1. The trade mark TOSIBA was sought to be registered by Shri Narinder Kumar Suri and Shri Dharendra Paul Suri trading as M/s. Tosiba Appliances Company, Anand Parbat, New Delhi (hereinafter referred to as the applicants) in respect of electrical apparatus and instruments, electrical iron (flat) and electrical appliances included in class 9 vide application No. 50986 dated 9th May, 1989 (hereinafter referred to as the class 9 application) and in respect of machines, machines tools, sewing machines and parts thereof except needles foot pressures and heads motor vests and pedal drive, shuttles, tambours for sewing machines included in class 7 vide application No. 510312 dated 12th May, 1989 (hereinafter referred to as the class 7 application). Both the above noted applications were ordered to be advertised before acceptance and in due course of time were advertised in Trade Marks Journal No. 1115 dated 16th November, 1995 at page 2335 and 2323 respectively. The applicants claimed the user of the mark applied for in both the applications as since February, 1975.
2. On 29th January, 1996 M/s. Kabushiki Kaisha Toshiba also trading as Toshiba Corporation, a company incorporated under the laws of Japan (hereinafter referred to as the opponents) gave notices of their intention to oppose the registration of the applications advertised as aforesaid by filing separate notices of opposition in respect of both the applications, on the grounds of the registration sought to be violatives of the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). These oppositions were registered under.Nos. DEL-9858 and DEL-9860 respectively. The applicants contested the aforesaid notices of opposition by filing their counter statement separately in both the cases, consisting of the para-wise reply to the contents of the respective notice of opposition filed by the opponents as aforesaid. The opponents filed evidence in support of opposition No. DEL-9858 on 8th October, 1998, by way of an affidavit dated 6.10.1998 and in opposition No. DEL-9860 on 23.4.1999 by way of an affidavit dated 23rd April, 1999, both affidavits in the name of same Debjeet Gupta, Constituted Attorney of the opponents, annexing with both the affidavits the common exhibits, consisting of 427 pages from Annexure A to Annexure M. The applicants filed evidence in support of their application by way of an affidavit dated 28th December, 1999 separately in both the cases in the name of Shri D.P.Suri, annexing therewith common exhibits separately running into 79 pages of the photo copies of some supporting documents. On 28th July, 2000 the opponents filed their reply evidence separately in both the cases under Rule 55 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as the Rules), by way of affidavits dated 28th July, 2000 filed separately in the name of Shri Debjeet Gupta. The matter was thereafter set down for hearing and ultimately came up before me for hearing on 8th February, 2001 Shri N.K. Anand, advocate with Shri Safeer Anand, advocate, Ms. Satya Sivaswami, advocate and Ms.
Sunita Singh, advocate, appeared for the opponents and Shri Ajay Sahani, advocate with Shri H.P. Singh, advocate and Shri Gurmeet Singh, advocate, appeared for the applicants.
3. Shri N.K. Anand, the Ld. Counsel for the opponents submitted to advance common submissions in respect of both the cases. Shri Anand submitted that the word TOSHIBA is an invented word, invented by the opponents by taking the letters TO from the name of the city Tokyo and the letters SHIBA from the namp of their predecessor company, Shibaura Electric Company Limited. The Ld. Counsel further submitted that the opponents adopted the trade mark TOSHIBA in the year of 1939. He stressed that the said trade mark is well known globally in respect of electronic and electric equipment throughout the world. Shri Anand referred to para 5 of the opponents affidavit in the name of Shri Debjeet Gupta and the Exhibit Annexure B of the said affidavit and submitted that the opponents were ranked 32nd largest company in the world by the fortune Magazines (1996 Listing) and also No. 5 in the field of electronic and electric equipment. The Ld. Counsel also referred to the extracts from "The Guinness Book of Business Record" 1996 Edition in respect of global reputation of the opponents company and their trade mark TOSHIBA. The Ld. Counsel further submitted that the opponents have obtained more than two thousand and five hundred registration across nearly One Hundred and Forty countries. Shri Anand further contended that in India the opponents has been in collaboration with several companies. Shri Anand referred to some collaboration agreements copy of which had been filed by the opponents as exhibits to their aforesaid affidavits. The Ld. counsel further submitted that the opponents first used their trade mark TOSHIBA in India in the year of 1951. He stressed that prior to 1992 the import of the opponents goods were restricted, even than the opponents could built up their reputation amongst the Indian consumers by entering into various joint ventures and other business arrangements with several Indian companies who manufactured, assembled and serviced TOSHIBA goods in India. He further contended that the TOSHIBA goods have also formed their way into the country through tourism. The Ld. Counsel referred to some collaboration agreement copies of which had been exhibited by way of the opponents affidavits in the name of Shri Debjeet Gupta, Shri Anand, the Ld. counsel for the opponents urged that the mark applied for, namely, TOSIBA is almost identical to that of the opponents invented trade mark TOSHIBA and has been sought to be registered by the applicants in respect of the same or same description of goods in both the applications for goods under class 9 or class 7. The Ld. Counsel stressed that keeping in view of the tremendous reputation of the opponents trade mark the use of the same trade mark, namely, TOSIBA by the applicants in respect of the same or similar goods is definitely to cause confusion amongst the consumers, hence, the registration of the mark applied for is prohibited by operation of Section 11 (a) of the Act. The Ld. Counsel further submitted that the Opponents trade mark TOSHIBA is registered in respect of huge number of goods included in class 7 in class 9 and class 11. Shri Anand submitted that the trade mark TOSHIBA was registered under No. 273758 in class 7, No. 404341 in class 9, No. 160443 in class 11, No. 273760 in class 11, No. 404348 in class 11 and No. 404349 in class 11. The Ld. Counsel further contended that the mark applied for is almost identical to that of the opponents aforesaid registered trade marks, namely, TOSHIBA and is in respect of the same or same description of goods in both the applications, namely, class 9 application and class 7 application, as that of the opponents goods under aforesaid registration, hence the registration of the mark applled for is also prohibited by operation of Section 12(1) of the Act. Shri Anand further contended that the applicants have dishonestly adopted the mark applied for, namely, TOSIBA with their mala fide intention of encashing the tremendous goodwill of the opponents trade mark, namely, TOSHIBA. He further submitted that the applicants had not brought out on record any reason as to why they hit upon the word TOSIBA which is identical to the opponents invented trade mark TOSHIBA The Ld. Counsel further contended that in view of the dishonest adoption of the mark applied for by the applicants they have no claim to be the proprietor of the mark applied for in terms of the provisions of Section 18(1) of the Act nor they have any entitlement of availing the benefit of Section 12(3) of the Act. Shri Anand vehemently argued that the applicants have adopted unfair trade practice which is resulting into the dilution of the reputation of the opponents well known trade mark, namely, TOSHIBA. The Ld. Counsel relied upon the following cases:-N.R. Dongre v. Whirlpool Corporation USA, (3) Jagmag Electric and Radio Company v. Telerad Private Limited, AIR Shri Ajay Sahani, the Ld. Counsel for the applicants, at the outset raised a preliminary issue that the opponents have filed their evidence by way of an affidavit of Shri Debjeet Gupta, advocate in the capacity of the constituted attorney of the opponents company. The Ld. Counsel stressed that in accordance with the provisions of Section 123 of the Act an attorney cannot file affidavit, on behalf of the party, before the Registrar. The Ld. Counsel contended that the aforesaid evidence filed by the opponents, therefore, cannot be read in evidence by this Tribunal. The Ld. Counsel further assailed the admissibility of the opponents evidence on the record because the opponents did not show the originals of the exhibits to the applicants, during the course of hearing, in accordance with the provisions of Rule 57 of the Rules.
