Apollo Hospitals Enterprises Ltd vs Dr.Dheeraj Saurabh

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Reserved on : 10.11.2023

Pronounced on : 20.11.2023

CORAM:

THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE

C.S.(Comm.Div.) No.55 of 2023

Apollo Hospitals Enterprises Ltd., Having its registered office at No.19, Bishop Gardens, Raja Annamalaipuram, Chennai – 28. Rep. By its authorized signatory Mr.S.M.Mohan Kumar – Manager Legal ... Plaintiff

Vs.

Dr.Dheeraj Saurabh Proprietor of NEW APOLLO HOSPITAL, NH-28, Betia Road, Motihari, Bihar – 845 401. ... Defendant

Prayer: Civil Suit is filed under Order IV Rule 1 of O.S. Rules read with Order VII Rule 1 CPC, Sections 27, 28, 29, 134 & 135 of the Trademarks Act, 1999, and Section 7 of the Commercial Courts Act, praying:-

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(a) to declare the ‘Apollo” MarkasWELL-KNOWNTrade Markunder Section 2 (1) (zg) read with Section 11 of the Trade Marks Act, 1999 and issue consequently directions to appropriate authorities; (b) to grant permanent injunction restraining the Defendant, its proprietor/directors/partners officers, dealers, distributors,successors-in- business, servants, agents, employees, representatives and all other persons claiming through or under them from in any manner from infringing the registered trademarks of the Plaintiff including “Apollo” “Apollo Hospitals” “Apollo Diagnostics”and “Apollo Clinic” and its variants by using the “New Appolo Hospital” and/or any other mark identical and/or deceptively similar mark in any other manner whatsoever; (c) to grant permanent injunction restraining the Defendant, its proprietor/directors/partners, officers, dealers, distributors, successors-in- business, servants, agents, employees, representatives and all other persons claiming through or under them from in any manner from passing off and/or enabling others to pass off the Plaintiff’s trademarks “Apollo” “Apollo Hospitals” “Apollo Diagnostics”and “Apollo Clinic” and its variants by using the “New Appolo Hospital”and/or any other mark identical and/or deceptively similar mark in any other manner whatsoever; (d) to grant permanent injunction restraining the Defendants its proprietor/directors/partners and officers, dealers, distributors successors-

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in-business, servants, agents, employees, representatives and all others persons claiming through or under them from in any manner from diluting the distinctive character of Plaintiff’s trademarks “Apollo” “Apollo Hospitals” “Apollo Diagnostics”and “Apollo Clinic” and its variants or indulging in any activity which takes unfair advantage of Plaintiff’s goodwill and reputation in Plaintiff’s registered trademarks or by any activity amounting to unfair trade practice; (e) the Defendant be ordered to surrender to the Plaintiff for destruction all labels, cartons, containers, packaging materials, blocks, dyes, prints, screen prints, notices, pamphlets, advertisements, hoardings, and other promotional materials bearing the “New Appolo Hospital” mark which is identical to the Plaintiff’s registered trademark “Apollo” “Apollo Hospitals” “Apollo Diagnostics” and “Apollo Clinic” and its variants; (f) Pass a Preliminary decree in favour of the Plaintiff directing the Defendant for rendition of their accounts of sales and profits of the impugned goods sold by the Defendants under the impugned mark “New Appolo Hospital” and a final decree be passed in favour of the Plaintiff for the amount of profit found to have been made by the Defendant after such accounts are rendered; (h) Defendant be ordered and decreed to pay the Plaintiff a sum of Rs. 10,00,000/- as punitive and compensatory damages for committing acts of infringement of trademark and passing off or such other sum as may be found due and payable by this Hon’ble Court after an account of the profits made by the Defendants is rendered; and

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(h) An order as to costs of the proceedings;

For Plaintiff : Mr.H..Siddarth for M/s.Cibi vishnu & P.Giridharan

Defendant is set exparte

JUDGMENT

This suit has been filed seeking the following reliefs;

(a) to declare the registered mark 'Apollo' as a well-known

trademark as per the provisions of Section 2(1)(zg) read with Section 11

of the Trade Marks Act, 1999 (in short “the Act”);

(b) to grant permanent injunction restraining the defendant from

infringing the registered trademarks of the plaintiff including 'Apollo',

'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants

by using the 'New Appolo Hospital' and/or any other mark identical

and/or deceptively similar mark in any other manner whatsoever;

(c) to grant permanent injunction restraining the defendant from

passing off and/or enabling others to pass off the plaintiff's trademarks

'Apollo', 'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its

variants by using the 'New Appolo Hospital' and/or any other mark

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identical and/or deceptively similar mark in any other manner

whatsoever;

