Raymond Limited Vs. Raymond Pharmaceutical Pvt. Ltd. - Court Judgment

Excerpt:
copyright act, 1957- trade marks act -section 29(1),section 29(2),section 29(4),section 29(5) -indian companies act, 1956 - section 20, section 22 infringement of trademark plaintiffs claim market leadership as manufacturers of textiles and ready-made garments - plaintiffs claim proprietary interest in mark created by employee of plaintiffs plaintiffs are using the logo for nearly many years - defendants, are in pharmaceutical business - plaintiffs' allegation that defendants have unauthorisedly used plaintiff s mark in their domain name and e-mail address for its business purposes defendants' ownership of same domain and right to utilize same for all legitimate purposes cannot be interfered with by third party unless adjudication order was obtained that not to usedomain name.....1. by this notice of motion, the plaintiffs seek injunctions restraining the defendants, their directors, proprietors, servants, subordinates, representatives, stockists, dealers and agents and other persons under them, from infringing the plaintiffs' registered mark 'raymond' ( the mark ) in any manner including by using the mark or any similar mark in the domain name www.raymondpharma.com or any other domain name incorporating the mark or any other similar mark as a part of the defendants' website, e-mail address or otherwise. the plaintiffs also seek to restrain the defendants from passing off the defendants' goods or website as that of the plaintiffs. the plaint similar permanent injunctions, damages in a sum of rs.50 lakhs, in the alternative accounts in respect of the profits earned.....

Judgment:

1. By this Notice of Motion, the Plaintiffs seek injunctions restraining the Defendants, their Directors, proprietors, servants, subordinates, representatives, stockists, dealers and agents and other persons under them, from infringing the Plaintiffs' registered mark 'Raymond' ( the Mark ) in any manner including by using the Mark or any similar mark in the domain name www.raymondpharma.com or any other domain name incorporating the Mark or any other similar mark as a part of the Defendants' website, E-mail address or otherwise. The Plaintiffs also seek to restrain the Defendants from passing off the Defendants' goods or website as that of the Plaintiffs. The plaint similar permanent injunctions, damages in a sum of Rs.50 Lakhs, in the alternative accounts in respect of the profits earned by the Defendants by using the Mark and for a decree for amounts found to be due on accounts being taken.

2. The Plaintiffs were incorporated in 1913 as Raymond Woolen Mills Limited, are presently known as Raymond Limited and claim market leadership as manufacturers of textiles and ready-made garments. The Plaintiffs and its subsidiaries are also engaged in the business of personal care products, air charter services, latex products, engineering tools, film production, advertisement and education services. The Plaintiffs claim proprietary interest in the Mark created by an employee of the Plaintiffs. The Mark was adopted as the Plaintiffs' logo more than 80 years ago and it constitutes an essential feature of the corporate name of the Plaintiffs. The Plaintiffs claim 'Raymond' is a famous household mark with tremendous reputation and goodwill. Raymond is written in a broad lettering and style and is an original artistic work as contemplated in the Copyright Act, 1957 registered under the Act with effect from 20th December, 1993 and the registration is still valid. The Plaintiffs have registered the Mark in numerous classes under the Trade Marks Act. Copies of the certificates of the registration are relied upon and annexed to the plaint. The Plaintiffs have contended that over the years has acquired the status of very well known and famous mark. Their products are of superior quality and have earned excellent reputation and goodwill. The Plaintiffs sales are reported to be in excess of Rs.218 Crores. The Plaintiffs claim to have spent approximately Rs. 68.58 Lakhs in 2014 alone for advertising and promoting their products in diverse media including newspapers, television, commercials, etc and have used their trade-mark Raymond as a dominant feature in numerous domain names of their companies. They claim to have a large following on social media.

3. The Defendants, on the other hand, are in the pharmaceutical business and it is the Plaintiffs' case that the Defendants have unauthorisedly used the Mark in their domain name www.raymondpharma.com and E-mail address info@raymondpharma . com for its business purposes. Apart from committing the tort by passing off the defendants are allegedly riding on the goodwill and reputation of the Mark and such misrepresentation is likely to cause confusion and deception amongst the public. The Plaintiffs impugn such unauthorized use.

4. On or about 26.12.2005 the Plaintiffs filed Suit No.437 of 2006 in this Court ( 2006 Suit ) seeking to prevent Defendants from using the name 'Raymond' as a part of their corporate name. The Plaintiffs also filed a complaint under Section 20/22 of the Indian Companies Act, 1956. The Registrar of the Companies by order dated 17.7.2012 directed the Defendants to change their name and exclude the name 'Raymond'. The Defendants challenged the said Order in a Petition filed in Madras High Court and the Order of the Registrar of Companies came to be stayed. It is submitted that the Plaintiffs have suffered irreparable harm and injury by reason of the infringement and monetary compensation would not be sufficient to redress the continuing harm resulting from the Defendants wrongful acts resulting in a cause of action that is continuing from day-to-day and hence unaffected by the law of limitation.

5. The Plaintiffs had sought and have obtained leave under Clause 12 of the Letters Patent on 17.9.2014. In support of Notice of Motion, an affidavit of Thomas Fernandes, Company Secretary of the Plaintiff has been filed and which relies upon the contents of the plaint. An affidavit-in-reply dated 23.9.2014 has been filed on behalf of the Defendants contending that the plaint contains false misleading statements and that the Plaintiffs have abused of the process of the Court since 'Raymond' is common Christian name and no person can claim exclusivity over the name 'Raymond'. Reference is also made to the name of the popular novelist/writer Raymond T. Chandler, apart from contending that it is very common name and a large number of trade-marks use the word 'Raymond'. All averments in the plaint have been dealt with ad-seriatim. Acquiescence, delay since August 2009 (when the domain was registered) and laches are attributed to the Plaintiffs, dis entitling them to any reliefs. The Defendants have filed a Written Statement in which they have sought summary dismissal of the present suit for the reason that on 26th June, 2006, the Plaintiffs withdrew the Clause 14 Petition in the 2006 suit and abandoned the plea of passing off. According to the Defendants, the plaint in this suit does not disclose any cause of action and the use by the Defendants of the name 'Raymond' in its corporate name or its domain name or E-Mail address cannot be prevented since an injunction sought in the 2006 suit was refused and a Special Leave Petition filed impugning the refusal also came to be dismissed.

6. The Defendants were incorporated on 31.3.1983 under the name 'Raymond Pharmaceutical Private Limited' and have built up substantial goodwill and reputation by use of their corporate name, independent of the trade-marks and brand names used by the plaintiffs for their products. Therefore, the Defendants are well and sufficiently entitled to use the name 'Raymond' in their domain name as well as E-mail address and accordingly, have been using it since 2009 after they ascertained availability of the name. According to the Defendants, adoption of the mark 'Raymond' in their domain name is honest and bonafide. The domain name sought to be impugned in the suit is www.raymondpharma.com. The word 'pharma' is the short form of 'Pharmaceuticals . According to the Defendants, the mark 'Raymond' is quite commonly used even before the plaintiff adopted it including by the leading watch brand Raymond Weil . It is contended that apart from prior use of the mark by various other companies, Raymond Weil watches have been sold in India since 1980. The Defendants have contended that they have commenced use of the word 'Raymond' in their corporate name having adopted the same on their own for health-care products. The Defendants contend that the word 'Raymond' means mighty protection and is a suitable name for a pharmaceutical and health-care products company. According to the Defendants, Plaintiffs' domain name is www.raymondindia.com or www.raymond.in whereas the Defendants' website is www.raymondpharma.com which is visually, phonetically and structurally different and dissimilar. The word 'pharma' differentiates the two domain names and the customers, goods and business of the Defendants are distinct and different from those of the plaintiff and there is no scope whatsoever for deception, confusion or passing off.

7. The Defendants have denied the Plaintiffs' claim to originality of the Mark 'Raymond' and contended that the Plaintiffs have not used the Mark in any goods included in Class 5. The Plaintiffs are not manufacturing medicines or pharmaceutical products therefore, there is no likelihood of deception or confusion as alleged. It is denied that the Defendants have unauthorisedly used the Mark in their domain name and email address leading to infringement of the Mark under the provisions of Section 29(1) or 29(2) of the Trade Marks Act. The Defendants have denied all the allegations of misrepresentation, unauthorised use or the possibility of any confusion or diluting distinctiveness of the Mark. The class of consumers of the Defendants' products and the Plaintiffs' products are completely different and, therefore, there is no risk of traffic from the Plaintiffs' website being diverted to the Defendants site.

8. In an affidavit-in-rejoinder the Plaintiffs have denied that the defendants domain name is a mere extension of their trading name and contended that the website is used for commercial purposes and not merely for information. The Plaintiffs have further contended that merely because the name 'Raymond' is a common christian name and because some applications for registration of marks are pending, the Plaintiffs cannot be denied protection. The Plaintiffs have contended that many of the websites referred to by the defendants in support of their case of common use of the Mark are not of entities in India but outside the country. It is reiterated that the Plaintiffs mark is a well known mark and allegations of acquiescence, delay and latches have been denied. The Plaintiffs have already filed suits against some parties in India and obtained decrees against them. It is in this background that the present Motion has been urged on behalf of the Plaintiffs.

9. Mr. Tulzapurkar, the learned Senior Counsel appearing on behalf of the Plaintiffs submitted that the mark 'Raymond' is well known trade-mark and a domain name is to be treated as a trade-mark. He submitted that the Defendants were emboldened by their success in the Notice of Motion in the 2006 suit and had since adopted the same mark 'Raymond' and incorporated it in domain name of the Defendants. He submitted that the Order of the learned Single Judge dated 15.2.2007 had only considered Plaintiffs' action so far as it relates to Section 29 Sub-section 5 of the Act. Mr.Tulzapurkar submitted that no member of the public who associates the word 'Raymond' with the Plaintiffs' trade-mark and in relation to wearing apparel is likely to know that the name Raymond Pharmaceutical Private Limited appearing on the letter head of the Defendants or used elsewhere is not that of the Plaintiffs.

10. Mr. Tulzapurkar submitted that the action in the 2006 Suit was filed under Section 29(5) because the defendants' corporate name used the Mark and not under Section 29(4). That action had failed and the order dismissing the Motion has since attained finality. However, merely because the said Motion was dismissed, it is not as if the Plaintiffs cannot pursue this action under Section 29(4) against the Defendants. The present suit is filed essentially to protect Plaintiffs' registered trade-mark in relation to goods and services which are not similar to those for which the trade-mark is registered and have a reputation in India. That the use of the Mark was without due cause, takes unfair advantage of and is detrimental to the distinctive character or reputation of the registered trade-mark. In other words, in respect of dis-similar goods, the Plaintiffs continue to have a cause of action against the Defendants and could seek reliefs in the present suit under Section 29(4), which is a separate class by itself. Making reference to paragraphs 2,4,5,6 and 13 of the order dated 15.2.2007 passed in the Motion in the 2006 suit and the judgment of the appellate Court dated 13.7.2010, Mr. Tulzapurkar submitted that the Court had held that in order to attract the provisions of Sub-section (4) of Section 29, the Plaintiffs must show that the Defendants' mark is identical to or similar to that of the Plaintiffs' registered trade-mark and the Defendants are using the mark in relation to goods and services which are dissimilar to the goods in relation to which mark of the Plaintiffs' is registered. Mr. Tulzapurkar referred to the analysis by the Division Bench of Section 29 and referred to paragraph 9 of the judgment. He submitted that the Division Bench had proceeded on the basis that the Plaintiffs could not have relied upon the provisions of Section 29(4) since there is no dispute that the Defendants are not dealing in goods in respect of which the Plaintiffs' mark is registered. The Division Bench did not interfere with the impugned order as it not consider the Plaintiffs' case as one under sub-section (4) of Section 29 and did not consider it necessary to refer to the material relied upon by the Plaintiffs to contend that the Plaintiffs' mark has reputation in India and that the adoption of the mark by the Defendants is without due cause.

