CIPLA Limited  v. CIPLA Industries Private Limited and Ors.

CIPLA Limited  v. CIPLA Industries Private Limited and Ors.

2017 (69) PTC 425 (Bom)

Full Bench

A Learned Single Judge of the High Court of Bombay vide order dated 26th April, 2016 expressed the view that decision of the Division Bench of Bombay High Court in the case of Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd.; 2010 (44) PTC 25 (Bom.) needs 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 mark’ sense?

(3) Whether Sections 29(4) and 29(5) operate in separate and mutually exclusive spheres, i.e., whether, if the defendant uses the registered trade mark only as a corporate name or trading name or style in respect of dissimilar goods, a Plaintiff can have no remedy and is not entitled to an injunction?

(4) Whether the view taken by the Division Bench in Raymond Ltd. V Raymond Pharmaceuticals is a correct view?”

Full Bench’s Observations:

On Facts of the Case in Question:

  • The dispute is about the mark ‘CIPLA’ registered to the Plaintiff for Pharmaceutical Products.

1200px-Cipla_logo.svg

  • It is alleged that the Defendants have used the mark as a part of their corporate or trade name and are using it for soap dishes, photo frames, ladders and so on.

On the understanding of the ratio of Raymond case (supra) by Learned Single Judge

  • Sub-sections (4) and (5) of Section 29 operate in mutually exclusive fields.
  • If the defendant adopts the 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 read with Sections 29(5) and 29(8) of the Trade Marks Act, 1999.

Plaintiff’s Submissions in Brief:

  • Learned Single Judge of the Delhi High Court in Bloomberg Finance LP v. Prafull Saklecha & Ors.; 2013 ( 56 ) PTC 243 (Del) 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.

Defendant’s Submissions in Brief:

  • Section 29(4) applies in cases where it is a registered trade mark versus a mark situation.
  • None of these Sub-sections deal with a registered trade mark versus trade name or registered trade mark versus business concern name.
  • Registered trade mark versus trade name or business name is dealt with only by Sub-section (5).
  • 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.
  • Trade Marks Act treats the use of a name differently than use of mark.
  • Legislative intent appears to restrict the right of the registered proprietor to sue for infringement in relation to a business trade or corporate name.

Rejoinder by Plaintiff:

If the Defendant uses a registered trade mark only as a corporate name or trading name or style in respect of dissimilar goods, the Plaintiff has a remedy under Sub-section (4) of Section 29.

Full Bench’s Discussion

Sub-section 29(4) is crucial for our consideration. It applies when a mark is used for goods/ services not similar to those for which the trade mark is registered provided (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.

Thus for 29 (4), it is not necessary for the Plaintiff to show possibility of confusion.

Section 29 (5) 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.

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 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.

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.

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 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).

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.

The Parliamentary Standing Committee on Industry appointed by Rajya Sabha submitted its Eighth Report on the Trade Marks Bill, 1993. The Committee recommended addition of the words “dealing in goods or services in respect of which the trade is registered” in 29 (5). 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.

For the reasons which we have set out earlier, we are unable to concur with the view expressed in Bloomberg Finance LP v. Prafull Saklecha & Ors.; 2013(56) PTC 243 ( Del ) 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.

Ratio

Thus, the questions raised by the Learned Single Judge were answered as follows:

  • In the negative.
  • In the affirmative. The sub-sections will apply in “trade mark versus mark” situations.
  • In the affirmative.
  • Need not be answered separately”

 

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