IA No.8439/2016 (of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908)
1. The plaintiff instituted this suit, to (i) restrain the defendant from providing any services under the name MAXCURE HOSPITAL / MAXKURE / MAXCURE MEDICITI or any other mark / name which is a fraudulent or obvious imitation of or deceptively or confusingly similar to the plaintiff’s trade mark MAX / MAX HOSPITAL; (ii) restrain the defendant from, by using the name MAXCURE HOSPITAL / MAXKURE / MAXCURE MEDICITI, pass off its services / projects, as that of the plaintiff; and, (iii) for ancillary reliefs.
2. The suit came up first before this Court on 20th July, 2016 when the defendant, being on caveat, appeared. The plaintiff on that date gave up the relief claimed in the suit for passing off and confined the suit to the relief of infringement of trade mark. The suit was entertained and summons thereof and notice of the application for interim relief issued and the statement of the defendant, that it did not propose to launch any fresh operations under the mark ‘MAXCURE’ or ‘MAXKURE’, was recorded and the defendant ordered to be bound therewith.
3. Pleadings in the suit have been completed. The defendant applied under Order VII Rule 11 of the CPC for rejection of the plaint on the ground of non-joinder of necessary parties and non-disclosure of vital facts. The said application was dismissed vide judgment dated 29th November, 2017. The senior counsels were heard on the application for interim relief on 6th December, 2017, 20th December, 2017, 10th January, 2018 and 19th February, 2018 and orders reserved.
4. It is inter alia the case of the plaintiff, that (i) the trade mark ‘MAX’ has been owned and used by Max Financial Services Ltd. (MFSL), MFSL group of companies, Max India and Max India group of companies, in respect of goods and services falling under various categories, and has been in use not just as a trade mark but also as a trade name for various business ventures; mention is made of Max Life Insurance Co. Ltd., Max Bupa Health Insurance Co. Ltd., Max Healthcare Institute Ltd. i.e. the plaintiff, Max Speciality Films Ltd., Hutchison Max Telecom Pvt. Ltd., Comsat Max Pvt. Ltd., Max – GB Pvt. Ltd., Max Atotech Pvt. Ltd. and Avnet Max Pvt. Ltd.; (ii) the plaintiff is a joint venture between Max India Ltd. and Life Healthcare group, which is a premier South African healthcare service provider; (iii) the existing healthcare business of the plaintiff was transferred by MFSL to Max India in pursuance of a Scheme of Demerger; (iv) the plaintiff started its operations in India in 2000 as a division of MFSL and since June, 2002, the plaintiff was formed as an independent company; (v) since the year 2000, the plaintiff has opened nearly fourteen hospitals / healthcare centres in Delhi, Gurgaon, Mohali, Bathinda, Dehradun and Greater Noida; (vi) the plaintiff also organizes regular health camps and health awareness / check up programmes in various parts of the country and abroad; (vii) the word ‘MAX’ has come to be closely associated with the plaintiff and the plaintiff has various registrations of MAX HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR. MAX CLINIC and MAX HEALTHSTAFF, all under Class 42 and dated between 2003-2005; (viii) the plaintiff, just prior to the institution of the suit, was made aware of the use of the mark / name MAXCURE HOSPITAL / MAXKURE by the defendant and on making investigations learnt that the defendant has also adopted MAXCURE MEDICITI, which is deceptively similar to plaintiff’s trade mark; (ix) the defendant is providing full fledged healthcare services; (x) it was further learnt that the marks MAXCURE HOSPITAL / MAXKURE and MAXCURE MEDICITI were recently adopted by the defendant and the defendant were earlier running the said hospitals / health facilities under the name of Sunshine Hospital and Mediciti Hospitals; (xi) the plaintiff has also learnt of the applications filed by the defendant in June – July, 2015 for registration of MAXCURE / MAXKURE; (xii) the defendant has also registered a domain name www.maxcurehospitals.com which is similar to the plaintiff’s trade mark and the said domain name has also been registered only on 29th May, 2015; (xiii) adoption by the defendant of MAXCURE HOSPITAL / MAXKURE and MAXCURE MEDICITI is dishonest; (xiv) the defendant in response to the cease and desist notice refused to comply, claiming the mark to be different and also suggested amicable settlement; and, (xv) attempts of the plaintiff at settlement did not bear fruit.
