Bombay High Court
Cipla Ltd vs Cipla Industries Pvt. Ltd. And ... on 1 March, 2017
Bench: A.S. Oka
1 nms-2463.12 in suit-1906.12
pmw
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORGINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.2463 OF 2012
IN
SUIT NO.1906 OF 2012
CIPLA Limited
A company registered under the
Indian Companies Act, 1913
having its office at
Mumbai Central
Mumbai - 400 008 ... Plaintiff
Versus
1. M/s. CIPLA Industries Private Limited
a company registered under the
Indian companies Act, 1956
having its office at B-63, Gali No.5,
Jagatpuri, Delhi - 110051.
2. Vishal Khanna
Sole proprietor trading in the
name and style of M/s CIPLA Industries
having its office at B-63, Gali No.5,
Jagatpuri, Delhi - 110051 ... Defendants
---------------
Mr. Iqbal Chagla, Senior Counsel a/w Mr. Venkatesh Dhond, Senior
Counsel, Mr. Rashmin Khandekar, Mr. Minesh Andharia, Mr. Hemant
Thadhaini, Ms. Janhvi Chadha and Ms. Anshul Saurastri i/by Krishna &
Saurastri Associates for the Plaintiff.
Mr. Ashish Kamat a/w Mr. Ameet Naik and Ms. Madhu Gadodia &
Mr. Vaibhav Bhure i/by Naik, Naik & Co. for the Defendants.
CORAM : A.S. OKA, A.A. SAYED & A.S. GADKARI, JJJ.
DATE ON WHICH SUBMISSIONS WERE HEARD : 20.08.2016
DATE ON WHICH WRITTEN SUBMISSIONS WERE FILED : 20.09.2016
DATE ON WHICH JUDGMENT IS PRONOUNCED : 01.03.2017
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JUDGMENT (PER A.S. OKA, J.):-
OVERVIEW AND THE QUESTIONS TO BE DECIDED
1 The learned Single Judge by his order dated 26 th April,
2016 expressed a view that a decision of the Division Bench of this
Court in the case of Raymond Limited Vs. Raymond Phamaceuticals Pvt.
Ltd.1 needs reconsideration. Paragraph 21 of this order reads thus :-
"21. I am, of course, bound by the decision in the Raymond.
However, in my respectful submissions, and for the
reasons I have outlined above, that decision in Raymond
requires reconsideration; specifically on the following
questions:
(1) Where a party is found to be using a registered trade
mark as a 'name', viz., as a corporate or trading name
or style, though in respect of goods dissimilar to the
ones for which the trade mark is registered, is the
proprietor of the registered trade mark entitled to an
injunction on a cause of action in infringement under
Section 29(5) of the Trade Marks Act, 1999?
(2) Whether the use of a registered trade mark as
corporate name or trading name or style is excluded
from the purview of Sections 29(1), 29(2) and 29(4)
of the Trade Marks Act, 1999, and whether those
Sections are restricted to the use of a trade mark 'as a
trade mark', i.e., in the 'trade marky' sense?
1. 2010 (44) PTC 25 (Bom.)
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(3) Whether Sections 29(4) and 29(5) operate in
separate and mutually exclusive spheres, i.e.,
whether, if the defendant uses the registered trade
mark only as a corporate name or trading name or
style in respect of dissimilar goods, a Plaintiff can
have no remedy and is not entitled to an injunction?
(4) Whether the view taken by the Division Bench in
Raymond Ltd V Raymond Pharmaceuticals Pvt Ltd
(2010(44) PTC 25 (Bom) (DB)) is a correct view?"
2 On the basis of this order, the Hon'ble the Chief Justice
directed that the matter be placed before a Full Bench. The issue
involved in this Reference is of interpretation of the various sub-sections
of Section 29 of the Trade Marks Act, 1999 (for short "The Trade Marks
Act") and in particular Sub-Sections (1), (2), (4) and (5).
3 Suit No.1906 of 2012 was filed by way of an action in trade
mark infringement combined with cause of action in passing off. The
dispute is about the mark "CIPLA" registered to the Plaintiff in Class 05
of the Fourth Schedule to the Trade Mark Rules, 2002. The Plaintiff is a
manufacturer of pharmaceutical products. It is claimed that the Plaintiff
has been using the mark CIPLA for a long time. It is contended that it is
also a part of its corporate name and in fact it is an abbreviation of its
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earlier corporate name. The mark has been used by the Plaintiff only for
pharmaceutical and medicinal preparations. The Defendants have not
used the said mark for such preparations. It is alleged that the
Defendants have used the mark as a part of their corporate or trade
name. They are using it in a slightly different form in respect of
household articles, such as soap dishes, photo frames, ladders and so
on. The Defendants claim to possess a registration of a very similar
mark CIPLA PLAST in their favour in Class 21 of the Fourth Schedule to
the Trade Mark Rules, 2002.
4 For the sake of completion, we must reproduce Class 05
and Class 21 which read thus :-
"5. Pharmaceutical, veterinary and sanitary preparations,
dietetic substances adapted for medical use, food for
babies; plasters, materials for dressings, materials and
stopping teeth, dental wax; disinfectants; preparation
for destroying vermin; fungicides, herbicides."
"21. Household and kitchen utensils and containers (not of
precious metal or coated therewith); combs and
sponges; brushes (except paints brushes); brush making
materials; articles for cleaning purposes; steelwool,
unworked or semi-worked glass (except glass used in
building); glassware, porcelain and earthenware not
included in other classes."
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5 The learned Single Judge referred to the decision of the
Division Bench in the case of Raymond Limited and quoted paragraphs
12, 13 and 14 thereof which read thus :-
"12. Reading the provisions of Trade-mark Act and the
Companies Act together shows that a new provision has
been incorporated in sub-section 5 of Section 29 for a
definite purpose. It is clear that Section 29 deals with
different situations when an act on the part of the
Defendant would amount to infringement of the
registered trade-mark. A registered trade-mark can be
adopted by a Defendant as its trade-name in two
situations, (i) when the Defendant is dealing in the
goods in respect of which the trade-mark is registered
and (ii) when the Defendant is not dealing in the goods
in respect of which the trade-mark is registered. The
Legislature obviously was aware of this situation, still
the Legislature provided that only when the Defendant
adopts the registered trade-mark as a part of its trade-
name, and deals in goods in respect of which the trade-
mark is registered, then only it will amount to
infringement. In other words, by necessary implication
it is laid down that if the Defendant adopts the
Plaintiff's trade mark as his trade-name, but is not
dealing in the goods in respect of which the Plaintiff s
trade-mark is registered, then it does not amounts to
infringement. It was urged on behalf of the Plaintiff
that the use of the trade mark of the Plaintiff as a part
of the name of the defendant Company is covered by
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sub-section (4) of Section 29 of the Act relying on the
definition of the term Mark found in sub-section (2)(1)
(m) of the Act. It reads as under :-
'2(1)(m)- mark includes a device, brand, heading,
label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or
combination of colours or any combination
thereof;
13. It was submitted that because a name is included in the
definition of the term mark if the defendant uses a
name which is identical or similar to the registered
trade mark, then it will amount to infringement within
the meaning of infringement of the registered mark,
within the meaning of sub-section (4) of section 29 of
the Act. If this submission on behalf of the Plaintiff is
accepted, then it can be seen that use of registered
trade mark of the Plaintiff as part of the trade name
when the goods marketed by the defendant are similar
to the goods marketed by the Plaintiff would be
covered by sub-section (1) of section 29 and may also
be covered by sub-section (2) of section 29. In other
words, if this submission of the Plaintiff is accepted,
then in case where the defendant uses as a part of his
trade name registered trade mark of the Plaintiff, if the
goods are similar, identical or the same as that of the
Plaintiff, the case will be covered by sub-sections (1)
and (2) of section 29 of the Act and if the goods of the
defendant are dissimilar, it will be covered by sub-
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section (4) of section 29 and sub-section (5) of section
29 will become otiose. The provisions of various sub-
sections of section 29 are in a scheme and none of the
provisions are either surplus or otiose. As a matter of
legislative policy, it appears, the Legislature decided to
treat cases where the defendant uses registered trade
mark of the Plaintiff as a part of his trade name as a
distinct subject for the purpose of laying down law in
relation to infringement of registered trade mark and
legislated that if the defendant uses registered trade
mark of the Plaintiff as a part of his trade name, then if
the goods in relation to which the defendant is using
the trade mark are the same as the goods in respect of
which the Plaintiffs trade mark is registered, then only
it will amount to infringement and not in case where
the goods of the defendant are dissimilar. Holding that
where the defendant is using registered trade mark of
the Plaintiff as a part of the trade name of the
defendant, where the goods are the same, sub-section
(5) of section 29 will apply but if the goods of the
defendant are dissimilar, sub-section (4) of section 29
will apply, will be contrary to the legislative scheme of
section 29.
