Infringement of the plaintiff’s registered trade mark `Apollo’, Apollo Pharmacy’, `Apollo Clinic’ and `Apollo Hospital’ . Using visually, phonetically or deceptively similar mark to the plaintiff’s trademark — Defendant is selling goods in the name and style of Sri Sai Apollo Pharmacy . Defendant has committed passing off .

2018  (74) PTC  198 (HIGH COURT OF MADRAS)

IN THE HIGH COURT OF JUDICATURE AT MADRAS

 

Reserved on : 06.02.2018                                                             Date of Decision :   01.03.2018

HEAD NOTE :::

Civil Procedure Code, 1908 Order 7 Rule 1 – Madras High Court Original Side Rules – Order 4 Rule 1 R/w Trade Marks Act, 1999 – Sections 27, 28, 29, 134 and 135 –  Registered trade mark .

Deceptively similar mark .

Trademarks `Apollo Pharmacy’, `Apollo Hospitals’ and `Apollo’ are collectively referred to as `said trademarks’ for the sake of convenience and clarity .

Infringement of the plaintiff’s registered trade mark `Apollo’, Apollo Pharmacy’, `Apollo Clinic’ and `Apollo Hospital’ .

Using visually, phonetically or deceptively similar mark to the plaintiff’s trademark .

Phonetically .

Permanent injunction .

Passing off .

Defendant is selling goods in the name and style of Sri Sai Apollo Pharmacy .

Defendant has committed passing off .

Suit is decreed with costs except one limb of prayer seeking Rs. 25 Lakhs

damages. [Paras 18, 19, 21] 

THE HON’BLE MR.JUSTICE M.SUNDAR

C.S.No.208 of 2016

 

Apollo Hospitals Enterprise Ltd.,Regd. Office at No.19, Bishop Gardens,Raja Annamalaipuram,Chennai-600 028.rep by the Authorised Signatory.                             ..  Plaintiff

 

Vs.

 

Sri Sai Apollo Pharmacy,No.40/68, Main Road,SN Colony Raychoty,YSR Kadapa District (A.P.)                             ..  Defendant

 

 

This Civil Suit is preferred, under Order VII Rule 1 of CPC, Order IV Rule 1 of Original Side Rules read with Sections 27, 28, 29, 134 and 135 of the Trade Marks Act, 1999 seeking (a)permanent injunction restraining the defendant, its men, agents, partner, associate, officer, representative, servant and all other persons acting on defendant’s behalf from in any manner infringing the plaintiff’s registered trade mark ‘Apollo’, Apollo Pharmacy’, ‘Apollo Clinic’ and ‘Apollo Hospital’ either directly or by using any structurally, visually, phonetically or deceptively similar mark to the plaintiff’s trademark ‘Apollo’, Apollo Pharmacy’, ‘Apollo Clinic’ and ‘Apollo Hospital’; (b)permanent injunction restraining the defendant, its men, agents, partner, associate, officer, representative, servant and all other persons acting on defendant’s behalf from in any manner passing off their services as that of the plaintiff’s by either using the plaintiff’s trademark ‘Apollo’, Apollo Pharmacy’, ‘Apollo Clinic’ and ‘Apollo Hospital’ or any structurally, visually, phonetically or deceptively similar mark to the plaintiff’s trademark ‘Apollo’, Apollo Pharmacy’, ‘Apollo Clinic’ and ‘Apollo Hospital’; (c)permanent injunction restraining the defendant, its men, agents, partner, associate, officer, representative, servant and all other persons acting on defendant’s behalf from in any manner using the name / mark ‘Apollo’ and ‘Apollo Pharmacy’ by themselves or in combination with other characters or words in connection with any pharmaceutical establishment operated, or pharmaceutical services, rendered by the defendant; (d)defendant be directed to surrender to plaintiff all  materials, media, etc., whether for invoicing, advertising or any other purpose which contain or bear the plaintiff’s registered trademark or any structurally, visually, phonetically or deceptively similar mark to plaintiff’s trademark ‘Apollo’ and ‘Apollo Pharmacy’, (e)defendant be directed to render accounts of profits of defendant in favour of plaintiff to examiner and ascertain the profits made by the defendant, and thereafter on enquiry final decree be passed and or an order for rendition of accounts of profits made by defendant by using the mark ‘Apollo’ and ‘Apollo Pharmacy’ or any structurally, visually, phonetically or deceptively similar mark to plaintiff’s trademark ‘Apolo’ and ‘Apollo Pharmacy’ towards damages as and when ascertained to be awarded to the plaintiff and against defendant on account of use of the offending trademark; (f) award damages of Rs.25,00,000/-, (g) an order for costs of proceedings and (h)such other order or orders as this Court may deem fit and proper in the facts and circumstances of the case.              For Plaintiff           : Mr.Shyam Gopal                                 for Mr.Vineet Subramani             For Defendant     :  set ex parte – – – – – JUDGMENT

This is a suit complaining of infringement of a registered trade mark and passing off.

