Delhi District Court
Metro Institutes Of Medical Sciences ... vs Metro International Cardiac Centre & ... on 4 February, 2015
Page 1 of 21
IN THE COURT OF Ms. SUNENA SHARMA
Addl. Distt Judge - 04 (SE)
SAKET COURTS COMPLEX: NEW DELHI
TM No.01/2014
Unique Case ID No.02406C0337692013
Date of Institution : 06.12.2013
Case received on transfer : 19.04.2014
Arguments concluded : 04.02.2015
Date of decision : 04.02.2015
Metro Institutes of Medical Sciences Pvt Ltd ..... Plaintiff
V E R S U S
Metro International Cardiac Centre & Ors .... Defendants
O R D E R
1. Vide this order, I shall decide the injunction application moved by plaintiff under Order 39 Rule 1 & 2 CPC seeking an injunction against defendants for restraining them from using 'METRO' as trade name/trademark in any manner or as a part of its corporate name or trading name in respect of medical services. Though the action has been initiated vide present suit for infringement of trade make, passing off and unfair competition, but for lack of the territorial jurisdiction in this Court for action of passing off, plaintiff has restricted its claim only for infringement of trade mark as envisaged under Section 29 the Trade Mark Act, 1999 (herein after referred to as the 'Act')
2. Briefly stated that plaintiff's case is as under: Plaintiff is an incorporated company of which Dr Purshottam Lal, a renowned cardiologist is a chairman who in the year 1997 founded the first TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 2 of 21 hospital in the name of Metro Hospital and Heart Institute at NOIDA, UP. In September 1998, plaintiff after foraying into heart care segment, shifted to multi speciality wing under the name Metro Multispeciality Hospital and same was followed by different speciality hospitals under the names Metro Centre for Liver and Digestive Disease and Metro Centre for Respiratory Disease at MHHI. As on date, plaintiff has established eleven state of the art hospitals collectively shown as Metro Group of Hospitals, viz:
i) Metro Heart Institute, Faribabad (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 (2006);
v) RLKC Hospital Metro Heart Institute, Naraina, Delhi (2006);
vi) Metro Hospital and Research Centre, Vadodara, Gujarat (2009);
vii) Metro Hospital and Heart Institute, Gurgaon, Haryana (2012);
viii) Metro Hospital and Heart Institute, Jaipur, Rajasthan (2012);
ix) Metro Hospital and Heart Institute, Haridwar (2013); It is also averred that there are four other Metro Hospitals coming up in Greater Noida and Punjab shortly. The plaintiff has received prestigious accreditations for six of its hospital being the national Accreditation Board for Healthcare Providers (NABH) and 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 3000 per 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 TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 3 of 21 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 commercialisation of medical services to the detriment of common people in the country. Since 1997, Metro has helped to enhance the 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 of its trade mark applied for and has obtained registrations for its trade name i.e. Trade Mark - METRO, Class 42, vide registration No.1551499 dated 20.04.2007 in Medical Service, Hospital, Heart Institute, Pharmacy, Healthcare, Specialty Hospital, Research Institute, Medical Sciences included in class 42; Trade Mark - METRO HEART INSTITUTE, Class 42, vide registration No.1551500 dated 20.04.2007 in Medical Service, Hospital, Heart Institute, Pharmacy, Healthcare, Specialty Hospital, Research Institute, Medical Sciences included in class 42; and Trade Mark - METRO HOSPITAL, Class - 42 vide registration No.1551501 dated 20.04.2007 for Medical Science in Hospital, Heart Institute, Pharmacy, Healthcare, Specialty Hospital, Research Institute.
It is further averred that the plaintiff was originally incorporated as U G Hospital 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 pending with the Trade Mark Registry. Plaintiff is the TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 4 of 21 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 provided by the plaintiff under the trade name METRO, the same is widely publicized and is generating progressing 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, 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.
