Toshiba triumphs in Supreme Court following 19-year battle

In Kabushiki Kaisha Toshiba v Tosiba Appliances Co (Case 3639/2008, May 16 2008), the Supreme Court has held that a 1971 trademark registration owned by Japanese company Kabushiki Kaisha Toshiba was valid. The decision ended a 19-year battle between Toshiba and Indian company Tosiba Appliances Co.
On July 26 1971 Toshiba registered the trademark TOSHIBA in India for goods in Class 7 of the Nice Classification (Registration 273758). Tosiba Appliances subsequently filed a rectification application seeking to have the mark TOSHIBA removed from the register on the grounds of non-use. Tosiba Appliances alleged that Toshiba had registered the mark with no good-faith intention to use it in relation to the goods for which it was registered. Tosiba Appliances also claimed that it had been using the mark TOSIBA since 1975.
In May 1992 the deputy registrar of trademarks partially allowed the rectification application and deleted certain goods (washing machines and spin dryers) from the registration, holding that the mark TOSHIBA was not being used in relation to these goods in India. On appeal, the Calcutta High Court granted an ad interim order staying the order of the deputy registrar. However, the court eventually dismissed the appeal on the grounds that Toshiba had failed to demonstrate a good-faith intention to use the trademark TOSHIBA in relation to washing machines and spin dryers in India. On December 8 2005 the Division Bench of the Calcutta High Court upheld the decision. Toshiba filed a special leave petition before the Supreme Court.   
Before the Supreme Court, Toshiba submitted that:
Under Section 47 of the act, the owner of a well-known mark is entitled to apply for defensive registrations, even in respect of goods for which the mark is not being used.  
Although the TOSHIBA mark was used for a number of electronic goods in India, it was not used in respect of washing machines and spin dryers, as these goods were not permitted to be imported into India at the relevant time due to import restrictions. Toshiba thus argued that non-use had been due to special circumstances, as provided under Section 46 of the act. It also argued that the concept of 'use' in Indian jurisprudence does not encompass only the physical sale of goods and that the following factors amounted to use of the mark:
  • the fact that expatriates brought Toshiba washing machines into India;
  • Toshiba washing machines were used in embassies; and
  • Toshiba operated several centres in India offering repair and replacement services in respect of washing machines, among other items. 
Toshiba further submitted that Tosiba Appliances did not deal in washing machines and spin dryers, and thus was not a person aggrieved within the meaning of Section 46 of the act. In response, Tosiba Appliances submitted that since Toshiba had served it with a legal notice, it was a person aggrieved under the act and was entitled to seek removal of the TOSHIBA mark, especially since the mark had not been used in relation to the goods for which it was registered for a period of 19 years (from the date of registration to the date of filing of the rectification petition). 
Following a discussion on the scope of the applicable provisions, the Supreme Court held that Tosiba Appliances had failed to show that it would be injured if the trademark TOSHIBA were allowed to stay on the register, as it did not manufacture washing machines and spin dryers (and did not intend to). Therefore, the court concluded that Tosiba Appliances was not a person aggrieved within the meaning of the act. The court also held that although Toshiba had not used the trademark TOSHIBA for washing machines and spin dryers in India, it had no intention to abandon or not to use the mark. The Supreme Court thus set aside the decision of the Calcutta High Court, holding that “the balancing act between the user of a registered trademark and a non-user should be such which leads to the possibility of neither of the parties being injured.”
Diva Arora and Avantika Mehta, Anand And Anand Advocates, New Delhi

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