By Priya Adlkha and Ananyaa Banerjee
Ever since the launch of its medicine “Coronil”, Patanjali has been in news. Read here. In a recent development Patanjlai’s ‘Coronil’ also got involved into trade mark violation dispute, whereby the Hon’ble Madras High Court vide its order dated August 06, 2020 made the interim injunction order dated July 17, 2020 passed by the Madras High Court absolute and also imposed a fine of Rs. 10 lakhs on Patanjali for trademark infringement.
Brief Facts of the case
- The Plaintiff, Arudra Engineering Private Limited is a Private Limited Company, registered in the year 1980 under the Companies Act, 1956, having its registered office in Chennai.
- The Plaintiff is engaged in the business of chemical cleaning and manufacturing of Material Handling Systems and Polymeric Epoxies for various factories in India and abroad.
- The Plaintiff contended that it owns the trademark ‘Coronil’ under class 1 since 1993 and its right over the trademark are valid and subsisting in India till 2027.
- The Plaintiff on learning about Patanjali’s recently launched medicine “Coronil”, filed a plea for trademark infringement against Patanjali in the Madras High Court, seeking an injunction to restrain the Defendants or anyone associated with them from infringing the Plaintiff’s registered trademarks bearing the name “Coronil”.
- The Plaintiff is the registered owner of the trademark ‘Coronil-92B’ as a product of Acid inhibitor for industrial cleaning and chemical preparations for industrial use since 1993 and has been persistently renewing the trademark from that point forward.
- The Plaintiff also submitted that it has customers in several countries across the world and to substantiate on the same submitted list of customers in India and other countries. The Plaintiff also submitted that its companies are situated across India and also in Sri Lanka, Oman, Philippines, Vietnam, Uganda, Malaysia, Singapore and Kuwait.
- To substantiate its claim, the Plaintiff also submitted sales invoices of its products bearing the trademark ‘Coronil’.
- In its contention, the Plaintiff claimed that the mark adopted by Defendant for its medication is identical to the trademark registered by the Plaintiff. It had also been stated that even though the products of the Plaintiff and the Defendants are dissimilar, the registered trademark of the Plaintiff would be protected under Section 29(4) of the Trade Marks Act, 1999 i.e. concept of protection to ‘well-known marks’.
- The Plaintiff also claimed that it has an impeccable reputation within the country as well as around the globe.
- The Defendants claimed to have prepared a medication for treatment of Coronavirus and that the same is being marketed under the name ‘Coronil’.
- The Defendants asserted that the products sold by the Plaintiff and the Defendants are altogether different and belong to different classes and that it is settled law that a proprietor of trademark cannot enjoy monopoly over the entire classes of goods. Therefore, the claim of the Plaintiff that there has been dilution of the mark, was unsustainable.
- The Defendants also stated that the Plaintiff had failed to prove that it’s mark is well known and has wide reputation. Also, the Plaintiff failed to produce any other evidence that showed that Plaintiff’s products have gained reputation in the market other than an unverified client list and an unaudited and unverified table of sales figures.
- The Defendants further submitted that the Plaintiff has no reputation whatsoever and pointed out that the sale figures of the Plaintiff’s sale have been diminishing from year to year and it has only 31 customers whereas, the Defendants have a turnover of nearly Rs. 10,000 Crores and nearly a million customers.
- The Defendants further stated that an average man of ordinary intelligence would not associate the goods of the Plaintiff with the goods of the Defendants as the marks were also visually different.
- The Defendants also stated that the Plaintiff had not registered its trademark in parts, but as a whole. The word ‘Coronil’ had not been registered independently and therefore the Plaintiff could not seek protection from the Defendants usage of the mark ‘Coronil Tablet’.
- The Defendants stated that it is common in the field of Pharmaceutical industries to name a drug after an ailment and in this case, since the tablet can be used as an immunity booster against Coronavirus disease, the Defendants had coined the name ‘Coronil’.
- The Defendants to substantiate their claims also made reference to Section 11(2) of the Trade Marks Act, 1999, by stating that an injunction can be granted for usage of a trademark, even if the earlier registered trademark is not necessarily a “well known trademark”, but simply “has a reputation in India”.
- The Defendants also while comparing their mark “Patanjali” with Plaintiff’s “Coronil” made reference to Section 29(4)(c) of the Act to lament use of the term “has a reputation in India” instead of “well-known mark” to contend that the Defendants’ ‘Patanjali is a well-known trademark and that the Plaintiff’s registered trademark is not a well-known trademark and in view of the statutory provision, the Court will only have to examine whether the Plaintiff’s mark “Coronil” has a ‘reputation in India’ and not whether it is a ‘well known trademark’.
- The Defendants also contended that the injunction order passed on July 17, 2020 against it’s mark “Coronil” was causing immense prejudice and hardship to the Defendants, and would damage the reputation and brand of the Defendants which they have built in all these years.
