CIPLA LIMITED Vs. CIPLA INDUSTRIES PRIVATE LIMITED

JUDGEMENT

(1.) Overview And The Questions To Be Decided

(2.) On the basis of this order, the Hon'ble the Chief Justice directed that the matter be placed before a Full Bench. The issue involved in this Reference is of interpretation of the various subsections of Section 29 of the Trade Marks Act, 1999 (for short "The Trade Marks Act") and in particular Sub-Sections (1), (2), (4) and (5).

(3.) Suit No. 1906 of 2012 was filed by way of an action in trade mark infringement combined with cause of action in passing off. The dispute is about the mark "CIPLA" registered to the Plaintiff in Class 05 of the Fourth Schedule to the Trade Mark Rules, 2002. The Plaintiff is a manufacturer of pharmaceutical products. It is claimed that the Plaintiff has been using the mark CIPLA for a long time. It is contended that it is also a part of its corporate name and in fact it is an abbreviation of its earlier corporate name. The mark has been used by the Plaintiff only for pharmaceutical and medicinal preparations. The Defendants have not used the said mark for such preparations. It is alleged that the Defendants have used the mark as a part of their corporate or trade name. They are using it in a slightly different form in respect of household articles, such as soap dishes, photo frames, ladders and so on. The Defendants claim to possess a registration of a very similar mark CIPLA PLAST in their favour in Class 21 of the Fourth Schedule to the Trade Mark Rules, 2002.