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Section 29 in The Trade Marks Act, 1999
Section 29(5) in The Trade Marks Act, 1999
Section 29(4) in The Trade Marks Act, 1999
The Trade Marks Act, 1999
Section 29(1) in The Trade Marks Act, 1999

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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.) 2 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 3 nms-2463.12 in suit-1906.12 (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 3 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 4 nms-2463.12 in suit-1906.12 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."
4 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 5 nms-2463.12 in suit-1906.12 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 5 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 6 nms-2463.12 in suit-1906.12 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, 7 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 8 nms-2463.12 in suit-1906.12 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 8 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 9 nms-2463.12 in suit-1906.12 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 9 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 10 nms-2463.12 in suit-1906.12 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 10 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 11 nms-2463.12 in suit-1906.12 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 11 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 12 nms-2463.12 in suit-1906.12 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 12 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 13 nms-2463.12 in suit-1906.12 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 13 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 14 nms-2463.12 in suit-1906.12 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 14 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 15 nms-2463.12 in suit-1906.12 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 15 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 16 nms-2463.12 in suit-1906.12 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) 18 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 19 nms-2463.12 in suit-1906.12 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 19 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 20 nms-2463.12 in suit-1906.12 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 20 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 21 nms-2463.12 in suit-1906.12 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 21 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 22 nms-2463.12 in suit-1906.12 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 23 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 24 nms-2463.12 in suit-1906.12 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 24 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 25 nms-2463.12 in suit-1906.12 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 27 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 28 nms-2463.12 in suit-1906.12 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 28 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 29 nms-2463.12 in suit-1906.12 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 30 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 31 nms-2463.12 in suit-1906.12 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 31 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 32 nms-2463.12 in suit-1906.12 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 32 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 33 nms-2463.12 in suit-1906.12 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 35 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:49 ::: 36 nms-2463.12 in suit-1906.12
(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 37 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 38 nms-2463.12 in suit-1906.12 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 38 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 39 nms-2463.12 in suit-1906.12 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 39 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 40 nms-2463.12 in suit-1906.12 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 40 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 41 nms-2463.12 in suit-1906.12 '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 41 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 42 nms-2463.12 in suit-1906.12 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 43 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 44 nms-2463.12 in suit-1906.12 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 44 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 45 nms-2463.12 in suit-1906.12 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 45 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 46 nms-2463.12 in suit-1906.12 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 46 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 47 nms-2463.12 in suit-1906.12 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-
47 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 48 nms-2463.12 in suit-1906.12 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:
48 of 50 ::: Uploaded on - 01/03/2017 ::: Downloaded on - 02/03/2017 01:02:50 ::: 49 nms-2463.12 in suit-1906.12 "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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