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Title : Raymond Limited v Raymond Pharmaceuticals
Private Limited
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Number of documents delivered : 1

Bombay High Court

13 July 2010

Raymond Limited
v
Raymond Pharmaceuticals Private Limited
Case No : Appeal No. 438 of 2007 in Notice of Motion No. 661 of 2006 in Suit No. 437 of 2006
Bench : D. K. Deshmukh, R. P. SONDUR BALDOTA
Citation : 2010 Indlaw MUM 677, 2010(5) ALL MR 679, 2010 (5) Bom.C.R. 658, 2010 (44) PTC 25
Summary : Intellectual Property - Trade and Merchandise Marks Act, 1958 - Copyright Act, 1957 - Trade Mark Act,
1999, s. 29(4) - Permanent injunction - Infringement of registered trademarks - Plaintiff, Raymond Limited, obtained
registration for the trade mark 'Raymond' registered in Class 25 in respect of textile piece goods under the Trade and
Merchandise Marks Act, 1958 and also obtained registration under Copyright Act, 1957 for the word "Raymond" written
in stylized manner - Suit was filed claiming a permanent injunction restraining the defendant from infringing their trade-
mark - Plaintiff claimed that the use of the trade-mark of the Plaintiff in the corporate name of the Defendant amounts to
infringement of the trade-mark of the Plaintiff - Temporary injunction in similar terms was claimed in the Notice of
Motion - Defendants contended that the use of the word Raymond in the corporate name of the Defendant for products
different from that of the plaintiff does not result in infringement of the trade-mark of the Plaintiff - Single Judge rejected
the Notice of Motion - Hence, present appeal - It was submitted that in the present case the provisions of s. 29(4) of the
Trade Mark Act, 1999 are attracted - Whether when defendants admittedly are using the registered trade-mark of the
Plaintiffs, not as their trade-mark, but as a part of their trade-name, can the Plaintiffs claim that it amounts to
infringement of their registered trade-mark u/s. 29(4)? - Held, s. 29 deals with different situations when an act on the
part of the defendant would amount to infringement of the registered trade-mark - It is laid down that if the defendant
adopts the plaintiff's trade mark as his trade-name, but is not dealing in the goods in respect of which the plaintiff's
trade-mark is registered, then it does not amounts to infringement - Further, a special provision governing cases of a
defendant using a registered mark as a part of his trade-name is incorporated in s. 29(5) and therefore, that subject will
be governed only by that provision and reliance on any other provision including s. 29(4) is ruled out - Thus, plaintiffs
could not have relied on the provisions of Section 29(4) of the Trade-mark Act - Further, in order to claim that use of a
registered trade-mark as part of trade-name by the Defendants amounts to infringement, the plaintiffs have to establish
that the defendants are dealing in the goods in respect of which the mark is registered - In the present case,
defendants are not dealing in the goods in respect of which the trade-mark of the plaintiffs is registered and therefore,
there is no question of the Plaintiffs being entitled to any temporary injunction - No reason to interfere with the order
impugned in the appeal - Appeal dismissed.
The Judgment was delivered by : Hon'ble Justice D. K. Deshmukh
1. This Appeal takes exception to the order dated 15-02-2007 passed by the learned single Judge of this Court in
Notice of Motion No.661 of 2006. That Notice of Motion was taken out by the Appellant in Suit No.437 of 2006. Suit
No.437 of 2006 is filed by the present Appellant claiming a permanent injunction restraining the Defendant from
infringing their trade-mark. The Plaintiff Raymond Limited is a company, which is the successor of Raymond
Woollen Mills Ltd. incorporated under the Companies Act in 1925. Which had conceived and adopted the use of
the word Raymond in a stylised manner for marketing its products. On 27nd June, 1983, the plaintiff obtained
registration for the trade mark 'Raymond' under registration No.401766 registered in Class 25 in respect of textile
piece goods including shirting, suiting and saris, dress materials, blankets, shawls, satin, bed and table covers, bed
spreads, bed sheets, tissues, felts, curtains, flannel, handkerchiefs, linen, cloth linings, towels, woollen piece goods
etc under the Trade and Merchandise Marks Act, 1958. They also have obtained registration under Copyright Act,
1957 for the word "Raymond" written in stylized manner. In short, for the goods in question, which are broadly
wearing apparel, plaintiffs have registered copyright and registered trade mark for the word "Raymond". The
Plaintiff claims that the use of the trade-mark of the Plaintiff i.e. Raymond in the corporate name of the Defendant
amounts to infringement of the trade-mark of the Plaintiff. Therefore, the Plaintiff claims in the plaint a permanent
injunction restraining the Defendant from infringing its trade-mark by using it as a part of its corporate name. A
temporary injunction in similar terms was claimed in the Notice of Motion No. 661 of 2006.
