Trademark disputes hinge on the originality of a mark and the intent behind its adoption. In the case of Kabushiki Kaisha Toshiba v. Tosiba Appliances Co., the defendant, Tosiba Appliances, presented an explanation for adopting the trademark "TOSIBA" that was deemed improper by the court. This article analyzes the defendant's justification, the court's assessment of the evidence, and the broader implications for trademark law.

Plaintiff's Case:
Kabushiki Kaisha Toshiba, the Plaintiff's case is that it is a globally recognized corporation that owns the trademark "TOSHIBA," under which it sells various electronic and electrical goods. The trademark was conceived in 1939 and registered in India in 1953 across multiple classes. The plaintiff argued that the "TOSHIBA" mark is distinctive, with significant goodwill in India, and that the defendant's use of the similar "TOSIBA" mark constitutes trademark infringement.

Defendant's Case:
The defendant, Tosiba Appliances Co., claimed that it adopted the "TOSIBA" trademark independently in 1974, with no knowledge of the plaintiff's prior registration. According to the defendant, the mark was created as a tribute to the founder's mother, affectionately known as "Toshi Bai." They contended that the trademark was devised as a homage and had been continuously used since 1975, acquiring substantial recognition in the market.

The Defendant's Explanation: Improper Justification?
The Explanation's Content:
During the deposition, the defendant, through DW-1 (the proprietor), stated that "TOSIBA" was inspired by the proprietor's mother, Ms. Sumitra, who was reverently called "Toshi Bai." The term "Bai" was deemed unsuitable for a business name, especially in the context of electrical goods, leading to its modification to "Ba," which is a term of respect in Gujarati.

Court's Examination of the Justification:
The court found several inconsistencies in the defendant's narrative:

Lack of Corroboration:
The defendant failed to provide convincing evidence that Ms. Sumitra was indeed known as "Toshi Bai." No family members or documents corroborated this claim, raising doubts about the truthfulness of the explanation.

Inconsistencies in the Story:
The court noted that the defendant did not satisfactorily explain the omission of the letters 'H' and 'I' from "Toshi Bai" to form "TOSIBA." The justification that "Ba" was used as a term of respect was questioned, especially since the defendant's testimony concerning the existence of daughters-in-law at the time of adoption was found to be implausible.

Lack of Logical Consistency:
The defendant's explanation of modifying "Bai" to "Ba" due to respect appeared forced and lacked a logical connection to the business context. The court viewed this as an attempt to retroactively justify the adoption of a mark that was deceptively similar to the plaintiff's trademark.

Court's Conclusion:
The court concluded that the defendant's explanation for adopting "TOSIBA" was not credible. The inconsistencies and lack of corroboration indicated that the narrative was contrived to provide a veneer of legitimacy to what was essentially an act of trademark infringement.

Infringement of Plaintiff's Trademark:
Legal Framework:
Under Section 29(1) of the Trade Marks Act, 1958, the unauthorized use of a trademark that is identical or deceptively similar to a registered trademark constitutes infringement. The plaintiff argued that the defendant's "TOSIBA" mark was deceptively similar to "TOSHIBA," causing confusion among consumers and diluting the distinctiveness of the plaintiff's brand.

Court's Finding:
The court agreed with the plaintiff, holding that the defendant's use of "TOSIBA" amounted to trademark infringement. The marks were phonetically and visually similar, leading to a high likelihood of confusion. The court emphasized that the defendant's adoption of the mark was not in good faith and lacked honest concurrent use.

Passing Off: The Unsuccessful Claim:
Plaintiff's Argument:
The plaintiff also sought to establish a passing-off claim, arguing that their "TOSHIBA" mark had a transborder reputation in India prior to the defendant's adoption of "TOSIBA." They asserted that the defendant's use of the similar mark would deceive consumers into believing that the goods originated from the plaintiff, thereby damaging their reputation.

Court's Conclusion:
The court found that the plaintiff failed to provide sufficient evidence of their trademark's transborder reputation in India before the defendant's adoption of "TOSIBA." As a result, the passing-off claim was not sustained.

Delay, Laches, and Acquiescence:
Defendant's Argument:
The defendant argued that the plaintiff had delayed in filing the lawsuit and had, by their inaction, acquiesced to the defendant's use of the "TOSIBA" mark.

Court's Ruling:
The court rejected this argument, stating that the defendant failed to demonstrate that the plaintiff had unduly delayed the legal proceedings or acquiesced to the use of the mark. The court emphasized that the long duration of the case was due to the complexity of the issues involved and not due to any fault of the plaintiff.

Relief Granted:
The court issued a permanent injunction restraining the defendant from using the "TOSIBA" trademark or any other deceptively similar mark. In recognition of the infringement and the protracted nature of the lawsuit, the court awarded the plaintiff nominal damages of Rs. 15,00,000/- and recoverable costs.

Conclusion:
The case of Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. highlights the importance of a credible and consistent explanation for the adoption of a trademark, particularly when faced with allegations of infringement. The defendant's failure to provide a plausible and corroborated explanation for adopting the "TOSIBA" mark played a crucial role in the court's decision. This case serves as a reminder to businesses that the justification for a trademark's adoption must be honest, well-documented, and capable of withstanding legal scrutiny.

Case Citation: Kabushiki Toshiba Appliances Vs Toshiba Appliance Co: 16.08.2024 : CS(OS) 55/2006: 2024: DHC: 6178: Delhi High Court: Sanjeev Narula: H.J

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539