‘If at first you don’t succeed, try, try again’, is something Raymond Limited (‘RL’) seems to have imbibed into their litigation strategy. In 2006, RL filed a suit for infringement against Raymond Pharmaceuticals (‘RP’) for the use of ‘Raymond’ (RL’s ‘trademark’) in their corporate name. While a 2007 appeal to a Notice of Motion filed in the suit was dismissed by the Bombay High Court in 2010, the main suit is yet to be heard. The order passed in 2010 is the only substantive holding to come out of the 2006 suit, wherein there was held to be no infringement by use of RP’s corporate name.
In 2014, RL filed another suit against RP, this time arguing that it was now their domain name – www.raymondpharma.com that infringed their trademark. The Court dismissed a Notice of Motion filed in the second suit on the 20th of July, 2016 – holding again, that RP’s use of ‘Raymond’ in their domain name did not amount to infringement (the order is available here).
Shouvik has written an excellent post on the 2010 order, which I would recommend as background reading on this matter. The Court inter alia held that RP was not infringing RL’s trademark by including ‘Raymond’ in their corporate name, as RL had not been able to prove that RP was dealing in the goods in respect of which the trademark was registered.
Importantly, the Court refused to make a blanket statement on the different situations in which Sections 29(4) and 29(5) of the Trademarks Act (the ‘Act’) would apply. Where 29(4) provides for the infringement of a registered trademark when an identical or similar mark is used in relation to goods or services which are not similar to those for which the trade mark is registered, 29(5) relates to infringement by inclusion of a registered mark as part of a trade name. The Court based their decision on the principle of generalia specialibus – that a special provision would take preference over a general provision; and therefore held that 29(5) would apply, dismissing the applicability of 29(4).
The interim order passed by Justice A.K. Menon last month in the suit filed in 2014 was importantly not one of cybersquatting as RL did not pray for the transfer/cancellation of the domain name, and solely alleged trademark infringement by dilution. In order to determine whether RP’s domain name had resulted in the dilution of the mark, the Court applied the American doctrine of initial interest confusion to test whether RP’s domain name caused any confusion amongst consumers about the source of products or services, and held that the inclusion of ‘pharma’ in the name negated any possible confusion.
This led the Court to consider Section 29(4), as it is specific to dissimilar goods. The requisites for a claim under this section are: that the registered mark claiming infringement should have a reputation in India; and the use of the mark should be without due cause, and should be of unfair advantage or be detrimental to the distinctive character or repute of the registered trade mark. RL argued that since the goods traded by RP are dissimilar to theirs, all requisites of Section 29(4) had been met, and hence there was a valid claim under this section. RP, on the other hand, contended that there was no evidence submitted to support the reputation of RL’s mark in India, as well as to show how RP’s use of ‘Raymond’ was detrimental to RL. They claimed that since there was no misrepresentation or likelihood of damage, this Section would not be applicable.
On an analysis of the judicial decisions advanced by RL, the Court agreed with RP, and held that RL was under the obligation to establish that RP’s use of the mark was not in accordance with honest practice in commercial matters, or how it was of unfair advantage, or detrimental to their mark – which they had failed to do. Hence, whether or not the mark had been diluted was a question that would have to be decided by evidence, and there was held to be none in the present suit, especially as both parties were engaged in different businesses. Therefore, it was prima facie held that the domain name had not been adopted to take unfair advantage of RL’s repute.
The Court however accepted that RL would be entitled to seek a restraining order should RP use ‘Raymond’ in any other manner other than in their corporate name, domain name, or e-mail address. In conclusion, the Court dismissed the Notice of Motion, and stated that RL would have to wait until the 2006 suit is decided for any further relief against RP in respect of the use of the domain name.
Cause of Action – A missing sub judice argument?
RL argued that cause of action existed in the present suit as, according to them, it was a fresh action against RP’s domain name, which was not in use during the pendency of the earlier suit. RP disagreed on this point and argued that the domain name had been in use since 2009, and since the present suit had been filed only in 2014, it could not be considered as fresh action. The Court, very surprisingly did not expound on the existence of cause of action, or in this case, the lack of it. The only mention that they made of the arguments raised in this regard is their acceptance of the fact that the domain name had been in use since 2009. While the period of use of the domain name is a very valid argument, it is startling that neither RP nor the Court saw fit to raise the issue of sub judice with respect to the 2006 suit that is yet to be decided.
Section 10 of the Code of Civil Procedure bars the trial of any suit in which the matter in issue is also directly and substantially in issue in a previously instituted, pending suit between the two parties. Therefore, for this section to be applicable, it would have to be proved that the entire subject matter of both suits is the same.
While there isn’t any precedent on this specific matter – this brings up the interesting question of whether the use of a domain name would consist of a new cause of action when there is an already instituted case regarding the corporate name, or is it enough to constitute a whole new cause of action altogether? Past domain name disputes which have involved the infringement of both the corporate, as well as the domain name, such as Satyam Infoway v. Sifynet Solutions – claimed infringement of both the corporate as well as the domain name in the same suit. While this would suggest that perhaps domain name disputes constitute the same subject matter as a suit for the corporate name, Courts are yet to give a definitive answer on this point.
Two additional points that seemingly necessitate a sub judice argument is first, RL’s admission that the allegation of infringement under Section 29(4) was already dismissed by the Court in the 2010 order. Second, since the Court concluded that RL would have to wait for the determination of the 2006 suit for further relief, would that not lead to an inference of similar subject matter in both suits? Why the Court would allow RL to make refurbished arguments under the same section, and more importantly – why RP did not bring this up, are issues that need to be addressed.
Something else that struck me as odd was the fact that Court turned to the American doctrine of initial interest confusion to determine trademark infringement. There exists ample precedent before Indian Courts to utilise prescribed tests to determine the likelihood of confusion, which significantly differ from this doctrine. Taking the view of a man of average intelligence and imperfect recollection is one; visual and phonetic similarity, distinguishing the essential feature of the mark, the anti-dissection test – are other recognised tests, none of which were adequately considered by the Court. Hopefully, we will see both suits concluded at the earliest, bringing an end to litigation that has now been pending for over ten years.
(Picture taken from here.)