Judgment:
Ajoy Nath Ray, J.
1. This is an appeal from order of the Deputy Registrar rectifying only two of the several class 7 entries standing in the name of the appellant, viz. electric washing machines and spin dryers, in respect of the trade mark 'TOSHIBA'.
2. The appellant on its own showing is registered in many more classes than class only, but the registration in class 7 only is in issue in this appeal and I deal only with the same. The appellant has some eight entries registered in that class, including current generators, electric induction motors and compressors as well as the two rectified entries.
3. The registration in class 7 has stood in favour of the appellant from as early as 1971. The application for rectification was made by the respondent as late as in June 1989. The rectification has been sought both under Section 46(1)(a) and under Section 46(1)(b) of our 1958 Act and the relevant portions are as follows :
'46. Removal from register and imposition of limitations on ground of non-use. -- (1) Subject to the provisions of Section 47, a registered trademark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either --
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has in fact, been no bona fide use of the trade mark in relation to those good by any proprietor thereof for the time being up to a date one month before the date of the application, or
(b) that upto a date one month before the date of the application, a continuous period of five years or longer has elapsed during which the trademark 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.'
The respondent has been successful in the registry upon both the above goods.
4. Mr. Gautam Chakraborty appearing for the appellant has submitted that the rectification order needs to be modified and his clients are entitled to maintain registration. According to him, the appellants should succeed, upon both the Sub-sections (1)(a) and (1)(b) of Section 46 as well as upon the relief granted to non-use for special circumstances in the trade mentioned in Sub-section (3) of the said Section 46 which runs as follows:--
'46(3) An applicant shall not be entitled to rely for the purpose of Clause (b) of Sub-section (1) or for the purposes of Sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.'
Apart from the above Mr. Chakraborty has seriously disputed the locus standi of Mr. Biswarup Gupta's client, that is the respondent. It is argued that an application is not at all maintainable for rectification in regard to the above two goods in class 7 by the respondent.
5. There is no cross-objection or cross appeal on the part of Mr. Gupta's client and therefore, lam not concerned with the issue whether any other goods under class 7 were to be rectified or not, on the facts and circumstances of this case. The simple issue is whether the rectification in regard to washing machines and spin dryers is to be maintained in appeal or not.
6. It is well-known, and presumably that is why no argument was made in that regard, that in an appeal from an order from the trade mark registry, the High Court exercises powers which are more of a supervisory than of an appellate nature. Thus the use of discretion by the registry is to be interfered with only in such cases as misapplication or non-application of the true legal principles, or for non-consideration of material facts or consideration of extraneous facts and such a like. I have proceeded to decide the appeal on the above basis.
7. 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 and toaster. They sell these under their mark 'TOSIBA'
It is not that the respondent has manufactured or sold washing machines or spin dryers a tall or even that they have any finalised 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 clause 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 mis-statement.
The appellant has filed an infringement suit as against the respondent in Delhi in 1990, and therein injunctions have been asked for in a comprehensive manner; the same would cover all the classes and all the goods in respect of which the appellant has registered their mark 'TOSHIBA', and naturally this would also include washing machines and spin dryers.
The legal notice dated 24.4.1989 which was a precursor to the suit also called upon the respondent to desist from using the name 'TOSIBA' on any of the goods in which the appellant might be already registered in India.
It is on this basis that I have to determine whether the respondent had locus standi to apply for rectification of the mark 'TOSHIBA' from the register, in respect of washing machines and spin dryers.
8. The mark of the appellant is 'TOSHIBA' and the status of the said word as a registerable 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 or origin, Shibaura.
9. 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.
10. Conversely, if the respondent is entitled to use their mark 'TOSIBA' on certain goods in respect of which the appellant is already registered, and not registered in accordance with law, then and in that event the respondent would, purely from the point of view of similarity between the two marks, or the possibility of deception that can arise out of co-extensive user of the two marks, be entitled to apply for rectification. Thus the problem in this case is not related to an assessment of the similarity or dissimilarity of the marks of the two parties, but it lies elsewhere.
11. The point of locus standi arises in this way, can the respondent who has never manufactured or sold, or has no immediate designs of dealing in washing machines or spin dryers and on whose behalf, even an erroneous statement was probably made and recorded in the registry, that they do dealin washing machines and spin dryers and allied goods, can they maintain an application for rectification of the appellant's marks in respect of the very same goods i.e. washing machines and spin dryers?