5. The defendant contested the suit pleading, that (a) as per the averments in the plaint, MAX INDIA is the owner of the goodwill in the trade mark and the suit is bad for non-joinder of MAX INDIA; (b) the defendant was incorporated in Hyderabad, Telangana, in the year 2011 and is a pioneer in healthcare services in South India; (c) within a short span of five years, the defendant’s operations have grown into six hospitals spread throughout Telangana and part of Andhra Pradesh; (d) the defendant has invested considerable sum in building the brand MAXCURE / MAXKURE and MAXCURE MEDICITI; (e) there are significant difference between the trade mark of the plaintiff and the defendant; (f) the defendant has not used and not sought registration of MAX as a standalone mark but as part of a larger phrase and have not sought protection over the over the word ‘MAX’ itself; the defendant’s marks are MAXCURE and MAXKURE; (g) visually also, the marks of the defendant are distinct from that of the plaintiff; the defendants’ marks show a stylized ‘wing’ logo in a combination of red and maroon, below the words MAXCURE or MAXKURE, again in a combination of red and maroon; on the other hand, the plaintiff’s mark uses a light turquoise medical cross with two human hands reaching towards the center of the cross next to the words MAX HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR. MAX CLINIC, MAX HEALTHSTAFF, all either completely in navy blue or in a combination of navy blue and orange; (h) all the marks of the plaintiff are label marks; (i) trade mark registration of a label mark only grants rights over the mark as a whole and does not in itself provide the proprietor with the proprietary rights over the words in the label; (j) MAX is only a small part of the mark of the plaintiff; (k) registrations of the plaintiff have been wrongly granted; (l) MAX cannot be considered to be a unique word by itself and is merely an abbreviation of the dictionary word ‘maximum’; (m) MAX is used in English phases to denote that an action is being performed to maximum capacity; (n) to that extent maximum is a laudatory term considered to be a term that designates the quality of service being provided; (o) a proprietary right cannot be granted over a term which is incapable of distinguishing the goods and services to which it is sought to be applied; (p) search results of the database of the Indian Trademark Registry shows that 116 applications have been made in Class 44, pertaining to medical services, for wordmarks or device marks incorporating the word MAX and of which 14 have been registered; (q) the plaintiff has no registered marks in Class 44 pertaining to medical services; (r) 385 applications have been made in Class 42 pertaining to scientific and technological services, for word marks or device marks incorporating the word MAX, of which 129 have been registered and 47 (excluding those applied for by the plaintiff) pertain to medical services as per their description; (s) vast majority of the plaintiff’s hospitals are located in the National Capital Region; the defendant’s hospitals on the other hand are spread throughout states of Andhra Pradesh and Telangana; (t) while the plaintiff’s hospitals cater to the upper middle class and elite segment of society, the defendant’s hospitals cater to diverse income categories; and, (u) the defendant, since 2015 changed its name from Sunshine Super Specialty Institute to MAXCURE, to create a new and unique brand identity for itself after the end of its joint venture relationship.
6. The plaintiff has filed a replication inter alia pleading that (i) the plaintiff’s hospitals are providing medical facilities not only to patients from the entire country but also from abroad; (ii) the defendant is misconstruing the contents of the plaint to plead that the plaintiff is only the owner of the trade mark and not of the goodwill attached thereto; (iii) though the defendant on 20th July, 2016 stated that it did not propose to launch any fresh operations under the mark MAXCURE or MAXKURE but in the written statement has pleaded in contravention thereof; (iv) the plaintiff has lodged opposition to the applications of the defendant for registration of trade marks; (v) there is no difference between the trade mark of the plaintiff and the defendant; the essential feature of the trade marks is common; (vi) the general public is likely to associate the hospitals and services of the defendant as that of the plaintiff; (vii) the adoption and usage of the word / mark MAX by the promoters of the plaintiff itself took more than 35 years and has fame and reputation in various areas of business and commerce including healthcare; (viii) the defendant is estopped from pleading non-registrability of the mark of the plaintiff, having itself applied for registration; (ix) the other entities who have applied for or obtained registration of marks are either in other fields of activity or their applications have been opposed by the plaintiff and several of them have already abandoned their applications; and, (x) even otherwise, mere presence of third party marks on the register does not show actual usage.