It is also claimed that plaintiff is earning revenues after incurring large chunk on advertising and promotional expenses and from the year 199798 till the year of filing of suit plaintiff generating huge revenue continuously to the tune of Rs.11,96,84,78,994/ as depicted in para No.12 of plaint. It is also averred that from a written statement filed in TM No.08/2013 filed by plaintiff TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 5 of 21 herein, plaintiff came to know about defendant No.1 namely Metro International Cardiac Centre and thereafter, upon an online search for defendant No.1, plaintiff came across an article dated 27.09.2013 featuring in Indian Express Newspaper showing therein that defendant hospital would be inaugurated on 29.09.2013. It is averred further that defendant No.2 namely Metro International Cardiac Centre Pvt Ltd is a company registered under the Companies Act, 1956 having its registered office at 97, Sydenhams Road, Periamet, Chennai, Tamil Nadu - 600
003. The case of the plaintiff is based on the premise that plaintiff is not only the prior registered trademark holder, but is also the prior user of the mark METRO. It is further averred that unauthorise use of mark METRO which is an essential feature of plaintiff's registered trade marks by the defendants amounts to infringement of trade mark registration No.1551499, 1551500 & 1551501 of plaintiff for which defendant is liable for a criminal action under Section 103 and 104 of the Act. It is alleged that by using the name METRO the defendants are encashing upon the goodwill and reputation of plaintiff by representing to the consumers that the services are being offered by the plaintiff and same amounts to misappropriation of goodwill and reputation of trademark of METRO which is registered in the name of plaintiff.
3. The claim of plaintiff has been contested by the defendants by filing a joint written statement and reply to instant application wherein a preliminary objection regarding maintainability of suit has been taken on the ground that plaintiff in its present name is not registered trade mark owner. It is the case of plaintiff that their application for change of name from UG Hospital Private Limited to present name is still pending with concerned authority. It is also claimed that defendant No.2 was incorporated in the year 2006 that is prior to TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 6 of 21 filing of application for trade mark registration by plaintiff in the year 2007 and defendants are using the trade name Metro since year 1977 uninterruptedly. The defendants are using the word Metro since year 1977 in Hotel business and since one of the directors of defendant No.2 is a reputed cardiologist in South India, they expended their family business of Hotels in the year 2006 and created defendant No.2. It is also claimed that plaintiff is using Metro with other words for its different hospitals. It is also claimed that plaintiff is strictly confined to NCR and North India and has neither started nor indicated any plans to start or commence operations in other States including South India. It is also claimed that use of trade name 'Metro' by defendants is not malafide as it can be traced back to the use by the promoters of defendants for more than 36 years for hotel business.
4. I have considered the rival contentions of both learned counsels appearing for parties and perused the entire record.
5. Learned counsel for plaintiff has argued that objection taken by defendant regarding plaintiff's locus is totally untenable as request for recordal of assignee as a subsequent proprietor is a mere formality and does not preclude assignee from enforcing trade mark against infringement. In this regard, learned counsel relied upon the judgment of Hon'ble High Court of Delhi in 2009 (39) PTC 347 Delhi and 2006 (32) PTC 733 Delhi. However, during the course of arguments, learned counsel for defendant, did not press the aforesaid objection regarding locus of plaintiff, hence considering the law cited by from plaintiff's side, Court is satisfied regarding maintainability of claim of plaintiff.
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6. The second limb of arguments advanced on behalf of plaintiff is that even prior to registration of trade marks of plaintiff vide T M Nos. 1551499, 1551500 & 1551501 in the year 2007, plaintiff had been extensively using said trade name METRO through chain of hospitals run under the name of Metro group of Hospital and by its uninterrupted continuous use, the word METRO has attained distinctiveness and is associated with business of plaintiff which is also evident from the huge revenues plaintiff has been generating since year 1997. The revenue of Rs.5,40,06,054/ earned and promotional expenses incurred on advertisement and publicity to the tune of Rs.3,10,184/ in the year 199798 got increased to Rs.105,36,61,287 and Rs.36,44,840 respectively in the year 200607. It is further averred that since the plaintiff's brand name METRO has attained secondary significance and distinctiveness as indicative of source and origin of medical and hospital services provided by the plaintiff during the long period of about a decade, plaintiff in order to get a statutory protection of its trade name, got it registered under registration No.1551499, 1551500 & 1551501 in the year 2007.
7. Learned counsel further argued that action for infringement under Section 29 of the Act is a statutory remedy conferred on registered proprietors of a registered trade mark who get an exclusive right to use such trademark, in relation to goods or services in respect of which trade mark is registered. It is further argued that plaintiff has placed on record various documentary proof such as various newspaper reports, articles, certification of accreditation, reports regarding revenue generated by plaintiff in order to show the reputation and goodwill earned by plaintiff over the years. In support of his above contention, learned counsel has relied upon various judgments which shall be dealt with at TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 8 of 21 apposite stage in this order.
