SONY KABUSHIKI KAISHA Vs. SHAMRAO MASKAR

JUDGEMENT

(1.) This is an appeal preferred under sub-section (2) of section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) to challenge the legality of the order dated August 30, 1976 passed by the Assistant Registrar of Trade Marks granting the application of the respondents of registration of a trade mark consisting of a rectangular label with the word "SONY" appearing in the upper portion of the rectangle, letter "M" in a small circle in the middle portion of the rectangle and a device of a flower basket just above the rectangle in respect of Nail Polish in Class 3.

(2.) The respondents filed Application No. 257701-B under section (1) of section 18 of the Act for registration of the mark on June 27, 1969 in part A of the Register. The petitioners filed their objection to the registration of the mark on the ground that the word "SONY" constituting the leading feature of the mark submitted for registration being phonetically equivalent to a common surname "SONI" and is not adapted to distinguish and is not registerable in Part A of the Register, except on evidence of distinctiveness as requited under sub-section (2) of section 9 of the Act. The Assistant Registrar heard the parties on this objection and thereafter the respondents converted the application for registration into Part B of the Register and the goods were amended to read as Nail Polish for sale in the city of Greater Bombay". The amended application was advertised before acceptance in the Trade Marks Journal No. 571 dated March 16, 1973. On July 10, 1973 the petitioners, a Joint Stock Company of Japan, filed notice of opposition on various grounds. It was claimed that the petitioners carry on a large manufacture business in the East and produce electronic goods of various kinds. The petitioners claimed that the word "SONY" was coined by the petitioners from the latin word "SONUS", meaning sound and they were the first to use such word as a trade mark relation to electronic goods and the mark has achieved world wide popularity, and came to denote exclusively the property of the petitioners. The trade mark "SONY" is the subject matter of 100 registrations in Japan covering all classes of goods and has also been registered in more than 160 countries all over the world in respect of electronic goods. The trade mark "SONY" was first introduced in India in the year 1955 and it has been continuously used over since that time in respect of radio apparatus with transistors and parts thereof. The mark was registered in class 9 initially in respect of radio apparatus with transistor and parts thereof and later in respect of speakers, earphones, batteries etc. all being goods included in Class 9. The petitioners claim that the mark "SONY" is extensively advertised through-out the world by means of various media of publicity and has come to be associated in the minds of countless persons all over the world, so much so, that any product bearing the trade name "SONY" will invariably import to such countless persons, a trade connection between such products and the petitioners. The gravemen of the opposition was that the trade mark of the respondents, if registered, is likely to deceive or cause confusion in the minds of the customers.

(3.) The petitioners, in support of the opposition filed affidavit dated July 29, 1974 of Mr. Mitsuo Takakashi, while on behalf of the respondents affidavit dated June 9, 1975 of Shamrao Ramchandra Masker, a partner of the respondent firm and an affidavit dated July 2, 1975 of Gopaldas Jivatram Lalwani was filed. The Assistant Registrar of Trade Marks, after giving hearing to both the parties, passed the impugned order over-ruling opposition and directing that the mark "SONY" be registered in respect of specification of the goods "Nail Polish for sale in the city of Greater Bombay" in Class 3 in Part B of the Register. The Assistant Registrar came to the conclusion that the grievance of the petitioners that the mark is likely to cause deception or confusion in the minds of the customers is without any merit. The order of the Assistant Registrar is under challenge.