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Well-known – ness on the go!!

Well-known – ness on the go!!

On March 6th, 2017 the Trade Marks Office notified new sets of rules wherein the trade mark owners can now file their trade marks in an elite list if their mark satisfies the touchstone of a well- known trade mark. The list shall be maintained by the Trade Mark Office. But, earlier to the new rules the Bombay High Court has issued orders in the case of Cipla Limited v. Cipla Industries Pvt Ltd, where the Court has limited the ability of the proprietors of the well – known trade marks having reputation to file action against infringement in certain circumstances.

The plaintiff Cipla Limited is a well – known pharma company, whereas, Cipla industries are engaged in the business of various household. In this the Division bench was acting on a reference made by the Single Judge bench of the same High Court. Previously in Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd. it was held that a defendant engaged in the business if different and dissimilar goods or services can use the plaintiff’s registered trade mark as its corporate name. Further, there is no risk of infringement.

The Trade Marks Act, 1999 includes corporate names, trade names in the definition of trade marks. The present case deals with the sections 29(4) and 29(5) of the Trade Marks Act, 1999. The Sections are as below:

4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark registered.

Section 29(4) deals with the dilution of trade marks. In fact in Bloomberg Finance LP v. Praful Saklecha & Ors had held that, to prove infringement under Section 29(4), it may not be necessary for a registered proprietor to show that it is well-known, although, if in fact the mark is well-known, it would be easier to satisfy the requirement of ‘reputation’. Bloomberg Finance LP, had approached the Court under 29(4) when its well-known mark BLOOMBERG was used as a corporate name by a number of companies engaged in diverse businesses.

The justification laid down by the Court gives a limited analysis of the Section 29(4) of the Trade Marks Act, 1999.  The above limited interpretation of Section 29(4) by the Full Bench is a set-back for the protection of well-known marks in India.

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