MESSRS IRSHAD SEWING MACHINE COMPANY Versus REGISTRAR OF TRADE MARKS
This appeal against the order of the Registrar of Trade Marks, respondent 1, dated the 17th June, 1984, dismissing the appellant's application for registration of the mark Toshiba in class 7 for sewing machines and parts thereof except needles and accepting the opposition of Messrs Tokyo Shibaura Denki Kabushiki Kaisha, Japan, respondent 2, arises out of the following circumstances. Messrs Irshad Sewing Machine Company, Lahore, the appellant, filed application on the 22nd September, 1980, for securing registration of the mark Toshiba for its sewing machines and parts thereof except needles. The appellant claimed user of the mark since 1962. Messrs Tokyo Shibaura Denki Kabushiki Kaisha. respondent 2, also trading as Toshiba Corporation in Japan, vehemently opposed the registration of Toshiba as the appellant's mark. It stated that the trade mark Toshiba had been invented by it and was derived from its corporate name Tokyo Shibaura Electric Company Limited which name had been changed to Tokyo Shibaura Denki Kabushiki Kaisha in 1979, since when its business had also been carried out under the name of Toshiba Corporation. It asserted that it was proprietor of the trade mark Toshiba of worldwide fame which had been used in Pakistan since many years and in any case prior to 1962 in relation to a large variety of goods of industrial, commercial, domestic and other uses including some goods falling in class 7: It enumerated a host of goods which it had been manufacturing and regarding which Toshiba was the registered trade mark for a number of years. To establish link of the goods manufactured by it with the sewing machines in respect of which the appellant sought registration of its mark, respondent 2 averred that it was making tools for affixing buttons, fastening buttons, button holes, scissors and cloth shearing tools, screw drivers and other instruments used in the maintenance of sewing machines, lamps which might be attached to sewing machines and induction motors which could be utilised for operating sewing machines and thus forming part of the sewing machines.
2. It contended that it had been engaged in worldwide manufacturing and commercial activities in respect of a variety of goods bearing Toshiba as trade mark since many years, its trade mark Toshiba m relation to its products and business had acquired fame and renown throughout the world and in particular in Pakistan and further that it had enjoyed a wide reputation and substantial goodwill in Pakistan. Elaborating its point it said that in Pakistan Toshiba had been used for a long time in relation to an increasing range of products having industrial, commercial, domestic and other uses and the general purchasing public, traders and industrial consumers had come to rely on the name and trade mark Toshiba as a symbol of quality products, whether already in the market or newly introduced, supplied by it. It added that the domestic and industrial consumers and 'traders in Pakistan, in addition to being aware of Toshiba products for other uses, were fully familiar with items of daily domestic use, such as television receivers, incandescent and fluorescent lamps, radio‑receivers, record‑players, tape‑recording machines, refrigerators, room air‑conditioners, electric irons, etc., and that members of the general public in Pakistan were also exposed to extensive advertising of Toshiba products. It asserted that familiarity with Toshiba products extended to all sections of the general public in Pakistan and that they knew that the products bearing Toshiba trade mark were exclusively associated with it. It tried to draw inference from all this that the appellant's goods were likely to cause the public in Pakistan or a substantial number of them to believe that the goods emanated from or otherwise were connected in the course of trade with it (respondent 2) and that the appellant intended using the mark applied for to deceive and cause confusion to the public and to trade unfairly on its (respondent 2's) reputation and goodwill in respect of Toshiba trade mark and name. It challenged the appellant that the latter was not and could not rightly claim to be the proprietor of the mark applied for.
3. In the counter‑statement filed by the appellant it tried to allay respondent 2's fears that the appellant's goods would cause deception and confusion. The appellant averred that the class of purchasers for sewing machines consisted of professional tailors and housewives while the class of purchasers for respondent 2's goods was quite different and since the goods of the appellant and respondent 2 were not sold in the same shop or on the same counter any chance of confusion or deception would not arise, rather it would disappear.
4. The Registrar was not satisfied with the appellant's evidence to pursuade himself to agree to the appellant's assertion that the mark Toshiba had been used in respect of manufacture and marketing of sewing machines since 1962. The learned counsel for the appellant could not say that the appellant could fortify its claim of user by production of copies of income tax returns to indicate the payment of income‑tax and the value of sales. From the documents placed by respondent 2 on the record and after hearing the learned counsel for the contesting parties the Registrar came to the conclusion that respondent 2's mark was known countrywide and therefore its adoption by any local manufacturer was not honest. He remarked that there were certain marks which were known the world ever and their adoption by any party was a case of clear infringement and no such adopter could honestly say that he was the author of the mark and was thus entitled to get it registered in his favour. Consequently he declined to accord the appellant's request for registration of Toshiba as its trade mark.