7. The senior counsel for the plaintiff has contended that (i) while the hospitals of the plaintiff, since inception in the year 2000, have MAX as their name / mark, the hospitals of the defendant till 2015-16 were known as Sunshine Hospital and the defendant adopted MAX only in 2015-16; and, (ii) the defendant could not be unaware of the hospitals of the plaintiff.
8. The senior counsel for the defendant has argued that, (I) the plaintiff has concealed that the word MAX per se has not been registered in favour of the plaintiff and that the application of the plaintiff for registration thereof is pending; (II) the plaintiff has not filed the legal documents of registration of its mark and only from such legal documents it can be known whether there is any disclaimer; (III) all registrations are of a device / label mark; (IV) though the plaintiff may perhaps have a case for passing off, but certainly not of infringement; (V) MAX is an abbreviation of ‘maximum’, which is an adjective and not registrable; (VI) others in Hyderabad have been using the word MAX since prior to the year 2000; (VII) the label mark of the defendant is totally different from the label mark of the plaintiff; (VIII) the plaintiff has not claimed the relief of infringement of MAX HEALTHCARE and claims the reliefs only of MAX, but of which the plaintiff does not hold any registration; (IX) the plaintiff thus does not have any prima facie case; (X) what has to be compared are two labels and not the words on the label; (XI) the test of infringement is not in the usage of the mark but on paper; reference is made to Vardhman Buildtech Pvt. Ltd. Vs. Vardhman Properties Ltd. 233 (2016) DLT 25 (DB) to contend that the plaintiff therein holding registration of a label mark VARDHMAN PLAZA was refused interim injunction against those using VARDHMAN as part of their corporate name and also as part of their logo, reasoning that the label mark is to be taken as a whole and matter which is common to the trade or is otherwise of a non-distinctive character is not be considered; (XII) the defendant, on 5th June, 2017 ceased to be part of the Sunshine Group and thus adopted the new name of MAXCURE / MAXKURE and MAXCURE MEDICITI; (XIII) all registrations of the plaintiff are post coming into force of the Trademarks Act, 1999; (XIV) Section 17 of the 1999 Act provides that where a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark as a whole; there was no equivalent of Section 17 under the Trade and Merchandise Marks Act, 1958 in force prior thereto; (XV) reliance is placed on Ruston & Hornsby Ltd. VS. The Zamindara Engineering Co. 1969 (2) SCC 727 qua the difference between an infringement action and a passing off action; (XVI) it is not even the prayer of the plaintiff in the plaint that the device / label mark of the defendant is same as the device / label mark of the plaintiff; (XVII) Max India Pvt. Ltd. is a necessary party to the present suit and has applied for registration of the word mark MAX and has not joined as a plaintiff because does not want ruling that MAX is not registrable; (XVIII) attention is invited to page 978 (983) of the defendant’s documents, being an Information Memorandum of Max India Pvt. Ltd., claiming use of the trade mark MAX and its associated logos and disclosing that under the scheme of arrangement, Max India Pvt. Ltd. is required to grant right to use the MAX trade marks to MFSL and MVIL royalty free and by way of licence; (XIX) attention is also invited to page 990 of the defendants documents, being an application filed by Max India Ltd. on 17th May, 1996 for registration of MAX as a word mark on proposed to be used basis and the objection raised by the Registrar of Trade Marks thereto at page 991 and it is contended that the said application was abandoned (the senior counsel for the plaintiff at this stage drew attention to page 992 to show that the registration of the word MAX in favour of the Max India Ltd. in Class 5); (XX) the operations of the defendant are only in Andhra Pradesh and Telangana and which fact has again been concealed; (XXI) the following factual issues arise in the present case:
(i) Whether a suit for infringement of a device mark is maintainable against a defendant who uses a word mark allegedly forming part thereof, where no separate application has been filed for the said part by the plaintiff as required by Section 17 of the Trade Marks Act, 1999?
(ii) Without prejudice to Issue (i), if the suit filed seeks relief in respect of a word mark, whether it can be maintainable if the alleged registered proprietor of the word mark is not a party to the suit, in terms of Sections 52 and 53 of the Trade Marks Act, 1999?
