Remedi Healthcare India Pvt Ltd vs Neurosynaptic Communications Pvt Ltd

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."

-

4

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

-

5

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

-

6

• 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

-

7

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

-

8

• 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

-

9

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.

-

10

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

-

11

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

-

12

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*