Karnataka High Court
Rainbow Childrens Medicare Limited vs Rainbow Health Care on 23 April, 2025
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COMAP No.286 of 2024
c/w COMAP No.287 of 2024
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 23RD DAY OF APRIL, 2025
PRESENT
THE HON'BLE MR JUSTICE V KAMESWAR RAO
AND
THE HON'BLE MR JUSTICE T.M.NADAF
COMAP NO. 286 OF 2024
c/w
COMAP NO. 287 OF 2024
BETWEEN:
RAINBOW CHILDREN'S MEDICARE LIMITED,
A COMPANY REGISTERED UNDER
THE COMPANIES ACT 1956,
HAVING ITS REGISTERED OFFICE AT:
NO.8-2-120/1031, SURVEY NO.403,
ROAD NO.2, BANJARA HILLS,
HYDERABAD - 500034.
ALSO AT:
RAINBOW CHILDREN'S HOSPITAL
AND BIRTH RIGHT BY RAINBOW,
SURVEY NO.8/5, MARATHAHALLI,
K R PURAM, OUTER RING ROAD,
DODDANEKUNDI, MARATHAHALLI,
BENGALURU - 560037.
THROUGH ITS AUTHORIZED REPRESENTATIVE
MR RATHEEF K M,
GENERAL MANAGER.
...APPELLANT
[COMMON IN BOTH THE APPEALS]
(BY SRI. PRADEEP NAYAK, ADVOCATE)
AND
1. RAINBOW HEALTH CARE,
NO B-1, 85, FIRST FLOOR,
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COMAP No.286 of 2024
c/w COMAP No.287 of 2024
YELAHANKA NEW TOWN,
S F S COLONY, NEAR DIARY CIRCLE,
BENGALURU - 560064.
REPRESENTED BY ITS PROPRIETOR
DR. VYSHAK A P.
2. DR. VYSHAK A P,
PROPRIETOR OF RAINBOW HEALTH CARE,
NO.B-1, 85, FIRST FLOOR,
YELAHANKA NEW TOWN,
S F S COLONY, NEAR DIARY CIRCLE,
BENGALURU - 560064.
...RESPONDENTS
[COMMON IN BOTH THE APPEALS]
(BY SRI. SIVARAMAN VAIDYANATHAN, ADVOCATE)
COMAP NO.286/2024 IS FILED UNDER SECTION 13 (1A)
OF THE COMMERCIAL COURTS ACT, 2015 READ WITH ORDER
XLIII RULE 1 (R) OF THE CODE OF CIVIL PROCEDURE, 1908
PRAYING THAT TO SET ASIDE THE ORDER DATED 18 JUNE 2024
PASSED IN IA NO. III IN COM. O.S. NO. 538/2023, BY THE LD.
LXXXII ADDITIONAL CITY CIVIL AND SESSIONS JUDGE, AT
BENGALURU (COMMERCIAL COURT) (CCH-83) PRODUCED AT
ANNEXURE A, ETC.
COMAP NO.287/2024 IS FILED UNDER SECTION 13 (1A)
OF THE COMMERCIAL COURTS ACT, 2015 READ WITH ORDER
XLIII RULE 1 (R) OF THE CODE OF CIVIL PROCEDURE, 1908
PRAYING THAT TO SET ASIDE THE ORDER DATED 18 JUNE 2024
PASSED IN IA NO. II IN COM. O.S. NO. 538/2023, BY THE LD.
LXXXII ADDITIONAL CITY CIVIL AND SESSIONS JUDGE, AT
BENGALURU (COMMERCIAL COURT) (CCH-83) PRODUCED AT
ANNEXURE A, ETC.
THESE APPEALS HAVING BEEN HEARD AND RESERVED
FOR JUDGMENT ON 18.02.2025, COMING ON FOR
'PRONOUNCEMENT OF JUDGMENT' THIS DAY, V KAMESWAR
RAO J., DELIVERED THE FOLLOWING:
CORAM: THE HON'BLE MR JUSTICE V KAMESWAR RAO
AND
HON'BLE MR JUSTICE T.M.NADAF
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COMAP No.286 of 2024
c/w COMAP No.287 of 2024
CAV JUDGMENT
(PER: THE HON'BLE MR JUSTICE V KAMESWAR RAO) These appeals arise from the orders dated 18.06.2024 passed by the LXXXII Addl. City Civil and Sessions Judge, Bengaluru (CCH-83) ('Trial Court' for short) on IAs No.II and III in Com.OS No.538/2023, by which order the Trial Court has dismissed the IAs filed by the appellant herein under Order XXXIX Rules 1 and 2 read with Section 151 of CPC and vacated the ad-interim injunction orders dated 20.04.2023 on the above IAs. The said applications were filed by the appellant herein for the following reliefs:
IA No.II in Com.OS No.538/2023:
"For the reasons stated in the accompany affidavit, the Plaintiff most respectfully prays that this Hon'ble Court may he pleased to grant an interim order of temporary injunction restraining the Defendants, their affiliated companies/entities, firms, representatives, partners, employees, servants, agents, successors, assignees, any person/s acting or claiming under them in whatsoever capacity, from advertising and carrying on the business/ rendering services under the mark/name/ "Rainbow Health -4- COMAP No.286 of 2024 c/w COMAP No.287 of 2024 Care" or with any other deceptively similar mark or name of business concern name and gel-up which are both visually and phonetically deceptively similar to or in any manner whatsoever amounting to infringement of the Plaintiff's registered trademarks bearing numbers 1329767 in class 42, 1668727 in class 42, 1940198 in class 44, 2093878 in class 44, 2446921 in class 44, 2446922 in class 44, 2853577 in class 44, 2853578 in class 44, 2853579 in class 44, 2853580 in class 44, 2853581 in class 44, 2883140 in class 44, 3413835 in class 44, 3413836 in class 44, 3852519 in class 44, 3852520 in class 44, 3852522 in class 44 and 3852523 in class 44.
Wherefore in light of the urgency pleaded it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order in terms of the prayer above, prior to issue of notice to the Defendants."
IA No.III in Com.OS No.538/2023:
"For the reasons stated in the accompany affidavit, the Plaintiff most respectfully prays that this Hon'ble Court may be pleased to grant an interim order of temporary injunction restraining the Defendants, their affiliated companies/entities, firms, representatives, partners, employees, servants, agents, successors, assignees, any person/s acting or claiming under them in whatsoever capacity, from -5- COMAP No.286 of 2024 c/w COMAP No.287 of 2024 advertising and carrying on the business/ rendering services under the mark/name/ "Rainbow Health Care" or with any other deceptively similar mark or name of business concern name and get-up which are both visually and phonetically deceptively similar to or in any manner whatsoever amounting to passing off of its services as those of the Plaintiff's services under the Plaintiff's registered trademarks bearing numbers 1329767 in class 42, 1668727 in class 42, 1940198 in class 44, 2093878 in class 44, 2446921 in class 44, 2446922 in class 44, 2853577 in class 44, 2853578 in class 44, 2853579 in class 44, 2853580 in class 44, 2853581 in class 44, 2883140 in class 44, 3413835 in class 44, 3413836 in class 44, 3852519 in class 44, 3852520 in class 44, 3852522 in class 44 and 3852523 in class 44.
Wherefore in light of the urgency pleaded it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order in terms of the prayer above, prior to issue of notice to the Defendants."
2. The facts to be noted are, it was the case of the appellant herein that it was incorporated in the year 1998 in Hyderabad. It is a leading chain of paediatric multi-speciality, obstetrics and gynaecology hospitals in -6- COMAP No.286 of 2024 c/w COMAP No.287 of 2024 India and is known for providing world-class super speciality medical/healthcare services for children and fertility under the name/trading style of 'Rainbow Children's Hospital' and for women care under the name/trading style 'Birth Right'. The appellant was one of the first corporate entities to establish a children's hospital under the name 'Rainbow Children's Hospital' in the year 1999 in India. With over 23 years of excellence, the appellant has set a benchmark in neonatal and paediatric intensive care and holds one of the most successful records/rates regarding pre-term births. It has established hospitals in several cities such as Hyderabad, Vijayawada, Vishakhapatnam, Bengaluru, Chennai and New Delhi. It maintains a website 'https://www.rainbowhospitals.in'. It initially commenced its business operations as a paediatric speciality hospital with a total capacity of 50 beds in Hyderabad in the year 1999. Thereafter, in the course of creating a strong clinical expertise, the appellant subsequently expanded its operations to multi-speciality, obstetrics and gynaecology. As of today, the appellant operates 16 hospitals and 3 -7- COMAP No.286 of 2024 c/w COMAP No.287 of 2024 clinics in 6 cities across India with a total bed capacity of 1600 plus beds and more than 650 doctors. The appellant is a public listed company whose shares are traded on the National Stock Exchange (NSE) and Bombay Stock Exchange (BSE). Subsequent to the IPO, the equity shares of the appellant were listed on NSE and BSE on 10.05.2022. It established 3 paediatric multi-speciality and super-speciality hospitals situated at Hebbal, Bannerghatta Road and Marathahalli in Bengaluru with two hospitals having been accredited by the National Accreditation Board for Hospitals and Healthcare Providers. The appellant first conceived of and adopted its proprietary and registered trademark/tradename 'Rainbow' in the year 1998. It is the case that, was the first honest, bonafide, prior adopter and user of the trademark/tradename 'Rainbow' in relation to medical/healthcare services in India more than 23 years ago. The trademark/tradename 'Rainbow' since its adoption in the year 1998, has been used continuously, extensively and without interruption by the appellant in India in relation to the various medical/healthcare services -8- COMAP No.286 of 2024 c/w COMAP No.287 of 2024 offered by the appellant. It is the case of the appellant that over a period of more than two decades, the appellant's proprietary and registered trademark/ wordmark/tradename 'Rainbow' has, on account of the outstanding services rendered by the appellant and the appellant's Pan-India presence, became well entrenched in the minds of consumers and general public as being associated solely with the appellant and is synonymous with the exemplary and reliable quality services of the appellant associated with the paediatric, obstetrics and gynaecology hospital chain in India. Having created a vast market, in order to protect its intellectual property including its trademark/tradename, the appellant got registered the trademark 'Rainbow' and other 18 registrations. The registered trademark under 'Rainbow' is valid and subsisting registration in favour of the appellant and as such, the appellant is entitled to all statutory rights, protections and remedies as available under the Trademarks Act, 1999 ('the Act' for short). The appellant has successfully obtained ad-interim injunctions from -9- COMAP No.286 of 2024 c/w COMAP No.287 of 2024 various Courts against the infringing third parties who have unscrupulously copied the appellant's trademark.
