Delhi High Court - Orders
House Of Diagnostics Llp & Ors vs House Of Pathology Labs Private Limited on 12 December, 2023
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 869/2023
HOUSE OF DIAGNOSTICS LLP & ORS. ..... Plaintiffs
Through: Mr. Vaibhav Vutts, Ms.
Anupriya Shyam and Ms. Yushika Dalmia,
Advs.
Versus
HOUSE OF PATHOLOGY
LABS PRIVATE LIMITED ..... Defendant
Through: Mr. Arnav Goyal, Adv.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 12.12.2023
CS(COMM) 869/2023
1. The plaintiffs are the proprietors of the following registrations under the Trade Marks Act, 1999:
S. no. Trademark Application User Status Application Number Details Date
1. 2297846 01.04.2008 Registered 12.03.2012 Class 10 Surgical, Medical, Dental and veterinary Apparatus and Instruments, Artificial Limbs, Eyes and Teeth, Orthopaedic Article; Suture Materials
2. 2297847 01.04.2008 Registered 12.03.2012 Class 41 Education; Providing of Training; Entertainment; Sporting and Cultural Activities
3. 2297848 01.04.2008 Registered 12.03.2012 Class 42 Scientific and Technological Services and Research And Design CS(COMM) 869/2023 Page 1 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:56 Relating thereto; Industrial Analysis and Research Services; Design and Development of Computer Hardware and Software
4. 2297849 Proposed Pending 12.03.2012 to be used Class 44 Medical Services, Veterinary Services, Hygienic And Beauty Care For Human Beings Or Animals, Agriculture And Forestry Services
5. 3613829 Proposed Registered 16.08.2017 to be used Class 35 Computerized Database Management For Tracking Patient Information For Diagnostic Testing; Referral Services In The Fields Of Medical, Health And Clinical Care; Product Demonstration Services In The Field Of Medical Diagnostic Testing; Computerized Database Management Of Diagnostic Testing And Results; Computerized Database Management Of Medical, Hospital Insurance And Billing Records: And Providing Information Regarding Hospital Billing Records: Computer Services, Namely, Electronic Storage And Retrieval Of Messages And Data In The Field Of Diagnostic Testing And Preparations For The Treatment, Monitoring And Diagnosing Of Disease; Computer Services, Namely, Electronic Storage And Retrieval Of Biological Specimens And Diagnostic Assays
6. 3613830 Proposed Registered 16.08.2017 to be used Class 44: Medical services, hospitals, nursing homes, medical clinic, medical assistance, health care, health centres, health diagnostic services, pathology services, radiology services, therapy services, opticians" services, blood bank services, hair implantation; medical equipment rental.
7. 3613831 Proposed Registered 16.08.2017 to be used Class 35: Computerized Database Management For Tracking Patient Information For Diagnostic Testing; Referral Services In The Fields Of Medical, Health And Clinical Care; Product Demonstration Services In The Field Of Medical Diagnostic Testing; Computerized Database Management Of Diagnostic Testing And Results; Computerized Database Management Of Medical, Hospital Insurance And Billing Records; And Providing Information Regarding Hospital Billing Records; Computer Services, Namely, Electronic Storage And Retrieval Of Messages And Data In The Field Of Diagnostic Testing And Preparations For The Treatment, Monitoring And Diagnosing Of Disease; Computer Services, Namely, Electronic Storage And Retrieval Of Biological Specimens And Diagnostic Assays.
8. 3613832 Proposed Registered 16.08.2017 to be used Class 44 Medical Services, Hospitals, Nursing Homes, Medical Clinic, Medical Assistance, Health Care, Health Centres, Health Diagnostic Services, Pathology Services, Radiology Services, Therapy Services, Opticians" Services, Blood Bank Services, Hair Implantation; Medical Equipment Rental.
CS(COMM) 869/2023 Page 2 of 10This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:56
9. 5694258 21.07.2012 Pending 23.11.2022 Class 44 Medical services, veterinary services, hygienic and beauty care for human beings or animals, agriculture and forestry services; Medical diagnostic services; surgical diagnostic services; medical assistance; medical clinic services; medical clinic services and medical analysis services for diagnostic and treatment purposes provided by medical laboratories, such as x-ray examinations and taking of blood samples; diagnosis of visual processing disorders; remote monitoring of medical data for medical diagnosis and treatment: medical analysis services for diagnostic and treatment purposes provided by medical laboratories
2. As the present case is at the stage of ad interim relief, I am eschewing any detailed allusion to facts. Suffice it to state that, when this plaint came up before this Court on 5 December 2023, I had expressed the opinion that advance service on the defendant should be first effected so that the defendant would be in a position to contest the present application. Advance service was suitably effected and Mr. Arnav Goyal appears on behalf of the defendant.
