(Image taken from here)
A recent decision of the Bombay High Court appears to have highlighted the intricacies of Section 29 of the Trade Marks Act, 1999 to a considerable extent. In the case of Raymond Limited v. Raymond Pharmaceuticals (Suit No. 437 of 2006), a division bench of the Bombay High Court, comprising Justices DK Deshmukh and RP Sondurbaldota, had ordered on July 13, 2010, the appellant Raymond Limited (RL), a Mumbai-based textile company of the Singhania Group, to share its well-known trademark ‘Raymond’ with a Chennai-based pharmaceutical company Raymond Pharmaceuticals (RP).
As far back as 1983, Raymond Limited had conceived and adopted the use of the word ‘Raymond’ in a stylised manner for marketing its products, viz. textile piece goods and got the same registered under the Trade and Merchandise Marks Act, 1958 as well as under the Copyright Act, 1957. In 2006, the appellant had approached the court alleging that the respondent, viz. Raymond Pharmaceuticals had been guilty of infringement of the Appellant’s trademark by virtue of its usage of the term Raymond in its corporate name. Injunctions, temporary and permanent to restrain RP doing the same were thus sought by RL.
RP had, in its turn, claimed as defence that its products and nature of business were entirely different from those of RL and moreover, the term Raymond was a “common word” and a “Christian name”, meaning “mighty protection in the English language”. Following this, a single Judge bench had rejected RL’s notice of motion, who subsequently filed this appeal. It was RL’s contention that in accordance with Section 29(4) of the Trade Marks Act, 1999, since RL’s registered trademark had gained a considerable reputation in India through the years and since RP had been using the mark without due cause and such usage resulted in dilution of the mark, therefore, despite the dissimilarity in RP’s products with RIL’s, the former had been guilty of infringement. RP replied that the usage of registered trade-mark in a trade name by another party is governed by Section 29(5) and not Section 29(4) of the Trade Marks Act. For infringement to have been caused under Section 29(5), the goods of the two parties involved must be similar, which it was not in the present case. Moreover, RP had been using the name as part of its corporate trade name since as far back as 1983. I
t was contended by RL, however, that RP’s reliance on Section 29(5) was misplaced owing to certain factors. As per Section 28(1) of the Trade Marks Act, the owner of a registered trade-mark has the right to obtain relief regarding infringement of the mark in the manner provided by the Act. Section 135 of the Act lays down the relief that the court can grant in a suit for infringement of the trade-mark. Section 29 enumerates the different circumstances in which the trade mark may be infringed. Section 29(5) alone does not exhaust such circumstances and as long as the problem at hand falls in any one or more categories, infringement will be established.
The Court reasoned that so far as Section 29(4) is concerned, to establish infringement, the Plaintiff has to show that the Defendant’s mark is identical or similar to the Plaintiff’s registered mark and the Defendant is using the mark in relation to the goods which are dissimilar to the goods in relation to which the Plaintiff’s mark is registered and the Plaintiff has to establish some other grounds which are mentioned in Section 29(4). A comparison of Section 29(2) and Section 29(4) shows that in both the cases the trade-mark of the Defendant has to be shown to be identical or similar. However, for attracting Section 29(2), the goods of the Defendant should be identical or similar, while in case of Section 29(4), the goods may be dissimilar.
Sub-sections (1), (2) and (4) do not deal with the situation where the Defendant is not using the trade mark of the Plaintiff in relation to any goods or services, but as a part of his trade name, which has been dealt with in Section 29(5). Under the latter provision, to establish infringement, Plaintiff needs to prove that the Defendant has been dealing in goods in relation to which the trade-mark is registered and has been using Plaintiff’s trade mark and not a mark which is identical or deceptively similar to the same, as his trade name or part of his trade name. Moreover, such business concern of the Defendant must be shown to be dealing in the same goods in relation to which the Plaintiff’s trade mark is registered. If these two things are established, it is not necessary for the Plaintiff to show that such use of the trade-mark results in deception of the public or dilution of the Plaintiff’s mark etc. Thus the Court opined that sub-sections 1, 2, 4 and 5 of Section 29 deal with different types of infringements of registered trademark and it is not merely enumerative. Moreover, under Section 29(5), if the Defendant uses the registered trademark as a part of his trade-name, but he does not deal in the same goods in respect of which the mark is registered, then it does not amount to infringement for the purpose of Trade Marks Act.
