We’re pleased to bring you a guest post by Ujjawal Bhargava on a recent order from the Bombay High Court in the matter of RPG Enterprises v. Riju Ghoshal and Anr, dealing with well known marks, and infringement under the Trade Marks Act, 1999. Ujjawal is a fifth-year student of the Institute of Law, Nirma University, Ahmedabad and has a keen interest in the subject of Intellectual Property, specifically copyright and trademark laws.
RPG Enterprises v. Riju Ghoshal: Bombay High Court Looks at Sections 29(4) and 29(5) of Trade Marks Act
Justice S.J. Kathawalla who retired from the Bombay High Court very recently, pronounced his decision in the matter of RPG Enterprises v. Riju Ghoshal and Anr. This case while declaring the RPG mark to be a well-known mark discusses certain important issues of trademark infringement by use of the registered trademark by another registered trademark proprietor and use of the registered trademark in a trade name, with respect to dissimilar goods and services. Facts of the case, notable observations of the Court along with its analysis are put forth below.
Background of the Case
The plaintiff in this case is RPG Enterprises, a multi-industry conglomerate established in 1979. They have been using the trademark RPG, derived from the acronym of its founder Ram Prasad Goenka, since 1979. The plaintiff had also applied and secured registration of various RPG/RPG formative marks in various classes of the Trade Marks Act, 1999 (“the Act”).
In the last week of October, 2017, the plaintiff became aware of a trademark application for the mark ‘RPG Opticals’. The plaintiff filed an opposition application and the same is pending before the Trade Marks Registry. Later, in May, 2018, the plaintiff became aware of a trademark registration, ‘RPG Pharmacy’. The plaintiff filed a Rectification Application for removal of the impugned trademark registration and rectification of the Register of Trademarks. The said rectification application is also pending. Subsequently, the plaintiff brought a suit against the defendants for infringement of trade mark, copyright and passing off.
The plaintiff contended that owing to their long-standing goodwill and reputation, extensive and continuous use of the RPG mark, and recognition across different classes of goods and services,, the said mark should be declared a ‘well-known’ mark. Further, it was contended that the adoption or use of the impugned marks is likely to cause confusion and deception in the minds of the consumer of the relevant trade. Conversely, the defendants rebutted the contention of plaintiff in relation to ‘well-known’ trademark, claiming that it has not been able to set up a case under Section 29(4) of the Act. The defendants also contended that they have been using their marks only as a trade name and they are not selling any goods or services under the mark RPG. To prove infringement as a trade name under Section 29(5) of the Act, the plaintiff must show that the defendant is dealing in ‘goods or services in respect of which the trade mark is registered’.
Issues before the Court
The following issues arose before the Hon’ble Court for consideration:
- Whether there has been an infringement of the trademark of the plaintiff by the defendants under Section 29(4) of the Act?
- Whether there can be an action of passing off against the defendants?
- Whether there has been an infringement by the defendants of the impugned mark which they have been using as a trade name under Section 29(5) of the Act?
The High Court approached all the three issues mentioned above in a clear distinct manner.
Before moving to the main issues it’s worth noting the Court turned down the defendant’s argument that since they have registration for the mark ‘RPG Pharmacy’, there can be no infringement as per Section 28(3) read with Section 30(2)(e) of the Act. Citing Lupin Ltd. v. Johnson and Johnson, the Court rejected this contention of the defendants and held that the Court can grant injunction at an interim stage in terms of infringement against another registered proprietor.
Infringement of the RPG Mark under Section 29(4) of the Act?
A perusal of Section 29(4) reveals that to establish infringement under it, three factors are required to be satisfied. These factors include:
- “is identical with or similar to the registered trademark, and
- is used in relation to goods or services which are not similar to those for which the trademark is registered, and
- the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.”
The conjunctive ‘and’ used in the statute makes it imperative that all the three factors are satisfied to establish infringement. In the instant case, the defendants argued that the plaintiff cannot claim infringement of its RPG mark under Section 29(4) of the Act until and unless the RPG mark has been recorded in the list of well-known trademarks that is maintained by the Trade Marks Registry. The Hon’ble Court while rejecting the abovementioned contention of the defendants held that all the factors are satisfied in the present case, and the defendants are liable for infringement under Section 29(4).
Noting the distinction between “marks with reputation” and “well known” marks, the Court observed that to establish infringement under Section 29(4), there is no requirement that the mark be recorded in the list of well-known trademarks. Furthermore, the Court observed that in claiming infringement under Section 29(4), it is not necessary to show that the mark is ‘well-known’ as per Section 2(1)(zg). Though if it is proved to be well-known, it can assist in establishing the ‘reputation’ requirement under Section 29(4).This is similar to the holding of the Delhi High Court in Bloomberg Finance Lp v. PrafullSaklecha and Ors., where it also categorically differentiated between a ‘well-known’ mark and ‘mark with reputation’ to establish infringement under Section 29(4) and provided the same observations as made by the Hon’ble Court in the instant case (para 39).