8. Refuting the aforesaid argument of plaintiff, learned counsel appearing on behalf of defendant has placed reliance upon the judgment of the Division Bench in SBL Ltd v Himalaya Drug Company : 1997 (17) PTC 540 (Delhi) (DB) wherein Hon'ble Division Bench held as under: "Nobody can claim exclusive right to use any generic word, abbreviation or acronym which has become publici jurisdiction."
9. Another decision in Rhizome Distilleries Pvt Ltd : Pernod Ricard SA France : 2010 (42) PTC 806 (Delhi) (DB) is also relied upon wherein it was held as under: "The jural message, therefore, is clear and unequivocal. If a party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will not be accorded exclusivity in the use of such word. At the most it may bring a challenge in the nature of passing off."
10. Learned counsel has argued that METRO is an abbreviation of word 'Metropolitan' which is a word of common parlance denoting a geographical origin and nobody can claim proprietary rights over the same. Countering the abovesaid argument, learned counsel for plaintiff argued that the word METRO has already acquired a distinctiveness and secondary significance so as to make it a well known mark within the meaning of proviso to Section 9 (1) of the Act, the protection under Section 29 of the Act is well available to the plaintiff. He further argued that the said order of Hon'ble Division Bench in SBL Ltd (supra) which was later on relied upon by Hon'ble High Court in subsequent judgment of TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 9 of 21 Rhizome Distilleries (supra) and in Schering Corporation & Ors v Alkem Laboratories Ltd : 2010 (42) PTC 772 (Delhi) (DB) was passed at an interim stage and in the same very case, while the case was finally disposed off, after evidence, a contrary view was taken by Hon'ble Division Bench while reversing the finding of learned Single Judge who had dismissed the plaintiff's suit. It is further argued that for purpose of application of ratio, only the final judgment passed by the Division Bench in the Himalaya Drug Company v M/s SBL Ltd :
2013 (53) PTC (Delhi) can be relied upon.
11. Learned counsel for plaintiff further argued that in case of infringement of trade mark, rule is that interim injunction should follow. In support of said arguments, he placed reliance on following case laws where Courts have passed injunction orders even in respect of generic and descriptive words:
a) Ishi Khosla v Anil Aggarwal & Ors : (whole food) 2007 (34) PTC 370 (Delhi);
b) Midas Hygiene Industries v Sudhir Bhatia : (2004) 3 SCC 90;
c) Sunder Nagar Association Regd v Welfare Cultural Club & Ors :
1995 (15) PTC 270 (Delhi)
d) Info Edge (India) Pvt ltd : Shailesh Gupta : 2002 (24) PTC 355 (Delhi);
e) M/s Sohan Lal Nem Chand Jain v/s Trident Group & Ors :
2012 (49) PTC 015 (Delhi);
f) SBL Ltd v Himalayas Drug Company : 2013(53) PTC (Delhi).
12. The third limb of arguments raised by learned counsel for plaintiff is that there is no iota of material placed on record from the defendant's side to show that they are the honest and bonafide concurrent user of trade name TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 10 of 21 METRO. He placed reliance on decision Preatyush Kumar Jena & Ors : New Bakery (Bapuji) Pvt ltd : 2009 (40) PTC 442 Cal (DB) wherein it was held that concurrent user can be protected only if it is honest concurrent trade user.
Learned counsel for plaintiff has submitted that in the instant case, defendants had started using name METRO in the field of medical services only in the year 2013 when they inaugurated hospital in the name of defendant No.2 in Calicut at Kerala.
13. I have considered the respective submissions of learned counsel appearing from both sides and also carefully gone through the written submissions and supporting case law placed on record by them.
14. In the instant case, plaintiff's claim appear to be based on the premise that plaintiff's trademark METRO which for the first time was used by plaintiff in the year 1997, by its continuous use over the years had already acquired distinctive character before the plaintiff got it registered in the year 2007, and therefore, it is a well known mark within the meaning of proviso to Section 9 (1) of the Act, which reads as under: "9. Absolute grounds for refusal of registration : (1)The trade marks
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intend purpose, values, geographical origin or time of production of the goods or rendering of the service or other characterstics of the goods or service;
(c) which consist exclusively of marks or indications which have TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 11 of 21 become customary in the current language or in the bona fine and established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a wellknown trade mark."
15. It is further argued on behalf of plaintiff that by the time plaintiff applied for registration of trade name / mark METRO in the year 2007, the name had already become a well known mark because of its extensive and continuous use in multifarious medical services for more than 10 years. It has earned lot of goodwill and reputation and came to be recognized and associated only with the plaintiff.
