Case Note & Summary
The dispute arose from the Plaintiff Raymond Limited's claim that the Defendant Raymond Pharmaceutical Pvt. Ltd. infringed its well-known registered trade mark 'Raymond' by using it in the domain name www.raymondpharma.com and email address. The Plaintiff, incorporated in 1913 and a market leader in textiles and apparel, asserted that the mark 'Raymond' had acquired immense reputation and goodwill over decades, was registered under the Trade Marks Act and Copyright Act, and was used as a dominant feature in its corporate name and domain names. The Defendant, a pharmaceutical company incorporated in 1983, adopted the name 'Raymond' as part of its corporate name and later, in 2009, registered the domain name www.raymondpharma.com. The Plaintiff had previously filed Suit No.437 of 2006 seeking to restrain the Defendant from using 'Raymond' as part of its corporate name under Section 29(5) of the Trade Marks Act, but the Notice of Motion was dismissed by the Bombay High Court on 15.2.2007, and the appeal and SLP were also dismissed. The Registrar of Companies had directed the Defendant to change its name, but that order was stayed by the Madras High Court. In the present suit, the Plaintiff sought a perpetual injunction restraining the Defendant from infringing its mark and passing off, and claimed damages. The Plaintiff obtained leave under Clause 12 of the Letters Patent and filed the Notice of Motion for interim relief. The core legal issues were whether the use of the mark in the domain name constituted infringement under Section 29(4) of the Trade Marks Act for dissimilar goods, whether the suit was barred by res judicata due to the prior litigation, and whether delay and acquiescence disentitled the Plaintiff to relief. The Plaintiff argued that the earlier suit was under Section 29(5) relating to the corporate name, whereas the present action under Section 29(4) was a separate cause of action applicable to dissimilar goods and services, and that the well-known nature of the mark entitled it to protection against use that took unfair advantage of or was detrimental to its repute, even for pharmaceuticals. The Defendant contended that 'Raymond' was a common Christian name, that it had been using the name honestly since 1983, that the domain name was distinct due to the addition of 'pharma', and that there was no likelihood of confusion because the businesses were in different fields. The Defendant also emphasized the Plaintiff's delay since 2009 and the dismissal of the earlier motion. The Court heard detailed submissions and reserved judgment. The judgment excerpt does not contain the final decision on the motion, but the Court examined the scope of Section 29(4) and the effect of the prior proceedings, focusing on whether the Plaintiff could separately maintain an action for infringement in respect of dissimilar goods despite the earlier adverse order under Section 29(5).
Headnote
A) Trade Marks - Infringement - Maintainability under Section 29(4) - Trade Marks Act, 1999, Sections 29(4), 29(5) - Court heard submissions that a suit under Section 29(4) for infringement by use of a registered mark in relation to dissimilar goods or services is a separate cause of action and maintainable even after dismissal of an earlier suit under Section 29(5) which dealt with use as a corporate name; Plaintiff contended that Section 29(4) provides relief when the mark has a reputation in India and its use without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark (Paras 10-12). B) Trade Marks - Passing Off - Domain Name Incorporating Corporate Name - Trade Marks Act, 1999, Section 29 - Defendant argued that use of the name 'Raymond' as part of its corporate name since 1983 and as domain name since 2009 was honest and bona fide; that the word 'Raymond' is a common Christian name and used by many others; and that the addition of 'pharma' to the domain name sufficiently differentiates it from Plaintiff's mark, avoiding likelihood of confusion in the pharmaceutical field (Paras 5-7). C) Civil Procedure - Res Judicata/Estoppel - Effect of Prior Dismissal - The Court considered whether the dismissal of the Notice of Motion in Suit No.437 of 2006 under Section 29(5) operated as res judicata or issue estoppel, noting that the earlier order had attained finality after dismissal of appeal and SLP; Plaintiff argued that the cause of action in the present suit is distinct, based on dissimilar goods under Section 29(4) (Paras 4, 10-11). D) Trade Marks - Defences - Acquiescence and Delay - Trade Marks Act, 1999 - Defendant raised objection that Plaintiff's delay since August 2009 when the domain was registered, and failure to act promptly, constituted acquiescence and laches disentitling Plaintiff to any interim injunction; Plaintiff denied these allegations (Paras 5, 8).
Issue of Consideration
Whether the Defendant's use of the Plaintiff's registered trade mark 'Raymond' in the domain name www.raymondpharma.com constitutes infringement under Section 29(4) of the Trade Marks Act, 1999, and whether the suit is maintainable despite dismissal of prior suit under Section 29(5) and the Plaintiff's delay and acquiescence.
Law Points
- Domain name treated as trade mark
- use of well-known mark in domain name for dissimilar goods may infringe under Section 29(4) if without due cause and takes unfair advantage or is detrimental
- dismissal of earlier suit under Section 29(5) does not bar new suit under Section 29(4) for different cause of action
- acquiescence and delay may disentitle interim relief