12. The decisions regarding the determination of locus standi for maintenance of a rectification application have been reported from a long time past and these are numerous. However, the root case is still the best one to which reference, with respect, can be made with substantial benefit, and the same is the case of Powell's Trade Mark which, in England, went up through all the previous stages to the House of Lords, the decision being reported in 11 CPC 4. The facts in that case briefly were that Powell was manufacturing a condiment called Yorkshire Relish, whereas the opposite party though in the sauce trade, had never until then manufactured or sold sauce under the mark Yorkshire Relish. They had been using their mark London Relish all along. The trade mark Yorkshire Relish was registered in favour of Powell. The opposite parties applied for rectification, and a question arose whether they had locus standi to maintain such an application, they never having manufactured or sold any sauce under the name Yorkshire Relish.
Lord Hersehell delivered the first judgment and his Lordship said as follows:--
'Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved'.
The words 'person aggrieved' occur incur Section 46 also. It should be borne in mind that if a mark is registered as a trade mark in favour of a party then use of that mark or a similar mark by another party is an infringement by itself and no further proof is needed for establishing passing off and damages can be claimed straightway.
In the Yorkshire Relish case, if the trade mark Yorkshire Relish remained registered in favour of Powell, then, the makers of London Relish, one Birmingham etc. Co. Ltd., would not be able to sell a sauce under the name 'Yorkshire Relish', however, much precaution they took to distinguish their goods from Powell's. They might use a colour combination strictly different, they might use phials and bottles wholly dissimilar to those of Powell, they might by proclamation without end declare on every product of theirs that the Yorkshire Relish they are selling is of their manufacture and not of Powell's, and yet they would be defeated in an infringement action if Yorkshire Relish remained registered in favour of Powell. .
In the manner I venture to read Lord Herschell's dictum quoted above, which has been requoted since on more occasions than one, I would say that his Lordship meant this, that the opposite parties would not, be ever able to use the name 'Yorkshire Relish' although in the sauce trade, if Powell remained registered, and thus they were persons aggrieved, for it is not without the bounds of imagination that they might one day decide upon using the name or mark Yorkshire Relish on their products without in any manner passing off their-goods as Powell's. But if Powell's mark remained on the register they would never be able to do so. Thus they could do something if the mark of Powell were not on the register but they could not do the same in any manner whatsoever, not upon taking of any protection whatsoever, if the mark remained on the register in favour of Powell.
The Court of Appeal in Powell's case had also held that the makers of London Relish had the locus standi and the House of Lords was understandably extremely reluctant to interfere with such a decision already arrived at without extremely good grounds. This is what the Lord Chancellor said when discussing the words 'persons aggrieved' :--
'My Lords, I should be very unwilling unduly to limit the construction to be placed upon those words; because, although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected, who nevertheless, would not be willing to enter upon the risk and expense of litigation.'
After the dictum of Lord Herschell which I have quoted first, his Lordship said as follows :--
'In the present case, I do not think it can be doubted that the rights of any person in the trade, and who might desire to make use of the words 'Yorkshire relish' would be less if this mark were on the register then they would be if he were merely subject to the common law liability of being restrained from making any attempt to pass off his goods as the goods of another person'.
A person seeking to resist a claim for passing off has in these circumstances a lesser duty to perform than a person seeking to resist a claim for infringement of Trade mark. Accordingly, the person in the trade he had a right to have a rectification of the register for he might, by appropriate means take adequate precautions against a passing off action, even when using the same mark as of any other trader, whereas tie might not be able to take such a precaution if the mark remained registered as the exclusive property of only one in the trade.
13. Mr. Gupta, commenting upon the said case said that the words 'might desire to make use' in the above passage of Lord Herschell are important words. What, he asked himself, is the amplitude of the phrase 'might desire'? He said in relation to the facts of this case that though his clients had not dealt in washing machines or spin dryers yet, still they might do so in future, and if they are to do so under the name of 'TOSIBA', which is their trade mark for all their other goods, then they cannot do so if the mark of the appellant i.e. 'TOSHIBA' continues to be in the register for those goods in class 7.
14. He said that the clarification of the phrase 'might desire' is to be had, at least in part, from portions of the judgments of the Court of Appeal.
One passage relied upon by Mr. Gupta is at page 195 of 10 R.P.C. The portion of the judgment of Lord Justice Lindley from line 12 at that page is as follows:--
'They have notconsidered, as 1 understand Mr. Thompson, whether they will or will not make 'Yorkshire Relish' and their position is this, that so long as 'Yorkshire Relish' is on the trade marks register it is no use considering whether they will make and sell 'Yorkshire Relish' by that name, because they cannot do it; but if it were removed, it is possible, for anything I know, that they might, and having regard to the tests which were laid down in the Apollinaris case, they are persons aggrieved in this sense--that they are entitled to ask the Court to hear the case on merits.'
Mr. Gupta submitted on the above basis that it is not necessarily for his clients to prove actual sale or dealings in Washing machines or spin dryers or even to prove any presently crystalised intention so to deal in these goods so as to qualify for having a locus standi to move and maintain an application for rectification.
15. To go back to the judgment of the House of Lords, Mr. Chakraborty correctly said that there is a clear indication in the judgment of Lord Herschell that a rectification application is made in the public interest. In my opinion, this string of public interest would tend to loosen the stringency of the test of locus standi. For, in a public litigation, one does not have to prove the involvement of one's own personal rights, save to a very slight degree.
In this connection, his Lordship had said:--
'They are not common informers, or strangers proceeding wantonly'.
The other English case relied upon even by Mr. Chakraborty with regard to locus standi was the judgment of Mr. Justice Romer in the case of right Crossley and Co. reported in 15 R.P.C. page 131. There Romer, J. said :--(p. 133, b.5).
'...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 'possible' I mean possible in a practical sense, and not merely in a fantastic view.'
Such a test applied by his Lordship in that case produced results adverse to the party seeking to apply. His Lordship said :--
'It is certainly not sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them.'
P.B. Mukharji, J., in the Vulcan case, reported in : AIR1969Cal43 mentioned the test laid down in Powell's trade mark. Before passing on to give my own version on the judicial authorities mentioned above and the application of the principles to the present case I would use a last quotation from Lord Justice Bowen, to be found in the reports of the judgments of the Court in Appeal in Powell's case, at 10 RPC at page 203 from line 12 :--
'If an action were brought against a person who was using the trade mark for an injunction to prevent an infringement of that trade mark that person is a person aggrieved; but I entirely deny that the case is confined to that'
16. It follows in my opinion from the above authorities that a person can make an application for rectification not merely incases where he actually deals in the goods or has made preparations to deal in the goods in the foreseeable future but in various other cases too. The applicant who seeks to rectify the register, though he seeks to benefit himself, applies for a cause which has elements of public benefit and public policy involved in it. As the question of locus standi in a public interest litigation is determined, not merely by reference to the personal legal rights of the applicant but with reference to other factors, so also in a rectification application locus standi is thus to be determined.
17. For such a determination, as it appears to me, it is much more helpful to ask the question, has the applicant no locus standi, than to ask the question has the applicant a locus standi. For the Courts have held again and again that it is not necessary to deal in the goods either now or in the immediate future to have a locus standi. It is difficult therefore to answer the question, has the applicant a locus standi, directly.
18. On the other hand various tests have been laid down which would disentitle an applicant from maintaining a rectification application. He cannot do it if he is merely a busy-body, an officious person, who enjoys litigation for its own sake may be. Similarly a person desiring only to injure another person, or one who has had other bitter litigation with the holder of the mark, cannot by reason thereof have a locus standi to maintain a rectification application.
19. Again, if one were not a trader at all, and so impecunious as to make it fantastic to suppose that he would ever enter any trade, let alone have use for any trade mark, then that person can obviously maintain no rectification application.
20. It is to one of these or other categories of disentitlement that the respondent must belong if I am come to the conclusion that he had no locus standi at the registry. Before I give my decision on the point I summarize the principles regarding locus standi mentioned above :--
(i) It is more helpful first to ask the question, has the applicant no locus standi, and next to ask the question has he thus a locus standi.
(ii) A person might be disentitled to apply if he is officious, or if he is a mere common informer, or if he applies for vengeance or for mere continuance of litigation, or if he has or could have not conceivable interest in the matter at all; the categories of disentitlement are not closed and the ones mentioned above are merely illustrative and not exhaustive of future possibilities.
(iii) Locus standi is to be determined on principles, akin to those in public interest litigation, than in private ones, because a rectification application seeks to achieve the object of purifying the register which is a public purpose.
21. The concept of keeping the trade mark register pure, of not allowing to come on it improper marks, and of erasing from it ones improperly remaining there, was first formulated by Bowen L.J. in the John Bullbeer case, reported in (1897) 10 R.P.C. 217 (Paiva & Co.) At p. 232, his Lordship said, 'The purity of the register of trade marks -- if one may use the expression -- is or much importance to trade in general; quite apart from the merits or demerits of particular litigants.
22. The respondent in the present case has not dealt in goods mentioned in class 7 but has dealt in electrical house-hold goods which have a similarity, although of a distant and tenuous nature, to washing machines and spin dryers. The common factor is that these are household goods and these are electrical goods.
