Full Judgment Text
$~48
* IN THE HIGH COURT OF DELHI AT NEW 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
J U D G M E N T (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
1
Bench of this Court in Dabur India Ltd. v. Emami Ltd. , 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.
1
Order dated 21 August 2023 in FAO(OS) (COMM) 171/2023
Signature Not Verified
CS(COMM) 592/2023 Page 1 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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.
Signature Not Verified
CS(COMM) 592/2023 Page 2 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
8. Plaintiff 1 is the registered proprietor of the following marks
across country:
Registration
No.
Mark Application
Class User
Claim
4232337
Date
11/07/2019 35,36,
39,42,
43,44
01/01/2016
4232338
11/07/2019 35,36,
39,42,
43,44
01/01/2016
3151491 MEDICOVER 05/01/2016 36,44 3151491
3151492
05/01/2016 36,44 3151492
4205553
13/06/2019 36,42,
44
01/01/2016
4205554
13/06/2019 36,42,
44
01/01/2016
4205555
13/06/2019 36,42,
44
01/01/2016
4205556
13/06/2019 36,42,
44
01/01/2016
4205504
13/06/2019 36,42,
44
01/01/2016
4205505
13/06/2019 36,42,
44
01/01/2016
4205506
13/06/2019 36,42,
44
01/01/2016
4199151
06/06/2019 36,42,
44
01/01/2016
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
Signature Not Verified
CS(COMM) 592/2023 Page 3 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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.
Signature Not Verified
CS(COMM) 592/2023 Page 4 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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.
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-by-
side:
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.
Signature Not Verified
CS(COMM) 592/2023 Page 5 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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 red
background.
• The word
MEDICOVER in a
white font on a red
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
Signature Not Verified
CS(COMM) 592/2023 Page 6 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
background right
underneath the device of
the man.
background right
underneath the
device of the man.
• The word
HOSPITAL in a
white font on a red
background right
underneath the
word
MEDICOVER in a
slightly smaller font
• The word
HOSPITALS in a white
font on a blue
background right
underneath the word
MEDICOVER in a
slightly smaller font
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
Signature Not Verified
CS(COMM) 592/2023 Page 7 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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.
Signature Not Verified
CS(COMM) 592/2023 Page 8 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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
2
passages from Laxmikant V. Patel v. Chetanbhai Shah and Midas
3
Hygiene Industries P. Ltd. v. Sudhir Bhatia , has directed that
ordinarily an ex-parte ad interim injunction is required to be granted:
2
Laxmikant V. Patel
“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
2
( 2002) 3 SCC 65
3
(2004) 3 SCC 90
Signature Not Verified
CS(COMM) 592/2023 Page 9 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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
Signature Not Verified
CS(COMM) 592/2023 Page 10 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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
Signature Not Verified
CS(COMM) 592/2023 Page 11 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
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)
3
Midas Hygiene Industries
“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
Signature Not Verified
CS(COMM) 592/2023 Page 12 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48
registered “'MEDICOVER” ,
,
,
marks.
32. IA 16219/2023 stands allowed accordingly.
C. HARI SHANKAR, J.
SEPTEMBER 26, 2023
dsn
Signature Not Verified
CS(COMM) 592/2023 Page 13 of 13
Digitally Signed
By:HARIOM
Signing Date:05.10.2023
11:37:48