Bench: A. K. Menon
1. By this Notice of Motion, the Plaintiffs seek injunctions restraining the
Defendants, their Directors, proprietors, servants, subordinates, representatives,
stockists, dealers and agents and other persons under them, from infringing the
Plaintiffs' registered mark 'Raymond' ("the Mark") in any manner including by
using the Mark or any similar mark in the domain name
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or any other similar mark as a part of the Defendants' website, E-mail address
or otherwise. The Plaintiffs also seek to restrain the Defendants from passing off
the Defendants' goods or website as that of the Plaintiffs. The plaint similar
accounts in respect of the profits earned by the Defendants by using the Mark
2. The Plaintiffs were incorporated in 1913 as Raymond Woolen Mills
leadership as manufacturers of textiles and ready-made garments. The
Plaintiffs and its subsidiaries are also engaged in the business of personal care
production, advertisement and education services. The Plaintiffs claim
proprietary interest in the Mark created by an employee of the Plaintiffs. The
constitutes an essential feature of the corporate name of the Plaintiffs. The
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Plaintiffs claim 'Raymond' is a famous household mark with tremendous
reputation and goodwill. Raymond is written in a broad lettering and style and
registration is still valid. The Plaintiffs have registered the Mark in numerous
classes under the Trade Marks Act. Copies of the certificates of the registration
are relied upon and annexed to the plaint. The Plaintiffs have contended that
Their products are of superior quality and have earned excellent reputation and
goodwill. The Plaintiffs sales are reported to be in excess of Rs.218 Crores. The
Plaintiffs claim to have spent approximately Rs. 68.58 Lakhs in 2014 alone for
companies. They claim to have a large following on social media.
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3. The Defendants, on the other hand, are in the pharmaceutical business
and it is the Plaintiffs' case that the Defendants have unauthorisedly used the
[email protected] for its business purposes. Apart from committing
the tort by passing off the defendants are allegedly riding on the goodwill and
reputation of the Mark and such misrepresentation is likely to cause confusion
and deception amongst the public. The Plaintiffs impugn such unauthorised
4. On or about 26.12.2005 the Plaintiffs filed Suit No.437 of 2006 in this
Court ("2006 Suit") seeking to prevent Defendants from using the name
'Raymond' as a part of their corporate name. The Plaintiffs also filed a
complaint under Section 20/22 of the Indian Companies Act, 1956. The
to change their name and exclude the name 'Raymond'. The Defendants
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Order of the Registrar of Companies came to be stayed. It is submitted that the
infringement and monetary compensation would not be sufficient to redress the
cause of action that is continuing from day-to-day and hence unaffected by the
5. The Plaintiffs had sought and have obtained leave under Clause 12 of the
Letters Patent on 17.9.2014. In support of Notice of Motion, an affidavit of
Thomas Fernandes, Company Secretary of the Plaintiff has been filed and which
relies upon the contents of the plaint. An affidavit-in-reply dated 23.9.2014
has been filed on behalf of the Defendants contending that the plaint contains
false misleading statements and that the Plaintiffs have abused of the process of
exclusivity over the name 'Raymond'. Reference is also made to the name of the
popular novelist/writer Raymond T. Chandler, apart from contending that it is
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'Raymond'. All averments in the plaint have been dealt with ad-seriatim.
laches are attributed to the Plaintiffs, dis entitling them to any reliefs. The
dismissal of the present suit for the reason that on 26 th June, 2006, the Plaintiffs
passing off. According to the Defendants, the plaint in this suit does not disclose
any cause of action and the use by the Defendants of the name 'Raymond' in its
6. The Defendants were incorporated on 31.3.1983 under the name
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trade-marks and brand names used by the plaintiffs for their products.
have been using it since 2009 after they ascertained availability of the name.
name is honest and bonafide. The domain name sought to be impugned in the
suit is www.raymondpharma.com. The word 'pharma' is the short form of
'Pharmaceuticals'. According to the Defendants, the mark 'Raymond' is quite
watch brand "Raymond Weil". It is contended that apart from prior use of the
India since 1980. The Defendants have contended that they have commenced
their own for health-care products. The Defendants contend that the word
pharmaceutical and health-care products company. According to the
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Defendants, Plaintiffs' domain name is www.raymondindia.com or
www.raymond.in whereas the Defendants' website is
different and dissimilar. The word 'pharma' differentiates the two domain
names and the customers, goods and business of the Defendants are distinct and
7. The Defendants have denied the Plaintiffs' claim to originality of the
any goods included in Class 5. The Plaintiffs are not manufacturing medicines
confusion as alleged. It is denied that the Defendants have unauthorisedly
used the Mark in their domain name and email address leading to
infringement of the Mark under the provisions of Section 29(1) or 29(2) of the
Trade Marks Act. The Defendants have denied all the allegations of
*9* Raymond NMS -230.15.odt
diluting distinctiveness of the Mark. The class of consumers of the Defendants'
products and the Plaintiffs' products are completely different and, therefore,
there is no risk of traffic from the Plaintiffs' website being diverted to the
8.
In an affidavit-in-rejoinder the Plaintiffs have denied that the defendants
website is used for commercial purposes and not merely for information. The
Plaintiffs have further contended that merely because the name 'Raymond' is a
marks are pending, the Plaintiffs cannot be denied protection. The Plaintiffs
support of their case of common use of the Mark are not of entities in India but
outside the country. It is reiterated that the Plaintiffs' mark is a well known
mark and allegations of acquiescence, delay and latches have been denied. The
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Plaintiffs have already filed suits against some parties in India and obtained
decrees against them. It is in this background that the present Motion has been
9. Mr. Tulzapurkar, the learned Senior Counsel appearing on behalf of the
domain name is to be treated as a trade-mark. He submitted that the
in domain name of the Defendants. He submitted that the Order of the learned
Single Judge dated 15.2.2007 had only considered Plaintiffs' action so far as it
relates to Section 29 Sub-section 5 of the Act. Mr.Tulzapurkar submitted that
no member of the public who associates the word 'Raymond' with the Plaintiffs'
trade-mark and in relation to wearing apparel is likely to know that the name
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10. Mr. Tulzapurkar submitted that the action in the 2006 Suit was filed
and not under Section 29(4). That action had failed and the order dismissing
the Motion has since attained finality. However, merely because the said Motion
was dismissed, it is not as if the Plaintiffs cannot pursue this action under
Section 29(4) against the Defendants. The present suit is filed essentially to
protect Plaintiffs' registered trade-mark in relation to goods and services which
reputation in India. That the use of the Mark was without due cause, takes
unfair advantage of and is detrimental to the distinctive character or reputation
of the registered trade-mark. In other words, in respect of dis-similar goods, the
Plaintiffs continue to have a cause of action against the Defendants and could
seek reliefs in the present suit under Section 29(4), which is a separate class by
itself. Making reference to paragraphs 2,4,5,6 and 13 of the order dated
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appellate Court dated 13.7.2010, Mr. Tulzapurkar submitted that the Court had
held that in order to attract the provisions of Sub-section (4) of Section 29, the
Plaintiffs must show that the Defendants' mark is identical to or similar to that
of the Plaintiffs' registered trade-mark and the Defendants are using the mark
in relation to goods and services which are dissimilar to the goods in relation to
which mark of the Plaintiffs' is registered. Mr. Tulzapurkar referred to the
analysis by the Division Bench of Section 29 and referred to paragraph 9 of the
judgment. He submitted that the Division Bench had proceeded on the basis
that the Plaintiffs could not have relied upon the provisions of Section 29(4)
since there is no dispute that the Defendants are not dealing in goods in respect
of which the Plaintiffs' mark is registered. The Division Bench did not interfere
sub-section (4) of Section 29 and did not consider it necessary to refer to the
material relied upon by the Plaintiffs to contend that the Plaintiffs' mark has
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11. The present cause of action is a fresh cause. The impugned domain
interim order therein attained finality. The domain name and the website are
entitled to prosecute the present suit. Mr. Tulzapurkar submitted that use of the
impermissible. He submitted that the Plaintiffs have also registered the Mark in
2011. Mr. Tulzapurkar further submitted that under Section 34 of the Trade-
marks Act, even if there was prior use, nothing in the Act entitles the
proprietor or registered user of the trade-mark to interfere with or restrict
relation to goods or services to which that person or predecessor was entitled
*14* Raymond NMS -230.15.odt
has continuously used from a prior date. The continuance of the word
the mark as a part of domain name. In fact, the Defendants are now passing off
and since the act of passing off has a wider connotation, it is impermissible to
do so. Mr. Tulzapurkar then submitted that the Defendants' only defence is
proceeded to consider the Plaintiffs' case on the basis of its cause of action
under Section 29(4). Mr. Tulzapurkar relied upon the definition of 'Well known
"2(zg) "well-known trade mark", in relation to any goods or
services, means a mark which has become so to the substantial
segment of the public which uses such goods or receives such
services that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in
the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first-
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mentioned goods or services."
12. Mr.Tulzapurkar submitted that the Plaintiffs' mark qualifies as a well-
known mark and a well known trade-mark is protected in law. In support of
his contentions, he relied upon the numerous judgments listed below:-
Raymond Ltd. Vs. M/s. Ashirbad Electricals & Ors. Notice of
Motion No.(l) 1421 of 2013 dt. 22nd July, 2013 (S.J. Kathawalla,
J.)
Raymond Ltd. V. Sai Balaji Suitings & Anr. Notice of Motion (L)
No.2781 of 2015 dt. 13th October, 2015 (G.S. Patel, J.)
Rediff Communications Ltd. V. Cyberbooth and Anr. 2000 PTC
M/s.Info Edge (India) Pvt. Ltd. & Anr. Vs. Shailesh Gupta & Anr.
ILR (2002) 1 Delhi 220
Satyam Infoway Pvt. Ltd. V. Sifynet Solutions Pvt. Ltd. 2004 (28)
PTC 566 (SC)
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Raymond Ltd. Vs. Raymond Financial Inc. & Anr. 2012 (51) PTC
217 (IPAB)
The Indian Express Ltd. & Ors. Vs. Chandra Prakash Shivhare Suit
No.2854 of 2010 dt. 23rd October, 2015 (G.S. Patel, J.)
Rolex SA Vs. Alex Jewellery Pvt. Ltd. 2014 (60) PTC 131 (Del.)
Tata Sons Ltd. V. A.K. Chaudhary & Anr. 2009 (40) PTC 54 (Del.)
Brahmos Aerospace Pvt. Ltd. V. FIIT JEE Ltd. & Anr. MIPR 2014 (1)
Gorbatschow Wodka KG Vs. John Distilleries Ltd. 2011(4) Mh.L.J.
KSB Aktiengesellschaft & Anr. v. KSB Real Estate and Finance
Private Ltd. in Notice of Motion No.4019 of 2007
Ford Motor Company & Anr. v. C.R.Borman & Anr. 2008 SCC
Online Del 1211
Industria De Diseno Textile SA v. Oriental Cuisines Pvt. Ltd. and
Ors. MIPR 2015(2) 0125
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Royal Bank of Scotland Group PLC v. Sharekhan Ltd
216(2015)DLT197
Motorola Inc. and Ors. v. Motorola Auto India Pvt. Ltd. and Ors.
MANU/DE/3650/2015
Kalpataru Properties Private Limited & Anr. v. Kalpataru
Hospitality & Facility Management in a Notice of Motion
No.3320 of 2010,
KSB Properties Private Limited v. KSB Aktiengesellschaft & Anr.
(2013)1 CALLT 203(HC)
Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat
(India) in Appeal No.570 of 1995 dt.16th October, 1997
Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra
Ltd. (2002) 2 SCC 147
Honda Motors Co. Ltd. v. Charanjit Singh & Ors. 2002 SCC Online
Del 1332
Sony Kabushiki Kaisha v. Mahalaxmi Textile Mills MIPR 2009(2)
*18* Raymond NMS -230.15.odt
Daimler Benz Aktiengesellschaft and Anr. v. Hybo Hindustan
1994-PTC-287
Kamat Hotels (India) Limited v. Royal Orchid Hotels Limited and
Anr. in Notice of Motion No.2552 of 2008
Kunhayammed and Others V. State of Kerala and Anr. (2001) 2
BLJR 853
Gangadhara Palo v. The Revenue Divisional Officer and Anr.
[2011]3 SCR 746
Barclays Bank PLC v. RBS Advanta [1996] R.P.C. 307
Ashwani Kumar Singh v. U.P.Public Service Commission and
others AIR 2003 Supreme Court 2661
Brown Shoe Company Inc. [1959] Reports of Patent, Design and
Trade Mark Cases No.1
Ultra Tech Cement Limited & Anr. v. Dinesh Kothari and Anr.
2013 (53) PTC 415(Bom.)