16. In Rhizome Distilleries (supra) it was held that registration of trademark is always susceptible to various challenges as enunciated in T M Act and therefore, unless there is strong reason in favour of plaintiff, courts should refrain from passing interim injunction.
As per the case of defendants, they have been using word METRO in their hotel business since the year 1977 uninterruptedly and since one of the directors of defendant No.2 is a reputed cardiologist in South India, they expended their family business of Hotels and in the year 2006, defendant No.2 Metro International Cardiac Pvt Ltd, was created by getting it incorporated under Companies Act. Defendants have also placed on record certain documents to show that they have been using word METRO for their hotels business which they have been running under name and style of Metro Hotels ever since the year 1977.
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17. Here, we cannot lose sight of the fact that defendants have been using the trade name METRO, though in different areas of services, since 1977 and must have also spent substantial amount in bringing up their business under trade style as METRO and in order to popularize their trade name, they must have put in hard labour and investment and painstakingly built a goodwill in the word METRO. And even in the area of medical services, defendants entered in the year 2006 by incorporating defendant No.2 under Companies Act, 1956 with name Metro International Cardiac Centre Pvt Ltd.
18. In the aforementioned facts and circumstances, it cannot be said that defendant have emerged in the market of medical services with trade name METRO only after registration of plaintiff's trade mark in the year 2007. As is evident from the record, defendant No.2 i.e. Metro International Cardiac Pvt Ltd was incorporated in the year 2006 i.e. prior to registration of plaintiff's mark. Furthermore, it is also not that both parties are operating in the same area or targeting same section of people. Defendants here are operating their business in South Indian states like Tamil Nadu and Kerala whereas plaintiff is operating its business in North Indian States like Delhi, UP, Haryana, Gujarat, and Uttarkhand. In such circumstances there was remote possibility of defendants having come to know that plaintiff is also using same trade mark.
It is also worthwhile to note that despite having used trade name METRO in various fields of services for more than four decades, defendants never applied for its registration under the Act as the defendant honestly believed that METRO is a generic word falling in the relem of publici juris and is not registrable in view of bar of Section 9(1) of the Act.
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19. In this regard, I am of the view that even Section 30 & 34 of the Act would also come in aid to the defendants. As per Section 30(1) of the Act, nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods and services as those of the proprietor provided the use:
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
Here, Section 30(2) (a) of the Act is also relevant for the purposes of this case and same reads as under: "(2) A registered trade mark is not infringed where
(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;
Hence, it is clear that any one whose trade mark is registered under the Act becomes entitled as of right to use of that trade mark exclusively, subject to certain exceptions and one of these exceptions is being enacted in Section 34 which corresponds to Section 33 of the Trade and Merchandise Mark Act, 1958 and now covers services also. Section 34 of the Act reads as under: "34. Saving for vested rights: Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person or a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior
(a) to the use of firstmentioned trade mark in relation to those TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 14 of 21 goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of resignation of the firstmentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark."
As observed by the Delhi High Court in Vikas Makhija v Bengal Phenyle & Allied Products Pvt Ltd : 2001 PTC 612 (Delhi) that Section (Section 33 of 1958 Act) confers absolute protection or immunity to a defendant who is able to prove or establish continuous user prior to the date of registration of the trade mark of the plaintiff, who is seeking an order of injunction against him.
20. Learned counsel for plaintiff has placed a strong reliance on the judgment of Hon'ble Division Bench in Himalaya Drug Company (supra) wherein after long contest of more than ten years, suit was decreed in favour of plaintiff. I have carefully gone through the judgment which in my view is distinguishable on the facts in as much as defendant in said case had throughout taken the stand that LIV is a generic word and no proprietary rights can be claimed therein, whereas on the contrary defendant itself in order to claim statutory protection, applied for registration of trade mark LIVT, which led the Court to conclude that defendant is not a honest and bonafide concurrent user of the trademark. Furthermore, the test to be applied to adjudge the violation of trade mark may not be at par with the case involving nonmedicinal product or in case of violation of mark in respect of services. In that case of 'LIV52', the drug LIV52 was sold through plaintiff's 500 stockist throughout the country that too without medical prescription. Here, I find force in the argument of learned TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 15 of 21 counsel for defendant that locals of parties in the instant case are far off, few States in North India and a remote city in South India. The customers being intelligent patient seeking specialty cardiac treatment are unlikely to be misled in believing that both centres are run by same entity.
