Present case has been filed by Max Healthcare Institute Limited (Plaintiff) to restrain Sahrudya Health Care Private Limited (Defendant) from providing any services under the name MAXCURE HOSPITAL, MAXKURE, MAXCURE MEDICITI or any other mark/name which is imitation of or deceptively similar to the plaintiff’s trademark MAX/MAX HOSPITAL, to restrain the defendant from by using the name MAXCURE HOSPITAL, MAXKURE, MAXCURE MEDICITI, pass of its services/projects as that of the plaintiff and for ancillary reliefs.
The suit came up before this Court on 20th July 2016 where the plaintiff 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 the defendant was ordered to not launch any fresh operations under the mark ‘MAXCURE’ or ‘MAXKURE’.
It as stated by the plaintiff that the trade mark ‘MAX’ has been owned and used by Max Financial Services Ltd, 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 businesses such as Max Life Insurance Co. Ltd, Max Bupa Health Insurance Co. Ltd and Max Healthcare Institute Ltd to name a few. The plaintiff started its operations in India in 2000 and has opened nearly fourteen (14) hospitals/healthcare centres in Delhi, Gurgaon, Mohali, Bathinda, Dehradun and Greater Noida. It came to the knowledge of the plaintiff that the defendant has adopted MAXCURE HOSPITAL/MAXKURE and MAXCURE MEDICITI recently by replacing existing Sunshine Hospital and Mediciti Hospitals. The Defendant has also filed for a trade mark registration application for registration of MAXCURE/MAXKURE and 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 29th May 2015.
The defendant contested the suit pleading that they have not sought for registration of MAX as a standalone mark but as part of a larger phrase. Further, visually marks of defendant are distinctive from that of the plaintiff. Defendant also claims that plaintiff should not have received registration for MAX as it is abbreviation of the dictionary word ‘maximum’. Defendant also stated that in Class 44 there are 14 registered applications with MAX in it whereas in Class 42 there are 129 registered applications. Further, Defendant also stated that most of the plaintiff’s hospitals are located in NCR whereas defendant’s hospitals are spread throughout Telangana and Andhra Pradesh.
Senior counsel for the defendant pointed out that the plaintiff has concealed that the word MAX per se has not been registered in favour of the plaintiff and application for registration is pending. All the registered marks are of device/label marks. Besides there are a lot of businesses using the word MAX since prior to 2000.
Court rejected the arguments of the defendant and granted interim injunction to the plaintiff by stating the following reasons –
- There is no doubt that that these 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.
- Court while considering whether these is a case of infringement or not observed “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.”
- Further, Court denied the allegation of the defendant that the plaintiff concealed the fact that its registration is of a label mark. It observed that from the bare perusal of the paragraph 12 of the plaint it is clear that the registration is not of a word mark but of a label/device mark. Moreover, plaintiff has also filed Certificates of Registrations held by it which also make it clear that the registrations are of label/device mark and not of word mark.
- Court also observed that MAX is not an abbreviation in English language of ‘maximum’. Besides, MAX is not a generic or a laudatory word in relation to hospital and healthcare services. Further, HC refers to 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 trademark 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.” Hence, High Court went on to state that mere fact that others providing healthcare service using the word MAX is no ground for depriving the plaintiff of injunction against the defendant if otherwise a case is made out.
- Court observed that the business of providing hospitals/healthcare is such where people pay least attention to the label mark and read generally the first word of the label mark by which the hospital/healthcare services come to be known and recognised.
- Court also rejected the argument of defendant to apply the test of infringement of its use on paper by stating that the test of similarity/deceptive similarity in relation to how it is perceived in the minds of the concerned persons and not on paper.
- Court held that Section 17 of the Trademarks Act only provides for effect of registration of parts of a mark by laying down that registration confers only the exclusive rights to the use of the trade mark as a whole and not to use any part thereof. Hence, Section 17 does not defeat the remedy of infringement.
- Court held that absence of any hospital of the plaintiff in Andhra Pradesh and Telangana is no reason to deny injunction. In this era of medical tourism where each corporatized hospital and healthcare centre vie with each other to earn maximum foreign exchange by providing cheaper and better medical treatment than available in a large number of other countries. In such circumstances the chances of confusing the hospital/healthcare centre of defendant for that of the plaintiff are extremely high. Besides, trade mark registration is valid throughout India and hence it is no ground to deny injunction that the defendant for the time being has no intent to enter NCR where presently the hospitals/healthcare centre of the plaintiff are primarily located.
- Court accepted the argument of the plaintiff that the defendant did not know of the plaintiff despite of being in the same industry.
On the basis of above mentioned reasons, Court restrained the defendant from using the impugned marks or any other mark similar or deceptively similar to the marks of the plaintiff. Court granted time of 30 days to effect the said changes.