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Corn Products Refining Co. v. Shangrila Food Products Ltd. PTC
(Suppl)(1) 13 (SC)
Pidilite Industries Ltd. v. S.M.Associates and Ors. 2003(5) Bom CR
Jagdish Gopal Kamath and Ors. v. Lime & Chilli Hospitality
Services MIPR 2015 (1) 0351
Indian Shaving Products Ltd. & Anr. v. Gift Pack & Anr. 1998(18)
PTC 698 (Del)
Medley Pharmaceuticals Ltd. V. Winsome Laboratories Ltd. & Anr.
in Notice of Motion No.931 of 2006 dt. 22nd September, 2008.
National Bell Co. v. Metal Goods Mfg. Co. and another AIR 1971
Supreme Court 898
Laxmikant V. Patel v. Chetanbhai Shah and Another (2002) 3
Supreme Court Cases 65
Cadila Pharmaceuticals Ltd. V. Sami Khatib of Mumbai and Medley
Pharmaceuticals Ltd. MIPR 2011 (2) 0224
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With the aid of the aforesaid decisions Mr. Tulzapurkar submitted that the
Defendants are liable to be restrained as prayed.
13. It will be appropriate to deal with some of the relevant judgments. In the
case of KSB Aktiengesellschaft (supra), the letters 'KSB' formed an essential
part of the corporate name of the first Plaintiff, having been adopted with
reference to the surnames of the founders of the first Plaintiff. The Defendants
adopted the name of 'KSB' Real Estate and Finance Private Limited as part of its
trading name and corporate style. The defence set up was that the areas of the
activity of the Defendant are restricted to real estate and finance within the
geographical limits of the Greater Bombay. Hence, there is no possibility of
deception. This was followed up by the second defence that there are other
companies which use the mark 'KSB' as a part of their trading style and
therefore, the Plaintiffs could not object especially since the name was not
distinctive as sought to be contended by the Plaintiff. This Court observed that
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the first defence overlooked the provisions of Section 29(4) which entails that
their registered mark may be infringed by using the mark in relation to goods
or services which are not similar to those in relation to which mark is
registered. As long as registered trade-mark and its reputation in India, use of
the mark without due cause would take unfair advantage of or would be
detrimental to the distinctive character or reputation of their registered mark.
The observations in the said judgment are to the effect that the provisions of
Section 29(4) came to be introduced in the Trade Marks Act, 1999 in order to
extend the protection available in an action for infringement and it would not
be a valid defence that the Defendant had used the mark in relation to goods
which are not similar to those in respect of which the Plaintiffs had registered
mark since such use would be detrimental to the distinctive character and
repute of the mark of the Plaintiff. Even proceeding on the basis of passing off,
it was held that it is not necessary for an action in passing off that a common
field of activity is required to be established.
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14. Ford Motor Company (supra) held that the provisions of Section
29(4) applies only to those trade-marks which have reputation in India and
that once this was established, injunction must follow. The Division Bench held
that Parliament intended Section 29(4) as a pandect or fasciculus operating on
its own and is an important exception to other provisions of the Act.
15.
In Industria De Diseno Textile SA (supra) the court rejected a
contention on behalf of the Defendant that ZARA is a dictionary word and was
adopted from the name of ZARAGOZA. The word 'ZARA' a well known Spanish
brand was neither generic nor descriptive even in the Spanish language and
the Defendants had not given any plausible explanation for the adoption of the
mark 'ZARA' and it was found that the name "ZARA TAPAS BAR" was adopted
by the Defendants from the mark 'ZARA' of the Plaintiffs who had already
opened stores in 44 countries and therefore adoption of the word 'ZARA' by the
Defendants was not honest.
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16. In Royal Bank of Scotland (supra) in paragraph 54 the Delhi High
Court observed that a well known trade-mark can be protected even in relation
to dis-similar goods used by the Defendants and to prove a case of infringement
of trade-mark, the Plaintiff has to show that essential features of registered
trade-mark which has been adopted by the Defendants has been taken from the
Plaintiff's registered trade-mark. In order to establish infringement, the
Plaintiff's mark must be registered under the Act and the Defendant's mark
must be deceptively similar to the registered trade-mark and its use was likely
to deceive and cause confusion. Once, it is indicated and the Court finds that
the Defendant's mark is closely, visually and phonetically similar then no
further proof is necessary. A reference was also made to the observations of
Chagla C.J. and Bhagwati J in James Chadwick & Bros. Ltd. v/s. The
National Sewing Thread Co. Ltd. i n which the Court held that if it is
found that the trade-mark of which registration is sought contains the same
distinguishing or essential feature or conveys the same idea (as the prior mark),
then ordinarily the Registrar would be right in refusing registration. The real
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question is as to how a purchaser viz. a man of ordinary intelligence would
react to a particular trade-mark and what association he would form by
looking at the trade-mark and how he would connect a trade-mark with the
goods that he would be purchasing.
17. In Motorola Inc. (supra) the Plaintiffs were registered proprietors of
the trade-mark Motorola and the Defendants had used the mark Motorola for
automobile spare parts in their domain name. The Plaintiff's trade-mark
Motorola possessed global reputation and is perceived as a household name
even in India. The Defendants by using the name Motorola Auto India Private
Limited led customers to believe that their business activities would be
endorsed by the Plaintiffs and would be of the same level of quality and
reliability as that of the Plaintiff. This adoption of the impugned mark by the
Defendant was without due cause and in order to take unfair advantage and
that the use of the identical trade-mark by the Defendants in relation to its
goods would "inevitably lead to dilution and erosion of the uniqueness and
*25* Raymond NMS -230.15.odt
exclusivity associated with the Plaintiffs' trade-mark/name" by reducing their
capacity to identify and distinguish the goods and services of the Plaintiffs as
originating from a particular source. The Division Bench found that such use
was unauthorised and indiscriminate and apart from causing confusion,
mistake and deception, it was bound to result in the whittling away of the
distinctive quality and value of the Plaintiffs' mark.
18. In Kalpataru Properties Private Limited (supra) a Single Judge of
this Court found that the judgment in Raymond Limited v. Raymond
Pharmaceuticals 2010 (5) BCR 568 (Order in the 2006 suit) did not
apply to an action in passing off and that the proprietor of a well-known trade-
mark is entitled to an injunction restraining a party from passing off his goods
and services as those of the proprietor by using the registered trade-mark of the
Plaintiff. The learned Single Judge made reference to the judgment of
Mahendra & Mahendra Paper Mills Ltd. (supra) and held that action in
passing off is maintainable in the case of well-known trade-mark even if the
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goods and services being dealt in by the parties are not similar and that the
Plaintiffs were entitled to an injunction restraining the Defendants from
passing off its services as those of the Plaintiffs by using the mark Kalpataru or
any deceptively similar mark in their corporate name. However, they were not
entitled to an injunction under Section 29(5). In view of the judgment in
Raymond Limited (Supra), it was held that the Defendant cannot avail
benefit of Section 34, since it had been unable to establish that the Defendants
or its predecessor in title had continuously used that mark from a date prior to
the date of registration of the Plaintiff's mark because Section 34 requires
continuous user of the trade-mark from a date prior to date of registration of
the mark said to be infringed.
19. In KSB Properties Private Limited (Supra) the Defendants had
contested the application for injunction contending that 'KSB' stood for initials
of Kabir Shankar Bose, the only child of the promoter director and was coined
and adopted with reference to the initials of the child. In that case the main
*27* Raymond NMS -230.15.odt
object of the company was to purchase and sell real estate and although it is
the contention of the Defendants that adoption of the mark 'KSB' was honest
and bonafide, in appeal before the Calcutta High Court it was held that the
Plaintiffs had established all ingredients of the mark infringement and granted
an injunction. In Aktiebolaget Volvo of Sweden (supra) held that the
Defendants had used the Plaintiff's trade-mark "Volvo" in their corporate name
and the Defendants were restrained from using the word 'Volvo'. Mahendra &
Mahendra Paper Mills Ltd. (supra) also considered an earlier judgment
of this Court in Sunder Parmanand Lalwani v. Caltex (India) Ltd. AIR
1969 Bom 24 and held that if a large number of persons saw or heard of the
name Caltex in relation to the applicant's watches, they would be led to believe
that the watches were in some way related to the Caltex mark known for petrol
and oil products. Similarly in the case of Bata India Limited v. Pyare Lal &
Co. AIR 1985 All 242 and Kirloskar Diesel Recon Pvt. Ltd. and
Anr. v. Kirloskar Proprietary Ltd. and Ors. AIR 1996 Bom 149, this
Court held that a well-known mark could be protected when the question was
*28* Raymond NMS -230.15.odt
whether misrepresentation could result in likelihood of confusion and
deception of public and consequent damage to the Plaintiff with the passage of
time.
20. In Honda Motors Co. Ltd. (supra) through global goodwill and
reputation, the mark had become distinctive and the use of the mark Honda for
the Defendant's pressure cooker tends to mislead the public to believe that the
Defendant's business and goods are that of the Plaintiff. Such user by the
Defendants also diluted and debased the goodwill and reputation of the
Plaintiff. The Court observed that the concept of passing off had undergone a
change and two traders need not necessarily operate in the same field so as to
suffer injury on account of one proprietor's business being passed off as others
and that with the changed concept of passing off it is not now material for a
passing off action that the Defendant should trade in the same field as that of
the Plaintiff. Although it was contended that the Defendants had a uncle
namely Honda Singh they did not establish that Honda had become common
*29* Raymond NMS -230.15.odt
name. In that case, it is further held that the Plaintiff had placed sufficient
material on record to show that it had acquired distinctiveness and goodwill
over the years and user of the name Honda by the Defendants cannot be said to
be honest and concurrent use and that was sufficient for the purpose of
granting an injunction. In the case of Sony Kabushiki Kaisha (supra) it was
held that the key function of a trade-mark is to indicate the source or origin of
goods and services and the tort of passing off is committed if the offending
trader applies an established trade-mark in such manner so as to cause
confusion or deception in the mind of the consumer as regards the source or
origin of the goods and the mind of the purchasers are directed to the firm
whose identity is already linked with the trade-mark in the market place. In
Daimler Benz Aktiengesellschaft and Anr. (supra) the Defendants
contended that 'Mercedes' is a city in South America and that there was nothing
unique about the name Mercedes Benz. The Delhi High Court held that the
Plaintiff's product was a very high priced and extremely well engineered
product and the Defendants cannot dilute the name by using the trade-mark
*30* Raymond NMS -230.15.odt
for its products especially since the Defendant was using "Three Pointed
Human-Being within a Ring" and was carrying on business of
undergarments. The Defendant was, therefore, restrained from doing so.
21. In Kamat Hotels (India) Limited (supra) in which a learned
Single Judge of this Court Justice Dr. D.Y.Chandrachud as he then was,
observed that Section 34 carves out an exception and creates an overriding
provision which within the sphere of its operation and prevents a proprietor or
registered user of a registered trade-mark from interfering with the use of an
identical trade-mark or a mark which nearly resembles the registered mark. It
was held that the fundamental requirements are four fold. Firstly, the use by a
person of a mark which is identical to or nearly resembles a registered trade-
mark must be in relation to those goods and services for which the first
mentioned mark has been registered. Secondly, Section 34 contemplates
continuous use of the trade-mark. Thirdly, the trade-mark must be used by the
proprietor or his predecessor-in-interest. Fourthly, the mark in respect of
*31* Raymond NMS -230.15.odt
which protection is sought must have been used from a date prior to the use of
the registered trade-mark or the date of registration of the registered trade-
mark. The Court further observed that the use must be continuous and mere
adoption of the mark is insufficient and the test of Section 34 is of a high order
which requires commercially continuous use of the mark in relation to the
goods and services.
22. Mr. Tulzapurkar had laid emphasis on paragraphs 17 and 19 of
Kamat Hotels (Supra) and submitted that the first Defendant in that case
had applied for registration of mark on 22.6.2004 and while applying for
registration of the marks Royal Orchid and Royal Orchid hotels, the first
Defendant claimed earliest use since 3.11.1999. It is submitted that the
original name of the first Defendant was Universal Resorts Limited which was
incorporated only in 3.1.1986 and therefore, they claim prior use. Further our
Court held that mere change of name of the first Defendant with effect from
April, 1997 will not suffice and that the Defendant must demonstrate that the
*32* Raymond NMS -230.15.odt
mark was utilised in relation to the goods and services for which the mark was
registered and that the first use of the mark was before the use of the mark by
the Plaintiffs. For these reasons, Defendant had to suffer an injunction and they
were restrained from making use of the mark in respect of any hotel or new
line of business to be set up.
23.