2 The nucleus of this suit are 12 registered trademarks of plaintiff in 7 different classes.

3 Plaintiff ‘Apollo Hospitals Enterprise Ltd.’ is a public limited company incorporated under the Companies Act, 1956. Plaintiff has set up multi-speciality private sector hospitals in India. Plaintiff has also established medical pharmacy in the name and style of ‘Apollo Pharmacy’. Plaintiff’s medical service has been globally recognised across the world. Plaintiff is providing various health care services, such as hospitals, diagnostic clinics, pharmacies in the name of ‘Apollo Hospital’, ‘Apollo Pharmacy’ and ‘Apollo Clinics’. To be noted, this entire paragraph is plaintiff’s pleadings as it unfurls from a reading of the plaint.

4 It is also averred in the plaint that plaintiff has adopted a unique trademark ‘Apollo’ for using the same in their medical services. Plaintiff has also registered their marks, such as ‘Apollo’, ‘Apollo Pharmacy’ and ‘Apollo Hospital’. Aforesaid 12 trademarks in 7 different classes registered by the plaintiff are as follows :

Sl.

No.

Trade Mark Number Date Class Trade Mark 1576795 06.07.2007 1576790 06.07.2007 1718084 05.08.2008 1718078 05.08.2008 1718086 05.08.2008 1785330 16.02.2009 1785333 16.02.20091836922 06.07.2009 1576796 06.07.2007 APOLLOHOSPITALS 1576797 06.07.2007APOLLOHOSPITALS 1804010 08.04.2009 APOLLOHOSPITALS 1576799 06.07.2007 APOLLO 5 Registration in Class 42 is in respect of providing of food and drink, temporary accommodation, medical, hygienic and beauty care, veterinary and agricultural services, legal services, scientific and industrial research, computer programming services not included in other classes. Registration in Class 5 is for pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, materials for stopping teeth, dental wax, disinfectants, preparation for destroying vermin, fungicides, herbicides included in class 05. Registration in Class 35 is in respect of advertising, business management, administration, office functions. Registration in Class 10 is for surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials. Registration in Class 41 is for education, providing of training, entertainment, sporting and cultural activities. Registration in class 3 is in respect of bleaching preparations and other substances of laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices including face wash, creams, lotions, soaps, deodorants, body wash, moisturiser, shampoo. Registration in class 24 qua textiles and textile goods not included in other classes, bed and table covers including face tissues, sanitary napkin.

6 The aforesaid Registration of the trademarks are subsisting and are valid is plaintiff’s say. In other words, the registration of the registered trademarks are subsisting as of today. Registration of Trademarks have been marked as Exs.P.2 to P.13 7 As would be evident from the details of the registration set out supra, trademarks ‘Apollo Pharmacy’, ‘Apollo Hospitals’ and ‘Apollo’ pertain to medical, pharmaceutical services and other services provided by the plaintiff. The trademarks ‘Apollo Pharmacy’, ‘Apollo Hospitals’ and ‘Apollo’ are hereinafter collectively referred to as ‘said trademarks’ for the sake of convenience and clarity. The said trademarks are being used by the plaintiff for the aforesaid products/goods/services. The complaint in this suit by plaintiff is that a similar and deceptive trademark is being used by the sole defendant for one of the same products/service, i.e., pharmacy. Defendant is selling goods in the name and style of Sri Sai Apollo Pharmacy.

8 Mr.Shyam Gopal for Mr.Vineet Subramani, learned counsel, appearing on behalf of the plaintiff submits that the plaintiff is a multi speciality medical services provider ad is having multi speciality hospitals, training institutes / colleges, pharmacies, etc. The plaintiff has adopted the name ‘Apollo’, ‘Apollo Hospitals’ and ‘Apollo Pharmacy’ as their trade name and has been continuously using the same is his say. They have registered the said trademarks as alluded to supra is his further say.

9 Learned counsel for the plaintiff has further submitted that during the course of business, plaintiff came to know that the defendant is selling its goods in the name and style of ‘Sri Sai Apollo Pharmacy’, using plaintiff’s said trademark, illegally. Defendant should not use the plaintiff’s said trademark either independently or in association with other words, such as ‘Sri Sai’ is his further submission.

10 The suit file placed before me reveals that the sole defendant was duly served and thereafter set ex pate on 04.11.2016.

11 The plaintiff has averred that they have spent considerable amount of money and have put in enormous effort and time for developing the unique design for their products under the said trademarks. It is further submitted that the said trademarks have become very popular among public. The plaintiff has been maintaining a very good standard for their products and services is the further submission on behalf of plaintiff.

12 It is the specific case of plaintiff that they have registration for the word mark and therefore, use of similar and highly deceptive offending mark for the same product is a clear case of infringement. It is the further case of the plaintiff, as articulated by learned counsel for plaintiff in the hearing that the service rendered by the defendant is same and channel of trade is also same. Further more, the purchasers belong to all strata of society and therefore, deception is inevitable is his say. This according to learned counsel for plaintiff is a indisputable case of passing off and it is submitted that defendant is clearly riding on the popularity of the said trademarks of plaintiff.

