Delhi District Court
Vide This Order I Shall Decide An ... vs Dr. Seema Singh on 30 July, 2014
IN THE COURT OF SH. LALIT KUMAR:
ADDITIONAL DISTRICT JUDGE 01 SOUTH EAST DISTRICT,
SAKET COURTS, NEW DELHI
TM 08/13
Metro Institutes of Medical Sciences Pvt. Ltd.
Versus
Dr. Seema Singh & Ors.
Order:
30.07.2014
1.Vide this order I shall decide an application under Order XXXIX Rule 1 & 2 CPC moved on behalf of plaintiff.
2. It is averred in the said application that the plaintiff has filed the accompanying suit for permanent injunction restraining infringement of registered trademark, rendition of accounts of profits, delivery up etc. against the defendants and the same is pending before this court, with a vision to provide the utmost level of healthcare to the common man at the most affordable cost, Dr. Purshotam Lal the chairman of the plaintiff with the help of a group of NRI physicians founded the first hospital under the name, Metro Hospitals & Heart Institute (MHHI) at Noida in June 1997. Immediately after foraying into the heart care segment in 1997, the plaintiff started in September 1998, a multispecialty wing under the name Metro Multispecialty Hospital was set up. This was followed by establishing different specialties under the name, Metro Centre for Liver & Digestive Diseases and Metro Center for Respiratory TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 1 Diseases at multispecialty wing MHHI. It is further averred that the plaintiff has established ten state of the art Hospitals and three satellite units under the trade name METRO, which are collectively known as METRO Group of Hospitals as i)Metro Heart Institute, Faridabad, 2002 ii) Metro Hospital and Heart Institute, Meerut, 2003 iii) Metro Hospital and Heart Institute, Lajpat Nagar, Delhi 2004 iv) Metro Hospital and Cancer Institute, Preet Vihar, Delhi 2005
v) RLKC Hospital metro Heart Institute, Naraina; 2006 vi) Metro Hospital & Research Centre, Vadodara; 2009 vii) Metro Hospital & Heart Institute, Gurgaon; 2012 viii) Metro Hospital and Heart Institute, Jaipur; 2012 ix) Metro Hospital and Heart Institute, Haridwar; 2013. It is further averred that there are four other Metro hospitals coming up at Greater Noida and Punjab shortly. The plaintiff has received prestigious Accreditations for six of its hospitals being the National Accreditation Board for Hospitals & Healthcare Providers (NABH) & two of their labs being the National Accreditation Board for Testing and Calibration Laboratories (NABL). It is further averred that with a footfall of more than 3,000 every day, the plaintiff provides 1,450 beds to patients coming from all strata of society, with a mission to make available to the middle class, poor and the needy the medical services at most affordable cost. The plaintiff has been treating ever increasing number of poor patients either free of cost or at concessional rates with a commitment that no patient is ever turned back for want of money. The plaintiff is an example against the unethical commercialization of medical services to the detriment of common people of the country. Since 1997, Metro has helped to enhance the TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 2 lives of thousands of people who choose the plaintiff for quality healthcare services. The trade name METRO has been thus extensively used by plaintiff since 1997 in India and has acquired formidable goodwill and reputation. The plaintiff, in order to accord statutory protection to its trade mark applied for and has obtained registrations for its trade name i.e. Trade Mark - Metro, Class - 42, Registration No. & date - 1551499 dated 20.04.2007, Services - Medical Services: Hospital, Heart Institute, Pharmacy, Healthcare, Specialty Hospital, Research Institute, Medical Sciences Included in Class 42; Trade Mark - Metro Heart Institute , Class - 42, Registration No. & date - 1551500 dated 20.04.2007, Services - Medical Services: Hospital, Heart Institute, Pharmacy, Healthcare, Specialty Hospital, Research Institute, Medical Sciences Included in Class 42 and Trade Mark - Metro Hospital, Class - 42, Registration No. & date - 1551501 dated 20.04.2007, Services - Medical Services:
Hospital, Heart Institute, Pharmacy, Healthcare, Specialty Hospital, Research Institute, Medical Sciences Included in Class 42.