14. There is another way in which the situation can be
looked into. Use of a registered trade-mark as a part
of trade name was a known phenomena. Passing of
action was initiated in such cases. A special provision
has now been made to deal with that situation by
incorporating sub-section 5 of Section 29 and therefore,
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so far as subject of using of registered trade mark as a
trade-name is concerned, provision is contained in sub-
section 5 of Section 29 and therefore on that subject no
other provision would apply. Generalia Specialibus non
derogant is a cardinal principle of interpretation. It
means that the general provision will always yield to a
special provision. Construed in accordance with the
fundamental principle, a special provision governing
cases of a defendant using a registered mark as a part
of his trade-name is incorporated in Section 29(5)
and
therefore, that subject will be governed only by that
provision and therefore reliance on any other provision
including Section 29 (4) is ruled out. Thus, we have no
doubt in our mind that the Plaintiffs could not have
relied on the provisions of Section 29(4) of the Trade-
mark Act. In the present case, there is no dispute that
the Defendants do not deal in the goods in respect of
which the trade-mark of the Plaintiffs is registered.
What is to be noted here is that the phrase used by sub-
section 5 is dealing in goods or services in respect of
which the trade-mark is registered. The Legislature has
not used the phrase goods similar or goods identical to
the goods in respect of which the trade mark is
registered. Thus, in order to claim that use of a
registered trade-mark as part of trade-name by the
Defendants amounts to infringement, the Plaintiffs
have to establish that the Defendants are dealing in the
goods in respect of which the mark is registered. In
other words, if the Defendants are not dealing in goods
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in respect of which the trade-mark is registered, then
the use of the registered trade-mark as a part of trade-
name by the Defendant would not amount to
infringement. In the present case admittedly the
Defendants are not dealing in the goods in respect of
which the trade-mark of the Plaintiffs is registered and
therefore, there is no question of the Plaintiffs being
entitled to any temporary injunction."
(underlines and emphasis added by learned Single Judge)
6 According to the learned Single Judge, the view taken in
the decision of the Division Bench in the case of Raymond was that Sub-
Sections (4) and (5) of Section 29 operate in mutually exclusive fields
and therefore, the Defendant could legitimately use the Plaintiff's mark
as the Defendant's trade mark without running the risk of infringement
provided the Defendant dealt in dissimilar goods. The opinion
expressed by the learned Single Judge in paragraph Nos.16 to 20 in the
order dated 26th April, 2016 is relevant for the purposes of deciding the
reference. The said paragraphs read thus :-
"16. It seems to me that read with the definition of mark, it
is probably not correct to hold that Sections 29(4) and 29(5)
are disjunctive or mutually exclusive. As I noted, in a given
case such as this one, the Plaintiff has the same expression
as both its mark and its corporate name. The observations of
the Division Bench in paragraph 14 that Section 29(4) is a
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general principle that must yield to Section 29(5) is again
postulated on these two provisions being mutually exclusive.
That, I think, is incorrect: the two operate in different fields
and in different ways.
17. Second, in the case of a 'well known mark', a concept
now contemplated by the 1999 Act, it is entirely possible
that there may be an infringement by use of the mark as a
trade name but for dissimilar goods. The decision of the
Division Bench does not contemplate such a situation at all.
Indeed, its ration logically occludes all possibility of any
such situation. The definition of 'well-known trade mark' is
material:
2(1)(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-mentioned goods or services.
18. This makes is clear that, subject to the other
conditions, a 'well-known trade mark' could also include a
name, since the definition in Section 2(1)(zg) begins by
saying that a well-known trade mark "... means a mark...".
On an application of the Division Bench's ratio, a 'well-
known trade mark' when used by a defendant as a corporate
or trading name for dissimilar goods would receive no
protection at all. I cannot see how this could possibly be
correct. For instance, where a mark is used not only as a
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mark but also as a trade name, and especially where the
mark satisfies the tests of being a 'well known mark', the
similarity or dissimilarity of the goods should actually make
no difference at all. I have dealt with this again a little later
in this order, but it seems to me to completely ignore a
scenario where, for instance, a defendant adopts 'Xerox' or
'IBM' as its corporate or trading name (though not as a
mark) and manufactures pins or pianos. In the Division
Bench's reckoning of Section 29, neither of those proprietors
would be ever entitled to an injunction. This does not seem
to me to be the likely statutory intent.
19. I believe my view is fortified by the definition of the
word 'mark' and, too, also by the provisions of Section 29(8)
which do not seem to have been referred to by the Division
Bench at all. This section speaks of the use of a trade mark
being considered infringement in any advertising, if that
advertising is unfair and dishonest, is detrimental to the
distinctive character or is against the reputation of the trade
mark. Section 29(8) is unrelated to similarity or dissimilarity
of goods. It speaks only of that mark (lexically, also a
'name') being advertised. Where that advertising takes
unfair advantage, is a dishonest commercial or industrial
practice, detrimental to the distinctive character of the mark
or against its reputation, infringement is established. Now if
a particular defendant used the name as its name, and the
advertising was of that name and the other requirements of
Section 29(8) were met, it would make no difference at all
whether the goods are similar or dissimilar. That clear cut
distinction between the use of a mark as a mark and the use
of a mark as a name that the Division Bench found is all but
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obliterated in Section 29(8). In fact, it seems to me to follow
as a necessary consequence, that the Division Bench's
decision renders Section 29(8) not only otiose but wipes it
off the statute book entirely. In every single case under
Section 29, one would first have to look to the similarity or
dissimilarity of goods; and depending on the outcome of
that enquiry, the case would fall under Sections 29(1),
29(2), 29(4) or 29(5), but never under 29(8).