(XXII) as per the Information Memorandum of Max India Pvt. Ltd., the plaintiff is merely a permitted user of MAX and not entitled to sue for infringement thereof; (XXIII) the plaintiff is proprietor of the device / label mark only and if makes out a case of infringement thereof, can maintain the suit; reliance is placed on P.K. Sen Vs. Exxon Mobile Corporation 236 (2017) DLT 333 (DB) but which is on the aspect of territorial jurisdiction; (XXIV) in paragraph 10 of the judgment dated 29th November, 2017 of dismissal of the application of the defendant under Order VII Rule 11 of the CPC, it was held that at that stage only the plaint could be seen but now at this stage, the defence of the defendant can also be seen and which does not show the plaintiff to be having any cause of action; (XXV) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 is of prior to the 1999 Act when Section 17 of the Trademarks Act did not exist; (XXVI) trade mark is essentially territorial in nature; (XXVII) the plaintiff has not made out any case of suffering irreparable injury; (XXVIII) MAX is not distinctive of the plaintiff; (XXIX) no educated person will get confused; (XXX) the defendant, at pages 943 and 944 of its documents, has listed other registrations using the word MAX; (XXXI) when a person chooses to adopt a common word as its trade mark, it cannot claim exclusivity till the word acquires a secondary meaning and which is a matter of evidence; (XXXII) the defendants, since 2015 have acquired huge popularity and will suffer irreparable loss if restrained during the pendency of the suit; and, (XXXIII) the defendants are willing to make a statement that they will use the mark only in South India and not in North India and the defendants should be relieved from their undertaking.
9. The senior counsel for the plaintiff has contended that (a) the plaintiff, since the institution of the suit, has also obtained other registrations, registration whereof was pending at the time of institution of the suit; (b) the plaintiff is admittedly prior user by fifteen years; (c) the change effected by the defendant from Sunshine to MAX shows the intent of the defendant to cash on the goodwill of the plaintiff; (d) MAX is a prominent part of the series of marks of the plaintiff; (e) reliance is placed on:
(i) United Biotech Pvt. Ltd. Vs. Orchid Chemicals & Pharmaceuticals Ltd. 2012 SCC OnLine Del 2942, where though the mark ORZID was a label mark, the word mark ORZID was found to be an essential feature thereof;
(ii) Parle Products (P) Ltd. Vs. J.P. & Co, Mysore AIR 1972 SC 1359, holding that marks are remembered rather by general impressions or by some significant detail, than by any photographic recollection of the whole and that variations in detail might be supposed by customers who are already acquainted with the mark, to have been made by the owners of the trade mark for reasons of their own;
(iii) Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. Vs. Shree Sita Chawal Udyog Mill 2010 (44) PTC 293 (Del), holding that no one can copy an essential part or predominant part of a trade mark and the benefit of prior use doctrine will also be available to an essential/prominent/predominant part of trade mark;
(iv) Laxmikant V. Patel Vs. Chetanbhat Shah 2002 (24) PTC 1 (SC), to contend that merely because the business of the defendant was located at a distance from that of the plaintiff was no ground to refuse injunction, and that the change effected by the defendant from Sunshine to MAX is mala fide and also laying down that use of QSS- Muktajivan Colour Lab amounted to passing off of Muktajivan Colour Lab, Muktajivan being the distinctive element of the mark;
(v) Dabur India Ltd. Vs. Real Drinks Pvt. Ltd. 2014 (57) PTC 213 (Del), where interim injunction was granted to plaintiff holding registration of Real Pineapple Juice Carton against defendant using the word ‘Real’;
(vi) Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. 2014 (58) PTC 136 (Del), to contend that MAX is not an abbreviation of ‘maximum’;
(vii) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, to contend that once it is established that the defendant has adopted an essential feature of the mark of the plaintiff, no further evidence is required to establish infringement;
(viii) Paragraph 20 of the judgment dated 29th November, 2017 in this suit, holding that MAX is the essential feature of the label marks of the plaintiff;
and, (f) in Vardhman Buildtech Pvt. Ltd. supra, VARDHMAN was held to be not an essential feature of the mark.