11. The present cause of action is a fresh cause. The impugned domain name was not in use when the earlier suit had been filed and when the interim order therein attained finality. The domain name and the website are stated to have been operational since August, 2009 and the Plaintiffs are entitled to prosecute the present suit. Mr. Tulzapurkar submitted that use of the corporate name of the Defendants notwithstanding, it is not open for the Defendants to use the Mark as part of its domain name and such adoption is impermissible. He submitted that the Plaintiffs have also registered the Mark in class 5 on or about 23-6-2001 in which the Defendants carry on business and the Defendants must show commercial and continuous use prior to 23-6-2011. Mr. Tulzapurkar further submitted that under Section 34 of the Trademarks Act, even if there was prior use, nothing in the Act entitles the proprietor or registered user of the trade-mark to interfere with or restrict use by any other persons of the trade-mark identical or merely resembling in relation to goods or services to which that person or predecessor was entitled has continuously used from a prior date. The continuance of the word Raymond as part their corporate name does not entitle the Defendants to use the mark as a part of domain name. In fact, the Defendants are now passing off the domain and web-site www.raymondpharma.com as that of the Plaintiffs and since the act of passing off has a wider connotation, it is impermissible to do so. Mr. Tulzapurkar then submitted that the Defendants' only defence is based on the earlier judgment of the Single Judge and of the Division Bench whereas according to him neither the Single Judge nor the Division Bench has proceeded to consider the Plaintiffs' case on the basis of its cause of action under Section 29(4). Mr. Tulzapurkar relied upon the definition of 'Well known trade-mark' which reads as follows:

2(zg) well-known trade mark , in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

12. Mr.Tulzapurkar submitted that the Plaintiffs' mark qualifies as a well-known mark and a well known trade-mark is protected in law. In support of his contentions, he relied upon the numerous judgments listed below:-

Raymond Ltd. Vs. M/s. Ashirbad Electricals and Ors. Notice of Motion No.(l) 1421 of 2013 dt. 22nd July, 2013 (S.J. Kathawalla, J.)

Raymond Ltd. V. Sai Balaji Suitings and Anr. Notice of Motion (L) No.2781 of 2015 dt. 13th October, 2015 (G.S. Patel, J.)

Rediff Communications Ltd. V. Cyberbooth and Anr. 2000 PTC 209

M/s.Info Edge (India) Pvt. Ltd. and Anr. Vs. Shailesh Gupta and Anr. ILR (2002) 1 Delhi 220

Satyam Infoway Pvt. Ltd. V. Sifynet Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC)

Raymond Ltd. Vs. Raymond Financial Inc. and Anr. 2012 (51) PTC 217 (IPAB)

The Indian Express Ltd. and Ors. Vs. Chandra Prakash Shivhare Suit No.2854 of 2010 dt. 23rd October, 2015 (G.S. Patel, J.)

Rolex SA Vs. Alex Jewellery Pvt. Ltd. 2014 (60) PTC 131 (Del.)

Tata Sons Ltd. V. A.K. Chaudhary and Anr. 2009 (40) PTC 54 (Del.)

Brahmos Aerospace Pvt. Ltd. V. FIIT JEE Ltd. and Anr. MIPR 2014 (1) 0257

Gorbatschow Wodka KG Vs. John Distilleries Ltd. 2011(4) Mh.L.J. 842

KSB Aktiengesellschaft and Anr. v. KSB Real Estate and Finance Private Ltd. in Notice of Motion No.4019 of 2007 Ford Motor Company and Anr. v. C.R.Borman and Anr. 2008 SCC Online Del 1211 Industria De Diseno Textile SA v. Oriental Cuisines Pvt. Ltd. and Ors. MIPR 2015(2) 0125

Royal Bank of Scotland Group PLC v. Sharekhan Ltd 216(2015)DLT197

Motorola Inc. and Ors. v. Motorola Auto India Pvt. Ltd. and Ors. MANU/DE/3650/2015

Kalpataru Properties Private Limited and Anr. v. Kalpataru Hospitality and Facility Management in a Notice of Motion No.3320 of 2010,

KSB Properties Private Limited v. KSB Aktiengesellschaft and Anr. (2013)1 CALLT 203(HC)

Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat (India) in Appeal No.570 of 1995 dt.16th October, 1997 Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd. (2002) 2 SCC 147

Honda Motors Co. Ltd. v. Charanjit Singh and Ors. 2002 SCC Online Del 1332 Sony Kabushiki Kaisha v. Mahalaxmi Textile Mills MIPR 2009(2) 0125

Daimler Benz Aktiengesellschaft and Anr. v. Hybo Hindustan 1994-PTC-287

Kamat Hotels (India) Limited v. Royal Orchid Hotels Limited and Anr. in Notice of Motion No.2552 of 2008

Kunhayammed and Others V. State of Kerala and Anr. (2001) 2 BLJR 853

Gangadhara Palo v. The Revenue Divisional Officer and Anr. [2011]3 SCR 746

Barclays Bank PLC v. RBS Advanta [1996] R.P.C. 307 Ashwani Kumar Singh v. U.P.Public Service Commission and others AIR 2003 Supreme Court 2661

Brown Shoe Company Inc. [1959] Reports of Patent, Design and Trade Mark Cases No.1

Ultra Tech Cement Limited and Anr. v. Dinesh Kothari and Anr. 2013 (53) PTC 415(Bom.)

Corn Products Refining Co. v. Shangrila Food Products Ltd. PTC (Suppl)(1) 13 (SC)

Pidilite Industries Ltd. v. S.M.Associates and Ors. 2003(5) Bom CR 295

Jagdish Gopal Kamath and Ors. v. Lime and Chilli Hospitality Services MIPR 2015 (1) 0351

Indian Shaving Products Ltd. and Anr. v. Gift Pack and Anr. 1998(18) PTC 698 (Del)

Medley Pharmaceuticals Ltd. V. Winsome Laboratories Ltd. and Anr. in Notice of Motion No.931 of 2006 dt. 22nd September, 2008.

National Bell Co. v. Metal Goods Mfg. Co. and another AIR 1971 Supreme Court 898

Laxmikant V. Patel v. Chetanbhai Shah and Another (2002) 3 Supreme Court Cases 65

Cadila Pharmaceuticals Ltd. V. Sami Khatib of Mumbai and Medley Pharmaceuticals Ltd. MIPR 2011 (2) 0224

With the aid of the aforesaid decisions Mr. Tulzapurkar submitted that the Defendants are liable to be restrained as prayed.

13. It will be appropriate to deal with some of the relevant judgments. In the case of KSB Aktiengesellschaft (supra), the letters 'KSB' formed an essential part of the corporate name of the first Plaintiff, having been adopted with reference to the surnames of the founders of the first Plaintiff. The Defendants adopted the name of 'KSB' Real Estate and Finance Private Limited as part of its trading name and corporate style. The defence set up was that the areas of the activity of the Defendant are restricted to real estate and finance within the geographical limits of the Greater Bombay. Hence, there is no possibility of deception. This was followed up by the second defence that there are other companies which use the mark 'KSB' as a part of their trading style and therefore, the Plaintiffs could not object especially since the name was not distinctive as sought to be contended by the Plaintiff. This Court observed that the first defence overlooked the provisions of Section 29(4) which entails that their registered mark may be infringed by using the mark in relation to goods or services which are not similar to those in relation to which mark is registered. As long as registered trade-mark and its reputation in India, use of the mark without due cause would take unfair advantage of or would be detrimental to the distinctive character or reputation of their registered mark. The observations in the said judgment are to the effect that the provisions of Section 29(4) came to be introduced in the Trade Marks Act, 1999 in order to extend the protection available in an action for infringement and it would not be a valid defence that the Defendant had used the mark in relation to goods which are not similar to those in respect of which the Plaintiffs had registered mark since such use would be detrimental to the distinctive character and repute of the mark of the Plaintiff. Even proceeding on the basis of passing off, it was held that it is not necessary for an action in passing off that a common field of activity is required to be established.

14. Ford Motor Company (supra) held that the provisions of Section 29(4) applies only to those trade-marks which have reputation in India and that once this was established, injunction must follow. The Division Bench held that Parliament intended Section 29(4) as a pandect or fasciculus operating on its own and is an important exception to other provisions of the Act.

15. In Industria De Diseno Textile SA (supra) the court rejected a contention on behalf of the Defendant that ZARA is a dictionary word and was adopted from the name of ZARAGOZA. The word 'ZARA' a well known Spanish brand was neither generic nor descriptive even in the Spanish language and the Defendants had not given any plausible explanation for the adoption of the mark 'ZARA' and it was found that the name ZARA TAPAS BAR was adopted by the Defendants from the mark 'ZARA' of the Plaintiffs who had already opened stores in 44 countries and therefore adoption of the word 'ZARA' by the Defendants was not honest.

16. In Royal Bank of Scotland (supra) in paragraph 54 the Delhi High Court observed that a well known trade-mark can be protected even in relation to dis-similar goods used by the Defendants and to prove a case of infringement of trade-mark, the Plaintiff has to show that essential features of registered trade-mark which has been adopted by the Defendants has been taken from the Plaintiff's registered trade-mark. In order to establish infringement, the Plaintiff's mark must be registered under the Act and the Defendant's mark must be deceptively similar to the registered trade-mark and its use was likely to deceive and cause confusion. Once, it is indicated and the Court finds that the Defendant's mark is closely, visually and phonetically similar then no further proof is necessary. A reference was also made to the observations of Chagla C.J. and Bhagwati J in James Chadwick and Bros. Ltd. v/s. The National Sewing Thread Co. Ltd. in which the Court held that if it is found that the trade-mark of which registration is sought contains the same distinguishing or essential feature or conveys the same idea (as the prior mark), then ordinarily the Registrar would be right in refusing registration. The real question is as to how a purchaser viz. a man of ordinary intelligence would react to a particular trade-mark and what association he would form by looking at the trade-mark and how he would connect a trade-mark with the goods that he would be purchasing.

17. In Motorola Inc. (supra) the Plaintiffs were registered proprietors of the trade-mark Motorola and the Defendants had used the mark Motorola for automobile spare parts in their domain name. The Plaintiff's trade-mark Motorola possessed global reputation and is perceived as a household name even in India. The Defendants by using the name Motorola Auto India Private Limited led customers to believe that their business activities would be endorsed by the Plaintiffs and would be of the same level of quality and reliability as that of the Plaintiff. This adoption of the impugned mark by the Defendant was without due cause and in order to take unfair advantage and that the use of the identical trade-mark by the Defendants in relation to its goods would inevitably lead to dilution and erosion of the uniqueness and exclusivity associated with the Plaintiffs' trade-mark/name by reducing their capacity to identify and distinguish the goods and services of the Plaintiffs as originating from a particular source. The Division Bench found that such use was unauthorised and indiscriminate and apart from causing confusion, mistake and deception, it was bound to result in the whittling away of the distinctive quality and value of the Plaintiffs' mark.

18. In Kalpataru Properties Private Limited (supra) a Single Judge of this Court found that the judgment in Raymond Limited v. Raymond Pharmaceuticals 2010 (5) BCR 568 (Order in the 2006 suit) did not apply to an action in passing off and that the proprietor of a well-known trademark is entitled to an injunction restraining a party from passing off his goods and services as those of the proprietor by using the registered trade-mark of the Plaintiff. The learned Single Judge made reference to the judgment of Mahendra and Mahendra Paper Mills Ltd. (supra) and held that action in passing off is maintainable in the case of well-known trade-mark even if the goods and services being dealt in by the parties are not similar and that the Plaintiffs were entitled to an injunction restraining the Defendants from passing off its services as those of the Plaintiffs by using the mark Kalpataru or any deceptively similar mark in their corporate name. However, they were not entitled to an injunction under Section 29(5). In view of the judgment in Raymond Limited (Supra), it was held that the Defendant cannot avail benefit of Section 34, since it had been unable to establish that the Defendants or its predecessor in title had continuously used that mark from a date prior to the date of registration of the Plaintiff's mark because Section 34 requires continuous user of the trade-mark from a date prior to date of registration of the mark said to be infringed.

19. In KSB Properties Private Limited (Supra) the Defendants had contested the application for injunction contending that 'KSB' stood for initials of Kabir Shankar Bose, the only child of the promoter director and was coined and adopted with reference to the initials of the child. In that case the main object of the company was to purchase and sell real estate and although it is the contention of the Defendants that adoption of the mark 'KSB' was honest and bonafide, in appeal before the Calcutta High Court it was held that the Plaintiffs had established all ingredients of the mark infringement and granted an injunction. In Aktiebolaget Volvo of Sweden (supra) held that the Defendants had used the Plaintiff's trade-mark Volvo in their corporate name and the Defendants were restrained from using the word 'Volvo'. Mahendra and Mahendra Paper Mills Ltd. (supra) also considered an earlier judgment of this Court in Sunder Parmanand Lalwani v. Caltex (India) Ltd. AIR 1969 Bom 24 and held that if a large number of persons saw or heard of the name Caltex in relation to the applicant's watches, they would be led to believe that the watches were in some way related to the Caltex mark known for petrol and oil products. Similarly in the case of Bata India Limited v. Pyare Lal and Co. AIR 1985 All 242 and Kirloskar Diesel Recon Pvt. Ltd. and Anr. v. Kirloskar Proprietary Ltd. and Ors. AIR 1996 Bom 149, this Court held that a well-known mark could be protected when the question was whether misrepresentation could result in likelihood of confusion and deception of public and consequent damage to the Plaintiff with the passage of time.