Shri Sahani further contended that the opponents had no intention to use the trade mark TOSHIBA in respect of the goods for which the opponents have adopted its registration relied upon by them. He further contended that opponents have no reputation in India in respect of their trade mark TOSHIBA, hence, there appears to be no reason of any likelihood of confusion and deception in the minds of the consumers if the applicants use the mark applied for on their goods. The Ld. Counsel further contended that the goods in respect of which the applicants have sought registration of the trade mark TOSIBA are totally different goods than that of the goods of the opponents. Shri Sahani, therefore, stressed that under these circumstances the registration of the mark applied for is not at all prohibited by operation of Section 12(1) of the Act or Section 11(a) of the Act. Shri Sahani further contended that the applicants had honestly adopted that mark applied for, namely, TOSIBA and having adopted honestly the applicants had been using the mark applied for continuously since February, 1975, thus, the applicants have a definite entitlement for concurrent registration of the mark applied for under Section 12(3) of the Act Shri Sahani further submitted that in view of the continuous use of the mark applied for the applicants have definitely claim to be the proprietor in terms of Section 18(1) of the Act. The Ld. Counsel submitted that the class 9 application of the applicants may be considered by this Tribunal in respect of the 'flat irons only included in class 9' and the class 7 application may be considered by this Tribunal in respect of 'washing machines only included in class 7. The Ld. Counsel urged that having confined the specification of goods, as aforesaid, the applicants goods become more different and far from the opponents goods entitling the applicants for registration of the mark applied for in respect of these goods. The Ld. Counsel relied upon following authorities:- (3) Aktieboleget Jonkoping v. S.V. Palanichamy Nadar and Ors., AIR 1969 Calcutta 43 (7) Sony Kabushild Kaihsa v. Shayamrao Master, AIR 1985 Bombay 327 : PTC (Suppl)(1)622.
Firstly, I dispose of the preliminary objections taken on behalf of the applicants. First objection is that opponents had filed their evidence by way of an affidavit in the name of Shri Debjeet Gupta who is an advocate and hence, cannot file affidavit on behalf of the applicants in accordance with the provisions of Section 123 of the Act. Section 123 of the Act is reproduced as under:- "Section 123-Agents-Where, by or this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done, instead of by that person himself, by a person duly authorised in the prescribed manner, who is- (b) a person registered in the prescribed manner as a trade mark agent, or 6. This section provides in its general terms that a duly authorised agent popularly known as trade mark agent may perform any act under the Act required to be done by the party other than making of an affidavit.
A legal practitioner is qualified to function as trade mark agent. Rule 21 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as the Rules) give effect to the aforesaid provisions of Section 123 of the Act and provide at Sub-rule (1) that the authorisation of an agent (trade mark agent) shall be executed by the party so authorising the said agent, on form TM-48 or in such other written form as the Registrar may deemed sufficient and proper. As per the practice prevailing in the Trade Marks Registry the execution of authorisation on TM-48 is done in respect of a particular proceedings before the Registrar and in respect of the authorisation for conducting proceedings in respect of any case for or against the party so authorising, is done on a general power of attorney in favour of that trade mark agent. In the instant case obviously Shri Debjeet Gupta being an advocate is qualified for functioning as a trade mark agent under Section 123 of the Act. For the purpose of present proceedings before the Registrar, the opponents have filed the general power of attorney dated 1st March, 1990 which do not include the name of Shri Debjeet Gupta advocate. Thus, Shri Debjeet Gupta had not been authorised by the opponents to function as a trade mark agent in respect of the present proceedings before the Registrar in accordance with the provisions of Section 123 of the Act. Shri Debjeet Gupta, for the purpose of present proceedings is authorised to function as the constituted attorney of the opponents as per the power of attorney dated 3rd June, 1992, executed by the opponents in favour of Shri Debjeet Gupta. To my mind filing of affidavit by constituted attorney does not suffer with any legal infirmity. Under these circumstance this objection is not maintained.
7. The second objection on behalf of the applicants is that the opponents did not file the originals of the exhibits filed by them alongwith their affidavit dated 6th October, 1998 in the name of Shri Debjeet Gupta, in accordance with the provisions of Rule 57 of the Rules. Rule 57 of the Rules reads as under:- "Rule 57-Exhibits--Where there are exhibits to affidavit filed in an opposition a copy or impression of each exhibit shall be sent to the other party on his request and at his expense or, if such copies or impressions cannot conveniently be furnished the originals shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs." 8. The above reproduced Rule 57 provide in its general terms that where in an opposition proceedings before the Registrar the applicant or the opponents filed exhibits alongwith their respective affidavits, the copies of such exhibits shall be sent by the party making such affidavit to the other party on his request and expenses. If the copies of the exhibits are not provided by the party making that affidavit to the other party, the former shall leave the originals of the exhibits in the Registry, so that the other party may inspect them and these originals exhibits in such case shall be produced before the Registrar at the time of hearing, unless the Registrar otherwise directed. The practice prevailing in the Trade Marks Registry is that the production of originals of the exhibits is ordered by the Registrar in cases where the other party objects to the genuinity of the copies of the documents so exhibited alongwith the concerned affidavit. In the instant case the applicants did not make any request to the opponents for furnishing the copies of the exhibits to them at the expense of the applicants, not there is any request by the applicants for inspection of the originals of the exhibits in accordance with provisions of Rule 57 of the Rules.