20. The implication of the Division Bench judgment seems
to be that a proprietor may use his mark either as a mark or
as a corporate name; but he can only succeed in
infringement against a defendant who either (a) uses the
mark as a mark for goods whether similar or dissimilar
(under Sections 29(1), 29(2) or 29(4) as the case may be);
or (b) uses the mark as a corporate name or trading style for
similar goods. The Plaintiff cannot get an injunction where
the defendant uses the mark (i) as a corporate name or
trading style and (ii) for dissimilar goods; but the same
Plaintiff may get an injunction only if the defendant
advertises his or its name in an unfair and dishonest manner,
detrimental to the distinctive character of the mark and
destructive of its reputation, irrespective of the nature of the
goods. Logically, this would mean that, for instance,
'Mercedes Benz', 'Volvo' or 'Whirlpool' could be used as the
name of a partnership firm, a company or a proprietorship
for, say, ice cream or hosiery or chartered accountancy
services; and the proprietors of those marks would have no
remedy, unless they were able to zero in on some dishonest
advertising of that name. The finding in paragraph 12 that it
is a necessary implication that if the defendant adopts the
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Plaintiff's trade mark as a trade name but deals in dissimilar
goods, this does not amount to infringement is probably not
a correct interpretation of Section 29(4) read with Sections
29(5) and 29(8) of the Trade Marks Act, 1999."
SUMMARY OF SUBMISSIONS OF PLAINTIFF
7 Mr. Iqbal Chagla, the learned Senior Counsel has made
detailed submissions on behalf of the Plaintiff. Mr. Ashish Kamat,
learned Counsel also made detailed submissions on behalf of the
Defendants.
8 The learned Senior Counsel appearing for the Plaintiff has
taken us through the decision of the Division Bench in the case of
Raymond Limited and in particular what is held in paragraphs 13 and 14
thereof. He pointed out the notes of various Classes under Section 29 of
the Trade Marks Act. He also invited our attention to the provisions of
the Trade and Merchandise Marks Act, 1958 (for short "the Old Act").
He also pointed out the difference between the provisions of the two
enactments. He submitted that the definition of "mark" under Section
2(1)(m) of the Trade Mark Act makes no distinction between use as a
trade mark and as a name. He pointed out that the definition of "mark"
which is an inclusive definition will naturally include a name. He
submitted that in the case of Raymond, the Division Bench held that
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phrase "use of a mark" means use of a mark as a mark and it does not
include the use of mark as a trade name. He pointed out Sub-Section
(5) of Section 29 and submitted that when the goods are similar, there
is no requirement of establishing deceptive dissimilarity and likelihood
of confusion as required under Sub-Sections (1) and (2) of Section 29.
He submitted that in view of Sub-Section (5), a Registered Trade Mark
is infringed by a person if he uses such trade mark as his trade name or
part of his trade name. He invited our attention to the opinion
expressed by the learned Single Judge that Sub-Sections (4) and (5) of
Section 29 are not disjunctive or mutually exclusive. He pointed out
that the learned Single Judge observed that Sub-Sections (4) and (5) of
Section 29 operate in different fields and different ways. The learned
Senior Counsel invited our attention to a decision of the learned Single
Judge of this Court in the case of Poddar Tyres Ltd. Vs. Bedrock Sales
Corporation Ltd and another2. He invited our attention to the finding
recorded by the learned Single Judge in paragraph 46 of the said
decision wherein it was held that adoption of a word as a part of
corporate name amounts to infringement of a registered Trade Mark.
He invited our attention to another decision of the learned Single Judge
in the case of Pizza Hut International LLC & Ors. Vs. Pizza Hut India Pvt.
Limited 20033. This decision accepts an argument that use of another's
2. 1993-PTC-253
3. 105(1) Bom. L.R. 298
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trade mark in the corporate name or trading style amounts to
infringement.
9 The learned Senior Counsel appearing for the Plaintiff
urged that a statute must be read as a whole and one provision of an
Act should be construed with reference to the other provision of the
same Act so as to make a consistent harmonious interpretation of the
whole statute. The Court must ascertain intention of the legislature by
considering not merely the clauses to be construed but the scheme of
the entire statute. He submitted that a statute cannot be interpreted to
mean that the Parliament had given something by one hand which is
taken away by other. In this behalf, he relied upon a decision of the
Apex Court in the case of Godawat Pan Masala Produce I.P. Limited and
others Vs. Union of India and others4.
10 He invited our attention to a decision of the Division Bench
of the Madras High Court in the case of Dhiren Krishna Paul trading as
Health and Glow Clinic & another v. Health and Glow Retailing Private
Limited5. He invited our attention a decision of the learned Single Judge
of Delhi High Court in the case of Bloomberg Finance LP
v. Prafull Saklecha & Ors.6 He invited our attention to what is held in
paragraph 51 by the learned Single Judge. He pointed out that the
4. (2004) 7 SCC 68
5. (2012-3-L.W.75)
6. 2013 SCC Online Delhi 4159
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learned Single Judge held that Sub-Section (5) of Section 29 cannot be
intended to be exclusive of all situations of the use of a registered Trade
Mark as a part of the corporate name. Section 29(5) cannot be said to
render Section 29(4) otiose. He urged that the learned Single Judge of
the Delhi High Court has rightly held that the object of Section 29(5)
was to offer better protection and not to shut the door of Section 29(4)
to a registered proprietor who is able to show that the registered mark
enjoying the reputation in India has been used by the Defendants as
part of his corporate name but his business is other than that for which
the mark has been registered. He urged that what is held by the learned
Single Judge of the Delhi High Court completely supports the view
taken by the learned Single Judge in the present case. He also invited
our attention to the reports submitted by the Standing Committee on
the Trade Marks Bill.
11 He also invited our attention to Sub-Section (8) of Section
29. He urged that Sub-Section (8) of Section 29 will apply irrespective
of the nature of goods or the nature of business of Defendants. He
pointed out that Sub-Section (8) of Section 29 has been overlooked by
the Division Bench in the case of Raymonds. He would, therefore,
submit that the view taken by the Division Bench in the case of
Raymond Limited may not be correct and to make the Trade Marks Act
more effective, a different view will have to be taken.
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12 The learned Senior Counsel appearing for the Plaintiff also
relied upon the decision of the learned Single Judge in the case of
Kirloskar Diesel Recon Pvt. Ltd. V. Kirloskar Proprietary Ltd. 7. While
referring to the Parliamentary Standing Committee report on the Trade
Mark Bill, 1993 he urged that the object of the bill was to provide for
more specific and greater degree of protection against the infringement.
He submitted that Sub-Section (4) of Section 29 is a major departure
from the old Act which is incorporated for providing a greater
protection to the registered proprietor of a trade mark. His submission
is that Sub-Section (5) of Section 29 cannot be interpreted so as to
dilute the rights conferred by Sub-Sections (1), (2) and (4). He
submitted that it prohibits the very adoption of trading style that uses as
its name or part of its name a registered trade mark so long as the
business concern is dealing in any goods or services in respect of which
the trade mark is registered. He invited our attention to Sections 20 and
22 of the Companies Act, 1956 and submitted that this interpretation is
in conformity with the said provisions. He also invited our attention to
the consequences of accepting the argument that Sub-Section (5) of
Section 29 is the sole repository of the right to sue for infringement in
respect of use of a trading style.