Thus, the Court made it amply clear that to establish infringement under Section 29(4), the mark need not be a well-known mark as per Section 2(1)(zg) but should have reputation in India. The distinction made by the Hon’ble Court requires appreciation as Courts have time and again used the term ‘well-known’ and ‘mark with a reputation’ synonymously to establish infringement under Section 29(4) of the Act. It is imperative to understand that Section 29(4) is an exception to the scheme of the Act and applies only to those trademarks which have earned a reputation in India.
Claim of action of Passing Off
The Hon’ble High Court in relation to the claim of passing off observed that the principles governing a case of passing off are substantially different from an action of infringement. In an action of passing off, the plaintiff must satisfy three ingredients, namely:
- “Goodwill and Reputation of the plaintiff’s mark,
- Actual or likelihood of deception or confusion caused amongst the public, and
- Actual or likelihood of injury to the plaintiff by such use.”
The Court after analyzing all the above-mentioned ingredients in the claim of action of passing off held that the plaintiff has satisfied all the ingredients in relation to its registered trademark and has made out a case of passing off against the defendants.
Infringement under Section 29(5) of the Act?
Section 29(5) of the Act is the only provision in the statute which governs a situation in relation to infringement of a trade mark in the form of a trade name. A perusal of Section 29(5) reveals that to establish infringement under Section 29(5), two factors should be satisfied. First, the person is using a registered trademark as his trade name and second, the person should be dealing in goods or services in respect of which the trademark has been registered. The conjunctive ‘and’ used in the provision makes it mandatory to satisfy both the conditions to establish infringement. In the instant case, the defendants contended that they were not dealing with the same goods or services in respect of which the trademark has been registered by the plaintiff, thus not satisfying the second condition of the provision. The Hon’ble Court concurred with this contention and held that there is no infringement by the defendants in relation to use of the registered trade mark as their trade name as they are dealing with different goods and services. To arrive at this conclusion, the Single Judge Bench relied on to a full bench decision of the Bombay High Court in Cipla Ltd. v. Cipla Industries Pvt. Ltd (See also SpicyIP post here). in which it was held that there can be no infringement under Section 29(5) if the defendants were using the registered trademark as their trade name but dealing with dissimilar goods and services.
The author, however, disagrees with the decision that there will be no infringement of a registered trademark by another if such trademark is used by another person as a trade name dealing with different goods (i.e. goods in respect of which the trade mark is not registered.) (Note- Section 29(5) is not explicit about whether ‘the goods need to be similar or same/identical, hence, I am limiting my argument to the statute words i.e. goods for which the marks is (not) registered.’ as this can be argued in both ways – similar and identical goods). This is because it appears unlikely that the legislature would have envisioned such a narrow interpretation of the said provision. If such an interpretation is allowed then any person can name its company not dealing with similar goods using a mark having reputation and goodwill in the market and the owner/proprietor of the impugned mark will have no right under Section 29(5). For instance, I can name my company, dealing in grocery items, ‘Pfizer’ and there will be no infringement under Section 29(5) as my company and Pfizer deals in dissimilar goods. It is pertinent to note here the decision of the Delhi High Court in Bloomberg Finance Lp v. Prafull Saklecha & Ors. wherein it was held that the purpose of the said provision is to offer better protection and not to exhaust all situations of uses of the trademark proprietor in case someone uses its mark as a trade name. In this regard the Single Judge Bench concluded with the following words (paras 43, 44):
“…given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) otiose. In other words, the legislature may not be said to have intended not to provide a remedy where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered.””
“The Statement of Objects and Reasons of the TM Act 1999 explain that sub-section (5) of Section 29 “seeks to prevent a person from adopting someone else’s trade mark as part of that person’s trade name or business name by explicitly providing that such action shall also constitute an infringement under this Act. This provision will bring this clause in harmony with the proposed amendments to Sections 20 and 22 of the Companies Act, 1956.” Sections 20 and 22 of the CA have been amended to provide that where the name of a company resembles a registered trade mark, then the registration of the company in that name can be refused. The ROC is expected to gather information from the TM Registry. Under Section 22 (5) of the CA, the owner of the registered trade mark can apply to have the name of a company that is purportedly infringing the mark cancelled. All of this only strengthens the conclusion that where Section 29 (5) offers a high degree of protection where both the elements envisaged in that provision exist, it is not meant to preclude the owner of a registered mark remediless when only the first and not the second element exists.”
Courts have time and again used ‘well-known mark’ and ‘mark with reputation’ interchangeably to establish the factors under Section 29(4). The present case clearly shows that these terms should not be used interchangeably to establish infringement under Section 29(4). As discussed on the blog earlier, the Raymond and Cipla decisions of the Bombay High Court have set a dangerous precedent and have acted as a loophole for trademark infringement.