Delhi High Court
Max Healthcare Institute Ltd vs Sahrudya Health Care Pvt. Ltd on 4 July, 2019
Equivalent citations: AIRONLINE 2019 DEL 968, 2019 (6) ADR 114 (2019) 262 DLT 59, (2019) 262 DLT 59
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 4th July, 2019
+ CS(COMM) NO.866/2016
MAX HEALTHCARE INSTITUTE LTD. ..... Plaintiff
Through: Mr. Sandeep Sethi, Sr. Adv. with Mr.
Manish Dhir, Adv.
Versus
SAHRUDYA HEALTH CARE PVT. LTD. .....Defendant
Through: Mr. Sudhir Chandra, Sr. Adv. with
Ms. Swathi Sukumar & Ms. Surya
Rajappan, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.8439/2016 (of the plaintiff under Order XXXIX Rules 1 and 2 of
the Code of Civil Procedure, 1908)
1. The plaintiff instituted this suit, to (i) restrain the defendant from
providing any services under the name MAXCURE HOSPITAL /
MAXKURE / MAXCURE MEDICITI or any other mark / name which is a
fraudulent or obvious imitation of or deceptively or confusingly similar to
the plaintiff's trade mark MAX / MAX HOSPITAL; (ii) restrain the
defendant from, by using the name MAXCURE HOSPITAL / MAXKURE
/ MAXCURE MEDICITI, pass off its services / projects, as that of the
plaintiff; and, (iii) for ancillary reliefs.
2. The suit came up first before this Court on 20 th July, 2016 when the
defendant, being on caveat, appeared. The plaintiff on that date gave up the
relief claimed in the suit for passing off and confined the suit to the relief of
infringement of trade mark. The suit was entertained and summons thereof
CS(COMM) No.866/2016 Page 1 of 26
and notice of the application for interim relief issued and the statement of
the defendant, that it did not propose to launch any fresh operations under
the mark 'MAXCURE' or 'MAXKURE', was recorded and the defendant
ordered to be bound therewith.
3. Pleadings in the suit have been completed. The defendant applied
under Order VII Rule 11 of the CPC for rejection of the plaint on the
ground of non-joinder of necessary parties and non-disclosure of vital facts.
The said application was dismissed vide judgment dated 29 th November,
2017. The senior counsels were heard on the application for interim relief
on 6th December, 2017, 20th December, 2017, 10th January, 2018 and 19th
February, 2018 and orders reserved.
4. It is inter alia the case of the plaintiff, that (i) the trade mark 'MAX'
has been owned and used by Max Financial Services Ltd. (MFSL), MFSL
group of companies, Max India and Max India group of companies, in
respect of goods and services falling under various categories, and has been
in use not just as a trade mark but also as a trade name for various business
ventures; mention is made of Max Life Insurance Co. Ltd., Max Bupa
Health Insurance Co. Ltd., Max Healthcare Institute Ltd. i.e. the plaintiff,
Max Speciality Films Ltd., Hutchison Max Telecom Pvt. Ltd., Comsat Max
Pvt. Ltd., Max - GB Pvt. Ltd., Max Atotech Pvt. Ltd. and Avnet Max Pvt.
Ltd.; (ii) the plaintiff is a joint venture between Max India Ltd. and Life
Healthcare group, which is a premier South African healthcare service
provider; (iii) the existing healthcare business of the plaintiff was
transferred by MFSL to Max India in pursuance of a Scheme of Demerger;
(iv) the plaintiff started its operations in India in 2000 as a division of
CS(COMM) No.866/2016 Page 2 of 26
MFSL and since June, 2002, the plaintiff was formed as an independent
company; (v) since the year 2000, the plaintiff has opened nearly fourteen
hospitals / healthcare centres in Delhi, Gurgaon, Mohali, Bathinda,
Dehradun and Greater Noida; (vi) the plaintiff also organizes regular health
camps and health awareness / check up programmes in various parts of the
country and abroad; (vii) the word 'MAX' has come to be closely
associated with the plaintiff and the plaintiff has various registrations of
MAX HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR.
