CIPLA Limited v. CIPLA Industries Private Limited & Ors.
Quick Summary
The Bombay High Court clarified how Sections 29(4) and 29(5) of the Trade Marks Act work. Using a registered mark as a company name for dissimilar goods does not by itself make infringement under 29(5). Section 29(4) may apply only if strict requirements are met. The appeal before the Supreme Court was noted as pending.
- CASE_TITLE: CIPLA Limited v. CIPLA Industries Pvt. Ltd. & Ors., (2017) 69 PTC 425 (Bom)
- PRIMARY_KEYWORDS: Section 29(4), Section 29(5), trade name, dissimilar goods
- SECONDARY_KEYWORDS: well-known mark, Bombay High Court, reputation, unfair advantage/detriment
Issues
- Does use of a registered trademark as part of a corporate/trade name for dissimilar goods amount to infringement?
Rules
- Section 29(5): Targets use of a registered mark as trade name/company name but in connection with identical or similar goods/services.
- Section 29(4): Covers use for dissimilar goods/services when the registered mark has a reputation in India and the use takes unfair advantage or is detrimental.
- Mutual Exclusivity: 29(4) and 29(5) operate separately; the same facts do not trigger both at once.
Facts (Timeline)
Arguments
Appellant (CIPLA Limited)
- “CIPLA” is well-known; use in a corporate name trades on its reputation.
- Trademark rights should prevent such use even for dissimilar goods.
- Consumers may link the businesses, hurting distinct identity.
Respondents (CIPLA Industries & Ors.)
- Goods are dissimilar; Section 29(5) does not apply.
- Use is within Class 21 for plastics/household items, not pharma.
- No unfair advantage or detriment shown to meet Section 29(4).
Judgment
The Bombay High Court held that Sections 29(4) and 29(5) are mutually exclusive. Using a registered mark as a company name for dissimilar goods does not create a 29(5) action. A claimant relying on 29(4) must prove identity/similarity of mark, reputation in India, and unfair advantage or detriment. On these facts, the defendants succeeded. The appeal to the Supreme Court was noted as pending.
Ratio
29(5) guards against trade-name/company-name use only for identical/similar goods. For dissimilar goods, infringement—if any—must satisfy the stricter 29(4) test (reputation + unfair advantage/detriment).
Why It Matters
- Cleanly separates trade name use from dissimilar goods cases.
- Sets a higher bar for owners of famous marks when industries are far apart.
- Guides pleading: choose 29(4) or 29(5) based on the goods relationship.
Key Takeaways
- Mutually exclusive: Don’t plead 29(4) and 29(5) for the same factual use.
- For dissimilar goods, prove reputation + unfair advantage/detriment (29(4)).
- Trade name use hits 29(5) only with identical/similar goods/services.
Mnemonic + 3-Step Hook
Mnemonic: “Same = Five, Far = Four.”
- Match Goods: Same/similar? think 29(5).
- Reputation Check: Dissimilar? show fame + unfair advantage/detriment under 29(4).
- Choose Cleanly: Don’t blend both; they’re mutually exclusive.
IRAC Outline
Issue
Does using “CIPLA” in a company/trade name for dissimilar goods infringe?
Rule
29(5) applies to identical/similar goods; 29(4) applies to dissimilar goods if the mark is reputed and unfair advantage/detriment is shown.
Application
Household plastics are far from pharmaceuticals; 29(5) is out. Without proof meeting 29(4), infringement is not established.
Conclusion
No 29(5) claim for dissimilar goods; 29(4) needs stronger evidence. Defendants succeeded; SC outcome pending.
Glossary
- Dissimilar Goods
- Goods/services that are different in nature, purpose, and trade channels.
- Unfair Advantage
- Free-riding on the reputation of a registered mark.
- Detriment
- Harm to distinctiveness or reputation (blurring/tarnishment).
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