3. It was during the routine checks, it came across the 1st respondent's listing under the title 'Rainbow Health Care' with the logo on various websites such as www.justdial.com, www.practo.com and www.timesmed.com. It was also noted that the respondents are also advertising their services under the infringing mark on its website https://www.rainbowhealthcareblr.in. Respondent No.1 has listed their services under Rainbow Healthcare with trademark on Google. The appellant immediately issued a cease-and-desist notice dated 28.11.2022 informing that the appellant is the prior registered user of the trademarks 'Rainbow' and called upon the respondents to immediately cease-and-desist from using the infringing marks. It is the case of the appellant, pursuant to receipt of the cease-and- desist notice, while the respondents recognized the appellant's right over the mark 'Rainbow' and offered to enter into a co-existence agreement with the appellant, the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 respondents also raised unsubstantiated contentions vide reply dated 10.12.2022. It is the case of the appellant that in the reply dated 10.12.2022, the respondents took various frivolous pleas including that the respondent No.1 is the prior user of the mark 'Rainbow' since 2013, despite being fully aware that the appellant has been using the said mark since 1998. The appellant in response to the reply dated 10.12.2022, sent a response dated 27.12.2022, reiterating its stand that it is the prior user of the mark 'Rainbow' and called upon the respondents to comply with the requirements of the cease-and-desist notice dated 28.11.2022. However, instead of complying with the directions of the appellant, the respondents once again issued an untenable reply dated 02.01.2023. It is the case of the appellant that, the respondents, in blatant violation of the appellant's registered trademark, continued to illegally use the infringing mark till today. The respondents have adopted an identical and deceptively similar trademark to that of the appellant and are also providing identical services as that of the appellant i.e., healthcare
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 services for paediatrics. It was in the aforesaid background the suit Com.OS No.538/2023 has been filed by the appellant. It was the case of the appellant that, the respondents' illegal and infringing activities, especially use of impugned marks for identical services, amounts to a direct violation of the exclusive statutory rights granted under Sections 28(1) and 29(1) of the Act. According to the appellant, the respondents providing identical services as that of the appellants having registered trademark 'Rainbow', there is every likelihood of confusion that is bound to occur in the mind of consumers to contact the respondents and seek services from any part of the country. The current and potential damage to appellant increases manifold since the respondents are conducting their business for identical services under the impugned trademarks. The respondents' use of the impugned marks is illegal and the same will dilute appellant's trademark. It was their case that the appellant has made out a strong prima facie case for grant of reliefs claimed, including
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 reliefs in the nature of injunctive reliefs, which earlier was granted, but later on vacated.
4. Respondent No.1 had filed statement of objections before the Trial Court stating that, since respondent No.1 is a proprietary firm, does not have any separate existence in law and respondent No.2-the proprietor and respondent No.1-the firm are one and the same. It was stated that, the suit and interim applications filed by the appellant are liable to be rejected as the same is not maintainable in view of non-compliance of mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. That apart, it was stated, the appellant has deliberately concealed and suppressed material facts regarding their date of knowledge of the respondent No.1 and their subsequent actions and also the action of the respondents No.1 and 2. The appellant had concealed the material fact that they have been aware of respondents' use of the name 'Rainbow Health Care' right from the year 2015 when the appellant first entered Bengaluru. The foregoing is evident for the fact that the appellant has
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 produced printouts from websites www.justdial.com, www.practo.com and www.timesmed.com, wherein Rainbow Healthcare i.e., the respondent No.1 has been receiving reviews from the past more than 8 years i.e., since 2015. According to the respondents, the documents conclusively prove that the averments in paragraph No.64 of the plaint are patently false. It is the case of the respondents that they have been using the name Rainbow Healthcare since 2015, whereas the first legal notice got issued by the appellant to respondents No.1 and 2 was only on 29.11.2021. It was further contented that, the sole proprietor of respondent No.1 in or about May 2013, decided to start his own independent practice as a medical doctor. After much deliberation, he chose the name 'Rainbow Healthcare' since his speciality was in paediatrics and connected fields of obstetrics and gynaecology and since children are known to have a fascination with rainbows and even he was fascinated by rainbows in his childhood. At the time of choosing the name Rainbow Healthcare in May 2013, he was not aware that the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 appellant was allegedly running any hospital in Hyderabad. The name Rainbow Healthcare was chosen, adopted and put into use in a completely honest, open, bonafide and legitimate manner by him. The name Rainbow Healthcare is in use from July 2013 in the address stated in the cause- title and they have been continuously trading under the name Rainbow Healthcare ever since until receipt of the order of ex-parte ad-interim injunction granted by the Trial Court. So, in other words, it is the case of the respondents that they have been using the name Rainbow Healthcare for almost 10 years prior to the institution of the suit in the Trial Court. The SembRamky Service Certificate for Bio- medical Waste Management is granted in the name of Rainbow Healthcare by SembRamky Environmental Management Private Limited on 10.06.2013. The authorization granted by the Karnataka State Pollution Control Board is in the name of Rainbow Healthcare on 05.07.2013. The trade licence certificate issued by the Health Department of the BBMP is granted in the name of Rainbow Healthcare on 03.09.2013, which includes the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 renewal upto 31.03.2014. According to the respondents, the latest renewal proves the renewals for the earlier years since renewal is granted only if the registration continues to be in force. The certificate of registration issued by the Karnataka Private Medical Establishment Authority, Bengaluru Urban District is in the name of Rainbow Healthcare dated 03.07.2014 with a validity until 02.07.2019. The certificate of registration issued by the Karnataka Private Medical Establishment Authority, Bengaluru Urban District is in the name of Rainbow Healthcare dated 14.05.2019 with validity until 13.05.2024. A reference is also made to the income tax returns filed in the name of Rainbow Healthcare. In other words, it is the case of the respondents that they have been providing healthcare services since July 2013 under the name and style of Rainbow Healthcare in Benglauru. Further, it was stated that, the respondents have been receiving glowing reviews on various online platforms and the service provided by the respondents are both trusted and recommended. It is also stated that, the appellant was
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 aware of the existence, tradename, constitution and services provided by the respondents from the year 2015. The appellant had silently sat by and watched the respondents using the name Rainbow Healthcare since 2015 and suddenly pounced on the respondents only in the year 2023 after suppressing earlier legal notices and after waiting for the expiry of the caveat petition and by making false claims regarding their first knowledge of the respondents.
5. The Trial Court had framed the following points for its consideration:
(1) Whether the plaintiff proves the prima facie case ?
(2) Whether plaintiff proves that the balance of convenience lies in favor of the plaintiff company ?
(3) Whether plaintiff proves that if the TI is not granted the plaintiff company would suffer from irreparable loss ?
(4) Whether the Plaintiff entitled for relief of temporary injunction as prayed for ?
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COMAP No.286 of 2024c/w COMAP No.287 of 2024
6. On points No.1 to 4, while vacating the ad-interim order vide the impugned order(s), the Trial Court has in paragraphs No.31 to 43, held as under:
"31. Whether the Plaintiffs trademark is infringed by the Defendant who have not registered likely to cause confusion on the part the public, or which is likely to have an association with the registered mark. As already pointed out, the learned counsel for the Plaintiff produce the document to shows that the registered trade name of the Plaintiff in the year 1998. The Trademark/trade name "RAINBOW" since its adoption in the year 1998, has been used continuously, extensively and without interruption by the Plaintiff in the India in relation to the various medical/healthcare services offered by the Plaintiff. Having create a vast market for itself and being well-aware of its increasing recognition and popularity in the medical/healthcare field, the Plaintiff has been diligently protecting its intellectual property, including its registered trademarks in India. Over the past several years, the Plaintiff has extensively used and registered various trademarks/formative marks, thereby establishing immense goodwill over and around the trademark "RAINBOW" and other rainbow formative marks, in the healthcare sector in India. Over the past several years, the Plaintiff has registered the trademark "RAINBOW", RAINBOW HOSPITALS", "RAINBOW
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HOSPITAL FOR WOMEN AND CHILDREN", other Rainbow formative marks under classes 42 and 44, with the earliest registration having been obtained in India in the year 2006.
32. The Plaintiff has had use of its RAINBOW formative trademark across India and its Registrations thereof without any limitation to territory. Therefore, the reputation, goodwill associated, and the statutory protection granted to the trademarks are across India without any limitation to a particular geography. On account of the high-quality healthcare services provided by the Plaintiff for children and women through its chain of hospitals over the years, the Plaintiff has been bestowed with various accolades/awards for its efforts and the excellence of medical/healthcare services provided by it. Its brand name has developed an extremely strong and conspicuous social media following various social media platforms such as Instagram and Facebook. The Plaintiff's proprietary and registered "RAINBOW" trademarks have also been extensively displayed on its official website at https://www.rainbowhospitals.in. The Plaintiff in order to provide customized healthcare services via digitization of the whole hospital experience, has also introduced the "Rainbow Children's Hospital" and "Birth Right" mobile applications which has been one of the core aspects of the digital strategy adopted by the Plaintiff.
- 19 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
33. The Plaintiff contention that, while carrying out routine checks it came across the Defendant No.1's listing under the title "Rainbow Healthcare"
with the logo ("Infringement Mark") on various websites such as www.justdial.com, www.practp.com and www.timesmed.com, carrying on its operations at the address mentioned in the cause title. Further, the Defendants are also advertising their services under the infringing mark on its website https:///www.rainbowhealthcareblr.in. The Plaintiff issued a Cease-and-Desist notice dated 28.11.2022, informing the Defendants that the Plaintiff is the prior registered user of the trademark "RAINBOW" and called upon the Defendants to immediately cease and desist from using the infringing marks.
34. From the averments, prima-facie that the Defendants commenced their hospital service from the year 2013 in the address shown in the cause title. But, the Plaintiff has established the first, honest, bonafide, prior adopter and user of the trademark/ tradename "RAINBOW" in relation to medical/healthcare services in India more than 2 decades. The Trademark/Trade name "RAINBOW" since its adoption in the year 1998. The Plaintiff has running a various hospital in the name of RAINBOW in different cities in India. Hence, i hold that the Plaintiff has establish the prima-facie in its favour.
35. Coming to the balance of convenience, the Court must compare the amount of mischief done or
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 threatened to the plaintiff and must weigh the same against inflicted by the injunction upon the defendant and see that the comparative mischief or inconvenience which is likely to arise from withholding the injunction will be greater than that which is likely to arise from granting it. As seen from the averments in the plaint, it is clear that the rainbow hospital stated a business in Hyderabad in the year 1998. But, they have started the business in Bengaluru in the year 2015. From the document placed before this court it is clearly shows that the Defendant was running business by valid license from BBMP in the trade name "RAINBOW Healthcare"
in the year 2013. The Plaintiff has taken care of existence of the Defendant hospital only after 10 years the trade name of Rainbow Healthcare and the Plaintiff has issued Cease and Desist Notice.