MAX CLINIC and MAX HEALTHSTAFF, all under Class 42 and dated
between 2003-2005; (viii) the plaintiff, just prior to the institution of the
suit, was made aware of the use of the mark / name MAXCURE
HOSPITAL / MAXKURE by the defendant and on making investigations
learnt that the defendant has also adopted MAXCURE MEDICITI, which is
deceptively similar to plaintiff's trade mark; (ix) the defendant is providing
full fledged healthcare services; (x) it was further learnt that the marks
MAXCURE HOSPITAL / MAXKURE and MAXCURE MEDICITI were
recently adopted by the defendant and the defendant were earlier running
the said hospitals / health facilities under the name of Sunshine Hospital
and Mediciti Hospitals; (xi) the plaintiff has also learnt of the applications
filed by the defendant in June - July, 2015 for registration of MAXCURE /
MAXKURE; (xii) the defendant has also registered a domain name
www.maxcurehospitals.com which is similar to the plaintiff's trade mark
and the said domain name has also been registered only on 29 th May, 2015;
(xiii) adoption by the defendant of MAXCURE HOSPITAL / MAXKURE
and MAXCURE MEDICITI is dishonest; (xiv) the defendant in response to
the cease and desist notice refused to comply, claiming the mark to be
CS(COMM) No.866/2016 Page 3 of 26
different and also suggested amicable settlement; and, (xv) attempts of the
plaintiff at settlement did not bear fruit.
5. The defendant contested the suit pleading, that (a) as per the
averments in the plaint, MAX INDIA is the owner of the goodwill in the
trade mark and the suit is bad for non-joinder of MAX INDIA; (b) the
defendant was incorporated in Hyderabad, Telangana, in the year 2011 and
is a pioneer in healthcare services in South India; (c) within a short span of
five years, the defendant's operations have grown into six hospitals spread
throughout Telangana and part of Andhra Pradesh; (d) the defendant has
invested considerable sum in building the brand MAXCURE / MAXKURE
and MAXCURE MEDICITI; (e) there are significant difference between
the trade mark of the plaintiff and the defendant; (f) the defendant has not
used and not sought registration of MAX as a standalone mark but as part
of a larger phrase and have not sought protection over the over the word
'MAX' itself; the defendant's marks are MAXCURE and MAXKURE; (g)
visually also, the marks of the defendant are distinct from that of the
plaintiff; the defendants' marks show a stylized 'wing' logo in a
combination of red and maroon, below the words MAXCURE or
MAXKURE, again in a combination of red and maroon; on the other hand,
the plaintiff's mark uses a light turquoise medical cross with two human
hands reaching towards the center of the cross next to the words MAX
HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR. MAX
CLINIC, MAX HEALTHSTAFF, all either completely in navy blue or in a
combination of navy blue and orange; (h) all the marks of the plaintiff are
label marks; (i) trade mark registration of a label mark only grants rights
CS(COMM) No.866/2016 Page 4 of 26
over the mark as a whole and does not in itself provide the proprietor with
the proprietary rights over the words in the label; (j) MAX is only a small
part of the mark of the plaintiff; (k) registrations of the plaintiff have been
wrongly granted; (l) MAX cannot be considered to be a unique word by
itself and is merely an abbreviation of the dictionary word 'maximum'; (m)
MAX is used in English phases to denote that an action is being performed
to maximum capacity; (n) to that extent maximum is a laudatory term
considered to be a term that designates the quality of service being
provided; (o) a proprietary right cannot be granted over a term which is
incapable of distinguishing the goods and services to which it is sought to
be applied; (p) search results of the database of the Indian Trademark
Registry shows that 116 applications have been made in Class 44,
pertaining to medical services, for wordmarks or device marks
incorporating the word MAX and of which 14 have been registered; (q) the
plaintiff has no registered marks in Class 44 pertaining to medical services;
(r) 385 applications have been made in Class 42 pertaining to scientific and
technological services, for word marks or device marks incorporating the
word MAX, of which 129 have been registered and 47 (excluding those
applied for by the plaintiff) pertain to medical services as per their
description; (s) vast majority of the plaintiff's hospitals are located in the
National Capital Region; the defendant's hospitals on the other hand are
spread throughout states of Andhra Pradesh and Telangana; (t) while the
plaintiff's hospitals cater to the upper middle class and elite segment of
society, the defendant's hospitals cater to diverse income categories; and,
(u) the defendant, since 2015 changed its name from Sunshine Super
CS(COMM) No.866/2016 Page 5 of 26
Specialty Institute to MAXCURE, to create a new and unique brand
identity for itself after the end of its joint venture relationship.