10. The senior counsel for the defendant, in sur-rejoinder contended that (i) the suit has been confined to the ground of infringement only and the judgments cited by the senior counsel for the plaintiff are relating to the ground of passing off; (ii) any observation in the judgment dismissing the application under Order VII Rule 11 of the CPC is only in the context thereof and is not relevant at this stage; (iii) the plaintiff has prayed for permanent injunction restraining infringement of word mark and not of infringement of a device / label mark; (iv) the plaintiff is not even proprietor of the word mark MAX; (v) in fact the plaintiff, in the plaint has not even pleaded being the prior user of the word mark MAX; the plaintiff, even as prior user, is barred by Section 53 of the Act from suing for infringement without impleading the proprietor of the mark viz. Max India Pvt. Ltd; (vi) United Biotech Pvt. Ltd. supra cited by the senior counsel for the plaintiff has been distinguished in Vardhman Buildtech Pvt. Ltd. supra; (vii) Mex Switchgears Pvt. Ltd. supra was also not a case of label mark; (viii) the present controversy is fully covered by Vardhman Buildtech Pvt. Ltd. supra; (ix) Section 17 of the Act cannot be rendered meaningless; (x) in fact the suit can be dismissed under Order XV of the CPC; and, (xi) Max Vision Hospital has been in existence in Hyderabad since long.
11. Before proceeding to adjudicate, I may record that such elaborate arguments having been made by the counsels, the suit itself can be disposed of. The proposed issues handed over by the senior counsel for the defendant also and as quoted above do not raise any disputed questions of fact. However, since no consent thereto has been recorded in the orders pursuant to which orders were reserved, I refrain from doing so.
12. No merit is found in any of the elaborate contentions of the senior counsel for the defendant and the plaintiff is found entitled to interim injunction. I herein below record my reasons therefor:
A. First I have considered dehors the legalities, whether adoption by the defendant, admittedly much after adoption by the plaintiff, of the trade marks / trade name MAXCURE / MAXKURE / MAXCURE MEDICITI, for the purposes of its hospital and / or healthcare services, is likely to confuse public at large and whether it is likely to result in the public at large believing the hospital and healthcare services provided by the defendant to be those of the plaintiff under the mark MAX HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR. MAX CLINIC and MAX HEALTHSTAFF. I have not an iota of doubt that the two marks are similar / deceptively similar and are likely to cause confusion, resulting in the hospital / healthcare services of the defendant being confused by public at large and / or persons in need thereof as hospitals / healthcare services of the plaintiff.
B. I now proceed to consider, whether notwithstanding the same, a case of infringement under the Trademarks Act is made out. Ordinarily, in the light of the conclusion aforesaid, the law cannot be without remedy therefor and / or ought not to be interpreted as having no cure for the purpose for which it has been enacted. The argument of the senior counsel for the defendant, of the remedy being in an action for passing off and not in an action for infringement, assumes the statutory law of trade mark, enacted to protect rights in trade marks and in public interest of preventing consumers from being misrepresented / cheated, to be weaker than the common law of trade marks whereunder an action for passing off lies. It would be a travesty of law making and would render law making into an ass (as echoed by Mr. Bumble in Oliver Twist), if it were to be held that inspite of the trade marks of the plaintiff being registered under the provisions of the Trademarks Act, and the defendant also having applied for registration of its trade mark, and inspite of the two trade marks being similar / deceptively similar and having potential of causing misrepresentation / cheating the public and consumers, the remedy would be under the common law and not the statutory law. I reiterate that statute laws cannot be so rendered to make them toothless and weak, defeating the very purpose of enactment thereof.
C. The first argument of the senior counsel for the defendant in this context is of the plaintiff having sued for infringement of word mark without having registration of word mark. (i) Though undoubtedly the plaintiff in the prayer paragraph of the plaint has referred to its trade mark as MAX / MAX HOSPITAL, but the prayer paragraph of the plaint cannot be read in isolation and the plaint has to be read as a whole. It cannot be lost sight of that each advocate has his own style of drafting. Maybe the counsel for the defendant, if had drafted the plaint would have drafted it differently and in the prayer paragraph also given full particulars of the trade mark. Once it is found that the plaintiff elsewhere in the plaint has described its trade marks, the reference in the prayer paragraph of the plaintiff’s trade marks has to be with reference to the trade marks of the plaintiff as described in paragraph 12 of the plaint. The plaintiff thus cannot be accused of misrepresentation or concealment of the fact that its registration is of a label mark / device mark and not of a word mark MAX / MAX HOSPITAL. (ii) The plaintiff in the tabulation in paragraph 12 of the plaint, under the column ‘Trademark’, has described each of its registered mark and from a bare perusal thereof it is clear that the registration is not of a word mark but of a label / device mark inasmuch as each of the marks is accompanied with the device of a medical cross and anyone well versed in the subject of trade marks would know thereform that the registrations claimed are of device / label marks and not of word mark. (iii) Not only so, the plaintiff along with the plaint at pages 24 to 33 of Part-IIIA file has filed Certificates of Registrations held by it and which also make it clear that the registrations are of a label / device mark and not of a word mark. Thus on a reading of the entire plaint, it is clear that the infringement claimed is of label / device mark and not of word mark. (iv) The question of the plaintiff misrepresenting with a view to take ex parte order behind the back of the defendant also did not arise because the defendant had served the plaintiff with a caveat and the plaintiff knew that as per the rules of filing of the suit, the suit could not be listed without service of advance copy of the suit on the defendant and that the defendant would be represented before this Court when the suit was to be listed. The defendant was indeed represented through the senior counsel on 20th July, 2016 when the suit first came up before this Court. (v) The plaintiff has sued for infringement of its label / device marks as described in paragraph 12 of the plaint and grant / non-grant of interim injunction is to be decided on the anvil thereof.