The perusal of the affidavit dated 28th December, 1999 filed by the applicants in the name of Shri D.P. Suri, do not indicate any of their statement to the effect that the applicants had incurred any doubt towards the genuinity of the copies of the documents exhibited by the opponents alongwith their affidavit dated 6th October, 1998. Under these circumstances there was no question of production of the originals of the opponents exhibits under Rule 57 of the Rules. It may be mentioned here that in accordance with the provisions of Section 99 of the Act, the evidences before the Registrar has to be filed on affidavit, hence, the exhibits which are filed as supporting documents to the affidavit are considered prima facie to be the genuine document unless some reasonable doubt is raised by the other side or by the Registrar. Under these circumstances the second objection, taken by the applicants, is also not maintainable.
9. Now coming to the merits of the case. The issues which fall for determination by this Tribunal are under Section 11(a), Section 12(1), Section 12(3) and Section 18(1) of the Act.
10. Firstly, I take up the issue under Section 12(1) of the Act. This sub-section prohibits registration of a trade mark which is either identical or deceptively similar to an already registered trade mark in the name of some other proprietor and is also in respect of the goods which are either the same or of the same description as that of the goods covered under that earlier registered trade mark. Both the aforesaid conditions has to be fulfilled in order to invoke the prohibition contained under this sub-section.
11. In the instant case the opponents have relied upon their following registered trade marks in respect of the goods indicated below against each registered trade marks:- 12. The first point which falls for consideration of this Tribunal is, as to whether the mark applied for, namely, TOSIBA is deceptively similar to the opponents aforesaid earlier registered trade mark, namely, TOSHIBA. The expression deceptively similar has been defined at Section 2(1)(d) of the Act as under: "Section 2(1)(d)-"deceptively similar":- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;" Thus, a trade mark, to be deceptively similar to the other trade mark, has not only to be resembling but also the resemblance has to be so near as to likely to deceive or cause confusion. In Com Product Refining Company v. Shangrila Food Product, AIR 1960 Supreme Court 142 : PTC (Suppl)(1) 13, the Supreme Court observed as under at its para 18: "Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them." 13. On comparison of both the competing trade marks, namely, TOSIBA and TOSHIBA the only structural difference is that in the mark applied for, namely, TOSIBA the alphabet H of the opponents trade mark TOSHIBA has been dropped. Thus, structurally the resemblance is nearest possible, because the minimum possible alteration in a word mark can structurally be made either by removing one alphabet or by adding one alphabet.
Phonetically too, the competing marks have got the nearest possible resemblance. In some parts of our country the syllable 'SH' is pronounced as S. In such a case the competing marks may be even phonetically identical. Keeping in view of the consumers of average intelligence and imperfect recollection the above discussed structural as well as phonetic resemblance of the mark applied for, namely, TOSIBA with that of the opponents already registered trade mark TOSHIBA has to be so near as to likely to cause confusion or deception. The mark applied for, namely TOSIBA is, therefore, deceptively similar to that of the opponents already registered trade mark TOSHIBA.14. Now coming to the goods. The point falls for consideration is whether the applicants goods in class 7 application as well as in class 9 application are the goods of the same description as that of the goods covered under the above reproduced registrations in favour of the opponents. While considering whether the two sets of goods are of the same description, the issue has to be examined from the business and commercial point of view. The main consideration therefore, remains for the Tribunal as to whether the both sets of goods are such that by virtue of the similarity, affinity or other circumstances between those goods, the consumers will consider those goods as coming from the same trade source, if marketed under the same or similar trade mark. In Jelineks Appln., (1946) 63 RFC 69, following factors were formulated to be considered for deciding whether the two sets of goods are of the same description or nor; 15. It is not necessary that all the three criteria should be fulfilled in order for specified goods to be the same description as other specified goods. Each case to be considered on its own particular facts.
16. The applicants goods in class 7 application are 'machines tools, sewing machines and parts thereof except needles, foot presses and hats, motor belts, pedals drive, shuttles tambours for sewing machines'. The applicants goods under their class 9 application are 'electric apparatus and instruments, electric iron (flat) and electronic appliances'. The opponents goods in class 7 under their registered trade mark Nos. 273758 and 404341 are consisting of various goods which are various machines and parts thereof for domestic use and the machines and parts thereof for commercial or industrial use. The applicants goods in class 7 application, as aforesaid, are also machines and machine tools. Obviously these are the goods of the same description as that of the opponents covered under their aforesaid registered trade mark Nos. 273758 and 404341, keeping in view of the nature and composition of the goods being machines and machines tools, their respective uses and function again being same because the opponents goods are also machines and machines tools and the trade channel through which they are bought and sold which again has to be the same because as aforesaid the opponents goods are also machines and machines tools and parts thereof. The applicants goods in class 7 application, namely, 'sewing machines and parts thereof and also other goods (which are also the parts and fittings of the sewing machines) are the goods of the same description as that of the applicants goods under their class 7 registration, namely, electrical operated hand tools for household goods, both being the goods for domestic use.
17. The applicants goods under their class 9 application, are electrical apparatus and instruments, electronic appliances and electric iron (flat). The very perusal of the opponents goods under their registration in class 9 consisting of huge number of goods can be broadly classified in two groups, namely, domestic electric goods and the commercial or industrial electric goods and parts thereof. The applicants description of goods, namely, electrical apparatus and instruments and electronic appliance included in class 9 also constitute the domestic as well as the commercial electric instruments and appliances. Thus, the aforesaid goods, obviously, has to be the same or of the same description as that of the opponents goods.
18. In view of the above discussion the applicants goods in their class 7 application as well as class 9 application are of the same description as that of the opponents goods in their aforesaid registrations. Under these circumstances both the conditions required to invoke prohibition contained under Section 12(1) of the Act are fulfilled, hence, the registration of the mark applied for in class 7 application as well class 9 application are prohibited for registration under Section 12(1) of the Act. It may be mentioned here that in order to invoke prohibition contained under Section 12(1) of the Act, it is enough if some of the goods of the applicants are of the same description as that of the opponents goods under the opponents registered trade mark.
19. It is clarified here that this Tribunal has not considered the opponents goods which had been ordered to be rectified from the aforesaid registrations of the opponents, vide orders of the High Court of Calcutta in Appeal Nos. 530 of 1992, 531 of 1992 and 532 of 1992.