13 I now turn to exhibits that have been marked in the instant case.

14 Before looking at the exhibits, it is to be noted that one witness, i.e., P.W.1 was examined on behalf of plaintiff company. That one witness on behalf of plaintiff company is one Mr.S.M.Mohan Kumar, who is Manager Legal of the plaintiff company. Nineteen exhibits have been marked on behalf of the plaintiff through P.W.1.

15 Ex.P.1 is the extract of minutes of the resolution passed in the Board of Directors meeting of the company held on 24.01.2007, authorizing Mr.S.M.Mohan Kumar, Asst. Manager-Legal to represent the company before the Court and to give oral/documentary evidence on behalf of the company. Ex.P.2 to Ex.P.13 are registration certificates of said trademarks, details of which have been alluded to supra.

16 Plaintiff company has marked a photograph of defendant’s offending mark as Ex.P.14. The said photograph is as follows :

17 Thereafter, the plaintiff company has marked a photograph of its sign board as Ex.P.15 which is as follows :

18 With regard to aforesaid two marks, I am not embarking upon comparison qua essential features, over all similarity, etc., because this is a case of infringement of word mark per se and word ‘Apollo’ being dominant / prominent part of other marks, wherein depiction of mark takes a back seat. In any event, as far as the aforesaid rival marks are concerned, there is hardly any difference. Both words are written in the same manner. However, to be noted, while the said trademarks are ‘Apollo’, ‘Apollo Pharmacy’ and ‘Apollo Hospitals’, the alleged offending mark is ‘Sri Sai Apollo Pharmacy’, wherein the words ‘Sri Sai’ are written in relatively very small font/letters.

19 What is most important is, the service is same, i.e., pharmacy. More importantly, as alluded to supra, there is overlap in the channel of trade.

20 The plaintiff has also marked 1st and 2nd commemorative stamps issued in the name of Apollo Hospital which have been marked as Ex.P.16 and P.17. A copy of Auditor’s certificate qua its revenue has been marked as Ex.P.18. The legal notice dated 9.7.2015 issued to the defendant has been marked as Ex.P.19.

21 In the light of the discussion and narrative supra, I have applied my mind to the suit file that has been placed before me which includes pleadings, deposition and documents, i.e., Exhibits. I have also given my careful consideration to the submissions made by learned counsel for plaintiff. On a careful analysis of the suit file and submissions made before me, I have no hesitation in coming to the conclusion that this is a clear case of infringement for the reasons set out supra. With regard to passing of action also, which is a common law remedy, I have no difficulty in coming to the conclusion that the defendant has in fact committed passing off, as in the aforesaid peculiar facts of this case, the two are dovetailed.

22 With regard to deposition of P.W.1 (Mr.S.M.Mohan Kumar), which is by way of proof affidavit dated 28.11.2016, it is largely a reiteration of pleadings as contained in the plaint. However, the deposition remains unchallenged. Notwithstanding the fact that deposition remains unchallenged, I have perused the proof affidavit and I find that the evidence is cogent, clear and convincing. With regard to exhibits, I have already discussed supra and legal principles also have been discussed supra.

23 In all these perspectives of the matter, the plaintiff is entitled to a decree as prayed for qua infringement of the said trademark and using the name / mark ‘Apollo’ and ‘Apollo Pharmacy’ by themselves or in combination with other characters of words in connection any pharmaceutical services and passing off. Now I turn to the other limbs of the prayers in the plaint.

24 Besides the prayer for injunction qua infringement of the said trademark and injunction qua passing off, there are five other limbs of prayer. One limb pertains to a direction to defendant to surrender to the plaintiff all materials, media, etc. whether for invoicing, advertising or any other purpose which contain the plaintiff’s registered trademark. The 5th limb of the prayer is for rendition of accounts, while the 6th limb of the prayer is for awarding damages of Rs.25,00,000/-. The 7th limb of the prayer is for costs, while the last limb is a residuary prayer.

25 In the light of the discussion and the conclusion supra with regard to first, second and third limbs of prayer, it follows indisputably as a sequitur that the plaintiff is entitled to a direction for surrendering of materials pertaining to offending trademarks as well as a direction for rendition of accounts. Considering the trajectory of the suit and considering the fact that the plaintiff company has been constrained to file this suit, I have no hesitation in holding that the plaintiff is entitled to costs of the suit.

26 With regard to the residuary limb of the prayer, as I have already acceded to the prayer for rendition of accounts, if the plaintiff pursues the matter further and if the plaintiff decides to claim damages post rendition of accounts and quantification, it is made clear that plaintiff will be entitled to do so based on this decree. For the present, no evidence has been let in to show quantification of damages of Rs.25,00,000/- and therefore, that limb of the prayer is not acceded to.

27 To put it in a nutshell, in sum and substance, this suit is decreed with costs except one limb of prayer seeking Rs.25,00,000/- damages.

01.03.2018 Index : Yes/No vvk M.SUNDAR, J.

 

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