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Madras HC passed an absolute injunction order restraining Patanjali Ayurved from using the trademark

M/s.Arudra Engineers Private Limited represented by its Managing Director, Mr.R.Natraj V. M/s.Pathanjali Ayurved Limited, Represented by its Director, Divya Yog Mandir Trust Rep by its Trustee O.A.No.258 of 2020:- 06th August, 2020

Hon’ble Justice  C.V Karthikeyan,of Madras High Court  passed an absolute injunction order, restraining the defendant from using the trademark ‘Coronil’.

In the instant case, the defendants have directly infringed upon the very word ‘Coronil’ used by the plaintiff. As stated above, there is no evidence that it is a cure for Coronavirus. Then most certainly coinage of the term ‘Coronil’ by the defendants is without due cause and in fact that intention to mislead the general public. They can always market the products, but they should be honest and declare that it is not a direct cure for Coronavirus, but rather an immunity booster. Usage of the word ‘Coronil’ and usage of the common pictorial image of Coronavirus are to put it very mildly, misleading and cannot be permitted and is therefore prohibited.

The suit had been filed by M/s.Arudra Engineering Private Limited, subsequently, amended to M/s.Arudra Engineers Private Limited, having office at Thiruvanmaiyur, Chennai, originally against M/s.Pathanaili Ayurved Limited, having office at New Delhi, and subsequently, by amendment also against Divya Yog Mandir Trust, having office at Haridwar, Uttarkhand, seeking a judgment and decree against the defendants for grant of permanent injunction against infringement of the plaintiff’s registered trademark bearing the name “Coronil” by restraining the defendants or anybody acting under them from using the said trademark or deceptive variation of the said trademark in their products / business and for a direction to the defendants to deliver-up to the plaintiff for destruction the entire stock of products or any other materials bearing the objectionable trademark “Coronil” either identical or with deceptive variations of the plaintiff’s trademark “Coronil” and for costs of the suit.

The learned senior counsel then stated that to the shock of the plaintiff, a series of reports came about in the press and electronic media about launching of a product to cure the dreaded viurs Coronavirus, which is prevalent across the length and breadth of the country and in the world. But however, conflicting reports with respect to the nature of the product and its performance would indicate that infringement of the trademark Coronil by the defendants would seriously harm the reputation of the plaintiff. The reports indicated that there was a shift in the stand by the defendants from first projecting their product as a cure for Coronavirus, and then to it being an immunity booster against cough and fever and not a drug for cure of Coronavirus. The learned senior counsel wondered that if the product of the defendant is not related to Coronavirus, why there was an insistence to retain the name Coronil. He  imputed that it was to mislead people into believing that the tablets marketed by the defendants would in fact cure Coronavirus which as a fact is not true.

In this connection, the learned senior counsel took the Court through the various press reports, primarily for the purpose, to establish that the defendants have no due cause to use the trademark Coronil. The learned senior counsel stated that the term “due cause” should be interpreted as “just cause” and stated that the defendants have been neither honest in their projection of the efficacy of the treatment for the cure of Coronavirus nor have been honest in admitting that it is not actually a cure.

However, the packaging of the defendants product was pointed out and the popular image of the Coronavirus was pointed out by the learned senior counsel and stated that while it was meant to be only an immunity booster, the actual intention was to mislead the general public into a belief that the tablets were for cure of Coronavirus. Not only was the word ‘Coronil’ used but also a pictorial representation of the Coronavirus was also imprinted on the label of the box containing the tablets.

The learned senior counsel stated that Section 29(4) of the Trade Marks Act, 1999, protects the owner of a registered trademark, even when there is an attempt to use the very same trademark for dissimilar industries. There has been a diluting of the distinctiveness of the plaintiff’s trademark by the defendants’ usage of the very same word ‘Coronil’. This had effectively diminished the value of the plaintiff’s trademark.

The learned senior counsel also pointed out that if the defendants were to be permitted to use the trademark, then there would be a mushrooming effect, with other similarly placed establishments, attempting to mislead the public by using the name Coronil, as a cure for Coronavirus. when as a fact, there is no cure as on date for the said virus. The learned senior counsel also stated that public interest will be put to jeopardy if the defendants were to be allowed to project their tablets as a cure for Coronavirus. The learned senior counsel stated that the defendants can market their immunity booster tablets in any name they want, but permitting them to use the trademark ‘Coronil’ which is registered by the plaintiff would not only erode the value of the plaintiff’s trademark, but would also encourage the misleading attempt at projecting a cure for the Coronavirus.

