Remedi Healthcare India Pvt Ltd vs Neurosynaptic Communications Pvt Ltd

This Commercial appeal is directed against the order dated 06.07.2024 passed on I.As.No.2, 5 and 7 in Com O.S.No.111/2024 by X Additional District and Sessions -

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Judge (Dedicated Commercial Court) Bengaluru Rural District, Bengaluru (hereinafter referred to as "Commercial Court" for short).

2. The operative portion of order under appeal reads as follows:-

"I.A.No.2 filed by the plaintiff under

order 39 Rule 1 and 2 of C.P.C is hereby

allowed and an order of ad-interim temporary

injunction is granted restraining the

defendants, its Directors, officers, employees,

agents, subsidiaries, affiliates, successors-in-

interest, assigns and any other person

claiming through or under them, from in any

manner using the trade mark 'Remedi' and

any other trademark which incorporates the

plaintiff's trademark 'Remedi' or which is

deceptively similar or identical to the plaintiff's

trademark 'Remedi' in respect of medical and

diagnostic products or services related

thereto, during the pendency of the suit.

The applications (IA-5 and 7) filed by the

defendants under section 124 of Trade marks

act 1999 are hereby rejected.

No order as to costs."

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3. The learned senior counsel appearing for the appellants contends that the order of the Commercial Court is manifestly illegal since the appellant has a global presence and had been using the trademark 'Remedi' since 2012. It is submitted that the sophisticated medical equipment and services provided by the appellant under the trade name 'Remedi' has absolutely no connection with the test kits and services offered by the respondent/ plaintiff. It is submitted that there is no possibility of any confusion or misrepresentation since the potential purchasers of the parties are totally different and distinct and there can be no injunction granted on mere speculation. Further, it is contended that the plaintiff had suffered an order of abandonment of the application for registration of the trademark 'Remedi' under Class 10 Diagnostic apparatus for medical use and the grant of registration without recall of the abandonment order by recourse to process known to law would render the registration invalid. It is therefore contended that the application under Section 124(1) ought to have been allowed by the Commercial Court. It is further -

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contended that the plaintiff who approached the Court without disclosing the true facts is not entitled for the equitable relief of injunction that has been granted by the Court. It is further contended that the specific ground raised that the suit was belated was not properly considered by the Court. Finally, it is contended that even if the order is found to be valid, it cannot operate outside the territory of India, since the appellant is a company registered in Korea having global presence.

4. The learned counsel appearing for the appellants has relied on the following judgments:-

• Google LIC v. Makemytrip (India) Private Limited & Ors, by Judgment dated 14.12.2023 passed in FAO(OS) (COMM)

Nos.147/2022 & 148/2022;

• Khoday Distilleries Limited (Now Known as Khoday India Limited) v. Scotch Whisky Association and Others, reported in (2008)

10 SCC 723; and -

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• Paramount Surgimed Limited v. Paramount

Bed India Private Limited & Ors., reported

in 2017 SCC OnLine Del 8728.

5. In reply, learned counsel for the respondent/

plaintiff contended that the suit was one for infringement and the admitted fact was that the plaintiff had registered the trademark 'Remedi' in respect of medical diagnostic apparatus on 02.04.2019. It is contended that the appellant had admittedly been incorporated in India only in September, 2023 and had been specifically alerted by the plaintiff that the use of the trademark 'Remedi' would infringe its registered trademark. It is contended that an action for infringement and passing off can be simultaneously filed and all the contention of the appellants had been considered threadbare by the Commercial Court.

It is contended that the plaintiff having proved the registration of the trademark and the continued use of the trademark since 2004 in respect of diagnostic apparatus for medical purposes, the Commercial Court was perfectly justified in granting the injunction as sought for. It is further contended that even in the event of a challenge -

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being raised as to the validity of the trademark, the Court considering the suit is empowered to grant an order of injunction under Section 124(5) of the Trade Marks Act. It is contended that there was no error committed by the Court and that the appeal is liable to be dismissed.

6. The learned counsel appearing for the respondent has relied on the following judgments:-

• Shree Nath Heritage Liquor Pvt. Ltd. v.

M/s.Allied Blender & Distillers Pvt. Ltd., reported in 2015 SCC OnLine Del 10164;

• Iatros Pharmaceuticals Pvt. Ltd., Pune v.

