1 kambli/- IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION APPEAL NO.438 OF 2007 IN NOTICE OF MOTION NO.661 OF 2006 IN SUIT NO.437 OF 2006 ... Raymond Limited ...Appellant (ori.Plaintiff) v/s. Raymond Pharmaceuticals Pvt.Ltd. ...Respondent (ori.Defendant) ... Mr.R.M.Kadam, Advocate General with Mr.Rahul Chitnis and Ms.Cynthia Pereira i/b M/s.Rajani Associates for the Appellant. Mr.Manish Saurastri with Mr.Utkarsh Tiwari i/b Shantilal & Co. for the Respondent. ... CORAM: D.K.Deshmukh & SMT.R.P.SondurBaldota,JJ DATED: 13th July, 2010 2 JUDGMENT: (PER D.K.DESHMUKH, J.) 1. This Appeal takes exception to the order dated 15-02-2007 passed by the learned single Judge of this Court in Notice of Motion No.661 of 2006. That Notice of Motion was taken out by the Appellant in Suit No.437 of 2006. Suit No.437 of 2006 is filed by the present Appellant claiming a permanent injunction restraining the Defendant from infringing their trade-mark. The Plaintiff Raymond Limited is a company, which is the successor of Raymond Woollen Mills Ltd. incorporated under the Companies Act in 1925. Which had conceived and adopted the use of the word Raymond in a stylised manner for for marketing its products. On 27nd June, 1983, the plaintiff obtained registration for the trade mark 3 'Raymond' under registration No.401766 registered in Class 25 in respect of textile piece goods including shirting, suiting and saris, dress materials, blankets, shawls, satin, bed and table covers, bed spreads, bed sheets, tissues, felts, curtains, flannel, handkerchiefs, linen, cloth linings, towels, woollen piece goods etc under the Trade and Merchandise Marks Act, 1958. They also have obtained registration under Copyright Act, 1957 for the word "Raymond" written in stylized manner. In short, for the goods in question, which are broadly wearing apparel, plaintiffs have registered copyright and registered trade mark for the word "Raymond". The Plaintiff claims that the use of the trade-mark of the Plaintiff i.e. Raymond in the corporate name of the 4 Defendant amounts to infringement of the trade-mark of the Plaintiff. Therefore, the Plaintiff claims in the plaint a permanent injunction restraining the Defendant from infringing its trade-mark by using it as a part of its corporate name. A temporary injunction in similar terms was claimed in the Notice of Motion No.661 of 2006. 2. The defence of the Defendants is that use of the word Raymond in the corporate name of the Defendant, which deals in totally different product than the product in relation to which the trade-mark of the Plaintiff is registered, does not result in infringement of the trade-mark of the Plaintiff. The Defendants claim that Raymond is a common word. It is Christian name and quite common. The Defendants claim that the Raymond itself means mighty 5 protection in the English language, and therefore, it adopted that name in its corporate name. The Defendants manufacture and sell pharmaceuticals products. The nature of the business and the product of the Plaintiffs and the Defendants are totally different. The learned single Judge decided the Notice of Motion by order dated 15-02-2007. The learned single Judge rejected the Notice of Motion. The present Appeal is directed against the order of the learned single Judge rejecting the Notice of Motion. 3. The learned Counsel appearing for the Appellants submitted that in the present case the provisions of Section 29(4) of the Trade- Mark Act, 1999 are attracted. It is submitted that the registered trade-mark of the Plaintiff has reputation in India and because the Respondents are using the mark without 6 due cause and the use of the mark by the Respondents results in dilution of the mark, therefore, though the goods or products of the Respondents are dissimilar to the goods and products manufactured and marketed by the Plaintiffs, the Defendants are infringing the registered trade mark of the Plaintiffs. The learned Counsel appearing for the Appellants took us through the record to show that the Plaintiffs have built up formidable reputation in India. He also submitted that adoption of the mark by the Defendants is without due cause. He submitted that the use of the name Raymond in the corporate name by the Defendants amounts to dilution of the trade-mark of the Plaintiffs. The learned Counsel appearing for the Plaintiffs relied on several judgments in support of his argument as also relevant extracts from Kerly s law of Trade Marks and Trade Names, 7 Thirteenth Edition. 