Intellectual Property Rights

CIPLA Ltd. v. CIPLA Industries Pvt. Ltd. & Ors.

2017 (69) PTC 425 (Bom) (FB)

Facts

CIPLA Ltd. was a well-known pharmaceutical company.
It owned registrations for the mark CIPLA, principally in relation to pharmaceutical and medicinal preparations.
CIPLA Industries Pvt. Ltd. used:
CIPLA as part of its corporate or trade name;
marks such as CIPLA PLAST;
in relation to household goods including soap dishes, photo frames and ladders.
The goods were different from pharmaceutical products.
CIPLA Ltd. sued for infringement and passing off.
A legal question arose regarding the interaction between:
Section 29(4), concerning reputed marks used on dissimilar goods;
Section 29(5), concerning use of a registered mark as a trade or business name.
An earlier Bombay High Court decision in Raymond had created uncertainty.
The matter was referred to a Full Bench.

Whether use of a registered mark as part of a corporate or trade name is governed exclusively by Section 29(5).
Whether Section 29(4) can be used where the trade-name user deals in dissimilar goods.
Whether CIPLA Ltd. could establish statutory infringement despite the parties’ different goods.

Section 29 contains distinct forms of trademark infringement.
Section 29(5) specifically addresses use of a registered trademark:
as a trade name;
as part of a business concern’s name.
Under Section 29(5), infringement occurs where the defendant deals in goods or services in respect of which the mark is registered.
Section 29(4) applies to use of a reputed mark in relation to dissimilar goods or services, subject to its cumulative conditions.
A specific statutory provision governing trade-name use cannot ordinarily be bypassed through a more general provision.
The different sub-sections must be interpreted harmoniously without rendering Section 29(5) meaningless.
Statutory infringement and passing off remain distinct.
Failure under Section 29 does not necessarily eliminate a passing-off claim.

The defendants used CIPLA principally as part of their corporate or trade identity.
This brought the conduct directly within the subject addressed by Section 29(5).
CIPLA Ltd.’s registrations concerned pharmaceutical goods.
The defendants dealt in household and plastic products rather than those registered goods.
The requirement in Section 29(5) was therefore not satisfied.
CIPLA Ltd. argued that Section 29(4) should apply because:
its mark had reputation;
the defendants used it on dissimilar goods;
the use took unfair advantage of that reputation.
The Full Bench rejected that route for the particular trade-name use.
If Section 29(4) were applied whenever Section 29(5) failed, the carefully drafted limitation in Section 29(5) would have no purpose.
Parliament specifically required identity between the defendant’s business field and the goods or services covered by registration when the complaint concerned a trade name.
The court could not remove that requirement through interpretation.
The decision did not grant a general licence to imitate famous corporate names.
CIPLA Ltd. could still pursue:
passing off;
other statutory provisions where independently applicable;
relief against trademark use distinct from use merely as a business name.
The reference concerned the proper statutory route, not the final merits of every possible claim.

The Full Bench held that Section 29(5) specifically and exhaustively governs infringement through use of a registered mark as a trade or business name.
Section 29(4) could not be invoked to overcome the requirement that the defendant deal in goods or services covered by the registration.
The earlier contrary understanding in Raymond was not accepted.
Use this case for: where the complained-of use is as a corporate or trade name, Section 29(5) governs and cannot be bypassed through the dilution provision in Section 29(4).