Cannot infringe Apollo's trademark: Bihar doctor tries to run 'New Appolo Hospital', pulled up by High Court

Chennai: The Madras High Court bench recently observed that the trademark "Apollo" was a well-known trademark in the healthcare and pharmaceutical sector and it was entitled to the highest level of protection as the public at large associate the name "Apollo" only with the healthcare group.

With this observation, the Madras HC bench comprising Justice Abdul Quddhose granted relief to the Apollo group, in a trademark infringement lawsuit against a private hospital by a Bihar-based doctor. The Hospital run by the concerned doctor was named "New Appolo Hospital".

"The name 'Appolo' is perceived to be synonymous to the plaintiff and the plaintiff is therefore entitled to the highest level of protection as the public at large associate the name 'Apollo' only with the plaintiff insofar as health and pharmaceutical segments are concerned," the bench observed.

Barring the doctor permanently from using the concerned name, the court observed, "If the defendant is allowed to use the name 'New Appolo Hospital', it will certainly cause confusion in the minds of the public, who are familiar only with the usage of name 'Apollo' for healthcare and pharmaceutical sectors by the plaintiff alone and no one else. Being a deceptively similar mark to that of the plaintiff, the defendant should be permanently injuncted from using the name 'New Appolo Hospital' for its hospital business."

The lawsuit was filed by the Apollo Hospitals Enterprises Ltd. after it came to know in the month of July 2022 that the concerned doctor had blatantly adopted a similar mark by name 'New Appolo Hospital' for its hospital business. Therefore, the petitioner sent a cease and desist notice dated 21.07.2022 calling upon the defendant not to use the cincerned mark as it would amount to infringement and passing off.

Since the defendant doctor refused to accept they are guilty and stop using the offending trademark, the petitioner was forced to file the lawsuit praying to declare the registered mark 'Apollo' as a well-known trademark as per the provisions of Section 2(1)(zg) read with Section 11 of the Trade Marks Act, 1999.

Apart from this, the petitioner also prayed for a permanent injunction restraining the doctor from infringing the registered trademarks of the petitioner including 'Apollo', 'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants by using the 'New Appolo Hospital' and/or any other mark identical and/or deceptively similar mark in any other manner.

It was argued by the petitioner that it owns and operates the World famous Apollo Hospitals Group of Medical Establishments ranging from hospitals, clinics, diagnostic centers, telemedicine facilities, pharmacies, etc with various speciality facilities such as for cancer treatment, dentistry, child and paediatrics, cardiovascular transplants, etc.

Referring to the different trademarks such as 'Apollo', 'Apollo Hospital', 'Apollo Diagnostic' 'Apollo Clinic', it was further submitted that Apollo Hospitals is the forerunner of integrated healthcare in Asia and it has several such hospitals across India including Tamil Nadu, Andhra Pradesh, Karnataka, Chhattisgarh, Odisha, Gujarat, West Bengal, Delhi. Outside India, there are several hospitals located in SriLanka, Bangladesh, Ghana, Nigeria, Mauritius, Qatar, Kuwait and Oman.

Further referring to the different types of services provided by the petitioner, it was also submitted that the unique name "Apollo" used by the Plaintiff is recognised and associated with the petitioner, worldwide.

While considering the question of whether the petitioner has proprietary right over the trademarks 'Apollo', 'Apollo Hospital', 'Apollo Diagnostic' and 'Apollo Clinic' and its variants, the HC bench observed that the petitioner has registered the trademark 'Apollo' in Class 42 with respect to all medical services, which includes dispensing of pharmaceutical products and services. It has also registred the trademark 'Apollo Hospitals', 'Apollo Clinic', and 'Apollo Diagnostic'.

In addition to the trademark, 'Apollo', 'Apollo Hospitals', 'Apollo Pharmacy' and other related brands and logos, the court noted that the petitioner is also the owner of the copyright of the labels consisting of 'Apollo', 'Apollo Hospitals', 'Apollo Pharmacy' and other variants presented using a distinct font and colored background, a stylized device and other distinctive elements.

Referring to the fact that the petitioner obtained registration under the Copyright Act for 'Apollo', 'Apollo Hospitals' and 'Apollo Pharmacy' under the registration dated 26.08.2008, the Court observed,

"By virtue of the registration, the plaintiff has got right over the artistic work in the label. All rights, title and interest in the artistic work for 'Apollo', 'Apollo Hospitals' and 'Apollo Pharmacy' labels vests with the plaintiff and the use of any identical label or deceptively similar label by anyone amounts to passing off and infringement of copyright."