23. In noting that the respondent's trading goods are in class 11 and the rectified entries are in class 7, one should not he misled into placing an overmuch importance in these classes. The classes are not found directly under the Act, but are made in the Rules of 1959. Sec. 8 of the 1988 Act mentions about registration for any or all goods in prescribed class, but no class is prescribed in the Act itself. Rule 26 provides that every application for registration shall be in respect of goods in one class only. Thirty-four classes are mentioned in the fourth schedule to the rules. It does not at all follow that goods coming under two different classes in the schedule to the rules can never belong to the same 'class' of goods, if the word class is understood in a different way. Thus, a washing machine may be in class 7 of the Schedule, and an electric cooking oven in class 11, yet they are both in the same class of goods which comprise household are facts for modern living. When deciding the question of locus standi, and considering the factor if the applicant has interest in the same class of goods as the proprietor of the mark, the concept of 'class' in my opinion should be a broad one, which almost any reasonable similarity will suffice. The applicant need not necessarily show interest in the same class as prescribed in the fourth schedule; such a restrictive unimaginative and bureaucratic meaning of class would unduly strengthen the dilute nature of the tests for locus standi which I have mentioned above.
24. The annual sales figure of the respondent which started from a humble Rs. 4,000/- in 1974 & 75, reached Rs. 2.78 crore in 1989-90. It is not outside the bounds of the respondent's financial resources to start in some manner or the other to deal under their own mark in goods of the price range of washing machines and spin dryers. At least I do not find it to be impossible, or fantastic, although no plan for such dealing in these goods is, as I have said, on the papers yet. Nor need they be.
25. 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 come to the conclusion without any hesitation that the respondent had a sufficient and unimpeachable locus standi to maintain the rectification application in the registry.
26. The two other points concern Sections 46(1)(a) and 46(1)(b). The respondent is to succeed, on merits, if at all, on either one or both of these grounds.
27. I propose to take up Section 46(1)(b) first. There are in the papers before me Government notification for four years at least out of the material five, during which, according to those notifications, washing machines and spin dryers were seriously restricted items of import. It is not necessary to enter into the details of such restrictions. I accept Mr. Gupta's submission that there was not a total ban and that importations could be made in accordance with the restrictions.
28. I assume for the purpose of this case relating to Section 46(1)(b) that there has been no use of the mark by the appellant in relation to washing machines and spin dryers for the requisite period of five years upto a date of one month before the rectification application was made.
29. The cases are numerous which show that no span of time within those five years can be made use of by the applicant for rectification if the non-use during that period was due to restriction in the trade and not due to any intention on the part of the proprietor of the mark to abondon it or its use. On the question of the relief granted by Section 46(3) - Mr. Chakraborty relied upon many authorities and these are :--
(1) The Tibet Snow case, reported in : AIR1973Bom191 where the proprietors of the mark having gone over to Pakistan found it impossible to use their mark in relation to goods in India because of prohibition of entry of consumer items from the one country to the others.
(2) The Pepsi Cola case reported in 1988(1) of CLJ 337.
(3) The Bali case reported in (1960) RFC 387.
Mr. Chakraborty placed head note 3 at page 388 where it was said that special circumstances justifying non-use could be pleaded if importation was impracticable in a business sense.
(4) The Bulova case reported in (1967) RFC 229 which related to a Swiss Watch Maker being unable to sell Swiss watches in England because of import restrictions, even though the country had offered to setup factories for them free of cost for manufacturing the watches in England. A Swiss watch makers' association prevented the making of watches outside Switzerland.
30. Mr. Gupta commented upon all these cases and distinguished the case present at hand by comparing the extreme lengths which parties in the English cases went to establish the impracticability of the use of their mark in the business sense. They showed by evidence orally and otherwise why the proposition was uneconomic. Mr. Gupta said that here apart from the four notifications of restriction there is nothing to show that the importance of washing machines or spin dryers even in accordance with the trade restrictions would be an uneconomic proposition.