21. It will not be out of place to mention here that specific intent and purpose of the trade mark legislation is the protection of trade and consumer against dishonest adoption of another's well known trademark with the intention of capitalising on the attached reputation and goodwill. The principle which thus applies for consideration of plaintiff's application for injunction based on trade mark infringement is premised on the public interest in addition to loss and damage which may result to plaintiff by offending act of defendant. To the cases on this subject, the off quoted proposition that each case was decided on its own facts is peculiarly applicable.
22. Plaintiff has also placed reliance on many other judgments. In Ishi Khosla (supra), matter related to passing off action and defendant having himself applied for the trade mark registration was held to be not entitled to allege that trade mark is generic. Reliance is placed on Midas Hygiene (supra) in support of the argument that in case of infringement of trademark, injunction as a rule must follow. But in said very case, Court further held that grant of injunction becomes necessary if it prima facie appears that adoption of mark by defendant itself is dishonest. The decision in Sunder Nagar Diwali Mela (supra)is also not applicable in as much as in said case the action was brought before Hon'ble High Court for passing off action as both the parties were using unregistered marks.
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23. In Inforfdge India (supra) both parties were holder of registered domain name,defendant got his mark registered after two years of plaintiff registering its domain name. In said judgment, it was held that a definite peculiarity was attached to the domain name/trade name as plaintiff has adopted a Hindi word with English script, therefore, a distinctiveness was attributable to said domain name. But, no reasonable explanation was given by defendant for adopting such a similar domain name by employing minor misspelling of plaintiff's mark which was held to be indicative of dishonest intention of defendant to take advantage of goodwill and reputation of plaintiff's domain name.
Even in M/s Sohan Lal (supra) user of mark by defendant was held to be dishonest and not bonafide. In this decision, the plea of 'honest and concurrent user was rejected for two following reasons: "1. Even the defendants had applied for registration of the trademark hence, was not allowed to agitate that trade mark was generic or publici juris.
2. Plaintiffs were buying paper from defendants and defendants were well aware that plaintiffs were registered proprietor of trade name."
24. Plaintiff has also relied upon one more decision of Hon'ble Apex Court rendered in T V Venugopal v Ushodaya Enterprises Ltd & Ors : (2011) 4 SCC 85 wherein use of mark was restricted to State of Andhra Pradesh and hence defendant was restrained to use said mark in Andhra Pradesh. It was further held by the Hon'ble Apex Court that reputation of mark can be restricted to a particular territory, to a particular category of goods or services, to a particular linguistic section of public etc. But, facts are distinguishable even in said TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 17 of 21 judgment as identical trade marks of both the parties were registered for different products.
25. After having discussed all the decisions relied upon in this case, with all due respect to all the decisions of Hon'ble High Courts and Hon'ble Apex Court, I have to conclude that none of these decisions are of any help to the case of the plaintiff. As instant matter of plaintiff is based on a totally different premise, as plaintiff has not disputed that the mark METRO is a generic word, but is taking protection of proviso to the Section 9 (1) of the Act or in alternate the protection of Section 32 of the Act. But again, whether or not plaintiff's mark has acquired secondary significance is a matter of trial. Furthermore, from the over all facts and circumstances and the material placed on record, no dishonest intentions can be attributed to defendants for concurrent use of the mark which they have been using for hotel business since four decades and even in the field of medical services, they entered one year prior to the registration of plaintiff's trade mark.
26. One more material contention raised on behalf of plaintiff is that defendants in the WS has nowhere challenged the validity of plaintiff's mark nor they have till date, applied for rectification of register before the Appellate Board. Therefore, they cannot be allowed to agitate that plaintiff's mark has not attained any secondary significance or on that account plaintiff is not entitled to any injunction. In this regard, learned counsel placed reliance on the observation of Hon'ble Division Bench rendered in Himalaya Drug Company v M/s SBL Ltd :
2013 (53) PTC (Delhi) wherein it was held as under: "The learned Single Judge has not considered the fact that in the TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 18 of 21 absence of any cancellation petition filed by the defendant, the plea of generic word or publici juris was not available to the defendant as the same was contrary to the statutory provision of exclusive use conferred under Section 28 and right to relief arising for infringement thereof conferred under Section 29 of the Trade and Merchandise Act, 1958."
