Cipla Protects its Corporate and Trade Name in a Battle between Trade Name and Trade Mark Jurisprude

A Full Bench of the Bombay High Court, in its recent judgment CIPLA Limited v M/s CIPLA Industries Private Ltd (Suit number 1906 of 2012), shed considerable light on the use of a registered mark in another entity’s corporate or trade name, with respect to dissimilar goods and services.

The mark CIPLA had been used by the plaintiffs, for numerous years, and was part of their corporate and trade name. It had been used for medicinal and pharmaceutical preparations, largely in Class 5. The defendants used the name CIPLA as part of their corporate or trade name, and in a slightly different form in respect of household articles. The defendants also possessed a registered mark CIPLA PLAST, in their favour, in Class 21.

Under trademark law in India, infringement may be found in cases where, inter alia, the mark is identical with or similar to an earlier trademark for similar goods and/or services or for dissimilar goods and/or services; as also for the use of the mark as a corporate/trade name for similar goods and services only. An earlier decision of the Bombay High Court Raymond Limited v Raymond Pharmaceuticals Pvt. Ltd 2007 (35) PTC 334 Bom, which had applied the principle of generalia specialibus non derogant (a general provision must always yield to a specific provision), held that sections dealing with the use of a registered trademark as part of a corporate or trade name, for the same goods and services in respect of which the mark had been registered (S. 29(5) of the Trade Marks Act), would take precedence over other sections dealing with infringement (S. 29(4) in this case). In the Raymond case, since the issue related to a trade name and the goods and services in question were dissimilar, no infringement had been found.

The Single Judge bowed to the decision in Raymond, but read down the order to indicate that a proprietor may use his mark either as a mark, or as a corporate name. The proprietor may succeed in an infringement suit if the defendant uses the mark as a mark for similar or dissimilar goods and/or services, or as a corporate name for similar goods and/or services. In Cipla, the defendant had used the Plaintiff's registered mark as a corporate name, for dissimilar (emphasis added) goods.

The Full Bench

The Full Bench held that the language of the act was clear and unambiguous. In order for infringement to be found (in the facts of the case) the mark is to be used as part of the trade name, and in respect of the same goods and/or services (emphasis added) in respect of which the trademark in question was registered.

The Full Bench thus conclusively held that there is no cause for infringement when the registered mark is used as a corporate/trade name in respect of dissimilar goods and/or services.

While this decision will keep larger entities from unfairly preventing others from using marks in good faith, as well as protecting the rights of bona fide concurrent users, it does not entirely protect the rights of the proprietors of well known marks. Since S. 29(5) (dealing with use of the mark in a corporate name) is in the nature of a “no-fault provision”, requiring only that the conditions inherent therein are fulfilled, there is no requirement for likelihood of confusion to be proved. Therefore, under S. 29, it may be difficult for proprietors of marks to prove infringement where their own mark is used in the traditional sense of a mark and the other party uses it as part of their trade or corporate name, and where the goods and/or services as covered by both marks are not similar.