TaxTMI 
TaxTMI 
2010 (7) TMI 1239
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....nner for marketing its products. On 27th June, 1983, the plaintiff obtained registration for the trade mark 'Raymond' under registration No. 401766 registered in Class 25 in respect of textile piece goods including shirting, suiting and saris, dress materials, blankets, shawls, satin, bed and table covers, bed spreads, bed sheets, tissues, felts, curtains, flannel, handkerchiefs, linen, cloth linings, towels, woollen piece goods etc under the Trade and Merchandise Marks Act, 1958. They also have obtained registration under Copyright Act, 1957 for the word "Raymond" written in stylized manner. In short, for the goods in question, which are broadly wearing apparel, plaintiffs have registered copyright and registered trade mark for the word "Raymond". The Plaintiff claims that the use of the trade-mark of the Plaintiff i.e. 'Raymond' in the corporate name of the Defendant amounts to infringement of the trade-mark of the Plaintiff. Therefore, the Plaintiff claims in the plaint a permanent injunction restraining the Defendant from infringing its trade-mark by using it as a part of its corporate name. A temporary injunction in similar terms was claimed in the Notice of Mo....
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.... disputed that adoption of the name by the Defendants is without due cause. It was also disputed that the use of word 'Raymond. in the trade-name of the Defendants amounts to dilution of the registered trade-mark of the Plaintiffs. The learned Counsel submitted that in fact as the products or goods manufactured and sold by the Defendants and the Plaintiffs are totally dissimilar, and as the registered trade-mark is only a part of the trade-name or corporate name of the Defendants, provisions of Section 29(4) of the Trade-mark Act are not attracted. It was submitted that the subject of use of registered trade-mark in a trade name by other party is governed not by Section 29(4) of the Trade-mark Act, but by Section 29(5) of the Trade-mark Act and therefore in order that use of registered trade-mark of one party in the trade-name by another party amount to infringement within the meaning of Trade-mark Act, the goods must be similar. If the goods marketed by the two parties are different, then in such a case it does not amount to infringement. 5. The learned Counsel appearing for the Plaintiffs-Appellants, on the other hand, submitted that the arguments of the Defendants based o....
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....of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services 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. 8. Perusal of the above quoted provisions shows that it is Section 28 which confers right on the owner of the registered trade-mark to obtain relief in respect of infringement of the trade-mark in the manner provided by the Act. Section 135 of the Trade-mark Act lays down the relief that the court can grant in a suit for infringement of the trade-mark. Thus, the Act confers power on the court to grant an injunction in favour of the owner of the trade-mark, in case the trade-mark is infringed by the Defendant. As to what amounts to infringement of the registered trade-mark is defined by Section 29 of the Act. Section 29 has nine sub-clauses. Section 29 reads as under: 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 decep....
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....ered 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 authorized by the proprietor or a licensee. (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. 9. Analysis ....
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....tiff's mark. To attract the provisions of Sub-section 2 of Section 29 the Defendant' s mark need not be identical to the registered trade-mark, it may be similar, not necessarily deceptively similar to the mark of the Plaintiff. The Defendant need not be shown to have used the mark in relation to the same goods. Even if it is shown that the Defendant is using the mark in relation to identical or similar goods, it would be enough. It is also to be shown that such use results in confusion of public mind. But once ingredients of Sub-section 2 of Section 29 are established by the Plaintiff, because of Sub-section 3 it is presumed, till contrary is proved by the Defendant, that such use by the Defendant causes confusion in public mind. So far as Sub-section (4) of Section 29 is concerned, it provides that registered trade-mark of a Plaintiff is infringed if the Defendant uses a mark which is identical or similar to the trade mark of the Plaintiff, but the goods in relation to which the mark is used are not similar. But in order to enable the owner of the registered trade-mark in such a case to claim infringement of his trade-mark he has to establish that he has reputation in Ind....
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....imilar to the Plaintiff's registered trademark as his trade-name or part of his trade- name and such business concern of the Defendant must be shown to be dealing in the same goods in relation to which the trademark of the Plaintiff is registered. If these two things are established, it is not necessary for the Plaintiff to show that such use of the trade-mark results in deception of the public or dilution of the Plaintiff's mark etc. It thus becomes clear that subsections 1, 2, 4 and 5 of Section 29 deal with different types of infringements of registered trade-mark and it is not merely enumerative. Sub-section 5 of Section 29 by necessary implication lays down that when a registered trade-mark is used by a Defendant as a part of the trade-name and the Defendant is dealing in the same goods in relation to which the trade-mark is registered, then only it will amount to infringement. In other words, if the Defendant uses the registered trade-mark as a part of his trade-name, but he does not deal in the same goods in respect of which the trade-mark is registered, then it does not amount to infringement for the purpose of Trade-mark Act. 10. Controversy in this appeal is wh....
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....o be undesirable by the Central Government within the meaning of Sub-section (1). (3) The Central Government may, before deeming a name as undesirable under Clause (ii) of Sub-section (2), consult the Registrar of Trade Marks.) 22. Rectification of name of company. (1) If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is registered by a name which, (i) in the opinion of the Central Government, is identical with, or too nearly resembles, the name by which a company in existence has been previously registered, whether under this Act or any previous companies law, the first-mentioned company, or (ii) on an application by a registered proprietor of a trade mark, is in the opinion of the Central Government identical with, or too nearly resembles, a registered trade mark of such proprietor under the Trade Marks Act, 1999, such company,- (a) may, by ordinary resolution and with the previous approval of the Central Government signified in writing, change its name or new name; and (b) shall, if the Central Government so directs within twelve months of its first registratio....
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....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 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....
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....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 ....