The Supreme court has refused an appeal by Arudra Engineers Pvt. Ltd (Plaintiff) who manufactures industrial chemical agents of name Coronil-92B and Coronil-213SPL against Divya Yog Mandir Trust and Patanjali Ayurveda Ltd.to stop using the brand name Coronil.

In this article, Author majorly focuses on findings of section 29(4)[i]of Trade Marks Act, 1999 and honesty of the defendant in the adoption of a trademark. I reckon that this order is one of the most lucid and elaborate orders in contemporary times from the High Court affecting the interpretation of the Trade Marks Act, 1999 especially Section 29(4).

Factual Background
The plaintiff is registered proprietor under class 1 of industrial chemicals of marks Coronil-92B and Coronil-213SPL. Defendants have recently launched a medicine of name Coronil as a cure of coronavirus but Ministry of Ayush restated it as immunity booster against coronavirus not cure. The plaintiff sued defendants on relying section 29(4) of Trademark Act, 1999 specified that they have a reputation in India and overseas. One of the crucial arguments made by the plaintiff is due to perceived ineffectualness of defendant's product and accompanying negative press will dilute the reputation of the plaintiff and their product. On the other hand, only defence taken is the difference in the product and their field of operation.

Findings of Section 29 of Trade Mark Act, 1999

Section 29 of the Trade Marks Act, 1999 protects against infringement of the registered trademark. Section 29(1) deals with infringement of trademark when an identical mark is used for the same class of goods. Whereas section 29 (4) deals with infringement of trademark when an identical mark is used for a different class of goods. Protection is granted in both cases. As per statute only required condition is that the mark of the plaintiff should have a reputation in India.

In the present case, the court has chosen strict adherence to the words of the statute and didn't impute any words, not in provision. Moreover, the court relied on various decisions including US supreme court decision of Bostock V. Clayton County[ii] in which literal interpretation was favoured.

Therefore, in this case, the court reiterated that Reputation in India means reputation in India, nothing less, nothing more. Moreover, it should not be confused with well-known Mark defined in section 2(1) (zg), no ambiguity in the statute is evident which gives rise to multiple interpretations that subsequently requires an inquiry into the legislative intent.

Section 29(4) allows marks of substantial reputation to seek an injunction without subjecting themselves to the onerous task of proving that their mark is also well-known under section 2(zg)[iii]. As stated in the case of Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries[iv], section 2(zg) be more or less obsolete.

It is pointed out that courts are allowed to apply its mind rather than looking into the register to claim reputation under sec. 2(zg).
Plaintiff have been in the business of industrial chemicals for over 20 years. They have several clients including NTPC, BHEL Ltd., Reliance Industrial Limited, etc. India does not have many heavy industries but if those few industries throughout the expanse of the country come to know about the product of plaintiff then it can be very well concluded that plaintiff has a reputation in India.

The honesty of the defendant's adoption of mark

In the present case, it should be clear that coronil is a cure of coronavirus or not because according to the defendant, name of tablet is justified as it is Coronavirus-nil. Since the defendants were stopped from using coronil as a cure but as an immunity booster they should market the same as an immunity booster only rather than launching it as a cure of coronavirus and play with panic among the public during a pandemic.

There is no just cause, no much less due cause for what defendants can be permitted to use the word coronil. Section 29(4)(c) of Trade Mark Act, 1999 prohibits any type of unfair advantage. In this factual situation, it is made clear that  Coronil  is not a cure to coronavirus and there is no nexus between coronavirus infection and proposed tablet.

In the landmark case of Carlill V. Carbolic Smoke Ball Co [v], though it was about the unilateral contract and its acceptance. It also elucidates the phenomenon of profiteering by tapping on panic same can be interpreted in this case. Prima facie, there is a possibility that ordinary public might question that trademark Coronil of the plaintiff pertaining to its inefficacy does not prevent corrosion by drawing a simple analogy.

The defendant should have checked the register before launching their tablet, they cannot plead ignorance and if they had checked it already that coronil is a registered trademark and still proceeded then this audacity cannot be considered. Patanjali being a 10000-crore company cannot bulldoze the plaintiff's way and infringe the trademark. As a result of invited litigation, defendants have to pay Rs. 500000 to Government Yoga and Naturopathy Medical College and Hospital, Chennai and Rs. 500000 to Adyar Cancer Institute (WIA), East Canal Bank Road, Chennai.

Conclusion
This case depicts the lack of duty of care during registration by defendants. Defendants have stated that plaintiffs are only 10 crore company whose mark is known only to limited people that too in their industrial fraternity and related it with being powerful as a 10000-crore company, through this judgement court has reiterated that Big fish cannot eat small fish. The reputation of the plaintiff is protected and identified perfectly even against such a huge player.

Despite judgement being criticized for its inconsistency which in my opinion is unsubstantiated as Court to be consistent in every matter is a form of utopian argument. Utopian arguments have been crucial in the development of legal and political theory; however, we ought not to be hoodwinked into accepting that Utopia can be accomplished.

Apparently, the perfect is the enemy of The Good, and unnecessary concern of the Court with utopian criticism may divert us from valuable ones. Therefore, this judgment certainly brings an uplifting tinge of equity into trademark law.

End-Notes:

1. Trade Marks Act, 1999, Act no. 47, Act of Parliament, 1999 (India) § 29(4)
2. Bostock v. Clayton County, 590 U.S. 28, (2020)
3. Trade Marks Act, 1999, Act no. 47, Act of Parliament, 1999 (India) § 2(1) (zg)
4. Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries, AIR 2018 SC 167 (India)
5. Carlill V. Carbolic Smoke Ball Co, [1892] EWCA Civ 1
   
   Award Winning Article Is Written By: Ms.Nishtha Shrivastava
   
   

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