6. The plaintiff has filed a replication inter alia pleading that (i) the
plaintiff's hospitals are providing medical facilities not only to patients
from the entire country but also from abroad; (ii) the defendant is
misconstruing the contents of the plaint to plead that the plaintiff is only the
owner of the trade mark and not of the goodwill attached thereto; (iii)
though the defendant on 20th July, 2016 stated that it did not propose to
launch any fresh operations under the mark MAXCURE or MAXKURE but
in the written statement has pleaded in contravention thereof; (iv) the
plaintiff has lodged opposition to the applications of the defendant for
registration of trade marks; (v) there is no difference between the trade
mark of the plaintiff and the defendant; the essential feature of the trade
marks is common; (vi) the general public is likely to associate the hospitals
and services of the defendant as that of the plaintiff; (vii) the adoption and
usage of the word / mark MAX by the promoters of the plaintiff itself took
more than 35 years and has fame and reputation in various areas of business
and commerce including healthcare; (viii) the defendant is estopped from
pleading non-registrability of the mark of the plaintiff, having itself applied
for registration; (ix) the other entities who have applied for or obtained
registration of marks are either in other fields of activity or their
applications have been opposed by the plaintiff and several of them have
already abandoned their applications; and, (x) even otherwise, mere
presence of third party marks on the register does not show actual usage.
CS(COMM) No.866/2016 Page 6 of 26
7. The senior counsel for the plaintiff has contended that (i) while the
hospitals of the plaintiff, since inception in the year 2000, have MAX as
their name / mark, the hospitals of the defendant till 2015-16 were known
as Sunshine Hospital and the defendant adopted MAX only in 2015-16;
and, (ii) the defendant could not be unaware of the hospitals of the plaintiff.
8. The senior counsel for the defendant has argued that, (I) the plaintiff
has concealed that the word MAX per se has not been registered in favour
of the plaintiff and that the application of the plaintiff for registration
thereof is pending; (II) the plaintiff has not filed the legal documents of
registration of its mark and only from such legal documents it can be
known whether there is any disclaimer; (III) all registrations are of a device
/ label mark; (IV) though the plaintiff may perhaps have a case for passing
off, but certainly not of infringement; (V) MAX is an abbreviation of
'maximum', which is an adjective and not registrable; (VI) others in
Hyderabad have been using the word MAX since prior to the year 2000;
(VII) the label mark of the defendant is totally different from the label mark
of the plaintiff; (VIII) the plaintiff has not claimed the relief of infringement
of MAX HEALTHCARE and claims the reliefs only of MAX, but of which
the plaintiff does not hold any registration; (IX) the plaintiff thus does not
have any prima facie case; (X) what has to be compared are two labels and
not the words on the label; (XI) the test of infringement is not in the usage
of the mark but on paper; reference is made to Vardhman Buildtech Pvt.
Ltd. Vs. Vardhman Properties Ltd. 233 (2016) DLT 25 (DB) to contend
that the plaintiff therein holding registration of a label mark VARDHMAN
PLAZA was refused interim injunction against those using VARDHMAN
CS(COMM) No.866/2016 Page 7 of 26
as part of their corporate name and also as part of their logo, reasoning that
the label mark is to be taken as a whole and matter which is common to the
trade or is otherwise of a non-distinctive character is not be considered;
(XII) the defendant, on 5th June, 2017 ceased to be part of the Sunshine
Group and thus adopted the new name of MAXCURE / MAXKURE and
MAXCURE MEDICITI; (XIII) all registrations of the plaintiff are post
coming into force of the Trademarks Act, 1999; (XIV) Section 17 of the
1999 Act provides that where a trade mark consists of several matters, its
registration shall confer on the proprietor exclusive right to the use of the
trade mark as a whole; there was no equivalent of Section 17 under the
Trade and Merchandise Marks Act, 1958 in force prior thereto; (XV)
reliance is placed on Ruston & Hornsby Ltd. VS. The Zamindara
Engineering Co. 1969 (2) SCC 727 qua the difference between an
infringement action and a passing off action; (XVI) it is not even the prayer
of the plaintiff in the plaint that the device / label mark of the defendant is
same as the device / label mark of the plaintiff; (XVII) Max India Pvt. Ltd.
is a necessary party to the present suit and has applied for registration of the
word mark MAX and has not joined as a plaintiff because does not want
ruling that MAX is not registrable; (XVIII) attention is invited to page 978
(983) of the defendant's documents, being an Information Memorandum of
Max India Pvt. Ltd., claiming use of the trade mark MAX and its associated
logos and disclosing that under the scheme of arrangement, Max India Pvt.
Ltd. is required to grant right to use the MAX trade marks to MFSL and
MVIL royalty free and by way of licence; (XIX) attention is also invited to
page 990 of the defendants documents, being an application filed by Max
India Ltd. on 17th May, 1996 for registration of MAX as a word mark on
CS(COMM) No.866/2016 Page 8 of 26
proposed to be used basis and the objection raised by the Registrar of Trade
Marks thereto at page 991 and it is contended that the said application was
abandoned (the senior counsel for the plaintiff at this stage drew attention to
page 992 to show that the registration of the word MAX in favour of the
Max India Ltd. in Class 5); (XX) the operations of the defendant are only in
Andhra Pradesh and Telangana and which fact has again been concealed;
(XXI) the following factual issues arise in the present case:
(i) Whether a suit for infringement of a device mark is
maintainable against a defendant who uses a word mark
allegedly forming part thereof, where no separate application
has been filed for the said part by the plaintiff as required by
Section 17 of the Trade Marks Act, 1999?