31. In my opinion, Mr. Gupta's submission in this regard is more logical than sound from a practical point of view. Indeed there is not much evidence directed to establish the uneconomic nature of importation of these goods into India, and of sale hereby use of the Toshiba mark. There is no evidence either to show that the said proposition could be made economic in certain ways. It is true that the theoretical onus for proof of relief under Section 46(3) lies upon the holder of the mark who seeks to preserve it but it is equally true that when evidence has been led on both sides, the question of onus loses much of its initial importance, and the Court has come to a conclusion on whatever evidence is available to it upon each and every relevant issue which arises in the case. I would, in my opinion, be shutting my eyes to the practical world of ban on imports into India of most items, if I were to hold that Mr. Chakraborty has not succeeded here in showing me, or his client had not succeeded in the registry to demonstrate before the Deputy Registrar, that use of the mark in India with regard to washing machines and spin dryers was made thoroughly impracticable by reason of import restrictions. Even if the materials are no more than four notifications showing such restrictions for four successive years, in my opinion, that is quite sufficient to save the mark from attack under Section 46(1)(b). Mr. Chakraborty's client thus should have succeeded on the issue of Section 46(1)(b). One last word before I have Section 46(1)(b). Mr. Guptasaid that P.B. Mukharji, J. had remarked in paragraph 41 of the Vulcan Case (AIR 1969 Cal at 52) that the defence under Section 46(3) is 'in the nature of frustration in a contract'. This was a novel and original dictum of his Lordship. Mr. Gupta showed from the case reported in (1940) 4 All E.R. 335 that a restriction cannot give rise to a frustration, but a total ban might. So he said, here Section 46(3) has no possible application, as a total ban on imports was never there at the material time. Mr. Gupta's logic is irrefutable, and he must be right if (with due respect) P.B. Mukharji, J. was. But the many authorities showing an economic impracticability to be sufficient compel me to conclude otherwise.
32. Let us now pass on to Section 46(1)(a).
Mr. Chakraborty relied upon the Supreme Court decision reported in : AIR1986SC137 being the Dristan case, or the American Home Products case, where it has been laid down in no uncertain terms that the onus lies upon the applicant seeking rectification to establish two things before he can succeed under Section 46(1)(a). These are:--
(1) that the holder or the proprietor of the mark had no bona fide intentional the time of registration that the mark should be used in relation to the goods in question, and --
(2) that there has in fact been no bona fide use of the mark in regard to those goods from the date of registration till one month before the date of the rectification application.
These two hurdles have to be crossed by the client of Mr. Gupta. Before embarking upon these, I would like to clarify that it is quite possible in law for an applicant seeking to rectify the mark for a whole class of goods, to succeed only in relation to some of the goods of the said class and not in relation to the others. If, for example, a person is registered in one class as to five items and he uses and has always used his mark with regard to only one of the five items, then it is quite a possible result of a rectification application, that the one article used is permitted to remain, and the holder is also permitted to remain the proprietor of the mark in relation to the said item only, but all the other items are expunged from the very same class, so that others traders are free to use the same trade mark in relation to those other items in the same class.
33. The point assumes an even greater importance in the modern day, because the variation in goods has magnified beyond what could ever be imagined when first the classes were mentioned and the items of goods were prescribed in the different classes for the trade mark register. It is hardly possible for an ordinary trader today to use his mark for more than a few goods even in regard to one item of one class. Think for example how many goods can come under the description 'Machines', which is only a part item in class 7.
34. A direct authority for the above proposition permitting rectification of a mark as to one item in the class, or a few items in the class, is the case of Edward v. Dennis, reported in (1885) 30 Chancery Division 454. That case was a combined case relating to rectification and infringement. The trade mark was Neptune and it was found that Edwards was registered as a proprietor of the trade mark in respect of all items in class 5, under the comprehensive description 'unwrought and partly-wrought-metals used in manufacture'.
35. The case went up to the Court of Appeal and the decision was unanimous there upholding substantially the judgment of Vice Chancellor Bacon, though altering it a little, that the mark of Edwards should be rectified for all items except the one in which he actually dealt i.e. galvanised sheet iron. The order of the Deputy Registrar is therefore not challengeable merely because he has sought to rectify the mark in relation to only two of the goods for which the appellant is registered in class.
36. I come now to the two limbs of Section 46(1)(a). 1 propose to take up first the limb regarding use of the mark in relation to washing machines and spin dryers upto a date 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 published on the 27th of August, 1985 in the Indian Express, New Delhi, also mentioning therein certain service centres.
37. Now, this is no use of the mark in relation to the goods within the meaning of the Trade marks Act. In the Act Section 2(2)(b) states that any reference to 'use' in the Act means use of the mark upon or in any other relation to the goods. Naturally Section 46 is also to be read in this light. Now, if there are no goods at all in physical existence, there can be no use of the mark in relation to those. It is the same, if the goods are in physical existence somewhere else than in the Indian market. For, however, big the foreign market of a trader might be, and however, famous his trade mark might be all over the world, yet to qualify for use of the mark in relation to the goods within our Trade & Merchandise Marks Act of 1958, such use must be made in India and not abroad.
38. Mr. Gupta also rightly said on the basis of a remark of Lord Halsbury mentioned in the case of Neuchatel in 1913(2) Ch.291 at page 302 that 'the Trade Mark Acts are not for copyright in marks, they are to protest trade marks. If you have not goods you are claiming only copyright, you are not claiming for the purpose of protecting your trade.' The mark itself, shorn of the goods, gives no right for its preservation or monopoly. The mark is to be protected if at all by use in relation to goods and for use in relation to goods. It is not the artistic appeal of the trade mark that is primarily under consideration here, for that is rather a copyright feature. The appeal of the mark is only to be judged in the commercial world of goods and articles, and the same is protected only for that commercial world, and not for any other purpose.