7. AIR 1996 Bom 149
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SUMMARY OF SUBMISSIONS OF THE DEFENDANTS
13 The learned counsel appearing for the Defendants invited
our attention to the definitions under the Trade Marks Act. He also
invited our attention to Section 29 of the Old Trade Marks Act. His
submission is that on plain reading of Sub-Section (1) to Sub-Section
(4) of the Trade Marks Act, it is apparent that the same provide for a
different species of infringement. He submitted that the said Sub-
Sections apply in cases where it is a registered trade mark versus a mark
situation. He submitted that none of these Sub-Sections deal with a
registered trade mark versus trade name or registered trade mark
versus business concern name. He submitted that the scenario
registered trade mark versus trade name or business name is dealt with
only by Sub-Section (5). He submitted that when it comes to alleged
infringement by virtue of use of a mark as part of trade name, or
business concern name, it is only Sub-Section (5) of Section 29 which
will apply. He relied upon a commentary by Venkateswaran on Trade
Marks and Passing Off (Sixth Edition). He also relied upon the law of
Trade Marks by K. C. Kailasham (III Edition). He relied upon a decision
of Delhi High Court in the case of Cronical Publication Pvt. Ltd. vs.
Chronical Academy Pvt. Ltd.8 He also relied upon two other decisions of
the Delhi High Court in the case of Vardhman Properties Ltd. CA Vs.
8. 2010(44) PTC 78 (Delhi)
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Vardhman Developers & Infrastructures9 and Klas Tape Company Vs.
Vinod Hardware Store & Ors.10 He submitted that literal interpretation of
Sub-Sections (4) and (5) will have to be made. He relied upon certain
decisions of the Apex Court in support of the submission that in the
matters of interpretation of statutes when the language of the statute is
plain, the issue of hardship or legislative intent has no role to play. He
submitted that Sub-Section (4) of Section 29 never gave the registered
proprietor a right to sue for infringement by virtue of use of a trade or
business name. He pointed out Section 35 of the Trade Marks Act which
according to him saves the bonafide use by any person of his name or
that of his place of business, or of the name, or of the place of business,
of any of his predecessors in business. He submitted that the Trade
Marks Act treats the use of a name differently than use of mark. He
relied upon the decision of the Apex Court in the case of Sultana Begum
Vs. Prem Chand Jain11. He submitted that in the original Trade Mark
Bill, 1993 the words "dealing in goods or services in respect of the
Trade Mark is registered" were not included in Sub-Section (5). A
recommendation was made by the Parliamentary Standing Committee
for inclusion of the said words. Thus, he submitted that the aforesaid
words in Sub-Section (5) have been introduced to impose restrictions
9. 2011(45) PTC 253 (Delhi)
10. 2010(44) PTC 39 (Delhi)
11. (1997) 1 SCC 373
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on the right of the registered proprietor of the trade mark to sue for
infringement injunction in relation to the business or trade name. He
reiterated that the legislative intent appears to restrict the right of the
registered proprietor to sue for infringement in relation to a business
trade or corporate name. He invited our attention to the Trade Marks
Act, 1994 of the United Kingdom. He submitted that the Trade Marks
Act is based on the said Act of 1994. He submitted that the United
Kingdom Act does not have a provision akin to provisions of Sub-
Section (5) of Section 29. He submitted that the Parliament appears to
have accepted the recommendations made by the P.S.C Report.
14 Referring to the decisions relied upon by the Plaintiff in the
cases of Kirloskar Diesel Recon, Poddar Tyres and Pizza Hut International,
he submitted that these cases arose out of passing off actions and Sub-
Section (2) of Section 27 keeps the common law remedy of passing off
as it is. Moreover, these cases did not involve dissimilar goods or
services.
REJOINDER BY THE PLAINTIFF
15 The learned Senior Counsel appearing for the Plaintiff
thereafter dealt with the decisions cited by the learned counsel
appearing for the Defendants. He submitted that if the Defendant uses a
registered trade mark only as a corporate name or trading name or style
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in respect of dissimilar goods, the Plaintiff has a remedy under Sub-
Section (4) of Section 29.
CONSIDERATION OF SUBMISSIONS
16 We have given careful consideration to the submissions. We
are dealing with the submissions in the context of the questions framed
by the learned Single Judge which are quoted in paragraph 1 above.
The issue whether the decision in the case of Raymond by a Division
Bench requires reconsideration is redundant in the sense that now a
larger Bench is independently considering the issue. Firstly, it is
necessary to make a reference to the relevant provisions of the Trade
Marks Act. Clause (m) of Sub-Section (1) of Section 2 defines mark
which reads thus :-
"(m) "mark" includes a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods,
packaging or combination of colors or any combination
thereof."
17 Clause (zb) of Sub-Section (2) of Section 2 defines trade
mark which reads thus :-
(zb) "trade mark" means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person from
those of others and may include shape of goods, their
packaging and combination of colors, and in relation to
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Chapter XII (other than section 107), a registered trade
mark or mark used in relation to goods or services for
the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or
services, as the case may be, and some person having
the right as proprietor to use the mark, and in relation
to other provisions of this Act, a mark used or proposed
to be used in relation to goods or services for the
purpose of indicating or so to indicate to a connection
in the course of trade between the goods or services, as
the case may be, and some person having the right,
either as proprietor or by way of permitted user, to use
the mark whether with or without any indication of the
identity of that person, and includes a certification
trade mark or collective mark.
18 Section 27 deals with remedy of passing off. Sub-Section
(2) of Section 27 protects the common law remedies for passing off.
Section 28 is again relevant which reads thus :-
"28. Rights conferred by registration.-
(1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to the
registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the
goods or service in respect of which the trade mark is
registered and to obtain relief in respect of
infringement of the trade mark in the manner provided
by this Act.
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(2) The exclusive right to the use of a trade mark given
under sub-section (1) shall be subject to any conditions
and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors
of trade marks, which are identical with or nearly
resemble each other, the exclusive right to the use of
any of those trade marks shall not (except so far as
their respective rights are subject to any conditions or
limitations entered on the register) be deemed to have
been acquired by any one of those persons as against
any other of those persons merely by registration of the
trade marks but each of those persons have otherwise
the same rights as against other persons (not being
registered proprietor."
19 As per Sub-Section (1) of Section 28, exclusive right is
conferred on a registered proprietor of the trade mark to use the trade
mark in relation to the goods or services in respect of which trade mark
is registered and to obtain relief in respect of the infringement of the
trade mark in the manner provided by the Trade Marks Act. The right is
subject to other provisions of the the Trade Marks Act including Section
29. Section 135 of the Trade Marks Act lays down the nature of relief,
the Court may grant in a suit brought for infringement of the trade
mark or for passing off. Section 135 reads thus :-
135. Relief in suits for infringement or for passing off.-
"(1) The relief which a court may grant in any suit for
infringement or for passing off referred on in section
134 includes injunction (subject to such terms, if any,
as the court thinks fit) and at the option of the Plaintiff,
either damages or an account of profits, together with
or without any order of the Plaintiff, either damages or
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an account of profits, together with or without any
order for the delivery-up the infringing labels and
marks for destruction or erasure.
(2) The order of injunction under sub-section (1) may
include an ex parte injunction or any interlocutory
order for any off the following matters, namely :-
(a) for discovery of documents.