In Barclays Bank (Supra) the observations of Justice Laddie,
Chancery Division were adverted to by Mr. Tulzapurkar whereby Justice
Laddie, while declining to restrain the Royal Bank of Scotland from using the
name RBS Advanta Visa Card, observed that the name itself was not infringing
the plaintiff's trade-mark, which was known as BARCLAYCARD but certain
references were made to the Plaintiff's card in comparative advertising
literature. The High Court held that any such use otherwise than in accordance
with honest practices in industrial or commercial matters shall be treated as
infringing a registered trade-mark if the use of the mark is without due cause
takes unfair advantage or is detrimental to distinctive character or repute of
*33* Raymond NMS -230.15.odt
the mark. Justice Laddie has observed apropos construction of Section 10(6)
that even if one was to allow comparative advertisement, as long as the use of
the competitor's mark is honest, there is nothing wrong with telling the public
of the relative merits of the competing goods and services and using the
registered trade-mark to identify such goods and services and Section 10(6)
should not be construed in the manner which prohibits all comparative
advertising. Secondly, no infringement will result unless use of the registered
trade-mark is not in accordance with the honest practices. In that case, both the
parties agreed that the test is objective and that if use is considered honest by
members of a reasonable audience, it will not infringe. Thus, it was found that
trade puffery even if uncomfortable to the registered proprietor, will not result
in infringement. No specific evidence is required to come to the finding that
there has been infringement since it is a mere objective test. The act does not
oblige the Courts to enforce trade mark legislation through the back door.
Relying upon the aforesaid decision, it was further submitted that to come
within the ambit of Section, the use must be otherwise than in accordance with
*34* Raymond NMS -230.15.odt
honest practices in industrial and commercial matters. Lastly, it was pointed
out that the use should have been without due cause, taking unfair advantage
of being detrimental to distinctive character or repute of the trade-mark. Thus,
the use of the mark should be such as to permit the Defendant to take
advantage of it causing detriment to the mark and inflict harm on the character
or repute of the registered mark which is above the level of de minimis. In
the instant case, Mr. Tulzapurkar submitted there is no doubt that the
Plaintiff's mark is a well known mark and by virtue of Section 29(4)( c ),
Plaintiff's mark have tremendous reputation in India and the use of the mark is
without due cause takes unfair advantage and is detrimental to distinctive
character or repute of the trade-mark. The words of Section 29(4)( c) are in
pari materia with Section 10(6) of the English Trade Marks Act, 1994 and
therefore actionable.
24. Mr. Tulzapurkar relied upon the judgment of the case of Brown Shoe
Company Inc. (supra) and submitted that the two words involved were
*35* Raymond NMS -230.15.odt
'Naturlizet' and 'Naturalizer'. In that case, no evidence was found to establish
that the respondents had copied the Appellant's marks. It was found to be a case
of res ipsa loquitur viz. "the thing speaks for itself" and it is impossible to treat
the case as one with coincidence and the Defendant had used the word
'Naturlizet' as a trade-mark in relation to ladies' shoes and these Respondents
had no connection to the Appellant's mark 'Naturalizer'. It was submitted that
the use of the mark 'Raymond' in the domain name of the Defendant was
clearly an infringement. Mr. Tulzapurkar then referred to the decision of the
Single Judge of this Court in Ultra Tech Cement Limited & Anr. (supra)
relied upon the reference in the said judgment to the decision in Sunder
Parmanand Lalwani & Ors. (supra) and pointed out that in the case at
hand most of the applications relied upon by the Defendants and listed in
annexure "E" to the Applicant in reply to the Notice of Motion were either
opposed or objected to and none of them had been registered. In other cases, in
an application by one Sushil Kumar Jain only an examination report had been
issued and in the case of 'Raymond James" only an advertisement has been
*36* Raymond NMS -230.15.odt
issued. Most other proposed/actual use were objected or opposed. There is
nothing, therefore, to show that all these names were in use.
25. Kamdhenu Ispat Limited v. Kamdhenu Pickles & Spices Ind.
Pvt. Ltd. & Anr. held that dishonesty of adoption is a relevant factor and if it
was found that adoption was dishonest, the Court would be justified in drawing
an adverse inference at-least as far as the defendant was concerned. In Corn
Products Refining Co. (supra) it was observed when there are a series of
marks containing a common element or elements, the onus of proving such
user is on the applicant who wants to rely on those marks. Accordingly, it was
submitted that the burden is upon the defendant herein to establish that its use
of the mark 'Raymond' fell within the parameters defined by Section 29 of the
Act. In Pidilite Industries Ltd. (supra) which concerns the Plaintiff's mark
'MSEAL' and 'EPOXY RESIN' compositions used for cementing cracks, holes,
leaks, the Defendants were manufacturers of 'Klip-Seal' which was reportedly
inferior in quality and the Plaintiff sued for injunction on the ground of passing
*37* Raymond NMS -230.15.odt
off. The learned Single Judge observed that as held in Corn Products (supra),
before an Applicant can derive assistance, for the success of his application,
from the presence of a number of marks having one or more common features,
he has to prove that these marks had acquired a reputation and user in the
market. This was based on the principle that traders and the public would be
aware of common elements and characteristics and when they see another
mark having the same characteristics, they would immediately associate the
same with the series of the marks with which they are already familiar. The
judgment in Corn Products (supra) required the Defendants to prove that a
mark must not be merely in use but extensively so. Thus, it is not sufficient for
the Defendant to show some user of the mark but he must establish extensive
use at-least prima-facie.
26. On behalf of the Defendants, Mr. Khandekar the learned counsel
submitted that the use of the mark by the Defendant is bonafide and perfectly
justified. Firstly, the Plaintiff has no cause of action against the Defendant and
*38* Raymond NMS -230.15.odt
having filed the 2006 Suit there is no question of the Plaintiff now pursuing
the present suit. Mr. Khandekar alluded to the fact that the interim Order in the
2006 suit is now final since the Special Leave Petition filed against the order of
the Division Bench has been dismissed. The Plaintiffs are only attempting a
second innings by filing the present suit. Secondly, the Defendants had adopted
the domain name in the year 2009 yet the present suit has been filed only in the
year 2014. Acquiescence by the Plaintiffs is thus a defence set up against the
Plaintiffs and even assuming the Mark is well known mark, injunction need not
follow since the criteria contemplated by Section 29(4) of the Act had not been
met. The criteria were cumulative and not disjunctive and even assuming the
mark to be a well-known mark, the Defendants do not fall foul of the
provisions of Section 29(4). Thirdly, Mr. Khandekar submitted that as far as
passing off is concerned, the Plaintiffs had failed to establish that there was any
misrepresentation or likelihood of damage. In view of the material before the
Court particularly findings of the Single Judge in the 2006 suit, merely because
Plaintiffs are registered proprietors of the Mark, the Defendants cannot be
*39* Raymond NMS -230.15.odt
prevented from using the domain name because Section 34 vests in the
Defendants' a right to use the domain name by virtue of continuous use of the
Mark from a prior date as a part of its corporate name. Subsequently, the
Defendants had also registered their domain name. Mr. Khandekar referred
paragraphs 13 and 14 of the plaint in support of his contention that the prayers
in the present suit are wide enough to cover the use of the corporate name
despite the fact that the Plaintiffs have failed to obtain injunction in the first suit
and thus it is not open for the Plaintiffs to seek further restraint as aforesaid.
27. The Defendants have been in business since 1983 and are now using a
shorter version of their corporate name as a domain name. According to Mr.
Khandekar, use of the domain name is tantamount to use of its corporate name
which has not been prevented. A domain name is a specie of the corporate
name. He submitted that unlike in entities such as shaadi.com where the entity
itself is known as Shaadi.com Private Limited, the Defendant's domain name
uses a part of its corporate name. The registration and use of the domain name
*40* Raymond NMS -230.15.odt
does not give rise to a fresh cause of action to the Plaintiff. Mr. Khandekar then
made reference to paragraphs 2, 13, 14 and 15 of the judgment of the learned
Single Judge in the Notice of Motion in the 2006 suit dated 15.2.2007 and
submitted that the learned Single Judge has very clearly upheld the Defendant's
contention that the Defendant's use of the Mark is not in relation to the goods
or services in respect of which goods or services in respect of plaintiff's trade-
mark is registered since the Defendants do not use the Mark on any of its
products and no member of the public who associates the word 'Raymond' with
the Plaintiff's trade-mark is likely to think that the word 'Raymond' appearing
in the Defendant's name would refer to the Plaintiff's mark. Mr. Khandekar
then relied upon the observations of the Division Bench upholding the
Defendant's contentions that legislation supports the Defendant's contention
and the use of the Mark in relation to goods of the Defendant would infringe
the rights of registered owners only if the goods in respect of which the
Defendant was using the Mark was similar to that of the Plaintiff.
*41* Raymond NMS -230.15.odt
28. Mr. Khandekar then submitted that Defendants' domain is not
interactive and the website is only informative, no business is carried on site
and, therefore no cause of action would accrue. Mr. Khandekar then submitted
that 'Raymond' is a common name and available without reference to the
Plaintiff. In other words, the name 'Raymond' was independently available and
that there are about 84 other domain names which use the word 'Raymond'. He
referred to Annexure 'B' which reproduces the Wikipedia entry on Mr.
Raymond Chandler and in an attempt to demonstrate popularity of the name,
he relied upon Annexure 'E' which contains copies of various trade-marks,
applications made by various parties to register the name 'Raymond' in classes
6,7,11,12,14, 21 and 33, etc. and submitted that all these documents clearly
establish the fact that the name 'Raymond' is not unique. He referred to
Annexure 'G' to the affidavit in reply to the Notice of Motion to demonstrate
that Raymond is a common name as can be seen from various domain names
listed in the said annexure. Furthermore, Mr. Khandekar submitted that even
assuming the name to be a well-known mark, it lacks inherent quality of the
*42* Raymond NMS -230.15.odt
distinctiveness. Mr. Khandekar disputed submissions made on behalf of the
Plaintiffs to the effect that a well known mark gets recognition across classes.
Mr. Khandekar then submitted that there was no likelihood of Defendants
getting an unfair advantage of the Plaintiff's mark nor does the Defendants
domain cause any detriment to the Plaintiff's Mark or repute so as to fall within
the ambit of Section 29(4) and once the Defendants have not been prevented
from using its corporate name despite the 2006 suit, the Defendant cannot be
prevented from using the domain name without just cause. Mr. Khandekar
submitted that although in paragraphs 10 and 12 of the plaint, a bare
statement was made to the effect that the Defendants' use of the impugned
domain name amounts to infringement of the plaintiff's registered trade-mark.
No reasons are given as to why such use is detrimental to the Plaintiffs. In the
absence of such reasons, it was submitted that no case was made out for the
grant of any reliefs. Mr. Khandekar then relied upon the following judgments :
Star India Private Limited v. Leo Burnett (India) Private Limited &
Anr. 2003 Vol.105(2) Bom.L.R.28
*43* Raymond NMS -230.15.odt
Pidilite Industries Limited and Ors. v. Vilas Nemichand Jain and
Ors. MIPR 2015 (3)0129
Kamdhenu Ispat Limited v. Kamdhenu Pickles & Spices Ind. Pvt.
Ltd. & Anr. 2011 (46) PTC 152 (Del.)
Indchemie Health Specialties Pvt. Ltd. v. Intas Pharmaceutical Ltd.
and Ors. MIPR 2015(2)0284
J.C.Penney Company Inc. v. Penneys Ltd. and Others Fleet Street
Patent Law Reports [1975]
Cadbury Schweppes Pty. Limited and Others v. the Pub Squash Co.
Pty. Limited Privy Council Appeal No.5 of 1980
Wyeth Holdings Corporation and Anr. Vs. Burnett
Pharmaceuticals (Pvt.) Ltd. MIPR 2008(1) 0275
Honda Motor Company Limited v. Kewal Brothers and Anr.
2002(25)PTC763(Cal)
Shri Prithvi Cotton Mills Ltd. v/s. Broach Borough Municipality &
Ors. AIR 1968 Gujarat 124
*44* Raymond NMS -230.15.odt
M. Sreenivasulu Reddy and Others V. Kishore R. Chhabria and
Others (2002) Company Cases Vol.109 Page 18
Prime Spirits V. Master Blender Pvt. Ltd. unreported in Notice of
Motion No.678 of 2013 dated 29th March, 2016 (G.S. Patel, J.)
S. Shanmugavel Nadar V. State of Tamil Nadu and Anr. (2002) 8
SCC 361
Pizza Hut International LLC & Others v. Pizza Hut India Pvt. Ltd.
2003 Vol.105(1) Bom. L.R.298
Nestle India Limited v. Mood Hospitality Private Limited MIPR
2010 (2) 0081
In the Trade Mark Registry in Audi-Med Trade Mark (1998) R.P.C.
Pebble Beach Company V. Lombard Brands Ltd. dt. 6.9.2002
Mastercard International Incorporated and Hitachi Credit (UK)
Plc. (2004) EWHC 1623 (Ch) (8th July 2004)
Approximation of Laws, Industrial and Commercial Property 1998
*45* Raymond NMS -230.15.odt
ECJ CELEX LEXIS 585
Daimler Chrysler AG V. Javid Alavi (2001) R.P.C. Chancery
Division 813
ITC Limited v. Philip Morris Products Sa and Ors. 2010 (42) PTC
572 (Del.)
