Sony Kabushiki Kaisha vs. Shamroa Maskar and Ors.

1984
(2)BomCR 660

This is an appeal preferred to challenge the passed by the Assistant Registrar of Trade Mark
granting the application of the respondents for 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 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'

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 in
relation to electronic goods and the mark has achieved world-wide popularity, and came to
denote exclusively the property of the petitioners. The gravamen 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.

The learned counsel placed strong reliance upon Sunder Parmanand Lalwani v. Caltex (India)
Ltd. in support of his submission, that by reason of extensive reputation enjoyed by the
petitioners in respect of their mark, any person coming across the mark "SONY" in respect of
cosmetics including nail-polish would be deceived or confused into believing that the same
emanated from the petitioners or in any event would be put in a state of wonderment as to
the trade origin of the goods.

The short question which falls for determination is, whether the Assistant Registrar was in
error in recording a finding that the registration of the mark of the respondents is not
likely to deceive or cause confusion in the minds of the customers.

The question as to whether any deception or confusion would be caused has to be

determined with reference to the facts of each case, and it is necessary to take into
consideration the totality of the facts and the surrounding circumstances.
The factors creating confusion would be the nature of the mark itself, the class of
customers, the extend of the reputation, the trade channel, the existence of any
connection in the course of trade, but the list is not exhaustive

The electronic goods and nail polish are not sold under one roof and there will not be any
confusion in the mind of customer that both the items come from the petitioners house in
Japan. There is also no common field of activity in course of trade of the two items, and
the classes of customers who would purchase the two items are distinct and different. The
petitioners had led no evidence whatsoever before the Assistant Registrar in the shape of
affidavit of any dealer or consumer to indicate that the use of the mark by the
respondents is likely to cause deception or confusion.

The decision in Caltex case was recorded on the evidence produced in that case and it is not
possible to reach the same conclusion as in Caltex case: “It would, therefore, be totally
misleading to rely only on some individual fact or facts from decided case and put emphasis
on them without taking into account other facts in combination with which that particular
fact was looked upon as yielding any principle ".

In absence of any evidence to hold that there is a likelihood of confusion or deception, it is

impossible to conclude that the order of the Assistant Registrar suffers from any infirmity.