36. In this regard the Defendant has relied upon a decision reported in MANU/DE/9767/2003, Intel Corporation vs. Anil Hada and Others, wherein Hon'ble High court of Delhi held that Defendant of Suit No. 933/2002, Intel Travels Limited was incorporated on 18th June, 1986 evidenced by the certificate of incorporation issued by the Registrar of Companies. It has placed on record advertisements issued by it in the Hindustan Times on 22.6.1989, 3.7.1989, 17.7.1989, 8.11.1989 and thereafter each year till the year 1995 to show that it had been widely advertising itself as a leading
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 travel agent Various letters from the Airlines have been filed showing appreciation of the work of said defendant. Brochures have been relied upon as also magazines which show that the said defendant has acquired considerable reputation in the field of tourism and travels.
40. Said defendant has, prima facie, given good justification as to how it coined the word 'INTEL' to be used as part of its corporate name.
41. Qua said defendant, prima facie, it cannot be said that it has deceptively and surreptitiously adopted the word 'INTEL' to cheat the plaintiff.
42. Relevant for both defendants is to note that when said defendants use the word 'INTEL' as a part of their corporate name, even as per case pleaded by the plaintiff, its presence in India was in the ambrionic stage. At the moment, there is no prima facie evidence to show dishonest adoption by the 2 defendants.
43. Issue needs a trial.
44. Similar is the position of the defendant of Suit No. 209/2004. Said defendant was incorporated on 14th August, 1986 evidenced by the certificate of registration issued by the Registrar of companies. Sales tax, assessment orders and income tax returns show consistent business by the said defendant.
45. Said defendant has additionally given goods reasons as to how the word 'INTEL' was coined not only by said
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 defendant but even by others who were in the business of electronics especially international communication through the medium of electronics.
46. At this stage it cannot be said with certainty that the said defendant dishonestly adopted the word 'INTEL' as a part of its corporate name.
47. I may additionally note when said defendant was incorporated, as in the case of the other defendant, presence of the plaintiff in India was at the ambrionic stage.
48. As observed in the report published as Transmission Corporation of A.P. Ltd. v. Lanco Kondapalli Power Ltd. interim directions ordinarily precede findings of a prima facie case. When existence of a prima facie case is established, the court has to consider other relevant factors, namely, balance of convenience and irreparable injury. While considering the latter, conduct of the parties becomes relevant. If a party has been acting in a particular manner for a long time and has allowed the other to do likewise, the same would have to be weighed.
49. Noting the documents relied upon by the defendants, authenticity whereof, cannot be doubted for the reason they emanate from independent sources, it cannot be ruled out at this stage that delay in bringing action attracts acquiescence on the part of the plaintiff.
50. The telephone directory of the City of Delhi shows as many as 9 corporate
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 entities using the word 'INTEL' as a part of their corporate name.
51. Balancing the claim of the plaintiff and that of the defendants, I am of the opinion that balance of convenience and irreparable injuries leans in favor of the defendants and against the plaintiff for the reason against one defendant action has been brought after 16 years of commencement of business and against the other after nearly 15 years.
37. The learned counsel for the Defendant argued that the suppression, false statements and mis-representation amounts to unclear hands. In this regard he relied upon a decision reported in 1995 (5) SCC 545 Gujarat Bottling Co. Limited and Others vs. Coca Cola Company and Others, wherein Hon'ble Supreme court held that "The grant of an interlocutory injunction during the perdency of legal proceedings is a matter requiring the exercise of discretion of the court. While exercising the descretion the court. While exercising the discretion the court applies the following tests - (i) whether the plaintiff has a prima facie case; (ii) whether the balance of convenience is in favour of the plaintiff; and (iii) whether the plaintiff would suffer an irreparable injury if his prayer for interlocutory injuction is disallowed. The decision whether or not to grant an onterlocutory injuction has to be taken at a time when the existence of the leagal right assailed by the plaintiff and its alleged
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 violation are both contested and uncertain and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. Relief by way of interlocutory injuction is granted to mitigate the risk of injustice to the plaintiff during the period before that uncertainty could be resolved. The object of the interlocutory injuction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection has, however, to be weghed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercisising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies.
[see:Wander Ltd.& Anr. v,. Antox India P. Ltd., 1990 (suoo) Scc 727 at pp. 731- 32]. In order to protect the defendant whiloe granting an interlocutory injunction in his favour the Court can require the plaintiff to furnish an undertaking so that the defendant can be adequately compensated if the uncertainty were resolved in his favour at the trial."
38. In the present case though the Plaintiff is a prior user of the trademark RAINBOW. But in Bengaluru city the Defendant is running a hospital in the name of Rainbow Healthcare in Bengaluru since
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 2013. The Plaintiff established the hospital and Bengaluru city in the year 2015. The Plaintiff has been brought the legal action against the Defendant after 10 years of the commencement of business. Further, the Defendant has categorically stated that he chose the name of Rainbow healthcare since his specialty in pediatrics and connected the fields of obstetrics and gynecology and since the children are known to fascination with rainbow even he has fascinated by rainbows in their childhood so he decided run the hospital in the name of Rainbow healthcare in the year 2013. SO, at this movement there is no primafacie evidence to shows dishonest adaption by the Defendant. Further, this issued needs trial. Hence, the balance of convenience lies in favour of the Defendant.
39. Irreparable injury, the injury must be material and substantial one and not adequately reparable in damages. It cannot be measured by any known pecuniary standard. One of the basic principles on which injunction should be issued is that plaintiff must show that an injunction is necessary to protect him from irreparable injury and that mere inconvenience is not enough.
40. The learned counsel for the Defendant argued that the long user by the Defendant is a relevant factor in deciding whether to grant or refuse interim injunction. In this regard he relied upon a decision reported in ILR 2007 Karnataka 3346
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 McDonald's Corporation and another vs. Sterling's Mac Fast Food, wherein the Hon'ble Supreme Court held that " The question of volume of use is always a relevant question in considering 'honest concurrent use' under Section 10 (2) of the Act. It depends on the facts of each case. There is no express statutory emphasis that the use should be large and substantial, Kerly at page 235 of the 7th edition on Trade Marks quotes Re: Lyle and kinahan ltd's application (1970) 24 RPC 249 and other cases for the proposition that it is not necessary for the applicant's trade to be larger than that of the opponent. My own opinion is that the use has to be a business use. It has to be a commercial use. It certainly will not to if there is only a stray use.
Even so, if there is honest concurrent use I should thing the small trader is entitled to protection of his trade mark. Trade markis a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value. Not merely the interest of the public but also the interest of the owner are subject and concern of trade marks legislation.
41. It is also pertinent to note that the admitted position is, plaintiffs grievance is only against using the work MAC by the Defendant. But, it is admitted by the Plaintiffs that most of the trade marks were registered during the pendency of the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 suit and the trade marks are used in India since October 1996, as is evident from paragraph 7 of memorandum of appeal. This bieng the admitted facts, plaintiffs cannot claim exclusive right on the defendants trade mark. Since defendant has been using its trade mark since 1983, plaintiffs cannot have any grievance against it. The suit filed by the plaintiffs is imaginary and vexatious. The trial court is justified in dismissing the suit with costs.
42. In the present case the plaintiff is carrying on business under the name and style of 'Rainbow Children's Medicare Limited' and ordinary prudent man would ordinarily call the same as 'RAINBOW' hospital. Similarly the defendants are carrying the hospital under the name and style of 'Rainbow Healthcare Hospital.', there is a likelihood of patients may be under the impression that both hospitals are under the one management, that possibility cannot be ruled out. But in this case, the Defendant commenced in his business in Bengaluru prior to commencement of business by the Plaintiff in Bengaluru. It is also admitted fact that from 2013 the Defendant has laying a business in the name of Rainbow Healthcare Hospital. The Plaintiff has commenced his business in Bengaluru in the year 2015. Till issuing the cease-and desist notice, the Plaintiff has not made any effort to search the hospital of the Defendant. It is also admitted fact that the Defendant is running a business from more
- 28 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 than 10 years. These aspects have been considered only by the full fledged trial. Therefore, irreparable injury would be caused to the Defendant if the Defendants are restrained the use the word RAINBOW. Since, 10 years the defendant No. 1 and 2 has running hospital the name and style of RAINBOW HEALTH CARE and already established a reputation in Bengaluru city with regard to medical service by using the word of RAINBOW. Therefore, the irreparable injury would be caused to the Defendants if the Defendants are not permitted to use the word RAINBOW.
43. Hence, I hold that the Plaintiff is failed made out a ground to grant the relief of equity in favour of the Plaintiff. Hence, this application is deserves to be dismissed. Hence, I answer Point No.1 in the Affirmative and Point No 2 and 3 are in the Negative.
44. Point No. 4: - In view of the discussion In point no.1 to 3 I hold that the plaintiff is not entitled for relief as prayed in the application. Therefore, I proceed to pass the following Order.
ORDER The I.A. No. III filed by the Plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151 of CPC, is hereby Dismissed.
The Ad-Interim Injunction order
20.04.2023 hereby vacated."
- 29 -
COMAP No.286 of 2024
c/w COMAP No.287 of 2024
"xx xx xx xx xx
44. Point No. 4: - In view of the discussion In point no.1 to 3 I hold that the plaintiff is not entitled for relief as prayed in the application. Therefore, I proceed to pass the following Order.
ORDER The I.A. No. II filed by the Plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151 of CPC, is hereby Dismissed.
The Ad-Interim Injunction order
20.04.2023 hereby vacated."
Submissions:
7. The submission of learned counsel for the appellant before us is that, the impugned order(s) passed by the Trial Court is erroneous both on facts and in law. According to him, the Trial Court has not considered the following material facts which are evident from the impugned order:
(a) The Trial Court has found the appellant has established prima facie case and despite the same, has dismissed IAs No.II and III seeking temporary injunction.
(b) The Trial Court has misapplied the law and found that there is no evidence of dishonest adoption of the appellant's registered trademarks since, (i) the
- 30 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
appellant has set up its first hospital in Bengaluru two years after the respondents and (ii) the respondents stated that they chose the name 'Rainbow Healthcare' since they provide paediatric, obstetric and gynaecological services and children are fascinated by rainbows.