2. 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 Defendants claim that Raymond is a common
word. It is Christian name and quite common. The Defendants claim that the Raymond itself means mighty
protection in the English language, and therefore, it adopted that name in its corporate name. The Defendants
manufacture and sell pharmaceuticals products. The nature of the business and the product of the Plaintiffs and
the Defendants are totally different. The learned single Judge decided the Notice of Motion by order dated 15-02-
2007. The learned single Judge rejected the Notice of Motion. The present Appeal is directed against the order of
the learned single Judge rejecting the Notice of Motion.
3. The learned Counsel appearing for the Appellants submitted that in the present case the provisions of S. 29(4)
of the Trade Mark Act, 1999 are attracted. It is submitted that the registered trade-mark of the Plaintiff has
reputation in India and because the Respondents are using the mark without due cause and the use of the mark by
the Respondents results in dilution of the mark, therefore, though the goods or products of the Respondents are
dissimilar to the goods and products manufactured and marketed by the Plaintiffs, the Defendants are infringing
the registered trade mark of the Plaintiffs. The learned Counsel appearing for the Appellants took us through the
record to show that the Plaintiffs have built up formidable reputation in India. He also submitted that adoption of the
mark by the Defendants is without due cause. He submitted that the use of the name Raymond in the corporate
name by the Defendants amounts to dilution of the trade-mark of the Plaintiffs. The learned Counsel appearing for
the Plaintiffs relied on several judgments in support of his argument as also relevant extracts from Kerly s law of
Trade Marks and Trade Names, Thirteenth Edition.
4. So far as the Defendants are concerned, the Defendants disputed the claim made on behalf of the Plaintiffs that
they have built up formidable reputation in India. He also disputed that adoption of the name by the Defendants is
without due cause. It was also disputed that the use of word Raymond in the trade-name of the Defendants
amounts to dilution of the registered trade-mark of the Plaintiffs. The learned Counsel submitted that in fact as the
products or goods manufactured and sold by the Defendants and the Plaintiffs are totally dissimilar, and as the
registered trade-mark is only a part of the trade-name or corporate name of the Defendants, provisions of S. 29(4)
of the Trade-mark Act are not attracted. It was submitted that the subject of use of registered trade-mark in a trade
name by other party is governed not by S. 29(4) of the Trade-mark Act, but by S. 29(5) of the Trade-mark Act and
therefore in order that use of registered trade-mark of one party in the trade-name by another party amount to
infringement within the meaning of Trade-mark Act, the goods must be similar. If the goods marketed by the two
parties are different, then in such a case it does not amount to infringement.
5. The learned Counsel appearing for the Plaintiffs-Appellants, on the other hand, submitted that the arguments of
the Defendants based on S. 29(5) is misplaced for several reasons. According to the learned Counsel, S. 29
enumerates or lists the different circumstances in which the trade mark may be infringed. S. 29(5) does not
exhaust the circumstances in which they may be infringed by use of a trade name. It is submitted that various sub-
clauses of S. 29 are enumerative and as long as we fall in any one or more categories, infringement will be
established. It was submitted that the real difference between S. 29(5) and S. 29(4) is that the condition in S. 29(4)
are substantially more onerous. However, this does not in any way suggest that infringement by use of an identical
or similar trade name is exhausted in S. 29(5) alone.
6. From the rival submissions and the record following can be taken as an admitted position:
(i) That according to averments in the plaint, the trade-mark of the Plaintiffs Raymond is registered or is applied for
in relation to the goods in Clauses 3, 6, 19, 22, 23, 24 & 25;
(ii) The Defendants use the word Raymond as a part of its corporate name and it is not its trade-mark. The
Defendants use various trade-mark like LAC for marketing its products;
(iii) That the goods marketed by the Plaintiffs and the Defendants are totally dissimilar;
(iv) That the Defendants are using Raymond as a part of their corporate name since 1983;
(v) It is the case of the Plaintiffs that the use of word Raymond which is the registered trade-mark of the Plaintiffs
by the Defendants as a part of their corporate name amounts to infringement of the registered trade-mark of the
Plaintiffs within the meaning of S. 29(4) of Trade-mark Act.