Sahu Jain Ltd. v. Deputy Secretary, Ministry of Finance and Ors.
reported in
[1966] 36 CompCas543(Cal),
Syed Mustajab Husain Vs. Additional District Judge, Agra & Ors.
2012 (8) ADJ 726
B.Narayana Murthy and Ors. v. B.Venkateshalu and Ors.
1995(4)Kar.L.J.553
Oasis Stores Ltd. [1998] R.P.C. 631
Erven Warnink B.V. And Another v. J.Townend & Sons (Hull) Ltd.
and Anr. reported in [1980] R.P.C. 31
Wander Ltd. and Anr. v. Antox India P. Ltd. 1990(2)ARBLR399(SC)
*46* Raymond NMS -230.15.odt
29. Relying on the Order of the English Trade-Mark Registry in the case of
Audi-Med, Mr. Khandekar submitted that use of an impugned Mark by itself is
not sufficient but such use should be viewed with regard to the inherent
distinctiveness of the earlier trade mark. There should be similarity in respect
of the marks, range of the goods or services for which the earlier mark enjoys a
reputation and the uniqueness or otherwise of the mark in the market place
must be considered. In the case of Audi-Med, the Registry declined to accept
the opponent's case that the Applicants Audio Medical Devices Limited were
attempting to take unfair advantage of the reputation of Audi Motor Cars. It
must also be seen whether the respective goods/services although dis-similar,
are in some way related or likely to be sold through the same outlet and on this
basis, it would have to be established that the defendant's domain name had
more than a de minimis effect on the distinctive character of the earlier mark if
at all. He submitted that if the Defendants had been permitted to use a
corporate name, there is no reason as to why he could not use the domain
name. Ipso facto the use of the corporate name is such as to permit the
*47* Raymond NMS -230.15.odt
Defendants to use the domain name. As far as provisions of Section 29(4)(c) are
concerned, Mr. Khandekar submitted that there are no pleadings and evidence
of any nature to support the Plaintiff's contention. He submitted that ingredients
of Section 29(4) have not been met and there is no cause of action against the
Defendants. He further submitted that although the Defendants had relied upon
Annexure 'G' containing a large number of domain names using the word
'Raymond', there was no denial of this fact and not having denied extensive and
common use of the word 'Raymond' there is no justification whatsoever in the
Plaintiff's now contending that the Defendants could not use the word
'raymond' in its domain name.
30. Adverting to the issue of passing off Mr. Khandekar submitted that after
adoption of the name, 2006 Suit was filed but Plaintiffs withdrew the petition
filed under Clause XIV of the Letters Patent. This is a clear indication of the fact
that the cause of action for passing off has been abandoned by the Plaintiffs and
in this respect, the Plaintiffs cannot now be heard to say that the Defendants are
*48* Raymond NMS -230.15.odt
attempting to pass off their domain as that of the Plaintiffs. Mr. Khandekar
submitted that the cause of action for passing off would entail three ingredients
viz. (a) passing off would result from misrepresentation, it would have to be
made by the trader in the course of trade to a customer. (b) It must be
calculated to injure and (c) must cause actual damage to the trader. In the
present case, there was no misrepresentation, nothing was calculated to injure
and the plaint was silent on any actual damage or even the probability of such
damage. The Plaintiffs had failed to make out any case, there is no material
whatsoever to establish an action in passing off. According to Mr. Khandekar,
the Defendants' use of the domain name is at best a use in respect of the Class
44 and, therefore, not actionable. Moreover, Defendants are using name
'Raymond' in relation to their business since 1983. The domain name is stated
to be in use since 31.8.2009 whereas the Plaintiffs have registered their Mark
in class 5 only as of 23.6.2011 (see Exhibit B-16). He submitted that the web-
site has been operational prior to the Plaintiff's application for registration
under Class 5. In the circumstances, according to Mr. Khandekar, no case
*49* Raymond NMS -230.15.odt
whatsoever is made out by the Plaintiffs. Mr. Khandekar then proceeded to
deal with the judgments cited by Mr. Tulzapurkar. With specific reference to
the decision in the case of Kamat Hotels (Supra) Mr. Khandekar submitted that
the Plaintiffs had not shown any sales as in the case of Kamat Hotels (Supra).
Moreover, in the Defendants' case, there is continuous user and sales. Without
prejudice to the aforesaid contentions the Defendants have shown sales and
the use of www.raymondpharma.com. However, as far as the Plaintiffs are
concerned, there is no evidence of any use in Class 5. Making reference to the
case of Raymond v. Ashirbad Electricals (supra) Mr. Khandekar
submitted that the scheme of the mark used by Ashirwad Electricals was almost
identical and dishonesty was apparent. In Raymond v. Sai Balaji (supra) the
Defendant had blatantly copied the Mark in respect of the very same goods and
services. In the case of Rediff Communications Ltd. (supra) there was no
distinction as to use of the trade-mark versus corporate name and the judgment
did not in any manner hold that use of the domain name does not amount to
use of a corporate name. Furthermore, the services in the case of Rediff (supra)
*50* Raymond NMS -230.15.odt
were rendered under that an almost identical mark viz www.radiff.com. On
this basis, it was also submitted that in the case of M/s. Info Edge (supra) the
same goods and services were subject matter of use and infringement as in the
case of Satyam Infoway (supra) where the defendant offered a rival service.
31. In Pizza Hut International LLC (supra) the learned counsel relied
upon the observations that Pizza Hut enjoyed an international reputation
whereas the Defendant has no goodwill in India since it had not commenced
any business in India and that if the Plaintiff's trade-mark enjoy a trans-border
reputation, they are entitled to be protected against infringement. If the
Defendants were to commence business in the same field of activity, there is
likelihood that members of the public may be deceived and the balance of
convenience would be in favour of the Plaintiffs. Mr. Khandekar submitted that
in the instant case, the Defendants had been in the pharmaceuticals business
since 1983 and there was no occasion for the Plaintiffs to contend that the
Defendants are engaged the same or similar business and therefore there was
*51* Raymond NMS -230.15.odt
no likelihood of any confusion or deception if the Defendants continue to use
the domain name www.raymondpharma.com. Mr. Khandekar then relied upon
Kerly's law of Trade Marks and Trade Names, (15th edition) in order to explain
the mechanics of the internet. He relied upon provisions relating to the link
between the trade-marks and domain name and submitted that a domain name
registration as such is not an intellectual property right but it is a contract with
the registration authority controlling the Top Level Domain concerned,
allowing communications to reach the domain name owner's computer via
internet links channeled through the registration authority's server. It does not
create a monopoly or exclusive right and in many ways akin to a company
name registration which is a unique identifier of a certain company but by
itself does not confer any intellectual property rights. Relying upon the said
commentary on the Modern Law of Trade Marks (3rd edition) by Christopher
Morcom, Mr.Khandekar submitted that a domain name is an identifier and
nothing more. It is akin to a 'shop front' and the domain name acts as shop sign.
According to Mr. Khandekar it is not possible to make an assumption that a
*52* Raymond NMS -230.15.odt
domain name equates to a trade mark and it depends on the facts of each case.
Mr. Khandekar then relied upon the observations of the Delhi High Court in
Nestle India Limited (supra) and submitted that a trade mark acquires
distinctiveness when, in the eyes of the public, it distinguishes the goods or
services connected with the proprietor of the mark from those connected with
others. He made specific reference to the observations of the Division Bench to
the effect that all conditions set out in Section 29(4) must be met. In other
words, all the criteria in sub-clauses of Sub-section(4) of Section 29 must be
met otherwise it will not be a case of infringement. These conditions must be
met cumulatively and not disjunctively. To make out a case of infringement
under Section 29(4) it is not sufficient to say that the case falls within one or
other clauses of Sub-section (4) but the ingredients of all clauses must be
satisfied. Therefore, to be actionable a registered trade mark must have
reputation in India, the Defendant must use the mark without due cause and
such use must take unfair advantage or detrimental to the distinctive character
or repute of the mark. Referring to a decision of the Outer House, Court of
*53* Raymond NMS -230.15.odt
Session in the case of Pebble Beach Company (supra) it was contended
that it is necessary that there must be prima-facie risk of some association in
the public mind between the users of a trade mark and the plaintiff's trade
mark and the defendant's products and there must be prima-facie evidence that
the Defendant's use of the Mark was to take unfair advantage of the distinctive
character or repute of the plaintiff's mark. Not only must this advantage be
unfair, but it must be of a sufficiently significant degree so as to warrant an
injunction. Pebble Beach Company also quotes Neuberger J in Premier
Brands UK Limited v. Typhoon Europe Limited. [2000] FJR 767
reiterating that Section 10(3) of the English Act was not intended to have a
sweeping effect of preventing the use of any sign which is the same or similar
to registered trade mark with reputation. Section 10(3) did not enable a
proprietor of well-known registered trade mark to be able to object as a matter
of course to the use of a sign which may remind people of his mark. The
advantage must not only be unfair but also more than de minimis. The Court
also considered the mode of assessing whether the test of detrimental use to the
*54* Raymond NMS -230.15.odt
distinctive character and found that detriment must be ascertained looking to
the effect of the defendant's use on the distinctive character or repute of the
plaintiff's mark. Mr.Khandekar relied upon the test of detriment examined by
the English Trade Mark Registry in the case of Oasis Stores Ltd. [1998] R.P.C.
631 wherein the following criteria were specified while considering detriment
if any, to a plaintiff;
(a) the inherent distinctiveness of the earlier trade mark;
(b) the extent of the reputation that the earlier mark enjoys;
(c) the range of goods or services for which the earlier mark enjoys a
reputation;
(d) the uniqueness or otherwise of the mark in the market place;
(e) whether the respective goods/services, although dissimilar, are in some way
related or likely to be sold through the same outlets;
(f) whether the earlier trade mark will be any less distinctive for the
goods/services for which it has a reputation than it was before.
*55* Raymond NMS -230.15.odt
32. These very criteria were also applied in the Audi-Med case by the
Registry. This list is not exhaustive but identified relevant considerations to be
borne in mind while considering the detriment to the distinctive character and
repute of the mark. Applying the aforesaid principles in the instant case, Mr.
Khandekar submitted that aforesaid criteria was not fulfilled in the present
case. Referring to the decision of the Chancery Division of the High Court of
England & Wales in the case of Mastercard International Incorporated
he relied upon the paragraphs 49, 50, 54 and 55 in support of his contention.
He also referred to the decision of the High Court of Justice-Chancery Division
in Daimler Chrysler AG v. Javid Alavi (supra) in which similarity of
goods and the likelihood of confusion were considered and it was found that
the Plaintiff was the manufacturers of Mercedes Benz vehicles and the
proprietor of many trademarks including those for vehicles and clothing. The
Defendant was a trader in clothes and shoes, some of which bore the mark
MERC. Mercedes Benz sued for injunction but the action was dismissed since it
was not a quia timet action but a conventional passing off action in which the
*56* Raymond NMS -230.15.odt
issues of reputation and goodwill, confusion and actual damage were
involved. It was held that although Mercedes Benz used its name on T-shirts,
the evidence showed that the mark was frequently used on the internal labels of
clothing sold in the Mercedes car show-rooms. The Defendant had entered the
market and used the word 'Merc' around 1978. The Defendant had not made
any misrepresentation in 1978 and ultimately, it was found that there was no
convincing evidence of confusion. Although the word ' Merc' had for long been
used to refer to the Plaintiff's cars, the claimant's trading goodwill did not
extend to the use of the Merc as a mark for clothing.
33. Mr. Khandekar referred to the decision of the Delhi High Court in ITC
Limited (supra) and submitted that the Indian law had mirrored English law
on the subject and the relevant provisions of Section 10(3) of the United
Kingdom Trade Mark, Act 1994. Referring to the decision of the High Court of
Calcutta in Sahu Jain Ltd. (supra), Mr. Khandekar submitted that the
plaintiffs had not denied the defendants specific contentions in the affidavit in
*57* Raymond NMS -230.15.odt
reply/written statement but had resorted to vague responses using expressions
such as "do not admit", "no knowledge of" etc. He submitted that use of the
words 'not admitted' does not amount to denial. Further use of the words 'no
knowledge' is worse than the words 'not admitted'. A bare denial does not serve
any purpose when an allegation of the fact is required to be denied. Mr.
Khandekar submitted that in Jahuri Sah and Ors. v. Dwarka Prasad
Jhunjhunwala and Ors. reported in A.I.R.1967 S.C.109, the Supreme
Court while dealing with the provisions of Order VIII Rule 5 observed that a
statement to the effect that the defendant has 'no knowledge' of the fact pleaded
by the plaintiff does not amount to a denial of the existence of that fact and the
Court cannot construe it as being a denial and a mere statement that the party
has no knowledge or that it has "not admitted" a fact is insufficient. He then
referred to the judgment of the Supreme Court in the case of Wander Ltd.
