M/s. Arudra Engineering Private Limited v. M/s. Patanjali Ayurved Limited

M/s. Arudra Engineering Private Limited v. M/s. Patanjali Ayurved Limited

Date of Order: 17^th July, 2020 in O.A. No. 258 of 2020 in

C.S.No.163 of 2020

In the High Court of Madras

The present post covers the ex-parte order passed by the High Court of Madras on the application for Interim Relief filed by the Plaintiff wherein Defendant has been restrained from using the mark ‘CORONIL’ or any deceptively similar mark till 30th July, 2020. The ex-parte order is accessible here.

(Image from here)

The final adjudication on the application for Interim Relief as well as adjudication of the suit is still pending.

Brief Facts:

• Plaintiff is engaged in the business of chemical cleaning and manufacturing of Material Handling Systems and Polymeric Epoxies for various factories in India and abroad.
• Plaintiff is registered proprietor of the mark ‘CORONIL-92 B’ since 1993 which was applied on a product being an Acid Inhibitor used for Industrial Cleaning.
• In the year 2019-20, the sales of the Plaintiff’s product was more than 6.4 Crores.
• Defendant in 2020 started manufacturing a medicine under the brand ‘Coronil’ for purposes of cure of ‘Coronavirus’.
• Plaintiff filed a suit for infringement of Trade Mark and Passing Off against the Defendant.

Plaintiff’s Contentions:

• The act of the Defendant constitutes infringement under Section 29(4)(b)[1] of the Trade Marks Act, 1999 Protection should be granted in case of infringement of the trade mark if a person who, not being a registered proprietor, uses the registered trade mark even in relation to goods or services which are not similar to those for which the trade mark has been registered.
• Plaintiff has customer companies situated in Oman, Sri Lanka, Singapore, Uganda, Malaysia, Vietnam, Kuwait and Philippines.

Court’s Observations:

• The Court observed that the name and spelling used by the Defendant is similar to that of the Plaintiff and that the Plaintiff has a registered trademark since 1993 that remains in force and thus, has right to protection from infringement.

The Defendant was restrained from using the mark ‘Coronil’ or any other deceptive variation of same till 30^th July, 2020.

Author’s Comments:

We are of the view that the present order though might be right on some aspects but is clearly wrong on certain established principles governing ex-parte matters. The Plaintiff might be a registered proprietor and also the marks are deceptively similar. However, the goods in question are different.

Plaintiff rightly relies on Section 29 (4) of the Trade Marks Act, 1999 which is applicable in case of different goods/services between the parties. However, while granting te present order the Learned Single Judge of the Madras High Court failed to appreciate that Section 29 (4) (b) has to be read with Section 29 (4) (c) of the Trade Marks Act, 1999. Unless, conditions in Section 29 (4) (c) are satisfied, there is no Infringement made out under Section 29 (4).

Section 29 (4) (c) requires a Plaintiff whose seeking a finding on Infringement of Trade Mark to prove that 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 .

The Learned Single Judge does not even read Section 29 (4) (c) in the order. Further, the requirements of the said Section are not even stated to be complied, at least prima facie, in the present matter. The Learned Single Judge only finds a prior registered trade mark and issues an ex-parte Injunction.

In our humble view before granting an ex-parte order, the Learned Single Judge should have considered and given a finding on Section 29 (4) (c) of the Trade Marks Act, 1999.

Further, the Learned Single Judge does not observe that the Plaintiff:

1. has a prima facie case; and
2. has balance of convenience in its favour;  and
3. will suffer Irreparable Harm and Injury in an ex-parte Injunction is not granted.

Bereft of such findings, most importantly, on Section 29 (4) (c), we believe the order is vulnerable and can be set aside. The Plaintiff does claim customers abroad but the test of Section 29 (4) (c) is reputation in India. The Ex-parte order is not based on such finding of reputation.

Last heard Defendant has moved the Hon’ble Court for vacation of the Injunction. We will continue to update you in this regard.

[1] Section 29(4) (b)  – Infringement of registered trade mark – (4) 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 march which (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered.

Co-author: Ms. Pragati Pachisia, JCCLC College, Kolkata