5. Admittedly the trade mark Toshiba was invented by respondent 2 as it emerged by combining the. prefixes of the two words forming the name of the company. The appellant has no connection with the mark Toshiba. It simply adopted this mark which was being used by respondent 2.
6. When questioned the learned counsel for the appellant was not in a position to produce copy of any income‑tax return of taxable income filed by the appellant or to give proof of payment of income‑tax touching user of the mark Toshiba remanufacture and sale of sewing machines since 1962 as claimed by the appellant. In such a situation the appellant's alleged use of the mark in producing and marketing the sewing machines in substantial quantity cannot be accepted at face value.
7. The learned counsel for the appellant laid great stress upon the point that the appellant's goods, namely, sewing machines and parts thereof except needles, were not the same as respondent 2's goods in respect of which the trade mark Toshiba had been registered and further that the two sets of goods were of different description and consequently the prohibition of section 10(1) of the Trade Marks Act, 1940, did not stand in the way of registration of the mark Toshiba in relation to the appellant's goods. For permitting identical trade marks in respect of different goods or goods of different descriptions he referred to the authorities reported as Kaiser Jeep Corporation v. Saber Saleem Textile Mills Limited PLD 1969 Kar. 376, Sony Kabushiki Kaisha v. Registrar of Trade Marks, Karachi PLD 1978 Kar. 161 and Montres ,Rolex SA. v. Assistant Registrar of Trade Marks PLD 1987 Kar.199.
8. Building up his case substantially on what is contained in respondent 2's opposition and which is summarised in the first two paragraphs of this judgment, the learned counsel for respondent 2 made strenuous efforts to show that the appellant's use of the mark Toshiba would cause deception and confusion in the minds of the purchasers who would take its products as those of respondent 2. He contended that respondent 2's products were known and were being sold the world over for a number of years and that with extensive publicity and advertising done by respondent‑2 its trade mark Toshiba has become known to almost every citizen of Pakistan and was practically a house hold word and, therefore, any customer's first impression would be that the sewing machine manufactured and sold by the appellant with the mark Toshiba thereon had actually been manufactured by respondent 2. He cited amongst others Eno v. Dunn (1890) 7 R.P.C. 311, Eastern Photographic Material Company Limited v. John Griffiths Cycle Corporation (1898) 15 R.P.C. 105, Aluminium Products Limited v. Registrar of Trade Marks PLD 1958 Dacca 481, Monsanto Company v. Gul Ahmed Textile Mills Limited PLD 1968 Kar. 369, Bata Limited v. Allied Corporation 1986 CLC 1636, Seven‑Up Company v. Deputy Registrar of Trade Marks 1987 MLD 91, Consolidated Food Corporation v. Brandon and Company AIR 1965 Bom. 35 and Sunder Parmanand Lalwani v. Caltex (India) Limited AIR 1969 Bom. 24 in support of his argument for not granting registration of the mark in the appellant's favour. The contention of the learned counsel is not without force. With the proliferation of means of communication media the names and products of world renowned big companies are catching the eyes and ears of the public‑at- large in all civilised countries of the world and Pakistan is no exception. Extensive travelling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of the internationally renowned companies and their products. Respondent 2 is no doubt a company of world renown and its products are marketed in Pakistan as also in other countries. It is not uncommon now‑a‑days to find sewing machines being sold at the same shop where house‑hold appliances manufactured by respondent 2 bearing trade mark Toshiba are offered for sale. The contention of the learned counsel for the appellant that the goods of the appellant and respondent 2 are not purchased by the same category of, customers as the sewing machines manufactured by the appellant are to be bought by tailors and some of the housewives can be accepted only with a grain of salt. The purchase of sewing machines is not restricted to tailors and housewives; other members of the public do make purchases of sewing machines for various purposes. Also like anybody else tailors and housewives indulge in purchase of domestic appliances manufactured and marketed by respondent 2: If any purchaser of sewing machine were to be offered for sale a machine manufactured by the‑appellant bearing the mark Toshiba, he would naturally take it to be product of respondent 2 and with the image of quality which he has in his mild regarding respondent 2's products he might readily buy it only to find soon. afterwards that he had been duped and cheated. There is every likelihood of causing of deception and confusion with the use of the mark Toshiba by the appellant and in such a case different nature of goods loses relevance.
9. It need hardly be reiterated that the law of registration operates not merely for the benefit of the traders but also for the benefit of the public‑at‑large and it main object is to secure‑ free enjoyment of the right of manufacturing and marketing of one's products under one's registered trade mark and also to save the general public from being deceived by the acts of unscrupulous' manufacturers and sellers of goods bearing the fake trade of others. For maintaining the purity of the trade marks register and for safeguarding the interests of the public it is the duty of the tribunal administering the law of registration to disallow misuse of another's trade mark by a person like the appellant which is not entitled to use it. The appellant's application was rightly refused by the Registrar. There is no force in this appeal which in dismissed with costs.
AA./1‑39/L Appeal dismissed.