Mr. Sathish Parasaran, learned senior counsel, on behalf of the defendants, disputed the arguments put forth and stated that the defendants are a Rs.10,000 crores company and wondered at the incongruity of the statement that a Rs.10,000 crores company would ride on the reputation of a Rs.10 crores company. The learned senior counsel stated that the defendants had established their name in national as well as international markets and ‘Pathanjali’ is a well known trademark recognized by the Registry. The learned senior counsel stated that the suit itself is part of a larger conspiracy against the defendants. He stated that though the suit had been filed seeking protection of the plaintiff’s trademark from infringement, the pleadings reveal the actual intention of the plaintiff, as part of a larger conspiracy against the Pathanjali group to scuttle their business immediately following the launch of the Coronil tablet which is an Ayurvedic medicine. The learned senior counsel repeatedly pointed out that the defendants are a 10,000 crores company, manufacturing Mineral and Herbal Products and also pointed out that the defendants had spent nearly Rs.100 crores in establishing a state of the art infrastructure for research in Ayurvedic medicines.

The learned senior counsel pointed out that the defendants had also applied for registration of the trademark ‘Coronil Tablet’ by A.No.4532424 dated 16.06.2020, before the Trademark Registry at New Delhi. The learned senior counsel stated that the plaintiff can always oppose such registration, and therefore stated that the suit itself is not maintainable. The learned senior counsel also 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 the Coronavirus, the defendants had coined the name Coronil.

The court holds that,

i).The plaintiff has established that their mark “Coronil-92 B and Coronil-213 SPL” are registered and that registration still subsists and are in force till 2027. ii).The defendants have not established that their mark ‘Coronil Tablet’ is registered. iii).The defendants have merely applied for registration and it is in the initial stages. iv).The defendants have not been permitted by the plaintiff to use the registered trademark ‘Coronil’. v).However, the defendants have projected to use the name ‘Coronil Tablet, in the course of their trade namely, apparently to cure Coronavirus. vi).Both the words ‘Coronil’ are same and identical. vii).The word ‘Coronil’ in the registered trademark of the plaintiff is the significant portion of the mark and consequently, even though it is preceded by a droplets leading to the letter ‘A’ and succeeded by the digits ’92 / 213′ and letters ‘B / SPL’, still, there is a direct infringement on the unique name ‘Coronil’ by the defendants. viii).The plaintiff’s product is a chemical agent used to eradicate and prevent corrosion. The defendants have projected to use their name ‘Coronil Tablet’ for a different business altogether and therefore, the stipulation under Section 29(4)(b) is satisfied. ix).The plaintiff has established a prima facie reputation in India among the heavy industries where chemical agents are used to treat and prevent corrosion. They have also established reputation in industries overseas also. x).The defendants have not shown due cause in naming their product as ‘Coronil’, since there is no direct material produced to show that it is a treatment for Coronavirus and even the reports in this connection, projecting such a cure have been adversely noted by the Ministry of Ayush, New Delhi. xi). The usage of the word ‘Coronil’ by the defendants will be detrimental to the distinctive character of the mark of the plaintiff, since as stated above, there is no connection between the mark ‘Coronil’ used by the defendants and their projected statement that it is a cure for Coronavirus. xii). It is also detrimental to the repute of the registered trademark Coronil of the plaintiff since, there is a prima facie possibility that the general public might question whether the trademark ‘Coronil’ of the plaintiff would also not prevent corrosion by drawing the analogy of the ‘Coronil’ of the defendants, which does not cure Coronavirus.

The Court stated that;

‘Coronil Tablet’ is not a cure but rather an immunity booster for cough, cold and fever. The defendants must realize that there are organisations which are helping the people in this critical period without seeking recognition and it would only be appropriate that they are made to pay costs to them.

The court held that, costs of Rs.5,00,000/- (Rupees Five Lakhs only) is to be paid jointly by the defendants to the Dean, Adyar Cancer Institute (WIA), East Canal Bank Road, Adyar, Chennai, and further Rs.5,00,000/- (Rupees Five Lakhs only) is to be paid jointly by the defendants to the Dean, Government Yoga and Naturopathy Medical College & Hospital, Arumbakkam, Chennai – 106. In both the organisations, treatments are afforded free of cost without any claim to either trademark, trade name, patent or design, but only with service as a moto. Costs to be paid on or before 21.08.2020, and a memo in this regard, to be filed before the Registry, High Court Madras, on or before 25.08.2020.

– Karthik K.P

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