(ii) Without prejudice to Issue (i), if the suit filed seeks relief in
respect of a word mark, whether it can be maintainable if the
alleged registered proprietor of the word mark is not a party to
the suit, in terms of Sections 52 and 53 of the Trade Marks
Act, 1999?
(XXII) as per the Information Memorandum of Max India Pvt. Ltd., the
plaintiff is merely a permitted user of MAX and not entitled to sue for
infringement thereof; (XXIII) the plaintiff is proprietor of the device / label
mark only and if makes out a case of infringement thereof, can maintain the
suit; reliance is placed on P.K. Sen Vs. Exxon Mobile Corporation 236
(2017) DLT 333 (DB) but which is on the aspect of territorial jurisdiction;
(XXIV) in paragraph 10 of the judgment dated 29 th November, 2017 of
CS(COMM) No.866/2016 Page 9 of 26
dismissal of the application of the defendant under Order VII Rule 11 of the
CPC, it was held that at that stage only the plaint could be seen but now at
this stage, the defence of the defendant can also be seen and which does not
show the plaintiff to be having any cause of action; (XXV) Kaviraj Pandit
Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965
SC 980 is of prior to the 1999 Act when Section 17 of the Trademarks Act
did not exist; (XXVI) trade mark is essentially territorial in nature; (XXVII)
the plaintiff has not made out any case of suffering irreparable injury;
(XXVIII) MAX is not distinctive of the plaintiff; (XXIX) no educated
person will get confused; (XXX) the defendant, at pages 943 and 944 of its
documents, has listed other registrations using the word MAX; (XXXI)
when a person chooses to adopt a common word as its trade mark, it cannot
claim exclusivity till the word acquires a secondary meaning and which is a
matter of evidence; (XXXII) the defendants, since 2015 have acquired huge
popularity and will suffer irreparable loss if restrained during the pendency
of the suit; and, (XXXIII) the defendants are willing to make a statement
that they will use the mark only in South India and not in North India and
the defendants should be relieved from their undertaking.
9. The senior counsel for the plaintiff has contended that (a) the
plaintiff, since the institution of the suit, has also obtained other
registrations, registration whereof was pending at the time of institution of
the suit; (b) the plaintiff is admittedly prior user by fifteen years; (c) the
change effected by the defendant from Sunshine to MAX shows the intent
of the defendant to cash on the goodwill of the plaintiff; (d) MAX is a
CS(COMM) No.866/2016 Page 10 of 26
prominent part of the series of marks of the plaintiff; (e) reliance is placed
on:
(i) United Biotech Pvt. Ltd. Vs. Orchid Chemicals &
Pharmaceuticals Ltd. 2012 SCC OnLine Del 2942, where
though the mark ORZID was a label mark, the word mark
ORZID was found to be an essential feature thereof;
(ii) Parle Products (P) Ltd. Vs. J.P. & Co, Mysore AIR 1972 SC
1359, holding that marks are remembered rather by general
impressions or by some significant detail, than by any
photographic recollection of the whole and that variations in
detail might be supposed by customers who are already
acquainted with the mark, to have been made by the owners of
the trade mark for reasons of their own;
(iii) Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. Vs.
Shree Sita Chawal Udyog Mill 2010 (44) PTC 293 (Del),
holding that no one can copy an essential part or predominant
part of a trade mark and the benefit of prior use doctrine will
also be available to an essential/prominent/predominant part of
trade mark;
(iv) Laxmikant V. Patel Vs. Chetanbhat Shah 2002 (24) PTC 1
(SC), to contend that merely because the business of the
defendant was located at a distance from that of the plaintiff
was no ground to refuse injunction, and that the change
effected by the defendant from Sunshine to MAX is mala fide
CS(COMM) No.866/2016 Page 11 of 26
and also laying down that use of QSS- Muktajivan Colour Lab
amounted to passing off of Muktajivan Colour Lab,
Muktajivan being the distinctive element of the mark;
(v) Dabur India Ltd. Vs. Real Drinks Pvt. Ltd. 2014 (57) PTC
213 (Del), where interim injunction was granted to plaintiff
holding registration of Real Pineapple Juice Carton against
defendant using the word 'Real';
(vi) Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd.