Taking note of this, the Court declared that the petitioner has a proprietary right to the concerned trademarks and observed,

"Therefore, it is clear from the documentary evidence placed on record before this Court that the plaintiff has proprietary right over the trademark 'Apollo' and its variants. Infact, the registration under various classes shows that the plaintiff has got various proprietary rights and rights as conferred for registration as applicable for a registered proprietor. Therefore, issue (a) is decided in favour of the plaintiff by declaring that the plaintiff has proprietary right to the trademarks 'Apollo', 'Apollo Hospitals', 'Apollo Clinic' and 'Apollo Diagnostic' and its variants."

While considering the question whether the petitioner's trademark falls within the definition of the Well-Known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, the bench noted, "This Court earlier had a doubt as to whether concurrent powers are vested with both the trademark registry as well as this Court for granting recognition for a particular trademark as a well-known mark... To get over the doubt, this Court had to analyze the provisions of Sections 11(6) and 2(1)(zg) of the Act and the amended Trade Marks Rules, 2017, pertaining to grant of recognition by the trademark registry for a trademark to be recognized as a well-known mark."

After analyzing the said provisions and the authorities pertaining to grant of recognition of a trademark as a well-known mark, the court was convinced that concurrent powers are vested with both the High Court as well as the Trade Marks Registry for granting recognition to a trademark as a well-known mark.

The Court referred to Section 2(1)(zg) of the Act and the definition of "well-known trademark" and noted that the definition clearly demonstrates the extraordinary protection provided to a well-known mark.

Referring to the relevant provisions under the Trade Marks Act, 1999, with regard to "well-known" marks, the bench observed, "As seen from the aforesaid sections and in particular, Section 11(6) of the Trademarks Act, 1999, it is clear that both the Registrar of Trademarks as well as the Court having competent jurisdiction can recognize a trademark as a well-known mark. The Trademarks Act does not prohibit this Court, which is a competent Court, from recognizing the plaintiff's trademark as well-known marks."

In respect of the case of the petitioner, the bench opined that the trademark 'Apollo' has satisfied all the tests required for granting recognition as a well-known mark and the exhibits submitted by the petitioner made it clear that in respect of the healthcare industry, their trademark 'Apollo' and its variants is well-known, not only in India, but also abroad.

"They have commenced their business in the year 1979 and over a period, they have established various hospitals, clinics, Daycare centres, pharmacies and other allied business, not only in India, but also in abroad. Their annual reports also prove that their turnover runs into several hundreds of crores of rupees and they have carved a niche for themselves in the health and pharmaceutical segments. Judicial notice can also be taken with regard to the said fact. Ten-factors tests highlighted supra are also satisfied by the plaintiff for recognizing their trademark as a well-known mark as per the provisions of Section 11(6) of the Act," observed the bench.

Therefore, referring to the case of the defendant doctor, who was running the hospital with the name 'Appolo', the bench noted that this name is perceived to be synonymous to the petitioner and therefore the petitioner is entitled to the highest level of protection as the public at large associate the name 'Apollo' only with the petitioner insofar as health and pharmaceutical segments are concerned.

The Court observed,

"Therefore, the plaintiff's trademark falls within the definition of wellknown mark within the meaning of Section 2(1)(zg) of the Act and deserves protection, that is conferred to well-known marks under the Trade Marks Act."

"Hence, the plaintiff is entitled to get recognition by this Court for its trademark 'Apollo' as a well-known mark in respect of the healthcare and pharmaceutical segments," it noted.

It was observed by the HC bench that the defendant has been unauthorizedly using the mark 'New Appolo Hospital' despite having knowledge that the petitioner "being an established player in the healthcare and pharmaceutical sector is having trademarks registration for 'Apollo' and its variants and has attained secondary meaning on account of its long usage in the healthcare and pharmaceutical industry."

Therefore, declaring the mark 'Apollo' as a well-known mark, the Court granted permanent injunction restraining the defendant from infringing the registered trademarks of the plaintiff including 'Apollo', 'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants by using the 'New Appolo Hospital' and/or any other mark identical and/or deceptively similar mark in any other manner whatsoever.

"Permanent injunction is granted restraining the defendant from passing off and/or enabling others to pass off the plaintiff's trademarks 'Apollo', 'Apollo Hospitals', 'Apollo Diagnostics' and 'Apollo Clinic' and its variants by using the 'New Appolo Hospital' and/or any other mark identical and/or deceptively similar mark in any other manner whatsoever," it further ordered.

To view the judgement, click on the link below:

https://medicaldialogues.in/pdf_upload/apollo-trademark-infringement-226241.pdf

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