20. In Honda Motors Co. Ltd. (supra) through global goodwill and reputation, the mark had become distinctive and the use of the mark Honda for the Defendant's pressure cooker tends to mislead the public to believe that the Defendant's business and goods are that of the Plaintiff. Such user by the Defendants also diluted and debased the goodwill and reputation of the Plaintiff. The Court observed that the concept of passing off had undergone a change and two raders need not necessarily operate in the same field so as to suffer injury on account of one proprietor's business being passed off as others and that with the changed concept of passing off it is not now material for a passing off action that the Defendant should trade in the same field as that of the Plaintiff. Although it was contended that the Defendants had a uncle namely Honda Singh they did not establish that Honda had become common name. In that case, it is further held that the Plaintiff had placed sufficient material on record to show that it had acquired distinctiveness and goodwill over the years and user of the name Honda by the Defendants cannot be said to be honest and concurrent use and that was sufficient for the purpose of granting an injunction. In the case of Sony Kabushiki Kaisha (supra) it was held that the key function of a trade-mark is to indicate the source or origin of goods and services and the tort of passing off is committed if the offending trader applies an established trade-mark in such manner so as to cause confusion or deception in the mind of the consumer as regards the source or origin of the goods and the mind of the purchasers are directed to the firm whose identity is already linked with the trade-mark in the market place. In Daimler Benz Aktiengesellschaft and Anr. (supra) the Defendants contended that 'Mercedes' is a city in South America and that there was nothing unique about the name Mercedes Benz. The Delhi High Court held that the Plaintiff's product was a very high priced and extremely well engineered product and the Defendants cannot dilute the name by using the trade-mark for its products especially since the Defendant was using Three Pointed Human-Being within a Ring and was carrying on business of undergarments. The Defendant was, therefore, restrained from doing so.

21. In Kamat Hotels (India) Limited (supra) in which a learned Single Judge of this Court Justice Dr. D.Y.Chandrachud as he then was, observed that Section 34 carves out an exception and creates an overriding provision which within the sphere of its operation and prevents a proprietor or registered user of a registered trade-mark from interfering with the use of an identical trade-mark or a mark which nearly resembles the registered mark. It was held that the fundamental requirements are four fold. Firstly, the use by a person of a mark which is identical to or nearly resembles a registered trademark must be in relation to those goods and services for which the first mentioned mark has been registered. Secondly, Section 34 contemplates continuous use of the trade-mark. Thirdly, the trade-mark must be used by the proprietor or his predecessor-in-interest. Fourthly, the mark in respect of which protection is sought must have been used from a date prior to the use of the registered trade-mark or the date of registration of the registered trademark. The Court further observed that the use must be continuous and mere adoption of the mark is insufficient and the test of Section 34 is of a high order which requires commercially continuous use of the mark in relation to the goods and services.

22. Mr. Tulzapurkar had laid emphasis on paragraphs 17 and 19 of Kamat Hotels (Supra) and submitted that the first Defendant in that case had applied for registration of mark on 22.6.2004 and while applying for registration of the marks Royal Orchid and Royal Orchid hotels, the first Defendant claimed earliest use since 3.11.1999. It is submitted that the original name of the first Defendant was Universal Resorts Limited which was incorporated only in 3.1.1986 and therefore, they claim prior use. Further our Court held that mere change of name of the first Defendant with effect from April, 1997 will not suffice and that the Defendant must demonstrate that the mark was utilised in relation to the goods and services for which the mark was registered and that the first use of the mark was before the use of the mark by the Plaintiffs. For these reasons, Defendant had to suffer an injunction and they were restrained from making use of the mark in respect of any hotel or new line of business to be set up.

23. In Barclays Bank (Supra) the observations of Justice Laddie, Chancery Division were adverted to by Mr. Tulzapurkar whereby Justice Laddie, while declining to restrain the Royal Bank of Scotland from using the name RBS Advanta Visa Card, observed that the name itself was not infringing the plaintiff's trade-mark, which was known as BARCLAYCARD but certain references were made to the Plaintiff's card in comparative advertising literature. The High Court held that any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing a registered trade-mark if the use of the mark is without due cause takes unfair advantage or is detrimental to distinctive character or repute of the mark. Justice Laddie has observed apropos construction of Section 10(6) that even if one was to allow comparative advertisement, as long as the use of the competitor's mark is honest, there is nothing wrong with telling the public of the relative merits of the competing goods and services and using the registered trade-mark to identify such goods and services and Section 10(6) should not be construed in the manner which prohibits all comparative advertising. Secondly, no infringement will result unless use of the registered trade-mark is not in accordance with the honest practices. In that case, both the parties agreed that the test is objective and that if use is considered honest by members of a reasonable audience, it will not infringe. Thus, it was found that trade puffery even if uncomfortable to the registered proprietor, will not result in infringement. No specific evidence is required to come to the finding that there has been infringement since it is a mere objective test. The act does not oblige the Courts to enforce trade mark legislation through the back door. Relying upon the aforesaid decision, it was further submitted that to come within the ambit of Section, the use must be otherwise than in accordance with honest practices in industrial and commercial matters. Lastly, it was pointed out that the use should have been without due cause, taking unfair advantage of being detrimental to distinctive character or repute of the trade-mark. Thus, the use of the mark should be such as to permit the Defendant to take advantage of it causing detriment to the mark and inflict harm on the character or repute of the registered mark which is above the level of de minimis. In the instant case, Mr. Tulzapurkar submitted there is no doubt that the Plaintiff's mark is a well known mark and by virtue of Section 29(4)(c), Plaintiff's mark have tremendous reputation in India and the use of the mark is without due cause takes unfair advantage and is detrimental to distinctive character or repute of the trade-mark. The words of Section 29(4)( c) are in pari materia with Section 10(6) of the English Trade Marks Act, 1994 and therefore actionable.

24. Mr. Tulzapurkar relied upon the judgment of the case of Brown Shoe Company Inc. (supra) and submitted that the two words involved were 'Naturlizet' and 'Naturalizer'. In that case, no evidence was found to establish that the respondents had copied the Appellant's marks. It was found to be a case of res ipsa loquitur viz. the thing speaks for itself and it is impossible to treat the case as one with coincidence and the Defendant had used the word 'Naturlizet' as a trade-mark in relation to ladies' shoes and these Respondents had no connection to the Appellant's mark 'Naturalizer'. It was submitted that the use of the mark 'Raymond' in the domain name of the Defendant was clearly an infringement. Mr. Tulzapurkar then referred to the decision of the Single Judge of this Court in Ultra Tech Cement Limited and Anr. (supra) relied upon the reference in the said judgment to the decision in Sunder Parmanand Lalwani and Ors. (supra) and pointed out that in the case at hand most of the applications relied upon by the Defendants and listed in annexure E to the Applicant in reply to the Notice of Motion were either opposed or objected to and none of them had been registered. In other cases, in an application by one Sushil Kumar Jain only an examination report had been issued and in the case of 'Raymond James only an advertisement has been issued. Most other proposed/actual use were objected or opposed. There is nothing, therefore, to show that all these names were in use.

25. Kamdhenu Ispat Limited v. Kamdhenu Pickles and Spices Ind. Pvt. Ltd. and Anr. held that dishonesty of adoption is a relevant factor and if it was found that adoption was dishonest, the Court would be justified in drawing an adverse inference at-least as far as the defendant was concerned. In Corn Products Refining Co. (supra) it was observed when there are a series of marks containing a common element or elements, the onus of proving such user is on the applicant who wants to rely on those marks. Accordingly, it was submitted that the burden is upon the defendant herein to establish that its use of the mark 'Raymond' fell within the parameters defined by Section 29 of the Act. In Pidilite Industries Ltd. (supra) which concerns the Plaintiff's mark 'MSEAL' and 'EPOXY RESIN' compositions used for cementing cracks, holes, leaks, the Defendants were manufacturers of 'Klip-Seal' which was reportedly inferior in quality and the Plaintiff sued for injunction on the ground of passing off. The learned Single Judge observed that as held in Corn Products (supra), before an Applicant can derive assistance, for the success of his application, from the presence of a number of marks having one or more common features, he has to prove that these marks had acquired a reputation and user in the market. This was based on the principle that traders and the public would be aware of common elements and characteristics and when they see another mark having the same characteristics, they would immediately associate the same with the series of the marks with which they are already familiar. The judgment in Corn Products (supra) required the Defendants to prove that a mark must not be merely in use but extensively so. Thus, it is not sufficient for the Defendant to show some user of the mark but he must establish extensive use at-least prima-facie.

26. On behalf of the Defendants, Mr. Khandekar the learned counsel submitted that the use of the mark by the Defendant is bonafide and perfectly justified. Firstly, the Plaintiff has no cause of action against the Defendant and having filed the 2006 Suit there is no question of the Plaintiff now pursuing the present suit. Mr. Khandekar alluded to the fact that the interim Order in the 2006 suit is now final since the Special Leave Petition filed against the order of the Division Bench has been dismissed. The Plaintiffs are only attempting a second innings by filing the present suit. Secondly, the Defendants had adopted the domain name in the year 2009 yet the present suit has been filed only in the year 2014. Acquiescence by the Plaintiffs is thus a defence set up against the Plaintiffs and even assuming the Mark is well known mark, injunction need not follow since the criteria contemplated by Section 29(4) of the Act had not been met. The criteria were cumulative and not disjunctive and even assuming the mark to be a well-known mark, the Defendants do not fall foul of the provisions of Section 29(4). Thirdly, Mr. Khandekar submitted that as far as passing off is concerned, the Plaintiffs had failed to establish that there was any misrepresentation or likelihood of damage. In view of the material before the Court particularly findings of the Single Judge in the 2006 suit, merely because Plaintiffs are registered proprietors of the Mark, the Defendants cannot be prevented from using the domain name because Section 34 vests in the Defendants' a right to use the domain name by virtue of continuous use of the Mark from a prior date as a part of its corporate name. Subsequently, the Defendants had also registered their domain name. Mr. Khandekar referred paragraphs 13 and 14 of the plaint in support of his contention that the prayers in the present suit are wide enough to cover the use of the corporate name despite the fact that the Plaintiffs have failed to obtain injunction in the first suit and thus it is not open for the Plaintiffs to seek further restraint as aforesaid.

27. The Defendants have been in business since 1983 and are now using a shorter version of their corporate name as a domain name. According to Mr. Khandekar, use of the domain name is tantamount to use of its corporate name which has not been prevented. A domain name is a specie of the corporate name. He submitted that unlike in entities such as shaadi.com where the entity itself is known as Shaadi.com Private Limited, the Defendant's domain name uses a part of its corporate name. The registration and use of the domain name does not give rise to a fresh cause of action to the Plaintiff. Mr. Khandekar then made reference to paragraphs 2, 13, 14 and 15 of the judgment of the learned Single Judge in the Notice of Motion in the 2006 suit dated 15.2.2007 and submitted that the learned Single Judge has very clearly upheld the Defendant's contention that the Defendant's use of the Mark is not in relation to the goods or services in respect of which goods or services in respect of plaintiff's trademark is registered since the Defendants do not use the Mark on any of its products and no member of the public who associates the word 'Raymond' with the Plaintiff's trade-mark is likely to think that the word 'Raymond' appearing in the Defendant's name would refer to the Plaintiff's mark. Mr. Khandekar then relied upon the observations of the Division Bench upholding the Defendant's contentions that legislation supports the Defendant's contention and the use of the Mark in relation to goods of the Defendant would infringe the rights of registered owners only if the goods in respect of which the Defendant was using the Mark was similar to that of the Plaintiff.