(b) preserving of infringing goods, documents or other
evidence which are related to the subject-matter of
the suit.
(c) restraining the defendant from disposing of or
dealing with his assets in a manner which may
adversely affect Plaintiffs ability to recover
damages, costs or other pecuniary remedies which
may be finally awarded to the Plaintiff.
(3) Notwithstanding anything contained in sub-section (1),
the court shall not grant relief by way of damages
(other than nominal damages) or on account of profits
in any case -
(a) where in a suit for infringement of a trade mark,
the infringement complained of is in relation to a
certification trade mark or collective mark, or
(b) where in a suit for infringement the defendant
satisfies the court-
(i) that at the time he commenced to use the trade
mark complained of in the suit, he was unaware
and had no reasonable ground for believing
that the trade mark of the Plaintiff was on the
register or that the Plaintiff was a registered
user using by way of permitted use, and
(ii) that when he becomes aware of the existence
and nature of the Plaintiffs right in the trade
mark, he forthwith ceased to use the trade mark
in relation to good or services in respect of
which it was registered, or
(c) where in suit for passing off, the defendant
satisfies the court-
(i) that at the time he commenced to sue the trade
mark complained of in the suit he was unaware
and had no reasonable ground for believing
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that the trade mark of the Plaintiff was in use,
and
(ii) that when he became aware of the existence
and nature of the Plaintiffs right in the trade
mark, he forthwith ceased to use the trade mark
complained of."
20 Now, what is relevant for our consideration is the meaning
of infringement of a registered trade mark which is provided in Section
29 which reads thus :-
"29. Infringement of registered trade marks.--(1) A
registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way
of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to, the
trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner
as to render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a
mark which because of--
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the
identity or similarity of the goods or services
covered by such registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such
registered trade mark, is likely to cause confusion
on the part of the public, or which is likely to have
an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2),
the court shall presume that it is likely to cause
confusion on the part of the public.
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(4) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by
way of permitted use, uses in the course of trade, a
mark which--
(a) is identical with or similar to the registered trade
mark; and
(b) is used in relation to goods or services which are
not similar to those for which the trade mark is
registered; and
(c) the registered trade mark has a reputation in India
and the use of the mark without due cause takes
unfair advantage of or is detrimental to, the
distinctive character or repute of the registered
trade mark.
(5) A registered trade mark is infringed by a person if he
uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern
or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is
registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under
the registered trade mark, or offers or supplies
services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers
or in advertising.
(7) A registered trade mark is infringed by a person who
applies such registered trade mark to a material
intended to be used for labelling or packaging goods, as
a business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew
or had reason to believe that the application of the
mark was not duly authorised by the proprietor or a
licensee.
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(8) A registered trade mark is infringed by any advertising
of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to
honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade
mark consist of or include words, the trade mark may
be infringed by the spoken use of those words as well
as by their visual representation and reference in this
section to the use of a mark shall be construed
accordingly."
The corresponding Section 29 in the old Act reads thus:
"Old Act S. 29.--Infringement of trade marks.-- (1) A
registered trade mark is infringed by a person who, not
being the registered proprietor of the trade mark or a
registered user thereof using by way of permitted use,
uses in the course of a trade mark which is identical
with, or deceptively similar to, the trade mark, in
relation to any goods in respect of which the trade mark
is registered and in such manner as to render the use of
the mark likely to be taken as being used as a trade
mark.
(2) In an action for infringement of a trade mark registered
in Part B of the register an injunction or other relief shall
not be granted to the plaintiff if the defendant
establishes to the satisfaction of the court that the use of
the mark of which the plaintiff complains is not likely to
deceive or cause confusion or to be taken as indicating a
connection in the course of trade between the goods in
respect of which the trade mark is registered and some
person having the right, either as registered proprietor
or as registered user, to use the trade mark."
21 It will be necessary to analyze Section 29. Section 29
defines various types of infringement of Trade Marks. Broadly, it can be
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said that Sub-Section (1) of Section 29 is identical to Sub-Section (1) of
Section 29 of the old Act. Under Sub-Section (1), a registered trade
mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, (i) uses in the course of trade,
a mark which is identical with, or deceptively similar to the trade mark,
(ii) in relation to goods or services in respect of which the trade mark is
registered and (iii) in such manner as to render the use of the mark
likely to be taken as being used as a trade mark. Thus, to attract Sub-
Section (1), there has to be the use of a mark during the course of trade
which is identical to the registered trade-mark or deceptively similar to
the registered trade-mark. Use of such mark becomes infringement
provided it is used in relation to the goods or services for which the
trade-mark is registered in such a manner that the use of the mark is
likely to be taken as being used as a trade-mark.
22 Sub-Section (2) is applicable when 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 (a) which is likely to cause confusion
on the part of the public, or (b) which is likely to have an association
with the registered trade mark due to (i) its identity with the registered
trade mark and the similarly of the goods or services covered by such
registered trade mark or, (ii) its similarly to the registered trade mark
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and the identity or similarly of the goods or services covered by such
registered trade mark, or (iii) its identity with the registered trade mark
and the identity of the goods or services covered by such registered
trade mark. If a case falls in clause (c) of Sub-Section (2), in view of
Sub-Section (3), it will have to be presumed that it is likely to cause
confusion on the part of the public.
23 Sub-Section (4) is crucial for our consideration. It brings
about a major departure from the old Act. It applies in case of a mark
which is used during the course of trade in relation to goods or services
which are not similar to those for which the trade mark is registered
provided other conditions in the Sub-Section are fulfilled. The said
conditions are (i) the mark used is identical with or similar to the
registered trade mark , (ii) the registered trade mark has a reputation in
India and (iii) by the use of the mark without due cause, the user takes
unfair advantage of or is detrimental to, the distinctive character or
repute of the registered trade mark.
24 Thus for attracting Sub-Section (4), it is not necessary for
the Plaintiff to show possibility of confusion by the use of a mark which
is identical to or similar to the registered trade mark in relation to
goods or services which are not similar to those for which the trade
mark is registered.
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25 Now we come to Sub-Section (5). It applies when a person
uses a registered trade mark as his trade name or part of his trade name
or name of his business concern or part of the name of his business
concern provided his trade or business is of dealing with goods or
services in respect of which the trade mark is registered. If both the
conditions are satisfied, it is not necessary to prove anything further for
establishing the infringement. It is not necessary to prove that the use of
trade mark as a trade or business name is likely to cause any confusion
on the part of the public. It is not necessary to prove that such user
takes unfair advantage or such use is detrimental to the distinctive
character of the registered trademark or its repute. Therefore, Delhi
High Court in the case of Bloomberg has rightly described the provision
of Sub-Section (5) as "no fault provision". This provision is distinct from
Sub-Section (4). To attract this Sub-Section, the person who infringes
the trade mark should be doing trade or business in goods or services in
respect of which the trade mark is registered. Sub-Section (4) applies
when the person against whom allegation of infringement is made uses
a mark in relation to goods or services which are not similar to those for
which the trade mark is registered. Sub-Section (4) does not refer to
use of a registered trade mark as a part of corporate/trade/business
name. It applies when a mark is used during the course of trade in
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relation to dissimilar goods or services. Sub-section (5) applies
specifically to a case where the registered trade mark is used as a part
of business/corporate name provided the business of the infringer is of
dealing with the goods or services in respect of which the trade mark is
registered.