4. So far as the Defendants are concerned, the Defendants disputed the claim made on behalf of the Plaintiffs that they have built up formidable reputation in India. He also disputed that adoption of the name by the Defendants is without due cause. It was also disputed that the use of word Raymond in the trade-name of the Defendants amounts to dilution of the registered trade-mark of the Plaintiffs. The learned Counsel submitted that in fact as the products or goods manufactured and sold by the Defendants and the Plaintiffs are totally dissimilar, and as the registered trade-mark is only a part of the trade-name or corporate name of the Defendants, provisions of Section 29(4) of the Trade-mark Act are not attracted. It was submitted that the subject of use of 8 registered trade-mark in a trade name by other party is governed not by Section 29(4) of the Trade-mark Act, but by Section 29(5) of the Trade-mark Act and therefore in order that use of registered trade-mark of one party in the trade-name by another party amount to infringement within the meaning of Trade-mark Act, the goods must be similar. If the goods marketed by the two parties are different, then in such a case it does not amount to infringement. 5. The learned Counsel appearing for the Plaintiffs-Appellants, on the other hand, submitted that the arguments of the Defendants based on Section 29(5) is misplaced for several reasons. According to the learned Counsel, Section 29 enumerates or lists the different circumstances in which the trade mark may be infringed. Section 9 29(5) does not exhaust the circumstances in which they may be infringed by use of a trade name. It is submitted that various sub- clauses of Section 29 are enumerative and as long as we fall in any one or more categories, infringement will be established. It was submitted that the real difference between Section 29(5) and Section 29(4) is that the condition in Section 29(4) are substantially more onerous. However, this does not in any way suggest that infringement by use of an identical or similar trade name is exhausted in Section 29(5) alone. 6. From the rival submissions and the record following can be taken as an admitted position: (i)That according to averments in the plaint, the trade-mark of the Plaintiffs Raymond is registered or is applied for 10 in relation to the goods in Clauses 3, 6, 19, 22, 23, 24 & 25; (ii) The Defendants use the word Raymond as a part of its corporate name and it is not its trade-mark. The Defendants use various trade-mark like LAC for marketing its products; (iii)That the goods marketed by the Plaintiffs and the Defendants are totally dissimilar; (iv)That the Defendants are using Raymond as a part of their corporate name since 1983; (v)It is the case of the Plaintiffs that the use of word Raymond which is the registered trade-mark of the Plaintiffs by the Defendants as a part of their corporate name amounts to infringement of the registered trade-mark of the Plaintiffs within the meaning of Section 11 29(4) of Trade-mark Act. 7. Section 28 of the Trade-mark Act 1999 (hereinafter referred to as the Act ) lays down that the registration of the trade-mrk confers exclusive rights on the owner to use that trade-mark. The registration also gives right to the registered owner of trade-mark to obtain reliefs in respect of the infringement of the trade-mark in the manner provided by the Act. Sub-section 1 of Section 28 is relevant for the present purpose. It reads as under: "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 services in respect of which the trade mark is registered and to obtain relief in respect of 12 infringement of the trade mark in the manner provided by this Act. 8. Perusal of the above quoted provisions shows that it is Section 28 which confers right on the owner of the registered trade-mark to obtain relief in respect of infringement of the trade-mark in the manner provided by the Act. Section 135 of the Trade-mark Act lays down the relief that the court can grant in a suit for infringement of the trade-mark. Thus, the Act confers power on the court to grant an injunction in favour of the owner of the trade-mark, in case the trade-mark is infringed by the Defendant. As to what amounts to infringement of the registered trade-mark is defined by Section 29 of the Act. Section 29 has nine sub- clauses. Section 29 reads as under: "29. Infringement of registered 13 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, mark which because of- 14 (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 15 (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (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 16 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 17 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 18 mark was not duly authorized by the proprietor or a licensee. (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 19 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". 