In the present era of widespread use of internet and domain names, the Bombay High Court recently pronounced a crucial judgement in the case of Raymond Ltd vs. Raymond Pharmaceutical Pvt Ltd, wherein it quoted:

“The overall scheme of the Trade-marks Act does not provide for any statutory protection in terms of prevention of use of a domain name which may also be a famous mark.”

This judgement comes forth as a decisive precedent whereby registered trademarks can be used by others as part of their trade name; provided they do not deal with the same goods and services in respect of which the trademark is registered.

Facts:

The Plaintiff (Raymond Ltd.), one the largest textile manufacturers in the world with a network across 55 countries, approached the Bombay High Court seeking injunction to restrain the Defendants (Raymond Pharmaceuticals Pvt. Ltd., a pharmaceutical company based in Chennai) from using their registered trademark “RAYMOND” in the domain name “www.raymondpharma.com”.

Contentions:

The Plaintiff claims that the Defendant apart from causing trademark infringement by using their registered trademark in its trade name as well as domain name, is also passing off and allegedly riding on the goodwill and reputation of the Plaintiff’s registered trademark and such misrepresentation is likely to cause confusion and deception amongst the public.

The Plaintiff also claimed that given the extensive use and promotion, their trademark RAYMOND has acquired the status of a well-known trademark and therefore use of their trademark in the Defendant’s corporate name and their domain names is an infringement of the Plaintiff’s trademark rights and also put forth that a domain name is to be treated as a trademark.

The Plaintiff relied on the provisions of Section 29(4) of the Trade Marks Act and stated that infringement would also take place if the mark is used in relation to goods and services which are not similar to those for which the mark is registered.

However, the Defendant, who have been in the pharmaceutical business since 1983, refuted these contentions and stated that their domain name adoption is honest and bonafide.

They claimed that their domain name www.raymondpharma.com constitutes the word “pharma” along with “Raymond” and is therefore visually, phonetically and structurally different from the Plaintiff’s trademark and domain names.

The major contention of the Defendant was based on the difference in the trade channels and the class of customers as the Plaintiff were engaged in the clothing and textile industry and have no presence in the pharmaceutical industry and vice versa.

They contended that in order to establish a case of infringement, all the criteria under Section 29(4) must be met cumulatively and not disjunctively and therefore the present case would not fall under the ambit of the said provision.

They also submitted that in the present case, the Defendant is only using the word RAYMOND as a trade name and therefore it would only attract Section 29(5) which states that infringement of a trademark occurs when the person uses the registered trademark as a part of his business or trade name, dealing in similar goods and services for which the trademark has been registered.

Since the trade channels of the Defendant do not coincide with that of the Plaintiff, there is no scope of trademark infringement.

Courts Observation:

The Court very precisely laid down that the provisions of the Trade Marks Act does not provide protection for prevention of use of domain names which may be well-known trademarks.

It took the view that the disputed domain www.raymondpharma.com constitutes a part of the corporate name of the Defendant, which is not actionable as infringement of the registered trademark of the Plaintiff.

The Court opined that, “Although trade-marks may be used as domain name(s) unless an impugned domain name is identical to a registered mark or the two are so alike so as to cause initial interest confusion to a man of ordinary intelligence, the domain name need not result in infringement of the mark or passing off. Every domain name cannot therefore form subject of trade-mark protection.”

The injunction prayed by the Plaintiff was thus dismissed.

Conclusion:

The interplay between Section 29(4) and Section 29(5) of the Trade Marks Act has always been controversial. The present judgement is a perfect precedent that sets the mutual exclusiveness of these provisions. The Bombay High Court also brought out the legislative intent of the Trade Marks Act with respect to use of famous marks as domain names.