20. Now coming to the issue under Section 11(a) of the Act. This sub-section prohibits registration of a trade mark the use of which is likely to deceive or cause confusion. In the instant case the likelihood of confusion or deception by the use of the mark applied for, by the applicants had been alleged due to the close resemblance of the mark applied for, namely, TOSIBA with that of the opponents trade mark, namely, TOSHIBA. In London Rubber Company Limited v. Durex Products Incorporated, AIR 1963 Supreme Court 1882 : PTC (Suppl)(1) 246, the Hon'ble Supreme Court observed, at its para 8, as under, while deciding the issue of likelihood of confusion or deception under Section 8(a) of the Trade Marks Act, 1940. The present Section 11 (a) of the present Act is the same as that of Section 8(a) of the 1940 Act.
The observations of the Supreme Court are as under:- "The provisions of Ss. 8 and 10 of the Act are enabling provisions in the sense that it is not obligatory upon a proprietor of a mark to apply for its registration so as to be able to use it. But when a proprietor of a mark, in order to obtain the benefit of the provisions of the Trade Marks Act, such as legally protected right to use it, applies for registration of his mark he must satisfy the Registrar that it does not offend against the provisions of Section 8 of the Act. The burden is on him to do so, confining ourselves to Clause (a) the question which the Registrar has to decide is, whether having regard to the reputation acquired by use of a mark or a name, the mark at the date of the application for registration if used in a normal and fair manner in connection with any of the goods covered by the proposed registration, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons (See 38 Halsbury's Laws of England pp. 542, 543)." 21. In view of the above noted principle initiated by the Supreme Court the reputation acquired by the use of the opponents trade mark or the trade name has to be the background for adjudging the likelihood of confusion or deception by the use of the mark applied for. The reputation of the opponents trade name, namely TOSHIBA CORPORATION becomes equally important as that of the opponents trade mark because the opponents trade name is substantially consisting of the opponents trade mark, namely, TOSHIBA. Since such reputation is a matter of fact, hence, it has to be probed into the evidence filed by the opponents. In the instant case the opponents have filed their evidence by way of an affidavit dated 6th October 1998 in the name of Shri Debjeet Gupta. At para 5 of the said affidavit the opponents have said that they are the world renowned company engaged in diversified range of activities which included, inter alia, the manufacturing and sale of personal computers including laptop, peripheral equipments, telecommunications products including mobiles, communications equipments, semi conductors, liquid crystal display (LCD's), floppy disk drive, copying machines, x-ray computer tomography system, nuclear power plant equipment, thermal plant equipment, inverter, motors, industrial machinery, transportation equipments, CTV, VTR, radio and cassette tape recorders, transformers, escalators, elevators, digital control apparatus, switch gears, circuit beakers, generators, batteries, colour cathode ray tubes, silicon wafers, chemical and glass products etc. The opponents have exhibited extracts of the Fortunes Magazines (1996 Listing). At para 6 the opponents have stated that they coined the word TOSHIBA by taking the letters TO' from the word Tokyo and the word SHIBA from the word Shibaura which was the part of their earlier corporate name. At para 7 the opponents have stated that they including their predecessor in business had been using the trade mark TOSHIBA since 1939 continuously and extensively. The opponents have given their worldwide figure of sales since the year of 1984 to 1995 in Japanese yen. At para 8 the opponents have stated that since the adoption of the trade mark TOSHIBA they had spent enormous sums of money in publishing and promoting their trade mark. The opponents have given their annual figure of expenditure on publicity since 1984 to the year of 1995. At para 9 the opponents have stated that they have used, promoted and advertised their trade mark TOSHIBA in India. At para 10 of the affidavits the opponents have stated that in November, 1951 they gave through technical assistance to an Indian Concern. The opponents have also stated the list of the companies to whom they have supplied their assembling kit in India. At para 11 the opponents have given the figures of exports to India under their trade mark TOSHIBA from the year 1984 to 1995. In support of the aforesaid statement the opponents have annexed photo copies of some documents as exhibit to the aforesaid affidavit. The perusal of exhibits indicate that the opponents company, namely, Toshiba Corporation had been advertising their goods in India as is evidenced by the copies of the advertisement at Annexure 'D', the earliest of these being pertaining to the year of 1980. The company had been providing technical collaboration in India to various Indian companies by way of technical collaboration agreement exhibited at Annexure E, the earliest one pertains to the year of 1982. At Annexure T the opponents have given the list of their application/registration in various countries. The list run in about 200 pages. At Annexure T the opponents have annexed the registration certificates in respect of the registration of their trade mark TOSHIBA in various countries including India. During the course of arguments the Ld. Counsel for the opponents submitted before this Tribunal the extracts from the 'Guinness Books of Business Records' indicating therein the facts pertaining to the reputation of the opponents company.
22. The above discussed documentary evidence indicate that the opponents company is globally known company and was ranked as No. 5 in the world, in field of electronic and electric equipments as provided in Fortune Five Hundred Magazines 1996 Edition (Annexure B to the opponents affidavit). It is also available in aforesaid evidence on record that the opponents had been advertising their goods in India under their trade mark TOSHIBA since the year of 1980. The opponents company had been giving technical collaboration to various Indian companies as evidenced by the various technical collaboration agreement since 1982 onwards. The opponent's trade mark TOSHIBA is registered in India as per the details given above. As regards the opponents company's global reputation, as provided in the Guinness Books of Business Records 1996 Edition, the opponents company got 1961 Patents registered during period of 1979 to 1989. The opponents company ranked No. 11 in 1994 with sales of 37159 Million Dollars and 2503 Millions Dollars on R&D. The company was ranked within top ten spenders on R&D during 1990's. The aforesaid facts in evidence do establish a handsome reputation of the opponents trade name, namely, Toshiba Corporation as well as their trade mark, namely, TOSHIBA, globally as well as in India.
23. The applicants case is that their goods are different than that of the opponents. It has already been held that the most of the applicants goods are of the same description as that of the goods of the opponents covered under their registrations reproduced above. In Corn Products Refining Co. v. Shangrila Food Products Limited, AIR 1960 Supreme Court 142: PTC (Suppl)(1) 13 (supra), it was observed as under at its para 20:- "It is true that in both the above mentioned cases the two competing trade marks were absolutely identical which is not the case here.