28. Mr. Khandekar then submitted that Defendants' domain is not interactive and the website is only informative, no business is carried on site and, therefore no cause of action would accrue. Mr. Khandekar then submitted that 'Raymond' is a common name and available without reference to the Plaintiff. In other words, the name 'Raymond' was independently available and that there are about 84 other domain names which use the word 'Raymond'. He referred to Annexure 'B' which reproduces the Wikipedia entry on Mr. Raymond Chandler and in an attempt to demonstrate popularity of the name, he relied upon Annexure 'E' which contains copies of various trade-marks, applications made by various parties to register the name 'Raymond' in classes 6,7,11,12,14, 21 and 33, etc. and submitted that all these documents clearly establish the fact that the name 'Raymond' is not unique. He referred to Annexure 'G' to the affidavit in reply to the Notice of Motion to demonstrate that Raymond is a common name as can be seen from various domain names listed in the said annexure. Furthermore, Mr. Khandekar submitted that even assuming the name to be a well-known mark, it lacks inherent quality of the distinctiveness. Mr. Khandekar disputed submissions made on behalf of the Plaintiffs to the effect that a well known mark gets recognition across classes. Mr. Khandekar then submitted that there was no likelihood of Defendants getting an unfair advantage of the Plaintiff's mark nor does the Defendants domain cause any detriment to the Plaintiff's Mark or repute so as to fall within the ambit of Section 29(4) and once the Defendants have not been prevented from using its corporate name despite the 2006 suit, the Defendant cannot be prevented from using the domain name without just cause. Mr. Khandekar submitted that although in paragraphs 10 and 12 of the plaint, a bare statement was made to the effect that the Defendants' use of the impugned domain name amounts to infringement of the plaintiff's registered trade-mark. No reasons are given as to why such use is detrimental to the Plaintiffs. In the absence of such reasons, it was submitted that no case was made out for the grant of any reliefs. Mr. Khandekar then relied upon the following judgments :

Star India Private Limited v. Leo Burnett (India) Private Limited and Anr. 2003 Vol.105(2) Bom.L.R.28

Pidilite Industries Limited and Ors. v. Vilas Nemichand Jain and Ors. MIPR 2015 (3)0129

Kamdhenu Ispat Limited v. Kamdhenu Pickles and Spices Ind. Pvt. Ltd. and Anr. 2011 (46) PTC 152 (Del.)

Indchemie Health Specialties Pvt. Ltd. v. Intas Pharmaceutical Ltd. and Ors. MIPR 2015(2)0284

J.C.Penney Company Inc. v. Penneys Ltd. and Others Fleet Street Patent Law Reports [1975]

Cadbury Schweppes Pty. Limited and Others v. the Pub Squash Co. Pty. Limited Privy Council Appeal No.5 of 1980

Wyeth Holdings Corporation and Anr. Vs. Burnett Pharmaceuticals (Pvt.) Ltd. MIPR 2008(1) 0275

Honda Motor Company Limited v. Kewal Brothers and Anr. 2002(25)PTC763(Cal)

Shri Prithvi Cotton Mills Ltd. v/s. Broach Borough Municipality and Ors. AIR 1968 Gujarat 124

M. Sreenivasulu Reddy and Others V. Kishore R. Chhabria and Others (2002) Company Cases Vol.109 Page 18

Prime Spirits V. Master Blender Pvt. Ltd. unreported in Notice of Motion No.678 of 2013 dated 29th March, 2016 (G.S. Patel, J.)

S. Shanmugavel Nadar V. State of Tamil Nadu and Anr. (2002) 8 SCC 361

Pizza Hut International LLC and Others v. Pizza Hut India Pvt. Ltd. 2003 Vol.105(1) Bom. L.R.298

Nestle India Limited v. Mood Hospitality Private Limited MIPR

2010 (2) 0081

In the Trade Mark Registry in Audi-Med Trade Mark (1998) R.P.C. 863

Pebble Beach Company V. Lombard Brands Ltd. dt. 6.9.2002 Mastercard International Incorporated and Hitachi Credit (UK) Plc. (2004) EWHC 1623 (Ch) (8th July 2004)

Approximation of Laws, Industrial and Commercial Property 1998 ECJ CELEX LEXIS 585

Daimler Chrysler AG V. Javid Alavi (2001) R.P.C. Chancery Division 813

ITC Limited v. Philip Morris Products Sa and Ors. 2010 (42) PTC 572 (Del.)

Sahu Jain Ltd. v. Deputy Secretary, Ministry of Finance and Ors. reported in [1966] 36 CompCas543(Cal),

Syed Mustajab Husain Vs. Additional District Judge, Agra and Ors. 2012 (8) ADJ 726

B.Narayana Murthy and Ors. v. B.Venkateshalu and Ors. 1995(4)Kar.L.J.553

Oasis Stores Ltd. [1998] R.P.C. 631

Erven Warnink B.V. And Another v. J.Townend and Sons (Hull) Ltd. and Anr. reported in [1980] R.P.C. 31

Wander Ltd. and Anr. v. Antox India P. Ltd. 1990(2)ARBLR399(SC)

29. Relying on the Order of the English Trade-Mark Registry in the case of Audi-Med, Mr. Khandekar submitted that use of an impugned Mark by itself is not sufficient but such use should be viewed with regard to the inherent distinctiveness of the earlier trade mark. There should be similarity in respect of the marks, range of the goods or services for which the earlier mark enjoys a reputation and the uniqueness or otherwise of the mark in the market place must be considered. In the case of Audi-Med, the Registry declined to accept the opponent's case that the Applicants Audio Medical Devices Limited were attempting to take unfair advantage of the reputation of Audi Motor Cars. It must also be seen whether the respective goods/services although dis-similar, are in some way related or likely to be sold through the same outlet and on this basis, it would have to be established that the defendant's domain name had more than a de minimis effect on the distinctive character of the earlier mark if at all. He submitted that if the Defendants had been permitted to use a corporate name, there is no reason as to why he could not use the domain name. Ipso facto the use of the corporate name is such as to permit the Defendants to use the domain name. As far as provisions of Section 29(4)(c) are concerned, Mr. Khandekar submitted that there are no pleadings and evidence of any nature to support the Plaintiff's contention. He submitted that ingredients of Section 29(4) have not been met and there is no cause of action against the Defendants. He further submitted that although the Defendants had relied upon Annexure 'G' containing a large number of domain names using the word 'Raymond', there was no denial of this fact and not having denied extensive and common use of the word 'Raymond' there is no justification whatsoever in the Plaintiff's now contending that the Defendants could not use the word 'raymond' in its domain name.

30. Adverting to the issue of passing off Mr. Khandekar submitted that after adoption of the name, 2006 Suit was filed but Plaintiffs withdrew the petition filed under Clause XIV of the Letters Patent. This is a clear indication of the fact that the cause of action for passing off has been abandoned by the Plaintiffs and in this respect, the Plaintiffs cannot now be heard to say that the Defendants are attempting to pass off their domain as that of the Plaintiffs. Mr. Khandekar submitted that the cause of action for passing off would entail three ingredients viz. (a) passing off would result from misrepresentation, it would have to be made by the trader in the course of trade to a customer. (b) It must be calculated to injure and (c) must cause actual damage to the trader. In the present case, there was no misrepresentation, nothing was calculated to injure and the plaint was silent on any actual damage or even the probability of such damage. The Plaintiffs had failed to make out any case, there is no material whatsoever to establish an action in passing off. According to Mr. Khandekar, the Defendants' use of the domain name is at best a use in respect of the Class 44 and, therefore, not actionable. Moreover, Defendants are using name 'Raymond' in relation to their business since 1983. The domain name is stated to be in use since 31.8.2009 whereas the Plaintiffs have registered their Mark in class 5 only as of 23.6.2011 (see Exhibit B-16). He submitted that the website has been operational prior to the Plaintiff's application for registration under Class 5. In the circumstances, according to Mr. Khandekar, no case whatsoever is made out by the Plaintiffs. Mr. Khandekar then proceeded to deal with the judgments cited by Mr. Tulzapurkar. With specific reference to the decision in the case of Kamat Hotels (Supra) Mr. Khandekar submitted that the Plaintiffs had not shown any sales as in the case of Kamat Hotels (Supra). Moreover, in the Defendants' case, there is continuous user and sales. Without prejudice to the aforesaid contentions the Defendants have shown sales and the use of www.raymondpharma.com. However, as far as the Plaintiffs are concerned, there is no evidence of any use in Class 5. Making reference to the case of Raymond v. Ashirbad Electricals (supra) Mr. Khandekar submitted that the scheme of the mark used by Ashirwad Electricals was almost identical and dishonesty was apparent. In Raymond v. Sai Balaji (supra) the Defendant had blatantly copied the Mark in respect of the very same goods and services. In the case of Rediff Communications Ltd. (supra) there was no distinction as to use of the trade-mark versus corporate name and the judgment did not in any manner hold that use of the domain name does not amount to use of a corporate name. Furthermore, the services in the case of Rediff (supra) were rendered under that an almost identical mark viz www.radiff.com. On this basis, it was also submitted that in the case of M/s. Info Edge (supra) the same goods and services were subject matter of use and infringement as in the case of Satyam Infoway (supra) where the defendant offered a rival service.

31. In Pizza Hut International LLC (supra) the learned counsel relied upon the observations that Pizza Hut enjoyed an international reputation whereas the Defendant has no goodwill in India since it had not commenced any business in India and that if the Plaintiff's trade-mark enjoy a trans-border reputation, they are entitled to be protected against infringement. If the Defendants were to commence business in the same field of activity, there is likelihood that members of the public may be deceived and the balance of convenience would be in favour of the Plaintiffs. Mr. Khandekar submitted that in the instant case, the Defendants had been in the pharmaceuticals business since 1983 and there was no occasion for the Plaintiffs to contend that the Defendants are engaged the same or similar business and therefore there was no likelihood of any confusion or deception if the Defendants continue to use the domain name www.raymondpharma.com. Mr. Khandekar then relied upon Kerly's law of Trade Marks and Trade Names, (15th edition) in order to explain the mechanics of the internet. He relied upon provisions relating to the link between the trade-marks and domain name and submitted that a domain name registration as such is not an intellectual property right but it is a contract with the registration authority controlling the Top Level Domain concerned, allowing communications to reach the domain name owner's computer via internet links channeled through the registration authority's server. It does not create a monopoly or exclusive right and in many ways akin to a company name registration which is a unique identifier of a certain company but by itself does not confer any intellectual property rights. Relying upon the said commentary on the Modern Law of Trade Marks (3rd edition) by Christopher Morcom, Mr.Khandekar submitted that a domain name is an identifier and nothing more. It is akin to a 'shop front' and the domain name acts as shop sign. According to Mr. Khandekar it is not possible to make an assumption that a domain name equates to a trade mark and it depends on the facts of each case. Mr. Khandekar then relied upon the observations of the Delhi High Court in Nestle India Limited (supra) and submitted that a trade mark acquires distinctiveness when, in the eyes of the public, it distinguishes the goods or services connected with the proprietor of the mark from those connected with others. He made specific reference to the observations of the Division Bench to the effect that all conditions set out in Section 29(4) must be met. In other words, all the criteria in sub-clauses of Sub-section(4) of Section 29 must be met otherwise it will not be a case of infringement. These conditions must be met cumulatively and not disjunctively. To make out a case of infringement under Section 29(4) it is not sufficient to say that the case falls within one or other clauses of Sub-section (4) but the ingredients of all clauses must be satisfied. Therefore, to be actionable a registered trade mark must have reputation in India, the Defendant must use the mark without due cause and such use must take unfair advantage or detrimental to the distinctive character or repute of the mark. Referring to a decision of the Outer House, Court of Session in the case of Pebble Beach Company (supra) it was contended that it is necessary that there must be prima-facie risk of some association in the public mind between the users of a trade mark and the plaintiff's trade mark and the defendant's products and there must be prima-facie evidence that the Defendant's use of the Mark was to take unfair advantage of the distinctive character or repute of the plaintiff's mark. Not only must this advantage be unfair, but it must be of a sufficiently significant degree so as to warrant an injunction. Pebble Beach Company also quotes Neuberger J in Premier Brands UK Limited v. Typhoon Europe Limited. [2000] FJR 767 reiterating that Section 10(3) of the English Act was not intended to have a sweeping effect of preventing the use of any sign which is the same or similar to registered trade mark with reputation. Section 10(3) did not enable a proprietor of well-known registered trade mark to be able to object as a matter of course to the use of a sign which may remind people of his mark. The advantage must not only be unfair but also more than de minimis. The Court also considered the mode of assessing whether the test of detrimental use to the distinctive character and found that detriment must be ascertained looking to the effect of the defendant's use on the distinctive character or repute of the plaintiff's mark. Mr.Khandekar relied upon the test of detriment examined by the English Trade Mark Registry in the case of Oasis Stores Ltd. [1998] R.P.C. 631 wherein the following criteria were specified while considering detriment if any, to a plaintiff;

(a) the inherent distinctiveness of the earlier trade mark;

(b) the extent of the reputation that the earlier mark enjoys;

(c) the range of goods or services for which the earlier mark enjoys a reputation;

(d) the uniqueness or otherwise of the mark in the market place;

(e) whether the respective goods/services, although dissimilar, are in some way related or likely to be sold through the same outlets;

(f) whether the earlier trade mark will be any less distinctive for the goods/services for which it has a reputation than it was before.