(supra) and relied upon the fact that the Supreme Court had held that an
infringement action is available where there is violation of specific property
right acquired under and recognised by the statute and an action of passing off
*58* Raymond NMS -230.15.odt
the plaintiff's right is independent of a statutory right to a trade mark and it is
the conduct of the Defendant which lends to or is intended or calculated to
lead to deception. That passing off is said to be a species of unfair trade
competition or of actionable unfair trading by which one person, through
deception, attempts to obtain an economic benefit of the reputation of another
in a particular trade or business involves a misrepresentation calculated to
injure, as a reasonably foreseeable consequence. Reliance was then placed on
the decision of Star India Private Limited (supra) and the observations of
the learned Single Judge of this Court on the issue of passing off. The Court
observed that three predicates have to be established in order to comply with
the basic ingredients which give rise to a cause of action in the case of passing
off which are as follows:
(1)The Plaintiff's goodwill and reputation in the mark amongst
the public;
(2)The defendants misrepresentation that the article is that of
the plaintiffs; and
*59* Raymond NMS -230.15.odt
(3)Actual damages or real likelihood of damage to the plaintiffs
by the defendants' act.
34. The Court after considering various decisions observed that it must not
apply and consider hypothetical or fanciful possibilities but the real
practicalities and probabilities of the situation in the facts of that case. While
the field of activity being common is not an essential element of passing off, it is
a relevant consideration. As observed by Kerly's on trade marks, if there is a
common field of activity, possibility of deception is very high and if there is no
common field of activity, the possibility is lower but it cannot be laid down that
there is no possibility at all. In Pidilite Industries Limited and Ors.
(supra) the Court had found that it must be shown that the Defendant's goods
have been mistaken for those of the Plaintiffs and that an actual devious or
malafide malicious intent is unnecessary and there must be evidence of the
deception of an unwary customer. The Court observed that there must be some
evidence of confusion in the absence of which it will not be possible to hold
that the Defendants were guilty of passing off. Mr. Khandekar then submitted
*60* Raymond NMS -230.15.odt
that in the case of Kamdhenu Ispat Limited (supra), the Delhi High Court
held that the Defendant's use of Kamdhenu in respect of its corporate name and
use of the name for their brand of pickles and they do not participate or
engage in the manufacture of steel or steel products and hence, the use of
'Kamdhenu' as the corporate name of the Defendant, notwithstanding the
plaintiff's registration of the word cannot ipso facto confer exclusivity. It is only
if the Plaintiff use the mark in relation to goods such as pickles and condiments,
etc. the Plaintiff would be entitled to injunction. Mr. Khandekar then relied
upon the decision of the learned Single Judge of this Court in Indchemie
Health Specialties Pvt. Ltd. (supra) and submitted that in that particular
case, Plaintiff's goods were 'drugs' within the meaning of Drugs & Cosmetics
Act, 1940. They were meant to be therapeutic in nature and were basically
pharmaceutical preparations. They were not to be consumed except as directed
by the physician whereas defendant's products were 'proprietary foods' under
the Food Safety and Standards Act and not meant for medicinal use. Defendant
No.1 had been openly, honestly, continuously and extensively marketing its
*61* Raymond NMS -230.15.odt
products and the Defendants were found to be having sizeable reputation and
goodwill in its products and that if the Plaintiffs succeed at the trial, they were
entitled to an order of damages. Considering these factors, the Court held that
there was no concrete likelihood of deception or confusion in the minds of the
user. The Court also on the balance of convenience held that it is clearly in
favour of the Defendants.
35. Mr. Khandekar then referred to the decision of Chancery Division in
J.C.Penney Company Inc. (supra) and relied upon the observations in the
judgment to the effect that in order to succeed in a passing off action, the
Plaintiff must always establish as sine qua non, that he has reputation whether
exclusive or joint and he is entitled to sue and protect such reputation. Further
Mr. Khandekar relied upon the tests laid down in that case as to the extent of
reputation required to be established in order to decide whether the Plaintiff is
entitled to stop the defendant or whether he must be allowed to continue.
There were number of possibilities that were set out such as (1) the date when
*62* Raymond NMS -230.15.odt
the plaintiff first learnt of the defendants' activities in the country; or (2) the
date on which the plaintiff, if he did so, made it clear to the defendant that he
would be liable to have action taken against him if he started operations ; or (3)
the date on which the defendant actually started operations; and that the
Plaintiff should have acted with reasonable promptitude as soon as he had
learnt of the commencement of the defendant's activities. The plaintiff must be
able to contend successfully that his reputation should be judged as early as the
time when the defendant, being aware of the consequences started operations
in the plaintiff's area. Mr. Khandekar then relied upon the decision of the
Supreme Court of New South Wales Equity Division in Cadbury Schweppes
Pty. Limited and Others (supra) passed in Privy Council Appeal No.5 of
1980 and submitted that the relevant date for determining reputation is the
date of commencement of the conduct complained of and that in the present
case although domain name has been registered in 2009, the Plaintiff filed suit
only in 2014 and, therefore, no relief should be granted. Lastly, Mr. Khandekar
relied upon the decision of the Calcutta High Court in Honda Motor
*63* Raymond NMS -230.15.odt
Company Limited (supra) and relied upon the observations in paragraph 37
that relevant date for determining the question of passing off is the date of
commencement of adoption of the offending mark as settled in the decision of
Cadbury Schweppes Pty. Ltd. (supra).
36. In response to Mr.Khandekar's submission Mr. Tulzapurkar relied upon
the decision in the case of Jagdish Gopal Kamath and Ors. (supra) and
referred to paragraph 34 and 36 contending that extensive use must be
established as settled in Corn Products and submitted that the Defendant had
resorted to a casual saunter through the internet to come up with the names
using the mark 'Raymond' which constitutes poor evidence. It is in fact
trawling for data without assessment as to accuracy or validity and such
evidence is of no avail. Mr. Tulzapurkar relied upon paragraph 52 of the case
of Indian Shaving Products Ltd. & Anr. (supra). In that case the
dispute related to the word 'Ultra' being used by the first Plaintiff and
Defendant No.2 introduced batteries and pencil cells under the trade-mark
*64* Raymond NMS -230.15.odt
'Ultra' which were inferior to the batteries sold by the Plaintiff No.2. In that
context, the defendant argued that the trade-mark 'Ultra' has been used by
several persons and companies such as Toshiba, National and Sony and
accordingly, the same has become public and the Plaintiffs could not claim any
exclusive right therein. The Court was called upon to decide dispute in the
absence of these parties and none of those parties were claiming relief against
the Plaintiffs. The Court was required to see whether the Plaintiff has acquired
goodwill and reputation for its products. Moreover, the contention that the
Plaintiff has himself usurped or infringed the trade-mark of a third party was
not to be gone into by the Court while deciding the issue between the parties
before it. Accordingly, Mr. Tulzapurkar had submitted that it is of no avail for
the Defendants to contend that the Plaintiffs are copying the name 'Raymond'
from the other parties such as Raymond Weil, etc. Mr. Tulzapurkar then relied
upon the decision in the case of Medley Pharmaceuticals (supra) and the
observations of the learned Single Judge of this Court that it is for the Plaintiffs
to decide on and amongst probable Defendants and to bring an action against
*65* Raymond NMS -230.15.odt
such and not for the Defendants to point to other infringers and take shelter
under a belief that the Plaintiffs had unjustly targeted the defendants. He,
therefore, submitted that it is open for the Plaintiffs to pursue the suit against
any infringer and the alleged infringer who is a Defendant in the suit cannot
seek to escape by adopting this rationale. Mr. Tulzapurkar then relied upon the
decision in National Bell Co. (supra). In that case, the Defendants had
alleged that there were repeated breaches which went unchallenged. However,
the Court held that the evidence did not show that there were repeated
breaches which went unchallenged though known to the proprietor. Mere
neglect to proceed does not necessarily constitute abandonment if it is in
respect of infringement which are not sufficient to affect the distinctiveness of
the mark even if the proprietor is aware of the same. Where neglect to
challenge infringement is alleged, the character and extent of the trade of the
infringers and their position have to be reckoned while considering whether
the registered proprietor is barred by such neglect and, therefore, the plea of
common use must fail since the evidence must establish that use by other
*66* Raymond NMS -230.15.odt
person should be substantial.
37. Mr. Tulzapurkar relied upon the decision in Laxmikant V. Patel
(supra) in which the Hon'ble Supreme Court while dealing with a trade-mark
action observed that a person may sell his goods or deliver his services under a
trading name or style. With the lapse of time such business or services
associated with a person acquire a reputation or goodwill which becomes a
property which is protected by the Courts. The law does not permit any one to
carry on his business in such a way as would persuade the customers or clients
in believing that the goods or services belonging to someone else are his or are
associated therewith and it does not matter whether the latter person does so
fraudulently or otherwise. The Supreme Court further observed that in the
world of business, basic policies of honesty and fair play ought to be followed
and if any person adopts or intends to adopt a name in connection with his
business or services which already belongs to someone else, it results in
confusion and has propensity of diverting the customers and clients to
*67* Raymond NMS -230.15.odt
someone else to himself and thereby resulting in injury. It was further observed
that in an action for passing of, it is essential to seek an injunction and the
Plaintiff must prima-facie establish balance of convenience in his favour and
his suffering an irreparable injury in the absence of grant of injunction and
although fraud is not a necessary element to initiate an action, absence of an
intention to deceive is not a defence, though proof of fraudulent intention may
materially assist a Plaintiff in establishing probability of deception.
38. Mr. Tulzapurkar referred to the judgment of Cadilla
Pharmaceuticals (supra) in support of his contention that the domain of
defendant was deceptively similar. He submitted that the plaintiffs have
established their goodwill and reputation in the market and that is sufficient to
maintain an action in passing off. Furthermore, while determining similarity
one must establish possibility and not probability of confusion resulting from
the use of impugned domain. In the present case, Mr.Tulzapurkar submitted
that the defendant has adopted a domain name with the word "Raymond" the
*68* Raymond NMS -230.15.odt
plaintiffs' mark and it is bound to cause confusion. The plaintiff has opposed
the use of mark and they had also taken action forthwith in the trademark
registry and by filing present suit in this Court. He submitted that it is
therefore possible for the defendants' user to mislead the customers into
believing that the domain of the defendants is that of the plaintiff.
39.
Mr. Tulzapurkar submitted that reliance placed by the Defendants on the
observations of the order of the learned Single Judge while disposing of Notice
of Motion in Suit No.437 of 2006 in the earlier suit is misplaced since that
Order of the learned Single Judge has now merged into the order of the
Division Bench. Accordingly, by virtue of the doctrine of merger there was no
basis for relying upon the observations of the learned Single Judge. What is left
is to be considered, therefore, is only the order of the Division Bench, which
was the subject matter of the appeal before the Supreme Court in the Special
Leave Petition filed by the Plaintiff and it cannot be contended by the
Defendants that the order of the learned Single Judge still survives and the
*69* Raymond NMS -230.15.odt
Defendant cannot take any support from the said order and Plaintiffs are
entitled to urge their case for injunction under Section 29(4) of the Trade
Marks Act, 1999.
40. On the aspect of the merger in Kunhayammed and Others (supra), it
was held that to merge means to sink or disappear into something else; to
become absorbed or extinguished; to be combined or be swallowed up. Merger
in law is defined as the absorption of a thing of lesser importance by a greater
whereby the lesser ceases to exist but the greater is not increased any
absorption or swallowing up so as to involve a loss of identity and individuality.
In Gangadhara Palo (supra) the Hon'ble Supreme Court observed that when
the Court dismisses a special leave petition by giving some reasons, however
meagre they may be , there will be a merger of the judgment of the High Court
into the order of the Supreme Court dismissing the special leave petition.
Accordingly, the doctrine of merger results in the judgment of the lower Court
merging in the judgment of the higher Court. No judgment of the higher Court
*70* Raymond NMS -230.15.odt
exists. Even in that given case, the Petitioner has sought a review of the
judgment of the Supreme Court dismissing the Special Leave Petition and it was
held that judgment of which review was sought was not capable of review by
reason of the doctrine of merger and the order of the High Court merged in the
judgment of the Supreme Court.
41.
In Ashwani Kumar Singh (supra) the Supreme Court dealt with the
value of precedents and reliance to be placed on precedents. Mr. Tulzapurkar
submitted that the Court should not place reliance on the decisions without
discussing as to how the factual situation fits in with the fact situation of the
decision on which reliance is sought to be placed as cleverly to be. The Supreme
Court has stated that observations of the Courts are not to be read as Euclid's
theorems nor as provisions of the statute. The observations are to be read in
context in which they appear. The Supreme Court quoted the following words
of Lord Denning :
"Precedent would be followed only so far as it
*71* Raymond NMS -230.15.odt
marks the path of justice but you must cut the
dead wood and trim off the side branches, else you
will find yourself lost in thickets and branches. My
plea is to keep the path to justice clear of
obstructions which could impede it."
