Max Healthcare Institute Limited vs Sahrudya Health Care Private Limited

Trade Mark,Registration Number,Registration Date,Class,Goods/ services

,1248862,"November 11, 2003",42,Hospital and healthcare

,1369064,"July 5, 2005",42,"Clinic, dentistry, medical research,

healthcare, home(nursing), hospitals,

medical assistance, medical clinic,

nursing homes, physic-therapy,

consulting services relating to

chemical and pharmaceutical

research, biotechnological services,

medical and hygienic services falling

in class 42.

,1369062,"July 5, 2005",42,"clinic, dentistry, medical research,

healthcare, home(nursing), hospitals,

medical assistance, medical clinic,

nursing homes, physio-therapy,

consulting services relating to

chemical and pharmaceutical

research, biotechnological services,

medical and hygienic services falling

in class 42.

,1369065,"July 5, 2005",42,"clinic, dentistry, medical research,

healthcare, home(nursing), hospitals,

medical assistance, medical clinic,

nursing homes, physio-therapy,

consulting services relating to

chemical and pharmaceutical

research, biotechnological services,

medical and hygienic services falling

in class 42.

,1369066,"July 5, 2005",42,"clinic, dentistry, medical research,

healthcare, home(nursing), hospitals,

medical assistance, medical clinic,

nursing homes, physio-therapy,

consulting services relating to

chemical and pharmaceutical

research, biotechnological services,

medical and hygienic services falling

in class 42.

,1253026,"March 12, 2003",42,"clinic, dentistry, medical research,

healthcare, home(nursing), hospitals,

medical assistance, medical clinic,

nursing homes, physio-therapy,

consulting services relating to

chemical and pharmaceutical

research, biotechnological services,

medical and hygienic services falling

in class 42.

The present suit seeks a relief under Trade Marks Act, 1999 (in short the TM Act) alleging infringement of its registered trade mark, the relief of",,,,

passing off having been given up. Sections 52 and 53 of the TM Act read as under:-,,,,

Right of registered user to take proceedings against infringement.â€" (1) Subject to any agreement subsisting between the parties, a",,,,

registered user may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered",,,,

proprietor a defendant and the rights and obligations of such registered user in such case being concurrent with those of the registered,,,,

proprietor.,,,,

(2) Notwithstanding anything contained in any other law, a registered proprietor so added as defendant shall not be liable for any costs",,,,

unless he enters an appearance and takes part in the proceedings.,,,,

No right of permitted user to take proceeding against infringement.â€" A person referred to in sub-clause (ii) of clause (r) of sub-,,,,

section (1) of section 2 shall have no right to institute any proceeding for any infringement.,,,,

A bare reading of Sections 52 and 53 of the TM Act shows that only a registered proprietor or a registered user of the trade mark is competent to,,,,

institute the proceedings for infringement in his own name. Thus, the very maintainability of a suit for infringement is by a registered",,,,

proprietor/registered user. As per the plaint, admittedly, plaintiff is not the registered proprietor/registered user of the trade mark ‘Max’. It is the",,,,

registered owner/proprietor of the composite label mark and word ‘Max’ is a part of the mark. Dealing with the issue whether a non-registered,,,,

proprietor of the trade mark can institute a suit alleging infringement and distinguishing the decision of the Supreme Court in Ramdev (supra) this,,,,

Court in P.K.Sen (supra) held as under:-,,,,

Sections 52 and 53 are extremely important for the purposes of this case. Section 52(1)provides that subject to any agreement subsisting,,,,

between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor. Of",,,,

course, in such eventuality, the registered proprietor has to be made a defendant. Furthermore, in such cases, the rights and obligations of",,,,

such a registered user would be concurrent with those of the registered proprietor. Since the plaintiff No.2 /respondent No.2 is admittedly,,,,

not a registered user; Section 52(1) does not come into play insofar as it is concerned. But, what is important is that it has to be kept in mind",,,,

that a registered user has been given the right to institute the proceedings for infringement in his own name as if he were the registered,,,,

proprietor. Section 52(2) also deals with a case where a registered user has instituted a proceeding in his own name and does not arise for,,,,

consideration in the present case. Section 53, in clear departure from Section 52, stipulates that a person referred to in Section 2(1)(r)(ii)",,,,

shall have no right to institute any proceeding for any infringement. The person referred to in Section 2(1)(r)(ii) is a person other than the,,,,

registered proprietor and registered user and would obviously include a ‘permitted user'. In other words, the only persons who can bring",,,,

a suit for infringement of a trade mark would be the registered proprietor himself or the registered user and certainly not a permitted user.,,,,