39. Thus, a mere use of the mark in advertising or other publication media is insufficient as 'use'. That is quite understandable, because if it were not so, trafficking in trade marks could be legally indulged in, for a mark could be registered and then kept alive merely by advertisement without ever putting any goods into the market.
40. The law in England has also been the same and we have taken it from there. It has however been held there that the goods need not be in actual existence so as to constitute use, on the basis of advertising materials, and it is sufficient if the goods are about to be. But the law there is not that the mark can be kept alive by use only in the advertising media.
41. The authority in the above regard is the Hermes case, which is a decision of Mr. Justice Falconer. It was relied upon by Mr. Gupta and it is reported in (1982) R.P.C. page 425. There his Lordship approved the view taken by the Assistant Registrar Mr. Nyall in the Revue case (reported in 1979 R.P.C. page 27) and disapproved of the too strict test of goods having to be in actual existence for constitution use, which had been laid down by the hearing officer (he was the Registrar) Mr. Faulkner in the case of Harold Radford, (1951) 68 R.P.C. 221 at 223. It was approved that though advertisements alone would not have been sufficient use, their combination with the steps taken in preparation for the re-launch of the goods could constitute sufficient use of the mark to defeat the application for rectification. The readnote extracts the following observation from the judgment and the same is indeed one of the most relevant portions if the judgment in the Hermes case :--
'Thus, if the registered proprietor should commence a series of advertisements featuring his mark as part of an introductory campaign, prior to putting his goods on the market under the mark, but before they were actually on the market, in my judgment such use would clearly be use of the mark in the course of trade, not upon the goods or in physical relation thereto, but it would be in other relation thereto, the point being that it would be use in the course of trade in those goods albeit in advertisements'.
I adopt the reasoning of Mr. Justice Falconer wholeheartedly, especially because the dictum could have been equally made in India, in view of the identical language (physical or other relation) of our Section 2(2)(b) of the 1958 Act.
The Pepsicola case referred to above substantially followed the Hermes case and paragraphs 24 and 26 of the judgment in the High Court Notes Reports can be referred to in this regard.
42. On the basis of our statute and on the basis of the above law it is quite clear that the said single advertisement of washing machines published in August 1985 even with mention of Service Centres is certainly not use of the mark in relation to the goods in question. It could have been use, if the advertisement had been connected with the goods. Even a single case of sale or otherwise dealing in washing machines of spin dryers in the course of bona fide trade by the appellant in India with use of the mark Toshiba might have turned the scales.
43. I have therefore come to the conclusion that the re was not even a single use of the mark 'Toshiba' in India in relation to Washing machines or spin dryers made by the appellant during Act of the periods mentioned either in 46(1)(a) or in 46(1)(b). A have also held Section 46(3) to be applicable. The respondent does not therefore yet succeed in the appeal. It is still the onus and duty of the respondent to establish that the appellant had no bona fide intention that the mark 'Toshiba' should be used in relation to Washing machines and spin dryers in 1971 when the same was registered.
44. The only fact which has been relied upon by the Deputy Registrar for inferring such a lack of intention is again the non user of the mark for twenty years. It is true that the mark has not been used from 1971 onwards. But the question arises, whether an inference can, only from that non-use, be drawn that the intention requisite for Section 46(1)(a) was not there at the time of registration.
45. The Deputy Registrar drew such an inference on the authority of two cases which are the cases of Muratti & Sons reported in 28 RFC 497 and the case of J. Batt & Co. reported in 15 RFC 534. Mr. Chakraborty dealt with the two cases at length and submitted that these authorities do not support the proposition, that only from a long non-user, an intention not to use the mark in relation to the goods can be inferred, on the part of the proprietor, at the time he obtained registration. These two cases have to be dealt with.
In the first case, that is the Muratti case, the registration was obtained by one Allan Ramsay who had worked for cigarette manufacturers in the United States of America and had thereafter some over to England. He obtained registration of the mark during his stay there and thereafter went over to Turkey. When he gave evidence in the rectification proceedings he answered that he could not say what he had intended at the time he got registration of the mark (see p. 508). The mark was rectified. Mr. Chakraborty said that this case showed proof coming from elsewhere of the lack of intention of the person obtaining the registration to use the mark in relation or possibility or intention of his to start using the mark 'Murad' in relation to any cigarettes to be manufactured by him at any material time. Mr. Gupta, commenting on the same case, submitted that although it is not laid down in so many words that an inference of intention not to use can be drawn from long non-user, yet there are passages which indicate that such long non-use can definitely be used as a factor when determining the question of intention to use the mark at the time the same was registered.
