Case Details:
Citation: 2010 (44) PTC (Bom)
Court: High Court of Bombay
Bench: Division Bench and Single Judge Bench
Year of Judgment: 2010
Type of Case: Trademark Infringement and Passing Off
Introduction:
This case deals with a trademark dispute between Raymond Ltd., a textile giant, and Raymond Pharmaceuticals Pvt. Ltd., a company engaged in the pharmaceutical business. The controversy centered around the use of the mark “RAYMOND” by the Defendant as part of its corporate name and domain name, which the Plaintiff alleged amounted to infringement, passing off, and dilution of its well-known trademark.
The Bombay High Court’s judgment is significant as it explores the scope of trademark protection where identical or similar marks are used for dissimilar goods, and it reiterates the principles governing likelihood of confusion, bona fide use, and domain name disputes.
Background and Facts:
The Plaintiff, Raymond Ltd., is a leading Indian manufacturer and marketer of textiles, garments, and related products. It adopted the trademark “RAYMOND” in the early 1920s and had, over several decades, established substantial goodwill and reputation both within India and internationally. The Plaintiff’s mark “RAYMOND” had become synonymous with premium quality clothing and fabrics, making it a well-known mark under Indian trademark jurisprudence.
The Defendant, Raymond Pharmaceuticals Pvt. Ltd., was incorporated in 1983 under the Companies Act. It engaged in the business of manufacturing, marketing, and selling pharmaceutical and healthcare products under the name “Raymond Pharma.” The Defendant also registered a domain name incorporating “raymondpharma” for its online presence and business communication.
Upon learning of the Defendant’s use of the mark “RAYMOND,” the Plaintiff instituted a civil suit before the Bombay High Court seeking:
Permanent injunction restraining the Defendant from using the mark “RAYMOND” or any mark deceptively similar to it in its trade name, domain name, or otherwise.
Damages and costs, alleging loss of distinctiveness and dilution of the Plaintiff’s mark.
Transfer of the Defendant’s domain name, arguing that it misled consumers and amounted to cybersquatting.
The Plaintiff claimed that “RAYMOND” was the essential and dominant part of its trademark and corporate identity, and that any unauthorized use by others, even for unrelated goods, would lead to association, confusion, and dilution.
Issues Before the Court:
Whether the Defendant’s use of “RAYMOND” as part of its corporate and domain name constituted infringement under the Trade Marks Act, 1999.
Whether such use amounted to passing off, causing confusion or dilution of the Plaintiff’s mark.
Whether the Plaintiff’s trademark “RAYMOND,” being a well-known mark, entitled it to protection across unrelated classes of goods.
Whether bona fide use of a registered corporate name can still amount to trademark infringement.
Arguments:
Plaintiff’s Arguments:
Well-Known Trademark: The Plaintiff contended that “RAYMOND” had achieved the status of a well-known mark under Section 2 ( 1 ) ( zg ) of the Trade Marks Act, 1999, and therefore enjoyed protection across all classes of goods and services, not merely textiles.
Likelihood of Confusion and Dilution: The Plaintiff argued that the Defendant’s use of “RAYMOND” in its corporate and domain names would likely confuse or deceive consumers into believing that the Defendant was connected to or endorsed by the Plaintiff.
Trans-Border Reputation: The Plaintiff emphasized that its mark had international recognition, and under the principle of trans-border reputation, it deserved broader protection even against unrelated goods.
Domain Name as Trademark Use: It was further argued that a domain name serves the same purpose as a trademark — it identifies the source of goods or services. Hence, the Defendant’s registration of “raymondpharma.com” constituted infringement.
Bad Faith and Unfair Advantage: The Plaintiff claimed that the Defendant’s adoption of the mark was not bona fide but calculated to ride on the goodwill and reputation of Raymond Ltd., thereby gaining unfair advantage and diluting the distinctiveness of its mark.
Defendant’s Arguments:
Different Goods and Market: The Defendant contended that the two entities operated in completely different sectors — the Plaintiff in textiles and the Defendant in pharmaceuticals. Therefore, there was no likelihood of confusion among consumers, as the target audience, distribution channels, and nature of goods were entirely distinct.
