TOSHNIWAL INSTRUMENTS MADRAS Vs. TOSHNIWAL BROS PVT LTD

JUDGEMENT

(1.) This appeal is directed u / S. 109 of the Trade and Merchandise Marks Act, 1958 against an order passed by the Assistant Registrar of Trade Marks, Madras in an application filed u / Ss. 46 and 56 of the Act for rectification of a Registered Trade Mark. The rectification prayed for has been ordered by the Assistant Registrar.

(2.) The application for rectification was filed by "Toshniwal Brothers Private Limited" and it was filed against "Toshniwal Instruments Madras". The rectification sought for was ordered by the Assistant Registrar. As against that Toshniwal Instruments Madras have filed this appeal. They will be hereinafter called the registered proprietors. The respondent-Toshniwal Brothers Private Limited will be hereinafter called the applicants.

(3.) The case of the applicants is that they are a leading company incorporated under the Indian Companies Act, 1913 and are engaged since 1948 as sole selling agents in the sale and distribution of Scientific and Technical Instruments and Apparatus of various kinds, indigenously manufactured both by associated and non-associated manufacturing firms of the applicants as well as imported from abroad. In order to distinguish their goods in their trade they adopted in 1960 the word "Toshniwal" as a trade mark. Due to the extensive use of the said trade mark 'Toshniwal' from 1961 this trade mark has become distinctive of their goods. In 1960 the applicants sought for registration of this trade mark but due to the reason that some particulars required in the Registrar's office could not be furnished that application was not pursued. Then a fresh application was filed on 30-12-1977. When that application was advertised in the Trade Mark journal it was opposed by M / s. "Toshniwal Instruments, Madras". The opposition was on the ground that the trade mark "Toshniwal" has been registered in their name under Registration No. 221473 in class 9 in respect of the same goods i.e., Scientific and Technical Instruments and Apparatus. That objection was rejected by an order of the Deputy Registrar of Trade Marks, Bombay dated 29-2-1984 and the application of the applicants is being registered. Since it was on the basis of the registered trade mark No. 221473 the applicant's application for registration on their trade mark was opposed, and since the said trade mark No. 221473 limits and is in derogation of the exclusive right of the applicants in the property of the trade mark 'Toshniwal' the applicants are aggrieved by the existence of the Trade Mark No. 221473 of "Toshniwal Instruments, Madras". Therefore they are interested and are entitled to apply for the removal of the trade mark registered under No. 221473. The applicants in their application and the statement of case would further state, as reasons for rectification, that the registered proprietors (Toshniwal Instruments, Madras) got the registration of the trade mark fraudulently by making false and misleading representations as to the use and proprietorship of the trade mark. Then stating that considering the exclusive use of the trade mark "Toshniwal" by the applicants and the reputation acquired by them in respect thereof the registration of the impugned trade mark was wrongful, and also just reproducing the words of S. 46(1)(a) and 46(1)(b) the applicants have stated that the impugned trade mark is contrary to Ss. 11, 32, 46(1)(a) and (1)(b) and 56 and therefore it is liable to be removed. On these grounds the applicants have prayed for removal of the trade mark in question from the register.