Can a Reputable Mark Define Infringement?

Recently, the Bombay High Court granted interim relief in a trademark dispute between RPG Enterprises vs. Riju Ghoshal and Anr, dealing with well-known marks, marks with reputation and trademark infringement.

RGP Enterprises, the plaintiff in the present case, was established in the year 1979 and was using the trademark RPG, an acronym of its founder Ram Prasad Goenka, since the company’s inception. Ram Prasad Goenka was one of the three sons in the Goenka Family who inherited a part of his deceased father’s diverse business empire involving pharmaceuticals, energy, senior care, etc. The plaintiff had secured registration for the RPG trademark and several RPG formative marks in various classes, under the provisions of the Trade Marks Act (the “Act”). The plaintiff claimed that apart from being inherently distinctive, acquiring distinctiveness owing to the continuous, and uninterrupted use and promotion of its RPG trademarks in India and around the globe, these trademarks have come to acquire secondary meaning and were exclusively associated with the plaintiff.

In 2017, the plaintiff became aware of the trademark application for the label ‘RPG Opticals’ filed by the first defendant, Riju Ghoshal trading as RPG Opticals. This application was opposed by the plaintiff. In 2018, the plaintiff also filed a rectification application against registration for the label ‘RPG Pharmacy’ which was in the name of the second defendant, Poulami Ghoshal trading as RPG Pharmacy. Both the proceedings are pending. Upon coming across advertisement hoardings for these two labels, plaintiff investigated and found that these defendants were related to one another and were using identical RPG marks for optical lenses, sunglass, pharmacy services, etc.

The plaintiff filed the suit claiming that the RPG mark has gained reputation and recognition across all classes of goods and services, owing to continuous and extensive usage and is a “well-known trademark” and the use of identical marks for related and cognate goods and services amounts to passing off and infringement. The defendant justified its adoption to be based on Riju+Poulami+Ghoshal = RPG. It pleaded dissimilarities in marks, and different business scopes since the defendant was a retailer (classes 35 and 44) as opposed to the plaintiff who was a manufacturer (class 5), and placed reliance on Section 29(5) of the Act that the defendant is simply using the mark as a trade name and that to prove infringement, the plaintiff ought to establish that the goods in which the defendant is dealing are same/identical to the former, which is not the case. The plaintiff countered these defences pleading commonality based on the medical field, its trademark being a well-known trademark and that the defendant is using its mark as a trademark, service mark, trading style and domain name.

The court ruled in favour of the plaintiff vis-à-vis infringement and passing off against the use of label marks and domain names and held prima facie opinion that the RPG trademarks of the plaintiff are well-known and should be protected. The court addressed issues stepwise:

  • Was there infringement and passing off of the plaintiff’s mark?

In order to establish infringement under Section 29(4) of the Act, these main factors need to be satisfied- if the mark is identical/similar to the registered trademark; if it is being used in relation to the goods/services which are different from which registration has been granted; and if the registered mark has a reputation in India and use of the impugned mark is without due cause and takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

The defendant argued that to rely upon Section 29(4) of the Act, the plaintiff’s trademark is to be recorded in the list of the well-known trademarks as published by Trade Marks Registry. However, the court rejected this proposition and held that at the interim stage, there is no requirement to prove that the plaintiff’s mark is recorded in the list of well-known trademarks. It was ruled that defendant’s use of impugned labels amounted to infringement. The court differentiated between “marks with a reputation” and “well-known marks” and observed that to establish the infringement of a registered trademark, the mark doesn’t need to be recorded in the list of well-known trademarks. For proving infringement under Section 29(4) of the Act, the mark should have a reputation and not necessarily be a well-known trademark.

In order to establish passing off, three ingredients must be satisfied:

  • Goodwill and reputation of the plaintiff’s mark
  • Actual or likelihood of deception or confusion caused amongst the public
  • Likelihood or actual injury to the plaintiff by such use.

The court observed that the requirement of a ‘common field of activity’ is no more a requirement to succeed in an action for passing off and the defendant’s misrepresentation will damage the plaintiff. The court held that all factors were satisfied and an adequate case of passing off against the defendant.

  • Was there infringement by defendant’s trade name?

The defendant’s reliance on Section 29(5) of the Act was upheld as the plaintiff could not satisfy its pre-requisites of relevant provision- use of the registered trademark as a trade name for the same/identical goods and services for which the trademark has been registered. Thus, the defendant’s trade names ‘RPG Pharmacy’ and ‘RPG Opticals’ did not amount to infringement.

This decision supports the proposition that reputation supported by documentary evidence can be relied upon to claim infringement of a registered trademark against dissimilar goods and services under Section 29(4) of the Act which does not enlist declaration of a registered trademark as a well-known trademark as one of the key ingredients. Having said that, the declaration of a trademark as a well-known mark strengthens the claims of reputation.

Authored by Manisha Singh and Akanksha Kar, this article discusses the Bombay High Court’s order granting injunction in favour of RPG Enterprises Limited observing that to prove infringement under Section 29(4) of the Trade Marks Act, 1999, there is no requirement to prove that the plaintiff’s mark is recorded in the list of well-known trademarks and infringement can be proven in case of marks with a reputation as well.