(c) The Trial Court has failed to consider the appellant is the prior user of the registered trademark and has been using the mark 'Rainbow' right since 1999 for over two decades. The appellant has hospitals across the country as well as, has a significant online presence and it is a settled law that when a trademark is registered, it is accorded protection across the country and not to a specialized location.
(d) The very fact that the respondents failed to conduct a basic search for existing registered trademarks similar to 'Rainbow Healthcare' shows that their adoption was dishonest.
(e) The usage of 'Rainbow' for medical/healthcare services by the appellant was arbitrary as rainbows have no direct connection with healthcare services, as such the respondents' adoption of the same mark, 14 years after the appellant commenced its business, must be seen as dishonest prima facie.
- 31 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024
(f) The Trial Court has wrongly relied upon the fact that the suit was initiated 10 years after the respondents' business commenced to find that the balance of convenience and irreparable injury are in favour of the respondents. The law is well established that, delay in approaching the Court cannot be a ground to deny an interim injunction and when the adoption of the mark itself is dishonest, the adopter cannot be permitted to continue to use the mark.
(g) The Trial Court failed to appreciate that, the appellant has registered trademarks, whereas the respondents have not attempted to secure registration for their tradename 'Rainbow Healthcare'.
8. He also justifies the conclusion drawn by the Trial Court that the appellant has established a prima facie case of infringement in its favour. This according to him, the appellant has built its reputation and goodwill in the medical/healthcare service sector over a period of 25 years since it opened first children's hospital in 1999. The appellant has expanded its operations to include 16 hospitals and 3 clinics across India. The appellant has also invested significantly in advertising and maintains a wide- reaching online presence, through its social media accounts
- 32 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 and website. As a result of the appellant's efforts, the appellant's registered trademarks have become associated solely with the appellant in the medical/healthcare industry. In effect, it is his submission that the appellant is the prior user of the appellant's registered trademarks since it has been using the mark 'Rainbow' since 1999 and obtained registration of the wordmark as early as 2005. Despite that, the respondents have dishonestly adopted the infringing trademark. According to him, the respondents' unauthorized use of the infringing mark is resulting in dilution and tarnishment of the appellant's registered trademarks which are exclusively associated with the appellant. The respondents are causing harm to the appellant's reputation, making illegal profits by capitalizing on the goodwill of the appellant by providing paediatric, obstetrics and gynaecology services. Therefore, the services of the appellant and respondents being identical, the same would be availed of by the same class of consumers i.e., women and children in need of specialized healthcare. According to him, the appellant's registered
- 33 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 trademarks are inherently distinctive and have come to be exclusively associated with the appellant with respect to medical/healthcare services. He reiterated the stand taken by the appellant that it has 16 hospitals and 3 clinics across the country and a significant online presence, through its social media accounts and websites. According to him, the Trial Court has wrongly placed reliance upon the fact that the appellant's first Benglauru Hospital opened in 2015. In fact, it is his submission that, the Trial Court itself has found that the appellant is the prior user of the mark 'Rainbow' with respect to healthcare services. Hence, in the facts of this case, the appellant is entitled to the injunction as sought by him, otherwise huge prejudice would be caused to the appellant, wherein the appellant being the prior user and registered trademark(s) is being used by the respondent intentionally, dishonestly and knowing well that the appellant has the registration and the name 'Rainbow' is established with the hospitals run by the appellant. That apart, it is his submission that, the appellant has not acquiesced to the respondents' infringing
- 34 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 mark. In fact, the appellant issued legal notices to the respondents immediately upon becoming aware of the respondents' clinic and its usage of the infringing mark. The respondents have failed to produce any material to show that the appellant was aware of the infringing mark right from 2015. The fact that there are reviews from 2015 on the websites where the respondents have listed their services is irrelevant as it does not establish that the appellant had seen said reviews in 2015. According to him, the appellant is vigilant about protecting the appellant's registered trademarks and has consistently taken action against third-party infringers. According to him, law is well established that acquiescence requires the appellant to encourage the respondent to continue with its business. However, in the instant case, the appellant did not have any knowledge of the respondents' business and hence, could not have acquiesced to the same. That apart, it is his submission that, any delay and laches cannot defeat an injunction as mere delay in bringing action is not sufficient to defeat grant of an injunction and an application for
- 35 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 interim injunction cannot be dismissed on the ground that the respondent is using the mark for an extended period. According to him, when the Trial Court itself found that there was a likelihood of confusion between the services of the respondents and those of the appellant, it erred in dismissing IAs No.II and III seeking an interim injunction. That apart, it is his submission that the Trial Court could not have dismissed the IAs while the respondents were acting in disobedience of the ex-parte order dated 20.04.2023. In support of his submissions, he has relied upon the following judgments:
(a) Judgments of the Supreme Court in the cases of:
i. Midas Hygiene Industries P. Ltd. and Anr. -Vs.- Sudhir Bhatia and Ors. [(2004) 3 SCC 90];
ii. Laxmikant V. Patel -Vs.- Chetanbhai Shah and Anr. [(2002) 3 SCC 65];
(b) Judgments of the Bombay High Court in the cases of:
- 36 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
i. Bal Pharma Ltd. -Vs.- Centaur Laboratories Pvt. Ltd. and Anr. [2001 SCC OnLine Bom 1176];
ii. Som Distilleries and Breweries Ltd.
-Vs.- Sab Miller India Ltd. [2013 SCC OnLine Bom 895];
iii. Mauj Mobile Private Limited -Vs.- Mohalla Tech Private Limited and Others [2023 SCC OnLine Bom 1094];
iv. Jagdish Gopal Kamath and Ors. -Vs.- Lime & Chilli Hospitality Services [2015 SCC OnLine Bom 531];
(c) Judgments of the Delhi High Court in the cases of:
i. M/s Hindustan Pencils Private Limited
-Vs.- M/s India Stationery Products Co. and Another [1989 SCC OnLine Del 34];
ii. Max Healthcare Institute Ltd. -Vs.- Sahrudya Health Care Pvt. Ltd. [2019 SCC OnLine Del 9036].
(d) Judgments of the Madras High Court in the cases of:
- 37 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
i. B. Kishore Jain -Vs.- Navaratna Khazana Jewellers [2007 SCC OnLine Mad 1646];
ii. Murigan IDLI Shep -Vs.- Murgun IDLI Shop [2011 SCC OnLine Mad 2947];
iii. SNJ Distilleries Ltd. and Anr. -Vs.- Imperial Spirits Private Ltd. [2010 SCC OnLine Mad 4022].
9. On the other hand, learned counsel for the respondents, apart from reiterating the stand taken by the respondents before the Trial Court which we have noted above, submits that the appellant has not approached the Court with clean hands. The appellant had made deliberate false statements and suppressed several material facts which completely disentitles them from any equitable relief of temporary injunction under Order XXXIX Rules 1 and 2, CPC. According to him, the appellant has suppressed the material fact that they have been aware of the respondents' use of the name Rainbow Healthcare right from the year 2015 since the appellant has produced printouts from www.justdial.com, www.practo.com and
- 38 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
www.timesmed.com which contain the reviews right from 2015. The appellant has falsely pleaded that they became aware of the respondents' use of the trademark/tradename only in November 2022 when in fact the appellant had issued a legal notice way back in November 2021. Despite knowing that the respondent No.1 is sole proprietor firm and that respondent No.2 is the proprietor, the appellant has fraudulently added defendants No.3 and 4 only to harass young female doctors and in order to arm twist the respondents No.1 and 2 in some sort of settlement.
10. It is his submission that, the respondents have been using the name Rainbow Healthcare in an honest and bonafide manner right from the year 2013 much before the appellant's entry in Bengaluru in the year 2015, which conclusively prove use of the name Rainbow Healthcare by the respondent since 2013 and the same is evident from the documents filed along with the plaint, which are all for the period after 2013 only. He stated that, the application for additional documents is still pending consideration before the Trial Court and in that sense, no document
- 39 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 having been filed to show any use of their alleged trademark prior to the respondent's use in the year 2013 and as such, the stand taken by the appellant cannot be believed with. That apart, it is his submission that, the appellant is guilty of acquiescence, delay and laches since the appellant was well aware of the respondents' right of the year 2013. He justifies the findings of the Trial Court to state, no interference is called for. In support of his submissions, he has relied upon the following judgments:
(a) Judgment of the Supreme Court in the cases of i. Wander Ltd. and Ors. -Vs.- Antox India P. Ltd. [1990 SCC OnLine SC 490];
ii. Assistant Collector of Central Excise, Chandan Nagar, West Bengal -Vs.- Dunlop India Ltd. and Ors. [(1985) 1 SCC 260];
iii. Best Sellers Retail (India) Pvt. Ltd. - Vs.- Aditya Birla Nuvo Ltd. and Ors. [(2012) 6 SCC 792];
iv. Corn Products Refining Co. -Vs.-
Shangrila Food Products Ltd. [1959 SCC OnLine SC 11];
- 40 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024
v. Mujeeb Modern Rice Mills -Vs.- P. Doraisamy Gounder (Dead) through LRs. [(2010) 15 SCC 459];
vi. S.P. Chengalvaraya Naidu -Vs.-
Jagannath [(1994) 1 SCC 1];
vii. Gujarat Bottling Co. Ltd. and Ors. -Vs.- Coca Cola Company and Ors. [(1995) 5 SCC 545];
viii. Revajeetu Builders and Developers - Vs.- Narayanaswamy and Sons and Ors.
[(2009) 10 SCC 84].
(b) Judgments of the Delhi High Court in the cases of Pragati Construction Consultants -Vs.- Union of India and Anr. [FAO(OS)(COMM) 70/2024 and CM APPL.21475/2024 and connected matter, decided on 07.02.2025];
(c) Judgment of this Court in Mallegowda -Vs.- Ningegowda and Others [MSA No.100/2011, decided on 31.10.2012];
Analysis:
11. Having heard the learned counsel for the parties and perused the record, the issue which arises for
- 41 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
consideration is primarily, whether the Trial Court was justified in vacating the interim order passed on 20.04.2023 and thereby dismissing IAs No.II and III filed by the appellant herein under Order XXXIX Rules 1 and 2 read with Section 151 of CPC?