Mr. Gupta pointed out the following passage where the Intention not to use and actual non-use were considered in the judgment in so close approximity as to indicate that the mind of the learned Judge considered long non-use as a factor related to the intention not to use it. The passage is at page 508 :--
'He would not say what intention he had. He was asked what he contemplated, whether he contemplated using it, and his answer was -- 'In May 1906 I cannot say what I intended, I contemplated that I might require to carry on business in England at some future date. After registering this mark Allan Ramsay returned to Turkey, and so far as the evidence before me goes, nothing was done until someone, in July 1910, promoted and formed the Defendant Company. I have had no explanation and it does not appear from the evidence, how Mr. Ramsay was engaged between May 1906, when he said he returned to Turkey, and July 1910, when this Company was formed, but of this I am quite satisfied, that when the mark was registered by Allan Ramsay he had no bona fide intention of using it.'
The next passage relied upon by Mr. Gupta is at page 511 and the same shows that the subsequent conduct of non-use by Mr. Ramsay was taken as a factor in showing that there was no bona fide intention to use in the first place.
'Under these circumstances I am of opinion that the Plaintiffs have made out their case, and that they are entitled to an injunction. Upon the Motion to expunge the Trade Mark, I have already expressed the view that there was no bona fide intention to use the mark in connection with these goods when it was registered. The circumstances under which it was registered and the subsequent conduct of Mr. Ramsay are sufficient, to my mind, to show that there was no such bona fide intention, and it has not in fact been used.'
The case of J. Batt and Co. relating to the mark of two wings of a yellow butterfly was also a rectification matter calling for the establishment of the twin grounds of no bona fide intention to use at the time of registration and of actual non-use for the period upto one month prior to the rectification application. Mr. Chakraborty said that here also it was found by Mr. Justice Romer in the first Court, that the evidence of the proprietor in the box was very satisfactory and while upholding the judgment, the Court of Appeal mentions it in its judgment, see Lindley, M.R. speaking at page 538 of the Report at line 21. Mr. Chakraborty said that here was no case of inference from mere long non-use as to original lack of intention to use. The Deputy Registrar's finding on this ground was thus attacked.
46. I agreed with Mr. Chakraborty that the case of J. Batt & Co. shows even loss the proposition that an automatic inference can be drawn from long non-use as to the original lack of intention to use. But I do agree with Mr. Gupta that long non-use is a factor for determining the question of lack of intention to use the mark when the registration was first obtained.
47. It would not be proper for me, I think, after hearing the case for many days on end to remand the matter to the Registry for a fresh decision on the point of lack or existence of original intention to use the mark when all the evidence before the Registry is again before me. Although it is true that the Deputy Registrar erred in law in coming to a conclusion as to intention not to use merely upon long non-user, yet, I should examine the facts on my own, and give my own conclusion upon such examination, in regard to Section 46(1)(a) and also explain the true purpose and construction thereof, to the best of my ability.
48. The words used in Section 46(1)(a) are that the applicant had no bona fide intention at the time of registration that the mark should be used in relation to the goods. In my opinion, the words clearly indicate that the mark need not have been used upto the date of registration nor need it be actually used even in the immediate periods subsequent to registration, but that it is enough for the proprietor to have a bona fide intention that the mark should be used in relation to the goods in question.
49. Mr. Chakraborty submitted that at the time the registration was obtained there were import restrictions. It is common knowledge to every Indian that there were, and I think even judicial notice can be taken thereof. It was the further submission of Mr. Chakraborty that there is no law in India which prohibits the obtaining of registration of a mark in relation to goods which, it is not economically feasible to trade in India, because of import restrictions. Thus, he says, I should not so interpret Section 46(1)(a) as to introduce there a prohibition which is not contained there, in express words.
50. The second submission of Mr. Chakraborty was that the object of Section 45(1)(a) is to prevent trafficking in trade marks. Those persons should be held as having no bona fide intention of use of the mark no intend to block the register so that they can traffick in the names and the appellant surely does not belong to such a category. Indeed, so far as the charge of trafficking in trade mark is concerned the appellant can straightway be exonerated. They are a big genuine trading organisation and they have registered that mark only which they have used, albeit in relation to other goods, and more outside India than within.
51. The question, therefore, arises what is the result when a trade obtains a registration on the Indian register without any intention of trafficking in the name, but at a time when the legal restrictions on import in India are such as to mark it uneconomic for the said proprietor to use the mark in relation to those goods in India.
