Cipla Limited v. Cipla Industries Private Limited and Ors., (2017) 69 PTC 425 (Bom)

Cipla Limited v. Cipla Industries Private Limited and Ors., (2017) 69 PTC 425 (Bom)

 

FACTS:

• The Plaintiff, Cipla Limited, is a manufacturer of pharmaceutical products and has registered the trademark “CIPLA” under Class 5, which relates to pharmaceutical products.
• The Defendant, Cipla Industries, manufactures household items such as ladders and photo-frames, and has registered the trademark “CIPLA PLAST” under Class 21, which relates to household items such as utensils, containers, and combs, among others.
• The Plaintiffs filed a suit against the Defendants for trademark infringement in 2012, claiming that the Defendants are violating the trademark rights of the Plaintiff by using “CIPLA” in their corporate or trade name.

ISSUE:

• Whether use of a registered trademark as a trade name for dissimilar goods/services amount to infringement?

HELD:

• The full bench of the Hon’ble Bombay High Court held that the Appellant (Plaintiff) would have to demonstrate that the Defendant’s mark was identical with or similar to the Plaintiff’s registered trademark and was used in relation to dissimilar goods/services in order to invoke Section 29(4) the bench held, applying a literal reading to the statute.
• Consequently, since the case concerned the use of the registered mark as a corporate/trade name, §29(4) was overlooked in favour of §29(5).
• However, according to §29(5), infringement is only considered valid in case of “dealing in goods or services in respect of which the trade mark is registered.”
• Since the two entities in this case dealt with dissimilar goods, namely, textiles and medicines, the Court decided that the Defendants did not infringe on the Plaintiff’s trade mark rights.
• When a registered trademark is used as a company name in relation to dissimilar goods, there would be no cause of action.
• The Court sought to clear the matter by outlining four questions that needed to be answered for added clarity on this matter. The questions and their conclusions are as given below-
• 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?
  • Conclusion: No.
• 2- Whether the use of a registered trade mark as corporate name or trading name or style is excluded from the purview of Sections 29(1), 29(2) and 29(4) of the Trade Marks Act, 1999, and whether those Sections are restricted to the use of a trade mark 'as a trade mark', i.e., in the 'trade mark' sense?
  • Conclusion: Yes. The sub-sections will apply in "trademark versus mark" situations.
• 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?
  • Conclusion: Yes.
• 4. Whether the view taken by the Division Bench in Raymond Ltd V Raymond Pharmaceuticals Pvt Ltd (2010(44) PTC 25 (Bom) (DB)) is a correct view?
  • Conclusion: Yes.
• Court said that § 29(5) states that an infringement has occurred with respect to a registered mark only when the goods in question are similar. Since the Plaintiff and the Defendant in this case dealt with dissimilar goods, namely household goods and medicines, the Judges decided that no trademark infringement was committed by the Defendants.
• This decision would significantly limit the ability of entities with even well-known registered marks to act against infringement in certain situations. Further, the law regarding this matter seems to leave a loop-hole for potential infringers with dissimilar goods who may use a registered mark in their corporate or trade name