12. The suit was filed for permanent injunction and damages. The case of the appellant is that, it is the prior adopter of the trademark "Rainbow" as 'Rainbow Children's Hospital' in the year 1998. In this regard, the reliance was placed on document No.1, which is the incorporation certificate, which is of the year 1998. It is also the case of the appellant that, it has its operations in several cities including Hyderabad, Vijayawada, Vishakhapatnam, Bengaluru, Chennai and New Delhi. Due to continuous use of the trademark 'Rainbow' and its variants for well over 26 years, nearly 7 branches of the hospitals including the one at Benglauru, it has received accreditation by the National Accreditation Board of Hospitals and Healthcare providers. It is the case of the appellant that, respondent No.1 is listing under the title 'Rainbow Health Care' with the logo
- 42 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 i.e., infringing mark on various websites such as www.justdial.com, www.practo.com and www.timesmed.com and carrying on its operations at the address mentioned in the cause-title. Respondent No.1 is also advertising its services under the infringing mark on its website https://www.rainbowhealthcareblr.in. It is also the case of the appellant that, it has registered the marks 'Rainbow' and its various variants in the following manner from 2005 till 2018 and as such, the usage/depiction of the infringing mark 'Rainbow Health Care' shall amount to infringement of the trademark of the appellant:
Sl. Trademark APP No. Date of Clas Status/ No. application s valid up to 1 RAINBOW 1329767 03.01.2005 42 Registered (word per se) and valid upto 03.01.2025 2 1668727 26.03.2008 42 Registered and valid upto
- 43 -
COMAP No.286 of 2024 c/w COMAP No.287 of 2024 3 RAINBOW 1940198 23.03.2010 44 Registered Hospital and valid (work mark) upto 4 Rainbow 2093878 03.02.2011 44 Registered Cradle (work and valid mark) upto 5 Rainbow 2446921 21.12.2012 44 Registered Cradle and valid upto 6 Rainbow 2446922 21.12.2012 Registered Hospital for and valid women and upto children 7 Birth Right 2853577 27.11.2014 44 Registered and valid upto 8 Rainbow 2853578 27.11.2014 44 Registered children's and valid Madicare upto Limited 9 Rainbow 2853579 27.11.2014 44 Registered children's and valid Madicare upto Limited 10 Rainbow 2853580 27.11.2014 44 Registered children's and valid Madicare upto Limited 11 Rainbow 2853581 27.11.2014 44 Registered children's and valid Madicare upto Limited 12 Rainbow 2883140 13.01.2015 44 Registered children's and valid Hospital upto 13 Rainbow 3413835 18.11.2016 44 Registered Children's and valid Hospital upto - 44 - COMAP No.286 of 2024 c/w COMAP No.287 of 2024 14 Rainbow 3413836 18.11.2016 44 Registered Children's and valid Medicare upto 15 Rainbow in 3852519 05.06.2018 44 Registered Telugu and valid upto 16 Rainbow in 3852520 05.06.2018 44 Registered Hindi and valid upto 17 Rainbow in 3852522 05.06.2018 44 Registered Kannada and valid upto 18 Rainbow in 3852523 05.06.2018 44 Registered Tamil and valid upto
Despite cease-and-desist notice dated 28.11.2022 that the appellant being the prior registered user of the word 'Rainbow' and called upon to cease and desist the using of infringing mark, the same has not been done, which has resulted in the filing of the suit before the Trial Court. It is stated that, the respondents are not only using the infringing mark in the similar class of service, but also in similar sub-class i.e., healthcare services for children and as such, it is likely to cause confusion amongst the consumers or lead them to believe that the respondents are associated with the appellant. It is also stated, in that
- 45 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
sense, there is an infringement of trademark which is in violation of Section 29 of the Act.
13. The case of the respondents is that, the cease-and-desist notice was issued by the appellant in the past, which notice was replied to on 20.12.2021, which aspect has not been referred to in the subsequent cease-and-desist notice dated 28.11.2022. It was also stated by respondent No.2 that, they are the prior user of the mark 'Rainbow' since 2013 in Bengaluru. The appellant despite being fully aware, had only approached the Court in the year 2023. The respondent No.1 had justified the usage of the name Rainbow Health Care, which is a proprietary firm of respondent No.2. By stating that, the proprietor's speciality is also in paediatrics and connected fields of obstetrics and gynaecology and since children are known to have a fascination with rainbows and even he was fascinated by rainbows in his childhood, he decided to practice under the name 'Rainbow Health Care' effective from May 2013. It is stated that, he is not aware that the appellant is also running the hospital in Hyderabad as
- 46 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 alleged. One of the contention on behalf of the respondents is that, the appellant has started its hospital in Bengaluru much later than 2013 i.e., only in the year 2015 and as such, the respondent No.1 being the prior user of the hospital with name 'Rainbow Health Care', surely has the right to use the tradename as 'Rainbow Health Care' and as such, there is no infringement as alleged by the appellant.
14. The learned counsel for the parties have, before the Trial Court and even before this Court, relied upon various documents in support of their contentions. The Trial Court while granting the interim relief on 20.04.2023 on IAs No.II and III, was primarily of the following view:
"I.A.No.II Plaintiff filed I.A. No.ll under Order XXXIX Rule 1 and 2 read with Section 151 of CPC prays that to ad-interim injunction restrain from the Advertisement and carrying on business/rendering service under the trade mark/name "Rainbow Health Care" or any other deceptively similar mark or name of business concern name and get up which or both visually and phonetically deceptively similar to or in any manner, what so ever amounting to
- 47 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
infringement of Plaintiff registered trade mark bearing No's. 1329767 in class 42, 1668727 in class 42, 1940198 in class 44, 2093878 in class 44, 2446921 in class 44, 2446922 in class 44, 2853577 in class 44, 2853578 in class 44, 2853579 in class 44, 2853580 in class 44, 2853581 in class 44, 2883140 in class 44, 3413835 in class 44, 3413836 in class 44, 3852519 in class 44, 3852520 in class 44, 3852522 in class 44 and 3852523 in class 44, in the interest of justice and equity.
I.A. No.III Plaintiff filed I.A. No.III under Order XXXIX Rule 1 and 2 read with Section 151 of CPC prays that to ad-interim injunction restrain from the Advertisement and carrying on business/rendering service under the trade mark/name "Rainbow Health Care" or any other deceptively similar mark or name of business concern name and get up which or both visually and phonetically deceptively similar to or in any manner, what SO ever amounting to passing off Plaintiff registered trade mark bearing No's. 1329767 in class 42, 1668727 in class 42, 1940198 in class 44, 2093878 in class 44, 2446921 in class 44, 2446922 in class 44, 2853577 in class 44, 2853578 in class 44, 2853579 in class 44, 2853580 in class 44, 2853581 in class 44, 2883140 in class 44, 3413835 in class 44, 3413836 in class 44, 3852519 in class 44, 3852520 in class 44, 3852522 in class
- 48 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
44 and 3852523 in class 44, in the interest of justice and equity.
Perused the averments of the plaint and document placed before this court it reveals that the Plaintiff hospital trading style of Rainbow children's hospital and for women care and existing all through out India. The Plaintiff registered trademark/trade name Rainbow in the year 1998. The document also reveals that the Defendant running a Rainbow Health Care. So, the Plaintiff come up with suit and interim application is that the Defendant using is trademark, it amounts to infringing of its trademark which amount to diverting the public's to cause confusion in the mind of trade and public to pass up their services as that of Plaintiff. So, considering the material placed on record. I hold that the Plaintiff made out a prima-facia case and balance of convenience lies in favour of the Plaintiff. Hence, I feel that it is just and proper to pass ex-parte interim injunction as sought in the I.A. No. II and III. Hence, I feel that it is just and proper to pass ex-parte interim injunction as sought in the I.A. No. II and III. Hence I proceed to pass the following order;
Order The Defendant's their affiliated companies/ entities, firms, representatives, partners, employees, servants, agents, successors, assignees, any
- 49 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
persons/ acting or claiming under them in whatsoever capacity, restrained by way of temporary injunction from advertising from the Advertisement and carrying on business/rendering service under the trade mark/name "Rainbow Health Care" or any other deceptively similar mark or name of business concern name and get up which or both visually and phonetically deceptively similar to or in any manner, what so ever amounting to infringement of Plaintiff registered trade mark bearing No's. 1329767 in class 42, 1668727 in class 42, 1940198 in class 44, 2093878 in class 44, 2446921 in class 44, 2446922 in class 44, 2853577 in class 44, 2853578 in class 44, 2853579 in class 44, 2853580 in class 44, 2853581 in class 44, 2883140 in class 44, 3413835 in class 44, 3413836 in class 44, 3852519 in člášs 44, 3852520 in class 44, 3852522 in class 44 and 3852523 in class 44, till the next date of hearing.
The affiliated Defendant's their companies/ entities, firms, representatives, partners, employees, servants, agents, successors, assignees, any persons/ acting or claiming under them in whatsoever capacity, restrained by way of temporary injunction from advertising from the Advertisement and carrying on business/rendering service under the trade mark/name "Rainbow Health Care" or any other deceptively similar mark or name of business concern name and get up which or both visually and phonetically deceptively similar to or in any manner,
- 50 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
what so ever amounting to passing off Plaintiff registered trade mark bearing No's.1329767 in class 42, 1668727 in class 42, 1940198 in class 44, 2093878 in class 44, 2446921 in cláss 44, 2446922 in class 44, 2853577 in class 44, 2853578 in class 44, 2853579 in class 44, 2853580 in class 44, 2853581 in class 44, 2883140 in class 44, 3413835 in class 44, 3413836 in class 44, 3852519 in class 44, 3852520 in class 44, 3852522 in class 44 and 3852523 in class 44, till the next date of hearing.
Petitioner shall comply the provisions of Order XXXIX Rule 3 (a) and (b) of CPC by tomorrow.
Issue notice on I.A. No.ll and III and suit summons to the Defendant through RPAD returnable and through court if steps taken by 16.06.2023."
15. We have already reproduced paragraphs No.31 to 43 of the impugned order(s) dated 18.06.2024 in the above paragraphs. In this regard, paragraphs No.34, 35 and 38 require reiteration to understand the reasons for the Trial Court to vacate the interim order(s). Accordingly, we reproduce the said paragraphs as under:
"34. From the averments, prima-facie that the Defendants commenced their hospital service from the year 2013 in the address shown in the cause title. But, the Plaintiff has established the first,
- 51 -COMAP No.286 of 2024 c/w COMAP No.287 of 2024
honest, bonafide, prior adopter and user of the trademark/tradename "RAINBOW" in relation to medical/healthcare services in India more than 2 decades. The Trademark/Trade name "RAINBOW"
since its adoption in the year 1998. The Plaintiff has running a various hospital in the name of RAINBOW in different cities in India. Hence, I hold that the Plaintiff has establish the prima-facie in its favour.