(d) to grant permanent injunction restraining the defendant from

diluting the distinctive character of the plaintiff's trademarks 'Apollo',

'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants

or indulging in any activity which takes unfair advantage of plaintiff's

goodwill and reputation in plaintiff's registered trademarks or by any

activity amounting to unfair trade practice;

(e) the defendant be ordered to surrender to the plaintiff for

destruction of all labels, cartons, containers, packaging materials, blocks,

dyes, prints, screen prints, notices, pamphlets, advertisements, hoardings,

and other promotional materials bearing the 'New Appolo Hospital' mark

which is identical to the plaintiff's registered trademarks 'Apollo', 'Apollo

Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants;

(f) to pass a preliminary decree in favour of the plaintiff directing

the defendant for rendition of their accounts of sales and profits of the

impugned goods sold by the defendant under the impugned mark 'New

Appolo Hospital' and a final decree be passed in favour of the plaintiff for

the amount of profit found to have been made by the defendant after such

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accounts are rendered;

(g) the defendant be ordered and decreed to pay the plaintiff a sum

of Rs.10,00,000/- as punitive and compensatory damages for committing

acts of infringement of trademark and passing off or such other sum as

may be found due and payable after an account of the profits made by the

defendant is rendered; and

(h) to direct the defendant to pay the costs of this suit.

2. Despite service of suit summons on the defendant, they have

chosen not to defend the suit. Earlier, the defendant had entered

appearance through a counsel and had given an undertaking through their

counsel that they had stopped using the trademark “New Appolo

Hospital”, subsequent to the grant of interim injunction by this Court

through its order dated 13.03.2023. Thereafter, the learned counsel for

the defendant reported “no instructions” on 11.08.2023 and a memo to

that effect was also filed by the said learned counsel. Since none

appeared on behalf of the defendant thereafter, the defendant was set

exparte by this Court on 11.08.2023.

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3. The plaintiff, with regard to their reputation as a leading

hospital, has made the following averments in the plaint:-

(i) The Plaintiff owns and operates the world-

famous Apollo Hospitals Group of Medical Establishments ranging from hospitals, clinics,

diagnostic centers, telemedicine facilities, pharmacies, etc with various specialty facilities such as for cancer treatment, dentistry, child and pediatrics, cardiovascular, transplants, etc. The Plaintiff is a pioneer in the field of treatment of various ailments.

(ii) It is submitted that the Plaintiff company was established by Dr. Prathap C. Reddy, Padma Vibhushan (2010) on 05.12.1979. Dr. Reddy was an established doctor with a flourishing practice in Boston, USA, but left all that behind and returned to India in 1971 to establish a socially motivated medical practice. On his return he found the medical landscape in the country plagued by gaps in infrastructure, delivery and affordability. Dr. Reddy was motivated to establish a hospital by the loss of a young patient who could not afford to go abroad for treatment. This set the blueprint to build India's first multi-specialty private sector hospital to provide quality healthcare to Indians in India.

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(iii) The Plaintiff's vision is to "bring healthcare of international standards within the reach of every individual", and the Plaintiff is further "committed to the achievement, and maintenance of excellence in education, research and healthcare for the benefit of humanity".

(iv) It is submitted that the Plaintiff adopted the unique trademark "Apollo, "Apollo Hospital', "Apollo Diagnostic' and 'Apollo Clinic' to be used as is trademarks with respect to all its hospitals and other medical undertakings. Prior to the Plaintiff no other person had adopted the said "Apollo', "Apollo Hospital', 'Apollo Clinic" or "Apollo Diagnostic' trademarks in the field of pharma, healthcare and medical services and products. The Plaintiff also has other registered marks associated with the aforesaid trademarks incorporating "Apollo' / "Apollo Hospitals and its brands and logos. Till date there has been no objection nor any limitation placed on the Plaintiff's registered trademarks. The trademarks are valid and subsisting in favour of the Plaintiff as on date.

(v) It is submitted that Apollo Hospitals is the forerunner of integrated healthcare in Asia, and has also become a name to reckon with globally as well. The Plaintiff's flagship Apollo Hospital at Chennai was https://www.mhc.tn.gov.in/judis 8/36 C.S.No.55 of 2023

started with just 150 beds and was inaugurated by the then President of India, his Excellency, Shri Giani Zail Singh. Today, the Plaintiff group's futuristic vision and decades of established quality of services has ensured that it is in the highest position at every touch point of the healthcare delivery chain. Apollo has over 10,000 beds across 71 hospitals, more than 5,000 pharmacies, over 2,257 primary care & diagnostic clinics including sugar and dental clinics, birthing, day care and dialysis centre, more than 800 Tele-medicine, Tele-Radiology, Tele-Cardiology, units across various countries, health insurance services, global projects consultancy, 5 academic institutions and a Medical Research Foundation with a focus on global clinical trials, epidemiological studies, stem-cell and genetic research.