3. I have heard Mr. Vutts, learned Counsel for the plaintiffs and Mr. Goyal, learned Counsel for the defendant on the aspect of ad interim relief pending consideration of this application
4. The plaintiffs use their registered mark for providing diagnostic services. The mark comprises both of the acronym H.O.D. as well as the words House of Diagnostics written below the acronym. The plaintiffs claim to be using the said mark since 2008. The plaintiffs are also the registered proprietors of the domain names www.houseofdiagnostics.com since 2012 and https://www.hod.care/ since 2017. The plaint asserts, in para 30, that, by dint of long and continuous user, the mark "H.O.D." and "House of Diagnostics" have CS(COMM) 869/2023 Page 3 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:56 attained repute and are by now, indelibly associated with the plaintiffs. In order to vouchsafe its reach and reputation, the plaint also provides the returns earned by the plaintiffs by use of their registered marks which, during the year 2022-2023 alone, is to the tune of ₹ 128 crores. The plaint also claims that the plaintiffs are expending considerable amounts towards advertisement and promotion of their marks, the amounts spent during the year 2022-2023 alone being to the tune of ₹ 7.8 crores.
5. The defendant, House of Pathology Lab Pvt. Ltd, uses the mark , for providing diagnostic services, which are identical to the services provided by the plaintiffs under their registered trade marks.
6. The similarity between the plaintiffs' and the defendant's marks is prima facie glaring. Though Mr. Arnav Goyal has sought to submit that the words "House Of" are publici juris and are descriptive of services provided by the plaintiffs, I am unable to accept the submission. In the context of diagnostic services, I am prima facie of the opinion that the mark "House of Diagnostics" is arbitrary and inventive. In that view of the matter, it would appear, prima facie, that the defendant, in styling itself, as "House of Pathology" has deliberately copied the idea of the plaintiffs in calling themselves "House of Diagnostics". Both the marks are used for similar services. There is prima facie case of idea infringement.
7. The trade design of the defendant's mark is also, prima facie, CS(COMM) 869/2023 Page 4 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57 deliberately made confusingly similar to that of the plaintiffs. The defendant also uses the letters HOP in bold, with the words "House of Pathology", written in small letters below the acronym "H.O.P." The layout and placement of the acronyms H.O.D. and H.O.P., vis-à-vis their expanded forms "House of Diagnostics" and "House of Pathology" in the plaintiffs' and defendant's marks is identical. I am, therefore, prima facie, of the view that the defendant has consciously copied the plaintiffs not only with respect to the idea of naming its institution as "House of Pathology" but also with respect to the layout and appearance of its logo vis-à-vis the device mark , which stands registered in favour of the plaintiffs.
8. Perhaps the most damaging piece of evidence, insofar as the defendant's bona fides are concerned, is the fact that the textual material contained on the defendant's website, is identical to that used by the plaintiffs on their website, merely replacing the words "House of Diagnostics" with "House of Pathology" and the acronym "H.O.D." with "H.O.P.". This has been pointed out, in the plaint, in a tabular fashion, thus:
Extract from Plaintiff's website Extract from Defendant's website https://www.hod.care/about-hod https://houseofpathology.com/about-
hop/ "Our flagship brand named the "Our Flagship brand named under House of Diagnostics, has House of Pathology has synonymised synonymised itself as a symbol of itself as a symbol of trust by Patients, trust by patients, clinicians and other Clinicians and other Stakeholders alike. stakeholders alike. We envisioned We envisioned the provision of quality the. provision of quality and reliable and reliable diagnostic and diagnostic diagnostic and diagnostic imaging imaging services at an affordable cost. services at an affordable cost. Since Since incorporation, House of incorporation, House of Diagnostics Pathology, has focused all its goals has focused all its goals towards the towards the attainment & CS(COMM) 869/2023 Page 5 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57 attainment & benchmarking best benchmarking best industry standards. Industry Standards.
We have excelled ourselves in the We have excelled ourselves in the provision of medical diagnostics. provision of Medical Pathology. The The facilities have been designed to facilities have been designed to improve performance parameters improve performance parameters with with faster turnaround time, while fastest turnaround time. While keeping keeping an uncompromising focus at an uncompromising focus at cost- cost-efficient high- quality. efficient high-quality.