42. Since Mr. Tulzapurkar had referred to several additional judgments, in
rejoinder Mr. Khandekar submitted that on the aspect of merger Mr.
Tulzapurkar's submission that the defendant could not place reliance on the
order passed by the learned Single Judge in the first suit has no merit since
according to him the findings of fact recorded by the learned Single Judge will
hold good despite the order of the Division Bench which did not consider the
aspects pertaining to Section 29(4) of the Act. Mr. Khandekar submitted that
the Gujarat High Court had in the case of Shri Prithvi Cotton Mills
observed that it is difficult to uphold the contention that when a decision of a
Court is reversed in Appeal by another then decision of the Appellate Court gets
substituted and the decision so reversed has no legal existence. The Gujarat
*72* Raymond NMS -230.15.odt
High Court declined to accept this principle as applicable to determine the
binding nature of a decision of a Court. The Court held that the principle
undoubtedly applies vis-a-vis degrees of higher and lower Courts. It may apply
to the decision of the same two Courts on identical questions but it is difficult to
hold the contention that any such principle is applicable in regard to part of a
judgment solemnly pronounced a Court which has not been overruled and kept
expressly open by the appellate Court. Mr. Khandekar relied upon this
observation to deny the Plaintiffs' contention that all aspects of the Plaintiffs
case under Section 29(4) of the Act were expressly kept open by the Division
Bench when the Division Bench observed that it was "not necessary" to
entertain submissions on that aspect. Mr.Khandekar further submitted that in
M. Sreenivasulu Reddy which quoted the observation of the Supreme
Court in case of Gojer Brothers (P) Ltd. V. Shri Ratanlal Singh AIR
1974 SC 1380 wherein the juristic justification of the doctrine of merger
has been dealt with.
*73* Raymond NMS -230.15.odt
43. Mr. Khandekar submitted that there is no merit in the contention of Mr.
Tulzapurkar that by virtue of the Division Bench the observations of the Single
Judge in the 2006 Suit are of no avail. He submitted that in the decision of S.
Shanmugavel Nadar V. State of Tamil Nadu and Anr. (2002) 8 SCC 361 it is
held inspite of the appeal in that matter being dismissed on the ground of non
joinder of the necessary party and the operative part of the order of the
Division Bench stood merged in the decision of a Supreme Court, the
remaining part of the order of the Division Bench of the High Court cannot be
said to have merged and that the order of the Supreme Court in that case had
not made any declaration of law within the meaning of Article 141 of the
Constitution. It was further held in that case the decision of the Division
Bench of the High Court would continue to remain decision of the High Court
binding as a precedent on subsequent benches of co-ordinate order lesser
strength but open to reconsideration by any bench of the same High Court
with the coram of Judges more than two. Mr. Khandekar therefore submitted
*74* Raymond NMS -230.15.odt
that applying the said ratio to the facts of the present case it cannot be said that
the decision of a Single Judge in the 2006 suit could not be relied upon by the
defendants. Mr. Khandekar then submitted that the findings recorded by the
Single Judge in the first suit have the value precedent since the Division Bench
had left open those aspects. He submitted that the findings of the Single Judge
could be classified into four compartments; Firstly the word 'Raymond' was a
subject of honest adoption by the defendant, Secondly, the use of the word
'Raymond' was not without due cause. Thirdly, on the aspect of applicability of
Section 29(4) of the present case and Fourthly as to the application of Section
29 (5) to the present case. According to Mr. Khandekar the first two aspects on
the word Raymond being subject matter of honest adoption by the defendant's
and that the word Raymond was used not without due cause. These aspects had
not merged however the other two aspects as to the applicability of section
29(4) and 29(5) stood merged. He submitted that if adoption of the mark
raymond could be honest for the purpose of use by the defendant in its
corporate name it could never be construed as dishonest adoption for the
*75* Raymond NMS -230.15.odt
purposes of domain name. The findings of fact on honest adoption have not
been disturbed by the Division Bench. In support of the submissions he relied
upon provisions of Section 29(8) of the Act which is similar to Section 29(4).
He disputed Mr. Tulzapurkar's submission that the decision in the case of
Audi-Med Trade Mark(supra) was in case of comparative advertising and
therefore inapplicable to the facts of the present case. Mr. Khandekar
supported the view adopted by Justice Laddie and the English Trade Mark
Registry in the case of Audi-Med and reiterated that the principle that use of a
mark should have more than a de minimis effect on of an earlier trade mark in
the market place cannot be differentiated in the manner sought to be done. He
submitted that section 29(8) of the Act specifically dealt with comparative
advertisements and the elements of section 29(8) included the aspects of unfair
advantage contrary to honest practices as well as detriment to the distinctive
character and reputation of a trade mark. It would be appropriate to reproduce
provisions of section 29(4) and 29(8) to enable us to make a quick comparison.
Accordingly, the Section is reproduced below:-
*76* Raymond NMS -230.15.odt
29(1).....
(2)....
(3)......
(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)......
(6) ....
(7) ....
(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
*77* Raymond NMS -230.15.odt
(c) is against the reputation of the trade mark."
44. Mr. Khandekar made reference to the fact that although Mr.
Tulzapurkar had relied upon several judgments on the aspect of a mark being
common to the trade. The fact that about 84 of the domain names
incorporating the word "Raymond" are domains outside India and therefore
ought not to be considered for the purposes of evaluating whether the Mark
was common to the trade. According to Mr.Khandekar the balance of
convenience favours the defendant and if the injunction sought is granted the
defendants cannot use the corporate name to make its presence on the internet.
The defendants cannot be expected to use the domain name without reference
to its corporate name.
45. This Motion remained part heard on account of change of assignment.
Mr.Kamod resumed arguments on behalf of the Plaintiffs on 2.4.2016 and
submitted that the admission of Mr. Khandekar that the observations of the
Court apropos Section 29(4) had merged with those under Section 29(5) and as
*78* Raymond NMS -230.15.odt
seen from the order of the Division Bench is an important concession in favour
of the plaintiff. According to Mr. Kamod the Division Bench has left open the
aspect of Section 29(4). Furthermore he submitted that the plaintiffs had
referred to the judgments on the "common to the trade aspect" in order to
support its submission that the highest level of evidence is required in order to
justify the defendant's adoption of the mark and it is not enough simply to point
out the fact that several others were using the mark in some manner or the
other.
46. Having heard the rival submissions of counsel extensively and since the
cause of action arises out of use of a domain name, I feel it will be appropriate
to consider the nature of the domain name system before proceeding to decide
the Motion. Since inception of the domain name system, a domain name has
been the identifier of an individual or entity operating within the world wide
web comprising cyberspace. There have been various examples in which
several parties with legitimate trade mark rights make claims to the same or
*79* Raymond NMS -230.15.odt
similar domain names. In the American experience delta.com is one name in
which many trade-mark holders claimed interest including the well known
airlines and some manufacturers of other products. Multiple trade-mark
holders across geographical regions claimed use of the name. The registration
of the corresponding domain name by one of these players was found unlikely
of trigger bad faith requirements. Domain name registration has always been
subjected to the first come first serve test and hence a registrant will obtain
registration on application and subsequent applicants for the same name may
find themselves in a complex situation where each of them have an interest
corresponding with the domain name in question. The first applicant's
registration will generally prevail unless there is an agreement inter se these
parties claiming the same name. It is always open to all persons to appropriate
specific domain names in agreement with another. Multiple applicants for the
same domain name alludes to prospective rivalry. The trade mark system
allows multiple parties to hold the same mark provided they operate in
different product categories or geographical areas whereas the domain name
*80* Raymond NMS -230.15.odt
system by its very nature permits only one applicant to register a particular
domain. Once registered such registration inures for the benefit of the
registrant for the contracted period of time after which such registration is
required to be renewed failing which it may lapse.
47. Individuals and other entities often utilise the website to advertise their
products and services in an effort to make their presence known across
cyberspace. The most critical aspect of access to a particular website is the
domain name. The domain name has a unique method of identifying the name
of the individual, firms and corporates and other entities. Domain names are
registered at first come first serve basis. Domain names once registered allow
the owners of the domain names to mark their location in cyberspace by
providing an identity and an exclusive mode of marketing products and
services and providing information. Some of these are commerce capable. In
the United States of America disputes relating to domain name registrations
come to be adjudicated by the Trade-mark Trial and Appeal Board (TTAP).
*81* Raymond NMS -230.15.odt
Unfortunately the law has not kept abreast with these technological
developments and the use of domain names has often seen required Courts to
deal with traditional contractual law, trade-mark law etc. in an attempt to
consider whether domain names constituted property.
48. A domain name may also constitute a trade-mark if used for the
purposes of identifying the source of goods or services. In the United States,
domain names which also serve as trade-marks may be registered with the US
Patent and Trade-mark office(USPTO). The USPTO registers marks in two
different registers i.e. principal register and the supplemental register. The
domain names that are generic may not obtain registration on either of these
registers and this will be decided after a test as to whether the mark is
distinctive of a applicants goods or services and is capable of being recognised
by the average purchaser. Similarly marks that are capable and distinguishable
as to source of the goods or services but which have not yet attain
distinctiveness may not be registered. The Indian system does not provide for
*82* Raymond NMS -230.15.odt
such registration. The reason for not allowing registration of generic marks is
keeping in line with public policy of prohibiting registration of generic marks
which would effectively create a monopoly by preventing competitors by using
a common word to identify goods or services. In the American system1
therefore large investments made while promoting generic names in
connection with the particular source does not deprive competitors of the right
to call their goods or services by the same name. The generic name used for
goods or services with the top level domain names are not amenable to
registration even if the goods or service have alternate names one or more
which may be used by competitors.
49. The domain name registration system is administered by the Internet
Corporation for Assigning Name and Numbers (ICANN). Although ICANN was
originally a technical body now we are given to understand from recorded
sources that ICANN is also taking policy decisions especially in relation to
online dispute resolution under the Uniform Domain Name Disputes Resolution
1 See Internet Domain Names, Trademarks and Free Speech by Jacqueline Lipton
*83* Raymond NMS -230.15.odt
Policy(UDRP). The likelihood of multiple parties seeking registration in the
same domain name is a reality. The UDRP is a dispute resolution mechanism
which was adopted by ICANN which along with the World Intellectual
Property Organization (WIPO) reportedly offers the largest dispute resolution
service is expensive, fast and online and all domain name prospects are
contractually bound to submit mandatory arbitration under the UDRP if a
complaint is made about a registration of a domain name.
50. It is in fact a matter of record that the defendant was the first applicant
for the impugned domain name and appears to have obtained registration as of
August 2009. The domain name system has its limitations since two parties
using the same or similar trade-marks in different areas of business and
different categories may end up applying for the same domain name and if no
sharing arrangements are arrived at or if no transfer of domain name fructifies,
one is faced with a dispute which requires resolution. It is not in this context
that the present dispute has arisen. The plaintiffs have undoubtedly been using
*84* Raymond NMS -230.15.odt
the mark 'Raymond' since 1953. The plaintiff has not opted for resolution of
the dispute under the auspices of the UDRP but has chosen to file this suit on
the basis of trademark infringement, dishonest adoption and passing off.
51. Infringement action in respect of trade-marks is largely based on the
need to protect a consumer of products or services to ensure that the consumer
or purchaser receives goods or services that they think that they are paying for.
The other aspect which is required to be protected is the investments made for
developing the reputation of the mark and protecting against its unfair
misappropriation of that goodwill. Trade-mark dilution may result from
permitting free speech. Consumers must not be misled by domain names
corresponding to a trade-mark and considering the experience of parties even
across the globe there appears to be no clear test for protecting names and
marks which had been in use in different set of circumstances. In this behalf,
I find the American experience in matters of cybersquatting relevant for
consideration in the facts of the present case. One Dennis Toeppen (See
*85* Raymond NMS -230.15.odt
Panavision Int'l L.P. v/s Toeppen 141 F.3d 1316 [9 th Cir 1998]) had in
anticipation of making gains from famous marks registered numerous domain
names pertaining to diverse marks some of which were famous. Mr. Toeppen
proceeded to register three names in the early stages of the internet. As a
result, he traded in the domain names for profit. Mr. Toeppen registered the
domain "panavision.com". Panavision is a well-known trade-mark but having
registered this domain name, Mr. Toeppen did not offer any products or
services on the domain, instead he displayed photographs of a town named
'Pana' in Illinois. The Court found that this amounted to trade-mark dilution
but did not amount to infringement since it did not result in any confusion at
the consumers end and the persons accessing the domain would be able to view
images of the town Pana and unlikely to be led to believe that the website
belonged to Panavision Corporation. A case of blurring would result from the
defendants causing activity around the plaintiff's mark in a manner to render
effective functioning of the mark difficult. On the other hand, an act of
tarnishment would as the term indicates results in detrimental reference to the
*86* Raymond NMS -230.15.odt
mark when used by the defendant. The commercial element was absent in the
Panavision case(supra). The Court held that the use of the plaintiff's mark for
the purposes which are not related to the plaintiff's products or services results
in dilution of the mark. Thus Toeppen was found to have diluted the mark of
Panavision Corporation despite the fact that Toeppen was merely showing
pictures of the town called Pana. In considering whether the defendant is
guilty of any act of dilution the domain name need not be identical to the
plaintiff's mark in the case of Panavision the defendant was in the business of
registration of domain name for commercial purposes namely to sell them to
the interested purchasers. Although the defendant was not carrying on any
business through the said site "Panavision.com" he was held to have diluted
plaintiff's mark Panavision. The US Court of the appeals however rejected
Toeppen's contention that the domain name is nothing more than an address. It
held that the significant purpose of a domain name is to identify the owner of
the website and a customer who is unsure of a company's domain name will
often guess that the domain name is also the company's name. In the instant
*87* Raymond NMS -230.15.odt
case by inclusion of the word "pharma" read with the fact that it is a shorter
version of the corporate name currently and lawfully in use, the defendants are
being identified in cyberspace by the domain chosen, albeit with the
inclusion of the word 'raymond'.