(vi) It is submitted that the Plaintiff has several Apollo Hospitals across India including Tamil Nadu, Andhra Pradesh, Karnataka, Chhattisgarh, Odisha, Gujarat, West Bengal, Delhi to name a few. It is further submitted that the Plaintiff also has several hospitals abroad in SriLanka, Bangladesh, Ghana, Nigeria, Mauritius, Qatar, Kuwait and Oman among others and employs more than 70,000 persons including over 11,000 doctors, 10,000 nurses and 5000 paramedics. The Apollo group has made quality healthcare accessible https://www.mhc.tn.gov.in/judis 9/36 C.S.No.55 of 2023

to the people of India, and even overseas. It has become an institution of trust, and a beacon of hope to so many searching for a cure for their ailments.

(vii) It is submitted that the Plaintiff is an integrated healthcare organization with owned and managed hospitals, diagnostic clinics, dispensing pharmacies and consultancy services, through its Apollo Hospitals, Apollo Clinics, Apollo Pharmacy, etc. In addition, the Plaintiff's service offerings include healthcare at the patient's doorstep clinical & diagnostic services, medical business process outsourcing, third party administration services and health insurance. To enhance performance and service to customers, the Plaintiff also makes available the services to support telemedicine services, education, training programs & research services and a host of other non-profit projects. In the three decades of service, the Apollo Group through its Hospitals, Clinics, Primary Care &Diagnostic Centres, Pharmacies, and medical out - reach programmes, has scripted one of the most magnificent stories of success that India has seen. Not only is the Apollo Group one of the largest integrated healthcare groups in the region, it has also successfully catalysed the private healthcare revolution in the country and the world. Plaintiff has provided medical https://www.mhc.tn.gov.in/judis 10/36 C.S.No.55 of 2023

care to approximately120 million lives from over 120countries.

(viii) It is submitted that the Plaintiff's service offerings include healthcare at the patient's doorstep, clinical & diagnostic services, medical business process outsourcing, third party administration services and health insurance. To enhance performance and service to customers, the Plaintiff also makes available the services to support business, telemedicine services, education, training programs & research services and a host of other non-profit projects.

(ix) It is submitted that the hospitals in the Plaintiff's Group have performed over 7,600 cardiac surgeries (the highest in a year) with 99.2% success rate. Apollo Hospitals, Chennai, completed 25,000 coronary bypass surgeries. Plaintiff's Group performed over 450 liver transplants including on both children and adults. There are over 35,000 beneficiaries in the various medical camps and outreach programs organised by the hospitals in the group.

(x) In furtherance of the Plaintiff's commitment to increase availability of healthcare to all sections of society led to the birth of Apollo Reach Hospitals an initiative of the Plaintiff to reach tertiary healthcare to rural areas. This is the first major initiative by the https://www.mhc.tn.gov.in/judis 11/36 C.S.No.55 of 2023

private sector to provide high quality medical facilities to the rural population. The first such hospital in the country – Apollo Reach Hospitals, Karimnagar, has 150 beds and successfully performed the following procedures within three months of its inauguration

(a) Open Heart Surgery with Cardiopulmonary Bypass on a 14 year old girlwith congenital heart defect (Ventricular Septal Defect with pulmonary Stenosis). The patient was discharged 6 days after the surgery.

(b) Placement of a Permanent Pace Maker on a 70 year old man with Complete Heart Block. This patient was admitted in emergency with complaints of recurrent episodes of blackouts and was found to havecomplete heart block.

(c) Mitral Valve Replacement on a 55 year old female patient suffering from severe Mitral Stenosis with LA clot. The patient was discharged on the sixth day of the surgery.

(d) Angioplasty through Radial Artery - a highly skilled procedure performed at very few centers.

(e) Angioplasty with Stent placement on a 38 year old patient.

(f) Separation of conjoined twins. The twins, who were joined at theposterior, shared an anus, urinary passage and a penis -- a rare condition called as https://www.mhc.tn.gov.in/judis 12/36 C.S.No.55 of 2023

pygopagus twins.

(xi) It is submitted that the Plaintiff has also successfully ventured into the pharmaceutical market. Plaintiff's Apollo Pharmacy chain is India’s first and largest branded network with more than 5000 operational outlets across various states in India. The Plaintiff also runs an e-commerce platform by name Apollo 24x7 offering medicines online.