2014 (58) PTC 136 (Del), to contend that MAX is not an
abbreviation of 'maximum';
(vii) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980, to contend
that once it is established that the defendant has adopted an
essential feature of the mark of the plaintiff, no further
evidence is required to establish infringement;
(viii) Paragraph 20 of the judgment dated 29th November, 2017 in
this suit, holding that MAX is the essential feature of the label
marks of the plaintiff;
and, (f) in Vardhman Buildtech Pvt. Ltd. supra, VARDHMAN was held to
be not an essential feature of the mark.
10. The senior counsel for the defendant, in sur-rejoinder contended that
(i) the suit has been confined to the ground of infringement only and the
judgments cited by the senior counsel for the plaintiff are relating to the
CS(COMM) No.866/2016 Page 12 of 26
ground of passing off; (ii) any observation in the judgment dismissing the
application under Order VII Rule 11 of the CPC is only in the context
thereof and is not relevant at this stage; (iii) the plaintiff has prayed for
permanent injunction restraining infringement of word mark and not of
infringement of a device / label mark; (iv) the plaintiff is not even
proprietor of the word mark MAX; (v) in fact the plaintiff, in the plaint has
not even pleaded being the prior user of the word mark MAX; the plaintiff,
even as prior user, is barred by Section 53 of the Act from suing for
infringement without impleading the proprietor of the mark viz. Max India
Pvt. Ltd; (vi) United Biotech Pvt. Ltd. supra cited by the senior counsel for
the plaintiff has been distinguished in Vardhman Buildtech Pvt. Ltd. supra;
(vii) Mex Switchgears Pvt. Ltd. supra was also not a case of label mark;
(viii) the present controversy is fully covered by Vardhman Buildtech Pvt.
Ltd. supra; (ix) Section 17 of the Act cannot be rendered meaningless; (x)
in fact the suit can be dismissed under Order XV of the CPC; and, (xi) Max
Vision Hospital has been in existence in Hyderabad since long.
11. Before proceeding to adjudicate, I may record that such elaborate
arguments having been made by the counsels, the suit itself can be disposed
of. The proposed issues handed over by the senior counsel for the
defendant also and as quoted above do not raise any disputed questions of
fact. However, since no consent thereto has been recorded in the orders
pursuant to which orders were reserved, I refrain from doing so.
12. No merit is found in any of the elaborate contentions of the senior
counsel for the defendant and the plaintiff is found entitled to interim
injunction. I herein below record my reasons therefor:
CS(COMM) No.866/2016 Page 13 of 26
A. First I have considered dehors the legalities, whether adoption
by the defendant, admittedly much after adoption by the
plaintiff, of the trade marks / trade name MAXCURE /
MAXKURE / MAXCURE MEDICITI, for the purposes of its
hospital and / or healthcare services, is likely to confuse public
at large and whether it is likely to result in the public at large
believing the hospital and healthcare services provided by the
defendant to be those of the plaintiff under the mark MAX
HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE,
DR. MAX CLINIC and MAX HEALTHSTAFF. I have not an
iota of doubt that the two marks are similar / deceptively
similar and are likely to cause confusion, resulting in the
hospital / healthcare services of the defendant being confused
by public at large and / or persons in need thereof as hospitals /
healthcare services of the plaintiff.
B. I now proceed to consider, whether notwithstanding the same,
a case of infringement under the Trademarks Act is made out.
Ordinarily, in the light of the conclusion aforesaid, the law
cannot be without remedy therefor and / or ought not to be
interpreted as having no cure for the purpose for which it has
been enacted. The argument of the senior counsel for the
defendant, of the remedy being in an action for passing off and
not in an action for infringement, assumes the statutory law of
trade mark, enacted to protect rights in trade marks and in
public interest of preventing consumers from being
CS(COMM) No.866/2016 Page 14 of 26
misrepresented / cheated, to be weaker than the common law
of trade marks whereunder an action for passing off lies. It
would be a travesty of law making and would render law
making into an ass (as echoed by Mr. Bumble in Oliver Twist),
if it were to be held that inspite of the trade marks of the
plaintiff being registered under the provisions of the
Trademarks Act, and the defendant also having applied for
registration of its trade mark, and inspite of the two trade
marks being similar / deceptively similar and having potential
of causing misrepresentation / cheating the public and
consumers, the remedy would be under the common law and
not the statutory law. I reiterate that statute laws cannot be so
rendered to make them toothless and weak, defeating the very
purpose of enactment thereof.
