
or
It has been observed that a right holder who enjoys extensive reputation in its trade mark (for the purpose of this article alone, such a trade mark is being referred to as a “famous trade mark”), may have not been expressly granted the right to sue an infringer who uses the registered trade mark for identical or similar goods or services, but without due case, for either taking unfair advantage of, or causing detriment to the distinctive character or repute of the registered trade mark.
Section 29 (4) of the Trade Marks Act, 1999 (“TM Act”), is the statutory embodiment of the right of a registered proprietor of a famous trade mark, to sue infringers who cause dilution, tarnishment or blurring of the famous trade mark or take unfair advantage of the reputation of the famous trade mark. But a literal reading of Section 29 (4) of the TM Act has been adopted by courts in India to deny a registered proprietor the enforcement of this right for identical or similar goods or services, since, when read literally, Section 29 (4) of the TM Act seems to apply to use of a famous registered trade mark by an infringer only for dissimilar goods and services.
Although there is no precedent in India yet which expressly denies a registered proprietor the right to invoke Section 29(4) of the TM Act when its famous trade mark has been used by an infringer for identical or similar goods or services, yet there are certain judgements which have applied Section 29(4) of the TM Act only to cases where infringers have used the famous trade marks for dissimilar goods or services.
Illustratively, recently, the Hon’ble Supreme Court of India in the case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others, reported at (2022) 5 SCC 1 (hereinafter, “Renaissance Hotel Case”) applied Section 29(4) of the TM Act to a case involving use of a famous trade mark by the infringer for dissimilar services. While applying doing, the Hon’ble Supreme Court of India set out the bare ingredients of Section 29(4) of the TM Act in the judgement. However, in the Renaissance Hotel Case, it was never an issue between the parties that Section 29 (4) of the TM Act should apply to a case where the infringing use of a famous mark is in relation to goods or services which are identical and/or similar.
Further, recently in the case of Google LLC v. DRS Logistics (P) Ltd. & Ors., FAO (OS)(COMM) 2 of 2022 (hereinafter, “DRS Logistics Case”), the Hon’ble Division Bench of the Delhi High Court has, in the process of examining the scope of Section 29 (4) of the TM Act, observed by way of judgement, dated 10 August 2023, that “if the goods or services are similar to those covered under the registered trade mark, Section 29(4) of the TM Act is inapplicable”
The above observation of the Delhi High Court in the DRS Logistics Case may also seem to suggest that the Delhi High Court has limited the application of Section 29(4) of the TM Act to only use of a famous trade mark for dissimilar goods or services. However, this finding should not be read in isolation and ought to be read along with the facts of this case. From a reading of the entire judgement in the DRS Logistics Case, it would be clear that DRS Logistics (which was the registered proprietor of the famous trade mark) did not invoke Section 29 (4) of the TM Act for the proposition that its famous trade mark must be protected from use by an infringer or identical or similar goods or services. The Judgement does not record any such submission of DRS Logistics.
It is thus noteworthy that no court in India has had the occasion to pronounce a judgement in a case where the registered proprietor of the famous trade mark has pegged its case under Section 29 (4) of the TM Act on account of the infringers use for identical or similar goods or services and the court has either allowed or denied this prayer.
In view of some grey on this issue, it is the opinion of the authors that Section 29 (4) of the TM Act cannot be held to be only applicable to cases of use of famous trade marks for dissimilar goods or services. This is because, any interpretation which grants less protection to a trade mark that has a reputation in relation to identical or similar good or services as compared to a trade mark that has a reputation in relation to dissimilar good or services, would be contrary to the overall scheme and objectives of the TM Act. In other words, where a registered trade mark is used for identical or similar goods or services, it must enjoy, a fortiori, protection which is at least as extensive as where such registered trade mark is used for dissimilar goods or services.
The intention of the legislature in using the words “is used in relation to goods or services which are not similar to those for which the trade mark is registered” in Section 29 (4) of the TM Act was to carve out a provision in Section 29 of the TM Act which specifically also deals with infringing use for dissimilar goods or services and not to exclude application of the provision to infringing use for identical or similar goods or services.
A potential case study on this issue could be a case of an infringer using a famous mark to sell counterfeit goods. When it is a case of counterfeit goods, the presumption is that the infringer is selling identical or similar goods to the customer. The adverse effect of such illegal sale is exactly what Section 29(4) of the TM Act seeks to remedy. In such a case, and if the literal meaning of Section 29(4) of the TM Act is adopted, the registered proprietor of the famous trade mark would be unable to sue the infringer under Section 29(4) of the TM Act since the infringer has used the famous mark for selling identical or similar products.
This would imply that the registered proprietor would have to establish confusion under Section 29(2) of the TM Act (when confusion is otherwise not required to be shown in a case under Section 29(4)) or establish infringement under Section 29(1) of the TM Act. This would result in an illogical scenario since the adverse effect of such sale is otherwise covered by the provisions of Section 29(4) of the TM Act.
In India, it is a settled rule of construction of statutes that where the plain literal interpretation of a statutory provision produces a manifestly absurd and unjust result, which could never have been intended by the legislature, Courts may modify the language used by the legislature or even “do some violence” to it, so as to achieve the obvious intention of the legislature and produce a rational construction (Luke v. Inland Revenue Commissioner [(1963) AC 557]). Courts may also, in such a case, read into the statutory provision a condition which, though not expressed, is implicit as constituting the basic assumption underlying the statutory provision.
The authors would like to draw some assistance from the position which exists in jurisdictions which have near identical provisions. Illustratively, Under Article 5(2) of the EU Directives, which was in pari materia to Section 29(4) of the TM Act, the European Court of Justice in the case of Davidoff and CIE SA and Zino Davidoff SA v. Goffkid Ltd., reported at [2003] E.T.M.R. 42 has held that Article 5(2) of the EU Directives would apply to a case where the infringing use of a famous mark is in relation to goods or services which are identical and/ or similar. Similarly, even in AdidasSalomon AG, Adidas Benelux BV v. Fitnessworld Trading Ltd., reported at [2004] E.T.M.R. 10, the European Court of Justice, while relying on the Davidoff Case, came to the same conclusion.
This proposition further finds the support from well-known commentaries like Kerly’s Law of Trade Marks and Trade Names, Fourteenth Edition, wherein the author has cited with approval both the above decisions.
In conclusion, the authors would suggest that a wider interpretation of Section 29 (4) of the TM Act would do justice to the overall scheme of Section 29 (4) of the TM Act which seeks to provide a remedy to registered proprietors of famous trade marks from infringing use which takes unfair advantage of such famous trademarks and/or causes blurring, dilution and tarnish-ment of goodwill and reputation of famous trademarks. Such an interpretation would give a registered proprietor of a famous trade mark a much-needed ammunition to tackle the menace of counterfeiting, IP trafficking, etc., in which the infringing use is generally for selling identical or similar goods or services and in which serious adverse effect is caused to the reputation of the registered famous trade mark.
Mohit Goel is a Partner at Sim And San. Mohit’s expertise extends to dispute resolution in the field of Intellectual Property Rights and Arbitration and Conciliation. Mohit has played and continues to play a key role in some of India’s biggest Intellectual Property disputes. Mohit is also an active member of the International Trademark Association (INTA).
Sidhant Goel heads the dispute resolution team at Sim And San. Specializing in Patents Dispute Resolution, Sidhant has vast experience in conducting trial in civil litigation. He is currently spearheading some of the most contentious Patent Litigations in the Country, including SEP litigation at the Firm. He is also leading several domestic and international Arbitrations at the Firm. Sidhant is a practising Lawyer, and also has an Honours Degree in Physics.
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