Case Note & Summary
The case involves a Notice of Motion in a suit filed by CIPLA Limited against M/s. CIPLA Industries Private Limited and Vishal Khanna for alleged infringement of its registered trade mark 'CIPLA'. The plaintiff, a well-known pharmaceutical company, claimed that the defendants were using the mark 'CIPLA' as part of their corporate name and trading style in respect of dissimilar goods, namely industrial chemicals. The learned Single Judge, while hearing the motion, expressed the view that the Division Bench decision in Raymond Ltd v Raymond Pharmaceuticals Pvt Ltd (2010) 44 PTC 25 (Bom) (DB) required reconsideration on several questions of law. The Single Judge framed four questions: (1) whether use of a registered trade mark as a corporate or trading name for dissimilar goods entitles the proprietor to an injunction under Section 29(5) of the Trade Marks Act, 1999; (2) whether Sections 29(1), 29(2), and 29(4) are restricted to use 'as a trade mark'; (3) whether Sections 29(4) and 29(5) operate in mutually exclusive spheres; and (4) whether the view in Raymond is correct. The Full Bench was constituted to answer these questions. The court analyzed the provisions of the Trade Marks Act, 1999, particularly Sections 29(1) to 29(5). It noted that Section 29(5) specifically addresses the use of a registered trade mark as a corporate or trading name and does not require any additional conditions such as likelihood of confusion or damage to reputation. The court held that Section 29(5) provides a separate cause of action for infringement. Regarding Sections 29(1), 29(2), and 29(4), the court held that they are not restricted to use 'as a trade mark' but cover any use of the mark, including as a name. The court also held that Sections 29(4) and 29(5) operate in separate and mutually exclusive spheres. Consequently, the Full Bench overruled the decision in Raymond Ltd v Raymond Pharmaceuticals Pvt Ltd and answered all four questions in favor of the plaintiff. The matter was directed to be placed before the learned Single Judge for further proceedings.
Headnote
A) Trade Marks Act - Infringement - Section 29(5) - Use of Registered Trade Mark as Corporate Name - The Full Bench held that Section 29(5) of the Trade Marks Act, 1999 provides a separate and independent cause of action for infringement when a registered trade mark is used as a corporate or trading name, even in respect of goods dissimilar to those for which the mark is registered. The court reasoned that the language of Section 29(5) is clear and does not require any additional conditions such as likelihood of confusion or damage to reputation. (Paras 1-4) B) Trade Marks Act - Infringement - Sections 29(1), 29(2), 29(4) - Use 'as a Trade Mark' - The Full Bench clarified that Sections 29(1), 29(2), and 29(4) are not restricted to use of a trade mark 'as a trade mark' in the 'trade marky' sense. These sections cover any use of a registered trade mark, including use as a corporate or trading name, provided the other conditions of those sections are met. The court overruled the contrary view in Raymond Ltd v Raymond Pharmaceuticals Pvt Ltd. (Paras 1-4) C) Trade Marks Act - Infringement - Sections 29(4) and 29(5) - Mutual Exclusivity - The Full Bench held that Sections 29(4) and 29(5) operate in separate and mutually exclusive spheres. Section 29(4) deals with use of a registered trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, subject to certain conditions. Section 29(5) specifically deals with use of a registered trade mark as a corporate or trading name. A plaintiff may have a remedy under either or both sections depending on the facts. (Paras 1-4)
Issue of Consideration
Whether the use of a registered trade mark as a corporate or trading name in respect of dissimilar goods constitutes infringement under Section 29(5) of the Trade Marks Act, 1999; whether Sections 29(1), 29(2), and 29(4) are restricted to use 'as a trade mark'; whether Sections 29(4) and 29(5) operate in mutually exclusive spheres; and whether the Division Bench decision in Raymond Ltd v Raymond Pharmaceuticals Pvt Ltd requires reconsideration.
Final Decision
The Full Bench answered all four questions in favor of the plaintiff, overruled the decision in Raymond Ltd v Raymond Pharmaceuticals Pvt Ltd, and held that Section 29(5) provides a separate cause of action for infringement when a registered trade mark is used as a corporate or trading name, even for dissimilar goods. The matter was directed to be placed before the learned Single Judge for further proceedings.
Law Points
- Section 29(5) of the Trade Marks Act
- 1999 provides a separate cause of action for infringement when a registered trade mark is used as a corporate or trading name
- even for dissimilar goods
- Sections 29(1)
- (2)
- and (4) are not restricted to use of a trade mark 'as a trade mark' but include use as a name
- Sections 29(4) and 29(5) operate in separate and mutually exclusive spheres
- the view in Raymond Ltd v Raymond Pharmaceuticals Pvt Ltd (2010) 44 PTC 25 (Bom) (DB) is not correct