3. It is further averred that the plaintiff was originally incorporated as U.G Hospitals Pvt. Ltd. As on 20.02.1990. The name of plaintiff changed to its present name i.e. Metro Institutes of Medical Sciences Pvt. Ltd on 17.05.2007. The aforementioned registrations were applied in the name of U G Hospitals Pvt. Ltd. (plaintiff as originally incorporated). These registrations are duly renewed and valid. The plaintiff has filed appropriate applications on Form TM 33 with the Trade Mark Registry to record the change in the name of the plaintiff to its present name. The same is TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 3 pending with the Trade Mark Registry. Though, the plaintiff is the registered proprietor of the trade marks Metro, Metro Heart Institute and Metro Hospital, which is a composite mark / label incorporating the essential component i.e. Trade name Metro used since 1997. The medical and hospital services provided under the trade name Metro by the plaintiff enjoy formidable goodwill and reputation. On account of such extensive and exclusive commercial use, the trade name Metro has acquired secondary significance as source indicator and symbol of highest standards quality of services being offered by the plaintiff. On account of the good quality medical services being provided by the plaintiff under the trade name Metro, the same is widely publicized in the print media. The reputation and goodwill attached to the trade name Metro can be gauged from the revenues earned by the plaintiff i.e. From 01.04.2006 to 31.03.2007 Rs. 105.36 Crores; 01.04.2007 to 31.07.2008 Rs.125.01 Crores; 01.04.2008 to 31.03.2009 Rs.162.06 Crores, 01.04.2009 to 31.03.2010 Rs. 156.88 Crores; 01.04.2010 to 31.03.2011 Rs.151.71 Crores and 01.04.2011 to 31.03.2012 Rs.181.44 Crores. On account of prior adoption, long and continuous use, extensive, exclusive and enormous publicity, excellent quality control, the trade name Metro has acquired secondary significance and distinctiveness as indicative of source and origin of medical and hospital services provided by the plaintiff. The said trade name has come about to enjoy enviable goodwill and reputation amongst patients and consumers for quality medical and hospital services. The trade name Metro thus connotes and denotes the services originating from the plaintiff and none else.
TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 4
4. It is further averred that the plaintiff came to know about the defendant namely "Metro Hospital and Research Centre"
during a random search on the Internet and accordingly issued a legal notice dated 12.07.2012 through counsel, to which no reply was sent by the defendants. This led the plaintiff to believe that the defendants had stopped the use of the impugned mark Metro of the plaintiff. The plaintiff, thereafter, came to know that the defendant no.1 has applied for registration of the trade mark 'Metro Hospital and Research Centre' under application no. 2270632 dated 23.01.2012 (claiming user since 08.01.2010) and 'Metro Medisys Hospital' under No. 2383492 dated 22.08.2012 (proposed to be used). Both these applications have been objected by the Trade Marks Registry. The plaintiff immediately issued another legal notice dated 20.07.2013, through counsel to the defendants. The said legal notice was replied by the defendants through their counsel vide letter dated 12.08.2013. the defendants refused to comply with the terms of the said legal notice. Though, the defendants confirmed to have replied to the plaintiff's earlier notice dated 12.07.2012 and stated to have annexed a copy thereof, but failed to disclose the date of said reply and annex the copy of the said reply. The plaintiff earned annual revenues to the tune of Rs.
156 crores and incurred Rs. 62 lacs in promoting its hospitals under the mark Metro during the financial year 200910, the conduct of the defendants in adopting the impugned mark "Metro Hospital and Research Centre" is fraudulent, dishonest, unethical, unlawful and solely motivated to cheat the patients and encash upon the goodwill and reputation of the plaintiff's trade name Metro and to TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 5 earn easy and illegal profits by passing off their medical services for those of the plaintiff. The use of the impugned trade name Metro of the plaintiff by the defendants amounts to misrepresentation to the consumers that such services are being offered by the plaintiff. Such use also amounts to misappropriation of plaintiffs' goodwill and reputation in the trade name Metro by the defendants. The defendants are actually committing multiple offences and playing fraud upon members of public. Considering that the services in question are medical services and the fact that such services are without any quality control by the plaintiff, the defendants ought to be injuncted by this court on urgent basis. It is further averred that the plaintiff has been offering medical and hospital services under the trade mark / name Metro in India since 1997 and the annual revenues of plaintiff arising from services offered under the name Metro for the period 19972010 is Rs. 863 Crores, the plaintiff's trade mark Metro, therefore, enjoys substantial goodwill and reputation in India, sale of identical services under identical trade name / mark Metro by the defendants, unless injuncted, would completely destroy the goodwill and reputation of the plaintiff and trust of the patients and consumers in plaintiff's services. The plaintiff will suffer irreparable loss and injury unless and order of interim injunction is granted during the proceedings restraining the defendants from providing medical and hospital services under the impugned trade mark Metro. The use of the trade name Metro by the defendants constitutes infringement of plaintiff's registered trade mark Metro. The unauthorised use of the mark Metro which is an essential feature of the registered trade name / mark by the TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 6 defendants amounts to infringement of the trade mark registration no. 1551499, 1551500 and 1551501 of the plaintiff as well as misappropriation of the goodwill and reputation that vests therein of the plaintiff and it is prayed to grant an order of interim injunction restraining the defendants, their directors, partners or proprietor, as the case may be, assignees in business franchisees, licensees, distributors, dealers and agents from in any manner using Metro as trade name / trade mark or as a part of its corporate name and / or trading name in respect of medical services or any other trade mark or trade name as may be deceptively similar thereto, amounting to infringement of the plaintiff's registered trade marks being above mentioned registration numbers.