7. S. 28 of the Trade-mark Act 1999 (hereinafter referred to as the Act) lays down that the registration of the trade-
mark confers exclusive rights on the owner to use that trade-mark. The registration also gives right to the
registered owner of trade-mark to obtain reliefs in respect of the infringement of the trade-mark in the manner
provided by the Act. Sub-s. 1 of S. 28 is relevant for the present purpose. It reads as under:
"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.
8. Perusal of the above quoted provisions shows that it is S. 28 which confers right on the owner of the registered
trade-mark to obtain relief in respect of infringement of the trade-mark in the manner provided by the Act. S. 135 of
the Trade-mark Act lays down the relief that the court can grant in a suit for infringement of the trade-mark. Thus,
the Act confers power on the court to grant an injunction in favour of the owner of the trade-mark, in case the trade-
mark is infringed by the Defendant. As to what amounts to infringement of the registered trade-mark is defined by
S. 29 of the Act.
S. 29 has nine sub- clauses. S. 29 reads as under:
"29. Infringement of registered trademarks.
(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.
(2) 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, mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered
trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such
registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered
trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
(3) In any case falling u/cl. (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the
part of the public.
(4) 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-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c)the registered trade mark 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 trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended
to be used for labelling or packaging goods; as a business paper, or for advertising goods or services, provided
such person, when he applied the mark, knew or had reason to believe that the application of the mark was not
duly authorized by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be
infringed by the spoken use of those words as well as by their visual representation and reference in this section to
the use of a mark shall be construed accordingly".
9. Analysis of the provisions of S. 29 for the purpose which is relevant for deciding this appeal shows that (a) so far
as sub-s. (1) of S. 29 is concerned, it lays down that use of a trade-mark which is either identical or deceptively
similar to the registered trade-mark by the Defendant in relation to the goods in respect which the trade mark is
registered amounts to infringement of the registered trade-mark. Thus to attract sub-s. 1 of S. 29 the Plaintiff will
have to establish that the trade-mark of the Defendant is either identical or deceptively similar to the registered
trade mark of the Plaintiff and the Defendant is using the trade mark to market his goods which are the goods in
relation to which the Plaintiff s trade-mark is registered; (b) So far as Sub-s. 2 of S. 29 is concerned, it lays down
that a registered trade-mark can be said to be infringed if (i) the trade-mark of the Defendant is identical to the
registered trade-mark of the Plaintiff and is used in respect of similar goods by the Defendant (ii) the mark of the
Defendant is similar to the registered mark and there is an identity or similarity with the goods in relation to which
the trade-mark of the Plaintiff is registered or (iii) the trade-mark of the Defendant is identical to the registered
trade-mark of the Plaintiff and is used in relation to identical goods by the Defendant, and that such use is likely to
cause confusion on the part of the public or is likely to be taken to have an association with the registered trade-
mark. For application of S. 29(2) to a case, the Plaintiff has to show that the Defendant s trade-mark is either
identical or similar to his registered trade-mark and that the Defendant is using that mark in relation to goods which
are similar or identical to the goods in relation to which the Plaintiff s trade-mark is registered, and such use by the
Defendant should be shown to result in confusion on the part of the public. A comparison of the provisions of sub-
s. 1 and sub-s. 2 of S. 29 shows that for attracting sub-s. 1 of S. 29 the Defendant s mark should be identical or
deceptively similar to the mark of the Plaintiff and must be used in relation to the same goods with respect to which
the Plaintiff mark is registered and such use would lead one to think that the Defendant is using the Plaintiff s mark.
