The general principles that are applicable in the case of infringement are that the comparison among the similar goods must involve an assessment of the distinctiveness of the mark and the likelihood of confusion as to origin of goods or services concerned. In this case the person that is to be considered are the customers as they have imperfect memory and may not thoroughly distinguish among the goods or services.

In order to assess the case of infringement the mark is to be assessed on a whole as some aspects of the marks and signs will be more distinctive than others. The onus to prove deception is on the plaintiff whoa alleges the deception. The mark is said to be infringed if the defendant, using the mark as whole or partly, copied the essential features of the mark.

In the said case the main issues raised among the parties were that if the registered trademark of the plaintiff can be protected under section 29 (4) of the Trademarks Act.
Section 29(4) of the Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which:

1. Is identical with or similar to the registered trade mark; and
2. is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
3. the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Therefore, in order to prove a case of trademark infringement in case of dissimilar goods or services, all the three conditions stipulated above needs to be satisfied.

Facts Of The Case:
M/s Arudra Engineers Private Limited, the plaintiff, a company registered under the Companies Act, is in the business of chemical cleaning and manufacturing of material handling systems and polymeric epoxies for various factories in and outside India. It has been stated by the plaintiff that the company has been in this business for the past 20 years and has built a reputation within its fraternity. The plaintiff has a registered trademark in the name of 'Coronil-92B' and Coronil-213 SPL in the year 1993 which has been renewed and is in force till 2027.

Since the products offered by the plaintiff's company are anti corrosion products, the plaintiff had devised the name 'Coronil' and had also registered the same. However, the defendants, M/s Patanjali Ayurved Limited and Divya Yog Mandir Trust, had also introduced a product in the market called 'Coronil Tablet' which had been claimed as a cure for the Covid-19 virus or as an immunity booster to prevent cough and cold.

Therefore, a suit had been filed by the plaintiff seeking protection of its registered trademark from infringement by the defendants. The plaintiff, through its plaint, seeks the grant of a permanent injunction restraining the defendants or anybody acting under them from using the trademark and also requests for a direction to the defendants to deliver up to the plaintiff for destruction of the entire stock of products or any other material bearing the disputable trademark 'Coronil' and for costs of the suit.

Issues

1. Whether the registered trademark 'CORONIL' of the plaintiff can be protected under the Section 29(4) of the Trade Marks Act, 1999?
2. Whether the defendants were infringing the plaintiff's registered mark under The Trade Marks Act, 1999?

Contentions Of The Parties:
For The Plaintiff:

• The mark of the defendant was similar to the registered trademark of the plaintiff that could cause confusion in the mind of the consumer, thereby infringing it.
• The mark of the plaintiff adds to the distinct character of the product.
• The defendants are using the mark without any due cause, hence taking unfair advantage of the mark of the plaintiff.

For The Defendants:

• The term reputation in India is synonymous to well known trademark as described under the act, hence the plaintiff's mark does not qualify for the same.
• The use of the mark 'Coronil' as an immunity booster is a 'due cause' under the Act and thus the defendant cannot be said to be infringing the mark of the plaintiff.

Analysis
The plaintiff, in order to protect its trademark from infringement, drew the attention of the court towards section 29(4) of the Trademarks Act 1999. It was contended that section 29(4) of the Act provides for protection from infringement of a registered trademark by a person who is not a registered proprietor and uses a mark identical or similar to the registered trademark in relation to dissimilar goods or services. It further states that the use of the registered trademark is without due cause and takes unfair advantage of the reputation of the registered trademark and is detrimental to the distinctive character of the registered trademark.

In this context, the plaintiff pointed out that their trademark was registered back in 1993 and that the unregistered trademark of the defendant is similar to the registered trademark in the fact that it is the same word 'Coronil'. With respect to the distinct character of the trademark, the plaintiff argued that the term 'Coronil' was distinctive in the sense that is was an anti-corrosion product that symbolized 'nil corrosion', hence the name 'Coronil'.

The plaintiff further stated that the shift in the stand of the defendants from initially projecting a treatment for novel coronavirus to later stating it as an immunity booster but retaining the same old pictorial representation in the label and the name 'Coronil' shows that the defendants are infringing the registered trademark of the plaintiff without any due and just cause. The plaintiff relied on the case of Blue Hill Logistics Private Ltd., Vs. Ashok Leyland Limited wherein the division bench examined the issue with respect to section 29(4)(c) of the Act and held that there would be confusion in the minds of the common man owing to the two similar marks.

Further, the plaintiff relied on the case N.S.Krishnamoorthy and Another v/s Afru Hearing Aid Centre wherein, the learned Single Judge had held that a registration of a composite mark confers upon the registered proprietor, the monopoly over the trademark taken as a whole. The learned Single Judge had examined the registered mark and the infringing mark with respect to the trademark 'Hearing Aid Centre' and had held that the defendant by merely adding the word 'Afru' in smaller print cannot put forward a case of distinctiveness and had decreed the suit, granting the relief sought by the plaintiffs.

To the arguments advanced by the plaintiff, the defendant contended that in order to seek relief under section 29(4)(c) of the Act, the plaintiff should have a reputation in India. It was pointed out by the defendant that it seemed doubtful that the plaintiff has a reputation in India as the list of customers produced by the plaintiff as evidence is a list of at most 31 customers as opposed to the huge company of the defendant.

It also stated that the general public associated with the trade of the plaintiff can never draw any similarity or connection with the mark of the defendants for the simple reason that the plaintiff's mark was used for industrial purposes and that of the defendant for human consumption. With reference to this, the defendants relied on General Motors Corporation V. Ypion SA Case , wherein it was held that:
Repute would mean that it is known by a substantial portion of the public with the products covered by that mark and that knowledge would lead the public to make a connection between the two marks, even for dissimilar products and only then damage can be stated to have occurred.