D. The argument of the Senior Counsel for the defendant, of the plaintiff being not entitled to sue for infringement without impleading Max India Ltd. is premised on para no.5 of the plaint. However a reading of paras no.5 and 6 of the plaint do not support the said contention. The registration certificate of the marks with respect to which the suit is filed, show the plaintiff as the registrant of the marks. Paras no.5 and 6 of the plaint do not show Max India Ltd. to be the owner of the goodwill in the marks.
E. MAX is not an abbreviation in English language of the word ‘maximum’ and can at best be said to be used in slang language. It is also not as if the word MAX, in relation to hospital and healthcare services, is a generic or a laudatory word. Moreover, the plaintiff admittedly holds registration for MAX in relation to hospital and healthcare services and it is not in the jurisdiction of this Court to hold the registration to have been wrongly granted. The exclusive jurisdiction therefor is with the Registrar of Trade Marks and / or with the Intellectual Property Appellate Board (IPAB). The defendant did not take any objection to registration sought by the plaintiff of the label / device marks with the word MAX in relation to hospital / healthcare services in the last 16 years since when the marks of the plaintiff have been registered. On the contrary, the defendant, also in the business of providing hospital / healthcare services under the name of Sunshine, when desirous of changing the said name, chose the word MAX and also applied for registration of label / device marks with the said word. The consistent view of this Court in Automatic Electric Ltd. Vs. R.K. Dhawan (1999) 77 DLT 292, The Indians Hotel Company Ltd. Vs. Jiva Institute of Vedic Science and Culture 2008 (37) PTC 468 (Del) (DB), Anchor Health & Beauty Care Pvt. Ltd. Vs. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. 2014 SCC OnLine Del 2968, appeal preferred whereagainst was dismissed vide judgment reported as Procter & Gamble Manufacturing (Tianjin) Co. Ltd. Vs. Anchor Health & Beauty Care Pvt. Ltd. (2014) 211 DLT 466 (DB) and SLP(C) No.15928-15929/2014 preferred whereagainst were dismissed on 3rd July, 2014, and Vega Auto Accessories (P) Ltd. Vs. S.K. Jain Bros Helmet (I) Pvt. Ltd. 2018 SCC OnLine Del 9381 has been that a defendant who has itself applied for registration of a mark is stopped from contending the mark to be not registrable, when faced with an action for infringement. The said argument is thus not available to the defendant.
F. The mere fact that others, also providing hospital / healthcare services may be using the word MAX is no ground for depriving the plaintiff of injunction against the defendant if otherwise a case therefor is made out. I have in Sunil Mittal Vs. Darzi On Call (2017) 242 DLT 62, Insecticides (India) Ltd. Vs. Parijat Industries (India) Pvt. Ltd. (2018) 252 DLT 129, H&M Hennes & Mauritz AB Vs. HM Megabrands Pvt. Ltd. 2018 SCC OnLine Del 9369 and Purshotam Keshwani Vs. Nishant Mitrasen Mahimtura 2019 SCC OnLine Del 7392 held that the owner of a registered trade mark is not expected to indulge in the business of litigation of suing each and every person adopting the same / similar mark, irrespective of impact thereof on the business of the plaintiff. It is in the discretion of a plaintiff, whom to sue and whom not to sue and merely because a plaintiff in a suit for infringement of trade mark has not sued another, is no ground to defeat the suit against the infringer against whom the plaintiff has chosen to act.