35. Coming to the balance of convenience, the Court must compare the amount of mischief done or threatened to the plaintiff and must weigh the same against inflicted by the injunction upon the defendant and see that the comparative mischief or inconvenience which is likely to arise from withholding the injunction will be greater than that which is likely to arise from granting it. As seen from the averments in the plaint, it is clear that the rainbow hospital stated a business in Hyderabad in the year 1998. But, they have started the business in Bengaluru in the year 2015. From the document placed before this court it is clearly shows that the Defendant was running business by valid license from BBMP in the trade name "RAINBOW Healthcare"
in the year 2013. The Plaintiff has taken care of existence of the Defendant hospital only after 10 years the trade name of Rainbow Healthcare and the Plaintiff has issued Cease and Desist Notice.
xx xx xx xx xx
- 52 -
COMAP No.286 of 2024
c/w COMAP No.287 of 2024
38. In the present case though the Plaintiff is a prior user of the trade-mark RAINBOW. But in Bengaluru city the Defendant is running a hospital in the name of Rainbow Healthcare in Bengaluru since 2013. The Plaintiff established the hospital and Bengaluru city in the year 2015. The Plaintiff has been brought the legal action against the Defendant after 10 years of the commencement of business. Further, the Defendant has categorically stated that he chose the name of Rainbow healthcare since his specialty in pediatrics and connected the fields of obstetrics and gynecology and since the children are known to fascination with rainbow even he has fascinated by rainbows in their childhood so he decided run the hospital in the name of Rainbow healthcare in the year 2013. SO, at this movement there is no prima-facie evidence to shows dishonest adaption by the Defendant. Further, this issued needs trial. Hence, the balance of convenience lies in favour of the Defendant."
16. There is no dispute that the appellant has the registration of the wordmark 'Rainbow' and its different variants including 'Rainbow Hospital'. The word 'Rainbow' is dominant feature of the trademark of the appellant. The primary reason appears to have weighed with the Trial Court is that, the respondents commenced its hospital with
- 53 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 the name 'Rainbow Healthcare' from the year 2013, whereas the appellant has established the hospital in Bengaluru City in the year 2015; that apart, the appellant had brought action against the respondent after ten years of commencement of its business. The said reasoning of respondents is not appealing. It is a settled position of law that once registration in a trademark exists and there is an infringement of the trademark, the injunction must follow. The Supreme Court, in its judgment in the case of Midas Hygiene Industries P. Ltd. (supra) on which a reference has been made by the Trial Court, has stated as under:
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
17. The other ground on which the Trial Court has vacated the interim order is that, the respondent No.1 is the prior user in Bengaluru effective from the year 2013,
- 54 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 whereas the appellant has set-up the hospital in 2015. Such a view is totally misplaced, moreso when the same Trademarks Act is applicable across the country. In that sense, the certificate of registration in favour of the appellant would hold good pan India. It is not the case of the respondents that the registration obtained by the appellant has certain restrictions relating to geographical limitations. In that sense, a registration being there effectively from the year 2005 and also the fact that it is the case of the appellant that it has registration of the trademark 'Rainbow' in different classes, would amount to infringement. Surely, the appellant shall be entitled to protection under Sections 28 and 29 of the Act. The counsel for the appellant is justified in relying upon the judgment of the Madras High Court in the case of B. Kishore Jain (supra), wherein in paragraphs No.24, 25, 28, 29 and 33, which we reproduce as under, the Court has clearly held that if the certificate of registration obtained by the plaintiff (in that case) does not contain any such restriction relating to geographical limitations; the Court
- 55 -
COMAP No.286 of 2024c/w COMAP No.287 of 2024 cannot create an artificial limitation merely because defendant is carrying on business in a remote place situated away from the place where the plaintiff is operating:
"24. Under identical circumstances, when a manufacturer of sweets, savouries and chats carrying on business under the trade name "Gangotree" came up before this Court, with an action for infringement of his registered trade mark by another person, a similar defence was taken by the defendant therein that the word "Gangotree" was used with the prefix "Shree" and that, therefore, it was distinct and different. But the said contention was rejected by. His Lordship Mr. Justice F.M. Ibrahim Kalifulla, in Gangotree Sweets and Snaks Pvt. Ltd., Chennai v. Shree Gangotree Sweets, Snaks and Savouries, Trichy, (2005) 31 PTC 502 (Mad.), in paragraph 29 on the following lines:
"The respondent-defendant cannot be allowed to contend that by mere use of the word "Gangotree" in its business place alongwith the word "Shree" no infringement has taken place. It is common ground that the business of both the parties is only of sweets, savouries, chats and other food items. In fact, the sample packages placed before the Court at the instance of the respondent-defendant disclose that both are in the business of sweets and chats. When the basic principles set out in "Kerly's Law
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of Trade Marks and Trade Names, Thirteenth Edition", namely, "the resemblance between two marks must be considered with reference to the ear as well as to the eye" is applied, it will have to be held in no uncertain terms that any customer, who intends to buy such special kind of sweets, savouries and chats, is bound to be well carried away by the name "Gangotree" used by the respondent- defendant for that of the applicant-plaintiff."
25. Therefore, the mere addition of a prefix, in my considered view, cannot save the respondent/defendant from being prohibited from using the trade mark in question.
xx xx xx xx xx
28. It was next contended on behalf of the respondent/defendant that he is carrying on business in a remote place situate at a distance of about 200 kilometres from the place where the applicant/plaintiff is operating. In other words, the contention of the respondent/defendant is that the geographical separation enables him to the use of the mark without causing inroads into the market of the applicant/plaintiff.
29. But the said contention cannot also be accepted in view of the fact that the Registrar of Trade Marks himself is empowered to restrict the use of the trade mark with reference to the geographical limitations. Admittedly, the certificate of registration
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 obtained by the applicant/plaintiff does not contain any such restriction relating to geographical location. Therefore, an artificial limitation cannot now be created by this Court, which would virtually amount to curtailing a right conferred upon the applicant/plaintiff by the statute.
xx xx xx xx xx
33. Therefore, it is not enough for the
defendant in an action for infringement, to show that the same trade mark is being used by others. The usage of the trade mark by innumerable persons must be of such an extent that there was no likelihood of the man of average intelligence and imperfect recollection, mistaking the defendant's goods as that of the plaintiff. Therefore, the contention that the respondent/defendant cannot be injuncted when many others are using the same trade mark, cannot be accepted."
(Emphasis supplied) If the said judgment is translated to the facts of this case, the appellant though has established the hospital with trademark/name 'Rainbow' in the year 2015, still it will have the protection in view of the registration in terms of the above Sections of the Act and the establishment of hospital by the respondents No.1 and 2 in the year 2013,
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 shall not make any difference or enure to the benefit of respondents No.1 and 2. There can be no prohibition. For a similar proposition, the counsel for the appellant has also relied upon the order of the Madras High Court in the case of Murigan IDLI Shep (supra), wherein in paragraph No.49, the Court has held as under:
"49. In so far as the balance of convenience is concerned, even though it has been contended by the learned counsel for the defendant that they are running only one restaurant, that too, in the city of Visakapatinam, Andhra Pradesh, I am unable to accept the arguments on two grounds:
1. The Trade Mark Certificate issued to the plaintiff is not restricted to any area of operation and therefore, at this stage, this Court has to accept the fact that it has been granted for the entire country.
2. It is the case of the plaintiff that having established a name and fame in Tamil Nadu, they would certainly open Restaurants in other Southern Indian Cities as well. If the plaintiff opens such Restaurants in the state of Andhra Pradesh in future, certainly two names which are deceptively similar would create confusion and chaos and therefore, the balance of convenience is also in favour of the plaintiff.
Further, the plaintiff would be put to hardship if the interim injunction is not
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 granted and if they succeed in the suit ultimately."
(Emphasis supplied)
18. In the case of Max Healthcare Institute Ltd. (supra), the Delhi High Court has, in paragraph No.13(k), has stated as under:
"13.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
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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."
(Emphasis supplied) 18.1. One of the pleas of the counsel for respondents is that, the challenge has been made after ten years of the respondent No.1 started its hospital in Benglauru, which clearly demonstrates acquiescence on the part of the appellant. We are afraid, such a plea shall not be sustainable, moreso when the appellant has registered mark(s) in its favour. Even on the facts, it is not the case that the appellant knowing well that the respondents are operating the hospital 'Rainbow Health Care Hospital', did not pursue with the respondents. It had given
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 cease-and-desist notice, which has been replied to by the respondent No.1. In this regard, it is necessary to refer to the judgment of the Supreme Court in the case of M/s Hindustan Pencils Private Limited (supra) on which reliance has been placed by learned counsel for the appellant, wherein in paragraphs No.32 and 33, the Supreme Court has stated as under:
"32. Where the plaintiff, however, is guilty of acquiescence, there different considerations may apply. As already noted, acquiescence may mean an encouragement by the plaintiff to the defendant to use the infringement mark. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violative of the plaintiff's rights. Furthermore, there should be a tacit or an express assent by the plaintiff to the defendant's using the mark and in a way encouraging the defendants to continue with the business. In such a case the infringer acts upon an honest mistaken belief that he is not infringing the trade mark of the plaintiff and if, after a period of time when the infringer has established the business reputation, the plaintiff turns around and brings an action for injunction, the defendant would be entitled to raise the defence of acquiescence. Acquiescence may be a good defence
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even to the grant of a permanent injunction because the defendant may legitimately contend that the encouragement of the plaintiff to the defendant's use of the mark in effect amounted to the abandonment by the plaintiff of his right in favour of the defendant and, over a period of time, the general public has accepted the goods if the defendant resulting in increase of its sale. It may, however, be stated that it will be for the defendant in such cases to prove acquiescence by the plaintiff. Acquiescence cannot be inferred merely by reason of the fact that the plaintiff has not taken any action against the infringement of its rights.
33. Applying the aforesaid principles to the present case, I find that there is no reason as to why any interim injunction should not be made absolute.
xx xx xx xx xx"
(Emphasis supplied)
18.2. Similarly, in the case of Bal Pharma Ltd.
(supra), the Bombay High Court has, in paragraph No.8, held as under:
"8. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, learned Counsel appearing for the Respondent cites the judgment of the Supreme Court in Power Control Appliances v. Sumeet Machines Pvt Ltd., (1994) 2
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SCC 448 wherein the Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LD v. Electrix and quoted a passage therefrom in paragraph 34 of its judgment. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgment in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. The judgment indicates that in a situation where the defendant to an action has been using the mark, even if concurrently, without making himself aware of the fact as to whether the same mark is the subject-matter of the registration and belongs to another person, the first person cannot be heard to complain for he has been using it negligently inasmuch as he has not taken the elementary precaution of making himself aware by looking at the public record of Registrar as to whether the mark in question is the property of another. If, however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the mark, then he runs the risk of a registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the judgment shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the defendant or at least to have lulled
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him into a false sense of security to continue to use the trade mark in the belief that he was the monarch of all he surveyed. In our judgment, such are not the circumstances here. We are not satisfied from the record that a search was taken of the registry by the Appellant to assure itself that there was no other person who owned the mark "MICRODINE".