5. Reply to the said application filed on behalf of defendants submitting that present application is not maintainable and at the outset the suit is baseless and false. It is submitted by the defendants that the plaintiff has suppressed the fact that the Trade Mark Metro Hospital under application No.1551501, published in Trade Mark Journal No. 1409, 01.02.2009 Class 42 of the plaintiff is registered by the Registrar and the services of the plaintiff is restricted in the U.T. "Delhi" only, meaning thereby the plaintiff cannot oppose the use of the Metro Hospital outside the territory of the U.T. of Delhi. The trade mark "Metro" is a generic name and the plaintiff cannot claim exclusive rights in the trade mark therein, hence all the public has every right to use a trademark which is generic. It is further submitted that the trade mark of the defendants is structurally and visually different from the impugned TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 7 trade mark of the plaintiff. It is further submitted that the plaintiff is not using the word "Metro" which is there trade mark but the defendants have coined, developed and adopted a new mark for their services which are entirely distinctive and distinguish from the mark of the plaintiff which not effect the goodwill and reputation of the plaintiff. It is further submitted that the trade mark used by the defendants are Metro Hospital and Research Centre and not mere the word METRO as alleged by the plaintiff. It is denied that the use of the trade mark Metro Hospital and Research Centre amounts to infringement of the plaintiff's registered trade mark which is Metro, Metro Heart Institute and Metro Hospital. It is further submitted that the defendants have adopted there trade honestly and bonafidely with due caution and permissible under the law which is distinctive/distinguish and defendants are also protected under the law and prayed that the application may be dismissed with cost.
In support of his arguments, Ld. Counsel for defendants relied upon case laws cited as 2010 (42) PTC 772 (Del.) (DB) High Court of Delhi in case titled as Schering Corporation & Ors. Vs. Alkem Laboratories Ltd.; 2011 (45) PTC 22 (Del.) High Court of Delhi in case titled as Eveready Industries India Ltd. Vs. Sanajay Chadha & Anr.; 2010 (44) PTC 515 (Del.) (DB) High Court of Delhi in case titled as Rich Products Corporation & Anr. Vs. IndoNippon Foods Limited; 2010 (44) PTC 209 (Del.) High Court of Delhi in case titled as Skol Breweries Vs. Unisafe Technologies; 2012 (52) PTC 384 (IPAB) in case titled as Hindustan Unilever Limited Vs. ThreeNProducts (P) Ltd. & Anr.; 2009 (41) PTC 217 TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 8 (Del.) in case titled as P.P. Jewellers Pvt. Ltd. Vs. P.P. Buildwell Pvt. Ltd. ; 2010 (44) PTC 318 (Del.) (DB) High Court of Delhi in case titled as Cadila Healthcare Ltd. Vs. Diat Foods (India) and 2011 (46) PTC 284 (Mad.) (DB) High Court of Madras in case titled as Malar Network )P) Ltd. Vs. Arun Prasath D.
6. I have heard the arguments raised before me and perused the record as well as case law relied upon by Ld. Counsel for the parties in support of their contentions.