(xii) The Plaintiff has launched Telemedicine Solutions which includes Teleradiology, Teleconsulting, Telemonitoring, and Telesurgery. The Plaintiff’s Apollo Tele-Health Services has been granted an ISO 13131:2021 certificate by the British Standards

Institution (BSI) becoming the 1st ever organization globally to attain the standard of ISO 13131:2021.

(xiii) It is submitted that the Plaintiff has also forayed into stem cell research on a non-profit basis through its Molecular Biology Research Centre at Hyderabad. The Plaintiff has also established a Apollo Spine Clinic and Apollo Liver Clinic abroad in Oman.

(xiv) It is submitted that the Plaintiff has also set up 25 wellness centres at the premises of various top Indian companies in Bangalore with vision to spread such centres across India. The Plaintiff, through its https://www.mhc.tn.gov.in/judis 13/36 C.S.No.55 of 2023

group hospitals, clinics and diagnostic centres participated in disaster management activities and provided medications, food, doctors, nurses, ambulances for flood relief in Andhra Pradesh.

(xv) It is submitted that the Plaintiff had started Apollo Diagnostics in 2012 and its network today includes more than 523 centres across India, with more than 1,000 employees such as Phicbotomists, Lab Technicians, Pathologists, Marketing & Sales professionals. Apollo Diagnostics is a one stop solution for about 3500 pathology tests from the routine to the complex. It is a business unit of the Plaintiff's subsidiary, Apollo Health and Lifestyle Limited.

(xvi) It is submitted that Apollo Diagnostics focuses on quality diagnostic services within the reach of health seeker. Services are offered in the areas of Biochemistry, Clinical Pathology, Cytopathology, Hematology, Histopathology, Immunology, Microbiology, Molecular Genetics, Molecular Diagnostics and Serology. The clinical laboratory testing services at Apollo Diagnostics include: Blood Tests, Body Fluid Testing, Tissue Pathology & Cytology, General Health Screening & Monitoring Tests, Drug Screening & Testing as well as Gene - based Testing (Genetic Testing). Apollo Diagnostics offers free Home https://www.mhc.tn.gov.in/judis 14/36 C.S.No.55 of 2023

Sample Collection services.

(xvii) It is pertinent to state that over the years the Plaintiff has brought into the country the best that the world has to offer in terms of technology. India's first 64 slice PET-CT system installed at Apollo Speciality Cancer Hospital, Chennai. State-of-the-art radio surgery equipment, Novalis Tx was commissioned at Apollo Hospitals Hyderabad.

(xviii) It is submitted that the Plaintiff today is also regularly contacted for the management and operations of other hospitals in India and abroad. The Apollo Global Project is amongst the largest hospital consultants in the world. As part of its services the Plaintiff also contracts with its business Partners to lend its name and all other marks, logos and Intellectual property associated with the Plaintiff. The success of the hospitals consultancy limb of the Plaintiff's operations is that immense value is attached to its intellectual property. The unique name "Apollo" used by the Plaintiff is recognised and associated with the Plaintiff, worldwide. As on date hospitals in various countries across the world use the Plaintiff's Trademark.

4. The plaintiff came to know in the month of July, 2022, that the

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defendant has blatantly adopted a deceptively similar mark by name 'New

Appolo Hospital' for its hospital business. The plaintiff has therefore sent

a cease and desist notice dated 21.07.2022 calling upon the defendant not

to use the mark 'New Appolo Hospital' as it would amount to

infringement and passing off. Since the defendant in its reply dated

13.09.2022 to the cease and desist notice dated 21.07.2022 refused to

accept their guilty and stop using the offending trademark, the plaintiff

was constrained to file this suit seeking for the reliefs as prayed for in the

plaint.

5. Before the Additional Master-II, the authorised signatory of the

plaintiff by name S.M.Mohan Kumar, Manager (Legal), was examined as

a witness-PW1 on the side of the plaintiff. Through PW1, the following

documents were marked as exhibits on the side of the plaintiff:-

Date Nature of documents Exhibits 05.12.197 Incorporation certificate of the plaintiff Ex.P1 9 27.12.197 Commencement of business of plaintiff Ex.P2 9 2021-2022 Extract of plaintiff's annual report Ex.P3

