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2017 SCC OnLine Bom 6791 : (2017) 2 Mah LJ 877 (FB) : AIR
2017 Bom 75 : (2017) 3 AIR Bom R 97 (FB) : (2017) 2 KLT (SN
41) 29 : (2017) 3 Bom CR 1 : (2017) 4 KCCR (SN 466) 605 :
(2017) 69 PTC 452 : (2017) 3 Civ LT (CN) 19 (FB)

In the High Court of Bombay

(O.O.C.J., Bombay)
[Full Bench]
Trade Marks Act, Section 29 : Scope and Applicability
(BEFORE A.S. OKA, A.A. SAYED AND A.S. GADKARI, JJ.)

Cipla Ltd., Mumbai … Plaintiff;

Versus
Cipla Industries Pvt. Ltd., Delhi and Another …
Defendants.
Notice of Motion No. 2463 of 2012 in Suit No. 1906 of 2012
Decided on March 1, 2017

(a) Trade Marks Act (47 of 1999), S. 29(5) — Infringement of trade

mark — Injunction — Grant of — If a party is found to be using a registered
trade mark as a corporate or trading name or style in respect of goods
dissimilar to ones for which trade mark is registered, proprietor of
registered trade mark is not entitled to an injunction on a cause of action in
infringement under section 29(5) of Trade Marks Act, 1999.
(Paras 25 to 27)
(b) Trade Marks Act (47 of 1999), S. 29 — Use of a registered trade
mark as corporate name or trading name or style is excluded from purview
of sections 29(1), 29(2) and 29(4) of Trade Marks Act, 1999 — Said
provisions would apply in “trade mark versus mark” situations.
(Paras 27 and 31)
(c) Trade Marks Act (47 of 1999), SS. 29(4) and 29(5) — Provisions of
section 29(4) and section 29(5) operate in separate and mutually exclusive
spheres — If defendant uses registered trade mark only as a corporate
name or trading name or style in respect of dissimilar goods, a plaintiff
would have no remedy and would not be entitled to an injunction.
(Para 27)
For plaintiff: Iqbal Chagla, Senior Counsel along with Venkatesh
Dhond, Senior Counsel, Rashmin Khandekar, Minesh Andharia, Hemant
Thadhaini, Ms. Janhvi Chadha and Ms. Anshul Saurastri instructed by
Krishna and Saurastri Associates
For defendants: Ashish Kamat along with Ameet Naik and Ms. Madhu
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Gadodia and Vaibhav Bhure instructed by Naik, Naik and Co.

Page: 878

List of cases referred:

1. Raymond Limited v. Raymond Pharmaceuticals (Paras 1, 5, 6, 8, 11, 16,

Pvt. Ltd., 2010 (7) Mh.LJ. 646 : 2010 (44) PTC 25 35, 42)
(Bom.)

2. Poddar Tyres Ltd. v. Bedrock Sales Corporation (Paras 8, 14, 34)

Ltd, 1993 PTC 253

3. Pizza Hut International LLC v. Pizza Hut India Pvt. (Paras 8, 14, 35)
Limited, 2003, 105(1) Bom. L.R. 298

4. Godawat Pan Masala Produce I.P. Limited v. (Paras 9, 40)

Union of India, (2004) 7 SCC 68

5. Dhiren Krishna Paul Trading as Health and Glow (Paras 10, 35)
Clinic v. Health and Glow Retailing Private
Limited, (2012) 3 LW. 75

6. Bloomberg Finance LP v. Prafull Saklecha, 2013 (Paras 10, 36)

SCC OnLine Delhi 4159

7. Kirloskar Diesel Recon Pvt. Ltd v. Kirloskar (Paras 12, 14, 35)
Proprietary Ltd., AIR 1996 Bom. 149

8. Cronical Publication Pvt. Ltd. v. Chronical (Para 13)

Academy Pvt. Ltd., 2010 (44) PTC 78 (Delhi)

9. Vardhman Properties Ltd. CA v. Vardhman (Para 13)

Developers and Infrastructures, 2011 (45) PTC
253 (Delhi)
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10. Klas Tape Company v. Vinod Hardware Store, (Para 13)

2010 (44) PTC 39 (Delhi)

11. Sultana Begum v. Prem Chand Jain, (1997) 1 (Para 13)

SCC 373

12. Vijay Narayan Thatte v. State of Maharashtra, (Para 28)

(2009) 9 SCC 92

13. United India Insurance Co. Ltd v. Orient (Para 29)

Treasures (P) Ltd., (2016) 3 SCC 49

The Judgment of the Court was delivered by

A.S. OKA, J.:—
Overview and the questions to be decided
1. The learned Single Judge by his order dated 26th April, 2016
expressed a view that a decision of the Division Bench of this Court in
the case of Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd.,
2010 (7) Mh.L.J. 646 : 2010 (44) PTC 25 (Bom.) needs reconsideration.
Paragraph 21 of this order reads thus:—
“21.1 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

