Nirma University, Institute of Law

A Printed Document Submitted on Case Law Analysis as part

of a Term Assignment

Appellants: Raymond Limited Vs Respondent: Raymond Pharmaceutical Pvt. Ltd. 2010(5) BomCR 658

HOMBLE JUDGES

Justice D.K. Deshmukh and Justice R.P. Sondur Baldota

Subject: Intellectual Property Rights Legal Provisions: The Trade Marks Act, 1999, Copyright Act,1957 and The Companies Act,1956.

Semester: VII Course Coordinator: Mr. Rohit Moonka Submitted By: Bharat Sankhla Roll No. 08BAL036 Date: 03 August, 2011

1. FACT OF THE CASE

The fact of case is that the appeal is taken as exceptions to judgment passed by the learned single judge 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 and 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. This had conceived and adopted the use of the word Raymond in a stylised manner for marketing its products. In 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. 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

rejected the Notice of Motion. The present Appeal is directed against the order of the learned single Judge rejecting the Notice of Motion.

2. ISSUES INVOLVED
a.

Whether the name Raymond is registered by appellant and

Pharmaceutical Pvt. Ltd. is fall in preview of section 29 (5) of The Trade Union Act, 1999?
b.

Whether the dissimilarity of products or goods two companies

using same name is not violation of the trademarks?

2.

LAWS INVOLVED Trademarks Act, 1999

Section 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, a mark which because of(a)

its identity with the registered trade mark and the similarity of the goods or its similarity to the registered trade mark and the identity or similarity of the goods

services covered by such registered trade mark; or

(b)

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 under clause (c) of sub- section (2), the court shall presume A registered trade mark is infringed by a person who, not being a registered

that it is likely to cause confusion on the part of the public.

(4)

proprietor or a person using by way of permitted use, uses in the course of trade, a mark which(a) (b)

is identical with or similar to the registered trade mark; and is used in relation to goods or services which are not similar to those for which the registered trade mark has a reputation in India and the use of the mark without

trade mark is registered; and

(c)the

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 f which the trade mark is registered

Section 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 t e 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. (2) The exclusive right to the use of a trade mark given under sub- section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not conditions or limitations entered on the register be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as except so far as their respective rights are subject

to any gainst other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

Section 135 Relief in suits for infringement or for passing off

(1)The

relief which a court may grant in any suit for infringement or for passing off

referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and a the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery- up of the infringing labels and marks for destruction or erasure. (2)
(3)

Notwithstanding anything contained in sub- section (1), the court shall not grant

relief by way of damages (other than nominal damages) or on account of profits in any case(a)

where in a suit for infringement of a trade mark, the infringement complained of is where in a suit for infringement the defendant satisfies the courtthat when he became aware of the existence and nature of the plaintiff' s right in

in relation to a certification trade mark or collective mark; or

(b) (i)that (ii)

the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or
(c) where (i)that

in a suit for passing off, the defendant satisfies the court-

at the time he commenced to use the trade mark complained of in the suit he

was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and
(ii)that

when he became aware of the existence and nature of the plaintiff' s trade

mark he forthwith ceased to use the trade mark complained of.

Section 2 Definitions and Interpretation 2(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;

 The Companies Act, 1956

Section 20 Companies not to be registered with undesirable name;
(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 in existence has been previously registered; or (ii) (3) The Central Government may, before deeming a name as undesirable under clause (ii) of sub-section (2), consult the Registrar of Trade Marks.]

Section 22 Ratification of Name of Companies;

(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 firstmentioned 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. (2) If a company makes default in complying with any direction given under clause (b) of sub-section (1), the company, and every officer who is in default, shall be punishable with fine which may extend to 3[one thousand rupees] for every day during which the default continues.

3. ARGUMENTS
a.

From Plaintiff

The learned Counsel appearing for the Appellants submitted that in the present case the provisions of Section 29(5) 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. 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 Section 29(4) of Trade-mark Act. b. From Respondent 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 trademark is only a part of the trade-name or corporate name of the Defendants, provisions of Section 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 Section 29(4) of the Trade-mark Act, but by Section 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.

4.

JUDGMENT OF CASE

During the Judgment it was urged on behalf of the plaintiff that the use of the trade mark in section 2 (1) is symbolized it but court said that 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; 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-section (4) of Section 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-section (1) of Section 29 and may also be covered by Subsection (2) of Section 29. After analyses of the provisions of Trade-mark Act and the Companies Act together court of Double Bench, a new provision has been incorporated in Sub-section 5 of Section 29 for a definite purpose. It is clear that Section 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 trademark 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. Further, the Learned Bench Said 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. We, therefore, see no reason to interfere with the order impugned in the Appeal. Appeal, therefore, fails and is dismissed.

5. CONLUSION
In this case the matter is basically related to infringement of trademarks and whole case revolved on word Raymond. The judgment given by Bombay High Court is very unique because it is beyond a common approach. In this case if we see 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-section 5 of Section 29 and therefore, so far as subject of using of registered trade mark as a trade-name is concerned, provision is contained in Sub-section 5 of Section 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 Section 29(5) and therefore, that subject will be governed only by that provision and therefore reliance on any other provision including Section 29(4) is ruled out. Thus, we have no doubt in our mind that the Plaintiffs could not have relied on the provisions of Section 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-section 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, the decision of The Bombay High Court is perfectly correct.