08.10.200 Legal use certificate/registration certificates for Ex.P4 1 to marks Apollo 18.03.202

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Date Nature of documents Exhibits 0 26.08.200 Copy of registration certificate for the artistic work Ex.P5 8 16.03.202 Trademark assignment agreement between the Ex.P6 2 plaitniff and its subsidiary Apollo Healthco Ltd. 02.11.200 First commemorative stamp Ex.P7 9 04.11.201 Second commemorative stamp Ex.P8 4 19.02.201 Third commemorative stamp Ex.P9 9 List of awards, honors of doctors of plaintiff's Ex.P10 company and manage 21.07.202 Cease and desist notice sent by the plaintiff to the Ex.P11 2 defendant 30.09.202 Reply issued by the counsel for the defendant Ex.P12 2 22.12.202 Original certificate of chartered Accountant Ex.P13 2 List of plaintiff's active mark download copy with Ex.P14 65B Downloaded copy of the domain name owned by the Ex.P15 plaintiff Downloaded copy of the list of plaintiff branches in Ex.P16 India Downloaded copy of photo of defendant's signboard Ex.P17 15.10.202 Board resolution Ex.P18 0 Original 65B certificate, affidavit under Section Ex.P19 65B Evidence Act PW1 has also reiterated the contents of the plaint in his proof affidavit.

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6. The learned counsel for the plaintiff has relied upon the

following authorities in support of his contentions:-

(i) Godfrey Philips India Ltd. Vs. Girnar Foods & Beverages (P) Ltd [2004 (5) SCC 257];

(ii) Bennet, Coleman and Company Ltd. Vs. Vnow Technologies Private Limited and another [2023 SCC Online Del 864];

(iii) PEPS Industries Private Limited Vs. Kurlon Limited [2022 SCC Online Del 3275];

(iv) Apollo Hospitals Enterprises Ltd. Vs. Sri Sai Apollo Pharmacy [2018 (74) PTC 199 (Mad)];

(v) Apollo Hospitals Enterprises Ltd. Vs. Naseer Apollo Pharmacy [2019 (77) PTC 344 (Mad)];

(vi) Apollo Hospitals Enterprises Ltd. Vs. Sai Apollo Medicals [MANU/TN/3010/2018]; and

(vii) Apollo Hospitals Enterprises Ltd. Vs. Mahesh Apollo Pharmacy [2016 (67) PTC 167 (Mad)].

7. The issues that arise for consideration in this suit are as follows:-

(a) Whether the plaintiff has proprietary right to the trademarks 'Apollo', 'Apollo Hospital', 'Apollo Diagnostic' and 'Apollo Clinic' and its variants?

(b) Whether the plaintiff's trademark falls within the definition of Well-Known mark within

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the meaning of Section 2(1)(zg) of the Trade Marks Act?

(c) Whether the plaintiff is entitled for damages and surrender of infringed materials by the defendant and rendition of accounts by the defendant as sought for in prayer (e), (f) and (g) of the plaint?

(d) Whether the use of the word “New Appolo Hospitals” by the defendant would amount to infringing the trademark of the plaintiff? and

(e) To what other reliefs the plaintiff is entitled to?

Issue (a):-

Whether the plaintiff has proprietary right over the trademarks

'Apollo', 'Apollo Hospital', 'Apollo Diagnostic' and 'Apollo Clinic' and its

variants?

8. The plaintiff has interalia registered the trademark 'Apollo' in

Class 42 with respect to all medical services, which includes dispensing

of pharmaceutical products and services. The plaintiff has registered the

trademark “Apollo Hospitals” under Classes 5, 35 and 42. The plaintiff

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has registered the trademark “Apollo Clinic” under Classes 5, 10, 16, 35,

42 and 44. The plaintiff has registered the trademark “Apollo

Diagnostic” under Classes 5, 10, 16, 35 & 44. The legal usage certificate

of the aforesaid marks of the plaintiff have been marked as Ex.P4. The

Assignment Agreement between the plaintiff and its subsidiary Apollo

Health Co. Ltd. is marked as Ex.P6.

9. In addition to the trademark 'Apollo', 'Apollo Hospitals', 'Apollo

Pharmacy' and other related brands and logos, the plaintiff is also the

owner of the copyright of the labels consisting of 'Apollo', 'Apollo

Hospitals', 'Apollo Pharmacy' and other variants thereto presented using a

distinct font and colored background, a stylized device and other

distinctive elements. The domain name owned by the plaintiff has been

marked as Ex.P15.

10. The plaintiff has obtained registration under the Copyright Act

for 'Apollo', 'Apollo Hospitals' and 'Apollo Pharmacy' under the

registration dated 26.08.2008. By virtue of the registration, the plaintiff

has got right over the artistic work in the label. All rights, title and

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interest in the artistic work for 'Apollo', 'Apollo Hospitals' and 'Apollo

Pharmacy' labels vests with the plaintiff and the use of any identical label

or deceptively similar label by anyone amounts to passing off and

infringement of copyright. The Copyright Registration Certificates for

'Apollo', 'Apollo Hospital', 'Apollo Pharmaceutical' have been marked as

Ex.P5.