27. Per contra, learned counsel appearing on behalf of defendant submitted that unlike the Patent Act, 1970 where Section 64 and 107 provides for raising invalidity of a patent as a defence by way of a counter claim requiring payments of counter fees, the T M Act,1999 does not have any similar provision. He further argued that Section 124 provides for stay of the proceedings where the validity of registration is questioned, but it does not stipulate that a challenge to registration as a precondition for raising a defence in an infringement suit. It is submitted further that it is clear from Section 124 (5) which states that the proceedings under the Section shall not effect the powers of the Court to pass interim orders. To buttress this contention, he also relied upon the Division Bench judgment of Hon'ble Delhi High Court passed in Schering Corporation (supra) wherein it was observed as under: "Merely because the said trademarks may be valid and legally registered and their registrations may not contravene Section of the Act, it does not necessarily lead to the conclusion that the appellants would be entitled to claim proprietary over a word fragment of their marks, particularly when the said word fragment is publici juris for a generic compound TEMOZOLOMIDE, and is used descriptively for the active chemical compound in the appellants products and is descriptive in nature."
28. I have carefully gone through both the judgments cited by learned counsels for parties in support of their arguments. Careful perusal of the judgment TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 19 of 21 passed by the Hon'ble Division Bench in Himalaya Drug (supra) shows that trademark in said case was registered under the old Act of 1958 wherein under Section 32 of said Act, a conclusiveness was attached to the validity of the mark after the expiry of the seven years from the date of said registration; whereas in the new Act of 1999 no such conclusiveness is attached with regard to the validity of the trademark which is clear from Section 32 of the new Act of 1999, which reads as under: "32. Protection of registration on ground of distinctiveness in certain cases. Where a trade mark is registered in breach of sub section (1) of Section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered."
In order to further clarify, I deem it appropriate to reproduce the relevant portion of Himalaya Drug (supra) where the Hon'ble Court dealt with said aspect of the matter which reads as under: "Section 32 provides that subject to the provision of Section 35 and 46, in all legal proceedings relating to a trade mark registered in Part A of the register the original registration of the trade mark shall, after the expiry of seven years from the date of such registration, be taken as valid in all respects unless it is proved that the original registration was obtained by fraud and it was contrary to Section 11 and on the date of commencement of the proceedings, the mark was not distinctive of the goods.
The said provisions of the registration of the trade mark and conclusiveness of the registration unless based on some specific grounds is mandate of the statute and ought to be respected. The said provision of conclusiveness of the registration of the trade mark after seven years under Section 32 of the Act was present under the old Act and the same very provision is not couched in same form under the New Trade Mark Act 1999. The resultant TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 20 of 21 effect of the same would be that the registrations done under the old Act are conclusive in all legal proceedings after seven years and the same cannot be lightly questioned on the basis of the ground lack of distinctiveness character."
Hence, in said facts and circumstances, I feel convinced with the argument of learned counsel for defendants as there is no statutory bar from raising said defence before the Court in an action for infringement. Even learned counsel for plaintiff failed to show any judgment to the contrary.
29. In Gujarat Bottling Co Ltd & Ors : Coca Cola & Ors : (1195) (5) SCC 45, it was held by the Hon'ble Apex Court that injunction being equitable relief, the party approaching the Court for grant of it and party opposing it must be fair and honest and in absence of it in respect of one party, the other party could be given the relief. Even in Naukari.com case, it was held that a Court discharging equitable justice should come in aid and protection of honest user as opposed to dishonest user acting on bad faith.
30. Having regard to the above detailed discussion, I am of the opinion that plaintiff has no prima facie case to seek interim injunction against the defendant to restrain them from using trade mark/name METRO in respect of medical services. The totality of facts and circumstances, nowhere suggest that defendants are dishonest concurrent user of trademark METRO. Whether plaintiff's mark METRO has or has not acquired a secondary significance and distinctiveness is a matter of trial and till the plaintiff proves it on record by leading evidence, defendants cannot be injuncted to use said trade name especially when both the parties are running their respective hospitals in far off areas viz Northern and Southern States of India and there is remote possibility of TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors Page 21 of 21 defendants encashing on reputation and goodwill of plaintiff as same prima facie appears to be restricted only to Northern States of India.
31. In view of above, instant application of plaintiff under Order 39 Rule 1 & 2 CPC stands dismissed.
32. Before parting with instant order it is made clear that nothing observed herein shall tantamount to an expression of opinion on the merits of this case.
(Sunena Sharma) Addl. Distt Judge04/SouthEast Saket Courts Complex, New Delhi Announced & dictated in the Open Court on 04.02.2015.
TM No.01/2014 Metro Institute of Medical Sciences Pvt Ltd v Metro International Cardiac Centre & Ors