32. These very criteria were also applied in the Audi-Med case by the Registry. This list is not exhaustive but identified relevant considerations to be borne in mind while considering the detriment to the distinctive character and repute of the mark. Applying the aforesaid principles in the instant case, Mr. Khandekar submitted that aforesaid criteria was not fulfilled in the present case. Referring to the decision of the Chancery Division of the High Court of England and Wales in the case of Mastercard International Incorporated he relied upon the paragraphs 49, 50, 54 and 55 in support of his contention. He also referred to the decision of the High Court of Justice-Chancery Division in Daimler Chrysler AG v. Javid Alavi (supra) in which similarity of goods and the likelihood of confusion were considered and it was found that the Plaintiff was the manufacturers of Mercedes Benz vehicles and the proprietor of many trademarks including those for vehicles and clothing. The Defendant was a trader in clothes and shoes, some of which bore the mark MERC. Mercedes Benz sued for injunction but the action was dismissed since it was not a quia timet action but a conventional passing off action in which the issues of reputation and goodwill, confusion and actual damage were involved. It was held that although Mercedes Benz used its name on T-shirts, the evidence showed that the mark was frequently used on the internal labels of clothing sold in the Mercedes car show-rooms. The Defendant had entered the market and used the word 'Merc' around 1978. The Defendant had not made any misrepresentation in 1978 and ultimately, it was found that there was no convincing evidence of confusion. Although the word 'Merc' had for long been used to refer to the Plaintiff's cars, the claimant's trading goodwill did not extend to the use of the Merc as a mark for clothing.

33. Mr. Khandekar referred to the decision of the Delhi High Court in ITC Limited (supra) and submitted that the Indian law had mirrored English law on the subject and the relevant provisions of Section 10(3) of the United Kingdom Trade Mark, Act 1994. Referring to the decision of the High Court of Calcutta in Sahu Jain Ltd. (supra), Mr. Khandekar submitted that the plaintiffs had not denied the defendants specific contentions in the affidavit in reply/written statement but had resorted to vague responses using expressions such as do not admit , no knowledge of etc. He submitted that use of the words 'not admitted' does not amount to denial. Further use of the words 'no knowledge' is worse than the words 'not admitted'. A bare denial does not serve any purpose when an allegation of the fact is required to be denied. Mr. Khandekar submitted that in Jahuri Sah and Ors. v. Dwarka Prasad Jhunjhunwala and Ors. reported in A.I.R.1967 S.C.109, the Supreme Court while dealing with the provisions of Order VIII Rule 5 observed that a statement to the effect that the defendant has 'no knowledge' of the fact pleaded by the plaintiff does not amount to a denial of the existence of that fact and the Court cannot construe it as being a denial and a mere statement that the party has no knowledge or that it has not admitted a fact is insufficient. He then referred to the judgment of the Supreme Court in the case of Wander Ltd. (supra) and relied upon the fact that the Supreme Court had held that an infringement action is available where there is violation of specific property right acquired under and recognised by the statute and an action of passing off the plaintiff's right is independent of a statutory right to a trade mark and it is the conduct of the Defendant which lends to or is intended or calculated to lead to deception. That passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation of another in a particular trade or business involves a misrepresentation calculated to injure, as a reasonably foreseeable consequence. Reliance was then placed on the decision of Star India Private Limited (supra) and the observations of the learned Single Judge of this Court on the issue of passing off. The Court observed that three predicates have to be established in order to comply with the basic ingredients which give rise to a cause of action in the case of passing off which are as follows:

(1) The Plaintiff's goodwill and reputation in the mark amongst the public;

(2) The defendants misrepresentation that the article is that of the plaintiffs; and

(3) Actual damages or real likelihood of damage to the plaintiffs by the defendants' act.

34. The Court after considering various decisions observed that it must not apply and consider hypothetical or fanciful possibilities but the real practicalities and probabilities of the situation in the facts of that case. While the field of activity being common is not an essential element of passing off, it is a relevant consideration. As observed by Kerly's on trade marks, if there is a common field of activity, possibility of deception is very high and if there is no common field of activity, the possibility is lower but it cannot be laid down that there is no possibility at all. In Pidilite Industries Limited and Ors. (supra) the Court had found that it must be shown that the Defendant's goods have been mistaken for those of the Plaintiffs and that an actual devious or malafide malicious intent is unnecessary and there must be evidence of the deception of an unwary customer. The Court observed that there must be some evidence of confusion in the absence of which it will not be possible to hold that the Defendants were guilty of passing off. Mr. Khandekar then submitted that in the case of Kamdhenu Ispat Limited (supra), the Delhi High Court held that the Defendant's use of Kamdhenu in respect of its corporate name and use of the name for their brand of pickles and they do not participate or engage in the manufacture of steel or steel products and hence, the use of 'Kamdhenu' as the corporate name of the Defendant, notwithstanding the plaintiff's registration of the word cannot ipso facto confer exclusivity. It is only if the Plaintiff use the mark in relation to goods such as pickles and condiments, etc. the Plaintiff would be entitled to injunction. Mr. Khandekar then relied upon the decision of the learned Single Judge of this Court in Indchemie Health Specialties Pvt. Ltd. (supra) and submitted that in that particular case, Plaintiff's goods were 'drugs' within the meaning of Drugs and Cosmetics Act, 1940. They were meant to be therapeutic in nature and were basically pharmaceutical preparations. They were not to be consumed except as directed by the physician whereas defendant's products were 'proprietary foods' under the Food Safety and Standards Act and not meant for medicinal use. Defendant No.1 had been openly, honestly, continuously and extensively marketing its products and the Defendants were found to be having sizeable reputation and goodwill in its products and that if the Plaintiffs succeed at the trial, they were entitled to an order of damages. Considering these factors, the Court held that there was no concrete likelihood of deception or confusion in the minds of the user. The Court also on the balance of convenience held that it is clearly in favour of the Defendants.

35. Mr. Khandekar then referred to the decision of Chancery Division in J.C.Penney Company Inc. (supra) and relied upon the observations in the judgment to the effect that in order to succeed in a passing off action, the Plaintiff must always establish as sine qua non, that he has reputation whether exclusive or joint and he is entitled to sue and protect such reputation. Further Mr. Khandekar relied upon the tests laid down in that case as to the extent of reputation required to be established in order to decide whether the Plaintiff is entitled to stop the defendant or whether he must be allowed to continue. There were number of possibilities that were set out such as (1) the date when the plaintiff first learnt of the defendants' activities in the country; or (2) the date on which the plaintiff, if he did so, made it clear to the defendant that he would be liable to have action taken against him if he started operations ; or (3) the date on which the defendant actually started operations; and that the Plaintiff should have acted with reasonable promptitude as soon as he had learnt of the commencement of the defendant's activities. The plaintiff must be able to contend successfully that his reputation should be judged as early as the time when the defendant, being aware of the consequences started operations in the plaintiff's area. Mr. Khandekar then relied upon the decision of the Supreme Court of New South Wales Equity Division in Cadbury Schweppes Pty. Limited and Others (supra) passed in Privy Council Appeal No.5 of 1980 and submitted that the relevant date for determining reputation is the date of commencement of the conduct complained of and that in the present case although domain name has been registered in 2009, the Plaintiff filed suit only in 2014 and, therefore, no relief should be granted. Lastly, Mr. Khandekar relied upon the decision of the Calcutta High Court in Honda Motor Company Limited (supra) and relied upon the observations in paragraph 37 that relevant date for determining the question of passing off is the date of commencement of adoption of the offending mark as settled in the decision of Cadbury Schweppes Pty. Ltd. (supra).

36. In response to Mr.Khandekar's submission Mr. Tulzapurkar relied upon the decision in the case of Jagdish Gopal Kamath and Ors. (supra) and referred to paragraph 34 and 36 contending that extensive use must be established as settled in Corn Products and submitted that the Defendant had resorted to a casual saunter through the internet to come up with the names using the mark 'Raymond' which constitutes poor evidence. It is in fact trawling for data without assessment as to accuracy or validity and such evidence is of no avail. Mr. Tulzapurkar relied upon paragraph 52 of the case of Indian Shaving Products Ltd. and Anr. (supra). In that case the dispute related to the word 'Ultra' being used by the first Plaintiff and Defendant No.2 introduced batteries and pencil cells under the trade-mark 'Ultra' which were inferior to the batteries sold by the Plaintiff No.2. In that context, the defendant argued that the trade-mark 'Ultra' has been used by several persons and companies such as Toshiba, National and Sony and accordingly, the same has become public and the Plaintiffs could not claim any exclusive right therein. The Court was called upon to decide dispute in the absence of these parties and none of those parties were claiming relief against the Plaintiffs. The Court was required to see whether the Plaintiff has acquired goodwill and reputation for its products. Moreover, the contention that the Plaintiff has himself usurped or infringed the trade-mark of a third party was not to be gone into by the Court while deciding the issue between the parties before it. Accordingly, Mr. Tulzapurkar had submitted that it is of no avail for the Defendants to contend that the Plaintiffs are copying the name 'Raymond' from the other parties such as Raymond Weil, etc. Mr. Tulzapurkar then relied upon the decision in the case of Medley Pharmaceuticals (supra) and the observations of the learned Single Judge of this Court that it is for the Plaintiffs to decide on and amongst probable Defendants and to bring an action against such and not for the Defendants to point to other infringers and take shelter under a belief that the Plaintiffs had unjustly targeted the defendants. He, therefore, submitted that it is open for the Plaintiffs to pursue the suit against any infringer and the alleged infringer who is a Defendant in the suit cannot seek to escape by adopting this rationale. Mr. Tulzapurkar then relied upon the decision in National Bell Co. (supra). In that case, the Defendants had alleged that there were repeated breaches which went unchallenged. However, the Court held that the evidence did not show that there were repeated breaches which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringement which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of the same. Where neglect to challenge infringement is alleged, the character and extent of the trade of the infringers and their position have to be reckoned while considering whether the registered proprietor is barred by such neglect and, therefore, the plea of common use must fail since the evidence must establish that use by other person should be substantial.

37. Mr. Tulzapurkar relied upon the decision in Laxmikant V. Patel (supra) in which the Hon'ble Supreme Court while dealing with a trade-mark action observed that a person may sell his goods or deliver his services under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by the Courts. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith and it does not matter whether the latter person does so fraudulently or otherwise. The Supreme Court further observed that in the world of business, basic policies of honesty and fair play ought to be followed and if any person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients to someone else to himself and thereby resulting in injury. It was further observed that in an action for passing of, it is essential to seek an injunction and the Plaintiff must prima-facie establish balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction and although fraud is not a necessary element to initiate an action, absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a Plaintiff in establishing probability of deception.

38. Mr. Tulzapurkar referred to the judgment of Cadilla Pharmaceuticals (supra) in support of his contention that the domain of defendant was deceptively similar. He submitted that the plaintiffs have established their goodwill and reputation in the market and that is sufficient to maintain an action in passing off. Furthermore, while determining similarity one must establish possibility and not probability of confusion resulting from the use of impugned domain. In the present case, Mr.Tulzapurkar submitted that the defendant has adopted a domain name with the word Raymond the plaintiffs' mark and it is bound to cause confusion. The plaintiff has opposed the use of mark and they had also taken action forthwith in the trademark registry and by filing present suit in this Court. He submitted that it is therefore possible for the defendants' user to mislead the customers into believing that the domain of the defendants is that of the plaintiff.

39. Mr. Tulzapurkar submitted that reliance placed by the Defendants on the observations of the order of the learned Single Judge while disposing of Notice of Motion in Suit No.437 of 2006 in the earlier suit is misplaced since that Order of the learned Single Judge has now merged into the order of the Division Bench. Accordingly, by virtue of the doctrine of merger there was no basis for relying upon the observations of the learned Single Judge. What is left is to be considered, therefore, is only the order of the Division Bench, which was the subject matter of the appeal before the Supreme Court in the Special Leave Petition filed by the Plaintiff and it cannot be contended by the Defendants that the order of the learned Single Judge still survives and the Defendant cannot take any support from the said order and Plaintiffs are entitled to urge their case for injunction under Section 29(4) of the Trade Marks Act, 1999.

