KABUSHIKI KAISHA TOSHIBA Vs. TOSIBA APPLIANCES COMPANY

JUDGEMENT

(1.) THE trade mark TOSIBA was sought to be registered by Shri Narinder Kumar Suri and Shri Dharendra Paul Suri trading as M/s. Tosiba Appliances Company, Anand Parbat, New Delhi (hereinafter referred to as the applicants) in respect of electrical apparatus and instruments, electrical iron (flat) and electrical appliances included in class 9 vide application No. 50986 dated 9th May, 1989 (hereinafter referred to as the class 9 application) and in respect of machines, machines tools, sewing machines and parts thereof except needles foot pressures and heads motor vests and pedal drive, shuttles, tambours for sewing machines included in class 7 vide application No. 510312 dated 12th May, 1989 (hereinafter referred to as the class 7 application). Both the above noted applications were ordered to be advertised before acceptance and in due course of time were advertised in Trade Marks Journal No. 1115 dated 16th November, 1995 at page 2335 and 2323 respectively. The applicants claimed the user of the mark applied for in both the applications as since February, 1975.

(2.) ON 29th January, 1996 M/s. Kabushiki Kaisha Toshiba also trading as Toshiba Corporation, a company incorporated under the laws of Japan (hereinafter referred to as the opponents) gave notices of their intention to oppose the registration of the applications advertised as aforesaid by filing separate notices of opposition in respect of both the applications, on the grounds of the registration sought to be violatives of the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). These oppositions were registered under. Nos . DEL -9858 and DEL -9860 respectively. The applicants contested the aforesaid notices of opposition by filing their counter statement separately in both the cases, consisting of the para -wise reply to the contents of the respective notice of opposition filed by the opponents as aforesaid.

(3.) THE opponents filed evidence in support of opposition No. DEL -9858 on 8th October, 1998, by way of an affidavit dated 6.10.1998 and in opposition No. DEL -9860 on 23.4.1999 by way of an affidavit dated 23rd April, 1999, both affidavits in the name of same Debjeet Gupta, Constituted Attorney of the opponents, annexing with both the affidavits the common exhibits, consisting of 427 pages from Annexure A to Annexure M. The applicants filed evidence in support of their application by way of an affidavit dated 28th December, 1999 separately in both the cases in the name of Shri D.P. Suri, annexing therewith common exhibits separately running into 79 pages of the photo copies of some supporting documents. On 28th July, 2000 the opponents filed their reply evidence separately in both the cases underR.55 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as the Rules), by way of affidavits dated 28th July, 2000 filed separately in the name of Shri Debjeet Gupta. The matter was thereafter set down for hearing and ultimately came up before me for hearing on 8th February, 2001 Shri N.K. Anand, advocate with Shri Safeer Anand, advocate, Ms. Satya Sivaswami, advocate and Ms. Sunita Singh, advocate, appeared for the opponents and Shri Ajay Sahani, advocate with Shri H.P. Singh, advocate and Shri Gurmeet Singh, advocate, appeared for the applicants. Shri N.K. Anand, the Ld. Counsel for the opponents submitted to advance common submissions in respect of both the cases. Shri Anand submitted that the word TOSHIBA is an invented word, invented by the opponents by taking the letters TO from the name of the city Tokyo and the letters SHIBA from the name of their predecessor company, Shibaura Electric Company Limited. The Ld. Counsel further submitted that the opponents adopted the trade mark TOSHIBA in the year of 1939.