C. The first argument of the senior counsel for the defendant in
this context is of the plaintiff having sued for infringement of
word mark without having registration of word mark. (i)
Though undoubtedly the plaintiff in the prayer paragraph of
the plaint has referred to its trade mark as MAX / MAX
HOSPITAL, but the prayer paragraph of the plaint cannot be
read in isolation and the plaint has to be read as a whole. It
cannot be lost sight of that each advocate has his own style of
drafting. Maybe the counsel for the defendant, if had drafted
the plaint would have drafted it differently and in the prayer
paragraph also given full particulars of the trade mark. Once it
CS(COMM) No.866/2016 Page 15 of 26
is found that the plaintiff elsewhere in the plaint has described
its trade marks, the reference in the prayer paragraph of the
plaintiff's trade marks has to be with reference to the trade
marks of the plaintiff as described in paragraph 12 of the
plaint. The plaintiff thus cannot be accused of
misrepresentation or concealment of the fact that its
registration is of a label mark / device mark and not of a word
mark MAX / MAX HOSPITAL. (ii) The plaintiff in the
tabulation in paragraph 12 of the plaint, under the column
'Trademark', has described each of its registered mark and
from a bare perusal thereof it is clear that the registration is not
of a word mark but of a label / device mark inasmuch as each
of the marks is accompanied with the device of a medical cross
and anyone well versed in the subject of trade marks would
know thereform that the registrations claimed are of device /
label marks and not of word mark. (iii) Not only so, the
plaintiff along with the plaint at pages 24 to 33 of Part-IIIA file
has filed Certificates of Registrations held by it and which also
make it clear that the registrations are of a label / device mark
and not of a word mark. Thus on a reading of the entire plaint,
it is clear that the infringement claimed is of label / device
mark and not of word mark. (iv) The question of the plaintiff
misrepresenting with a view to take ex parte order behind the
back of the defendant also did not arise because the defendant
had served the plaintiff with a caveat and the plaintiff knew
that as per the rules of filing of the suit, the suit could not be
CS(COMM) No.866/2016 Page 16 of 26
listed without service of advance copy of the suit on the
defendant and that the defendant would be represented before
this Court when the suit was to be listed. The defendant was
indeed represented through the senior counsel on 20 th July,
2016 when the suit first came up before this Court. (v) The
plaintiff has sued for infringement of its label / device marks as
described in paragraph 12 of the plaint and grant / non-grant of
interim injunction is to be decided on the anvil thereof.
D. The argument of the Senior Counsel for the defendant, of the
plaintiff being not entitled to sue for infringement without
impleading Max India Ltd. is premised on para no.5 of the
plaint. However a reading of paras no.5 and 6 of the plaint do
not support the said contention. The registration certificate of
the marks with respect to which the suit is filed, show the
plaintiff as the registrant of the marks. Paras no.5 and 6 of the
plaint do not show Max India Ltd. to be the owner of the
goodwill in the marks.
E. MAX is not an abbreviation in English language of the word
'maximum' and can at best be said to be used in slang
language. It is also not as if the word MAX, in relation to
hospital and healthcare services, is a generic or a laudatory
word. Moreover, the plaintiff admittedly holds registration for
MAX in relation to hospital and healthcare services and it is
not in the jurisdiction of this Court to hold the registration to
have been wrongly granted. The exclusive jurisdiction therefor
CS(COMM) No.866/2016 Page 17 of 26
is with the Registrar of Trade Marks and / or with the
Intellectual Property Appellate Board (IPAB). The defendant
did not take any objection to registration sought by the plaintiff
of the label / device marks with the word MAX in relation to
hospital / healthcare services in the last 16 years since when
the marks of the plaintiff have been registered. On the
contrary, the defendant, also in the business of providing
hospital / healthcare services under the name of Sunshine,
when desirous of changing the said name, chose the word
MAX and also applied for registration of label / device marks
with the said word. The consistent view of this Court in
Automatic Electric Ltd. Vs. R.K. Dhawan (1999) 77 DLT
292, The Indians Hotel Company Ltd. Vs. Jiva Institute of
Vedic Science and Culture 2008 (37) PTC 468 (Del) (DB),
Anchor Health & Beauty Care Pvt. Ltd. Vs. Procter &
Gamble Manufacturing (Tianjin) Co. Ltd. 2014 SCC OnLine
Del 2968, appeal preferred whereagainst was dismissed vide
judgment reported as Procter & Gamble Manufacturing
(Tianjin) Co. Ltd. Vs. Anchor Health & Beauty Care Pvt.
Ltd. (2014) 211 DLT 466 (DB) and SLP(C) No.15928-
15929/2014 preferred whereagainst were dismissed on 3rd July,
2014, and Vega Auto Accessories (P) Ltd. Vs. S.K. Jain Bros
Helmet (I) Pvt. Ltd. 2018 SCC OnLine Del 9381 has been that
a defendant who has itself applied for registration of a mark is
stopped from contending the mark to be not registrable, when
CS(COMM) No.866/2016 Page 18 of 26
faced with an action for infringement. The said argument is
thus not available to the defendant.
