A Full Bench of the Bombay High Court announced their decision in the matter of Cipla Limited v. Cipla Industries Pvt. Ltd. on March 1, 2017. This case explores an important issue in trademark infringement regarding the use of a registered mark in a corporate or trade name, with respect to entities dealing with dissimilar goods/ services.

The Plaintiff, Cipla Limited, is a manufacturer of pharmaceutical products and has registered the trademark “CIPLA” under Class 5, which relates to pharmaceutical products. The Defendant, Cipla Industries, manufactures household items such as ladders and photo-frames, and has registered the trademark “CIPLA PLAST” under Class 21, which relates to household items such as utensils, containers, and combs, among others.

The Plaintiffs filed a suit against the Defendants for trademark infringement and passing off in 2012, claiming that the Defendants are violating the trademark rights of the Plaintiff by using “CIPLA” in their corporate or trade name. Two important things to note about this case are that the Defendant manufactured dissimilar goods when compared to the Plaintiff and the Defendants used the Plaintiff’s registered mark as part of their corporate or trade name.

This case takes precedence from the Raymond Limited v. Raymond Pharmaceuticals case, wherein the textile and clothes manufacturer, Raymond Limited (Plaintiff), alleged that Raymond Pharmaceuticals (Defendant) infringed on the Plaintiff’s trademark “Raymond” by using it in their corporate name.

Trademark infringement of well-known marks is dealt with under § 29(4) and infringement by use in trade or business name is dealt with under § 29(5) of The Trade Marks Act, 1999 as reproduced below:

§ 29(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.

§ 29(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.

Here, the Court reasoned that in order to establish infringement according to § 29(4), the Plaintiff has to show that the Defendant’s mark is identical or similar to the Plaintiff’s registered mark and that the Defendant is using the mark in relation to goods which are dissimilar to the goods corresponding to the Plaintiff’s registered mark, among other grounds mentioned in § 29(4). Consequently, since the case concerned the use of the registered mark as a corporate/trade name, §29(4) was overlooked in favour of §29(5). However, according to §29(5), infringement is only considered valid in case of “dealing in goods or services in respect of which the trade mark is registered.” Since the two entities in this case dealt with dissimilar goods, namely, textiles and medicines, the Court decided that the Defendants did not infringe on the Plaintiff’s trade mark rights.

The Court did not grant an injunction against Raymond Pharmaceuticals in Raymond Ltd. v. Raymond Pharma., and was of the view that this matter needed reconsideration. Hence, in Cipla Ltd. v. Cipla Industries, the Court sought to clear the matter by outlining four questions that needed to be answered for added clarity on this matter. The questions and their conclusions are as given below.

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?

Conclusion: No.

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?

Conclusion: Yes. The sub-sections will apply in "trademark versus mark" situations.

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?

Conclusion: Yes.

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?

Conclusion: Yes.

The Judges noted that § 29(4) uses the terms “in the course of trade” and “in relation to good and services”, which are not present in § 29(5). Further, the Court noted that “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” was not present in § 29(4). The Court made use of this difference to determine that § 29(4) would apply in a “trademark v. mark” situation while § 29(5) would apply in a “trademark v. trade/corporate/business name” situation.

In other words, § 29(5) states that an infringement has occurred with respect to a registered mark only when the goods in question are similar. Since the Plaintiff and the Defendant in this case dealt with dissimilar goods, namely household goods and medicines, the Judges decided that no trademark infringement was committed by the Defendants.

In our opinion, this decision would significantly limit the ability of entities with even well-known registered marks to act against infringement in certain situations. Further, the law regarding this matter seems to leave a loop-hole for potential infringers with dissimilar goods who may use a registered mark in their corporate or trade name.

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