The defendants also contended that in order to draw a case of infringement under the said section, the mark should be used without any due cause, however, the defendants used the mark 'Coronil' as a treatment to an ailment namely, Coronavirus. In this regard, the defendants relied on Astrazeneca UK Limited & Anr. Vs. Orchid Chemical & Pharmaceuticals Ltd where it was stated by the division bench that:
in the trade of drugs, it is a common practice to name a drug by the name of the organs or ailments, treatments for which are the main ingredients of the drug.

It was further stated that it would be improbable to hold that the defendants would take unfair advantage of the reputation of the plaintiff, since they are in a different business altogether. The defendants also contended that the plaintiff's marks are composite marks and hence the plaintiff cannot seek protection of a single word 'Coronil' in the composite mark.
Additionally, the defendants questioned the term 'reputation in India' as used in section 29(4)(c) of the trademarks act and lamented that through this the legislature intended to provide protection to well known trademarks as defined under section 2(1)(zg) of the Act.

Pointing out the absurdity in the construction of section 29(4)(c) of the Act, the defendants placed reliance on Ford Motor Company & Anr., V. C.R.Borman & Anr , wherein, the Division Bench of the Delhi High Court stated:
the intention of the Parliament while introducing the Trade Marks Act, 1999, was to extend protection for well known trademarks and stated that the Court should read 'well known trademark' in the place of reputation as provided in Section 29(4)(c) of the Act.

Subsequently, it was pleaded by the defendant that the plaintiff be directed to oppose the registration of the trademark as the defendants had already applied for registration under section 11 of the trademark act and hence the suit be dismissed without any grant of injunction, so prayed by the plaintiff.

Judgment
The usage of the word Coronil by the defendants will be detrimental to the distinctive character of the mark of the plaintiff.

It has been observed by the Madras High Court that the defendants have invited this litigation to themselves and a simple check with the Trade Marks registry would have revealed that 'Coronil' is a registered trademark and will subsists till 2027. Both the words 'CORONIL' are identical, even though the registered mark of the plaintiff is preceded by letter 'A' and succeeded by digits '92/213' an letters 'B/SPL' still there is a direct infringement on the unique name 'Coronil' by the defendant. It has been observed that the defendants has merely projected to use Coronil tablet, apparently to cure Corona virus even though there is no direct material produced to show that it is a treatment for Corona virus and are exploiting the fear and panic among the general public.

The defendants must realise that there are organisations that are helping the general public without any recognition. The court is of the view that the plaintiff has established a prima facie reputation in India among the heavy industries where chemical agents are used to treat and prevent corrosion and has also established reputation in industries overseas. The words specifically used are reputation in India and it only means reputation in India and does not well known mark. Thus, there is a possibility that the general public of India get confused by the two marks.

In the view of all of the facts it has been held by the Madras High Court that the order dated 17/07/2020 granting interim injunction has to be made absolute with costs. The defendants must realize that in this critical period there are organisations that are helping people without any due cost or recognition and it would be appropriate if they are made to pay cost to them. Accordingly, it has been held that Rupees. 5 Lakhs is to be paid jointly by defendants to the Dean, Adyar Cancer Institute (WIA), East Canal Bank Road, Adyar, Chennai, and further Rupees. 5 Lakhs is to be paid jointly by the defendants to the Dean, Government Yoga and Naturopathy Medical College & Hospital, Arumbakkam, Chennai – 106.

Conclusion:
In the instant case, the court had to decide on the issue whether the trademark of the plaintiff could be protected under section 29(4) of the act, with special emphasis on clause (c) of the said section. While the plaintiff, in order to sue for infringement, satisfies all the conditions stipulated under section 29(4) of the Act, it was for the court to decide whether the trademark of the plaintiff had a reputation in India.

The court was also required to lay stress on the fact if the term reputation in India was to be synonymously used as a well known trademark as defined under section 2(zg) of the Act. It had been earlier held in the Ford Motor Company case, that the terms reputation in India and well known trademark are to be interchangeably used and that it meant one and the same thing, but the hon'ble court in this matter differed from this opinion.

The term reputation in India was literally interpreted by the court and no broader or wider meaning was given to this term keeping intact the intent of the legislature. However, in our opinion, the court while literally interpreting the term reputation in India, failed to clearly define the said term and throw light on the long going parody in the statute regarding the two terms. It seemed that the present case was an appropriate opportunity for the court to establish and lay down certain standards that would attempt to define a registered trademark having reputation in India, thus clearing the air in this regard.

By not pondering over this issue at length, this judgement could pave way for big corporates to escape the loophole in this context with respect to trademark infringement thereby impinging upon the rights of small businesses having different sets of consumers.

With respect to the second issue, the court seems just on its holding that the suffixes 92B and 213 SLP are generic terms that independently convey no meaning at all and hence cannot be registered partly under section 15 of the Trademark Act 1999. The term 'Coronil' adds to the distinct character of the mark of the plaintiff and hence the defendants had infringed the registered mark of the plaintiff.

However, the fact put forth by the defendants, that the term 'Coronil' was used by them to signify its product as an immunity booster to prevent cold and cough in the prevalent times of Covid-19 could be construed as a due cause that does not take unfair advantage of nor dilutes the distinct character of the plaintiff's mark, within the ambit of section 29(4) of the Act. It seemed that just because the plaintiff had a prima facie case, the court did not delve into its intricacies.

Written By:

1. Yashwi Agarwal, student of Amity University, Kolkata &
2. Tanishka Khandewal, student of Amity University Kolkata