Referring to the Statement of Objects and Reasons, the court went on to say that the Trade and Merchandise Marks Act, 1958 did not have a provision corresponding to Section 29(5), which had been incorporated to prevent a person from adopting another’s mark as his own trade-name in certain situations. Reference had also been made to an amendment to the Companies Act, more particularly Sections 20 and 22 of the same, which deal with the matters of companies being prevented to be registered with undesirable names and rectification of company’s name respectively.
The aforementioned provisions of the Companies Act provide that if the name of the company of which registration is sought resembles a registered trademark, then the registration of the company in that name can be refused on information being given by the Registrar of the Trademark. A person who is owner of the registered trade-mark also has been given a remedy of getting the registration of such a company with such a name being cancelled. Thus it was the belief of the judiciary that Section 29(5) had a definite purpose, viz. to deal with different situations when an act on the part of the Defendant would amount to infringement of the registered trademark.
A registered trade-mark can be adopted by a Defendant as its trade-name in two situations,
(i) when the Defendant is dealing in the goods in respect of which the trade- mark is registered and
(ii) when the Defendant is not dealing in the goods in respect of which the trade-mark is registered.
Despite being aware of both these situations, the Legislature had provided that only when the Defendant adopts the registered mark as a part of its trade-name and deals in goods in respect of which the mark is registered, then only it will amount to infringement.
RL further relied on the definition of the term “Mark” [“mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”] found in Section (2)(1)(m) of the 1999 Act and argued that the use of RL’s trademark as a part of the name of RP was covered by Section 29(4). It was submitted that because a name is included in the definition of the term mark, thus if the defendant uses a name which is identical or similar to the registered trade mark, then it will amount to infringement within the meaning of infringement of the registered mark under Section 29(4). However, the court said that going by that it can be said that use of plaintiff’s registered mark as part of the trade name when the goods marketed by the defendant are similar to the goods marketed by the plaintiff would be covered bySections 29(1) and 29(2) too! In other words, if this submission of the plaintiff is accepted, then in case where the defendant uses as a part of his trade name registered trade mark of the plaintiff, if the goods are similar, identical or the same as that of the plaintiff, the case will be covered by sub- sections (1) and (2) of section 29 of the Act and if the goods of the defendant are dissimilar, it will be covered by sub-section (4) of section 29 and sub-section (5) of section 29 will become redundant, which the court was sure that the Legislature didn’t intend to happen. The judicial view was that a decision propounding that the defendant’s usage of plaintiff’s registered mark as a part of his own trade name, where the goods are the same, will fall under Section 29(5), whereas if the goods of the defendant are dissimilar, it will fall under Section 29(4), would be contrary to the legislative scheme of Section 29.
Having said so, yet another perspective had been examined in course of this matter. Passing off action was once initiated in matters involving use of a registered trademark as a part of trade name, till Section 29(5) came to address that matter and hence on that subject no other provision should apply, as per the cardinal principle of interpretation generalia specialibus non derogant (the general provision will always yield to a special provision). Thus the court ruled that RL’s reliance on Section 29(4) was misplaced, since in the present case, it had been established that RP did not deal in the goods in respect of which the RL’s trademark is registered.
It was highlighted in this context that the phrase used by Section 29(5) is “dealing in goods or services in respect of which the trade-mark is registered” and the Legislature had refrained from using the phrase “goods similar or goods identical to the goods in respect of which the trade mark is registered”. Thus, in order to claim that RP’s action amounts to infringement, RL has to establish that RP has been dealing in the goods in respect of which the mark is registered. Since the contrary has been established in the present case, therefore RL cannot be privy to the grant of an injunction against RP. RL’s appeal was thus dismissed.
The Spicy IP team thanks an anonymous commentator for drawing attention to this judgement that seeks to put to rest some long-standing controversies about Section 29.