But that in our opinion makes no difference. The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. The trade connection between different goods is another such test. Exhypothesi, this latter test applies only when the goods are different. These tests are independent test. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where the competing marks are identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case." 24. The opponents goods which are having the trade connections with that of the applicants goods are, namely, rectifiers, transformers, condenser, switches (electrical) of all kinds, electric connectors, fuses, electric wires and wires transistors etc. are the goods which can be used as components or parts or fittings of the applicants goods, hence, in view of the aforesaid observations of the Supreme Court the use of the mark applied for namely, TOSIBA in respect of applicants goods is likely to deceive or cause confusion. Before parting with discussion on this issue I do wish to mention that in some cases where a particular trade mark is commonly known to the substantial number of people, that is to say the trade mark is well known, the courts had been taking the cognizance of the factum of such common knowledge, of such trade mark and the goods sold thereunder, even without taking into account any evidence filed on record in respect of such reputation or common knowledge of that trade mark. One such precedence is the following observations of Hon'ble Mr. Justice Mahender Narayan of the High Court of Delhi in Diamler Benz Aktiegesellchaft and Anr. v. Hybo Hindustan, 1994 PTC 287:- "The word "Benz" has been associated with a Car ever since I remember. This car had a device upon it; a three pointed star in a circle/ring. Both, the name and the device, have always, in my memory, been inextricably linked. I am unable to ignore this connection.
It was, however, registered in India in 1951. It is one of the most famous marks of the world. I think it will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the "Mercedes Benz", its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons who make undergarments like the defendant, or any one else. Such a mark is not up for grabs-not available to any person to apply upon anything or goods. That name which is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.
In any case, as long as I remember, "Mercedes" has been a status car, which very few of the car owners are able to afford to have today, or any time. "Benz" happens to be a surname of a German. It does not exist as surname in this country, and no Indian personal has been pointed out by counsel for the defendant during the course of arguments, having that name as an Indian, in India.
I see no reason why any trader in India should adopt the name "Benz", which is, as stated above, associated with one of the finest engineered cars in the world, and use the same name with respect to ordinary goods, in this case undergarments, particularly underwears." 25. In the instant case the opponents mark TOSHIBA' is equally well known to the substantial number of public who have the least knowledge of the electrical and electronic goods.
26. In view of the above discussion the use of the mark applied for is definitely to create confusion or deception in the minds of the consumers, hence, its registration is also prohibited by operation of Section 11 (a) of the Act.
27. The opponents relied upon the following cases in support of their case:-(1) Kamal Trading Company v. Gillete U.K. Ltd., 1988 PTC 1--In this case the plaintiffs company, incorporated under the laws U.K., had been using the trade mark 7 O'CLOCK on their goods which included safety razors, safety blades, shaving cream, shaving brush etc. in India and in certain neighbouring countries since 1913. The plaintiffs had acquired reputation in respect of their goods under the trade mark 7 O'CLOCK all over the world. The Plaintiffs had obtained registration of their trade mark 7 O'CLOCK in respect of various articles included in class 21, class 8 and class 3. The goods manufactured by the plaintiffs were not imported in India after the year 1958. In December, 1984 the plaintiffs entered into an agreement with the Indian company, namely, Indian Shaving Products Limited for licensing the manufacturing of safety razors blade in India under a hybrid trademark EJIETEK 7 O'CLOCK. In November, 1985 the plaintiffs become aware that the defendants had been manufacturing tooth brushes under the trade mark 7 O'CLOCK. The plaintiffs filed suit in the High Court of Bombay. The defendants claimed that the plaintiffs goods were not sold in India since 1958, hence, the goodwill or reputation acquired in respect of the use of their trade mark 7 O'CLOCK, stood extinguished. The defendants also claimed that the plaintiff had never manufactured toothbrushes which are totally different goods than that of the goods like safety razors and razor blade, therefore, no likelihood of confusion if defendants use the trade mark 7 O'CLOCK on tooth brushes.
The defendant also pleaded that the word 7 O'CLOCK was not an invented word. The Ld. counsel Single Judge granted interim relief in terms of the prior of the plaintiffs in the notice of motion. The matter came up in appeal before the Division Bench of the High Court of Bombay. The High Court held as under while dissenting from the Budweiser's Case, 1901 AC 217, In England;- "We must express our dissent with the view taken in this case. In our judgment, it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessary limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers, periodicals, magazines and in other medias. The result is that though the goods are not available in the country, the goods that the mark under which they are sold acquires wide reputation. Take for example, the televisions, the Video Concerns. These televisions and V.C.Rs. are not imported in India and sold in open market because of trade restrictions, but is possible even to suggest that the word 'National' or 'Sony' has not acquired reputation in this country? In our judgment, the goodwill or reputation of goods or marks does not depend upon its availability in a particular country. It is possible that the manufacturer may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturers. An identical view was taken by Division Bench of Mr. Justice S.K. Desai and Mr, Justice Bharucha in a judgment dated July 24, 1986 in Appeal No. 368 of 1986. The question for consideration before the Division Bench was whether the goodwill in the trade mark "7 O'CLOCK" stood extinguished because of non-availability of blades with the mark in India after year 1958.
The Division Bench turned down the claim by pointing out various reasons and we are in entire agreement with the observations made in the judgment on this aspect. In our judgment, it is not possible to follow the view taken in the case of "Budweiser".
We have heard Mr. Desai very extensively and we find that no only there is not merit in the appeal but the entire conduct of the defendants is totally dishonest and fraudulent in using the mark "7 O'CLOCK". To begin with, the defendants are unable to explain how the mark was invented by them. The mere perusal of the tooth brush and the plastic pouch in which it was sold clearly reveals the dishonest conduct of the defendants. The mark used on the tooth brush and the plastic pouch is also not identical. The plastic pouch mentions the word 'R' in a circle to suggest that the mark used by the defendants is a registered mark. In addition, a picture of tower possibly Fifet Tower, is printed on the pouch to suggest that the goods are manufactured in Paris. The defendants also used the words a "Hollywood-London-Paris" to suggest that the goods are of the foreign made. This conduct on the part of the defendants clearly indicate that the anxiety was to trade upon the reputation of the mark "7 O'CLOCK" and not to leave any chance for customer to detect the mis-use of the mark, further effort was made to give an impression that the mark is a registered mark and the goods are manufactured in foreign country. It is hardly required to be stated that when the aggrieved party goes to the Court, the defendants should be permitted to use the mark by making some alteration. When confronted with the conduct of the defendants, the only excuse Mr.