52. In Cardservice Int'l V/s. McGee [950 F.Supp. 737, 741 (E.D.
Va.1997)] it was held that a domain name mirroring a corporate name may
be a valuable corporate asset, as it facilitates communication with a customer
base. Similar was a finding in MTV Networks, Inc. V/s. Curry,[867 F.
Supp. 202, 203-204 n.2(S.D.N.Y.1994).] The domain name serves a
dual purpose. It marks the location of the site within cyberspace like a postal
address and it also indicate some information about the contents of the site.
53. While the plaintiff is the registered user of the domain name
'www.raymond.in", the defendant has obtained registration for
'www.raymondpharma.com". Once registered it is subject to renewal. The
*88* Raymond NMS -230.15.odt
defendants' ownership of the same domain and right to utilize the same for all
legitimate purposes cannot be interfered with by a third party unless he obtains
in the process of valid adjudication, an order that the defendant is not entitled
to use the domain name and/or seeks transfer of the domain name either by
private negotiations or by dispute resolution. Globally use of personal names in
domain space has resulted in numerous issues since personal names of even
well-known individuals may have trade-mark rights vesting in such
individuals. Every domain name which is registered does not necessarily have
to correspond with trade-marks. In the present case the plaintiffs have not
sought prayer for transfer of the defendants' domain name. The instant case is
therefore not a case of cybersquatting but one of alleged misuse of the Plaintiffs
registered Mark. One has to examine whether (a) there are elements of bad
faith conduct that can be seen, (b) such conduct interferes with the rights of
the trade-mark holder, (c) there is any blurring or tarnishment of the plaintiff's
mark or any whittling or grinding away at the Mark. According to the
defendant it has bonafide adopted the impugned domain name because it has
*89* Raymond NMS -230.15.odt
been using the name Raymond Pharmaceutical Ltd. as its corporate name.
54. The underlying test of trade-mark infringement is confusion amongst
customers about the source of products or services. In relation to domain name
disputes use of a trade-mark in a domain name might confuse consumers
about the source of product or services marketed on website. The expression
"initial interest confusion" does not find any expressive description, however,
the same is being developed into a doctrine in the United States. Applying this
concept to the instant case we are required to consider whether a use of the
mark "Raymond" by the defendants in its domain name "raymondpharma.com"
would necessarily lead to "initial interest confusion" inasmuch as would a
netizen who comes across the domain name "www.raymondpharma.com" be
so confused initially that she or he would mistake the site as that of the plaintiff.
I think not. As has been the experience usage of a mark may result in dilution
of the mark and this can take the form of blurring or tarnishment. Blurring of
*90* Raymond NMS -230.15.odt
the mark is said to occur as a result of similarity between the offending mark
and famous mark, as a result of which the distinctiveness of the famous mark is
affected.
55. In the present case I do not find any evidence of an attempt of cause
"initial interest confusion".
ig The defendant company has succeeded in
continuing to use its corporate name and now uses a slightly shorter form of its
corporate name as its domain name. This, in my view is unlikely to cause any
initial interest confusion since the domain name of the defendants very clearly
indicates that the website "www.raymondpharma.com" is clearly intended to be
the domain name of the defendant engaged in a business which is not carried
on by the plaintiffs since the plaintiffs are admittedly not in the business of
pharmaceuticals. It was submitted in the course of arguments that the plaintiffs
intend to commence pharmaceutical business. However, the fact remains that
when the suit was instituted the plaintiffs were certainly not in the business of
*91* Raymond NMS -230.15.odt
pharmaceuticals whereas the pharmaceutical business is the main stay of the
defendants. The man of ordinary intelligence is unlikely in my view to assume
that the domain name of the defendant would lead him to the plaintiffs'
website. Viewed from this context, I am convinced that in the facts of the
present case the defendant is merely using its corporate name to identify its
own domain space and does not appear to be in bad faith.
56. The plaintiffs had strenuously argued that the defendants chose to adopt
name "www.raymondpharma.com" only after they succeeded in the notice of
motion taken out by the plaintiff and being emboldened thereby. I find
nothing wrong in that inasmuch as the defendant could have, if they so
desired, commenced use of the impugned domain name even earlier by
registering the domain name. It is not the plaintiffs case that the defendant
was earlier using a different domain name and commenced use of the revised
name "raymondpharma.com" after succeeding in the Motion. Mr. Khandekar
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had submitted and in my view correctly so, that the defendant cannot be
prevented from using its corporate name or part of its corporate name to
identify itself in the domain space. Parties who would be searching the
worldwide would be able to identify the defendant as the same company which
was involved in manufacturing pharmaceuticals. Any netizen including the
man of ordinary prudence who is familiar with the plaintiff's registered mark
"Raymond" written in the stylized form unique to it would, upon accessing the
defendants home page, realise that the defendant's domain is not that of the
plaintiffs.
57. The present case, in my view does not fall within the realm of
cybersquatting either since the defendants have not registered a domain name
that corresponding with that of the plaintiff with the intent of selling it to the
plaintiff or the plaintiffs competitors. Moreover the Plaintiffs have not sought
transfer of the domain name to itself from the defendant. The plaintiffs are
not in the business of pharmaceuticals and have not been in that field ever in
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the past. The only element of commonality between the plaintiffs mark and
that of the defendants domain is the word "raymond". As already seen from
the record, the domain name of the defendants incorporates part of its
corporate name. This Court has already held that use of the word "Raymond"
and the defendants corporate name is not actionable as infringement of the
Mark. Contrary to cybersquatting behavior, the defendants did not express
their intention to sell the domain name to the plaintiff. On the other hand the
defendants have been using the domain name to mark their presence in the
internet domain space.
58. When civil society first came to learn of the internet and commenced
use, it did not do so with any intention to deprive any one of their trademarks.
If the case of the plaintiff is to be accepted the word "Raymond" cannot be used
by any entity or person whatsoever. It is, therefore, necessary to test the
plaintiffs case in the face of the challenge that the defendants use of the domain
name has presented. Both parties hold legitimate interests in their own
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corporate names at the time of hearing of this Notice of Motion and as far as
the plaintiffs are concerned their corporate name and the mark "Raymond" has
been used in diverse businesses. None of these businesses described under the
plaint appears to involve the business of manufacture and sale of
pharmaceuticals which the defendants are engaged in. In this view of the
matter, the defendants have an ascertained a right to utilize in their corporate
name on the website domain address. The use of the word "raymondpharma"
is descriptive of the plaintiffs' presence in cyberspace which does not in my
view affect the right of the plaintiff. The use of "raymondpharma.com" cannot
be said to be a name for "corresponding" to that of the plaintiffs who admittedly
have not registered any domain name which is similar to that of the defendant.
The word "corresponding" as understood in the English language would entail
those names which have the close similarity or match or agreed almost exactly
or otherwise be analogous or equivalent to the other.
59. The expression "corresponding name" would entail an aspect of
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equivalence but when we step back to consider the two names in question i.e.
the mark "Raymond" and the domain "www.raymondpharma.com" we would
obviously exclude the abbreviation "www" and the extension ".com" and
emphasize on the word "raymondpharma" to test whether "raymondpharma" is
corresponding to or is equivalent to "Raymond". In my view the two cannot be
said to be corresponding names. "Pharma" being a shorter form of the word
"pharmacy", the use of the word "pharma" in the defendants domain name is
clearly indicative of the fact that the defendants are engaged in the
pharmaceuticals business as against the plaintiff which was neither a
manufacturer of pharmaceuticals at the material time nor has the plaintiff been
ever known as such. Merely because the plaintiff owns a well-known mark
does not in my view entitle them to an injunction against the defendant in the
facts of the present case.
60. As far as the present action is concerned, the plaintiffs suit is more of an
action complaining against dilution of its Mark. An action alleging dilution is
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intended to protect the holder of the mark which may be a well-known against
its blurring or tarnishment. It would have been a different matter if holders of
two trade-marks have trade-mark interests corresponding to the same domain
name. If for instance the defendants had registered a domain name such as
www.raymond.net.in or www.raymond.co.in the Plaintiffs would have had an
indefeasible case. Protecting trade-marks in the present environment entails
considering bad faith conduct on the part of the defendant while balancing
between trade-mark rights of parties and the right to free expression including
publishing the defendant's location in cyberspace. In the facts of the present
case it is obvious that the defendant is carrying on business in the name of
Raymond Pharmaceutical Pvt. Ltd. and in accordance with law. At this interim
stage, it is not possible to finally determine the exclusivity of use of the mark
"raymond". However, what one is to consider is whether on balancing
convenience the defendant ought to be prevented from using the word
"raymond" in its domain name despite the fact that the word "raymond" is part
of the defendant's corporate name. Absent the right to use its present
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corporate name, the defendants case becomes vulnerable and could suffer the
injunction sought. A balance has to be struck between the rights of trade-
mark owner as against that of the defendant in the instant case. Whether or not
in the instant case the Mark has been diluted by blurring or tarnishment will
have to be established by evidence. As of now there is no evidence of this
blurring or tarnishment. In fact the plaintiffs are not even in the business of
manufacturing, sale or distribution of products or services which the
defendants deal in. It is not therefore apparent that the defendants have caused
the blurring or tarnishment of the plaintiff's mark since only one person or
entity can register and hold the domain name.
61. The overall scheme of the Trade-marks Act does not provide for any
statutory protection in terms of prevention of use of a domain name which may
also be a famous mark. The internet provides, apart from the access of various
entities and their businesses, platforms for communications and expression.
Internet as a medium of communication would therefore include the concept of
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free speech and the ability to utilize the name of the entity itself. Having
already and repeatedly being reminded of the fact that confusion of the
consumer is the main contributor to trade-mark infringement actions, there
has been considerable criticism to the application of trade-mark infringement
laws in cases pertaining to the domain names involving and now described as
"initial interest confusion". In the instant case, the defendants cannot in my
view be described as engaged in click farming either because the plaintiffs
registered mark is a "raymond" on the site www.raymondltd. whereas the
defendant's domain name is "raymondpharma.com" . It is a shorter form of its
corporate name Raymond Pharmaceutical Pvt. Ltd. In case of click-farming the
domain name may be used by the alleged offenders even for purposes
unrelated to the domain name.
62. In the present case even proceeding on the basis that the plaintiffs mark
"Raymond" is a famous trade-mark the plaintiffs contention meets a slippery
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slope in the light of the fact that the plaintiff does not carrying on business that
the defendants are engaged in whereas a part of the defendants corporate
name is embodied in its domain name. The defendants are also not seeking to
derive benefit from the plaintiffs' customer base. Domain name administration
in my view, cannot be based only on trade-mark legislation. Domain name
registration holds good only for the duration of the contract between the
domain name registrant.
ig Thus, if the domain name registration expires the
name can no longer be associated with the original registrant. The defendant in
the instant case could be unable to carry out any activity under the domain
name "www.raymondpharma.com" unless this registration agreement is valid
the defendant's identity in cyberspace at this web address will be lost. Emails
addressed to the defendant at this expired domain name will no longer be
delivered to the defendant. It would be theoretically speaking possible for the
plaintiff to apply for and obtain registration of the domain name
"raymondpharma" in its own name. In other words, registration of the domain
in favour of the defendants does not entail exclusive use by the defendants once
*100* Raymond NMS -230.15.odt
the duration of the registration expires.
63. Once registered a domain name constitutes an address in cyberspace
where the registrant's website can be reached. Thus the coordinates and the
location of a domain in cyberspace will be governed by the internet local
authority and a domain can easily be identified by such coordinates. The
domain name is an address which is not a permanent one. Once registered the
registration lasts for a specific duration of time and subject to payment of
registration fees for the specified duration if on or before the specified duration
the domain name registration is extended the domain name will remain alive
and accessible during such renewed period. If, however, renewal is not
effected the domain and the website will not be accessible in cyberspace.
