Merely non user of Trademark does not results in its abandonment
The Supreme Court of India, in the case Kabushiki Kaisha Toshiba vs Tosiba Appliances Co. & Ors, delivered a judgment on May 16, 2008, authored by Justice S.B. Sinha, with Justice Lokeshwar Singh Panta concurring. The case revolved around the jurisdiction of the Registrar of Trade Marks to remove a registered mark from the register due to non-use, as per Section 46 of the Trade and Merchandise Marks Act, 1958.
Kabushiki Kaisha Toshiba, the appellant, is a Japanese company with a history dating back to 1857, known for manufacturing heavy electrical apparatus. It adopted the trademark TOSHIBA in 1939. The respondent, Tosiba Appliances Co., is an Indian company that has been using the trademark TOSIBA since 1975 for various electrical appliances.
The appellant registered its trademark TOSHIBA in India in 1971 for various electrical goods. The respondent, claiming to be aggrieved by the registration, filed an application for rectification under Sections 46 and 56 of the Act, alleging that the appellant's mark was not distinctive and that there was no bona fide intention to use it in India. The Deputy Registrar of Trade Marks partially allowed the rectification application, ordering the deletion of 'washing machines' and 'spin dryers' from the appellant's registered trademark.
The appellant filed a suit in the Delhi High Court seeking an injunction against the respondent's use of the mark TOSIBA. The Calcutta High Court, in an appeal against the Deputy Registrar's order, upheld the rectification of the trademark for washing machines and spin dryers but dismissed the appellant's claim under Section 46(1)(b) regarding continuous non-use for five years.
The Supreme Court, analyzing the statutory provisions and the facts of the case, found that the respondent was not a "person aggrieved" within the meaning of Section 46 of the Act, as it did not deal with washing machines or spin dryers. The Court also noted that the appellant had not used the trademark effectively in India but had not abandoned its rights either. The Court set aside the impugned judgment and allowed the appeal, requesting the Delhi High Court to expedite the disposal of the pending suit.
The judgment highlights the importance of bona fide intention and use in trademark registration and the need for a clear distinction between the grounds for rectification under Section 46(1)(a) and (b) of the Act. It also underscores the discretionary power of the Registrar and the High Court in maintaining the integrity of the trademark register.
Case Citation: Kabushiki Kaisha Toshiba Vs Tosiba Appliances Co.: 2008 (10) SCC 766
Written by: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Ph no: 9990389539
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