Case Note & Summary
The appeal arose from a suit filed by Raymond Limited (plaintiff) against Raymond Pharmaceuticals Pvt. Ltd. (defendant) for trade mark infringement. The plaintiff, a well-known textile company, had registered the trade mark 'Raymond' under Class 25 and a copyright for the stylized word. The defendant, using 'Raymond' in its corporate name since 1983, dealt in pharmaceuticals. The plaintiff sought permanent injunction, claiming the defendant's corporate name infringed its trade mark. A Notice of Motion for interim injunction was rejected by the single judge on 15-02-2007, leading to this appeal.
The primary legal issue was whether use of a registered trade mark as part of a corporate name for dissimilar goods constitutes infringement under Section 29(4) or Section 29(5) of the Trade Marks Act, 1999. The plaintiff argued Section 29(4) applied because its mark had reputation, and the defendant's use without due cause caused dilution. The defendant contended that Section 29(5) governed trade name use and required similarity of goods, which was absent. The defendant also claimed honest adoption and that 'Raymond' is a common name.
The court, after noting admitted facts, began analyzing the statutory provisions. It observed that Section 28 confers exclusive rights, and Section 29 defines infringement through multiple sub-sections. The court acknowledged the dispute over whether Section 29(5) exhaustively covers trade name use or Section 29(4) could also apply to dissimilar goods. The analysis was incomplete as the judgment text ended mid-sentence.
Headnote
A) Trade Marks - Infringement by Corporate Name - Section 29(4) vs 29(5) Scope - Trade Marks Act, 1999, Sections 28, 29, 135 - Dispute involved use of registered trade mark 'Raymond' by defendant in its corporate name for pharmaceuticals, while plaintiff used it for textiles. Plaintiff argued infringement under Section 29(4) based on reputation and dilution; defendant relied on Section 29(5) requiring similarity of goods. The Court noted admitted facts and initiated analysis of Section 29, observing that sub-sections are enumerative and that Section 29(4) has more onerous conditions. (Paras 6-9).
Issue of Consideration
Whether use of a registered trade mark as a part of a corporate name for dissimilar goods amounts to infringement under Section 29(4) or Section 29(5) of the Trade Marks Act, 1999, and whether the plaintiff is entitled to interim injunction.
Law Points
- Interpretation of Section 29(4) and 29(5) of Trade Marks Act
- 1999
- trade mark dilution
- reputation
- use without due cause
- corporate name infringement
- dissimilar goods
Case Details
2010 LawText (BOM) (07) 59
APPEAL NO.438 OF 2007 IN NOTICE OF MOTION NO.661 OF 2006 IN SUIT NO.437 OF 2006
D.K.Deshmukh, Smt.R.P.SondurBaldota
Mr.R.M.Kadam, Advocate General with Mr.Rahul Chitnis and Ms.Cynthia Pereira i/b M/s.Rajani Associates for Appellant; Mr.Manish Saurastri with Mr.Utkarsh Tiwari i/b Shantilal & Co. for Respondent.
Raymond Pharmaceuticals Pvt. Ltd.
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Nature of Litigation
Trade mark infringement suit for permanent injunction, with appeal against rejection of interim injunction.
Remedy Sought
Appellant (original plaintiff) sought temporary injunction restraining respondent from using the trade mark 'Raymond' as part of its corporate name.
Filing Reason
Plaintiff claimed that use of its registered trade mark in defendant's corporate name for dissimilar goods infringed the trade mark under Section 29(4).
Previous Decisions
Single Judge rejected the Notice of Motion on 15-02-2007, finding no infringement.
Issues
Whether the use of a registered trade mark as part of a corporate name for dissimilar goods amounts to infringement under Section 29(4) or Section 29(5) of the Trade Marks Act, 1999
Whether the plaintiff established reputation in India and whether the defendant's use was without due cause and caused dilution.
Submissions/Arguments
Appellant: Section 29(4) applies because trade mark has reputation, use without due cause causes dilution; Section 29 sub-sections are enumerative.
Respondent: Section 29(5) governs trade name use; goods must be similar; plaintiff's reputation disputed; honest adoption since 1983.
Judgment Excerpts
The defence of the Defendants is that use of the word Raymond in the corporate name of the Defendant, which deals in totally different product than the product in relation to which the trade-mark of the Plaintiff is registered, does not result in infringement of the trade-mark of the Plaintiff.
The learned single Judge decided the Notice of Motion by order dated 15-02-2007. The learned single Judge rejected the Notice of Motion.
28. Rights conferred by registration.- (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
29. Infringement of registered trade marks. (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
Procedural History
Plaintiff filed Suit No.437 of 2006 and Notice of Motion No.661 of 2006 for interim injunction. Single Judge rejected Notice of Motion on 15-02-2007. Plaintiff filed Appeal No.438 of 2007 against the order. The court heard arguments and began analyzing the law, but the judgment is incomplete in the provided text.
Acts & Sections
- Trade Marks Act, 1999: 28, 29(1), 29(2), 29(3), 29(4), 29(5), 29(6), 29(7), 29(8), 29(9), 135
- Copyright Act, 1957:
- Trade and Merchandise Marks Act, 1958:
