Case: Raymond Limited Vs. Raymond Pharmaceuticals Private Limited

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 subsections (1) and (2) of section 29 of the Act and if the goods of the defendant are dissimilar, it will be covered by sub-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, subsection (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, so far as subject of using of registered trade mark as a trade-name is concerned, provision is contained in subsection 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 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.15. We thus find that the submission of the learned counsel appearing for plaintiff that the use of the registered trade mark of the plaintiff by the defendant as a part of his trade name when the goods in which the defendant deals are dissimilar to the goods in which the plaintiff deals is covered by sub-section (4) of section 29 cannot be accepted and therefore, we do not think it necessary to deal with the various judgments delivered under other trade-mark legislations which were cited before us to show as to how use of the registered trade mark of the plaintiff by defendant as a part of his trade name amounts to infringement. We also do not consider it necessary to refer to the material which was produced by the plaintiff to contend that the registered trade mark of the plaintiff has reputation in India, that the adoption of the mark by the defendant is without due cause and the use of the mark by the defendant results in diluting the registered trade mark of the plaintiff.

Decision (1 = appeal accepted, 0 = rejected): 0

Explanation:
0[ds]6. From the rival submissions and the record following can be taken as an admitted position:(i) That according to averments in the plaint, thetrademark of thePlaintiffs Raymond is registered or is applied for 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 itsThe Defendants use variouslike 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 registeredtrademark of thePlaintiffs by the Defendants as a part of their corporate name amounts to infringement of the registeredtrademark of thePlaintiffs within the meaning of Section 29(4) of. Analysis of the provisions of Section 29 for the purpose which is relevant for deciding this appeal shows that (a) so far as(1) of Section 29 is concerned, it lays down that use of awhich is either identical or deceptively similar to the registeredby the Defendant in relation to the goods in respect which the trade mark is registered amounts to infringement of the registeredThus to attract1 of Section 29 the Plaintiff will have to establish that thetrademark of theDefendant is either identical or deceptively similar to the 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 Plaintiffsis registered; (b) So far as2 of Section 29 is concerned, it lays down that a registeredcan be said to be infringed if (i) thetrademark of theDefendant is identical to the registeredtrademark of thePlaintiff 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 thetrademark of thePlaintiff is registered or (iii) thetrademark of theDefendant is identical to the registeredtrademark of thePlaintiff and is used in relation to identical goods by the Defendant, 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 registeredFor application of Section 29(2) to a case, the Plaintiff has to show that the Defendantsis either identical or similar to his registeredand that the Defendant is using that mark in relation to goods which are similar or identical to the goods in relation to which the Plaintiffsis 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 ofion 2 of Section 29 shows that for attracting1 of Section 29 the Defendants 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 Plaintiff mark is registered and such use would lead one to think that the Defendant is using the Plaintiffs mark. To attract the provisions of2 of Section 29 the Defendants mark need not be identical to the registeredit 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 of2 of Section 29 are established by the Plaintiff, because of3 it is presumed, till contrary is proved by the Defendant, that such use by the Defendant causes confusion in public mind. So far as(4) of Section 29 is concerned, it provides that registeredof 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 registeredin such a case to claim infringement of hishe 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 registeredIn order to attract the application of(4) of section 29 the Plaintiff has to show that the Defendants mark is identical or similar to the Plaintiffs registered mark and the Defendant is using the mark in relation to the goods which are dissimilar to the goods 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 thetrademark of theDefendant 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 ofsubsections 1, 2and 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 registeredtrademark of thePlaintiff and that use of the Defendant in relation to goods which are either the same as the goods of the Plaintiff or are goods 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 thein relation to the goods or services. In other words, these provisions do not deal with the situation where the Defendant is not using thetrademark of thein relation to any goods or services, but is using the registeredas a part of hisn 5 of Section 29 deals with that situation. It deals with the situation where the Defendant is not using the registeredrk, but is using the registeredas a part of its trade name. Use of such a registeredas 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 relation to which theis registered. For attracting the application ofsubsection 5 of Section29, the Plaintiff has to show that the Defendant is using Plaintiffsand not a mark which is identical or deceptively similar or similar to the Plaintiffs registered trademark as hisor part of hisand such business concern of the Defendant must be shown to be dealing in the same goods in relation to which thetrademark of theis registered. If these two things are established, it is not necessary for the Plaintiff to show that such use of theresults in deception of the public or dilution of the Plaintiffs mark etc. It thus becomes clear that4 and 5 of Section 29 deal with different types of infringements of registeredand it is not merely5 of Section 29 by necessary implication lays down that when a registeredis used by a Defendant as a part of theand the Defendant is dealing in the same goods in relation to which theis registered, then only it will amount to infringement. In other words, if the Defendant uses the registeredas a part of hisbut he does not deal in the same goods in respect of which theis registered, then it does not amount to infringement for the purpose ofAct.10. Controversy in this appeal is when the Defendants admittedly are using the registeredtrademark of thePlaintiffs, not as theirbut as a part of theircan the Plaintiffs claim that it amounts to infringement of their registeredon 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 registeredtrademark of theas a part of hisis 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 tosubsection 5 of Section29. Perusal of the statement of objects and reasons ofsubsection 5 of Section29 shows that it is a new provision and it has been incorporated to prevent a person from adopting some one elsesas that person_ sin certain situation. Relevant part of statement of objects and reasons reads as(5) seeks to prevent a person from adopting someone elses trade mark as part of that persons 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 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 nearlythe 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(1).(3) The Central Government may, before deeming a name as undesirable under clause (ii) of(2), consult the Registrar of Trade Marks.)22. Rectification of name ofIf, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is registered by a name