Bona Fide Adoption: The Defendant asserted that “RAYMOND PHARMACEUTICALS” had been its registered corporate name since 1983, adopted in good faith, without intent to deceive or exploit the Plaintiff’s goodwill.
Corporate Name Usage: The Defendant argued that the use of “RAYMOND” was merely part of its corporate identity, and not as a trademark for textiles or any goods competing with the Plaintiff. Therefore, it did not amount to infringement under Section 29 of the Trade Marks Act, 1999.
Absence of Confusion: The Defendant maintained that the Plaintiff had not produced any evidence of actual confusion, deception, or harm caused by the use of the Defendant’s mark.
Domain Name Legitimacy: Since the Defendant’s domain name incorporated its own corporate name (“raymondpharma.com”), it could not be considered dishonest or misleading.
Court’s Observations:
The Court carefully analyzed the evidence, the nature of the goods, and the legal principles governing infringement, passing off, and dilution under the Trade Marks Act, 1999.
Nature of Goods and Market: The Court emphasized that the nature of goods and field of trade are decisive factors in determining confusion. It noted that textiles and pharmaceuticals are entirely unrelated industries, catering to different consumers, and sold through different trade channels.
Absence of Confusion or Association: There was no likelihood of confusion or deception among consumers, as no reasonable consumer would associate a textile manufacturer with a pharmaceutical company merely because they shared a common word in their name.
Corporate Name Protection: The Court highlighted that the Defendant’s use of “RAYMOND” was part of its registered corporate name, which had been in existence since 1983, and lawfully used. The Court held that the use of a mark as part of a corporate name does not automatically constitute infringement, unless it is shown to be dishonest or intended to deceive.
Domain Name: The Court observed that the Defendant’s domain name — raymondpharma.com — was directly derived from its corporate identity. Since the domain name did not misrepresent the nature of the Defendant’s business, it could not be considered misleading or deceptive.
Well-Known Mark Argument: While the Court acknowledged the Plaintiff’s mark as famous and reputed, it clarified that the concept of a “well-known mark” does not grant an absolute monopoly across all goods and services. The Court referred to Sections 29 ( 4 ) and 29 ( 5 ) of the Trade Marks Act, 1999, which require a showing of unfair advantage, detriment, or dilution — none of which were adequately proved by the Plaintiff.
Decision and Holding:
The Single Judge and subsequently the Division Bench of the Bombay High Court held that:
The Defendant’s use of the mark “RAYMOND” as part of its corporate name and domain name did not constitute trademark infringement or passing off.
There was no evidence of confusion or deception in the public mind.
The goods and services offered by both parties were unrelated, and hence, the likelihood of confusion was negligible.
The bona fide adoption and use of the corporate name by the Defendant since 1983 protected it from claims of bad faith.
Accordingly, the Plaintiff’s suit was dismissed.
Legal Significance and Precedent Value:
The case reaffirmed that Section 29 ( 4 ) of the Trade Marks Act, 1999 (infringement for dissimilar goods) applies only when the mark is unfairly used to take advantage of the reputation of a well-known mark.
It highlighted the balance between trademark protection and fair business use, preventing unjust monopolization of common or personal names.
The judgment provided clarity on domain name disputes, stating that the mere inclusion of a well-known mark in a legitimate corporate domain name is not actionable.
The decision is often cited alongside Mahendra & Mahendra Paper Mills v. Mahindra & Mahindra Ltd. (2002) 2 SCC 147 and Daimler Benz AG v. Hybo Hindustan (1994) for understanding the scope and limits of protection of well-known trademarks.
Conclusion:
The judgment in Raymond Ltd. v. Raymond Pharmaceuticals Pvt. Ltd. represents a pragmatic and balanced interpretation of trademark law. The Court protected the principle of honest concurrent business activity and avoided extending the Plaintiff’s rights beyond reasonable limits.
The ruling underscores that mere similarity of names does not constitute infringement when the goods, consumers, and trade channels are unrelated, and when the adoption is bona fide. It remains a landmark precedent in Indian trademark jurisprudence on cross-industry mark conflicts and corporate name disputes.