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2017 Supreme(Ker) 1336
High Court of Kerala
Abhay S. Oka, A.A. Sayed, A.S. Gadkari, JJ.
Cipla Limited - Appellant
Versus
Cipla Industries Private Limited & Ors - Respondent
N.M. No. 2463 of 2012
Decided On : 01-03-2017
Sub-sections (4) and (5) of Section 29 of the Trade Marks Act, 1999 operate in separate and mutually exclusive spheres.
Headnote:
The Court held that Sub-sections (4) and (5) of Section 29 of the Trade Marks Act, 1999 operate in separate and mutually exclusive spheres. The Court held that the Defendant could legitimately use the Plaintiff's mark as the Defendant's trade mark without running the risk of infringement provided the Defendant dealt in dissimilar goods.
Fact of the Case:
The Plaintiff, a manufacturer of pharmaceutical products, brought a suit for infringement of trademark and passing off against the Defendants, who used the Plaintiff's mark as a part of their corporate or trade name in respect of household articles.
Finding of the Court:
The Court held that Sub-section (5) of Section 29 of the Trade Marks Act, 1999 is a special provision which is different from Sub-sections (1), (2) and (4). The Court held that Sub-section (5) applies to a "trade mark versus trade/corporate/business name" situation. The Court held that Sub-section (4) applies to a "trade mark versus mark" situation.
Issues: Whether the proprietor of a registered trade mark is entitled to an injunction on a cause of action in infringement under Section 29(5) of the Trade Marks Act, 1999, where a party is found to be using a registered trade mark as a 'name', viz., as a corporate or trading name or style, though in respect of goods dissimilar to the ones for which the trade mark is registered.
Ratio Decidendi: The Court held that the plain language used by Sub-sections (4) and (5) of Section 29 of the Trade Marks Act, 1999 makes it clear that Sub-section (4) applies in "trade mark versus mark" situation. It applies when the mark is used in the course of trade in relation to goods and services. Sub-section (5) applies to a "trade mark versus trade/corporate/business name" situation. It is a special provision which is different from Sub-sections (1), (2) and (4).
Final Decision: The Court answered the questions framed by the learned Single Judge as under: (1) In the negative. (2) In the affirmative. The sub-sections will apply in "trade mark versus mark" situations. (3) In the affirmative. (4) Need not be answered separately"
Abhay Shreeniwas Oka, J.
OVERVIEW AND THE QUESTIONS TO BE DECIDED
1. The learned Single Judge by his order dated 26th April, 2016 expressed a view that a decision of the Division Bench of this Court in the case of Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd. 2010 (44) PTC 25 (Bom.) needs reconsideration. Paragraph 21 of this order reads thus :-
"21. I am, of course, bound by the decision in the Raymond. However, in my respectful submissions, and for the reasons I have outlined above, that decision in Raymond requires reconsideration; specifically on the following questions:
(1) Where a party is found to be using a registered trade mark as a 'name', viz., as a corporate or trading name or style, though in respect of goods dissimilar to the ones for which the trade mark is registered, is the proprietor of the registered trade mark entitled to an injunction on a cause of action in infringement under Section 29(5) of the Trade Marks Act, 1999?
(2) Whether the use of a registered trade mark as corporate name or trading name or style is excluded from the purview of Sections 29(1), 29(2) and 29(4) of the Trade Marks Act, 1999, and whether those Sections are restricted to the use of a trade mark 'as a trade mark', i.e., in the 'trade marky' sense?
(3) Whether Sections 29(4) and 29(5) operate in separate and mutually exclusive spheres, i.e., whether, if the defendant uses the registered trade mark only as a corporate name or trading name or style in respect of dissimilar goods, a Plaintiff can have no remedy and is not entitled to an injunction?
(4) Whether the view taken by the Division Bench in Raymond Ltd. V Raymond Pharmaceuticals Pvt.Ltd.: (2010(44) PTC 25 (Bom) (DB)) is a correct view?"
2. On the basis of this order, the Hon'ble the Chief Justice directed that the matter be placed before a Full Bench. The issue involved in this Reference is of interpretation of the various sub-sections of Section 29 of the Trade Marks Act, 1999 (for short "The Trade Marks Act") and in particular Sub-sections (1), (2), (4) and (5).
3. Suit No. 1906 of 2012 was filed by way of an action in trade mark infringement combined with cause of action in passing off. The dispute is about the mark "CIPLA" registered to the Plaintiff in Class 05 of the Fourth Schedule to the Trade Mark Rules, 2002. The Plaintiff is a manufacturer of pharmaceutical products. It is claimed that the Plaintiff has been using the mark CIPLA for a long time. It is contended that it is also a part of its corporate name and in fact it is an abbreviation of its earlier corporate name. The mark has been used by the Plaintiff only for pharmaceutical and medicinal preparations. The Defendants have not used the said mark for such preparations. It is alleged that the Defendants have used the mark as a part of their corporate or trade name. They are using it in a slightly different form in respect of household articles, such as soap dishes, photo frames, ladders and so on. The Defendants claim to possess a registration of a very similar mark CIPLA PLAST in their favour in Class 21 of the Fourth Schedule to the Trade Mark Rules, 2002.
4. For the sake of completion, we must reproduce Class 05 and Class 21 which read thus :-
"5. Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies; plasters, materials for dressings, materials and stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides."
"21. Household and kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paints brushes); brush making materials; articles for cleaning purposes; steelwool, unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes."
5. The learned Single Judge referred to the decision of the Division Bench in the case of Raymond Limited and quoted paragraphs 12, 13 and 14 thereof which read
