Medicover Holding (Cyprus) Limited & Ors. v. Medicover Hospital and Health Care Centre & Anr.

Delhi High Court · 26 Sep 2023 · 2023:DHC:7210

C. Hari Shankar

CS(COMM) 592/2023

2023:DHC:7210

civil appeal_allowed Significant

AI Summary

The Delhi High Court granted an ex-parte injunction restraining defendants from using the 'MEDICOVER' mark and logo, holding that their identical use constituted trademark infringement and passing off against the plaintiffs' registered marks.

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CS(COMM) 592/2023
HIGH COURT OF DELHI
CS(COMM) 592/2023 & I.A. 16219/2023
MEDICOVER HOLDING (CYPRUS) LIMITED & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Tusha Malhotra and Ms. Yamini Jaswal, Advs.

VERSUS

MEDICOVER HOSPITAL AND HEALTH CARE CENTRE & ANR. ..... Defendants
Through: None

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

JUDGMENT

(O R A L)
26.09.2023

I.A. 16219/2023 in CS(COMM) 592/2023

1. Keeping in mind para 8 of the order passed by the Division Bench of this Court in Dabur India Ltd. v. Emami Ltd.1, I had, while issuing summons in the present suit on 28 August 2023, demurred from passing any injunctive orders in the present application, preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure 1908 (CPC), and had, instead, issued notice on the application so that the defendants would have an opportunity to respond. Order dated 21 August 2023 in FAO(OS) (COMM) 171/2023

2. There was no appearance from the defendants on the last date of hearing i.e., 21 September 2023, though the defendants stood served by e-mail and WhatsApp.

3. In order to do complete justice, I had directed fresh service on the defendants by courier through Blue Dart. The service has been effected. An affidavit of service has been placed on record along with a tracking report of the Blue Dart agency, which shows that delivery of the papers relating to the present case on the date has also taken place.

4. Despite this, there is no appearance on behalf of the defendants. As already noted, there is no response, either, to the present application whereby the plaintiffs seek interlocutory injunctive relief.

5. In the circumstances, I have heard Mr. Pravin Anand, learned Counsel for the plaintiff and perused the material on record.

6. The Plaintiff 1 is a company incorporated under the laws of Cyprus in 2006 and is a member of the Medicover group of companies. The Medicover group is stated to have two entities in India, namely, Plaintiff 2 Medicover Healthcare Private Limited and Plaintiff 3 Sahrudaya Health Care Private Limited.

7. Plaintiff 3 operates a hospital and Plaintiff 2 operates medical clinics. Plaintiff 1 conducts its business activities through Plaintiffs 2 and 3.

8. Plaintiff 1 is the registered proprietor of the following marks across country: Registration No. Mark Application Date Class User Claim 4232337 11/07/2019 35,36, 39,42, 43,44 01/01/2016 4232338 11/07/2019 35,36, 39,42, 43,44 3151491 MEDICOVER 05/01/2016 36,44 3151491 3151492 05/01/2016 36,44 3151492 4205553 13/06/2019 36,42, 4205554 13/06/2019 36,42, 4205555 13/06/2019 36,42, 4205556 13/06/2019 36,42, 4205504 13/06/2019 36,42, 4205505 13/06/2019 36,42, 4205506 13/06/2019 36,42, 4199151 06/06/2019 36,42,

9. License to use the aforesaid marks has been granted by Plaintiff 1 to Plaintiffs 2 and 3. The licence agreement has also been placed on record.

10. Under the aforesaid marks, the Medicover Group provides a broad spectrum of healthcare services, through an extensive network of ambulatory clinics, hospitals, specialty care facilities and laboratory. The plaintiffs are also operating fertility clinics.

11. Apropos the services rendered by the plaintiffs, the plaint avers that the services may be distributed into three categories, namely, healthcare services, diagnostic services and fertility services.

12. The plaintiffs claim to be offering high-quality healthcare based on an integrated healthcare model and fee-for-service. Towards that end, the plaintiffs operate 175 medical clinics, 41 hospitals, 107 dental clinics, 28 fertility clinics, 38 optic showrooms, 15 mental-health centers, 49 pharmacies and 126 gyms. Diagnostic services are provided by the plaintiff through a broad range of laboratory testing in all major clinical pathology areas. Plaintiffs conducts its business through a network of 104 laboratories, including 876 blood-drawing points (BDPs) and 27 clinics. India is, according to the plaint, one of the largest markets for providing of diagnostic services by the plaintiffs. The plaintiffs also provide fertility services in more than 22 countries including IVF, IUI, ICSI and other associated services.