Assuming that the search was taken, and the Appellant has done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way, we do not think that the defence can succeed, at this stage, at least."
(Emphasis supplied) 18.3. Further, in the case of Midas Hygiene Industries P. Ltd. (supra), the Supreme Court has, in paragraph No.5, held as under:
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
(Emphasis supplied)
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 18.4. Similarly, in the case of Som Distilleries and Breweries Ltd. (supra), the Bombay High Court has, in paragraph No.16, held as under:
"16. In the circumstances, the Respondent had made out a strong prima facie case before the Learned Single Judge for the grant of an injunction. Once an infringement of a registered mark is shown, nothing further would really arise. The Learned Single Judge has also observed that the balance of convenience would be clearly in favour of the grant of an injunction to protect the registered proprietor. Unless such an injunction were to be granted, the protection which has been granted in the law to a registered proprietor of a mark would be rendered nugatory leading to irreparable injury."
(Emphasis supplied) 18.5. Similarly, in the case of Mauj Mobile Private Limited (supra), the Bombay High Court has, in paragraph No.51, held as under:
"51. This Court is of the opinion that the balance of convenience can certainly be said to be in favour of the Plaintiff, for the reason that when the Plaintiff is found to be the owner of registered trademark and all other aspects are found in its favour, it would require unusual circumstances for
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balance of convenience to tilt in favour of the Defendants, as held by this Court in the case of Express Bottlers Services Pvt. Ltd. v. Pepsico Inco [1991 PTC 296]. This Court does not find any unusual circumstances to hold that despite the aforesaid findings rendered in favour of the Plaintiff, the balance of convenience could be said to be tilted in favour of the Defendants. In the case of Bal Pharma Limited v. Centaur Laboratories Limited (supra), it was held that when an entity uses a mark without taking necessary steps to inquire as to whether a similar mark is already in use or registered for identical or similar services and yet invests money in its mark, it cannot claim balance of convenience to be in its favour. In the light of the findings rendered hereinabove, this Court is of the opinion that the balance of convenience cannot tilt in favour of the Defendants, in the facts and circumstances of the present case. In fact, it has indeed tilted in favour of the Plaintiff."
(Emphasis supplied)
19. Having noted the findings of the Trial Court, it must be stated, the Trial Court despite concluding that the appellant has established a prima facie case in its favour, had vacated the interim order only on the ground that, the appellant had got issued the cease-and-desist notice after
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 ten years of the existence of the respondent No.1 in Bengaluru. The Trial Court had relied upon the judgment of the Delhi High Court in the case of Intel Corporation - Vs.- Anil Hada and Others [MANU/DE/9767/2003]. We are afraid that, the said judgment has no applicability for the reason, the case was not a case of registration of trademark, but a case of passing off and in that sense, the fact of acquiescence becomes relevant. But, in the case of registration, rights exist in favour of the appellant as per the provisions of the Trademarks Act. And as the appellant is entitled to protection thereunder. The finding of the Trial Court even in paragraph No.38, accepting the plea raised by the respondents for coining the word 'Rainbow' is totally misplaced, moreso when the appellant has the registration of the word in its favour since the year 2005, whereas the respondents had started the hospital in the year 2013 i.e., eight years after such a registration. This shows, the respondents either have not made a search on registrations or have, despite knowing the registration, adopted the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 mark for its hospital, which may show the conduct of the respondents bordering lack of bonafide.
20. The Trial Court has also erred in overlooking the fact that the services which are being offered by the parties herein are healthcare services and any confusion likely to be caused because of the use of the word 'Rainbow' has a drastic effect. Such a usage of the trademark 'Rainbow' by the respondent shall create confusion in the minds of the people and it cannot be permitted to be used pending decision of the suit. In this regard, the counsel for the appellant has rightly relied upon the following judgments:
i. Judgment of the Supreme Court in the case of Laxmikant V. Patel (supra), wherein the Supreme Court inter alia held, where there is a probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
ii. Judgment of the Madras High Court in the case of SNJ Distilleries Ltd. (supra), wherein the Court has, in paragraph No.29, held as under:
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"The present case relates to a passing off action where the respondents' product is deceptively similar and there is likelihood of causing confusion in the market. The learned single judge has held that the appellants are the prior user of the product, that there is deceptive similarity and there is likelihood of causing confusion in the mind of a common consumer of liquor, if both products are allowed to be sold in the same counter. It is pertinent to note that in the counter of the respondents it is stated that the 1st respondent is the licensee for the usage of the mark BRIHAN's GOLD NAPOLEON BRANDY, a derivative of BRIHAN's NAPOLEON BRANDY for the State of Tamil Nadu. Therefore, it is understood that he is not marketing his product in any other State. However the respondents are injuncted in the states where they are not selling their product."
(Emphasis supplied) iii. On a similar proposition, he has also relied upon the judgment of the Bombay High Court in the case of Jagdish Gopal Kamath (supra).
21. Insofar as the judgments relied upon by the counsel for the respondents are concerned, he has relied upon the judgment in the case of Wander Ltd. (supra),
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 more specifically paragraphs No.9 and 14, which we reproduce as under:
"9. Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated "...is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies."
The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.
xx xx xx xx xx
14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph [(1960) 3 SCR 713 : AIR 1960 SC 1156] : (SCR 721) "... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton [1942 AC 130] '...the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case'."
The appellate judgment does not seem to defer to this principle."
The said judgment would not be applicable to the facts of this case, moreso when the Trial Court having granted the injunction at the first instance, has vacated the same, which according to us, could not have been done in the facts and in view of our findings above. It may be stated here that, not only prima facie case as held by the Trial Court has been made out by the appellant, even the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 balance of convenience is in favour of the appellant and irreparable loss shall be caused if the benefit of the interim order is not granted.
21.1. On the proposition that prima facie case alone is not sufficient for grant of interim injunction is concerned, the learned counsel has relied upon the judgment in the case of Dunlop India Ltd. (supra), more specifically paragraphs No.5 and 7, which we reproduce as under:
"5. We repeat and deprecate the practice of granting interim order which practically give the principal relief sought in the petition for no better reason than that a prima facie case has been made out, without being concerned about the balance of convenience, the public interest and a host of other relevant considerations. Regarding the practice of some clever litigants of resorting to filing writ petitions in far-away courts having doubtful jurisdiction, we had this to observe: [SCC para 2, p. 648: SCC (Cri) pp. 350-51] "Having regard to the fact that the registered office of the Company is at Ludhiana and the principal respondents against whom the primary relief is sought are at New Delhi, one would have expected the writ petition to be filed either in the High Court of Punjab and Haryana or in the Delhi High Court. The writ petitioners
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however, have chosen the Calcutta High Court as the forum perhaps because one of the interlocutory reliefs which is sought is in respect of a consignment of beef tallow which has arrived at the Calcutta Port. An inevitable result of the filing of writ petitions elsewhere than at the place where the concerned offices and the relevant records are located is to delay prompt return and contest. We do not desire to probe further into the question whether the writ petition was filed by design or accident in the Calcutta High Court when the office of the Company is in the State of Punjab and all the principal respondents are in Delhi. But we do feel disturbed that such writ petitions are often deliberately filed in distant High Courts, as part of a manoeuvre in a legal battle, so as to render it difficult for the officials at Delhi to move applications to vacate stay where it becomes necessary to file such applications."
In Union of India v. Jain Shudh Vanaspati Ltd. [ C.A. No. 11450 of 1983] Chandrachud, C.J., A.P. Sen, R.N. Misra, JJ. allowed an appeal against an interim order making the observations:
"After hearing learned counsel for the rival parties, we are of the opinion that the interim order passed by the High Court on November 29, 1983 is not warranted since it virtually grants to the respondents a substantial part of the relief claimed by them in their writ petition. Accordingly, we set aside the said order."
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COMAP No.286 of 2024c/w COMAP No.287 of 2024
We have come across cases where the collection of public revenue has been seriously jeopardised and budgets of Governments and Local Authorities affirmatively prejudiced to the point of precariousness consequent upon interim orders made by courts. In fact, instances have come to our knowledge where Governments have been forced to explore further sources for raising revenue, sources which they would rather well leave alone in the public interest, because of the stays granted by courts. We have come across cases where an entire Service is left in a stay of flutter and unrest because of interim orders passed by courts, leaving the work they are supposed to do in a state of suspended animation. We have come across cases where buses and lorries are being run under orders of court though they were either denied permits or their permits had been cancelled or suspended by Transport Authorities. We have come across cases where liquor shops are being run under interim orders of court. We have come across cases where the collection of monthly rentals payable by excise contractors has been stayed with the result that at the end of the year the contractor has paid nothing but made his profits from the shop and walked out. We have come across cases where dealers in food grains and essential commodities have been allowed to take back the stocks seized from them as if to permit them to continue to indulge in the very
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 practices which were to be prevented by the seizure. We have come across cases where land reform and important welfare legislations have been stayed by courts. Incalculable harm has been done by such interim orders. All this is not to say that interim orders may never be made against public authorities. There are, of course, cases which demand that interim orders should be made in the interests of justice. Where gross violations of the law and injustices are perpetrated or are about to be perpetrated, it is the bounden duty of the court to intervene and give appropriate interim relief. In cases where denial of interim relief may lead to public mischief, grave irreparable private injury or shake a citizen's faith in the impartiality of public administration, a court may well be justified in granting interim relief against public authority. But since the law presumes that public authorities function properly and bona fide with due regard to the public interest, a court must be circumspect in granting interim orders of far-reaching dimensions or orders causing administrative, burdensome inconvenience or orders preventing collection of public revenue for no better reason than that the parties have come to the court alleging prejudice, inconvenience or harm and that a prima facie case has been shown. There can be and there are no hard and fast rules. But prudence, discretion and circumspection are called for. There are several
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 other vital considerations apart from the existence of a prima facie case. There is the question of balance of convenience. There is the question of irreparable injury. There is the question of the public interest. There are many such factors worthy of consideration. We often wonder why in the case indirect taxation where the burden has already been passed on to the consumer, any interim relief should at all be given to the manufacturer, dealer and the like ! xx xx xx xx xx
7. Now coming to the facts of the present case, the respondent, Dunlop India Limited is a manufacturer of tyres, tubes and various other rubber products. By a notification dated April 6, 1984 issued by the Government of India, Ministry of Finance (Department of Revenue) in exercise of the powers conferred by Rule 8(1) of the Central Excise Rules, 1944, tyres, falling under Item 16 of the First Schedule to the Central Excise and Salt Act, 1944, were exempt from a certain percentage of excise duty to the extent that the manufacturers had not availed themselves of the exemption granted under certain other earlier notifications. The Department was of the view that the Company was not entitled to the exemption as it had cleared the goods earlier without paying central excise duty, but on furnishing bank guarantees under various interim orders of courts. The Company claimed the benefit of the exemption to the tune of Rs 6.05 crores and filed a
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 writ petition in the Calcutta High Court and sought an interim order restraining the central Excise Authorities from the levy and collection of excise duty. The learned Single Judge took the view that a prima facie case had been made out in favour of the Company and by an interim order allowed the benefit of the exemption to the tune of Rs two crores ninety- three lakhs and eighty-five thousand for which amount the Company was directed to furnish a bank guarantee, that is to say, the goods were directed to be released on the bank guarantee being furnished. An appeal was preferred by the Assistant Collector of Central Excise under clause 10 of the letters patent and a Division Bench of the Calcutta High Court confirmed the order of the learned Single Judge, but made a slight modification in that the Collector of Central Excise was given the liberty to encash 30% of the bank guarantee. The Assistant Collector of Central Excise has preferred this appeal by special leave. By our interim order dated November 15, 1984, we vacated the orders granted by the learned Single Judge as well as by the Division Bench. We gave two weeks' time to the respondent Company to file a counter. No counter has, however, been filed. Shri F.S. Nariman, learned counsel, however appeared for the respondent. We do not have the slightest doubt that the orders of the learned Single Judge as well as Division Bench are wholly unsustainable and should never have been made.
