Raymond Ltd. v. Raymond Pharmaceuticals Pvt. Ltd., [2010 SCC OnLine Bom 967]
FACTS:
The plaintiff “Raymond Limited” a company which is the successor of “Raymond Woollen Mills Ltd”, had conceived and adopted the use of the word “Raymond” in a stylised manner for marketing its products.
On 27th June 1983, Plaintiff obtained registration for the trade mark ‘Raymond’ under Registration No. 401766 in respect of textile piece goods, including shirting, suiting, saris and dress materials.
Plaintiff claimed that the use of the trademark of the Plaintiff i.e. “Raymond” in the corporate name of the Defendant, who is a pharmaceutical company, amounted to infringement of the trademark of the Plaintiff. Therefore, the Plaintiff claimed in the plaint a permanent injunction restraining the Defendant from infringing its trademark by using it as a part of its corporate name.
The matter was heard before the High Court of Bombay.
The principle of trademark protection, in lieu of Section 29 of the Trademarks Act 1999 holds that protection cannot be granted when the adopted trademark is not dealing in the domain of goods as the other party’s trademark is.
ISSUE:
Whether the Defendant’s use of the contended trademark as its own misguides the public, and can be considered as passing off?
HELD:
The High Court of Bombay dismissed the injunction prayed for by the Plaintiff and stated that the provisions of the Trademarks Act do not provide protection for names which by virtue of general knowledge and common sense, may be well-known trademarks. The Court held that the disputed name was not actionable as an infringement of the registered trademark of the Plaintiff.
The Court held that “Although trademarks 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 trademark protection”