7. Plaintiff has got incorporation certificate as well as certificate of trademark registration in the year 2007. Plaintiff argued that the said registration is still valid in his favour and has not been overruled by the registration authorities or has not been expired yet. Defendants have maliciously using its name and deceptively projecting himself as Metro Hospital. The goodwill earned by the plaintiff from the last 17 years are on the stake due to the above and is adversely affecting the interest and reputation of plaintiff. Defendant by using the plaintiff's trademark is indeed deceiving the common people.
8. Ld. Counsel for the defendant argued that the trade mark "Metro" is a generic name and the plaintiff cannot claim exclusive rights in the trade mark therein, hence all the public has every right to use a trademark which is generic. However, defendants have themselves applied for the registration of trademark "Metro" in the year 2010.
TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 9
9. Ld. Counsel for the plaintiff in support of his contention relied upon case law titled as Automatic Electric Ltd. Vs. R.K. Dhawan reported as 1999 PTC (19) 81 of Hon'ble High Court of Delhi wherein it has been held that a person claiming exclusive right over an expression cannot challenge same expression as generic. The defendant argued that the trade mark "Metro" is a generic name and the plaintiff cannot claim exclusive rights in the trade mark therein, hence all the public has every right to use a trademark which is generic.
10. It is pertinent to mention that the plaintiff is having three registration with regard to the use of mark Metro and 'Metro' is the essential feature of all three registrations of the plaintiff under no.1551499, 1551500 and 1551501 and therefore, use of the mark 'Metro' by third persons amounts to infringement of the said marks. Further the plaintiff has been offering medical and hospital services under the trade mark Metro in India since 1997. The annual revenues of plaintiff arising from services offered under the name METRO for the period 19972010 is Rs. 863 Crores (Rs. 181.44 Crores only for the financial year ending 31.03.2012 alone). The plaintiff's trade mark METRO, therefore, enjoys substantial goodwill and reputation in India. Sale of identical services under identical trade name METRO by the defendants, unless injuncted, would completely destroy the goodwill and reputation of the plaintiff and trust of the patients and consumers in plaintiff's services. The plaintiff has, therefore, established a good prima facie case and the balance of convenience is in favour of the plaintiff and against the TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 10 defendants. The plaintiff will suffer irreparable loss and injury unless an order of interim injunction is granted during the proceedings restraining the defendant from providing medical and hospital services under the impugned trade mark METRO.
Moreover, in Jagan Nath Vs. Bhartiya Dhup. AIR 1975 Del 149, para 18 the Hon'ble High Court of Delhi has held that the question of balance of convenience is relevant only when at least prima facie, the two parties are on the same level and their rights are about equal. In the present case, the defendants have no right in the mark 'Metro' in any case as their application for registration of the impugned trade mark is still pending before the Registrar of Trade Marks. The plaintiff has a good prima facie case and the balance of convenience is in favour of the plaintiff and against the defendants. As the plaintiff will suffer irreparable loss unless an order of interim injunction is granted during the proceedings restring the defendants from providing medical and hospital serviles under the impugned trade mark Metro. Therefore, an injunction in favour of the plaintiff must follow. Whereas the case law relied upon by Ld. Counsel for the defendant are distinguished from the facts and circumstances of the present case.
11. In view of above, I am of the considered opinion that the plaintiff has established a prima facie case in his favour for grant of interim injunction against the defendants. Same is accordingly granted thereby restraining the defendants, their directors, partners or proprietor, as the case may be, assignees in TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 11 business franchisees, licensees, distributors, dealers and agents from using "Metro" as trade name / trade mark or as a part of its corporate name and / or trading name in respect of medical services or any other trade mark or trade name as may be deceptively similar thereto till the disposal of the present suit. Application stands disposed off accordingly.
Nothing stated herein shall tantamount the expression of any opinion on the merits of the case.
Announced in the open (LALIT KUMAR) court on 30.07.2014. Additional District Judge 01(SE), Saket Courts, New Delhi.
TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 12 TM 08/13 Metro Institutes of Medical Sciences Pvt. Ltd. Vs. Dr. Seema Singh 30.07.2014 Present: Ld. Counsel for the parties.
Vide separate order, application under Order XXXIX Rule 1 & 2 CPC moved on behalf of plaintiff is allowed.
Pleadings are complete in this case.
Put up for admission / denial of documents, if any and for framing of issues on 10.09.2014.
(LALIT KUMAR) Additional District Judge 01(SE), Saket Courts, New Delhi TM 08/13 Metro Institutes of Medical Sciences P. Ltd. Vs. Dr. Seema Singh 13