Page: 879

29(1), 29(2) and 29(4) of the Trade Maries 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?
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(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 (7) Mh.L.J.
646 : 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 marie 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 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 tb 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 preparation, 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 df
precious metal or coated therewith); combs and sponges; brushes
(except paints brushes); brush making materials; articles for
cleaning purposes; steelwool, unworked or semiworked glass (except
glass used in building); glassware, porcelain and earthenware not
included in other classes.”
5. The learned Single Judge referred to the decision of the Division
Bench in the case of Raymond Limited and quoted paragraphs 12, 13
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and 14 thereof which read thus:—

Page: 880

“12. Reading the provisions of Trademark 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 trademark can be adopted by a defendant as its
trade-name in two situations,
(1) 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 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-
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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
-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

Page: 881

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, 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
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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 Trademark 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 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

Page: 882

section 29 operate in mutually exclusive fields and therefore, the

defendant could legitimately use the plaintiffs 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 general principle that must
yield to section 29(5) is again postulated on these two provisions
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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 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.

Page: 883

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
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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
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 plaintiffs 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.”
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Page: 884

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
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. v. Bedrock Sales
Corporation Ltd, 1993 PTC 253. 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 v. Pizza Hut India Pvt. Limited,
2003, 105(1) Bom. L.R. 298. This decision accepts an argument that
use of another's trade mark in the corporate name or trading style
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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 v. Union of India,
(2004) 7 SCC 68.

Page: 885

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 v. Health and Glow Retailing Private Limited,
(2012) 2 L.W. 75. 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 2013 SCC OnLine Delhi 4159 He invited our attention
to what is held in paragraph 51 by the learned Single Judge. He
pointed out that the 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
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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.
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., AIR 1996 Bom. 149.
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.

Page: 886

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
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commentary by Venkateswaran on Trade Marks and Passing Off (Sixth

Edition). He also relied upon the law of Trade Marks by K.C. Kailasham
(HI Edition). He relied upon a decision of Delhi High Court in the case
of Cronical Publication Pvt. Ltd. v. Chronical Academy Pvt. Ltd., 2010
(44) PTC 78 (Delhi). He also relied upon two other decisions of die Delhi
High Court in the case of Vardhman Properties Ltd. CA v. Vardhman
Developers and Infrastructures, 2011 (45) PTC 253 (Delhi) and Klas
Tape Company v. Vinod Hardware Store, 2010 (44) PTC 39 (Delhi). 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 subsection
(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
bona fide 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 v. Prem Chand
Jain, (1997) 1 SCC 373. 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 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.

Page: 887

14. Referring to the decisions relied upon by the plaintiff in the

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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 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
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.
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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

Page: 888

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.

(2) The exclusive right to the use of a trade mark given under
subsection (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 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 an account of
profits, together with or without any order for the delivery-up the
infringing labels and marks for destruction or erasure.
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(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—

Page: 889

(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 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
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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 maimer 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.

Page: 890

(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.
(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
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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.
(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 section 29. Infringement of trade marks. — (1) A
registered trade mark is infringed by a person who, not being the
registered

Page: 891

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
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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 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
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
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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

Page: 892

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.
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 trade-mark 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 subsection, 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 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
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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 subsections (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 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

Page: 893

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 subsection (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
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
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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
Maharashtra, (2009) 9 SCC 92, 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., (2016) 3 SCC 49, in paragraph 39 held thus:
“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)

Page: 894

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
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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.
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
(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 is

Page: 895
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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.
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 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
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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 v.
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

Page: 896

of the decision in the case of Raymond Ltd. Once a 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
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
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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 ‘blurring’. In the context of
‘repute’ they are also relatable to the concept of ‘tamishment’, 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

Page: 897

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 Trade Marks 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 trade-mark’ as defined in
section 2(zg) although if in fact it is, it makes it easier to satisfy the
‘reputation’ requirement of section 29(4) of the Trade Marks Act. the
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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 Trade Marks Act, 1999, it is
seen that it relates to a situation where (i) the infringer uses the
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” 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 Trade Marks 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.
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 Trade Marks 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

Page: 898

name. Section 29(5) cannot be said to render section 29(4) of the

Trade Marks 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 Trade Marks Act,
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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 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 dear
that the purpose of section 29(5) of the Trade Marks Act, 1999
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. 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
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Page: 899

cannot be said to be conclusive of the interpretation to be placed on

section 29(5) read with section 29(4) of the Trade Marks 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 Trade Marks Act, 1999 relates to a
situation where (i) the infringer uses the 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”
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 Trade Marks 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 Trade Marks 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 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
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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)

Page: 900

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, subsection (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 trade
-mark “XYZ” is registered in respect of goods “A” is used while selling
goods of the category “B” which are not similar to “A”, sub-section (4)
will apply if the other conditions are satisfied. Sub-section (5) will apply
when a trade-mark “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.
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Singla v. Union of India (vide SCC p.461, para 17) said:

“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:

Page: 901

(1) In the negative.

(2) In the affirmative. The sub-sections will apply in “trade mark
versus mark” situations.
(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.
Reference answered accordingly.
———
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