To attract the provisions of sub-s. 2 of S. 29 the Defendant s mark need not be identical to the registered trade-
mark, it may be similar, not necessarily deceptively similar to the mark of the Plaintiff. The Defendant need not be
shown to have used the mark in relation to the same goods. Even if it is shown that the Defendant is using the
mark in relation to identical or similar goods, it would be enough. It is also to be shown that such use results in
confusion of public mind. But once ingredients of sub-s. 2 of S. 29 are established by the Plaintiff, because of sub-
s. 3 it is presumed, till contrary is proved by the Defendant, that such use by the Defendant causes confusion in
public mind. So far as Sub-s. (4) of S. 29 is concerned, it provides that registered trade-mark of a Plaintiff is
infringed if the Defendant uses a mark which is identical or similar to the trade mark of the Plaintiff, but the goods in
relation to which the mark is used are not similar. But in order to enable the owner of the registered trade-mark in
such a case to claim infringement of his trade-mark he has to establish that he has reputation in India and that use
of the mark by the Defendant is without due cause and is detrimental to the distinctive character or the reputation
of the registered trade-mark. In order to attract the application of sub-s. (4) of s. 29 the Plaintiff has to show that the
Defendant s mark is identical or similar to the Plaintiff s registered mark and the Defendant is using the mark in
relation to the goods which are dissimilar to the goods in relation to which the mark of the Plaintiff is registered and
the Plaintiff has to establish some other grounds which are mentioned in S. 29(4). A comparison of S. 29(2) and S.
29(4) shows that in both the cases the trade-mark of the Defendant has to be shown to be identical or similar. But
for attracting s. 29(2), the goods of the Defendant should be identical or similar, however in so far as S. 29(4) is
concerned the goods of the Defendant may be dissimilar. Scrutiny of the provisions of sub-sections 1, 2 and 4 of S.
29 shows that they deal with the use of a trade mark by the Defendant which is either identical or similar or
deceptively similar to the registered trade-mark of the Plaintiff and that use of the Defendant in relation to goods
which are either the same as the goods of the Plaintiff or are goods which are identical or similar or dissimilar to
the goods of the Plaintiff. In short, these three provisions deal with use by the Defendant of the trade-mark in
relation to the goods or services. In other words, these provisions do not deal with the situation where the
Defendant is not using the trade- mark of the Plaintiff in relation to any goods or services, but is using the
registered trade-mark as a part of his trade- name. Sub-s. 5 of S. 29 deals with that situation. It deals with the
situation where the Defendant is not using the registered trade-mark as a trade-mark, but is using the registered
trade-mark as a part of its trade name. Use of such a registered trade-mark as a part of trade name by the
Defendant also amounts to infringement, but subject to one condition namely that the Defendant must be dealing
in goods in relation to which the trade-mark is registered. For attracting the application of sub-s. 5 of Section 29,
the Plaintiff has to show that the Defendant is using Plaintiff s trade-mark and not a mark which is identical or
deceptively similar or similar to the Plaintiff s registered trade- mark as his trade-name or part of his trade- name
and such business concern of the Defendant must be shown to be dealing in the same goods in relation to which
the trade- mark of the Plaintiff is registered. If these two things are established, it is not necessary for the Plaintiff to
show that such use of the trade-mark results in deception of the public or dilution of the Plaintiff s mark etc. It thus
becomes clear that sub- sections 1, 2, 4 and 5 of S. 29 deal with different types of infringements of registered
trade-mark and it is not merely enumerative.
Sub-s. 5 of S. 29 by necessary implication lays down that when a registered trade-mark is used by a Defendant as
a part of the trade-name and the Defendant is dealing in the same goods in relation to which the trade-mark is
registered, then only it will amount to infringement. In other words, if the Defendant uses the registered trade-mark
as a part of his trade-name, but he does not deal in the same goods in respect of which the trade-mark is
registered, then it does not amount to infringement for the purpose of Trade-mark Act.
10. Controversy in this appeal is when the Defendants admittedly are using the registered trade-mark of the
Plaintiffs, not as their trade-mark, but as a part of their trade-name, can the Plaintiffs claim that it amounts to
infringement of their registered trade-mark under sub-s. 4 of Section 29. The defence of the Defendant as
observed above is that provisions of S. 29(4) do not apply and that the subject of use by the Defendant of the
registered trade-mark of the Plaintiff as a part of his trade-name is governed by S. 29(5).
Perusal of S. 159 shows that by 1999 Act the Trade and Merchandise Marks Act 1958 has been repealed.
