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2010 Supreme(Bom) 960
High Court of Judicature at Bombay
D.K. DESHMUKH & THE HONOURABLE MRS. JUSTICE R.P. SONDURBALDOTA
Raymond Limited
Versus
Raymond Pharmaceuticals Pvt.Ltd.
APPEAL NO.438 OF 2007 IN NOTICE OF MOTION NO.661 OF 2006 IN SUIT NO.437 OF 2006
Decided on: 13-07-2010
For the Appellant:R.M. Kadam, Advocate General with Rahul Chitnis and Ms.Cynthia Pereira i/b M/s.Rajani Associates, Advocates. For the Respondent:Manish Saurastri with Utkarsh Tiwari i/b Shantilal & Co., Advocates.
Headnote:Trade Marks Act, 1999 - Sections 28 and 29(4)(5) - Code of Civil Procedure, 1908, Order XXXIX, Rules 1 and 2 - Action of passing off - Infringement of registered trade mark "Raymond" defendants alleging the name being used by them for long - It means mighty protection - Single Judge refused interim relief - Section 29 of Trade Marks Act lays down that use of identical mark by defendants in relation to goods where it is registered - Plaintiff has to show that defendant is using mark to market goods similar to goods which are likely to cause confusion in minds of public - Infringement of trade name even if goods are not similar is still an infringement - Sub-section of Section 29 deals with different infringements as goods are not similar section not applicable - Appeal fails. - The provisions of various sub-sections of Section 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 ease 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-section (5) of Section 29 will apply but if the goods of the defendant are dissimilar, sub-section (4) of Section 29 will apply, will be contrary to the legislative scheme of Section 29.
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.
The submission of the 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-section (4) of Section 29 cannot be accepted and therefore, it is not necessary to deal with the various judgments delivered under other trade-mark legislations which were cited before Court 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. It is also nor 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.
D.K. DESHMUKH, J.
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 27th 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 Section 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 Def