40. On the aspect of the merger in Kunhayammed and Others (supra), it was held that to merge means to sink or disappear into something else; to become absorbed or extinguished; to be combined or be swallowed up. Merger in law is defined as the absorption of a thing of lesser importance by a greater whereby the lesser ceases to exist but the greater is not increased any absorption or swallowing up so as to involve a loss of identity and individuality. In Gangadhara Palo (supra) the Hon'ble Supreme Court observed that when the Court dismisses a special leave petition by giving some reasons, however meagre they may be , there will be a merger of the judgment of the High Court into the order of the Supreme Court dismissing the special leave petition. Accordingly, the doctrine of merger results in the judgment of the lower Court merging in the judgment of the higher Court. No judgment of the higher Court exists. Even in that given case, the Petitioner has sought a review of the judgment of the Supreme Court dismissing the Special Leave Petition and it was held that judgment of which review was sought was not capable of review by reason of the doctrine of merger and the order of the High Court merged in the judgment of the Supreme Court.

41. In Ashwani Kumar Singh (supra) the Supreme Court dealt with the value of precedents and reliance to be placed on precedents. Mr. Tulzapurkar submitted that the Court should not place reliance on the decisions without discussing as to how the factual situation fits in with the fact situation of the decision on which reliance is sought to be placed as cleverly to be. The Supreme Court has stated that observations of the Courts are not to be read as Euclid's theorems nor as provisions of the statute. The observations are to be read in context in which they appear. The Supreme Court quoted the following words of Lord Denning :

Precedent would be followed only so far as it marks the path of justice but you must cut the dead wood and trim off the side branches, else you will find yourself lost in thickets and branches. My plea is to keep the path to justice clear of obstructions which could impede it.

42. Since Mr. Tulzapurkar had referred to several additional judgments, in rejoinder Mr. Khandekar submitted that on the aspect of merger Mr. Tulzapurkar's submission that the defendant could not place reliance on the order passed by the learned Single Judge in the first suit has no merit since according to him the findings of fact recorded by the learned Single Judge will hold good despite the order of the Division Bench which did not consider the aspects pertaining to Section 29(4) of the Act. Mr. Khandekar submitted that the Gujarat High Court had in the case of Shri Prithvi Cotton Mills observed that it is difficult to uphold the contention that when a decision of a Court is reversed in Appeal by another then decision of the Appellate Court gets substituted and the decision so reversed has no legal existence. The Gujarat High Court declined to accept this principle as applicable to determine the binding nature of a decision of a Court. The Court held that the principle undoubtedly applies vis-a-vis degrees of higher and lower Courts. It may apply to the decision of the same two Courts on identical questions but it is difficult to hold the contention that any such principle is applicable in regard to part of a judgment solemnly pronounced a Court which has not been overruled and kept expressly open by the appellate Court. Mr. Khandekar relied upon this observation to deny the Plaintiffs' contention that all aspects of the Plaintiffs case under Section 29(4) of the Act were expressly kept open by the Division Bench when the Division Bench observed that it was not necessary to entertain submissions on that aspect. Mr.Khandekar further submitted that in M. Sreenivasulu Reddy which quoted the observation of the Supreme Court in case of Gojer Brothers (P) Ltd. V. Shri Ratanlal Singh AIR 1974 SC 1380 wherein the juristic justification of the doctrine of merger has been dealt with.

43. Mr. Khandekar submitted that there is no merit in the contention of Mr. Tulzapurkar that by virtue of the Division Bench the observations of the Single Judge in the 2006 Suit are of no avail. He submitted that in the decision of S. Shanmugavel Nadar V. State of Tamil Nadu and Anr. (2002) 8 SCC 361 it is held inspite of the appeal in that matter being dismissed on the ground of non joinder of the necessary party and the operative part of the order of the Division Bench stood merged in the decision of a Supreme Court, the remaining part of the order of the Division Bench of the High Court cannot be said to have merged and that the order of the Supreme Court in that case had not made any declaration of law within the meaning of Article 141 of the Constitution. It was further held in that case the decision of the Division Bench of the High Court would continue to remain decision of the High Court binding as a precedent on subsequent benches of co-ordinate order lesser strength but open to reconsideration by any bench of the same High Court with the coram of Judges more than two. Mr. Khandekar therefore submitted that applying the said ratio to the facts of the present case it cannot be said that the decision of a Single Judge in the 2006 suit could not be relied upon by the defendants. Mr. Khandekar then submitted that the findings recorded by the Single Judge in the first suit have the value precedent since the Division Bench had left open those aspects. He submitted that the findings of the Single Judge could be classified into four compartments; Firstly the word 'Raymond' was a subject of honest adoption by the defendant, Secondly, the use of the word 'Raymond' was not without due cause. Thirdly, on the aspect of applicability of Section 29(4) of the present case and Fourthly as to the application of Section 29 (5) to the present case. According to Mr. Khandekar the first two aspects on the word Raymond being subject matter of honest adoption by the defendant's and that the word Raymond was used not without due cause. These aspects had not merged however the other two aspects as to the applicability of section 29(4) and 29(5) stood merged. He submitted that if adoption of the mark raymond could be honest for the purpose of use by the defendant in its corporate name it could never be construed as dishonest adoption for the purposes of domain name. The findings of fact on honest adoption have not been disturbed by the Division Bench. In support of the submissions he relied upon provisions of Section 29(8) of the Act which is similar to Section 29(4). He disputed Mr. Tulzapurkar's submission that the decision in the case of Audi-Med Trade Mark(supra) was in case of comparative advertising and therefore inapplicable to the facts of the present case. Mr. Khandekar supported the view adopted by Justice Laddie and the English Trade Mark

Registry in the case of Audi-Med and reiterated that the principle that use of a mark should have more than a de minimis effect on of an earlier trade mark in the market place cannot be differentiated in the manner sought to be done. He submitted that section 29(8) of the Act specifically dealt with comparative advertisements and the elements of section 29(8) included the aspects of unfair advantage contrary to honest practices as well as detriment to the distinctive character and reputation of a trade mark. It would be appropriate to reproduce provisions of section 29(4) and 29(8) to enable us to make a quick comparison. Accordingly, the Section is reproduced below:-

29(1).....

(2)....

(3)......

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5)......

(6) .

(7) .

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

44. Mr. Khandekar made reference to the fact that although Mr. Tulzapurkar had relied upon several judgments on the aspect of a mark being common to the trade. The fact that about 84 of the domain names incorporating the word Raymond are domains outside India and therefore ought not to be considered for the purposes of evaluating whether the Mark was common to the trade. According to Mr.Khandekar the balance of convenience favours the defendant and if the injunction sought is granted the defendants cannot use the corporate name to make its presence on the internet. The defendants cannot be expected to use the domain name without reference to its corporate name.

45. This Motion remained part heard on account of change of assignment. Mr.Kamod resumed arguments on behalf of the Plaintiffs on 2.4.2016 and submitted that the admission of Mr. Khandekar that the observations of the Court apropos Section 29(4) had merged with those under Section 29(5) and as seen from the order of the Division Bench is an important concession in favour of the plaintiff. According to Mr. Kamod the Division Bench has left open the aspect of Section 29(4). Furthermore he submitted that the plaintiffs had referred to the judgments on the common to the trade aspect in order to support its submission that the highest level of evidence is required in order to justify the defendant's adoption of the mark and it is not enough simply to point out the fact that several others were using the mark in some manner or the other.

46. Having heard the rival submissions of counsel extensively and since the cause of action arises out of use of a domain name, I feel it will be appropriate to consider the nature of the domain name system before proceeding to decide the Motion. Since inception of the domain name system, a domain name has been the identifier of an individual or entity operating within the world wide web comprising cyberspace. There have been various examples in which several parties with legitimate trade mark rights make claims to the same or similar domain names. In the American experience delta.com is one name in which many trade-mark holders claimed interest including the well known airlines and some manufacturers of other products. Multiple trade-mark holders across geographical regions claimed use of the name. The registration of the corresponding domain name by one of these players was found unlikely of trigger bad faith requirements. Domain name registration has always been subjected to the first come first serve test and hence a registrant will obtain registration on application and subsequent applicants for the same name may find themselves in a complex situation where each of them have an interest corresponding with the domain name in question. The first applicant's registration will generally prevail unless there is an agreement inter se these parties claiming the same name. It is always open to all persons to appropriate specific domain names in agreement with another. Multiple applicants for the same domain name alludes to prospective rivalry. The trade mark system allows multiple parties to hold the same mark provided they operate in different product categories or geographical areas whereas the domain name system by its very nature permits only one applicant to register a particular domain. Once registered such registration inures for the benefit of the registrant for the contracted period of time after which such registration is required to be renewed failing which it may lapse.

47. Individuals and other entities often utilise the website to advertise their products and services in an effort to make their presence known across cyberspace. The most critical aspect of access to a particular website is the domain name. The domain name has a unique method of identifying the name of the individual, firms and corporates and other entities. Domain names are registered at first come first serve basis. Domain names once registered allow the owners of the domain names to mark their location in cyberspace by providing an identity and an exclusive mode of marketing products and services and providing information. Some of these are commerce capable. In the United States of America disputes relating to domain name registrations come to be adjudicated by the Trade-mark Trial and Appeal Board (TTAP). Unfortunately the law has not kept abreast with these technological developments and the use of domain names has often seen required Courts to deal with traditional contractual law, trade-mark law etc. in an attempt to consider whether domain names constituted property.

48. A domain name may also constitute a trade-mark if used for the purposes of identifying the source of goods or services. In the United States, domain names which also serve as trade-marks may be registered with the US Patent and Trade-mark office(USPTO). The USPTO registers marks in two different registers i.e. principal register and the supplemental register. The domain names that are generic may not obtain registration on either of these registers and this will be decided after a test as to whether the mark is distinctive of a applicants goods or services and is capable of being recognized by the average purchaser. Similarly marks that are capable and distinguishable as to source of the goods or services but which have not yet attain distinctiveness may not be registered. The Indian system does not provide for such registration. The reason for not allowing registration of generic marks is keeping in line with public policy of prohibiting registration of generic marks which would effectively create a monopoly by preventing competitors by using a common word to identify goods or services. In the American system1 therefore large investments made while promoting generic names in connection with the particular source does not deprive competitors of the right to call their goods or services by the same name. The generic name used for goods or services with the top level domain names are not amenable to registration even if the goods or service have alternate names one or more which may be used by competitors.

49. The domain name registration system is administered by the Internet Corporation for Assigning Name and Numbers (ICANN). Although ICANN was originally a technical body now we are given to understand from recorded sources that ICANN is also taking policy decisions especially in relation to online dispute resolution under the Uniform Domain Name Disputes Resolution 1 See Internet Domain Names, Trademarks and Free Speech by Jacqueline Lipton Policy (UDRP). The likelihood of multiple parties seeking registration in the same domain name is a reality. The UDRP is a dispute resolution mechanism which was adopted by ICANN which along with the World Intellectual Property Organization (WIPO) reportedly offers the largest dispute resolution service is expensive, fast and online and all domain name prospects are contractually bound to submit mandatory arbitration under the UDRP if a complaint is made about a registration of a domain name.

50. It is in fact a matter of record that the defendant was the first applicant for the impugned domain name and appears to have obtained registration as of August 2009. The domain name system has its limitations since two parties using the same or similar trade-marks in different areas of business and different categories may end up applying for the same domain name and if no sharing arrangements are arrived at or if no transfer of domain name fructifies, one is faced with a dispute which requires resolution. It is not in this context that the present dispute has arisen. The plaintiffs have undoubtedly been using the mark 'Raymond' since 1953. The plaintiff has not opted for resolution of the dispute under the auspices of the UDRP but has chosen to file this suit on the basis of trademark infringement, dishonest adoption and passing off.