11. Therefore, it is clear from the documentary evidence placed on

record before this Court that the plaintiff has proprietary right over the

trademark 'Apollo' and its variants. Infact, the registration under various

classes shows that the plaintiff has got various proprietary rights and

rights as conferred for registration as applicable for a registered

proprietor. Therefore, issue (a) is decided in favour of the plaintiff by

declaring that the plaintiff has proprietary right to the trademarks

'Apollo', 'Apollo Hospitals', 'Apollo Clinic' and 'Apollo Diagnostic' and its

variants.

Issue (b):-

(b) Whether the plaintiff's trademark falls within the definition of

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Well-Known mark within the meaning of Section 2(1)(zg) of the Trade

Marks Act?

12. This Court earlier had a doubt as to whether concurrent powers

are vested with both the trademark registry as well as this Court for

granting recognition for a particular trademark as a well-known mark.

In the year 2017, the Trade Marks Rules were amended empowering the

trademark registry to grant recognition of a trademark as a well-known

mark within the meaning of Section 2(1)(zg) of the Act, but, did not

exclude the power of the Court also to grant such a recognition. Prior to

the amendment of the Trade Marks Rules in the year 2017, the power to

grant recognition of a trademark as a well-known mark was vested only

with the Court. Only due to the said reason, a doubt had arisen in the

mind of this Court as to whether, with the amendment of the Trade

Marks Rules, 2017, the power of this Court to grant recognition of a

trademark as a well-known mark has been ousted. To get over the doubt,

this Court had to analyze the provisions of Sections 11(6) and 2(1)(zg) of

the Act and the amended Trade Marks Rules, 2017, pertaining to grant of

recognition by the trademark registry for a trademark to be recognized as

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a well-known mark.

13. After analyzing the said provisions and the authorities

pertaining to grant of recognition of a trademark as a well-known mark,

this Court is now convinced that concurrent powers are vested with both

this Court as well as the Trade Marks Registry for granting recognition to

a trademark as a well-known mark.

14. Section 2(1)(zg) of the Act defines a 'well – known trademark'

in relation to any goods or services, as "a mark which has become so to

the substantial segment of the public which uses such goods or receives

such services that the use of such mark in relation to other goods or

services would be likely to be taken as indicating a connection in the

course of trade or rendering of services between those goods or services

and a person using the mark in relation to the first-mentioned goods or

services.” The above definition clearly demonstrates the extraordinary

protection provided to a well-known mark.

15. The relevant provisions under the Trade Marks Act, 1999, with

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regard to “well-known” marks, are as follows:-

(a) Section 11(2) recognizes one of the relative grounds of refusal

of a trade mark stating that a trade mark shall not be registered if or to

the extent the earlier trade mark being a well-known trademark in India.

(b) Section 11(6) lays down the criteria for determination of a well-

known mark, which is as follows:-

(i) The knowledge or recognition of that trademark in the relevant

section of the public including knowledge in India obtained as a result of

promotion of the trademark;

(ii) the duration, extent and geographical area of any use of that

trademark;

(iii) the duration, extent and geographical area of any promotion of

the trade mark, including advertising or publicity and presentation, at

fairs or exhibition of the goods or services to which the trade mark

applies;

(iv) the duration and geographical area of any registration of or any

application for registration of that trade mark under this Act to the extent

that they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade

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mark, in particular the extent to which the trade mark has been

recognised as a well-known trade mark by any court or Registrar under

that record.

(c) Section 11(9) lays down the conditions/factors which are taken

into consideration for grant of a well-known trademark. They are as

follows:-

(i) That the Trademark is registered in India.

(ii) That public at large has knowledge of the trademark .

(iii) That the Trademark has been used in India.

(iv) Application for registration of trademark is underway in India

(v) That the trademark is registered in any other jurisdiction

(d) Section 11(10) sets out an obligation on the Registrar of Trade

Marks to protect a well-known trademark against marks which are

identical and/or similar.

16. As seen from the aforesaid sections and in particular, Section

11(6) of the Trademarks Act, 1999, it is clear that both the Registrar of

Trademarks as well as the Court having competent jurisdiction can

recognize a trademark as a well-known mark. The Trademarks Act does

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not prohibit this Court, which is a competent Court, from recognizing the

plaintiff's trademark as well-known marks.

