In an important ruling, the Bombay High Court clarified that a proprietor of the registered trademark is not entitled to an injunction on a cause of action in infringement under Section 29(5) of the Trade Marks Act, 1999 (“Act”) where a party is found to be using a registered trade mark as a ‘name’, viz., as a corporate or trading name or style, though in respect of goods dissimilar to the ones for which the trade mark is registered.
Applying the plain and literal interpretation of Sections 29(4) and (5) of the Act, a Large Bench of the Court said that the Sections are mutually exclusive with Section 29(4) applicable when the trademark is used “in the course of trade” and is used “in relation to goods or services which are not similar to those for which the trademark is registered” which words are absent in Section 29(5). The Court said Section 29(5) is applicable when the trademark is used “as trade name or part of trade name or name of a business concern or part of the name of business concern”.
“The difference in the phraseology and language used in the two Sub-Sections makes it clear that Sub-Section (4) applies in “trade mark versus mark” situation. It applies when the mark is used in the course of trade in relation to goods and services. Sub-Section (5) applies to a “trade mark versus trade/corporate/business name” situation. It is a special provision which is different from Sub-Sections (1), (2) and (4). Thus, Sub-Sections (4) and (5) apply to different situations arising out of use of a mark”, the Court opined.