India: Bombay High Court Limits The Purview Of A Well-Known Trademark

Last Updated: 21 March 2017
Article by Omesh Puri

A trade mark with the status of a "well-known" significantly improves the extent of protection as it provides the proprietor, the exclusive right to the trade mark against all unlawful users thereof, regardless of the differences in the field of business, goods or services. The well-known trademark mark is protected not only for goods and services related to those with which it is already associated, but for non-competing goods and services. However, a more clarity was needed when the third party uses a registered trademark as a corporate or trading name though in respect of goods dissimilar to the ones for which the trade mark is registered. In such scenario, the question arises whether proprietor of the registered trade mark is entitled to an injunction on a cause of action in infringement under the provisions of Indian Trade Marks Act. This question has recently been answered by a three Judge Bench of Bombay High Court in the case of CIPLA Limited (Plaintiff) versus CIPLA Industries Private Limited (Defendant).

The Issue and brief facts:

The issue involved in this case is the interpretation of the various subsections of Section 29 of the Trade Marks Act, 1999 (the Act) and in particular Sub Sections (1), (2), (4) and (5). The instant suit was filed for infringement and passing off. The Plaintiff has registered its mark CIPLA in class 5 and it has also been using the word CIPLA as part of its corporate name. The mark CIPLA has been used by the Plaintiff only for pharmaceutical and medicinal preparations. The Defendants have not used the said mark for such preparations but they have used the mark CIPLA as a part of their corporate or trade name. The Defendant's business deals in a slightly different form in respect of household articles, such as soap dishes, photo frames, ladders and has trade mark registration of a very similar mark CIPLA PLAST in its favour in Class 21.

Earlier in the case of Raymond Ltd V Raymond Pharmaceuticals Pvt Ltd (2010(44) PTC 25 (Bom) (DB), Division bench held 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. 

Plaintiff's arguments:

The Plaintiff relied on the definition of "mark" under Section 2(1)(m) of the Act which makes no distinction between use as a trade mark and as a name. The Plaintiff argued that the definition of "mark" is an inclusive definition will naturally include a name. The Plaintiff heavily relied on a decision of a Single Judge of Delhi High Court in the case of Bloomberg Finance LPv. Prafull Saklecha & Ors.  In this case, the 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. It was pointed that 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.

Defendant's arguments:

The Defendant argued that the sub section (1) to (4) of the Trade Marks Act are applicable in cases of infringement of a "registered trade mark versus a mark situation" while sub section 29 (5) deals with  infringement by virtue of use of a mark as part of trade name, or business concern name. It was argued that the Act treats the use of a name differently than use of mark.


The full bench has interpreted various subsections of Section 29 and held that Sub Section (4) applies in "trade mark versus mark" situation and only when the mark is used in the course of trade in relation to goods and services. On the other hand, Sub Section (5) will be applicable to a "trade mark versus trade/corporate/business name" situation. The bench held that the fact that the definition of the word "mark" includes "name" is of no consequence while interpreting Sub Sections of Section 29. The full bench disagreeing with the Bloomberg decision held that 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.

This judgment certainly brings a disappointment to all the well-known trademark owners in India. Recently, Indian trademarks rules have been amended to include an application procedure for determining and declaring a trade mark as "well-known".  This new provision facilitates brand owners to apply for well-known status for their trademarks but the judgment by Bombay High Court definitely limits the scope of well-known trademarks. The well-known trademark owners will certainly be looking forward to reversal of this judgment and it will be interesting to see if this dispute reaches to Supreme Court of India. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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