Desai can think of is that the defendants are illiterate and the commencement of the mark was without taking legal advice. In our judgment, the conduct reveals the mind of the defendants and the conduct by no stretch of imagination can be said to be either bona fide or innocent." 28. In the instant case too, the conduct of the applicant in adopting the opponents invented word 'TOSHIBA' as applicants trade mark was not bona fide. The aforesaid observations do support the opponent's case.N.R. Dongre v. Whirlpool Corporation, 1996 PTC 476--In this case the respondents No. 1 of an American Corporation was engaged in the manufacturing of washing machines under the trade mark WHIRLPOOL which was registered in their favour in different countries. The respondents claimed global reputation of their trade mark WHIRLPOOL in respect of washing machines. The respondents allowed registration to expire in the year of 1977. The appellant an Indian company obtained registration of a trade mark WHIRLPOOL in 1992 presently to their application dated 6.8.1986. The respondents filed Suit of Passing Off against the appellants. The Ld. Single Judge passed an interim injunction restraining the appellant to use the trade mark WHIRLPOOL. The Division Bench of the High Court of Delhi while deciding the appeal against the aforesaid order held as under:- "The knowledge and awareness of a trade mark in respect to the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even thus, shores of those countries where the goods have not been marketed. When a product is launched and hit the market in one country, the cognizance of the same is also taken by the people in the other country almost at the same time by getting acquainted with it through advertisement in newspapers, magazines, television, video films, cinema etc. even though there may not be availability of the products in those countries because of import restriction or other factors. In today's world it cannot be said that a product and the trade mark under which it is sold abroad does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluations and appraisal beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication system which transmit and disseminate the information as soon as it is sent or beamed form one place to another. Satellite television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.
Thus, a product and its trade name transcends the physical boundary of a geographical region and acquires a trans-border or overseas or extraterritorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial." 29. In the instant case too, the opponents trade mark TOSHIBA is a well known trade mark in respect of electrical goods, in India and abroad, hence, these observations fortifies the view taken above by this Tribunal.
(3) Jugmug Electric and Radio Company v. Telerad Private Limited, AIR 1977 Delhi 52 : PTC (Suppl)(1) 767--In this case the appellant obtained registration of the trade mark TELERAD in respect of electric heaters, immersion heaters (electrical), hot plate for cooking, electric toasters, table lamps, heating apparatus and parts thereof included in class 11. The respondents who were already the registered proprietor of the trade mark TELERAD under No. 181813 and 195883 in respect of radio and television included in class 9 failed to oppose the aforesaid registration in favour of the appellants. The respondents initiated the rectification proceedings before the Registrar of Trade Marks who ordered to remove the trade mark of the appellant TELERAD from the register of trade marks. The appellant filed appeal before the High Court of Delhi the High Court held as under:- "There is no doubt that the respondents, who have coined the word "TELERAD" and extensively used it and acquired reputation for their products are entitled to the protection of their trade name against its unauthorised use. The use of the expression "TELERAD" by the appellant's is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel for the use of the respondents' registered trade mark in relation to their goods, except with the intention to cause confusion. The goods in which the appellants wish to trade are electrical appliances, but the trade name they have selected has nothing to do with electrical appliances. Their obvious intention is to pass off their goods as originated from the respondents' manufacture or at least as a collaborator of them." 30. The aforesaid observations fortifies the discussion above. (4) Shiba Ltd. v. M. Ramalingam, AIR 1958 Bombay 56--In this case the appellant a Swiss company were the registered proprietor of trade marks CIBA, CIBA (Monogram), CIBALGIN, CIBAGOL and CIBALBUMIN in respect of pharmaceutical preparations in class 5. The respondents obtained registration of the trade mark CIBOL in respect of pharmaceutical preparations. The appellant initiated rectification proceedings before the Registrar of Trade Marks who ordered the removal of the entry in respect of the registration of the trade mark CIBOL in the name of the respondents. On appeal the Ld. Single Judge reversed the Registrar's orders. The applicants preferred an appeal before the Division Bench of the High Court of Bombay. The High Court observed as under:- "But on the other hand, when the respondents complained of substantial injury by being allowed to sell their goods under this name, of having built up large sales and spent large amounts on advertisement, it should be pointed out that the respondents did this at their own peril, because they had been warned by the appellants as far back as October, 1945. It hardly lies in the mouth of a party to come to the court and say: "I have been trading upon the reputation of the other side, by trading upon that reputation I have been making money, I have been warned that I should not so trade and yet I look the risk, and no protect me from my folly or my own dishonesty because the other side had delayed in coming to court and I have a large stake in the sales which I am effecting by reason or using a trade mark which resembles the trade mark of another." Therefore, the argument put forward by Mr. Shah of balance of convenience, of hardship, of equity has no application on the facts of this case it is not the case of an innocent party which seeks protection on the grounds that owing to a long user it has built up a business which should not be destroyed by rectification of the register. As we have already pointed out, the word 'CEBOL' seems to have been deliberately selected by the respondents for no other purpose then for its resemblance with the word of the appellants. We say this because when we test the explanation given by the respondents as we have done for the use of this word, we can only come to the conclusion that the object in using the word was as just suggested by us." 31. In the instant case too the applicants have deliberately selected the word TOSIBA as their trade mark in order to misappropriate the opponents goodwill of their trade mark TOSHIBA. (1) Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur, 1997 PTC 664.- The Ld. Counsel for the applicants relied upon on the following observations of Hon'ble Mr. Justice S.N. Kapoor:- "It is moreover somewhat odd and marks, not registered in India, not used in India, with reputation not established in India by carrying on business in India, would yet be protected in India on the basis that their reputation elsewhere is known in this country due to publicity in the media, where as the statutory protection cannot be acquired for them in India for the reason that they are neither used in India nor purposed to be used in India by a registered proprietor or by a registered user. There appears to be a contradiction here between the legislative policy requiring "user" for trade mark protection against in infringement and the liberal approach extending protection to trade marks irrespective of user and abovesaid limitations in this country on the strength of reputation abroad hardly known in India excepting those who are glued to cable TV." 33. The above reproduced passage, do not lend much support to the applicants, as it has already been held above that the word TOSHIBA is a well known trade mark in India as well as abroad in respect of electric and electronics equipments and apparatus and parts thereof and there is a positive evidence to this effect on the record of the present proceedings.
(2) Usha International v. Usha Television Limited, 1987 PTC 240-A.- The Ld. Counsel for the applicants relied upon the following observations at para 18:- "The use of a trade mark in advertising in media by itself is not enough unless and until the goods are offered concurrently with such advertisement, if it is to be regarded as "trade mark". I would add that to hold otherwise, would seem to nullify the effect of certain sections of the Act. For instance a proprietor of a registered trade mark might, without having any goods to offer, advertise his mark at periodic intervals, and thereby prevent any attack being made upon his mark. Since in the present case, the plaintiff in introduced televisions sets bearing the trade mark Usha, prior to defendants, notwithstanding the defendant plea regarding having advertised the mark earlier, the plaintiffs' alone are entitled to proprietary right in the trade mark USHA in relation to television sets." 34. In this case the above reproduced observations was with reference to the claim of prior user by both the parties one was based upon on the advertisements of the trade mark while the other was on the advertisement followed by the actual sale. In the opening para of the said judgment the Ld. Judge had been pleased to set out the preposition of law for determination of such counter claims between the parties, which is as under:- "Both the plaintiffs and defendants claimed to have adopted the trade mark 'Usha', in relation to the televisions. As to which of the parties is prior in time, is the question that requires going into while disposing of the plaintiffs application LA. No. 1997/85.