- The Defendants also stated that the Plaintiff’s mark is only a registered mark, and is neither recognized nor reputed and is certainly not a well-known mark and the Plaintiff has no right over the mark across various classes.
Court’s Order and Observations
In view of the facts and circumstances of the case and evidence adduced by the Plaintiff to establish its worldwide reputation, the Hon’ble High Court of Madras restrained Patanjali from using the mark “Coronil” for its medicine and made the following observations in the case:
- The Court simplified the ingredients of Section 29(4) of the Trade Marks Act, 1999, and stated that the provision is applicable under following circumstances-
(i) the plaintiff’s trademark must be a registered trademark.
(ii) It must be infringed by a defendant who is not a registered proprietary of a mark. (iii) the defendant however uses his mark in the course of trade.
(iv) such a mark used by the defendant should be identical or similar to the registered trademark.
(v) such a mark should be used in relation to goods which are not similar to the class of goods for which the plaintiff has registered his trademark.
(vi) the plaintiff’s trademark must have a reputation in India.
(vii)the use of the mark by the defendant without due cause (a) takes unfair advantage, or (b) is detrimental to the distinctive character or repute of the registered trademark.
- The Court also asserted that it must be kept in mind that the words “has a reputation in India” has been used by the Parliament very consciously.
- The Court highlighted that a careful look at Section 11 of the Trade Marks Act, 1999 would indicate that prior to classification as a ‘well known mark’, under Section 11(6), the Registrar has to take into account all the provisions mentioned under Section 11(6), stipulations mentioned under Section 11(7), Section 11(8) and Section 11(10). Thus, only after considering a whole gamut of factors, can a Registrar recognize a trademark as a “well known mark” and consequently there is a mandatory and statutory limitation placed on the Registrar to protect that mark against the registration of an identical or similar trademark.
- The Court further clarified that Section 29 of the Trade Marks Act, 1999, gives protection against infringement of registered trademarks. Section 29(1) is when an identical mark is used for the class of goods, which are similar to the same class for which the registration has been effected. Under Section 29(4), protection is granted even when the offending mark is used for a different class of goods. The only pre-condition is that the plaintiff’s mark should have a “reputation in India”.
- The Court also stated that it is impermissible to zoom the words in a statue to suit the convenience of the Defendants. Therefore, in the instant case the words specifically used are “reputation in India” and does not mean “well known mark”.
- It was observed by the Court that the Plaintiff has a registered trademark ‘Coronil’ and the registration is still alive, hence use of an identical mark by the Defendant amounted to Trademark Infringement under Section 29(4) of the Trademark Act, 1999.
- The Court also stated that it is not always obligatory that the whole or part must be registered as separate trademarks.
- The Court also observed that the Defendants had not shown any due cause as to why they named their product ‘Coronil’, since no direct material has been produced to show that it is a treatment for Coronavirus, therefore the usage of the word ‘Coronil’ by the Defendants would be detrimental to the distinctive character of Plaintiff’s mark.
- The Defendants had also questioned the reputation of the Plaintiff in India, the Court in that regard stated that there are very few industries engaged in the business of supplying chemical agents to prevent corrosion in our Country and if those few industries have come to know about the product of the Plaintiff, then a reasonable conclusion can be drawn that the Plaintiff has established a reputation in India.
- The Court also remarked that if the Defendants had run a simple check with the Trade Marks Registry’s records then it would have revealed that ‘Coronil’ is a registered trademark.
- The Court further expressed its disconcert by stating that if the Defendants had checked with the Registry and still used the name ‘Coronil’ then they are clearly at fault.
In view of the aforesaid, the Hon’ble Madras High Court held that the interim injunction restraining the use of the mark ‘Coronil’ by Defendants, already granted on July 17, 2020 has to be made absolute. Also, the Court while highlighting that the Defendants have repeatedly projected that they are 10,000 Crores company but still want to chase further profits by exploiting the fear and panic among the general public by projecting a cure for the Coronavirus, when actually their ‘Coronil Tablet’ is not a cure but rather an immunity booster, imposed costs of Rs. 5,00,000/- to be paid jointly by the Defendants to the Dean, Adyar Cancer Institute (WIA), East Canal Bank Road, Adyar, Chennai and Dean, Government Yoga and Naturopathy Medical College & Hospital, Arumbakkam, Chennai each as both these organisations provide treatment free of cost without any patent or trademark claim but only with service as a motto. The Court also directed that the cost must be paid on or before August 21.
In the present case, the Hon’ble Madras High Court restrained the Defendant i.e. Patanjali from using the disputed mark irrespective of the fact that the Plaintiff’s and Defendant’s businesses functioned in distinct spheres. The Plaintiff was using the mark “Coronil” for his products falling under class 1 whereas, the Defendant’s product is being sold and marketed under the name “Coronil” as an Ayurvedic medicine. While arriving at its decision, the Court took into consideration Plaintiff’s repute of 26 years and hence was of the opinion that the use of an identical mark by Defendant would infringe Plaintiff’s registered mark.