High Court of Judicature at Bombay | Notice of Motion No. 230 of 2015 in Suit (L) No. 957 of 2014 Decided on 20 July 2016 Judge: Justice A.K. Menon Citation: 2017 (69) PTC 79 (Bom)
Background
Raymond Limited is a company based in Mumbai and is the successor to Raymond Woollen Mills Limited. It is one of the largest manufacturers of worsted fabric in the world and exports its fabric to approximately 55 countries. The plaintiff had been using the trademark “RAYMOND” as part of its corporate identity for more than 80 years prior to this suit. The mark RAYMOND is written in a distinctive broad lettering and style and is registered both as a trademark in numerous classes before the Trade Mark Registry and as an original artistic work under the Copyright Act 1957. Raymond Limited had built up enormous goodwill and reputation in the mark over decades and had spent approximately Rs. 68.58 lakhs in the year 2014 alone on advertising and promotion across newspapers television and other media. The mark RAYMOND had by this time acquired the status of being a well known trademark. Raymond Limited also used the mark RAYMOND as a dominant feature in the domain names of various group companies.
Raymond Pharmaceutical Private Limited was a company founded in 1983 in Chennai. It was engaged in the manufacture and marketing of pharmaceutical formulations. It had adopted the word “Raymond” as part of its corporate name at the time of its incorporation and had been operating its business under this name since then. The defendant also operated a website at the domain name www.raymondpharma.com. Raymond Limited had filed an earlier suit in 2006 being Suit No. 437 of 2006 seeking to restrain the defendant from using the word “Raymond” as part of its corporate name. The Division Bench of the Bombay High Court in its judgment dated 13 July 2010 had in that earlier suit declined to restrain the defendant from using “Raymond” as part of its corporate name for pharmaceutical products holding that the use of a registered trademark as part of a trade name in relation to dissimilar goods does not fall within Section 29(4) of the Trade Marks Act 1999.
In the present suit filed in 2014 Raymond Limited sought to go one step further and restrain the defendant from using the word “Raymond” in its domain name www.raymondpharma.com. The plaintiff’s case was that even though the earlier suit had not restrained the corporate name the use of “Raymond” as part of a domain name was a separate and distinct act of infringement and that the defendant ought to be restrained from operating a website under that domain name.
Issue for Determination
The central question before the court was whether the defendant’s use of the word “Raymond” as part of its domain name www.raymondpharma.com amounted to infringement of Raymond Limited’s registered trademark under the Trade Marks Act 1999 or constituted passing off and whether Raymond Limited was entitled to an injunction restraining such use.
Connected to this was a broader and significant legal question regarding the relationship between trademark law and domain names which was whether the Trade Marks Act 1999 provides statutory protection against the use of a famous mark in a domain name even where the parties deal in entirely dissimilar goods and the corporate name of the defendant using that mark has already been found by a prior court order to be non-actionable.
Statutory Provisions Involved
Section 29 of the Trade Marks Act 1999 was the primary provision examined. The court specifically analysed sub-sections 29(4) and 29(5) in detail. Section 29(4) provides that a registered trademark is infringed when a person uses a mark identical or similar to it in relation to goods or services dissimilar to those for which the mark is registered provided the mark has a reputation in India and the use takes unfair advantage of or is detrimental to the distinctive character or repute of the trademark. Section 29(5) provides that a registered trademark is infringed if a person uses it as his trade name or part of the name of his business concern dealing in goods or services in respect of which the trademark is registered.
The court also considered whether the Trade Marks Act as a whole contained any provision that specifically addressed domain names and offered statutory protection to trademark owners in respect of the use of their marks as part of domain names.
Key Holdings of the Court
The court dismissed the Notice of Motion and refused to grant an injunction to Raymond Limited. The key holdings were as follows.
First the only element of commonality between Raymond Limited’s mark and the defendant’s domain name was the word “raymond.” The plaintiff had never been in the business of pharmaceuticals and there was no overlap between the products or consumer base of the two parties.
Second the defendant’s domain name www.raymondpharma.com was simply an extension or online representation of its corporate name Raymond Pharmaceutical Private Limited. While the defendant’s corporate name had earlier been held to be non-actionable, the court examined whether the use of that name in a domain name independently satisfied the requirements of infringement or passing off and found that it did not, on the facts of the case.