F. The mere fact that others, also providing hospital / healthcare
services may be using the word MAX is no ground for
depriving the plaintiff of injunction against the defendant if
otherwise a case therefor is made out. I have in Sunil Mittal
Vs. Darzi On Call (2017) 242 DLT 62, Insecticides (India)
Ltd. Vs. Parijat Industries (India) Pvt. Ltd. (2018) 252 DLT
129, H&M Hennes & Mauritz AB Vs. HM Megabrands Pvt.
Ltd. 2018 SCC OnLine Del 9369 and Purshotam Keshwani
Vs. Nishant Mitrasen Mahimtura 2019 SCC OnLine Del
7392 held that the owner of a registered trade mark is not
expected to indulge in the business of litigation of suing each
and every person adopting the same / similar mark,
irrespective of impact thereof on the business of the plaintiff. It
is in the discretion of a plaintiff, whom to sue and whom not to
sue and merely because a plaintiff in a suit for infringement of
trade mark has not sued another, is no ground to defeat the suit
against the infringer against whom the plaintiff has chosen to
act.
G. That brings me to the star argument of the senior counsel for
the defendant, of the label / device mark of the plaintiff being
entirely different from the label / device mark of the defendant.
I must admit that I myself being a resident of Delhi since birth,
and familiar as any other citizen of Delhi with Max Hospitals,
CS(COMM) No.866/2016 Page 19 of 26
having not only visited patients therein but having also
umpteen times passed in front of Max Hospitals / Healthcare
Services, had never noticed the device of a single / double
cross appearing on the label / device marks of the plaintiff or
even the words Healthcare or HealthStaff. If at all any other
word besides MAX stuck to the mind, that was of Super
Speciality as one of the twin MAX hospitals in Saket is called.
My mind always identified the hospitals of the plaintiff with
the word MAX, and not necessarily along with the word
Healthcare or Hospital or Medcentre or HealthStaff or with the
medical cross. I can well imagine others, not having dealings
with the plaintiff, also associating plaintiff only with MAX and
with no other device or word. In addition, what my mind was
familiar with, was the earlier names of the hospitals,
management whereof has been taken over by the plaintiff and /
or management whereof was taken by the plaintiff and on
which take over, the plaintiff invariably adds MAX to the
earlier / existing names. Mention in this context can be made
of Janki MAX and MAX Centre for Liver & Biliary Sciences
also. The same would be the position of others. Again, I have
wondered whether the legislators of Trademarks Act providing
for registration of label / device marks can be presumed to be
ignorant of human psychology and / or the way the human
mind perceives such marks. The answer is again no. It has
been held in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree
Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346 affirmed
CS(COMM) No.866/2016 Page 20 of 26
by the Division Bench in Shree Nath Heritage Liquor Pvt.
Ltd. VS. Allied Blender & Distillers Pvt. Ltd. (2015) 221 DLT
359, Prathiba M. Singh Vs. Singh & Associates 2014 SCC
OnLine Del 1982 and Gillette Company LLC Vs. Tigaksha
Metallics Pvt. Ltd. (2018) 251 DLT 530 that the test for
infringement of a label / word mark is the test of prominent
word of the mark. Besides the judgment cited by the senior
counsel for the plaintiff, mention may be made of Ramdev
Food Products (P) Ltd. Vs. Arvindbhai Rambhai Patel (2006)
8 SCC 726 where it has been held that adoption by the
defendant of a prominent word in the label / device mark of the
plaintiff amounts to infringement. The label / device marks
may be of different kinds. Those with words only as
prominent part thereof with a not so prominent device, have in
Keshav Kumar Aggarwal Vs. NIIT Ltd. (2013) 199 DLT 242,
Jagdish Gopal Kamath Vs. Lime & Chilli Hospitality
Services 2015 SCC OnLine Bom 531, Mallcom (India) Ltd.
Vs. Rakesh Kumar 2019 SCC OnLine Del 7646 and New
Balance Athletics, INC Vs. Apex Shoe Company Pvt. Ltd.
2019 SCC OnLine Del 7393, appeal preferred whereagainst
was dismissed vide order dated 26th March, 2019 in FAO(OS)
(COMM) No.59/2019 titled Apex Shoe Company Pvt. Ltd. Vs.