Therefore, in our view, the submission made by the learned counsel for the appellant that the suit could not have been instituted by the",,,,

respondent No.2/plaintiff No.2 is correct.,,,,

Section 134 of the said Act has already been extracted above. It may be seen that Section 134(1) refers to three kinds of suits:-,,,,

a) for the infringement of a registered trade mark;,,,,

b) relating to any right in a registered trade mark;,,,,

c) for passing off arising out of use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade,,,,

mark, whether registered or unregistered.",,,,

Section 134(2), however, relates only to the suits specified in clauses (a) and (b) above of sub-section(1). In other words, Section 134(2) of",,,,

the said Act is relatable only to suits for infringement of a registered trade mark or for suits relating to any rights in a registered trade,,,,

mark. It does not relate to an action of passing off. It may be remembered that the present suit is one of an action based on an alleged,,,,

infringement of a registered trade mark. The expression used in Section 134(2), which is of material importance, is ‘person instituting the",,,,

suit’. From our discussion above on Section 53 of the said Act, it is evident that a permitted user cannot institute a suit for infringement",,,,

of a registered trade mark. Therefore, the plaintiff No.2/respondent No.2 by itself could not have filed the present suit.",,,,

We now come to the next expression which is of importance where there are multiple plaintiffs. The expression is ― ‘where there are,,,,

more than one such persons’. The expression ‘such persons’ would obviously refer to persons instituting the suit and would,,,,

obviously mean the persons who are entitled to institute the suit. It would definitely, in our view, not extend to persons who are disentitled to",,,,

institute a suit or who do not have a right to institute any proceeding for infringement. In other words, the plaintiff No.2/respondent No.2",,,,

cannot be covered by the expression ’person instituting the suit’ or within the expression ‘such persons where there are more,,,,

than one plaintiff’.,,,,

At this juncture, we may also point out that the Explanation to Section 134(2) provides that for the purposes of sub-section (2),",,,,

‘person’ includes the registered proprietor and the registered user. According to the learned single Judge and the respondents, this is",,,,

an inclusive definition and is not a restrictive one. It is also the case of the respondents that the word ‘person’ would also include a,,,,

‘permitted user’. On the contrary, the contention of the appellants is that it is an exhaustive one and the reference to person could",,,,

only be to a registered proprietor and a registered user. In our view, both submissions are not correct. It is true that the definition of a",,,,

‘person’, as given in the Explanation cannot be restricted to ‘registered proprietor' and the ‘registered user' and on the face of",,,,

it, it is a definition of the inclusive kind and not of a restrictive or exhaustive nature. We say so because Section 134(2)deals not only with",,,,

cases of infringement of a registered trade mark as indicated in clause (a) of sub-section (1) of Section 134, but also pertains to suits",,,,

relating to any right in a registered trade mark which may, if permitted by other provisions of the said Act, be instituted by persons other",,,,

than the registered proprietor and the registered user. But, it would certainly not include a permitted user suing for an infringement of a",,,,

trade mark. This is so because there is an express prohibition under Section 53 of the said Act. The learned single Judge seems to have lost,,,,

sight of this aspect of the matter. If, indeed, the word ―person would include a permitted user, then it would mean that while on the one",,,,

hand Section 53 bars such a person from instituting any proceeding for infringement, Section 134(2) would yet regard him as a person",,,,

instituting the suit. This interpretation would be contrary to the terms of the enactment. Consequently, while we are of the view that the word",,,,

‘person’ as appearing in Section 134(2) is not restricted to registered proprietor and registered user, it certainly does not include a",,,,

permitted user in a suit for infringement of a registered trade mark.,,,,

It is thus apparent that the present suit seeking infringement of the word ‘Max’ is liable to be rejected for non-joinder of necessary parties,,,,

under the proviso to Order I Rule 9 CPC read with Section 52, 53 and 134 of the TM Act, however as noted above plaintiff is the registered owner of",,,,

six label marks namely Max Health Care  Max Hospital  Max Medcentre  Dr.,,,,

Max Clinic  and Max Health Staff  and the claim of the plaintiff in the plaint is that the word ‘Max’,,,,

is an essential zeature of the plaintiff’s six label marks and thus by using the word ‘Max’ the defendant has infringed the essential feature,,,,

of its label mark. Though learned counsel for the defendant contends that in the plaint it is not stated that the word ‘Max’ is an essential feature,,,,

of its trademark but a perusal of para 6 of the plaint as noted below contains the averment that ‘Max’ is an essential part of the trade mark:,,,,

“6. The trade mark MAX has been owned and used by MFSL, MFSL group companies, Max India and Max India group companies in",,,,

respect of goods and services falling in various categories, and has been in use not just as a trade mark, but also as a trade name for",,,,

various business ventures. For all the activities of MFSL, MFSL group companies, Max India and Max India group companies, the mark",,,,

MAX has been and continues to be the most integral part of the business name and also the trade mark. MFSL has been using the word,,,,