G. That brings me to the star argument of the senior counsel for the defendant, of the label / device mark of the plaintiff being entirely different from the label / device mark of the defendant. I must admit that I myself being a resident of Delhi since birth, and familiar as any other citizen of Delhi with Max Hospitals, having not only visited patients therein but having also umpteen times passed in front of Max Hospitals / Healthcare Services, had never noticed the device of a single / double cross appearing on the label / device marks of the plaintiff or even the words Healthcare or HealthStaff. If at all any other word besides MAX stuck to the mind, that was of Super Speciality as one of the twin MAX hospitals in Saket is called. My mind always identified the hospitals of the plaintiff with the word MAX, and not necessarily along with the word Healthcare or Hospital or Medcentre or HealthStaff or with the medical cross. I can well imagine others, not having dealings with the plaintiff, also associating plaintiff only with MAX and with no other device or word. In addition, what my mind was familiar with, was the earlier names of the hospitals, management whereof has been taken over by the plaintiff and / or management whereof was taken by the plaintiff and on which take over, the plaintiff invariably adds MAX to the earlier / existing names. Mention in this context can be made of Janki MAX and MAX Centre for Liver & Biliary Sciences also. The same would be the position of others. Again, I have wondered whether the legislators of Trademarks Act providing for registration of label / device marks can be presumed to be ignorant of human psychology and / or the way the human mind perceives such marks. The answer is again no. It has been held in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346 affirmed by the Division Bench in Shree Nath Heritage Liquor Pvt. Ltd. VS. Allied Blender & Distillers Pvt. Ltd. (2015) 221 DLT 359, Prathiba M. Singh Vs. Singh & Associates 2014 SCC OnLine Del 1982 and Gillette Company LLC Vs. Tigaksha Metallics Pvt. Ltd. (2018) 251 DLT 530 that the test for infringement of a label / word mark is the test of prominent word of the mark. Besides the judgment cited by the senior counsel for the plaintiff, mention may be made of Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai Patel (2006) 8 SCC 726 where it has been held that adoption by the defendant of a prominent word in the label / device mark of the plaintiff amounts to infringement. The label / device marks may be of different kinds. Those with words only as prominent part thereof with a not so prominent device, have in Keshav Kumar Aggarwal Vs. NIIT Ltd. (2013) 199 DLT 242, Jagdish Gopal Kamath Vs. Lime & Chilli Hospitality Services 2015 SCC OnLine Bom 531, Mallcom (India) Ltd. Vs. Rakesh Kumar 2019 SCC OnLine Del 7646 and New Balance Athletics, INC Vs. Apex Shoe Company Pvt. Ltd. 2019 SCC OnLine Del 7393, appeal preferred whereagainst was dismissed vide order dated 26th March, 2019 in FAO(OS) (COMM) No.59/2019 titled Apex Shoe Company Pvt. Ltd. Vs. New Balance Athletics, INC, held to be infringed by the defendant who in his label / device adopts the same word/s by making only variation in the not so prominent device. The nature of business / services also are of several kind. A label / device mark in relation to some businesses, as of textile and / or prints, may invite the attention of the public and / or the consumer to the brand of the label / device mark but no so in others. The business of providing hospitals / healthcare services is such, where people / consumers pay least attention to the device or the label mark and read generally the first word of the label mark by which the hospital / healthcare services come to be known and recognized.
H. I am also unable to accept the contention of the senior counsel for the defendant, that the test of infringement is not in the mark or its use but on paper. The same cannot possibly be. The Courts adjudicate trade mark disputes applying the test of similarity / deceptive similarity, and which test has to be in relation to how similarity / deceptive similarity is perceived in the minds of the concerned persons and not on paper. Moreover it is only in Courts that the two marks are available side by side, for comparison. Not so in the market. The test to be applied is of the market place.
