The Supreme Court of India's judgment in Kabushiki Kaisha Toshiba vs. Tosiba Appliances Co. & Ors, delivered on May 16, 2008, is a pivotal case that clarifies the implications of non-use of a trademark under the Trade and Merchandise Marks Act, 1958. This judgment underscores the principle that mere non-use of a trademark does not automatically lead to its abandonment, and it elaborates on the legal nuances surrounding the concepts of non-use, bona fide intention to use, and the rights of the trademark owner.

Background of the Case: The Dispute over the "TOSHIBA" Trademark:
Kabushiki Kaisha Toshiba, the appellant, is a renowned Japanese company established in 1857, known globally for manufacturing heavy electrical apparatus. The company adopted the trademark "TOSHIBA" in 1939. In 1971, the appellant registered the trademark "TOSHIBA" in India for various electrical goods, marking its entry into the Indian market.

The respondent, Tosiba Appliances Co., is an Indian company that began using the trademark "TOSIBA" in 1975 for various electrical appliances. Claiming to be aggrieved by the appellant's registration, the respondent filed an application for rectification of the trademark under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. The respondent alleged that the appellant's mark lacked distinctiveness and that there was no bona fide intention to use it in India.

Legal Issues: Understanding Non-Use and Rectification under the Act:
The case hinged on the interpretation of Section 46 of the Trade and Merchandise Marks Act, 1958, which deals with the removal of a trademark from the register due to non-use. Section 46(1)(a) allows for the removal of a trademark if it has not been used for a continuous period of five years and one month following registration. Section 46(1)(b) permits rectification if there was no bona fide intention to use the trademark in connection with the goods for which it was registered, and there has been no such use.

The Deputy Registrar of Trade Marks, upon hearing the rectification application, partially allowed it by ordering the deletion of "washing machines" and "spin dryers" from the appellant's registered trademark. The appellant then sought an injunction in the Delhi High Court against the respondent's use of the "TOSIBA" mark. Simultaneously, the Calcutta High Court, hearing an appeal against the Deputy Registrar's order, upheld the rectification for washing machines and spin dryers but dismissed the appellant's claim under Section 46(1)(b) concerning continuous non-use.

Supreme Court's Analysis: Non-Use Does Not Equate to Abandonment:
The Supreme Court's analysis in this case is crucial in distinguishing between non-use of a trademark and its abandonment:

Interpretation of "Person Aggrieved":
The Court first addressed whether the respondent could be considered a "person aggrieved" within the meaning of Section 46. It concluded that the respondent did not qualify as such, as it was not engaged in dealing with washing machines or spin dryers—the specific goods for which the rectification was sought. The Court emphasized that a party seeking rectification must have a legitimate interest or be affected by the continued registration of the trademark.

Bona Fide Intention and Use of the Trademark:
The Court examined whether the appellant had a bona fide intention to use the trademark "TOSHIBA" in India. While it was established that the appellant had not effectively used the trademark in India, the Court found no evidence of abandonment of rights. The Court noted that the appellant had not disclaimed its rights to the trademark and had, in fact, shown a willingness to enter the Indian market.

Non-Use and Abandonment:
The Supreme Court clarified that mere non-use of a trademark does not automatically result in its abandonment. For a trademark to be considered abandoned, there must be clear evidence that the owner has relinquished their rights to the mark. In this case, the appellant's actions did not demonstrate an intention to abandon the trademark "TOSHIBA."

The Registrar's Discretionary Powers:
The Court also highlighted the discretionary powers of the Registrar and the High Court in maintaining the integrity of the trademark register. It emphasized that rectification should be approached with caution, ensuring that genuine rights holders are not unjustly deprived of their trademarks due to procedural or administrative lapses.

Implications of the Judgment: Protection of Trademark Rights:
The Supreme Court's ruling in Kabushiki Kaisha Toshiba vs. Tosiba Appliances Co. & Ors has significant implications for trademark law in India:

Affirmation of Trademark Rights:
The judgment reinforces the principle that non-use alone does not negate trademark rights. Trademark owners, particularly those with global recognition, are protected against opportunistic challenges based solely on non-use.

Need for Bona Fide Intention:
The case underscores the importance of a bona fide intention to use a trademark at the time of registration. However, it also clarifies that the lack of immediate use does not equate to an absence of such intention, provided there is no evidence of abandonment.

Caution in Rectification Proceedings:
The judgment cautions against the overzealous application of rectification provisions, emphasizing that rectification should not be used as a tool to undermine legitimate trademark rights. The Court's emphasis on the "person aggrieved" criterion ensures that only parties with a genuine interest can seek rectification.

Jurisdictional Clarity:
The decision also provides clarity on the jurisdictional powers of the Registrar and the High Court, affirming their role in safeguarding the integrity of the trademark register while balancing the rights of trademark owners and third parties.

Conclusion:
The Supreme Court's decision in Kabushiki Kaisha Toshiba vs. Tosiba Appliances Co. & Ors is a landmark judgment that reaffirms the legal principles surrounding trademark non-use and abandonment. The ruling protects trademark owners from losing their rights due to non-use alone, provided there is no clear evidence of abandonment. It also highlights the importance of bona fide intention in trademark registration and the need for judicial discretion in rectification proceedings. This case serves as a crucial reference point for trademark owners, legal practitioners, and the judiciary in interpreting and applying trademark law in India.

Case Citation: Kabushiki Kaisha Toshiba Vs Tosiba Appliances Co.: 2008 (10) SCC 766

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