Xenlabs India, Mumbai and Another, reported in 2022 SCC OnLine Bom 10372;

• Midas Hygiene Industries (P) Ltd and Another v. Sudhir Bhattia & Others, reported in (2004) 3 SCC 90;

• Neon Laboratories Limited v. Medical Technologies Limited and Others, reported in

(2016)2 SCC 672;

• Wander Ltd and Another v. Antox India P.

Ltd, reported in 1990 Supp SCC 727; and -

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• Prudential IP Services Limited v. Prudential Prosperitas Company Private Limited & Ors., reported in 2017 SCC OnLine Del 11696.

7. In view of the contentions advanced, the following points arise for consideration:-

(a) Whether the impugned order granting

injunction requires interference?

(b) Whether the order under Section 124 of the

Trade Marks Act, 1999, is appealable?

8. We notice that the incorporation by the appellants in India was only in the year 2023. This apparently is after information provided to the appellants as regarding the registered trademark of the respondent herein. The Commercial Court considering a suit for infringement is expected to consider the foundational facts as regards the existence of a registered trademark and whether such trademark is in use by the plaintiff in respect of class or products or services for which it is registered. The Commercial Court has considered the said aspects of the matter and has come to the specific conclusion that the -

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plaintiff had been exclusively using the word mark "Remedi" since the year 2004. It is clearly established that the said trademark stands registered by the plaintiff in 2017 and on 02.04.2019 in respect of Class 10 Diagnostic apparatus for medical use. Though the appellants contended that they have been using the trademark "Remedi" since 2012, the Commercial Court found that there was nothing on record to show that the said mark was being used in India since 2012. It was found that the launch of the Company in India occurred only in September 2023 and the fact was that admittedly, the appellants had not registered the trademark. The rights of prior user of the plaintiff stood established. Though detailed contentions have been raised with regard to the nature of products and services offered by the appellants, we are of the opinion that in view of the admitted position that the plaintiff was the holder of a registered trademark and since the appellants could not establish any prior user in the country, the grant of injunction pending suit cannot be found fault with.

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9. The question, which is vehemently argued before this Court is whether the grant of registration of the trademark after passing of an abandonment order, which has not been invalidated in a manner known to law, would amount to an invalid registration or not. We notice that there is no provision for appeal from an order under Section 125 provided either under the provisions of the Trade Marks Act, 1999 or the Commercial Courts Act, 2015. This according to us is a question, which is pertinent for exercise of the jurisdiction by the Commercial Court under Section 124 of the Trade Marks Act, 1999.

10. No case is made out for exercise of jurisdiction under Order XLIII of CPC to interfere with the exercise of discretionary jurisdiction by the Commercial Court in the grant of an order of Temporary Injunction as we do not find any perversity or arbitrariness vitiating the order, is not an appealable order under Section 13 of the Commercial Courts Act, 2015. We further notice that even in a case where an application under Section 124 is preferred, Section 124(5) of the Trade Marks Act specifically provides that an injunction -

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can be granted while the question of validity of the trademark is being considered by the appellate authority.

11. In the facts and circumstances of the instant case and in view of the decisions which have been relied on before us, we are of the opinion that the contention that the grant of Interim Order of Injunction pending the suit was illegal and cannot be accepted. We find that the contentions of the parties have been considered by the Court.

12. In view of the discussions above, the points raised are answered in "the negative".

13. However, we notice that the Commercial Court has proceeded to grant an injunction without specifying the territorial limits within which such injunction would be applicable. It is clear that the Commercial Court exercising jurisdiction under Law of Trademarks in India would not have the power to injunct the use of the trademark outside the territory of the Country. We therefore make it clear that since the Commercial Court has no extra territorial jurisdiction in Korea or outside the territory of India, the -

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grant of injunction would be applicable with regard to use of the trademark within the territory of India alone.

14. With the above observations, the appeal is disposed of without prejudice to the contentions of the parties in the suit or in any other proceedings in accordance with law.

There will be no order as to costs.

Pending I.A.No.1/2024 and I.A.No.2/2024 for Stay are hereby stand disposed of.

Sd/-

(ANU SIVARAMAN)

JUDGE

Sd/-

(G BASAVARAJA)

JUDGE

cp*