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 Even assuming that the Company had established a prima facie case, about which we do not express any opinion, we do not think that it was sufficient justification for granting the interim orders as was done by the High Court. There was no question of any balance of convenience being in favour of the respondent Company. The balance of convenience was certainly in favour of the Government of India. Governments are not run on mere bank guarantees. We notice that very often some courts act as if furnishing a bank guarantee would meet the ends of justice. No governmental business or for that matter no business of any kind can be run on mere bank guarantees. Liquid cash is necessary for the running of a Government as indeed any other enterprise. We consider that where matters of public revenue are concerned, it is of utmost importance to realise that interim orders ought not to be granted merely because a prima facie case has been shown. More is required. The balance of convenience must be clearly in favour of the making of an interim order and there should not be the slightest indication of a likelihood of prejudice to the public interest. We are very sorry to remark that these considerations have not been borne in mind by the High Court and interim order of this magnitude had been granted for the mere asking. The appeal is allowed with costs."
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 Suffice to state, the judgment is not in a case of infringement of trademark, but it is in relation to excise, as such, not applicable to the facts. Further, in view of our finding that not only prima facie case, but even the balance of convenience is in favour of the appellant and irreparable loss shall be caused to the appellant if the injunction is not granted, the impugned order of the Trial Court is clearly erroneous and the appellant shall be entitled to the interim injunction.
21.2. For similar proposition, the counsel for the respondents has relied upon the judgment in the case of Best Sellers Retail (India) Pvt. Ltd. (supra), more specifically paragraphs No.29, 30 and 33 to 36, which we reproduce as under:
"29. Yet, the settled principle of law is that even where prima facie case is in favour of the plaintiff, the Court will refuse temporary injunction if the injury suffered by the plaintiff on account of refusal of temporary injunction was not irreparable.
30. In Dalpat Kumar v. Prahlad Singh [(1992) 1 SCC 719] this Court held: (SCC p. 721, para 5) "5. ... Satisfaction that there is a prima facie case by itself is not sufficient to
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grant injunction. The Court further has to satisfy that non-interference by the Court would result in 'irreparable injury' to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely, one that cannot be adequately compensated by way of damages."
xx xx xx xx xx
33. Despite this claim towards damages made by Respondent 1 in the plaint, the trial court has held that if the temporary injunction as sought for is not granted, Liberty Agencies may lease or sub-lease the suit schedule property or create third-party interest over the same and in such an event, there will be multiplicity of proceedings and thereby Respondent 1 will be put to hardship and mental agony, which cannot be compensated in terms of money. Respondent 1 is a limited company carrying on the business of readymade garments and we fail to appreciate what mental agony and hardship it will suffer except financial losses.
34. The High Court has similarly held in the impugned judgment that if the premises is let out, Respondent 1 will be put to hardship and the relief
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claimed would be frustrated and, therefore, it is proper to grant injunction and the trial court has rightly granted injunction restraining the partners of Liberty Agencies from alienating, leasing, sub-leasing or encumbering the property till the disposal of the suit.
35. The High Court lost sight of the fact that if the temporary injunction restraining Liberty Agencies and its partners from allowing, leasing, sub-leasing or encumbering the suit schedule property was not granted, and Respondent 1 ultimately succeeded in the suit, it would be entitled to damages claimed and proved before the court. In other words, Respondent 1 will not suffer irreparable injury.
36. To quote the words of Alderson, B. in Attorney General v. Hallett [(1857) 16 M & W 569 : 153 ER 1316] : (ER p. 1321) "... I take the meaning of irreparable injury to be that which, if not prevented by injunction, cannot be afterwards compensated by any decree which the court can pronounce in the result of the cause." "
The said judgment is also distinguishable on the facts, as it is not relatable to infringement of trademark, where the principles determining the grant of injunction are well established and the said principles are clearly applicable/ available in the case in hand.
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 21.3. On the proposition that, question of prior use cannot be decided on the basis of affidavits alone, learned counsel has relied upon the judgment in the case of Mujeeb Modern Rice Mills (supra), more specifically paragraphs No.4 and 5, which we reproduce as under:
"4. This judgment was impugned in appeal by the respondent. The court stated that there was no documentary evidence and that the issue would have to be determined on the basis of the affidavits filed. At the outset, we may note that it would be inappropriate to decide the issue on the basis of the affidavits alone in a case which relates to the utilisation of a trade mark. It has to be, at least prima facie, established in the application for interim relief that the applicant has been utilising the trade mark as claimed by it. However, on the basis of the affidavits, the Division Bench said:
"We are of the view that the appellants (the respondent before us) have established that they are using the trade mark 'MAHARAJA' from earlier point of time than the respondents (the appellant before us) and as such they made out a prima facie case for grant of interim order."
It also appears that the Division Bench has wrongly cast the onus on the appellant before us, for establishing its claim without considering the question as to whether the respondent had led any
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 evidence whatsoever, to establish its claim on the basis of which the interim relief was granted.
5. In these circumstances, when applications for registration were admittedly pending, no documentary evidence was produced and the court was to decide the issue on the basis of the affidavits alone, no interim injunction should have been granted as prayed by the respondent. Accordingly, we set aside the decision of the Division Bench of the High Court and uphold the decision of the learned Single Judge. The High Court is requested to dispose of the pending suits as expeditiously as possible." The facts in the case clearly demonstrate prior use of the registered trademark. The judgment relied upon by the counsel is primarily on the question of determination of prior use of trademark in the absence of evidence, by relying on affidavits. It is not such a case here. The registration of mark 'Rainbow' in the year 2005 and its usage in other parts of the country is not disputed. The only dispute is whether the usage is prior in Bengaluru. In that regard, we have already held, the mark 'Rainbow' in view of registration, shall have all India protection, including at places, where there is no hospital of the
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 appellant. Hence, the said judgment is clearly distinguishable.
21.4. Even the judgment relied upon by the counsel for the respondents in the case of Corn Products Refining Co. (supra), more specifically paragraph No.16, which we reproduce as under on the proposition that registration of trademark is not proof of use is concerned, it is the case of the appellant that it is not only having the registration of the word/trademark, but it is also the prior user having established hospitals with the mark 'Rainbow' in different parts of the country. This stand is appealing for the reason that, the protection of trademark upon registration is pan-India and not confined to a particular place, unless the registration stipulates such a condition; the judgment is clearly distinguishable:
"16. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user
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of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 and Willesden Varnish Co. Ltd. v. Young & Marten Ltd. [39 RPC 285 p 289] It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks 'Glucose Biscuits', 'Gluco biscuits' and 'Glucoa Lactine biscuits'. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having 'Gluco' or 'Vita' as a prefix or a suffix."
21.5. Insofar as the judgment relied upon by learned counsel for the respondents in the case of Pragati
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 Construction Consultants (supra) is concerned, the same has been relied upon to show the effect of non-filing of statement of truth or a defect in the statement of truth. Suffice to state, the appellant had filed a fresh statement of truth on 18.02.2025, when we passed the following order:
"Learned counsel for the respondents has taken an objection on the Statement of Truth filed in support of the appeals, being COMAPs No.286/2024 and 287/2024.
Today, the learned counsel for the appellant has filed memos enclosing therewith a fresh Statement of Truth in each of the appeals. A copy thereof has been given to the counsel for the respondents in both the appeals. The same are taken on record. The IAs No.1/2025, which have been filed to strike of the Memorandum of Appeals have become infructuous and are disposed of.
We have heard the counsel for the parties on these appeals finally.
Judgment reserved."
Hence, the said judgment shall have no relevance now.
21.6. Insofar as the judgments in the case of Gujarat Bottling Co. Ltd. (supra) and Revajeetu Builders and Developers (supra) are concerned, the same have no
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COMAP No.286 of 2024c/w COMAP No.287 of 2024 applicability to the facts of this case and in view of our findings above.
21.7. Insofar as the judgment relied upon by the counsel for the respondents in the case of Mallegowda (supra) is concerned, it is not stated for what proposition it has been relied upon, hence no applicability.
22. In view of our above discussion, we pass the following:
ORDER i. The impugned orders dated 18.06.2024 passed by the Trial Court on IAs No.II and III in Com.OS No.538/2023 are set aside;
ii. The orders dated 20.04.2023 passed by the Trial Court on IAs No.II and III, which we have reproduced in paragraph No.14, are revived and they shall continue to operate till the decision in the suit being Com.OS No.538/2023;
iii. The appeals are allowed and disposed of.
It is made clear that, the aforesaid is only a prima facie view. The Trial Court shall decide the suit on its own
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merits without being influenced by any observation made by this Court in this order.
In view of disposal of the appeals, pending application(s), if any, are disposed of as infructuous.
Sd/-
(V KAMESWAR RAO) JUDGE Sd/-
(T.M.NADAF) JUDGE PA