Registration of trade-marks and domain names are not permanent. Trade-
marks registration can also be cancelled if improperly obtained or the failure to
use a trade-mark may also result in its cancellation. However, failure to use a
domain name will not necessarily result in its cancellation. The failure to
renew the registration of a domain name will result in loss of the domain name.
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64. Different possibilities arise upon expiry of a registration of a domain
name. In a given case, if the defendant does not renew the registration and it
expires, the defendant can, presumably, within a "reasonable period of time"
seek continued use of the domain name by entering into an extension of the
earlier agreement. On the other hand, if the registration were to expire and the
defendant does not approach the ICANN or its nominee to continue the
registration it is possible for the same domain name may be transferred to a
third party. This action would depend on the policies adopted by ICANN and
the licensed domain name registering authority. The Trade Marks Act, 1999
does not deal with transfer of domain names as it does in the matter of trade-
marks. Trade marks are registered for period of time beyond the initial ten year
period as provided in Section 25 of the Act. The ability of a domain name
registrant to extend the term of the registration is purely contractual and has
no statutory protection. Emphasis has always been to protect trade-mark
*102* Raymond NMS -230.15.odt
holders against bad faith exhibited by erring defendants. There is no single
authority that regulates domain name administration while ICANN has control
over the technical systems, the World Intellectual Property Organization(WIPO)
concentrates on protection of IPR.
65. The Parliament has not enacted any law to encompass all aspects of
cyber property such as domain name which is akin to property in cyberspace.
A domain name can be held and used only by one person unless the same is
shared by mutual agreement and in the real world, as we can see in the instant
case, since the defendant has already registered the domain name
"raymondpharma" the plaintiff cannot use the same save and except with
agreement of the defendant or by seeking transfer of the domain name by
lawful means. The present suit seeks no such relief of transfer of the domain
name. Since the domain name registration has always followed "first come first
served" policy it has resulted in numerous persons controlling domain names
unrelated to their businesses such as in the case of Dennis Toeppen and
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Panavision. However, in the case at hand, using "www.raymondpharma.com"
in my view does not render the plaintiffs Mark "Raymond" diluted. The
question is whether they can be prevented from using the domain name
because the word "raymond" appears as part of the domain name. This is the
short question that will require an answer at the end of this rather long but
necessary consideration of the case.
66. In Raymond Ltd. Vs. Raymond Financial Inc. & Anr. it was found that the
trademark "Raymond Gems" was deceptively similar to the trademark of
Raymond and Intellectual Property Board rejected the application of the
defendants for use of mark of Raymond in its name. In case of Indian Express
Ltd. (supra) the defendants had used translation of the plaintiffs' mark "The
Indian Express" in Devanagri script. The court decreed the suit and
restrained the defendants from using the word "The Indian Express" in any
form.
*104* Raymond NMS -230.15.odt
67. In Rolex SA (supra) the defendants were using the mark "ROLEX" and
carried on business in the name and style of Rolex Jewellery House and were
also using domain name www.rolexjewelleryhouse.com. The Rolex was
trademark of Rolex Watch Company of Switzerland. The defendants used the
word and domain name "Rolex", despite the fact that the defendants had no
connection with the brand "Rolex" . Thus, the relief was sought pursuant to
provisions of Section 29(4) of the Trademark Act which clearly enabled the
plaintiffs to seek relief against the defendants and the infringement is in acts
and service other than this for which the mark was registered. It is obvious
that Section 29(5) and 29(4) operate in different areas. In this context it
will be useful to refer to the essentials of passing off action as extracted
from Halsbury's Laws of England Vol.38 as under :
"998. Essentials of the cause of action
The plaintiff must prove that the disputed name, mark, sign or
get up has become distinctive of his goods in the sense that by
*105* Raymond NMS -230.15.odt
the use of his name or mark, etc in relation to goods they are
regarded, by a substantial number of members of the public or
in the trade, as coming from a particular source, known or
unknown; it is not necessary that the name of the plaintiff's firm
should be known. The plaintiff must further prove that the
defendant's use of name or mark was likely or calculated to
deceive, and thus cause confusion and injury, actual or
probable, to the goodwill and the plaintiff's business, as for
example, by depriving him of the profit that he might have had
by selling the goods which ex hypothesi, the purchaser intended
to buy. Thus, the cause of action involves a combination of
distinctiveness of the plaintiff's name or mark and an injurious
use by the defendant of the name or mark of a similar name or
mark, sign, picture or get-up does or does not amount to passing
off is in substance a question of evidence; the question whether
the matter complained of is likely to deceive is a question for the
Court."
Thus, after considering these aspects that permanent injunction was granted
*106* Raymond NMS -230.15.odt
to the plaintiffs' against the defendants in addition to which compensatory
damage or punitive damages were also ordered.
68. In case of Tata Sons (supra) the emphasis was laid on paragraph 25
and it was held that the name of "TATA" has been protected by various Courts
in similar or dissimilar goods, that is, under Section 29(4) and 25(5) of the Act.
Accordingly,
the suit came to be decreed and the defendants were
prevented from using the word "TATA" namely for their goods, blocks, dyes,
stationery and packaging material which was also directed to be destroyed.
69. In case of Gorbatschow Wodka Ltd. (supra) this Court has held
that the plaintiff had made out a strong prima facie case since the defendant
had adopted shape for the bottle of Vodka produced by the defendants
which had similarity to that of the plaintiffs. The defendant was found to be
grinding away at the plaintiff's mark.
*107* Raymond NMS -230.15.odt
70. In Rediff Communications (supra) the plaintiffs reliance is largely
upon the fact that "a domain name is more than an Internet address and is
entitled to the equal protection as trademark". In that case main bone of
contention was whether the defendants by adopting "Radiff" which was
deceptively similar to domain name "Rediff" have been passing off their goods
and service as that of the plaintiffs. In the instant case the trademark of the
plaintiffs and domain registered by the defendants are not in such close
proximity as in the case of "Rediff.com", inspite of the fact that the name
"raymond" has been used in domain name of the defendant.
71. In Info Edge (India) Pvt. Ltd. & Anr. (supra) the Court dealt with
domain names "naukri.com" and "naukari.com" which clearly resembled
plaintiffs' site "naukri.com". There was close similarity between the domain
names and both parties carried on identical lines of business and there was a
real possibility of interested users being misled into accessing defendants
*108* Raymond NMS -230.15.odt
website believing it to be that of the plaintiffs. The defendants had
intentionally chosen the offending name and it was found that there was
prima facie bad faith involved.
72. Similarly, in case of Satyam Infoway Ltd. (supra) it was held that a
domain name not only serves as an address for internet communication but
also identifies a specific commercial field in which it operates and use of a
similar domain name which could result a diversion of users. There was a
clear and imminent risk of diversion of hits in Satyam.
73. In Panavision (Supra) the court held that using a company's name or
using trade-mark as a domain name would also be the easiest way to locate that
company's website and that using a search engine can turn up hundreds of web
addresses. The Court also held that potential customers of Panavision will be
discouraged if they cannot find its web page by typing in "Panavision.com" but
*109* Raymond NMS -230.15.odt
were forced to hundreds of web sites and that this effectively dilutes the value
of Panavision trade-mark. The learned Judge of the District Court held as
follows:- "Prospective users of plaintiff's services who mistakenly access
defendant's web site may fail to continue to search for plaintiff's own home
page, due to anger, frustration or the belief that plaintiff's home page does not
exist." These reasons through perfectly useful to decide against Toeppen,
Panavision scenario would not arise in the present case because the plaintiffs
are not in the pharmaceutical business at all. One must consider whether the
defendants while adopting the name raymondpharma.com had reasonable
ground to believe that use of the domain name was a fair use and whether it
was otherwise a lawful use. In my view this aspect must be answered in favour
of the defendant since it was carrying on business in the name of Raymond
Pharmaceutical Pvt. Ltd. In other words the defendant was in a safe harbor
while using the name raymondpharma.com.
74. While considering various decisions that were relied upon by the
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plaintiffs in support of Notice of Motion, I find that many of the decisions
relied upon by the plaintiffs are not directly relevant to the issue at hand. I
remind myself of the observations of Lord Denning quoted in Ashwani Kumar
Singh (supra) to the effect that the path of justice must be kept clear of
obstructions. The various judgments relied upon by the plaintiff's though
elaborating different aspects of trade-mark protection do not deal with fact
situation we are faced with in this Suit. In the present case I find none of the
compulsions observed in the above cited cases which led to grant of relief.
Given the facts of the present case I am of the view that the defendants have not
attempted to diminish the value of the Plaintiffs Marks by using the impugned
domain name. There is no doubt in my mind that the trademark "Raymond"
is well known trademark and is associated with the plaintiffs. This is
something that has been recognised by the order of the learned Single Judge
in Notice of Motion (L) No.1421 of 2013 in Suit (L) No 616 of 2013 (Raymond
Ltd. Vs. Ashirwad Electricals and Others) as well as Notice of Motion (L)
No.2781 of 2015 in Suit (L) No.1057 of 2015 (Raymond Ltd. Vs. Sai Balaji
*111* Raymond NMS -230.15.odt
Suitings & Anr.). These were thus cases were the defendants had attempted to
copy the plaintiffs registered mark and Art work including manner in
which they have been written. The above two decisions are not of
assistance to the plaintiffs except to establish that word "Raymond" is well
known mark.
75.
International regulation of domain name was administered through
WIPO and ICANN and consultation between these two organisations resulted
in Uniform Domain Name Disputes Resolution Policy (UDRP) and registration
was allowed on first cum first serve basis. If a party complains of infringement,
the complaint may be made before dispute-resolution forum provided for.
76. In India in absence of legislation expressly dealing with dispute
relating to domain name leads such disputes to be taken up for adjudication
in the Court including by way of action of passing off. The Statement of
Objects and reasons of the Trade Mark Act, 1999 does not reveal any intention
*112* Raymond NMS -230.15.odt
to widen the scope of amended Act so as to specifically cover the protection
of trade-marks in domain names. The aforesaid mentioned standards of the
UDRP will be useful as a guide for the appropriate tests to be applied. In my
prima facie view, the use of the impugned domain name in the present set of
facts is neither such as to take unfair advantage nor is it detrimental to the
distinctive character of the plaintiff's registered Mark. Section 29(4) requires
criteria all three sub-clauses to be satisfied unlike Section 29(8) referred to by
Mr. Khandekar. Although trade-marks may be used as domain name(s) unless
an impugned domain name is identical to a registered mark or the two are so
alike so as to cause initial interest confusion to a man of ordinary intelligence,
the domain name need not result in infringement of the mark or passing off.
Every domain name cannot therefore form subject of trade-mark protection. I
may add a word of caution here by clarifying that to reach a conclusion on this
aspect the facts of a case are material.
*113* Raymond NMS -230.15.odt
77. On analysis of the judicial pronouncements that have been pressed into
service on behalf of the Plaintiffs it would require the Plaintiffs to establish that
the defendant's use of the mark should be demonstrably not in accordance with
honest practice in commercial matters and take unfair advantage or
detrimental to the Plaintiffs' mark. In the context of the allegations of passing
off the registration of the impugned domain name and use of Email-id must
have resulted in misrepresentation in the course of trade to customer of the
defendants and/or the plaintiffs, Apart from being calculated to injure it must
also cause actual damage to the Plaintiffs. In the present case, I find no such
evidence to indict the defendants. It is the Plaintiffs stated case and as argued
before me that the Plaintiffs' mark is infringed by virtue of Section 29(4).
Although I do not find merit in Mr. Khandekar's submission that the plaintiff's
mark lacks distinctive character, I am of the prima facie view that the domain
name has not been adopted without due cause or to take unfair advantage or
cause any detriment to the distinctive character or repute of the Plaintiffs
*114* Raymond NMS -230.15.odt
mark "Raymond" especially in the light of fact that the Plaintiffs case under
Section 29(5) has been negated at the interim stage. Absence of sales figures of
the defendants is not so critical in the present facts.
78. In my view any further relief against the defendants in respect of use
of domain name would have to await the result of the 2006 suit. However, if
the defendants continue use of the plaintiff's mark on any product, publicity or
literature in any manner other than the use of its current domain
name/corporate name or Email address, such a course would immediately
entitle the plaintiff's to seek a restraining order, as any such attempt would be
taking unfair advantage of the mark. The Plaintiffs' Mark will not be any less
distinctive than it was prior to the impugned domain name being registered
and utilised, if the injunction sought is refused. The Plaintiffs have filed the
present suit only in 2014 although domain name was stated to have been
registered in 2009, a fact about which there is no serious dispute. In the
event the Plaintiffs succeeds in the 2006 there will be justifiable cause to seek
*115* Raymond NMS -230.15.odt
restraint on the domain name as well. Taking all these aspects into
consideration, the balance of convenience favours the defendants and the
Plaintiffs are not entitled to any relief sought in the Motion. I therefore pass
the following order:-
(a) Notice of Motion is dismissed.
(b)
There will be no order as to costs.
(A. K. MENON, J.)