17. Rule 124 of the Trade Marks Rules of 2017, which empowers

the trademark registry to grant recognition of a trademark as a well-

known mark, also makes it clear that once the Court passes an order

recognizing a trademark as a well-known mark, trademark registry will

have to give due consideration to the said recognition, while adjudicating

as to whether the applicant is entitled to be granted the recognition of its

trademark as a well-known mark. As seen from Section 11(6) of the Act,

for adjudicating whether a trademark is a well-known mark or not, the

following 10 factors will have to be considered:-

(i) The extent of knowledge of the mark vis-à-vis the relevant

public segment;

(ii) Duration of use;

(iii) Extent of product and services to which the mark is being

used;

(iv) Method, frequency and duration of advertising and promotion

of the mark;

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(v) Geographical extent of trading area where the mark is being

used

(vi) Registration of the mark;

(vii) Volume of goods and services being sold under the mark;

(viii) Nature and extent of use of same or similar marks by other

parties;

(ix) Extent to which rights claimed in the mark have been

successfully enforced; and

(x) Actual number of consumers consuming goods or availing

services under the brand.

18. In the case of the plaintiff, the trademark 'Apollo' has satisfied

all the tests required for granting recognition as a well-known mark. The

exhibits marked on the side of the plaintiff make it clear that in respect of

the healthcare industry, their trademark 'Apollo' and its variants is well-

known, not only in India, but also in abroad. They have commenced

their business in the year 1979 and over a period, they have established

various hospitals, clinics, Daycare centres, pharmacies and other allied

business, not only in India, but also in abroad. Their annual reports also

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prove that their turnover runs into several hundreds of crores of rupees

and they have carved a niche for themselves in the health and

pharmaceutical segments. Judicial notice can also be taken with regard to

the said fact. Ten-factors tests highlighted supra are also satisfied by the

plaintiff for recognizing their trademark as a well-known mark as per the

provisions of Section 11(6) of the Act.

19. The name 'Appolo' is perceived to be synonymous to the

plaintiff and the plaintiff is therefore entitled to the highest level of

protection as the public at large associate the name 'Apollo' only with the

plaintiff insofar as health and pharmaceutical segments are concerned.

Therefore, the plaintiff's trademark falls within the definition of well-

known mark within the meaning of Section 2(1)(zg) of the Act and

deserves protection, that is conferred to well-known marks under the

Trade Marks Act.

20. The judgments relied upon by the learned counsel for the

plaintiff during the course of his submissions also throw light on the

circumstances when a trademark can be recognized as a well-known

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mark under Section 11(6) of the Act. In all those judgments, the

respective High Courts have recognized the trademark involved in those

cases as a well-known mark under Section 11(6) of the Act. The plaint

averments, oral and documentary evidence placed on record make it clear

that the plaintiff's trademark 'Apollo' and its variants are well-known

marks in the health and pharmaceutical industry. Hence, the plaintiff is

entitled to get recognition by this Court for its trademark 'Apollo' as a

well-known mark in respect of the healthcare and pharmaceutical

segments. Accordingly, issue (b) is answered in favour of the plaintiff by

declaring that the trademark 'Apollo' is a well-known mark as per the

provisions of Section 11(6) read with Section 2(1)(zg) of the Act, insofar

as health and pharmaceutical segments are concerned.

Issue (c):-

(c) Whether the plaintiff is entitled for damages, surrender of infringed materials and rendition of accounts by the defendant as sought for in prayer (e), (f) and (g) of the plaint?

21. The learned counsel for the plaintiff has made an endorsement

in the plaint on instructions that the plaintiff is not pressing the relief as

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sought for in the prayer (e), (f) and (g) of the plaint. Hence, there is no

necessity for this Court to adjudicate with regard to prayer (e), (f) and (g)

of the plaint. Hence, the suit claim insofar as prayer (e), (f) and (g) of the

plaint has to be dismissed as not pressed.

Issue (d):-

Whether the use of the word “New Appollo Hospitals” by the defendant would amount to infringing the trademark of the plaintiff?

22. A cease and desist notice was sent by the plaintiff to the

defendant on 21.07.2022, which has been marked as Ex.P11, calling

upon the defendant not to use the same trade name 'Apollo'. However,

despite the cease and desist notice, the defendant has been using the same

trade name 'Apollo' for its hospital by naming it 'New Appolo Hospital'.

As observed earlier, the plaintiff is having registration for its trademark

'Apollo' and its variants in different Classes under the Trade Marks Act.