New Balance Athletics, INC, held to be infringed by the
defendant who in his label / device adopts the same word/s by
making only variation in the not so prominent device. The
nature of business / services also are of several kind. A label /
CS(COMM) No.866/2016 Page 21 of 26
device mark in relation to some businesses, as of textile and /
or prints, may invite the attention of the public and / or the
consumer to the brand of the label / device mark but no so in
others. The business of providing hospitals / healthcare
services is such, where people / consumers pay least attention
to the device or the label mark and read generally the first
word of the label mark by which the hospital / healthcare
services come to be known and recognized.
H. I am also unable to accept the contention of the senior counsel
for the defendant, that the test of infringement is not in the
mark or its use but on paper. The same cannot possibly be.
The Courts adjudicate trade mark disputes applying the test of
similarity / deceptive similarity, and which test has to be in
relation to how similarity / deceptive similarity is perceived in
the minds of the concerned persons and not on paper.
Moreover it is only in Courts that the two marks are available
side by side, for comparison. Not so in the market. The test to
be applied is of the market place.
I. A person visits a hospital or a healthcare facility in an anxious
state of mind, whether for himself or for near and dear ones
and is not prone to pay minute attention to all the contents of
the label / word mark and is prone to identify the hospital by
the most prominent word on the label / device mark and which
in the case of the label / device mark of the plaintiff is, MAX.
As aforesaid, the hospitals of the plaintiff are known as MAX,
CS(COMM) No.866/2016 Page 22 of 26
and mere mention of MAX, even without the word hospital or
healthcare, brings to mind the hospital / healthcare services of
the plaintiff and nothing else, unless mention is in the context
of insurance and / or financial services. When I was told for
the first time that Malhotra Heart Institute, Lajpat Nagar, New
Delhi was being taken over by 'Metro', I asked, why would
Delhi Metro Rail Corporation take over a heart hospital, only
to be told of Metro Hospitals, till then not having presence in
Delhi, though having hospitals outside.
J. Section 17 of the Trademarks Act, on which also the senior
counsel for the defendant has pegged his case, only provides
for effect of registration of parts of a mark by laying down that
registration confers only the exclusive right to the use of the
trade mark as a whole and not to use any part thereof. It
further provides that the same is not applicable where the trade
mark contains any matter which is common to the trade or is
otherwise of a non distinctive character. The words Hospital,
Healthcare, HealthStaff in the label / device mark of the
plaintiff are common to the trade and of non-distinctive
character. Same is the position with the medical cross in the
mark of the plaintiff. Besides the words Hospital, Healthcare,
HealthStaff and the Medical Cross, only thing left in the mark
of the plaintiff is the word MAX. I have already hereinabove
referred to New Balance Athletics and Mallcom (India) Ltd.
supra in which infringement was held to have been made out /
CS(COMM) No.866/2016 Page 23 of 26
prima facie made out by adoption of the prominent word of the
label / device mark. The said judgments are under the 1999
Act and notwithstanding Section 17 thereof. The same is the
position in the mark of the defendant. The same, besides the
word MAX, have healthcare / hospital or Mediciti, which are
common to the trade and non-distinctive and with which none
associates the defendant either. Thus Section 17 also does not
defeat the remedy of infringement.
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
CS(COMM) No.866/2016 Page 24 of 26
other to earn maximum foreign exchange by providing cheaper
and better medical treatment than available in a large number
of other 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.
L. Merit is also found in the contention of the senior counsel for
the plaintiff, of the mala fides of the defendant being evident
from the adoption by the defendant of the same marks with
same prominent word as in the marks of plaintiff, in relation to
same services as offered by plaintiff. It is not the case of the
defendant and indeed it cannot be of anyone claiming any
knowledge of providing hospital / healthcare services, that the
defendant did not know of the plaintiff. The defendant, in
spite thereof, when desirous of changing the name of its
hospitals / healthcare services from that of Sunshine, chose to
adopt impugned marks similar to that of the plaintiff's and
which can be nothing else but in an attempt to ride over the
CS(COMM) No.866/2016 Page 25 of 26
goodwill of the plaintiff and to make patients believe that they
were getting treatment of the same standard / quality, for
which the plaintiff has identified itself. There is no
explanation, why the defendant chose to adopt the same name
for its hospitals as that of the hospitals of the plaintiff.
13. IA No.8439/2016 is thus allowed and the defendant is restrained
from using the impugned marks or any other mark similar or deceptively
similar to the marks of the plaintiff. However, the defendant is granted
time of 30 days with effect from today to effect the said change, and the
injunction order shall become operative on expiry of 30 days herefrom.
14. IA No.8439/2016 is allowed and disposed of.
CS(COMM) NO.866/2016
15. List on 13th August, 2019 for consideration, whether the suit is
required to be put to trial.
RAJIV SAHAI ENDLAW, J.
JULY 04, 2019 'gsr'..
CS(COMM) No.866/2016 Page 26 of 26