13. In India, it is stated that the Medicover group operates over 24 Medicover hospitals in Telengana, Andhra Pradesh and Maharashtra, which provide for over 5500 beds. They claim to have served around 3.[9] lakhs patients over the last five years. The Medicover hospital has also been awarded the “Best Multispecialty Hospital of the Year” at the Indian Leadership Awards in New Delhi in 2020.

14. The plaintiff also maintains inter-active websites at https://www.medicoverfertility.in/ivf-centre, https://www.medicover. com/ and https://www.medicoverhospitals.in/.

15. In order to vouchsafe its reach and reputation, the plaintiffs have also provided their annual sales turnover from the year 2016 to 2022, through the use of the brand Medicover in India. In 2021 and 2022 alone, the turnover is ₹ 9,487,866,658/- and ₹ 10,342,810,015/respectively.

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16. The plaintiff is aggrieved by the fact that Defendant 1 hospital, which is operated by Defendant 2, is using a mark which is identical to that of the plaintiff. The two marks may be thus viewed side-byside: Plaintiffs’ mark Defendant’s mark

17. At a bare glance, it is apparent that the defendant has copied the mark of the plaintiffs, the only difference being that the colour and background is different with the defendant’s background being of a lilac purple whereas the plaintiffs’ is blue.

18. In these circumstances, the plaintiff issued a cease and desist notice to the defendant on 18 April 2023, calling on the defendant not to use the impugned mark. This was followed up by a subsequent communication dated 28 May 2023. Neither of these communications has elicited any response.

19. The defendant 1 hospital is situated in UP and the defendants are using the mark MEDICOVER as well as the impugned logo in the State and also advertising its services on flyers and hoardings. Photographs of such advertisements have also been placed on record.

20. The plaintiff has also provided a tabular comparison of the rival marks thus:

S. No. Mark Plaintiff’s Mark Defendant’s Mark

1. Word mark MEDICOVER MEDICOVER

2. Logo/Device Mark • The figure of a man with a stylized arch over its head in white color on a blue background. • The word MEDICOVER in a white font on a blue • The figure of a man with a stylized arch over its head in white color on a red background. white font on a red background right underneath the device of the man.

21. The defendants have not chosen to enter appearance in this matter despite having been served by e-mail, WhatsApp and courier, and despite the matter having been listed twice after issuance of notice on this application.

22. In such circumstances, for the purposes of the present application, the assertions in the plaint have to be treated, prima facie, as correct on the basis of the principle of non-traverse.

23. Mr. Pravin Anand submits that this is a clear case of infringement, inasmuch as the rival marks are identical. The services provided by the plaintiffs and the defendants are also the same, as they cater to the same customer segment, i.e., patients looking for therapeutic facilities. As such, the triple identity test, which is required to be satisfied for infringement, is also satisfied.

24. I find considerable merit in these submissions. Even otherwise, a bare glance at the logo of the defendant reveals that it has copied all essential features of the plaintiffs’ logo. The plaintiffs are clearly unique as certain specific features such as a picture of a man with a stylized arch over his head in white colour. This is a feature unique to the plaintiffs’ mark which has been replicated identically in the mark of the defendant. The words “MEDICOVER HOSPITAL” as written below the defendant’s logo, is also written in a fashion similar to the manner in which it is written by the plaintiffs.

25. The word “MEDICOVER” is also indelibly associated with the plaintiffs. It is a word which has no independent etymological connotation. It is, therefore, a coined word which is entitled, even for that reason, to additional trade mark protection.

26. A customer of average intelligence and imperfect recollection, who comes across these two logos at two different points of time, is bound to believe them to be relating to the same entity. Besides, the manner in which the logo has been imitated, reveals a transparent intent on the part of the defendant to misrepresent itself as a hospital run by the plaintiffs.

27. The manner in which the defendants have replicated the figure of man with the arch above his head and the the word “MEDICOVER HOSPITAL” below its mark, reveals a transparent intent to misrepresent itself as a hospital run by the plaintiffs.

28. Mr. Anand also seeks to submit that the defendant has been found guilty of malpractice. Defendant 1 is one of the hospitals which has been excluded/de-listed by the Aditya Birla Health Insurance Co. Ltd.

