Corporate name of a party which deals in totally different product than the product in relation to which the trade-mark of another party is registered, does not result in infringement of the trade-mark of the party claiming the same. The subject of use of a registered trade-mark in a trade name by another party against whom a claim is made is governed not by Section 29(4) of the Trade-mark Act, but by Section 29(5) of the Trade-mark Act and therefore in order that use of registered trade-mark of one party in the trade-name by another party amount to infringement within the meaning of Trade-mark Act, the goods must be similar. If the goods marketed by the two parties are different, then in such a case it does not amount to infringement. Sub-section 5 of Section 29 deals with that situation. It deals with the situation where the party against a claim is made is not using the registered trade-mark as a trade-mark, but is using the registered trade-mark as a part of its trade name. Use of such a registered trade-mark as a part of trade name by the other party against whom claim is made also amounts to infringement, but subject to one condition namely that the said party must be dealing in goods in relation to which the trade-mark is registered. For attracting the application of Sub-section 5 of Section 29, the party initiating a claim has to show that the other party is using the trade-mark and not a mark which is identical or deceptively similar or similar to the registered trademark as his trade-name or part of his trade- name and such business concern of the party against who action is to be initiated must be shown to be dealing in the same goods in relation to which the trademark of the party initiating the claim is registered. If these two things are established, it is not necessary for the party initiating an action to show that such use of the trade-mark results in deception of the public or dilution of his mark. Sub-section 5 of Section 29 by necessary implication lays down that when a registered trade-mark is used by a party as a part of the trade-name and the said party is dealing in the same goods in relation to which the trade-mark is registered, then only it will amount to infringement. In other words, if the said party uses the registered trade-mark as a part of his trade-name, but do not deal in the same goods in respect of which the trade-mark is registered, then it does not amount to infringement for the purpose of Trade-mark Act. |
