What’s in a Name? Bombay High Court Discusses Trade Mark Infringement Through Trade Names

For trade mark protection to be worthwhile, a registered proprietor must have access to an effective remedy to enforce his rights. Therefore, Section 29 of the Trade Marks Act, 1999, attempts to include a broad range of activities within the definition of infringement. Section 29(5) of the Act deals with infringement of a trade mark through its use in a trade name. However, is a registered mark infringed if it is used in a trade name associated with a business dealing in goods or services dissimilar to those in respect of which it was registered? This question was answered by the Bombay High Court in its recent decision in RPG Enterprises Ltd. v Riju Ghoshal, delivered on March 21, 2022. While the judgement dealt with three issues, this article focuses on infringing trade names.

Facts of the Case

The Plaintiff, RPG Enterprises Ltd, is a conglomerate operating in diverse sectors of the economy. The Defendants, Riju and Poulomi Ghoshal, are a married couple separately operating two businesses in Kolkata, dealing in opticals and pharmaceuticals.

In 1979, the Plaintiff became the registered proprietor of the trade mark “RPG”. Since then, the Plaintiff has successfully registered several other marks incorporating the acronym RPG. These marks have been used unceasingly since their registration in relation with various goods and services sold by the Plaintiff in India and abroad. The controversy arose when the Plaintiff discovered the Defendants trading under the names “RPG Opticals” and “RPG Pharmacy”. The Defendants had registered the logo RPG Pharmacy as a trade mark, and had applied for registering the logo RPG Opticals.

Contentions of the Parties

Before the Bombay High Court, the Plaintiff contended that its RPG mark possessed all the characteristics of a well-known mark, and had acquired substantial goodwill and reputation in the country. The Defendants’ use of RPG in their logos was a dishonest attempt at unjustly gaining from the Plaintiff’s reputation. The Defendants’ logos were extremely similar to the Plaintiff’s RPG marks, and the services offered by them were related to those offered by the Plaintiff.

On the other hand, the Defendants emphasised that the unique fonts and colour combinations used in their logo marks lent them a distinct visual impression, and prevented any possibility of consumer confusion. The Defendants also argued that as they were using their marks only as trade names, an action for infringement could be brought against them only under Section 29(5) of the TM Act, which requires the infringing goods to be identical to the goods of the registered proprietor. The Defendants also highlighted the fact that while the Plaintiff was engaged in manufacturing pharmaceuticals, the Defendants only retailed them, and the Plaintiff’s and Defendants’ marks related to different classes of goods and services under the Trade Marks Rules, 2002.

Decision of the Court

Infringement Under Section 29(4)

The Court found that the Defendants were using their logos not just as trade names, but also as trade marks. Noting the goodwill garnered by the Plaintiff’s well-known RPG trade marks, and their deceptive similarity with the Defendant’s RPG logos, the Court held that the Plaintiff had made out a case for infringement under Section 29(4) of the TM Act.

Infringement Under Section 29(5)

Relying on its previous decision in Cipla Ltd v Cipla Industries Pvt Ltd, the Court observed that Section 29(5) is the only provision of the Act governing infringement through trade names. As is clear from the language of the provision, it can be attracted only if the Defendant used a registered trade mark in its trade name, and also dealt with the goods and services in respect of which the trade mark was registered. As the Plaintiff’s RPG marks were registered in relation to different classes of goods and services from the Defendants’, the latter condition was not satisfied. Therefore, the Court held that the trade names RPG Pharmacy and RPG Opticals did not constitute an infringement of the Plaintiff’s registered RPG marks.

At Odds with the Delhi High Court?

In Bloomberg Finance LP v Prafull Saklecha, the Delhi High Court took a contrary approach to the same issue. There, the Court held that Section 29(5) is not the only remedy available for the infringement of a registered trade mark through use in a trade name. If the second condition under Section 29(5) has not been fulfilled (the infringer deals in dissimilar goods or services), the aggrieved trade mark owner can seek a remedy under Section 29(4) of the TM Act. While coming to this conclusion, the Court observed that Section 29(5) was inserted into the TM Act to harmonise its provisions with the amended Sections 20 and 22 of the Companies Act, 1956. Sections 20 and 22 empower the Registrar of Companies to refuse to register a company if its proposed name bears a semblance to a registered trade mark. Further, the Court alluded to the legislative intent behind Section 29 of the TM Act. If no remedy were available to a registered proprietor whose mark had been used in the trade name of a business dealing in dissimilar goods, infringers would be offered a safe avenue to take unfair advantage of registered marks.

Conclusion

The rationale behind granting protection to trade marks is not limited to preventing consumer confusion. Registered trade marks also shield the goodwill garnered by a business from dilution. The decision in this case mirrors exactly the decision of the Bombay High Court in Cipla, which strictly interpreted Section 29 of the TM Act to restrict the remedies available to a registered proprietor whose mark had been used in someone else’s trade name. The decision overlooks the very real possibility of damage being caused to the reputation associated with a well-known mark, if it is used in the trade name of a business dealing in dissimilar goods or services. In fact, in cases such as this, it is not far fetched to imagine that some consumer confusion could result from the use of the trade name. The Plaintiff in this case manufactured pharmaceutical ingredients, and the Defendants operated pharmacies. While the Court observed that the registered  marks were associated with different classes under the Trademark Rules, this reasoning does not reflect the thought process of an everyday consumer.

Author: Asil Singh a law student at MNLU Mumbai, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney,

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