It is a settled proportion that, as between the two parties who proposed to use a particular trade mark, the person who designs the mark will get the preference, over the other. In a case of one party proposing to use the mark as against the actual user, the later will take precedence. In between the two parties claiming actual user as against the prior user the party who is prior 'in time will have the advantage over the other. Even, in regard to the prior registration of the trade mark as against the prior user, the action of the later will prevail." 35. In the instant case the trade mark in question is TOSHIBA which was first designed by the opponents by coming the same from the word Tokyo' and the name of the company of origin 'Shibaura'. Thus, as per the ratio of the above noted case it is the opponents who had to be the prior adopter, hence, proprietor of the trade mark TOSHIBA. As held above, there is sufficient evidence on record in respect of the knowledge to the public in respect of the opponents goods under their trade mark TOSHIBA.(3) Aktieboleget Jonkoping v. S. V. Palanichamy Nadar and Ors., AIR 1969 Calcutta 43.- The term "use" was considered and it was construed to the meaning "to be used in India" the High Court of Calcutta made the following observations at para 20 and 27:-" 20 Use abroad and advertisement abroad outside the place where the mark is registered are not of any assistance to the appellant, even if it was established in fact that there was such a foreign use, although even that fact has not been proved or brought on record." "27. On principles, I take the same view. The Trade Mark law from that point of view is not extra-territorial: that use abroad in foreign countries under foreign registration can be use without the meaning of the India Trade and Merchandise Marks Act, 1958. This status is an Act which provides for registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. That is its preamble. That preamble I read as confined to the territorial limits of India. Section 1(2) of the statute extends to the whole India.
36. The statute establishes trade marks register for India. The definition of a trade mark in Section 2(v) speaking of use in relation to goods must in my opinion be understood as use within the territory of India and not use abroad. On the authorities quoted above and on the principles that I have just mentioned I am of the opinion that under Section 46 of the Trade and Merchandise Marks Act, 1958 the word "use" employed therein is used within India. Naturally if it is not used in India that would be ground for removal from the Indian register. I cannot imagine that a foreign use or use abroad or outside India could be pleaded as a sufficient ground for retaining a registered trade mark on the Indian Trade Mark register. I am of the opinion that registration of a Trade Mark and its continuance on the register are exclusively within the scope and ambit of domestic and national law.
The "International convention for the protection of Industrial Property" originally of Paris in 1883 and recently revised at Lisbon in 1958 clearly recognizes the principles specially its articles 6 that when a trade mark has been duly registered in country of origin and is then registered in other convention countries, is of the national marks is to be considered as independent and the renewal of registration in the country of origin does not involve the obligation to renew in other convention countries. (Emphasis supplied)." 37. In the above stated case the High Court of Calcutta considered the meaning of the word use as appearing in Section 46 of the Act with reference to rectification of a registered trade mark for its known use. In the instant case the copies of advertisement of the opponents trade mark provides for the positive evidence of knowledge of the opponents trade mark TOSHIBA to the substantial number of people which is the sufficient background for determining the likelihood of confusion or deception by the use of the almost identical trade mark by the applicants company as held above this Tribunal.
(4) United Brothers v. United Traders, 1997 PTC 603.- In this case the High Court of Delhi vacated the injunction against the defendants it was held that the plaintiffs goods, namely, HOLLOWARE for use as household utensils were the different goods than that of the defendants goods, namely, spoons, knifes and forks.
38. This decision has no bearing in the facts and circumstances of the case in hands.
153.- the Ld. Counsel for the applicants relied upon its para 45 wherein it was held as under:- "In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who get such registration had not intended to use any other article except trade is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark." 39. The above noted decision do not support the applicants case because the applicants goods are not the "separate and distinct" goods from that of the opponents goods. As discussed above the applicants goods as held above are of the same description as that of the opponents goods under their registered trade marks.
(6) Hirru Ashulani v. Baken Hughs Ltd., 2000 PTC 473.- The ratio of this case no bearing on the case in hand in view of the different facts and circumstance of the present case.
(7) Sony Kabushiki Kaihsa v. Shayammo Master, AIR 1985 Bombay 327: PTC (Suppl)(1) 622.-In this case the High Court of Mumbai upheld the decision of the Registrar of Trade Marks allowing the registration of trade marks SONY in respect of nail polish disallowing opposition entered by the appellant who are the company incorporated in Japan manufacturing goods like TV, Tape Recorders, etc. under their trade mark SONY.40. The facts and circumstances of the case in hand are totally different. In the instant case the applicants have sought registration in respect of the goods which are of the same description as that of the goods under the opponents, hence, trade mark TOSHIBA 41. I may now examine the applicants claim of concurrent registration of the mark applied for under Section 12(3) of the Act. This sub-section overrides the provisions of Section 11(a) and Section 12(1) of the Act, meaning thereby if the registration of a trade mark is prohibited under Section 11(a) and/or Section 12(1) of the Act, the registration may be permitted by the Registrar under this sub-section.
This sub-section in its general terms provide for the registration of an identical or deceptively similar trade mark in respect of same or same description of goods in the name of more than one proprietors only, in case of the honest and current use of the trade mark to be considered for concurrent registration, or in case of the existence of any 'other special circumstances'. Thus, the 'honest concurrent use' is the main element to be considered by the Tribunal for allowing a trade mark to proceed for concurrent registration under Section 12(3) of the Act. The honesty of the use of a trade mark has to be considered from the commercial point of view. The honesty or dishonesty of use of a trade mark relates back to its adoption. If a trade mark had been adopted honestly is subsequent use has to be honest. But, to the contrary, if a trade mark had been dishonestly adopted its subsequent use of any length of time cannot launder the vice of dishonesty of adoption. If a person adopts a trade mark having knowledge of an earlier existing identical or deceptively similar trade mark, such adoption has to be a dishonest adoption, provided such adoption is tainted with mala fide intention of the person who adopts such trade mark. The matter is of facts which have to be gathered by the Tribunal from the evidence filed by the applicants. In the instant case the applicants have filed their evidence by way of an affidavit dated 28th December, 1999 in the name of Shri D.P. Suri. On perusal of the complete affidavit from its para 1 to para 18, at para 7 of the affidavit the applicants have stated that the applicants had been using the mark TOSIBA since the year of 1975 extensively, continuously and without any interruption, hence, the applicants are entitled to registration under Section 12(3) of the Act. In the rest of the statements in the aforesaid affidavit there is no affirmation by the applicants that they adopted the mark applied for, namely, TOSHIBA honestly. There is also no statement of the applicants in respect of the year wise details of sale of the applicants goods indicating the continuous and concurrent use of the mark applied for. The applicants have annexed photo copies of some documents with the aforesaid affidavit without making any statement in the said affidavit referring to these documents in respect of any of the statements of the facts made in the affidavit. On perusal of the aforesaid exhibits it is found that the applicants have annexed year wise figures of sales from the year 1974-75 to 1998-99, which is unsigned piece of paper having no reference in the affidavit. The applicants have also annexed copies of some Excise Gate Pass and the sale invoices, the perusal of which reveal that the applicants had been selling electric ovens and electric irons since 1975, electric toasters since 1982 and immersion rods since 1989.
