The textile giant Raymond couldn’t stop a Chennai pharma company using “raymondpharma.com.” The Bombay High Court held the Trade Marks Act doesn’t automatically protect a famous mark used as a domain name in an unrelated trade — and clarified how two key infringement provisions interact.
The core holding
In Raymond Ltd v. Raymond Pharmaceutical Pvt Ltd, the Bombay High Court held:
“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.”
The precedent: a registered trademark can be used by others as part of their trade name — provided they don’t deal in the same goods/services for which the mark is registered.
The facts
Raymond Ltd — one of the world’s largest textile makers, present in 55 countries — sought to restrain Raymond Pharmaceuticals Pvt Ltd (a Chennai pharma company, in business since 1983) from using “RAYMOND” in the domain raymondpharma.com.
The arguments
Raymond Ltd: the defendant infringed by using its registered mark in its trade name and domain, was passing off and riding on its goodwill; RAYMOND was a well-known mark; a domain name is a trademark; and under Section 29(4), infringement can occur even for dissimilar goods/services.
The defendant: its adoption was honest and bona fide; raymondpharma.com (adding “pharma”) was visually, phonetically and structurally different; the trade channels and customers differed entirely (textiles vs pharma); Section 29(4)‘s criteria must be met cumulatively, which they weren’t; and using RAYMOND only as a trade name attracts Section 29(5), which requires dealing in similar goods/services — so with no overlap in trade channels, there’s no infringement.
The court’s observation
The court held the Act doesn’t protect against use of domain names that may be well-known marks, and that the disputed domain formed part of the defendant’s corporate name — not actionable as infringement:
“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 was dismissed.
Section 29(4) vs 29(5)
The judgment sets the two provisions as mutually exclusive:
- Section 29(4) — infringement across dissimilar goods/services, for marks with a reputation (met cumulatively).
- Section 29(5) — infringement where the mark is used as part of a trade/business name dealing in similar goods/services.
Because the defendant used RAYMOND only in its trade name in an unrelated field, neither route caught it.
The takeaways
- A famous mark isn’t automatically protected as a domain name across unrelated trades.
- Trade channels matter — no overlap in goods/services, no likely confusion.
- Section 29(4) and 29(5) are distinct — dissimilar-goods reputation infringement vs trade-name infringement in similar goods.
- Not every domain is trademark-protectable — it must be identical or confusingly similar to catch a man of ordinary intelligence.
Frequently asked questions
Can I stop someone using my famous mark in their domain name? Not automatically — the Bombay HC held the Trade Marks Act doesn’t protect famous marks used as domain names in unrelated trades, unless the domain is identical or confusingly similar and confusion is likely.
What’s the difference between Section 29(4) and 29(5)? Section 29(4) covers infringement across dissimilar goods for reputed marks (met cumulatively); Section 29(5) covers use of a mark as part of a trade/business name dealing in similar goods.
Does adding a word like “pharma” avoid infringement? It can help — here, “raymondpharma.com” was found visually, phonetically and structurally different, in an unrelated trade with no overlapping customers.
Is every domain name protectable as a trademark? No — the court held not every domain can be the subject of trademark protection; it must be identical or so alike as to cause confusion.
Legislation referred to
- The Trade Marks Act, 1999