Comparison of the provisions of 1958 Act and the 1999 Act shows that 1958 Act did not have a provision
corresponding to sub-s. 5 of Section 29. Perusal of the statement of objects and reasons of sub-s. 5 of S. 29
shows that it is a new provision and it has been incorporated to prevent a person from adopting someone else s
trade-mark as that person s trade-name in certain situation. Relevant part of statement of objects and reasons
reads as under:
Sub-cl. (5) 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 ss. 20 and 22 of the Companies
Act, 1956.
11. Perusal of S. 158 of the 1999 Act shows that apart from repealing 1958 Act, certain provisions of the
Companies Act were also amended by Act 47 of 1999. Two provisions of the Companies Act which have been
amended by Act 47 of 1999 are ss. 20 and 22 of the Companies Act. S. 20 and 22 of the Companies Act reads as
under:
20. Companies not to be registered with undesirable names.- (1) No company shall be registered by a name
which, in the opinion of the Central Government, is undesirable.
(2) Without prejudice to the generality of the foregoing power, a name which is identical with, or too nearly
resembles,-
(i) the name by which a company is existence has been previously registered; or
(ii) a registered trade mark, or a trade mark which is subject of an application for registration, of any other person
under the Trade Marks Act, 1999, may be deemed to be undesirable by the Central Government within the
meaning of sub-section (1).
(3) The Central Government may, before deeming a name as undesirable u/cl. (ii) of sub-section (2), consult the
Registrar of Trade Marks.)
22. Rectification of name of company.-
(1) If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is
registered by a name which,-
(i) in the opinion of the Central Government, is identical with, or too nearly resembles, the name by which a
company in existence has been previously registered, whether under this Act or any previous companies law, the
first-mentioned company, or
(ii) on an application by a registered proprietor of a trade mark, is in the opinion of the Central Government
identical with, or too nearly resembles, a registered trade mark of such proprietor under the Trade Marks Act, 1999,
such company,-)
(a) may, by ordinary resolution and with the previous approval of the Central Government signified in writing,
change its name or new name; and
(b) shall, if the Central Government so directs within twelve months of its first registration or registration by its new
name, as the case may be, or within twelve months of the commencement of this Act, whichever is later, by
ordinary resolution and with the previous approval of the Central Government signified in writing change its name
or new name within a period of three months from the date of the direction or such longer period as the Central
Government may think fit to allow:
(2) If a company makes default in complying with any direction given u/cl. (b) of sub-section (1), the company, and
every officer who is in default, shall be punishable with fine which may extend to for every day during which the
default continues.
Perusal of the above quoted provisions of the Companies Act shows that if the name of the company of which
registration is sought resembles to a registered trade-mark, then the registration of the company in that name can
be refused on an information being given by the Registrar of the Trade-mark. A person who is owner of the
registered trade-mark also has been given a remedy of getting the registration of such a company with such a
name being cancelled.
12. Reading the provisions of Trade-mark Act and the Companies Act together shows that a new provision
has been incorporated in sub- s. 5 of S. 29 for a definite purpose. It is clear that s. 29 deals with different
situations when an act on the part of the Defendant would amount to infringement of the registered trade-
mark. A registered trade-mark can be adopted by a Defendant as its trade-name in two situations, (i) when
the Defendant is dealing in the goods in respect of which the trade- mark is registered and (ii) when the
Defendant is not dealing in the goods in respect of which the trade-mark is registered. The Legislature
obviously was aware of this situation, still the Legislature provided that only when the Defendant adopts
the registered trade-mark as a part of its trade-name, and deals in goods in respect of which the trade-
mark is registered, then only it will amount to infringement. In other words, by necessary implication it is
laid down that if the Defendant adopts the Plaintiff s trade mark as his trade-name, but is not dealing in the
goods in respect of which the Plaintiff s trade-mark is registered, then it does not amounts to infringement.