51. Infringement action in respect of trade-marks is largely based on the need to protect a consumer of products or services to ensure that the consumer or purchaser receives goods or services that they think that they are paying for. The other aspect which is required to be protected is the investments made for developing the reputation of the mark and protecting against its unfair misappropriation of that goodwill. Trade-mark dilution may result from permitting free speech. Consumers must not be misled by domain names corresponding to a trade-mark and considering the experience of parties even across the globe there appears to be no clear test for protecting names and marks which had been in use in different set of circumstances. In this behalf, I find the American experience in matters of cybersquatting relevant for consideration in the facts of the present case. One Dennis Toeppen (See Panavision Int'l L.P. v/s Toeppen 141 F.3d 1316 [9th Cir 1998]) had in anticipation of making gains from famous marks registered numerous domain names pertaining to diverse marks some of which were famous. Mr. Toeppen proceeded to register three names in the early stages of the internet. As a result, he traded in the domain names for profit. Mr. Toeppen registered the domain panavision.com . Panavision is a well-known trade-mark but having registered this domain name, Mr. Toeppen did not offer any products or services on the domain, instead he displayed photographs of a town named 'Pana' in Illinois. The Court found that this amounted to trade-mark dilution but did not amount to infringement since it did not result in any confusion at the consumers end and the persons accessing the domain would be able to view images of the town Pana and unlikely to be led to believe that the website belonged to Panavision Corporation. A case of blurring would result from the defendants causing activity around the plaintiff's mark in a manner to render effective functioning of the mark difficult. On the other hand, an act of tarnishment would as the term indicates results in detrimental reference to the mark when used by the defendant. The commercial element was absent in the Panavision case (supra). The Court held that the use of the plaintiff's mark for the purposes which are not related to the plaintiff's products or services results in dilution of the mark. Thus Toeppen was found to have diluted the mark of Panavision Corporation despite the fact that Toeppen was merely showing pictures of the town called Pana. In considering whether the defendant is guilty of any act of dilution the domain name need not be identical to the plaintiff's mark in the case of Panavision the defendant was in the business of registration of domain name for commercial purposes namely to sell them to the interested purchasers. Although the defendant was not carrying on any business through the said site Panavision.com he was held to have diluted plaintiff's mark Panavision. The US Court of the appeals however rejected Toeppen's contention that the domain name is nothing more than an address. It held that the significant purpose of a domain name is to identify the owner of the website and a customer who is unsure of a company's domain name will often guess that the domain name is also the company's name. In the instant case by inclusion of the word pharma read with the fact that it is a shorter version of the corporate name currently and lawfully in use, the defendants are being identified in cyberspace by the domain chosen, albeit with the inclusion of the word 'raymond'.

52. In Cardservice Int'l V/s. McGee [950 F.Supp. 737, 741 (E.D. Va.1997)] it was held that a domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base. Similar was a finding in MTV Networks, Inc. V/s. Curry,[867 F. Supp. 202, 203-204 n.2(S.D.N.Y.1994).] The domain name serves a dual purpose. It marks the location of the site within cyberspace like a postal address and it also indicate some information about the contents of the site.

53. While the plaintiff is the registered user of the domain name 'www.raymond.in , the defendant has obtained registration for 'www.raymondpharma.com . Once registered it is subject to renewal. The defendants' ownership of the same domain and right to utilize the same for all legitimate purposes cannot be interfered with by a third party unless he obtains in the process of valid adjudication, an order that the defendant is not entitled to use the domain name and/or seeks transfer of the domain name either by private negotiations or by dispute resolution. Globally use of personal names in domain space has resulted in numerous issues since personal names of even well-known individuals may have trade-mark rights vesting in such individuals. Every domain name which is registered does not necessarily have to correspond with trade-marks. In the present case the plaintiffs have not sought prayer for transfer of the defendants' domain name. The instant case is therefore not a case of cybersquatting but one of alleged misuse of the Plaintiffs registered Mark. One has to examine whether (a) there are elements of bad faith conduct that can be seen, (b) such conduct interferes with the rights of the trade-mark holder, (c) there is any blurring or tarnishment of the plaintiff's mark or any whittling or grinding away at the Mark. According to the defendant it has bonafide adopted the impugned domain name because it has been using the name Raymond Pharmaceutical Ltd. as its corporate name.

54. The underlying test of trade-mark infringement is confusion amongst customers about the source of products or services. In relation to domain name disputes use of a trade-mark in a domain name might confuse consumers about the source of product or services marketed on website. The expression initial interest confusion does not find any expressive description, however, the same is being developed into a doctrine in the United States. Applying this concept to the instant case we are required to consider whether a use of the mark Raymond by the defendants in its domain name raymondpharma.com would necessarily lead to initial interest confusion inasmuch as would a netizen who comes across the domain name www.raymondpharma.com be so confused initially that she or he would mistake the site as that of the plaintiff. I think not. As has been the experience usage of a mark may result in dilution of the mark and this can take the form of blurring or tarnishment. Blurring of the mark is said to occur as a result of similarity between the offending mark and famous mark, as a result of which the distinctiveness of the famous mark is affected.

55. In the present case I do not find any evidence of an attempt of cause initial interest confusion . The defendant company has succeeded in continuing to use its corporate name and now uses a slightly shorter form of its corporate name as its domain name. This, in my view is unlikely to cause any initial interest confusion since the domain name of the defendants very clearly indicates that the website www.raymondpharma.com is clearly intended to be the domain name of the defendant engaged in a business which is not carried on by the plaintiffs since the plaintiffs are admittedly not in the business of pharmaceuticals. It was submitted in the course of arguments that the plaintiffs intend to commence pharmaceutical business. However, the fact remains that when the suit was instituted the plaintiffs were certainly not in the business of pharmaceuticals whereas the pharmaceutical business is the main stay of the defendants. The man of ordinary intelligence is unlikely in my view to assume that the domain name of the defendant would lead him to the plaintiffs' website. Viewed from this context, I am convinced that in the facts of the present case the defendant is merely using its corporate name to identify its own domain space and does not appear to be in bad faith.

56. The plaintiffs had strenuously argued that the defendants chose to adopt name www.raymondpharma.com only after they succeeded in the notice of motion taken out by the plaintiff and being emboldened thereby. I find nothing wrong in that inasmuch as the defendant could have, if they so desired, commenced use of the impugned domain name even earlier by registering the domain name. It is not the plaintiffs case that the defendant was earlier using a different domain name and commenced use of the revised name raymondpharma.com after succeeding in the Motion. Mr. Khandekar had submitted and in my view correctly so, that the defendant cannot be prevented from using its corporate name or part of its corporate name to identify itself in the domain space. Parties who would be searching the worldwide would be able to identify the defendant as the same company which was involved in manufacturing pharmaceuticals. Any netizen including the man of ordinary prudence who is familiar with the plaintiff's registered mark Raymond written in the stylized form unique to it would, upon accessing the defendants home page, realise that the defendant's domain is not that of the plaintiffs.

57. The present case, in my view does not fall within the realm of cybersquatting either since the defendants have not registered a domain name that corresponding with that of the plaintiff with the intent of selling it to the plaintiff or the plaintiffs competitors. Moreover the Plaintiffs have not sought transfer of the domain name to itself from the defendant. The plaintiffs are not in the business of pharmaceuticals and have not been in that field ever in the past. The only element of commonality between the plaintiffs mark and that of the defendants domain is the word raymond . As already seen from the record, the domain name of the defendants incorporates part of its corporate name. This Court has already held that use of the word Raymond and the defendants corporate name is not actionable as infringement of the Mark. Contrary to cybersquatting behavior, the defendants did not express their intention to sell the domain name to the plaintiff. On the other hand the defendants have been using the domain name to mark their presence in the internet domain space.

58. When civil society first came to learn of the internet and commenced use, it did not do so with any intention to deprive any one of their trademarks. If the case of the plaintiff is to be accepted the word Raymond cannot be used by any entity or person whatsoever. It is, therefore, necessary to test the plaintiffs case in the face of the challenge that the defendants use of the domain name has presented. Both parties hold legitimate interests in their own corporate names at the time of hearing of this Notice of Motion and as far as the plaintiffs are concerned their corporate name and the mark Raymond has been used in diverse businesses. None of these businesses described under the plaint appears to involve the business of manufacture and sale of pharmaceuticals which the defendants are engaged in. In this view of the matter, the defendants have an ascertained a right to utilize in their corporate name on the website domain address. The use of the word raymondpharma is descriptive of the plaintiffs' presence in cyberspace which does not in my view affect the right of the plaintiff. The use of raymondpharma.com cannot be said to be a name for corresponding to that of the plaintiffs who admittedly have not registered any domain name which is similar to that of the defendant. The word corresponding as understood in the English language would entail those names which have the close similarity or match or agreed almost exactly or otherwise be analogous or equivalent to the other.

59. The expression corresponding name would entail an aspect of equivalence but when we step back to consider the two names in question i.e. the mark Raymond and the domain www.raymondpharma.com we would obviously exclude the abbreviation www and the extension .com and emphasize on the word raymondpharma to test whether raymondpharma is corresponding to or is equivalent to Raymond . In my view the two cannot be said to be corresponding names. Pharma being a shorter form of the word pharmacy , the use of the word pharma in the defendants domain name is clearly indicative of the fact that the defendants are engaged in the pharmaceuticals business as against the plaintiff which was neither a manufacturer of pharmaceuticals at the material time nor has the plaintiff been ever known as such. Merely because the plaintiff owns a well-known mark does not in my view entitle them to an injunction against the defendant in the facts of the present case.

60. As far as the present action is concerned, the plaintiffs suit is more of an action complaining against dilution of its Mark. An action alleging dilution is intended to protect the holder of the mark which may be a well-known against its blurring or tarnishment. It would have been a different matter if holders of two trade-marks have trade-mark interests corresponding to the same domain name. If for instance the defendants had registered a domain name such as www.raymond.net.in or www.raymond.co.in the Plaintiffs would have had an indefeasible case. Protecting trade-marks in the present environment entails considering bad faith conduct on the part of the defendant while balancing between trade-mark rights of parties and the right to free expression including publishing the defendant's location in cyberspace. In the facts of the present case it is obvious that the defendant is carrying on business in the name of Raymond Pharmaceutical Pvt. Ltd. and in accordance with law. At this interim stage, it is not possible to finally determine the exclusivity of use of the mark raymond . However, what one is to consider is whether on balancing convenience the defendant ought to be prevented from using the word raymond in its domain name despite the fact that the word raymond is part of the defendant's corporate name. Absent the right to use its present corporate name, the defendants case becomes vulnerable and could suffer the injunction sought. A balance has to be struck between the rights of trademark owner as against that of the defendant in the instant case. Whether or not in the instant case the Mark has been diluted by blurring or tarnishment will have to be established by evidence. As of now there is no evidence of this blurring or tarnishment. In fact the plaintiffs are not even in the business of manufacturing, sale or distribution of products or services which the defendants deal in. It is not therefore apparent that the defendants have caused the blurring or tarnishment of the plaintiff's mark since only one person or entity can register and hold the domain name.

61. The overall scheme of the Trade-marks Act does not provide for any statutory protection in terms of prevention of use of a domain name which may also be a famous mark. The internet provides, apart from the access of various entities and their businesses, platforms for communications and expression. Internet as a medium of communication would therefore include the concept of free speech and the ability to utilize the name of the entity itself. Having already and repeatedly being reminded of the fact that confusion of the consumer is the main contributor to trade-mark infringement actions, there has been considerable criticism to the application of trade-mark infringement laws in cases pertaining to the domain names involving and now described as initial interest confusion . In the instant case, the defendants cannot in my view be described as engaged in click farming either because the plaintiffs registered mark is a raymond on the site www.raymondltd. whereas the defendant's domain name is raymondpharma.com . It is a shorter form of its corporate name Raymond Pharmaceutical Pvt. Ltd. In case of click-farming the domain name may be used by the alleged offenders even for purposes unrelated to the domain name.

62. In the present case even proceeding on the basis that the plaintiffs mark Raymond is a famous trade-mark the plaintiffs contention meets a slippery slope in the light of the fact that the plaintiff does not carrying on business that the defendants are engaged in whereas a part of the defendants corporate name is embodied in its domain name. The defendants are also not seeking to derive benefit from the plaintiffs' customer base. Domain name administration in my view, cannot be based only on trade-mark legislation. Domain name registration holds good only for the duration of the contract between the domain name registrant. Thus, if the domain name registration expires the name can no longer be associated with the original registrant. The defendant in the instant case could be unable to carry out any activity under the domain name www.raymondpharma.com unless this registration agreement is valid the defendant's identity in cyberspace at this web address will be lost. Emails addressed to the defendant at this expired domain name will no longer be delivered to the defendant. It would be theoretically speaking possible for the plaintiff to apply for and obtain registration of the domain name raymondpharma in its own name. In other words, registration of the domain in favour of the defendants does not entail exclusive use by the defendants once the duration of the registration expires.