I. A person visits a hospital or a healthcare facility in an anxious state of mind, whether for himself or for near and dear ones and is not prone to pay minute attention to all the contents of the label / word mark and is prone to identify the hospital by the most prominent word on the label / device mark and which in the case of the label / device mark of the plaintiff is, MAX. As aforesaid, the hospitals of the plaintiff are known as MAX, and mere mention of MAX, even without the word hospital or healthcare, brings to mind the hospital / healthcare services of the plaintiff and nothing else, unless mention is in the context of insurance and / or financial services. When I was told for the first time that Malhotra Heart Institute, Lajpat Nagar, New Delhi was being taken over by ‘Metro’, I asked, why would Delhi Metro Rail Corporation take over a heart hospital, only to be told of Metro Hospitals, till then not having presence in Delhi, though having hospitals outside.
J. Section 17 of the Trademarks Act, on which also the senior counsel for the defendant has pegged his case, only provides for effect of registration of parts of a mark by laying down that registration confers only the exclusive right to the use of the trade mark as a whole and not to use any part thereof. It further provides that the same is not applicable where the trade mark contains any matter which is common to the trade or is otherwise of a non distinctive character. The words Hospital, Healthcare, HealthStaff in the label / device mark of the plaintiff are common to the trade and of non-distinctive character. Same is the position with the medical cross in the mark of the plaintiff. Besides the words Hospital, Healthcare, HealthStaff and the Medical Cross, only thing left in the mark of the plaintiff
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is the word MAX. I have already hereinabove referred to New Balance Athletics and Mallcom (India) Ltd. supra in which infringement was held to have been made out / prima facie made out by adoption of the prominent word of the label / device mark. The said judgments are under the 1999 Act and notwithstanding Section 17 thereof. The same is the position in the mark of the defendant. The same, besides the word MAX, have healthcare / hospital or Mediciti, which are common to the trade and non-distinctive and with which none associates the defendant either. Thus Section 17 also does not defeat the remedy of infringement. K. The business of hospitals / providing healthcare services today is such which is no longer territorial. Though a doctor practicing medicine individually may have his medical practice confined to a particular region, but once the hospitals / healthcare services have been corporatized, the business of providing medical facilities is no longer territorial. The plaintiff, in the plaint has already listed a large number of hospitals under its umbrella and it is not as if the defendant also is a one man show. The structure on which the defendant has designed itself appears to be the same as the plaintiff. Thus merely because presently the plaintiff does not have a hospital / services in Andhra Pradesh and Telangana and the defendant today is confined to Andhra Pradesh and Telangana is no reason to deny injunction. Neither can the plaintiff be restrained from expanding, nor the defendant. Moreover, today we are living in an era of medical tourism where each of such corporate as the plaintiff and the defendant vie with each other to earn maximum foreign exchange by providing cheaper and better medical treatment than available in a large number of other countries. In such an atmosphere, when a prospective patient desires to avail of services of the plaintiff and scouts on the internet for the most convenient hospital from the plaintiff’s stable from his / her perspective, the possibility of ending up confusing the hospital / healthcare of defendant for that of the plaintiff, is writ large. Moreover, once the registration of trade mark granted is valid throughout India, it is no ground to deny injunction that the defendant for the time being has no intent to enter National Capital Region where presently the hospitals / healthcare centres of the plaintiff are primarily located. L. Merit is also found in the contention of the senior counsel for the plaintiff, of the mala fides of the defendant being evident from the adoption by the defendant of the same marks with same prominent word as in the marks of plaintiff, in relation to same services as offered by plaintiff. It is not the case of the defendant and indeed it cannot be of anyone claiming any knowledge of providing hospital / healthcare services, that the defendant did not know of the plaintiff. The defendant, in spite thereof, when desirous of changing the name of its hospitals / healthcare services from that of Sunshine, chose to adopt impugned marks similar to that of the plaintiff’s and which can be nothing else but in an attempt to ride over the goodwill of the plaintiff and to make patients believe that they were getting treatment of the same standard / quality, for which the plaintiff has identified itself. There is no explanation, why the defendant chose to adopt the same name for its hospitals as that of the hospitals of the plaintiff. 13. IA No.8439/2016 is thus allowed and the defendant is restrained from using the impugned marks or any other mark similar or deceptively similar to the marks of the plaintiff. However, the defendant is granted time of 30 days with effect from today to effect the said change, and the injunction order shall become operative on expiry of 30 days herefrom. 14. IA No.8439/2016 is allowed and disposed of. CS(COMM) NO.866/2016 15. List on 13th August, 2019 for consideration, whether the suit is required to be put to trial.