the entry of the mark was made without sufficient cause. (2) That the trade mark was registered under Section 9 of the Act by committing fraud and misrepresenting and suppressing the facts. (3) That the registration of the mark was obtained without bona fide intention in relation to goods. (4) That the trade mark TOSHIBA' has not been used by the registered proprietors for a continuous period of five years and one month or a longer period prior to the date of applications for rectification. (5) That the respondents are blocking the registration. (6) That the proprietors of the mark TOSHIBA have been changed from time to time and the assignments and entries made in pursuance thereto on the Register are wrong; and the change of partnership has been wrongly recorded on the Register. (7) That the petitioners are using the trade 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 which has acquired good will and reputation of immense value during the course of trade and the mark in question offends against the provisions of Section 11 of the Trade & Merchandise Marks Act, 1958 on the date of commencement of the proceedings. (8) That the mark sought to be removed is not distinctive as on the date of application for rectification under Section 9 of the Act. (9) That the mark in question being disentitled for protection in the Court of law offends against the provisions of Section 11(e) of the Act. (10) That the petitioners are aggrieved as they have been served with a legal notice dated 24.4.1984 on behalf of the respondents to discontinue the use of the trade mark TOSIBA which the petitioners adopted in the year 1975. The respondents have no business in India. (11) That no action concerning the trade mark in question is pending in any Court of law in India.
(2.) It is humbly prayed that in view of the ground made as above, the said trade mark TOSHIBA be removed from the register or any other such appropriate order be passed which may be deemed proper under the circumstances of the case. In their counter statement filed on 15.11.1990, the registered proprietors denied all averments made in the application for rectification inter-alia stating as follows:- (1) That the present rectification proceedings are totally misconceived and mala fide and have been filed as a counter blast by the applicants for rectification after receiving a legal notice dated 24.4.1989 from the registered proprietors asking them to desist from using the well known trade mark TOSHIBA. (2) The registered proprietors are the world renowned industrial corporation which is engaged in diversified activities. The proprietors' predecessors in title were established in the year 1875. In the year 1939, Shibaura Engineering Works Co. Ltd., and Tokya Electric Company merged to Tokyo Shibaura Electric Company Ltd. The trade mark TOSHIBA was coined in the year 1939 by deriving letters 'TO' from the word Tokyo and 'SHIBA' from the word 'Shibaura'. In the year 1978, Tokyo Electric Co Ltd., changed its name to Tokyo Shibaura Denki Kabushiki Kaisha trading as Toshiba Corporation. This change was duly incorporated in all registrations of trade mark TOSHIBA. Subsequently, around in 1984 the registered proprietors' name was again changed to Kabushiki Toshiba Toshiba also trading as Toshiba Corporation. This change was also duly incorporated relation to in the said registrations. (3) That the trade mark TOSHIBA coined as such is' an invented word and has no meaning other than as a world known trade mark and is 100% inherently distinctive their goods. Further, by virtue of continuous & extensive use on their goods, it became the proprietors' house mark and was exclusively associated with them, therefore, the mark was rightly registered in respect of their products and the objection raised under Section 9 is duly frivolous. Secondly, the registrations of trade mark TOSHIBA under No. 160442 in respect of Scientific, nautical, surveying and electrical apparatus and instruments (including wireless) photographic, cinematographic, optical, weighing, measuring, apparatus and instruments, coin or counter freed apparatus, talking machine, cash registers, calculating machines, fire extinguishing apparatus falling in class 9 and under No. 160443 in respect of installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes falling in class 11 are conclusively valid under Section 32 of the Act of the Trade & Merchandise Marks Act, 1958 and the validity cannot be challenged as such by resort of frivolous objections raised under Section 9 of the Act. (4) That the registered proprietors hold registrations of the trade mark TOSHIBA in more than 140 countries of the world including India holding about 2500 registration and that the registration in class 9 & 11 in India dates back to the year 1953. (5) That the impugned trade mark has been continuously and extensively used since the year 1939 and in India since 1951. The goods bearing the trade mark TOSHIBA have been regularly sold and exported to various companies in India including HCL, Jyoti Ltd., Videocon International Ltd., Kirloskar Electric Go. Ltd., Instrumentation Ltd., etc. The registered proprietors have entered into various range of agreements such as technology transfer agreement, trade mark licence agreement, joint venture agreement and the service agreement with various companies in India. (6) That the registered proprietors has also been extensively advertising the trade mark TOSHIBA not only through the international media having circulation in India but also through the Indian media. The registered proprietors have various service centers in India for providing services for Toshiba goods sold or exported to the Indian customers. The consumers in India very well know the trade mark TOSHIBA and the said mark has become a household word and the provisions of Section 47 of the Act are totally inapplicable as the extensive nexus by way of agreement, joint venture etc. with India shows the registered proprietors' intention to use the trade mark TOSHIBA in India. The reasons for which the certain goods have not been directly sold by the registered proprietors to India obviously are the 'special circumstances' prevailing on account of the import trade restrictions imposed by the Govt. of India, and if the ban on import of certain goods is lifted in future those goods also would be sold & exported to Indian customers and in any case it does not entitle in law the applicant for rectification to use the world famous trade mark and preempt the registered proprietor from entering the petitioners' goods in the Indian market. Moreover, as stated above, the registered proprietor has a large customer base in India even for the goods which is currently debarred from direct selling to India, as the customers bring in such goods to India under luggage rules and at the same time the registered proprietors have set up service centers in India with a view to keep up the high standard of its reputation and providing repair, maintenance and service and as such the grounds of non-use is totally misconceived. (7) The registered proprietors of the trade mark TOSHIBA have not been changed from time to time as alleged by the petitioners, what has been changed is the only name of registered proprietors which has been recorded on the Register of Trade Marks well within the time by taking appropriate steps. (8) That although the trade mark TOSHIBA being an invented word is inherently distinctive, however, on account of vast international and Indian use and reputation, the trade mark has acquired high level of distinctiveness and as such there has been no loss of distinctiveness as the registered proprietors are vigilant not only in the classes of interest, but in all classes of the Act. Therefore, the allegation by the petitioner that the trade mark TOSHIBA as on the date of commencement of the present proceedings is not distinctive has no force. On the contrary, the applicants for rectification have infringed the registered TOSHIBA trade mark for which legal proceedings have already been initiated before the High Court of Delhi in a Civil Suit No. 1623 of 1990. (9) That the registered proprietors have filed several legal proceedings including the aforesaid civil suit in Delhi High Court. Some of these have since been decided in favour of the registered proprietor and some are still pending. It is misconceived and suppression of the fact on the part of the applicants for rectification that no action concerning the trade mark in question is pending in the Court of law. (10) That the applicants for rectification cannot be called a "person aggrieved" for the conduct of adopting the registered proprietors' world famous trade mark on their goods hence they have no locus standi to file the present petition. It cannot be agreed that the registered proprietors have no business in India, the registered proprietors have not only the local office in India, but also important sales, joint ventures, collaborations, licensing arrangement, after sales service centers, extensive local advertising and all backed by a world famous trade mark TOSHIBA.
(3.) IN view of the foregoing, the rectification petitions are simply a pressure device and the same being totally frivolous and misconceived ought to be dismissed with a heavy costs.;