Monday, 15 August 2016

India: Bombay High Court rules on the inter-relation between a Trademark and a Domain Name

In a recent order, the Bombay High Court in the case of Raymond Ltd. v. Raymond Pharmaceutical Limited, while holding that the Plaintiff’s mark “Raymond’ was distinctive and well-known, allowed use of the impugned mark by the Defendant in its domain name .

Brief Facts of the CaseRaymond Ltd. (hereinafter referred to as the Plaintiff) based in Mumbai is the largest manufacturer of worsted fabric in the world and exports its fabric to around 55 countries in the world. Raymond Pharmaceuticals Limited (hereinafter referred to as the Defendant) was founded in 1983 in Chennai. The Defendant is engaged in the manufacturing and marketing of pharmaceutical formulations.
In the case, the Plaintiff had sought injunction to restrain the Defendants from infringing the Plaintiffs' registered mark 'Raymond' or any similar mark in the domain name  or any other domain name incorporating the mark Raymond.

Contentions forwarded by the Plaintiff-
  • That the mark was adopted as the logo by the Plaintiff more than 80 years ago and it constitutes an essential feature of the corporate name of the Plaintiff.
  • That the trademark 'Raymond' is a famous household mark with tremendous reputation and goodwill. 
  • That the trademark Raymond is written in a broad lettering and style and is an original artistic work as contemplated in the Copyright Act, 1957 registered under the Act and the Plaintiff has registered the impugned trademark in India in numerous classes.
  • That over the years the mark of the Plaintiff has acquired the status of being well-known.
  • That the Plaintiff claimed to have spent approximately Rs. 68.58 Lakhs in 2014 alone for advertising and promoting its products in diverse media including newspapers, television, commercials, etc.
  • That the Plaintiff has used the trademark Raymond as a dominant feature in numerous domain names of their companies.
  • That with response to the submission of the Defendant, the Plaintiff denied that the Defendant’s domain name is a mere extension of their trading name and that merely because the name 'Raymond' is a common Christian name and because some applications for registration of marks are pending, the Plaintiff cannot be denied protection.
  • That its mark is a well- known mark and allegations of acquiescence, delay and latches have been denied.
  • That the mark 'Raymond' is well known trade-mark and a domain name is to be treated as a trade-mark.
  • That the public who associates the word 'Raymond' with the Plaintiff in relation to wearing apparel is likely to know that the name 'Raymond Pharmaceutical Private Limited' appearing on the letter head of the Defendant or used elsewhere is not that of the Plaintiff.
  • That the present suit has been filed essentially to protect the registered trade-mark of the Plaintiff in relation to goods and services which are not similar to those for which the trade-mark is registered and have a reputation in India.
  • That the continuance of the word Raymond as part their corporate name does not entitle the Defendant to use the mark as a part of their domain name.
  • That the mark of the Plaintiff qualifies as a well-known mark and a well-known trade-mark is protected in law. 
Contentions forwarded by the Defendant-
  • That the adoption of the mark 'Raymond' by the Defendant in their domain name is honest and bonafide.
  • That the domain name sought to be impugned in the suit is wherein the word 'pharma' is the short form of 'Pharmaceuticals'. According to the Defendant, the mark 'Raymond' is quite commonly used even before the plaintiff adopted it.
  • That the Defendant commenced use of the word 'Raymond' in their corporate name having adopted the same on their own for health-care products.
  • That the domain name of the Plaintiff is  or, whereas the website of the Defendant is which is visually, phonetically and structurally different and dissimilar. That in the domain names, the word 'pharma' differentiates the two domain names.
  • That Plaintiff is not manufacturing medicines or pharmaceutical products therefore, there is no likelihood of deception or confusion as alleged.
  • That no case for infringement is made out as the class of consumers of the Defendant and that of the Plaintiff are completely different and, hence there would be no risk of traffic from the website of the Plaintiff being diverted to the Defendant.

Court’s Observations- the Court in view of the pleadings forwarded by the Plaintiff and Defendant and after in-depth analysis of precedents cited in the case, penned down the following observations with respect to the alleged unauthorised use of the mark “Raymond” by the Defendant.
  • The Court opined that the Plaintiff has not been in the business of pharmaceuticals ever and the only element of commonality between the mark of the Plaintiff and the domain of the Defendant is the word "raymond".
  • That the domain name of the Defendant incorporates part of its corporate name and the corporate name of the Defendant is not actionable as infringement of the mark.
  • That the corporate name of the Plaintiff and the mark "Raymond" has been used in diverse businesses and none of these businesses described under the plaint appears to involve the business of manufacture and sale of pharmaceuticals which the Defendant is engaged in.
  • That the use of "" cannot be said to be a name for "corresponding" to that of the Plaintiff who admittedly have not registered any domain name which is similar to that of the Defendant.
  • That the overall scheme of the Trade-marks Act does not provide for any statutory protection in terms of prevention of use of a domain name which may also be a famous mark.
  • That domain name administration cannot be based only on trade-mark legislation and domain name registration holds good only for the duration of the contract between the domain name registrant.
  • That a domain name can be held and used only by one person unless the same is shared by mutual agreement and in the instant case, since the Defendant has already registered the domain name "raymondpharma" the Plaintiff cannot use the same save and except with agreement of the Defendant or by seeking transfer of the domain name by lawful means.
  • That the domain name has not been adopted without due cause or to take unfair advantage or cause any detriment to the distinctive character or repute of the Plaintiffs.

Conclusion- The instant case and observation of the Court in the case can be tagged as a noteworthy one as the Court in view of widespread use of internet and domain names ruled on a crucial point i.e. the interrelation between trademark and domain name and it also deciphered the legislative intent of the Trademark Act in terms of usage of a domain name which may also be a famous mark.

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