Currently, HOD plans to expand its Currently, HOP plans to expand its horizons both domestically and horizon both domestically and globally, globally, in order to help diagnose in order to help diagnose patients for patients for proper cure. This proper cure. This objective is to be objective is to be achieved by a achieved by a selection of latest and selection of latest and technologically advanced equipment, technologically advanced equipment, high quality reagents, strict internal and high quality reagents, strict internal external quality assessment and control & external quality assessment, and backed up by professionals who are not control backed up by professionals only qualified, but also Diligent. who are not only qualified, but also Constant Upgradation and introduction diligent. Constant up-gradation and of latest technology, has also developed introduction of latest technology, has as one of our major aims." also developed as one of our major aims."
9. The defendant is, therefore, prima facie, guilty of dishonestly copying the plaintiffs' registered trade mark and seeking consciously to mislead the public into mistaking the defendant's mark for the plaintiffs or at the very least, believing an association between the two marks. In either case, a prima face case of infringement within the meaning of Section 29(2)(b) of the Trade Marks Act, as well as passing off, by the defendant, of its services as those of the plaintiffs is made out.
10. In such a case, an injunction has necessarily to follow.
11. Given the fact that the plaintiffs and the defendant are both CS(COMM) 869/2023 Page 6 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57 rendering diagnostic services, which deal with public health and involved an element of public interest, the plaintiffs would be entitled to ad interim relief, filing, by the defendant, a response to this application.
12. Let the plaint be registered as a suit. Issue summons in the suit. Summons are accepted on behalf of the defendant by Mr. Arnav Goyal.
13. Written statement, accompanied by affidavit of admission and denial of the documents filed by the plaintiffs be filed within 30 days with advance copy to learned Counsel for the plaintiffs who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendant within 30 days thereof.
14. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 13 February 2024, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
I.A. 24216/2023 (Order XXXIX Rules 1 and 2 of the CPC)
15. This is an application by the plaintiffs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs.
16. As the facts of the present case disclose that the defendant is CS(COMM) 869/2023 Page 7 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57 facie case guilty both of infringement and passing off and the case also indicates, prima facie, dishonest adoption, by the defendant, of its mark as one which is deceptively similar to that of the plaintiffs to the extent that the defendant has also incorporated, of its website, textual material which is identical to that use by the plaintiffs, the plaintiffs are clearly entitled to an ad interim injunction.
17. As such, issue notice of this application to the defendant, returnable before the Court on 12 March 2024.
18. Notice is accepted on behalf of the defendant by Mr. Arnav Goyal.
19. Reply be filed within a period of four weeks with advance copy to learned Counsel for the plaintiffs, who may file rejoinder thereto, if any, within a period of four weeks thereof.
20. Till the next date of hearing, the defendant as well as all other acting on its behalf shall stand restrained from using the impugned mark or the letters H.O.P. or House of Pathology as a trade mark, in any manner whatsoever. However, the Court is not, for the present, injuncting the defendant from using House of Pathology as part of its corporate name, subject to the defendant not using "House of Pathology", in any way as describing the services which it renders or in connection with the diagnostic services provided by it in any manner whatsoever, including use on letterheads, invoices, banners, stickers, marketing material, brochures and the like.
CS(COMM) 869/2023 Page 8 of 10This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57
21. Given the nature of the defendant's activities, however, the defendant is granted ten days time to comply with the above ad interim order of injunction.
I.A. 24217/2023 (Section 12A of the Commercial Courts Act, 2015)
22. This is an application for exemption from the requirement of the pre-institution mediation. Inasmuch the defendant is prima facie guilty of dishonestly adopting the plaintiffs' mark and both the marks are used in the context of diagnostic services, I am of the opinion that pre-institution mediation would not have served any purpose. Accordingly, exemption from the requirement of pre-institution mediation is granted.
23. The application stands allowed.
I.A. 24218/2023 (Order XI Rule 1(4) of the CPC)
24. Subject to the plaintiffs filing legible copies of any dim or illegible documents within 30 days, exemption is granted for the present.
25. The application is disposed of.
I.A. 24219/2023 (Order XI Rule 4 of the CPC) CS(COMM) 869/2023 Page 9 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57
26. This application seeks permission to file additional documents. The plaintiffs are permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the CPC as amended by the Commercial Courts Act within four weeks from today.
27. The application stand disposed of accordingly.
I.A. 24220/2023 (Exemption)
28. Subject to the plaintiffs filing translated copies of documents within 30 days, exemption is granted for the present.
29. The application is disposed of.
I.A. 24221/2023 (For urgent listing)
30. This application has been rendered infructuous and is disposed of.
I.A. 24222/2023 (Exemption from advance service)
31. As the defendants stands served and represented by Mr. Arnav Goyal, no orders are required to be passed in this application, which is disposed of accordingly.
C.HARI SHANKAR, J DECEMBER 12, 2023/rb Click here to check corrigendum, if any CS(COMM) 869/2023 Page 10 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2023 at 22:09:57