MAX since before the Scheme. Each of the above named companies also uses the name MAX as an essential part of its trade mark and trade,,,,

name various associated and connected concerns as under:,,,,

• Max Life Insurance Co. Limited,,,,

• Max Bupa Health Insurance Co.Ltd.,,,,

• Max Healthcare Institute Limited (Plaintiff),,,,

• Max Speciality Films Limitedâ€​,,,,

Section 17 of the TM Act reads as under:-,,,,

Effect of registration of parts of a mark.â€" (1) When a trade mark consists of several matters, its registration shall confer on the",,,,

proprietor exclusive right to the use of the trade mark taken as a whole.,,,,

(2) Notwithstanding anything contained in sub-section (1), when a trade markâ€"",,,,

(a) contains any partâ€",,,,

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or,,,,

(ii) which is not separately registered by the proprietor as a trade mark; or,,,,

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer",,,,

any exclusive right in the matter forming only a part of the whole of the trade mark so registered.,,,,

The Division Bench of this Court in the decision reported as 2013 (53) PTC 1 (Del)(DB) Himalaya Drug Company Vs. S.B.L. Limited dealing,,,,

with the essential features of a trade mark observed:,,,,

“Essential Features,,,,

The courts have propounded the doctrine of prominent and essential feature of the trade mark for the purposes of adjudication of the,,,,

disputes relating to infringement of trade mark. While deciding the question of infringement, the court has to see the prominent or the",,,,

dominant feature of the trade mark. Even the learned single judge agrees to this proposition when the learned judge quotes McCarthy on,,,,

Trade Marks that all composite marks are to be compared as whole. However, it is dependent on case to case to basis as a matter of jury",,,,

question as to what can be the possible broad and essential feature of the trade mark in question.,,,,

It is settled law that where the defendant's mark contains the essential feature of the plaintiff's mark combined with other matter, the",,,,

correct approach for the court is to identify an essential feature depending particularly ""on the court's own judgment and burden of the",,,,

evidence that is placed before the Court"". In order to come to the conclusion whether one mark is deceptively similar to another, the broad",,,,

and essential features of the two are to be considered. They should not be placed side by side to find out if there are differences, rather",,,,

overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court",,,,

has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two,,,,

marks.,,,,

The ascertainment of an essential feature is not to be by ocular test alone but if a word forming part of the mark has come in trade to be,,,,

used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the",,,,

mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by,,,,

placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with,,,,

both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe",,,,

that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by,,,,

some significant detail than by any photographic recollection of the whole"". In the decision reported as (1951) 68 RPC 103 at page 105, De",,,,

Cordova v. Vick Chemical Co., the plaintiffs were the proprietors of a label containing the words ""Vick's VapoRub"" as the essential feature,",,,,

registered in Jamaica, and the defendants used a similar label with the words ""Karsote Vapour Rub"" as the essential feature, and it was",,,,

shown that the expression ""VapoRub"" had become distinctive of the plaintiff's goods in Jamaica, an action for infringement was successful.",,,,

(See De Cordova v. Vick Chemical Co. (supra), (1941) 58 RPC 147, Saville Perfumery Ld. v. June Perfect Ld., AIR 1972 SC 1359 at 1362,",,,,

M/s. National Chemicals and Colour Co. and Others v. Reckitt and Colman of India Limited and AIR 1991 Bombay 76: 1991 (11) PTC 217,,,,

(Bom) (DB), M/s. National Chemicals and Colour Co. and others vs. Reckitt and Colman of India Limited and another)",,,,

Identification of essential features of the trade marks has been discussed in details in the case of Kaviraj Pandit Durga Dutt Sharma vs.,,,,

Navaratna Pharmaceutical Laboratories (supra):-,,,,

In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the",,,,

similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the",,,,

conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another",,,,

way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and",,,,

other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a",,,,

trade origin different from that of the registered proprietor of the mark would be immaterial;......,,,,

When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be ""in the course of trade"", the",,,,

question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no,,,,

further questions arise; for then the infringement is made out.,,,,

The Court in determining whether the Defendant's mark is deceptively similar to the mark of the Plaintiffs were enunciated in the,,,,

judgment of Mr. Justice Parker in the decision reported as 1906(23) RPC 774, Pionotist Case:",,,,

You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to",,,,

be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the",,,,

surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a,,,,

trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that",,,,

there will be a confusion-that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will",,,,

be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must",,,,

refuse the registration in that case.â€​,,,,

Since in the plaint, plaintiff claims and even from the label marks as noted above it is evident that ‘Max’ is the essential feature of the label",,,,

mark of the six trademarks, thus, the use of the word ‘Max’ by the defendant amounts to infringement. Consequently, the plaint cannot be",,,,

rejected at this stage.,,,,

The application is dismissed.,,,,