They have been using their trademark 'Apollo' and its variants ever since

1979. From the oral and documentary evidence available on record as

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well as from the plaint averments, it is clear that the defendant has been

unauthorizedly using the mark 'New Appolo Hospital' despite having

knowledge that the plaintiff being an established player in the healthcare

and pharmaceutical sector is having trademarks registration for 'Apollo'

and its variants and has attained secondary meaning on account of its

long usage in the healthcare and pharmaceutical industry. The name

'New Appolo Hospital' used by the defendant is deceptively similar to the

plaintiff's trademark 'Apollo' and its variants.

23. Based on the oral and documentary evidence available on

record, it is clear that only with a dishonest intention of making undue

profits by using the trademark 'Apollo', which belongs exclusively to the

plaintiff, the defendant has been using the name 'New Appolo Hospital'.

Both the plaintiff and the defendant are in the same area of business. If

the defendant is allowed to use the name 'New Appolo Hospital', it will

certainly cause confusion in the minds of the public, who are familiar

only with the usage of name 'Apollo' for healthcare and pharmaceutical

sectors by the plaintiff alone and no one else. Being a deceptively similar

mark to that of the plaintiff, the defendant should be permanently

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injuncted from using the name 'New Appolo Hospital' for its hospital

business. The defendant has not only infringed the plaintiff's trademark,

but also committed an act of passing off on account of the fact that the

public will be deceived as they will be under the impression that 'New

Appolo Hospital' is also an hospital run by the plaintiff, which, in reality,

is not true. Therefore, permanent injunction reliefs sought for by the

plaintiff in the suit as found in prayer (b) and (c) of the plaint have to be

granted by this Court. Accordingly, issue (d) is answered in favour of the

plaintiff. It is also to be noted that the defendant has already given an

undertaking to this court through its counsel that they have stopped using

the name 'Appolo' for their hospital, subsequent to the interim order

passed by this Court.

24. In view of infringing and passing off committed by the

defendant, the defendant will have to pay the costs of this suit.

25. For the foregoing reasons, this suit is partly decreed by

granting the following reliefs:-

(a) It is declared that the mark 'Apollo' is a well-known trademark

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insofar as healthcare and pharmaceutical sector is concerned as per the

provisions of Section 2(1)(zg) read with Section 11 of the Trade Marks

Act, 1999.

(b) Permanent injunction is granted restraining the defendant from

infringing the registered trademarks of the plaintiff including 'Apollo',

'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants

by using the 'New Appolo Hospital' and/or any other mark identical

and/or deceptively similar mark in any other manner whatsoever.

(c) Permanent injunction is granted restraining the defendant from

passing off and/or enabling others to pass off the plaintiff's trademarks

'Apollo', 'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its

variants by using the 'New Appolo Hospital' and/or any other mark

identical and/or deceptively similar mark in any other manner

whatsoever;

(d) Insofar as prayer (d), (e) and (f) sought for in the plaint is

concerned, the same is dismissed as not pressed.

(e) The defendant is directed to pay the costs of this suit.

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Index: Yes/no Speaking order/non-speaking Neutral citation : Yes/no rkm

Plaintiff's witness:

Mr.S.M.Mohan Kumar - PW1 Documents exhibited by the Plaintiff: Date Nature of documents Exhibits 05.12.1979 Incorporation certificate of the plaintiff Ex.P1 27.12.1979 Commencement of business of plaintiff Ex.P2 2021-2022 Extract of plaintiff's annual report Ex.P3

08.10.2001 Legal use certificate/registration certificates for marks Ex.P4 to Apollo 18.03.2020 26.08.2008 Copy of registration certificate for the artistic work Ex.P5 16.03.2022 Trademark assignment agreement between the plaitniff and Ex.P6 its subsidiary Apollo Healthco Ltd.

02.11.2009 First commemorative stamp Ex.P7 04.11.2014 Second commemorative stamp Ex.P8 19.02.2019 Third commemorative stamp Ex.P9 List of awards, honors of doctors of plaintiff's company and Ex.P10 manage 21.07.2022 Cease and desist notice sent by the plaintiff to the defendant Ex.P11 30.09.2022 Reply issued by the counsel for the defendant Ex.P12 22.12.2022 Original certificate of chartered Accountant Ex.P13 List of plaintiff's active mark download copy with 65B Ex.P14 Downloaded copy of the domain name owned by the Ex.P15 plaintiff Downloaded copy of the list of plaintiff branches in India Ex.P16

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Date Nature of documents Exhibits Downloaded copy of photo of defendant's signboard Ex.P17 15.10.2020 Board resolution Ex.P18 Original 65B certificate, affidavit under Section 65B Ex.P19 Evidence Act

AQJ

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ABDUL QUDDHOSE, J.

rkm

C.S.(Comm.Div.) No.55 of 2023

20.11.2023

https://www.mhc.tn.gov.in/judis 36/36