Third the overall scheme of the Trade Marks Act 1999 does not provide any specific statutory protection against the use of a domain name which may also incorporate a famous mark. The court observed that domain name administration cannot be based solely on trademark legislation. A domain name registration holds good only for the duration of the contract between the domain name registrant and the registration authority.
Fourth a domain name can be held and used by only one person unless shared by mutual agreement. In the present case since the defendant had already registered the domain name “raymondpharma” Raymond Limited could not seek to prevent that use except by seeking transfer of the domain name through lawful means agreed upon between the parties.
Fifth the defendant’s adoption of the domain name was not shown to be without due cause or motivated by an intent to take unfair advantage of or cause any detriment to the distinctive character or repute of Raymond Limited’s trademark. The word “Raymond” was admittedly used by other entities as well and was also a common Christian name in use before Raymond Limited adopted it.
Sixth since Raymond Limited itself had not registered any domain name similar to www.raymondpharma.com the use of that domain name by the defendant could not be said to “correspond” to any domain name of the plaintiff so as to give rise to infringement on that basis.
Reasoning of the Court
The court’s reasoning proceeded from the finding of the Division Bench in the 2010 judgment which had already settled the question of the defendant’s corporate name. The single judge in the present matter took the position that if the use of the mark RAYMOND as part of the defendant’s corporate name in relation to pharmaceutical products was not actionable as infringement of a registered trademark under Section 29 then the mere translation of that same corporate name into a domain name could not by itself transform it into an infringement. The domain name was doing nothing more than reflecting the defendant’s existing and court-upheld corporate identity in the online space.
The court made an important observation that the Trade Marks Act 1999 does not contain any specific provision that directly deals with the protection of a trademark against its use as a domain name however, the legality of domain name use must still be assessed under the general principles of trademark infringement and passing off. The court took the view that domain names occupy a space that is partially but not entirely governed by trademark law. Domain name administration involves considerations of contractual rights between the registrant and the domain name authority and cannot be resolved purely by reference to trademark legislation. This was a departure from the approach taken in earlier cases such as Yahoo v. Akash Arora and Tata Sons v. Manu Kosuri which had treated domain names almost entirely through the lens of trademark and passing off law.
On the question of Section 29(4) the court took note of the Division Bench’s earlier analysis in the 2010 judgment and accepted the conclusion that the use of a trademark identical to a registered mark as part of a trade name or corporate name in relation to dissimilar goods does not fall within the scope of Section 29(4).
The court rejected the passing off claim on the ground that there was no misrepresentation, no likelihood of confusion, and no evidence of damage, particularly in light of the completely different nature of the parties’ goods and consumer base.The class of consumers for the two products was entirely different. A person buying pharmaceutical products would not be misled into believing that they were in any way connected to the textile brand Raymond.
The court emphasized that mere incorporation of a well-known mark in a domain name is insufficient; the plaintiff must demonstrate likelihood of confusion, unfair advantage, or detriment, which was not established in the present case
Doctrinal Significance
This judgment is notable and somewhat unusual in the landscape of Indian IP law dealing with famous marks and domain names because it reaches a conclusion that runs counter to the general trend of decisions in this area.
While most Indian courts dealing with domain name disputes involving well known marks such as Yahoo v. Akash Arora and Tata Sons v. Manu Kosuri had readily applied trademark and passing off law to grant injunctions against domain names incorporating famous marks this judgment takes a more restrained and analytical approach. the judgment clarifies that while the Trade Marks Act 1999 does not specifically refer to domain names, protection against their misuse is available where the statutory requirements of infringement or passing off are satisfied.
The case also brings to the surface the interplay and potential tension between Section 29(4) and Section 29(5) of the Trade Marks Act 1999 in the context of corporate names used as domain names. The Division Bench in the earlier 2010 judgment had held that Section 29(4) requires the use to be in relation to goods or services and does not cover the use of a mark merely as a trade name in relation to dissimilar goods. The present judgment extends this reasoning to domain names.
For trademark practitioners this case is a reminder that even where a plaintiff has a well known registered trademark the protection available in relation to domain names is not automatic and courts will carefully examine whether the statutory provisions actually cover the situation complained of. It also highlights the limits of what trademark law alone can achieve in the context of domain name disputes and points to the need for a specific domain name dispute resolution framework outside of the Trade Marks Act.
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