KABUSHIKI KAISHA TOSHIBA Versus MUHAMMAD ALTAF'

ORDER

1. MUHAMMAD AFZAL ZULLAH, J .‑‑Leave to appeal has been sought from judgment dated 31‑5‑1987 of the Sind High Court; whereby petitioner's appeal under section 76 of the Trade Marks Act, 1940, was dismissed.

2. According to the summary of facts in the petition: the petitioner is a corporation incorporated and organised under the laws of Japan and is well‑known in many countries of the world including Pakistan. The petitioner is the true and original proprietor of the trade mark TOSHIBA, which is a word invented by petitioner from its own former Japanese name viz TOKYO SHIBAura Denki Kabushiki Kaisha and it has also adopted TOSHIBA as a part of its trading style viz. TOSHIBA Corporation of Japan. The petitioner has got its trade mark TOSHIBA registered in Pakistan particularly for goods in class 11 of the fourth schedule to the Trade Marks Rules, 1963 as follows, which were mentioned in the notice of opposition.

3. Registration Class Trademark Goods

4. No. and Date

5. 23678 11 TOSHIBA installations

6. 14‑4‑1955 for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

7. 55130

8. 19‑3‑1971 11 TOSHIBA ‑do‑

9. Class 11 includes: installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.,

10. Fans (electric) fall in class 11 according to the classification of goods. Further, the petitioner had also mentioned in the notice of opposition, the following registered trade marks for the word "TOSHIBA":‑

11. Registration No. Class for which registered.

12. 55127 9

13. 55128 8

14. 55129 10

15. 55131 12

16. 55132 14

17. 55133 16

18. All these registered trade marks are in force. On 27‑10‑1979 the First Respondent applied to register the trade mark TOSHIBA PANKE (in Urdu) in respect of electric fans under Application No.70461 which was advertised in the Trade Marks Journal No.381 of October 1982 at Page 374. The petitioner filed notice of opposition with the Registrar opposing registration of word TOSHIBA in favour of First Respondent and took objections under sections 10(1), 8(a) 6 and 14 of the Trade Marks Act, 1940. The first respondent filed its counter statement and after hearing the " 3 the Registrar refused petitioner's opposition and respondent's application.'

19. On direct appeal by the petitioner the High Court gave such finding on which ordinary, it should have been allowed. The relevant part of the impugned judgment in this behalf, is reproduced below:‑

20. "Admittedly, the trade mark of the respondents was sought to e registered for the same class of goods for which a similar trade mark was already registered by the learned Registrar. The question, therefore, is, whether the burden of proof would still be on the appellants to establish that registration of the respondents' mark was likely to cause deception to the unwary customer that the goods of the respondents and the opponent are goods of the same description or there is any trade connection between them, the onus would be on the opponent but when admittedly, the applicant is seeking registration for the same class of goods for which the Registrar has already registered a same or similar trade mark, then, in my .view, the burden would be on the respondent to show that no deception was likely to be caused by registration of his trade mark. I am fortified to some extent in my view by the case just referred to by me above. Besides that Rules 23 and 24 of the Trade Marks Rules of 1963 also place the initial burden in this respect on the applicant. There is nothing in the Rules to indicate that after the opponent enters into opposition, the burden would entirely shift to him and the applicant would be completely absolved of his responsibility."

21. Notwithstanding the afore‑quoted assessment of the case, with respect, the learned Judge ‑in the High Court, it has been argued, fell into error in thinking that the order of the Registrar could not be set aside unless, in addition to the same being wrong, it was also "absurd" and/or "perverse". We having seen the relevant provision (Section 76 of the Trade Marks Act 1940) do not find any such limitation on the power of the High Court. Learned counsel further stated at the bar, that the case law also does not support this view.

22. Leave to appeal accordingly is granted to examine the questions raised in this petition.

23. Security for costs Rs.5,000.

24. Appeal to be prepared on present record with direction to file all necessary documents.

25. Order of the Registrar is suspended.

26. Notice to respondent No.1 regarding prayer for stay order against user, for which the date to be fixed by the office.

27. M.I./K‑67/S Leave granted.