It was urged on behalf of the plaintiff that the use of the trade mark of the plaintiff as a part of the name of the
defendant Company is covered by sub-s. (4) of s. 29 of the Act relying on the definition of the term Mark found in
sub-s. (2)(1)(m) of the Act. It reads as under :-
2(1)(m) mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any combination thereof;
13. It was submitted that because a name is included in the definition of the term mark if the defendant uses a
name which is identical or similar to the registered trade mark, then it will amount to infringement within the
meaning of infringement of the registered mark, within the meaning of sub- s. (4) of s. 29 of the Act. If this
submission on behalf of the plaintiff is accepted, then it can be seen that use of registered trade mark of the
plaintiff as part of the trade name when the goods marketed by the defendant are similar to the goods marketed by
the plaintiff would be covered by sub-s. (1) of s. 29 and may also be covered by sub-s. (2) of section 29. In other
words, if this submission of the plaintiff is accepted, then in case where the defendant uses as a part of his trade
name registered trade mark of the plaintiff, if the goods are similar, identical or the same as that of the plaintiff, the
case will be covered by sub- ss. (1) and (2) of s. 29 of the Act and if the goods of the defendant are dissimilar, it will
be covered by sub-s. (4) of s. 29 and sub-s. (5) of s. 29 will become otiose. The provisions of various sub-sections
of s. 29 are in a scheme and none of the provisions are either surplus or otiose. As a matter of legislative policy, it
appears, the Legislature decided to treat cases where the defendant uses registered trade mark of the plaintiff as a
part of his trade name as a distinct subject for the purpose of laying down law in relation to infringement of
registered trade mark and legislated that if the defendant uses registered trade mark of the plaintiff as a part of his
trade name, then if the goods in relation to which the defendant is using the trade mark are the same as the goods
in respect of which the plaintiff s trade mark is registered, then only it will amount to infringement and not in case
where the goods of the defendant are dissimilar. Holding that where the defendant is using registered trade mark of
the plaintiff as a part of the trade name of the defendant, where the goods are the same, sub- s. (5) of s. 29 will
apply but if the goods of the defendant are dissimilar, sub-s. (4) of s. 29 will apply, will be contrary to the legislative
scheme of section 29.
14. There is another way in which the situation can be looked into. Use of a registered trade-mark as a part of
trade name was a known phenomena. Passing of action was initiated in such cases. A special provision has now
been made to deal with that situation by incorporating sub-s. 5 of S. 29 and therefore, so far as subject of using of
registered trade mark as a trade-name is concerned, provision is contained in sub- s. 5 of S. 29 and therefore on
that subject no other provision would apply. Generalia Specialibus non derogant is a cardinal principle of
interpretation. It means that the general provision will always yield to a special provision. Construed in accordance
with the fundamental principle, a special provision governing cases of a defendant using a registered mark as a
part of his trade-name is incorporated in S. 29(5) and therefore, that subject will be governed only by that provision
and therefore reliance on any other provision including S. 29(4) is ruled out. Thus, we have no doubt in our mind
that the Plaintiffs could not have relied on the provisions of S. 29(4) of the Trade-mark Act. In the present case,
there is no dispute that the Defendants do not deal in the goods in respect of which the trade-mark of the Plaintiffs
is registered. What is to be noted here is that the phrase used by sub-s. 5 is dealing in goods or services in respect
of which the trade-mark is registered. The Legislature has not used the phrase goods similar or goods identical to
the goods in respect of which the trade mark is registered. Thus, in order to claim that use of a registered trade-
mark as part of trade-name by the Defendants amounts to infringement, the Plaintiffs have to establish that the
Defendants are dealing in the goods in respect of which the mark is registered. In other words, if the Defendants
are not dealing in goods in respect of which the trade-mark is registered, then the use of the registered trade-mark
as a part of trade-name by the Defendant would not amount to infringement. In the present case admittedly the
Defendants are not dealing in the goods in respect of which the trade-mark of the Plaintiffs is registered and
therefore, there is no question of the Plaintiffs being entitled to any temporary injunction.
15. We thus find that the submission of the learned counsel appearing for plaintiff that the use of the registered
trade mark of the plaintiff by the defendant as a part of his trade name when the goods in which the defendant
deals are dissimilar to the goods in which the plaintiff deals is covered by sub-s. (4) of s. 29 cannot be accepted
and therefore, we do not think it necessary to deal with the various judgments delivered under other trade-mark
legislations which were cited before us to show as to how use of the registered trade mark of the plaintiff by
defendant as a part of his trade name amounts to infringement. We also do not consider it necessary to refer to the
material which was produced by the plaintiff to contend that the registered trade mark of the plaintiff has reputation
in India, that the adoption of the mark by the defendant is without due cause and the use of the mark by the
defendant results in diluting the registered trade mark of the plaintiff.
16. We, therefore, see no reason to interfere with the order impugned in the Appeal. Appeal, therefore, fails and is
dismissed.
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