9. Analysis of the provisions of Section 29 for the purpose which is relevant for deciding this appeal shows that (a) so far as sub-section (1) of Section 29 is concerned, it lays down that use of a trade-mark which is either identical or deceptively similar to the registered trade-mark by the Defendant in relation to the goods in respect which the trade mark is registered amounts to infringement of the registered trade-mark. Thus to attract sub-section 1 of Section 29 the Plaintiff will have to establish that the trade-mark of the Defendant is either identical or deceptively similar to the 20 registered trade mark of the Plaintiff and the Defendant is using the trade mark to market his goods which are the goods in relation to which the Plaintiff s trade-mark is registered; (b) So far as Sub-section 2 of Section 29 is concerned, it lays down that a registered trade-mark can be said to be infringed if (i) the trade-mark of the Defendant is identical to the registered trade-mark of the Plaintiff and is used in respect of similar goods by the Defendant (ii) the mark of the Defendant is similar to the registered mark and there is an identity or similarity with the goods in relation to which the trade-mark of the Plaintiff is registered or (iii) the trade-mark of the Defendant is identical to the registered trade-mark of the Plaintiff and is used in relation to identical goods by the Defendant, and that such use is likely to cause 21 confusion on the part of the public or is likely to be taken to have an association with the registered trade-mark. For application of Section 29(2) to a case, the Plaintiff has to show that the Defendant s trade-mark is either identical or similar to his registered trade-mark and that the Defendant is using that mark in relation to goods which are similar or identical to the goods in relation to which the Plaintiff s trade-mark is registered, and such use by the Defendant should be shown to result in confusion on the part of the public. A comparison of the provisions of sub-section 1 and sub-section 2 of Section 29 shows that for attracting sub-section 1 of Section 29 the Defendant s mark should be identical or deceptively similar to the mark of the Plaintiff and must be used in relation to the same goods with respect to which the 22 Plaintiff mark is registered and such use would lead one to think that the Defendant is using the Plaintiff s mark. To attract the provisions of sub-section 2 of Section 29 the Defendant s mark need not be identical to the registered trade-mark, it may be similar, not necessarily deceptively similar to the mark of the Plaintiff. The Defendant need not be shown to have used the mark in relation to the same goods. Even if it is shown that the Defendant is using the mark in relation to identical or similar goods, it would be enough. It is also to be shown that such use results in confusion of public mind. But once ingredients of sub-section 2 of Section 29 are established by the Plaintiff, because of of sub-section 3 it is presumed, till contrary is proved by the Defendant, that such use by the Defendant causes confusion in public mind. So far as Sub-section (4) of 23 Section 29 is concerned, it provides that registered trade-mark of a Plaintiff is infringed if the Defendant uses a mark which is identical or similar to the trade mark of the Plaintiff, but the goods in relation to which the mark is used are not similar. But in order to enable the owner of the registered trade-mark in such a case to claim infringement of his trade-mark he has to establish that he has reputation in India and that use of the mark by the Defendant is without due cause and is detrimental to the distinctive character or the reputation of the registered trade-mark. In order to attract the application of sub-section (4) of section 29 the Plaintiff has to show that the Defendant s mark is identical or similar to the Plaintiff s registered mark and the Defendant is using the mark in relation to the goods which are dissimilar to the goods 24 in relation to which the mark of the Plaintiff is registered and the Plaintiff has to establish some other grounds which are mentioned in Section 29(4). A comparison of Section 29(2) and Section 29(4) shows that in both the cases the trade-mark of the Defendant has to be shown to be identical or similar. But for attracting section 29(2), the goods of the Defendant should be identical or similar, however in so far as Section 29(4) is concerned the goods of the Defendant may be dissimilar. Scrutiny of the provisions of sub-sections 1, 2 and 4 of Section 29 shows that they deal with the use of a trade mark by the Defendant which is either identical or similar or deceptively similar to the registered trade-mark of the Plaintiff and that use of the Defendant in relation to goods which are either the same as the goods of the Plaintiff or are goods 25 which are identical or similar or dissimilar to the goods of the Plaintiff. In short, these three provisions deal with use by the Defendant of the trade-mark in relation to the goods or services. In other