Section 29(4) famous mark protection discussed for the first time

In Raymond Limited v Raymond Pharmaceuticals Private Limited (Case 437 of 2006, February 15 2007), the High Court of Mumbai has issued a decision clarifying the provisions pertaining to the protection of famous marks set out in Section 29(4) of the Trademarks Act 1999.

RAYMOND is a well-known and famous mark in India for apparel and textiles. Raymond Limited owns trademark registrations for the mark for goods in Class 25. The defendant, Raymond Pharmaceuticals Pvt Ltd, carries on the business of manufacturing and selling pharmaceutical products. Although its corporate name contains the name Raymond, its pharmaceutical products are branded as LAC and Neurocare.

Raymond Limited initiated trademark infringement proceedings against Raymond Pharmaceuticals for using the name Raymond as part of its corporate name. It relied on the new provisions of Section 29(4) introduced by the 1999 Act, widening the protection granted to marks having a reputation in India. This provision provides that a registered trademark having a reputation in India may be infringed even if the infringer uses it on dissimilar goods where "the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark".

The court, while dismissing Raymond Limited's claim, held that even if Raymond was a famous and well known mark in India for apparel and textiles, an injunction was not justified since the conditions set out in Section 29(4) were not satisfied on the following grounds:

• Raymond Pharmaceuticals used the name Raymond only as part of its corporate name and there was no use as a mark for its pharmaceutical products.
  
  
• The field of operation of Raymond Limited and Raymond Pharmaceuticals was wholly different and unrelated.
  
  
• Among other things, Raymond Pharmaceuticals adduced evidence that Raymond was a common name and the results of a search for the name Raymond on Google, which displayed around 83 million results.
  

The court concluded that Raymond Pharmaceuticals' use of the name Raymond as a part of the corporate name of its pharmaceutical company could not be regarded as use which took unfair advantage of Raymond's mark for textiles and apparel, nor could it be regarded as detrimental to the distinctive character or repute of the registered mark.

This is thought to be the first decision in India interpreting with the new provisions of Section 29(4) of the 1999 Act.

Mustafa Safiyuddin, DSK Legal, Mumbai