29. In view of the aforesaid, the case being one of transparent infringement as well as passing off, and the defendant having demurred from from filing any response despite being put on notice regarding the present matter, the assertions in the plaint have to be treated as admitted. Even otherwise, a bare glance at the rival marks reveals the case to be one of prima facie infringement and passing off.

30. In such a case, the Supreme Court has, in the following passages from Laxmikant V. Patel v. Chetanbhai Shah[2] and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia[3], has directed that ordinarily an ex-parte ad interim injunction is required to be granted: Laxmikant V. Patel[2]

“8. It is common in trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, 12th Edn., para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in

business, an injunction will be granted even though the defendants adopted the name innocently. *****

10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. *****

13. In an action for passing-off it is usual, rather essential, to seek an injunction, temporary or ad interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing-off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p. 3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing-off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing-off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name (Kerly, ibid, para 16.97).

14. In the present case the plaintiff claims to have been running his business in the name and style of Muktajivan Colour Lab and Studio since 1982. He has produced material enabling a finding being arrived at in that regard. However, the trial court has found him using Muktajivan as part of his business name at least since

1995. The plaintiff is expanding his business and exploiting the reputation and goodwill associated with Muktajivan in the business of colour lab and photo by expanding the business through his wife and brother-in-law. On or about the date of the institution of the suit the defendant was about to commence or had just commenced an identical business by adopting the word Muktajivan as a part of his business name although till then his business was being run in the name and style of Gokul Studio. The intention of the defendant to make use of the business name of the plaintiff so as to divert his business or customers to himself is apparent. It is not the case of the defendant that he was not aware of the word Muktajivan being the property of the plaintiff or the plaintiff running his business in that name, though such a plea could only have indicated the innocence of the defendant and yet no difference would have resulted in the matter of grant of relief to the plaintiff because the likelihood of injury to the plaintiff was writ large. It is difficult to subscribe to the logic adopted by the trial court, as also the High Court, behind reasoning that the defendants' business was situated at a distance of 4 or 5 km from the plaintiff's business and therefore the plaintiff could not have sought for an injunction. In a city a difference of 4 or 5 km does not matter much. In the event of the plaintiff having acquired a goodwill as to the quality of services being rendered by him, a resident of Ahmedabad city would not mind travelling a distance of a few kilometres for the purpose of availing a better quality of services. Once a case of passing-off is made out the practice is generally to grant a prompt ex parte injunction followed by appointment of Local Commissioner, if necessary. In our opinion the trial court was fully justified in granting the ex parte injunction to the plaintiff based on the material made available by him to the court. The trial court fell in error in vacating the injunction and similar error has crept in the order of the High Court. The reasons assigned by the trial court as also by the High Court for refusing the relief of injunction to the plaintiff are wholly unsustainable. *****

16. There was no delay in filing the suit by the plaintiff. The plaintiff filed the suit with an averment that the defendants were about to commit an injury to the plaintiff. The defendants took a plea that they had already commenced the business with the offending trade name without specifying actually since when they had commenced such business. This has to be seen in the background that the defendants' business earlier was admittedly being carried on in the name and style of Gokul Studio. The commencement of such business by the defendants could therefore have been subsequent to the institution of the suit by the plaintiff and before the filing of the written statement by the defendants. In such a situation, on the plaintiff succeeding in making out a prima facie case, the court shall have to concentrate on the likelihood of injury which would be caused to the plaintiff in future and simply because the business under the offending name had already commenced before the filing of the written statement or even shortly before the institution of the suit would not make any difference and certainly not disentitle the plaintiff to the grant of ad interim injunction.” (Emphasis supplied) Midas Hygiene Industries[3]

“5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”

31. In the present case, despite issuance of notice, there is no appearance on behalf of the defendants. The plaintiff is, therefore, entitled to an injunction as sought. As such, pending disposal of the suit, the defendants as well as all others acting on its behalf shall stand restrained from selling, offering for sale, advertising, directly or indirectly dealing in any manner with services under the mark MEDICOVER or the logo or using any trade mark or logo which is identical or deceptively similar to the plaintiff’s registered “'MEDICOVER”,,, marks.

32. IA 16219/2023 stands allowed accordingly.

C. HARI SHANKAR, J.

SEPTEMBER 26, 2023

Medicover Holding (Cyprus) Limited & Ors. v. Medicover Hospital and Health Care Centre & Anr.

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