words, these provisions do not deal with the situation where the Defendant is not using the trade- mark of the Plaintiff in relation to any goods or services, but is using the registered trade-mark as a part of his trade- name. Sub-section 5 of Section 29 deals with that situation. It deals with the situation where the Defendant is not using the registered trade-mark as a trade-mark, but is using the registered trade-mark as a part of its trade name. Use of such a registered trade-mark as a part of trade name by the Defendant also amounts to infringement, but subject to one condition namely that the Defendant must be dealing in goods in 26 relation to which the trade-mark is registered. For attracting the application of sub-section 5 of Section 29, the Plaintiff has to show that the Defendant is using Plaintiff s trade-mark and not a mark which is identical or deceptively similar or similar to the Plaintiff s registered trade- mark as his trade-name or part of his trade- name and such business concern of the Defendant must be shown to be dealing in the same goods in relation to which the trade- mark of the Plaintiff is registered. If these two things are established, it is not necessary for the Plaintiff to show that such use of the trade-mark results in deception of the public or dilution of the Plaintiff s mark etc. It thus becomes clear that sub- sections 1, 2, 4 and 5 of Section 29 deal with different types of infringements of registered trade-mark and it is not merely 27 enumerative. . Sub-section 5 of Section 29 by necessary implication lays down that when a registered trade-mark is used by a Defendant as a part of the trade-name and the Defendant is dealing in the same goods in relation to which the trade-mark is registered, then only it will amount to infringement. In other words, if the Defendant uses the registered trade-mark as a part of his trade-name, but he does not deal in the same goods in respect of which the trade-mark is registered, then it does not amount to infringement for the purpose of Trade-mark Act. 10. Controversy in this appeal is when the Defendants admittedly are using the registered trade-mark of the Plaintiffs, not 28 as their trade-mark, but as a part of their trade-name, can the Plaintiffs claim that it amounts to infringement of their registered trade-mark under sub-section 4 of Section 29. The defence of the Defendant as observed above is that provisions of Section 29(4) do not apply and that the subject of use by the Defendant of the registered trade-mark of the Plaintiff as a part of his trade-name is governed by Section 29(5). . Perusal of Section 159 shows that by 1999 Act the Trade and Merchandise Marks Act 1958 has been repealed. Comparison of the provisions of 1958 Act and the 1999 Act shows that 1958 Act did not have a provision corresponding to sub-section 5 of Section 29. Perusal of the statement of objects and reasons of sub-section 5 of Section 29 shows that it is a new provision and it has been 29 incorporated to prevent a person from adopting some one else s trade-mark as that person s trade-name in certain situation. Relevant part of statement of objects and reasons reads as under: 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. 11. Perusal of Section 158 of the 1999 Act shows that apart from repealing 1958 Act, certain provisions of the Companies Act were 30 also amended by Act 47 of 1999. Two provisions of the Companies Act which have been amended by Act 47 of 1999 are sections 20 and 22 of the Companies Act. Section 20 and 22 of the Companies Act reads as under: 20. Companies not to be registered with undesirable names.- (1) No company shall be registered by a name which, in the opinion of the Central Government, is undesirable. (2) Without prejudice to the generality of the foregoing power, a name which is identical with, or too nearly resembles,- (i)the name by which a company is existence has been previously registered; or (ii)a registered trade mark, or a trade mark which is subject of an application for registration, of any other person under the Trade Marks Act, 1999, may be deemed to be undesirable by the Central Government within the meaning of sub-section (1). (3)The Central Government may, before deeming a name as undesirable under clause (ii) of sub-section (2), consult the Registrar of Trade Marks.) 22.Rectification of name of company.- 31 (1) If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is registered by a name which,- (i)in the opinion of the Central Government, is identical with, or too nearly resembles, the name by which a company in existence has been previously registered, whether under this Act or any previous companies law, the first-mentioned company, or (ii) on an application by a registered proprietor of a trade mark, is in the opinion of the Central Government identical with, or too nearly