52. It was said by P.B. Mukharji, J. in the Vulcan case, referred to above, that obtaining a registration at a time of such restriction is '...unfortunate in its effect on its probable use.' The phrase was repeatedly the Deputy Registrar. With aspect, assuming the phrase to be of clear meaning, saying that the registration was unfortunate, helps neither this party nor the other. The effect of the registration has to be unambiguously pronounced upon, for many unassilable legal rights are unfortunate from many a point of view.
53. It has been the clear case of Mr. Chakraborty's client that so long as the restrictions on import remain, they find it uneconomic to trade in these two goods in India, and they found it so difficult, that they have not been able to produce a single instance of the use of the mark in relation to washing machines and spin dryers from 1971 until now.
54. What then was the intention of the appellant at the time they obtained the registration? The Dristan case referred to above notes in paragraph 41 (A.I.R. 1986 S.C. at p. 156) that the intention of a person can only be deduced from the facts of a case. Lord Justice Bowen had said in a statement which has to-day become classical (See Edgington v. Fitzmaurice, 29 Ch.D. 459 at 483) that the state of a man's mind is as much a matter of fact as the state of his digestion. Both are difficult to prove. But no fact is totally unsusceptible of proof, nor intention, nor the state of a person's mind.
55. Here we are concerned with an appellant which is not a real but only a fictitious person. The appellant has no mind in the sense we commonly understand the word 'mind'. The intention of the appellant, however, is still a reality in law, and it is still to be gathered and inferred from the conduct of the appellant, and all the surrounding circumstances, as must be done in the case of real persons also. To this risk we must now advert.
56. The appellant does not use the mark because of the Indian economic restrictions. But, the appellant says that it has a bona fide intention that the mark should be used in relation to the goods in 1971 also (time of registration) when the same economic restrictions prevailed. If the words 'should be used' are interpreted so as to mean that the mark might be used at sometime in future when the restriction relaxed, then indeed the appellant had the requisite bona fide intention at the time of registration.
57. If, however, the words 'should be used' mean an intention to use the mark in relation to the goods in the market situation prevailing at the time the registration was obtained, then surely the appellant had no bona fide intention to use the mark on their own showing. For they never intended to use the mark with the economic restrictions prevailing in 1971, as the same was financially not profitable.
58. This is committing the trade mark sin of what is often called blocking the register, and it does not by itself constitute, but is an element of the greater sin of trafficking in trade marks. The appellant here correctly said to have blocked the register by obtaining the registration of the Toshiba mark.
59. If a person obtains a registration at a time when the mark, according to his own estimate, is economically unuseable, then he cannot be said to have had a bona fide intention at the time of registration that the markshould 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.
60. It is possible that if he waits for so long as that, he will tio 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 unpreventible 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.
61. It cannot therefore in my opinion be said that in 1971 the appellants had a bona fide intention that the goods, namely washing machines and spin dryers, should be traded in India under their trade mark 'Toshiba'. Without 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.
62. It is for this reason, to my mind, that the special circumstances mentioned in Section 46(3) have been permitted as a ground of relief for applications made under Section 16(1)(b) but has not been so permitted to be taken as a ground of relief under Section 46(1)(a). Under Section 46(1)(a) the non use must continue throughout from the time of registration. Also the first intention to use the mark must be absent at the time the registration was obtained. If special circumstances envisaged under Section 16(3) were applicable to 46(1)(a) then one could get registration in uneconomic market with restrictions, even though one had no intention of using the mark at all under such restrictions. That would be permitting to block the register, without goods of the mark possibly never entering the market at all. It was advisedly, therefore that 46(3) was not allowed to be made applicable to 46(1)(a).
63.46(1)(a) is concerned with both registration and subsequent use. If the entire period is, so to speak, under an economic black-out, then the obtaining of registration in the first place cannot but be without the requisite intention necessary to support a good registration. In that sense, there was no legal benefit to be had on the part of the person obtaining such registration, for he knew throughout the black-out period the goods were not useable in the course of bona fide trade, but such registration could only serve the purpose of not allowing others to use the name. Such a purely negative motive in these circumstances is not permissible.
64. There are many parts of the order of the Deputy Registrar with which I do not wholly, and sometimes at all, agree. A listing of the same and the reasons for my partial or total disapproval would, however, in my opinion be such an academic exercise as not to benefit the parties but merely to waste time. I therefore, do not embark thereupon.
65. 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.
66. With the 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 be entitled to the costs of this appeal.
Stay of operation of the judgment and order is asked for but the same is refused.
All parties and others concerned to act on a signed xerox copy of the judgment and order on the usual undertakings.