42. In view of the above discussed evidence, the applicants adopted the trade mark TOSIBA in respect of electric ovens & irons in the year of 1975. As aforesaid it is in evidence of the opponents by way of their affidavit dated 6th October, 1998 at its para 6 that they coined and invented their trade mark TOSHIBA by taking the letters 'T.O.' from the word Tokyo and the 'SHIBA' from the word Shibaura which was part of their trade name at relevant period of time. As per the aforesaid evidence of opponents, the opponents invented their aforesaid trade mark TOSHIBA in the year of 1939. The word TOSHIBA is not a meaningful word either in Japanese language or any other language nor it is a personal or surname in India or any where in the world. The applicants in their aforesaid evidence have not stated as to how they hit upon the word TOSIBA as their trade mark which is almost identical to that of the opponents invented word TOSHIBA. It is well known that the trade mark TOSHIBA is a globally reputed trade mark in respect of the electrical and electronics goods. Under these circumstances the very adoption of the mark applied for, namely, TOSHIBA by the applicants in 1975 was obviously tainted with dishonesty. As aforesaid, in order to take benefit of Section 12(3) of the Act, the mark applied for must be honestly adopted by the applicants. Since in the instant case the applicants have dishonestly adopted the mark applied for, namely, TOSIBA they are not entitled for concurrent registration under Section 12(3) of the Act. .
43. Now coming to the issue under Sec. 18(1) of the Act. This sub-section provide in its general terms that an applicant for registration of a trade mark must possess a definite claim to be the proprietor of the trade mark sought to be registered by him. It is well established that a person can become proprietor of a trade mark either by virtue of its use or by its registration. If there is already an established claim of proprietorship of another trader on a particular trade mark there cannot be the claim of proprietorship on the same or similar trade mark by some other trader, although the earlier proprietor even had not used the same and has not abandoned his claim on that trade mark. In the instant case there is already an established claim of proprietorship of the opponents on their trade mark TOSHIBA which is already registered in their name in India in respect of electric and electronic equipments and apparatus, hence, the applicants cannot claim to be the proprietor of almost an identical trade mark TOSIBA in their favour. I do not agree with the Ld. Counsel for the applicants that even if the adoption of the mark applied for by the applicants was mala fide the continuous use of the same trade mark without any actual instance of confusion must render the applicants entitled for registration of the mark applied for. It may be mentioned that any length of user of a trade mark which had been held to be dishonestly adopted, cannot launder that dishonesty. It is the basic principle of justice that the dishonesty cannot be rewarded. In Diamler Benz Aktiegesellchaft and Anr. v. Hybo Hindustan (supra)-The Hon'ble Mr. Justice Mahendra Narayan of the High Court of Delhi observed as under while deciding the adoption of trade mark BENZ by the defendants in respect of under garments:- "There are marks which are different from other marks. The are names which are different from other names. There are names and marks which have become household word "Benz" as name of a Car would be known to every family that has ever used a quality car. There is hardly one who is conscious of existence of the cars/automobiles, who would not recognised the name "Benz" used in connection with cars. Nobody can plead in India, where "Mercedes Benz" cars are seen on roads, where "Mercedes" have collaborated with TATAs, where there are Mercedes Benz-Tata trucks have been on roads in very large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can plead that he is unaware of the word "Benz" as used with reference of car or trucks. In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide. By no stretch of imagination can it be said that use for any length of time of the name "Benz" should be not objected to.
We must keep in mind that the plaintiff company exists in Germany.
An insignificant use by too small a product may not justify spending large amounts needed in litigation. It may not be worth while.
However, if despite legal notice, any one big or small, continues to carry the illegitimate use of a significant world wide renowned name/mark as is being done in this case despite notice dated 09.12.1989, there cannot be any reason for not stopping the use of a world reputed name. None should be continued to be allowed to use a world famed name to goods which have generated the world wide reputation.
In the instant case, "Benz" is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user of the name "Benz" with respect to a product like underwears." 44. In Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur, 1997 PTC 664 (supra) - The Hon'ble Mr. Justice S.N. Kapoor of High Court of Delhi observed as under:- "It would thus appear that there is conflict of approach between the "hardline or national approach" of the English authorities and the "liberal international approach" of the Courts in other commonwealth countries. We feel that we must follow a middle course. We must readily support decisions which seek to promote commercial morality and discourage unethical trade practices of making such a situation where Indian purchaser/consumers starts presuming franchise like connection between foreign products and Indian Products which either cause confusion or which appear to be deceptively similar. Indian Courts have consistently and rightly disapproved the attempt by Indian trade and industry to bask in the warmth of, and make illicit profit from, a reputation not earned legitimately by their own effort but built by others elsewhere, by the short cut of trickery and passing off and thus protected not only private rights but commercial morality and thus expanded the scope of passing off action to meet that end. This approach is essential to protect the interest of Indian users i.e. public in general. But, this approach must be confined to same or similar products or at the most closely related products and services. This approach cannot be extended to totally different kind of products. In this later area in order to protect national economic interest English rigidity appears to be essential." 45. In view of the above the applicants cannot claim to be the proprietor of the mark applied for, namely TOSIBA, the application for registration of mark applied for is, therefore, violative of the provisions of Section 18(1) of the Act.
46. In view of the above, the opposition Nos. DEL 9858 and DEL 9860 are allowed and applications No. 509862 in class 9 and No. 510312 in class 7 are ordered to be refused for registration. It is further ordered that the applicants shall forthwith pay a sum of Rs. 706/-(Seven Hundred and Six only) to the opponents as costs of these proceedings.