Sometime it happens in trademark disputes that the impugned mark is an indicator of a trade source which is entirely different from the first i.e. the businesses and the goods are completely different bearing the same trade name/mark. What happens in that case? What course the law takes in resolution of such disputes? The instant case RAYMOND LIMITED versus RAYMOND PHARMACEUTICALS PRIVATE LIMITED 2007 (34) PTC 334 (Bom.) gives an insight in the dispute resolution of one such case.
The present suit for injunction is to restrain Raymond Pharmaceutical Private Limited from infringing the registered trademark of Raymond Limited. Raymond Limited, the plaintiff, is a company, which is the successor of Raymond Woollen Mills Limited incorporated in the year 1925 which had conceived and adopted the use of word ‘Raymond’ in a stylized manner for marketing its product. Plaintiffs have registered copyright and registered trademark for the word "Raymond".
The defendant is a company in the pharmaceutical business and has nothing to do with the apparel business. They use the word "Raymond" as part of their corporate name and not as a trademark.
The name does not appear on the pharmaceutical products therefore the issue that arises is that whether the defendants’ use of the word "Raymond" as their corporate name constitutes infringement of the registered trademark "Raymond" of the plaintiff.
It is clear that the use of the impugned mark, by the defendants, is not in relation to the goods or services in respect of which the plaintiff’s trademark is registered since the defendants do not use it on any of the defendants’ products. In fact the use is not in such a manner as is likely to be taken as being used as a trademark. This is also evident from absence of any claim from the plaintiff’s side regarding passing off.
The Court after hearing the averments held that since the use by the defendant is as part of a corporate name "Raymond Pharmaceuticals Private Limited", there appears no likelihood that such use may cause confusion on the part of the public, which has association with the registered trademark. In other words no member of public who associates word "Raymond" with the plaintiff’s trademark in relation to the wearing apparels is likely to think that word "Raymond Pharmaceuticals Private Limited" appearing on letter head or spoken elsewhere refers to the plaintiff’s trademark.
The Court also reasoned that assuming that a part of the entire name used by the defendants is identical with the plaintiff’s trademark and may constitute an infringement even if it is not used in relation to the goods and services similar to the those of the plaintiff’s, still it does not constitute an infringement unless its use by the defendant’s is shown to be "without due cause" and "taking unfair advantage" of or is detrimental to the distinctive character or repute of the registered trademark.
Also, from the point of view of a consumer, there is no association between the two products i.e. a medicine and an apparel to be available in the same shop for their use. Thus there is no reason to imagine how the use by the defendant of the trademark can be detrimental to the plaintiff’s repute of the registered trademark.
Here, two terms viz. "without due cause" and "taking unfair advantage" assume importance in the sense that the impugned word, the registered trademark for plaintiff is not used as a trademark but as a part of their corporate name thus making the action not actionable as infringement.
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