63. Once registered a domain name constitutes an address in cyberspace where the registrant's website can be reached. Thus the coordinates and the location of a domain in cyberspace will be governed by the internet local authority and a domain can easily be identified by such coordinates. The domain name is an address which is not a permanent one. Once registered the registration lasts for a specific duration of time and subject to payment of registration fees for the specified duration if on or before the specified duration the domain name registration is extended the domain name will remain alive and accessible during such renewed period. If, however, renewal is not effected the domain and the website will not be accessible in cyberspace. Registration of trade-marks and domain names are not permanent. Trademarks registration can also be cancelled if improperly obtained or the failure to use a trade-mark may also result in its cancellation. However, failure to use a domain name will not necessarily result in its cancellation. The failure to renew the registration of a domain name will result in loss of the domain name.

64. Different possibilities arise upon expiry of a registration of a domain name. In a given case, if the defendant does not renew the registration and it expires, the defendant can, presumably, within a reasonable period of time seek continued use of the domain name by entering into an extension of the earlier agreement. On the other hand, if the registration were to expire and the defendant does not approach the ICANN or its nominee to continue the registration it is possible for the same domain name may be transferred to a third party. This action would depend on the policies adopted by ICANN and the licensed domain name registering authority. The Trade Marks Act, 1999 does not deal with transfer of domain names as it does in the matter of trademarks. Trade marks are registered for period of time beyond the initial ten year period as provided in Section 25 of the Act. The ability of a domain name registrant to extend the term of the registration is purely contractual and has no statutory protection. Emphasis has always been to protect trade-mark holders against bad faith exhibited by erring defendants. There is no single authority that regulates domain name administration while ICANN has control over the technical systems, the World Intellectual Property Organization(WIPO) concentrates on protection of IPR.

65. The Parliament has not enacted any law to encompass all aspects of cyber property such as domain name which is akin to property in cyberspace. A domain name can be held and used only by one person unless the same is shared by mutual agreement and in the real world, as we can see in the instant case, since the defendant has already registered the domain name raymondpharma the plaintiff cannot use the same save and except with agreement of the defendant or by seeking transfer of the domain name by lawful means. The present suit seeks no such relief of transfer of the domain name. Since the domain name registration has always followed first come first served policy it has resulted in numerous persons controlling domain names unrelated to their businesses such as in the case of Dennis Toeppen and Panavision. However, in the case at hand, using www.raymondpharma.com in my view does not render the plaintiffs Mark Raymond diluted. The question is whether they can be prevented from using the domain name because the word raymond appears as part of the domain name. This is the short question that will require an answer at the end of this rather long but necessary consideration of the case.

66. In Raymond Ltd. Vs. Raymond Financial Inc. and Anr. it was found that the trademark Raymond Gems was deceptively similar to the trademark of Raymond and Intellectual Property Board rejected the application of the defendants for use of mark of Raymond in its name. In case of Indian Express Ltd. (supra) the defendants had used translation of the plaintiffs' mark The Indian Express in Devanagri script. The court decreed the suit and restrained the defendants from using the word The Indian Express in any form.

67. In Rolex SA (supra) the defendants were using the mark ROLEX and carried on business in the name and style of Rolex Jewellery House and were also using domain name www.rolexjewelleryhouse.com. The Rolex was trademark of Rolex Watch Company of Switzerland. The defendants used the word and domain name Rolex , despite the fact that the defendants had no connection with the brand Rolex . Thus, the relief was sought pursuant to provisions of Section 29(4) of the Trademark Act which clearly enabled the plaintiffs to seek relief against the defendants and the infringement is in acts and service other than this for which the mark was registered. It is obvious that Section 29(5) and 29(4) operate in different areas. In this context it will be useful to refer to the essentials of passing off action as extracted from Halsbury's Laws of England Vol.38 as under:

998. Essentials of the cause of action The plaintiff must prove that the disputed name, mark, sign or get up has become distinctive of his goods in the sense that by the use of his name or mark, etc in relation to goods they are regarded, by a substantial number of members of the public or in the trade, as coming from a particular source, known or unknown; it is not necessary that the name of the plaintiff's firm should be known. The plaintiff must further prove that the defendant's use of name or mark was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to the goodwill and the plaintiff's business, as for example, by depriving him of the profit that he might have had by selling the goods which ex hypothesi, the purchaser intended to buy. Thus, the cause of action involves a combination of distinctiveness of the plaintiff's name or mark and an injurious use by the defendant of the name or mark of a similar name or mark, sign, picture or get-up does or does not amount to passing off is in substance a question of evidence; the question whether the matter complained of is likely to deceive is a question for the Court.

Thus, after considering these aspects that permanent injunction was granted to the plaintiffs' against the defendants in addition to which compensatory damage or punitive damages were also ordered.

68. In case of Tata Sons (supra) the emphasis was laid on paragraph 25 and it was held that the name of TATA has been protected by various Courts in similar or dissimilar goods, that is, under Section 29(4) and 25(5) of the Act. Accordingly, the suit came to be decreed and the defendants were prevented from using the word TATA namely for their goods, blocks, dyes, stationery and packaging material which was also directed to be destroyed.

69. In case of Gorbatschow Wodka Ltd. (supra) this Court has held that the plaintiff had made out a strong prima facie case since the defendant had adopted shape for the bottle of Vodka produced by the defendants which had similarity to that of the plaintiffs. The defendant was found to be grinding away at the plaintiff's mark.

70. In Rediff Communications (supra) the plaintiffs reliance is largely upon the fact that a domain name is more than an Internet address and is entitled to the equal protection as trademark . In that case main bone of contention was whether the defendants by adopting Radiff which was deceptively similar to domain name Rediff have been passing off their goods and service as that of the plaintiffs. In the instant case the trademark of the plaintiffs and domain registered by the defendants are not in such close proximity as in the case of Rediff.com , inspite of the fact that the name raymond has been used in domain name of the defendant.

71. In Info Edge (India) Pvt. Ltd. and Anr. (supra) the Court dealt with domain names naukri.com and naukari.com which clearly resembled plaintiffs' site naukri.com . There was close similarity between the domain names and both parties carried on identical lines of business and there was a real possibility of interested users being misled into accessing defendants website believing it to be that of the plaintiffs. The defendants had intentionally chosen the offending name and it was found that there was prima facie bad faith involved.

72. Similarly, in case of Satyam Infoway Ltd. (supra) it was held that a domain name not only serves as an address for internet communication but also identifies a specific commercial field in which it operates and use of a similar domain name which could result a diversion of users. There was a clear and imminent risk of diversion of hits in Satyam.

73. In Panavision (Supra) the court held that using a company's name or using trade-mark as a domain name would also be the easiest way to locate that company's website and that using a search engine can turn up hundreds of web addresses. The Court also held that potential customers of Panavision will be discouraged if they cannot find its web page by typing in Panavision.com but were forced to hundreds of web sites and that this effectively dilutes the value of Panavision trade-mark. The learned Judge of the District Court held as follows:- Prospective users of plaintiff's services who mistakenly access defendant's web site may fail to continue to search for plaintiff's own home page, due to anger, frustration or the belief that plaintiff's home page does not exist. These reasons through perfectly useful to decide against Toeppen, Panavision scenario would not arise in the present case because the plaintiffs are not in the pharmaceutical business at all. One must consider whether the defendants while adopting the name raymondpharma.com had reasonable ground to believe that use of the domain name was a fair use and whether it was otherwise a lawful use. In my view this aspect must be answered in favour of the defendant since it was carrying on business in the name of Raymond Pharmaceutical Pvt. Ltd. In other words the defendant was in a safe harbor while using the name raymondpharma.com.

74. While considering various decisions that were relied upon by the plaintiffs in support of Notice of Motion, I find that many of the decisions relied upon by the plaintiffs are not directly relevant to the issue at hand. I remind myself of the observations of Lord Denning quoted in Ashwani Kumar Singh (supra) to the effect that the path of justice must be kept clear of obstructions. The various judgments relied upon by the plaintiff's though elaborating different aspects of trade-mark protection do not deal with fact situation we are faced with in this Suit. In the present case I find none of the compulsions observed in the above cited cases which led to grant of relief. Given the facts of the present case I am of the view that the defendants have not attempted to diminish the value of the Plaintiffs Marks by using the impugned domain name. There is no doubt in my mind that the trademark Raymond is well known trademark and is associated with the plaintiffs. This is something that has been recognised by the order of the learned Single Judge in Notice of Motion (L) No.1421 of 2013 in Suit (L) No 616 of 2013 (Raymond Ltd. Vs. Ashirwad Electricals and Others) as well as Notice of Motion (L) No.2781 of 2015 in Suit (L) No.1057 of 2015 (Raymond Ltd. Vs. Sai Balaji Suitings and Anr.). These were thus cases were the defendants had attempted to copy the plaintiffs registered mark and Art work including manner in which they have been written. The above two decisions are not of assistance to the plaintiffs except to establish that word Raymond is well known mark.

75. International regulation of domain name was administered through WIPO and ICANN and consultation between these two organisations resulted in Uniform Domain Name Disputes Resolution Policy (UDRP) and registration was allowed on first cum first serve basis. If a party complains of infringement, the complaint may be made before dispute-resolution forum provided for.

76. In India in absence of legislation expressly dealing with dispute relating to domain name leads such disputes to be taken up for adjudication in the Court including by way of action of passing off. The Statement of Objects and reasons of the Trade Mark Act, 1999 does not reveal any intention to widen the scope of amended Act so as to specifically cover the protection of trade-marks in domain names. The aforesaid mentioned standards of the UDRP will be useful as a guide for the appropriate tests to be applied. In my prima facie view, the use of the impugned domain name in the present set of facts is neither such as to take unfair advantage nor is it detrimental to the distinctive character of the plaintiff's registered Mark. Section 29(4) requires criteria all three sub-clauses to be satisfied unlike Section 29(8) referred to by Mr. Khandekar. Although trade-marks may be used as domain name(s) unless an impugned domain name is identical to a registered mark or the two are so alike so as to cause initial interest confusion to a man of ordinary intelligence, the domain name need not result in infringement of the mark or passing off. Every domain name cannot therefore form subject of trade-mark protection. I may add a word of caution here by clarifying that to reach a conclusion on this aspect the facts of a case are material.

77. On analysis of the judicial pronouncements that have been pressed into service on behalf of the Plaintiffs it would require the Plaintiffs to establish that the defendant's use of the mark should be demonstrably not in accordance with honest practice in commercial matters and take unfair advantage or detrimental to the Plaintiffs' mark. In the context of the allegations of passing off the registration of the impugned domain name and use of Email-id must have resulted in misrepresentation in the course of trade to customer of the defendants and/or the plaintiffs, Apart from being calculated to injure it must also cause actual damage to the Plaintiffs. In the present case, I find no such evidence to indict the defendants. It is the Plaintiffs stated case and as argued before me that the Plaintiffs' mark is infringed by virtue of Section 29(4). Although I do not find merit in Mr. Khandekar's submission that the plaintiff's mark lacks distinctive character, I am of the prima facie view that the domain name has not been adopted without due cause or to take unfair advantage or cause any detriment to the distinctive character or repute of the Plaintiffs mark Raymond especially in the light of fact that the Plaintiffs case under Section 29(5) has been negated at the interim stage. Absence of sales figures of the defendants is not so critical in the present facts.

78. In my view any further relief against the defendants in respect of use of domain name would have to await the result of the 2006 suit. However, if the defendants continue use of the plaintiff's mark on any product, publicity or literature in any manner other than the use of its current domain name/corporate name or Email address, such a course would immediately entitle the plaintiff's to seek a restraining order, as any such attempt would be taking unfair advantage of the mark. The Plaintiffs' Mark will not be any less distinctive than it was prior to the impugned domain name being registered and utilised, if the injunction sought is refused. The Plaintiffs have filed the present suit only in 2014 although domain name was stated to have been registered in 2009, a fact about which there is no serious dispute. In the event the Plaintiffs succeeds in the 2006 there will be justifiable cause to seek restraint on the domain name as well. Taking all these aspects into consideration, the balance of convenience favours the defendants and the Plaintiffs are not entitled to any relief sought in the Motion. I therefore pass the following order:-

(a) Notice of Motion is dismissed.

(b) There will be no order as to costs.