26 Unless both the conditions are satisfied, Sub-Section (5)
will not apply. The question before us is when the first condition of Sub-
Section (5) is satisfied but the second is not satisfied, whether Sub-
Section (4) can be invoked. In other words, the question is whether a
person who is dealing with goods or services which are dissimilar to
those for which the trade mark is registered, uses registered trade mark
as a part of business/corporate name, such use will attract the mischief
covered by Sub-Section (4). The plain language used by the Sub-
Sections (4) and (5) answers the question. Sub-Section (4) provides
that "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..."
Thus, the provision is attracted when a mark which is identical with or
similar to registered trade mark is used in the course of trade in relation
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to goods or services which are not similar to those for which the trade
mark is registered. Whereas Sub-Section (5) provides that "A registered
trade mark is infringed by a person if he uses such registered trade mark,
as his trade name or part of his trade name, or name of
his business
concern or part of the name, of his business concern..." .
27 The Sub-Section (4) uses the words "in the course of trade"
and "in relation to goods or services" which are absent in Sub-Section
(5). The Sub-Section (5) uses the words "......... if he uses such
registered trade mark, as his trade name or part of his trade name, or
name of his business concern or part of the name, of his business
concern.." These words are conspicuously absent in the Sub-Section (4).
The difference in the phraseology and language used in the two Sub-
Sections makes it clear that Sub-Section (4) applies in "trade mark
versus mark" situation. It applies when the mark is used in the course of
trade in relation to goods and services. Sub-Section (5) applies to a
"trade mark versus trade/corporate/business name" situation. It is a
special provision which is different from Sub-Sections (1), (2) and (4).
Thus, Sub-Sections (4) and (5) apply to different situations arising out
of use of a mark. Sub-Section (5) does not make Sub-Section (4) otiose.
The fact that the definition of the word "mark" includes "name" is of no
consequence while interpreting Sub-Sections (4) and (5). If we hold
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that Sub-Section (4) will apply to those cases where the first condition
of Sub-Section (5) is satisfied but second one is not satisfied, the
requirement specifically incorporated in Sub-Section (4) of the mark
being used in relation to goods and services will become redundant. A
statute cannot be interpreted in such a manner. The use of trade mark
as a part of corporate/business/trade name cannot be read into Sub-
Section (4).
28 The Apex Court in the case of Vijay Narayan Thatte v. State
of Maharashtra12, in paragraph 22 held thus:
22. In our opinion, when the language of the statute is
plain and clear then the literal rule of interpretation
has to be applied and there is ordinarily no scope for
consideration of equity, public interest or seeking the
intention of the legislature. It is only when the
language of the statute is not clear or ambiguous or
there is some conflict, etc. or the plain language
leads to some absurdity that one can depart from the
literal rule of interpretation. A perusal of the proviso
to Section 6 shows that the language of the proviso is
clear. Hence the literal rule of interpretation must be
applied to it. When there is a conflict between the law
and equity it is the law which must prevail. As stated in
the Latin maxim dura lex sed lex which means "the law is
hard but it is the law".
(emphasis added)
29 The Apex court in the case of United India Insurance Co.
Ltd. v. Orient Treasures (P) Ltd.13, in paragraph 39 held thus:
12. (2009) 9 SCC 92
13. (2016) 3 SCC 49
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"39. It is a settled rule of interpretation that when the
words of a statute are clear, plain or unambiguous
i.e. they are reasonably susceptible to only one
meaning, the courts are bound to give effect to that
meaning irrespective of consequences. In other words,
when a language is plain and unambiguous and admits
of only one meaning, no question of construction of a
statute arises, for the Act speaks for itself.
(emphasis added)
30 We have already quoted the observations of the learned
Single Judge. He was of the view that unless it is held that Sub-Section
(4) of section 29 can be also applied to the case of a person adopting
trade mark as a part of corporate/trade/business name, in factual
situations set out by him, the proprietors of the registered trade marks
will not be protected as they will not be able to sue for infringement. In
the present case, the language used by both the Sub-Sections is plain
and clear. There is no ambiguity. The language does admit more than
one meaning. Hence, literal interpretation will have to be adopted.
Possible inconvenience or prejudice to a class or classes of proprietors of
registered trade marks is no ground to read something in Sub-Section
(4) which is not there and give a meaning which is contrary to plain
meaning. Sub-Section (8) of Section 29 has no relevance at all while
interpreting Sub-Sections (4) and (5). Sub-Section (8) applies only in
case of advertising of a trade mark.
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31 Now, coming to Sub-Sections (1) and (2), the same apply
on its plain meaning only to "trade mark versus mark" situation. Both
the sub-sections use the words "uses in the course of trade". They do
not refer to use of trade mark as a part of corporate/trade/business
name. Both the sub-sections do not apply when use of a registered trade
mark is made by the Defendant as a part of trade/corporate/ business
name.
32 At this stage, we may make a reference to objects and
reasons on clause 29 which read thus:
"This clause deals with infringement of trade marks and
explicitly states as to the various acts which constitute
infringement. Sub-clause (1) states the general
proposition of the law in this respect and lays down
that when a registered trade mark is used by a person
who is not entitled to use such a trade mark under the
law, it constitutes infringement. In pursuance of the
relative grounds for refusal of registration specified in
clause 11, the scope of this clause has been enlarged to
explicitly state that a registered trade mark is infringed,
if -
(a) the mark is identical and is used in respect of
similar goods or services; or
(b) the mark is similar to the registered trade mark
and there is an identical or similarity of the
goods or services covered by the trade mark; or
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(c) the trade mark is identical and is used in relation
to identical goods or services;
and that such use is likely to cause confusion on
the part of the public or is likely to be taken to
have an association with the registered trade
mark.
This clause further lays down that in cases falling in
category (c) above, there will be a legal presumption of
likelihood of confusion on the part of the public.
Sub-clause (4) seeks to lay down that a registered trade
mark is infringed by a person, if he uses a mark which
is identical or similar to the trade mark, but on
goods or services which are not similar, provided the
registered trade mark has a reputation in India and the
use of the mark without due cause would take unfair
advantage or or is detrimental to the distinctive
character or repute of the registered trade mark.
Sub-clause (5) seeks to prevent a person from
adopting someone else's trade mark as part of that
person's trade name or business name by explicitly
providing that such action shall also constitute an
infringement under this act. This provision will bring
this clause in harmony with the proposed amendments
to sections 20 and 22 of the Companies Act, 1956."
Though, the notes may not be conclusive, the same support the
interpretation which we are adopting.
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33 The Parliamentary Standing Committee on Industry
appointed by Rajya Sabha submitted its Eighth Report on the Trade
Marks Bill, 1993. The report records that the Committee held six
meetings. In paragraph 10 of the Report, the Committee recorded its
conclusions regarding the Bill. In the said paragraph, the Committee
observed that the Bill seeks to provide more specific and greater degree
of protection against infringement. The Committee suggested several
changes in the Trade Mark Bill. In Sub-Section (5) of Section 29, the
Committee recommended addition of the words "dealing in goods or
services in respect of which the trade is registered". It appears that on
the basis of recommendation of the said Committee that the aforesaid
words were added in Sub-Section (5) of Section 29. In absence of the
added words, use of registered trade mark by a person as his trade
name or part of his trade name or name of his business concern or part
of the name of his business concern would have amounted to
infringement of trade mark even though he was not dealing in goods or
services in respect of which the trade mark is registered.
