Trade Mark vs. Trade Name

Raymond Limited (Appellant) v. Raymond Pharmaceuticals Pvt. Ltd. (Respondent)


Suit No. 437 of 2006, a division bench of the Bombay High Court, comprising Justices DK Deshmukh and RP Sondurbaldota, by order dt July 13, 2010, refused relief to appellant.

This judgement has open-up Pandora box .... and will be used as defense by all infringers who can encash upon the well-known trade marks / trade names (e.g. britania, godrej, bata, mahindra, bajaj, tata, kirloskar, vimal, tendulkar, kamat, parle, maruti, suzuki, honda, yahamaha, Dabur, Sandu) by using it as trade names in respect of dissimilar goods.

one fails to understand that the origin of trade mark is trade name. trade mark indicates origin of the goods... how can the origin of goods itself be infringed and be concluded that trade mark is not the trade name. In case of all the above trade names (personal names) it will be difficult to prove passing off and misrepresentation it being the personal name and if this judgement is hold good then all the above trade marks will be exposed to the risk of being diluted due to use by others in markets in respect of dissimilar goods for which the well-known trade marks is not registered. such use of trade name for dilution will be beyond the scope of infringement.

It's my personal opinion that this judgement will not serve protection to well-known trade mark / trade name. The intention of the legislature in enacting new Trade Mark Act 1999 was to expand the scope of infringement and not to curtail it.

This view/judgement will not stand test of the time....let's see...


Please click link below for the further article of Ms. Latha Nair on the above issue and findings of Supreme Court http://spicyipindia.blogspot.com/2010/10/trademark-dilution-speedy-trials-and.html

It was rumoured that soon after the passing of the said order on July 13, 2010, several defendants had been relying on the findings of the Division Bench much to the distress of plaintiffs who own well-known marks. However, matters took a smoother turn on September 27, 2010 when the Supreme Court of India disposed of a Special Leave Petition filed by Raymond Limited when it directed the Single Judge to decide the suit without being influenced by the findings of the Division Bench and within a span of nine months from the date of communication of its order. While the Supreme Court declined to interfere with the order of the Division Bench, it is a temporary reprieve not only for Raymond Limited but also for owners of well-known marks who could have been adversely affected by the said order of the Division Bench.