34 The learned Senior Counsel appearing for the Plaintiff
relied upon the decision of the learned Single Judge in the case of
Poddar Tyres Ltd. We must note here that the learned Single Judge was
not dealing with the Trade Marks Act. We may note that in the facts of
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that case, the Plaintiff were holding trade marks in respect of rubber
tyres and tubes. The trade marks of the Plaintiffs contained the word
"Bedrock". Even the business of the Defendants was of dealing in
rubber tyres and tubes. It is in the context of this fact situation that in
paragraph 46, the learned Single Judge observed that by adopting the
word "Bedrock" as a part of their corporate name, the Defendants have
infringed the registered trade marks, of which the Plaintiff were the
registered proprietors. Hence, the said decision will not help the
Plaintiff.
35 In the case of Pizza Hut International LLC, both the
Plaintiffs and Defendants were engaged in the same activity. It is in this
context that in paragraph 19, the learned Single Judge dealt with the
argument based on use of another's trade mark in a corporate name or
trading style which amounted to infringement of the registered trade
mark. In the case of Diren Krishna Paul trading as Health and Glow
Clinic and another vs. Health and Glow Retailing Private Limited, a
Division Bench of the Madras High Court was dealing with Section 29
of the Trade Marks Act. In paragraph 20 of the decision, the Division
Bench dealt with the decision in the case of Raymond Ltd. The Division
Bench observed that there is no quarrel over the proposition laid down
in paragraph 14 of the decision in the case of Raymond Ltd. Once a
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person uses the trade mark as part of their trade name, the suit will be
governed by Sub-Section (5) of Section 29 and therefore, reliance on
any other provision including Sub-Section (4) of Section 29 is ruled out.
The decision of this Court in the case of Kirloskar Diesel will not help
the Plaintiff. It holds that the word trade mark under the old Act
includes trade name.
36 Then we come to the decision of the learned Single Judge
of Delhi High Court in the case of Bloomberg Finance Limited. In the
case before the learned Single Judge, the Plaintiffs were claiming that
their trade mark (Bloomberg) was being used in 100 countries and the
same was being used in India through their associate companies from
the year 1996. It was claimed that the Plaintiff was reaching millions of
people worldwide through Bloomberg Television and Bloomberg Radio
Programming. It is held that the fourth Defendant company was
carrying on business from Indore in Madhya Pradesh and that the first
and second Defendants had formed 'Bloomberg' companies. A suit was
brought before the Delhi High Court seeking inter alia to restrain the
Defendants from using the trade mark which is identical or deceptively
similar to the Plaintiff well known mark 'Bloomberg' and which may
cause infringement of the trade mark 'Bloomberg'. The contention
raised before the Delhi High Court by the Plaintiff was that the
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Defendants were continuing use of the word 'Bloomberg' for their real
estate business which would affect the reputation and distinctive
character of the registered mark of the Plaintiff. Reliance was placed by
the Plaintiff on Sub-Section (4) of Section 29 of the Trade Marks Act.
The contention of the Defendants as noted in paragraph 28 of the
judgment was that only Sub-Section (5) of Section 29 was exhaustive of
the issue and if the Plaintiff was not able to make out a case under Sub-
Section (5), they were not entitled to injunction. The learned Single
Judge of the Delhi High Court, thereafter proceeded to consider
provisions of Section 29. Paragraph Nos.37, 38 and 39 deal with Sub-
Section (4) of Section 29 which reads thus :-
"37. Section 29(4) is also distinct from Section 29(1) to (3)
of the TM Act in another important aspect. The element
of having to demonstrate the likelihood of confusion is
absent. Perhaps to balance out this element, the
legislature has mandated the necessity of showing that
(a) the mark has a reputation in India (b) that the mark
has a distinctive character (c) the use by the infringer is
without due cause. In other words, the legislative intent
is to afford a stronger protection to a mark that has a
reputation without the registered proprietor of such
mark having to demonstrate the likelihood of confusion
arising from the use of an identical or similar mark in
relation to dissimilar goods and services. The words
'detriment' in the context of the 'distinctive character' of
the mark brings in the concept of 'dilution' and
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'blurring'. In the context of 'repute' they are also
relatable to the concept of 'tarnishment' and
'degradation'. The words "takes 'unfair advantage"
refers to 'free-riding' on the goodwill attached to mark
which enjoys a reputation. The disjunctive 'or' between
the words 'distinctive character' and 'repute' is
designedly inserted to cater to a situation where a mark
may not have a distinctive character and yet may have
a reputation.
38. Section 2(zg) of the TM Act defines a 'well known trade
mark' in relation to any goods or services to mean '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 service 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-
mentioned goods or services.' Under Section 11(9)(i)
and (v), for the purposes of registration of a well-
known mark it is not necessary for such mark to have
been used in India or be well-known to the public at
large in India. It must be well known t a substantial
segment of the relevant public.
39. It may not be necessary for the proprietor of a
registered mark to show that it is a 'well-known
trademark' as defined in Section 2(zg) although if in
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fact it is, it makes it easier to satisfy the 'reputation'
requirement of Section 29(4) of the TM Act. The
presumption of distinctiveness attached to a registered
mark is a rebuttable one. At the interim stage, either of
these elements should be shown prima facie to exist.
Whether in fact these elements are satisfied would
depend on the evidence led by the parties at trial."
37 In paragraphs 41 to 44, the learned Single Judge discussed
Sub-Section (5) of Section 29 which reads thus :-
41. Turning to Section 29 (5) of the TM Act 1999, it is seen
that it relates to a situation where (i) the infringer uses
the registered trademark "as his trade name or part of
his trade name, or name of his business concern or part
of the name, of his business concern" and (ii) the
business concern or trade is in the same goods or
services in respect of which the trade mark is
registered. If the owner/proprietor of the registered
trade mark is able to show that both the above
elements exist then an injunction restraining order the
infringer should straightway follow. This is in the
nature of a per se or a 'no-fault' provision which offers
a higher degree of protection where both the above
elements are shown to exist. For the purpose of Section
29(5) of the TM Act 1999, there is no requirement to
show that the mark has a distinctive character or that
any confusion is likely to result from the use by the
infringer of the registered mark as part of its trade
name or name of the business concern.
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42. However, in a situation where the first element is
present and not the second then obviously the
requirement of Section 29(5) is not fulfilled. The
question is whether in such a situation the owner or
proprietor of the registered trade mark is precluded
from seeking a remedy under Section 29(4) of TM Act,
1999 if the conditions attached to Section 29(4) are
fulfilled.
43. In the considered view of this Court, given the object
and purpose of Section 29(1) to (4), Section 29(5)
cannot be intended to be exhaustive of all situations of
uses of the registered mark as part of the corporate
name. Section 29(5) cannot be said to render Section
29(4) of the TM Act, 1999 otiose. In other words, the
legislature may not be said to have intended not to
provide a remedy where the registered trade mark is
used as part of the corporate name but the business of
the infringer is in goods or services other than those for
which the mark is registered.
44. The Statement of Objects and Reasons of the TM Act
1999 explain that sub-section (5) of Section 29 "seeks
to prevent a person from adopting someone else's trade
mark as part of that person's trade name or business
name by explicitly providing that such action shall also
constitute an infringement under this Act. This
provision will bring this clause in harmony with the
proposed amendments to Sections 20 and 22 of the
Companies Act, 1956." Sections 20 and 22 of the CA
have been amended to provide that where the name of
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a company resembles a registered trade mark, then the
registration of the company in that name can be
refused. The ROC is expected to gather information
from the TM Registry. Under Section 22(5) of the CA,
the owner of the registered trade mark can apply to
have the name of a company that is purportedly
infringing the mark cancelled. All of this only
strengthens the conclusion that where Section 29(5)
offers a high degree of protection where both the
elements envisaged in that provision exist, it is not
meant to preclude the owner of a registered mark
remediless when only the first and not the second
element exists."
38 In paragraphs 45.4 and 45.5, the learned Single Judge held
thus :-
"45.4 In coming to the above conclusion the Bombay High
Court had no occasion to consider an important point
of distinction between Section 29(1) to (4) and Section
29(5). The latter does not require the registered
proprietor to show that any confusion is likely to result
from the use by the infringer of the registered mark as
part of its trade name or name of the business concern
or that the mark has a distinctive character or that any
detriment is likely to be caused to the reputation of the
mark or that the infringer has taken unfair advantage
of the mark. These distinctions make it clear that the
purpose of Section 29(5) of the TM Act, 1999 was to
offer a better protection and not to shut the door of
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Section 29(4) to a registered proprietor who is able
to show that the registered mark enjoying a
reputation in India has been used by the infringer
as part of his corporate name but his business is in
goods and services other than that for which the
mark has been registered. In this way it is possible
to harmonise the various sub-sections of Section 29
with none of them being rendered otiose.
45.5 A factor that perhaps weighed with the Division Bench in
Raymond Limited was that RPPL were using 'Raymond' as a
part of their corporate name since 1983 whereas the suit
was filed in 2006. Also, it appears that the Court was not
called upon to examine whether the registered mark
enjoyed a reputation or whether it had a distinctive
character. For the above reasons, the decision in Raymond
Limited cannot be said to be conclusive of the interpretation
to be placed on Section 29(5) read with Section 29(4) of
the TM Act 1999."
39 In paragraph 51, the learned Single Judge recorded his
conclusions which reads thus :-
"51. The legal position emerging as a result of the above
discussion may be summarised as under:
(a) Section 29(5) of the TM Act 1999 relates to a situation
where (i) the infringer uses the registered trademark
"as his trade name or part of his trade name, or name of
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his business concern or part of the name, of his
business concern" and (ii) the business concern or trade
is in the same goods or services in respect of which the
trade mark is registered.
(b) This is in the nature of a per se or a 'no-fault' provision
which offers a higher degree of protection where both
the above elements are shown to exist. If the
owner/proprietor of the registered trade mark is able to
show that both the above elements exist then an
injunction order restraining order the infringer should
straightway follow. For the purpose of Section 29(5) of
the TM Act 1999 there is no requirement to show that
the mark has a distinctive character or that any
confusion is likely to result from the use by the
infringer of the registered mark as part of its trade
name or name of the business concern.
(c) However, in a situation where the first element is
present and not the second then obviously the
requirement of Section 29(5) is not fulfilled. Where the
registered trade mark is used as part of the
corporate name but the business of the infringer is
in goods or services other than those for which the
mark is registered, the owner or proprietor of the
registered trade mark is not precluded from seeking
a remedy under Section 29(4) of TM Act 1999 if the
conditions attached to Section 29(4) are fulfilled.
(d) Given the object and purpose of Section 29(1) to (4),
Section 29(5) cannot be intended to be exhaustive of
all situations of uses of the registered mark as part of
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the corporate name. Section 29(5) cannot be said to
render Section 29(4) otiose. The purpose of Section
29(5) was to offer a better protection and not to shut
the door of Section 29(4) to a registered proprietor
who is able to show that the registered mark
enjoying a reputation in India has been used by the
infringer as part of his corporate name but his
business is in goods and services other than that for
which the mark has been registered.
(e) A passing off action is maintainable in the case of a well
known mark even if the goods and services being dealt
with by the parties are not similar."
( Emphasis added)
For the reasons which we have set out earlier, we are unable to concur
with the view expressed in the aforesaid highlighted portions of
paragraphs 45.4 and 51 of the Judgment which otherwise is a very
erudite opinion of the learned single Judge of the Delhi High Court. He
has read into Sub-Section (4) the use of a trade mark as a part of
corporate/trade/ business name. With greatest respect, Sub-Section (4)
applies only when a mark is used during the course of trade in relation
to goods or services which are not similar to those for which the trade
mark is registered. By way of illustration, we may say that when a
trademark "XYZ" is registered in respect of goods "A" is used while
selling goods of the category "B" which are not similar to "A", Sub-
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Section (4) will apply if the other conditions are satisfied. Sub-Section
(5) will apply when a trademark "XYZ" is registered in respect of the
goods "A" and the Defendant uses "XYZ" as a part of the name of his
business concern dealing in the goods similar to the goods in respect of
which the trade mark is registered.
40 As far as interpretation of statutes is concerned, reliance
was placed by the Plaintiff on the decision of the Apex Court in the case
of Godawat Pan Masala Products I.P. Ltd. v. Union of India and in
particular what is held in paragraph 29 which reads thus :-
"29. It is an accepted canon of construction of statutes that
a statute must be read as a whole and one provision of
the Act should be construed with reference to other
provisions of the same Act so as to make a consistent,
harmonious enactment of the whole statute. The court
must ascertain the intention of the legislature by
directing its attention not merely to the clauses to be
construed, but to the scheme of the entire statute. The
attempt must be to eliminate conflict and to harmonise
the different parts of the statute for it cannot be
assumed that Parliament had given by one hand what it
took away by the other. (See in this connection CIT v.
Hindustan Bulk Carriers and CIT v. National Taj
Traders.) This Court in O.P. Singla v. Union of India
(vide SCC p.461, para 17) said:
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"However, it is well recognised that, when a rule
or a section is a part of an integral scheme, it should
not be considered or construed in isolation. One must
have regard to the scheme of the fasciculus of the
relevant rules or sections in order to determine the
true meaning of any one or more of them. An isolated
consideration of a provision leads to the risk of some
other interrelated provision becoming otiose or devoid
of meaning."
41 There cannot be any quarrel with the proposition of law
laid down. But in the present case, the rule of plain and literal
interpretation will have to be applied.
42 As far as reconsideration of decision in the case of
Raymonds is concerned, we must note here that we have considered the
relevant provisions independently of the decision in the case of
Raymonds by assigning our own reasons.
43 Hence, we answer the questions framed by the learned
Single Judge as under:
(1) In the negative.
(2) In the affirmative. The sub-sections will apply in "trade
mark versus mark" situations.
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(3) In the affirmative.
(4) Need not be answered separately
44 The reference is answered accordingly. Now, the suit be
listed before the learned Single Judge.
(A.S. GADKARI, J)
(A.A. SAYED, J)
(A.S. OKA, J)
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