Allowed

Nureca Limited v. M/s.Thaker Brothers

Madras HC7 Oct 2021OA/414/2021

Case brief

AI extract

What is this about?

The High Court allowed applications for interim injunction against the respondent for using the trademark 'DOCTOR'S TRUST', finding it deceptively similar to the applicant's 'DR TRUST' and constituting dishonest adaptation in the medical devices sector.

What did the court decide?

Interim injunction already granted on 19.07.2021 is made absolute to restrain respondent from using the mark 'DOCTOR'S TRUST'.

Nureca Limited Vs M/s.Thaker Brothers — Intellectual Property | Madras HC (2021)

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O.A.Nos.414 and 415 of 2021 in C.S.No.19 of 2021

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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Reserved on :29.09.2021 Pronounced on: 07.10.2021

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Coram:
THE HONOURABLE DR. JUSTICE G. JAYACHANDRAN
O.A.Nos.414 and 415 of 2021
in
C.S.No.19 of 2021
Nureca Limited,
Having its Corporate Office at
SCO 6 to 8, First Floor, Sector 9-D,
Madhya Marg, Chandigarh, 160 009. .. Applicant/plaintiff in
both applications
/versus/
M/s Thaker Brothers,
No.73, Devaraj Mudali Street,
Chennai 600 003. .. Respondent/Defendant
in both applications

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Prayer in O.A.No.414 of 2021:- Original Application has been filed under Order XIV, Rule 8 of Original Side Rules read with Order XXXIX, Rule 1 & 2 of Code of Civil Procedure, 1908, praying to Ad-interim, interim injunction restraining respondent, its men, agents, servants, licensees, franchisees, distributors, assigns and representatives or anyone claiming through or under them from passing off or

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1/15

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https://www.mhc.tn.gov.in/judis/

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in C.S.No.19 of 2021

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O.A.Nos.414 and 415 of 2021

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enabling others to pass the respondent's DOCTR'S TRUST products as and for the Applicant's products' under the trademark “Dr Trust” by using, selling, or offering to sell, distributing, displaying, printing, stocking, using, advertising their products or in any other manner whatsoever, pending disposal of the above suit.

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Prayer in O.A.No.415 of 2021: Original Application has been filed under Order XIV, Rule 8 of Original Side Rules read with Order XXXIX, Rule 1 and 2 of Code of Civil Procedure, 1908 praying to ad-interim, interim injunction restraining respondent, its men, agents, servants, licensees, franchisees, distributors, assigns and representatives or anyone claiming through or under them from infringing the Applicant's registered trademark under No.3380757 in Class 10 or and other registered trademarks DR TRUST by using an identical trademark DOCTOR'S TRUST or any other mark which is/are identical with and/or deceptively similar to the applicant's Trade mark or in any other manner whatsoever, pending disposal of the above suit.

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For Applicant in both applications :Mr.R.Sathish Kumar

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For Respondents in both applications :Mr.N.Surya Senthil and Mr.Prashant Alai for for Surana & Surana Asso.

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021 in C.S.No.19 of 2021

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COMMON ORDER (These cases have been heard through Video Conferencing)

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The applications for interim injunction by the applicant/plaintiff, who is the registered owner of trademark “DR TRUST” against the respondent, who is carrying on business under the trademark ‘DOCTOR’S TRUST’ also a duly registered mark.

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2.The affidavit in support of the injunction applications states that, the applicant is in the trade of distribution of health care and wellness products. It has several brands under its umbrella including the mark 'DR TRUST'. This mark was first adopted in the year 2010 by the M/s Nectar Life Science Limited, who is the predecessor of the applicant. The applicant offers high quality of blood pressure monitors, pulse oximeters, blood glucose meters, infra–red thermometers, Electrocardiogram (ECG) machines, Nebulisers, Electrical breast pumps for nursing mothers and weight management tools like smart body fat scales. To disseminate information about the applicant’s product, the applicant have a website with domain name www.nureca.com registered as early as 2014. Besides 3/15

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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that it also maintain till date, region specific domains www.drtrust.in and www.drtrustusa.com.

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3.The applicant is a continuous user of the mark “DR TRUST” and its

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variants and since 2010. The products under the mark “DR TRUST” are trusted by Doctors, Medical Professionals and Home Users across the globe including India. Through the websites mentioned above, the applicant had sold 53,109 of its products in India and 3,325 of its products in USA under “DR TRUST” mark. That apart, the applicant's products also available in India for sale through online e-commerce platforms, such as, Amazon, Flip Cart, Snapdeal etc. The total online e-commerce sale in India for the past 5 years is 3,446,701. Indian Cricketer Mr.Rohit Sharma is the brand ambassador of the applicant company. By its promotional efforts and quality, the “DR TRUST” brand is associated solely with the Applicant and its products.

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4.The Applicant and its predecessor had either registered or applied for

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registration for the mark “DR TRUST” for various products as listed below:-

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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5.While the applicant is using the trademark “DR TRUST” continuously, without interruption since 2010, it came to know during the month of September 2020, the respondent is selling “Oxygen Concentrator” in the name of “DOCTOR’S TRUST”, which is phonetically identical and visually deceptively

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5/15

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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similar to that of the applicants mark “DR TRUST”. Hence, the present suit, after causing the cease and desist notice and failure to settle the dispute amicably.

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6.The respondent in its common counter has stated that, the respondent

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company was founded in the year 1980, in Chennai for importing, distributing and wholesale of PVC, resins and polymers. The respondent was carrying on the said business under the registered trade mark “THAKER’S GYPSTRONG” and “Orange by Thaker”. Owing to the four decades of experience, the respondent diversified its business by entering into market for medical devices. During the lock down pandemic in March 2020, the respondent started importing oxymeters for distribution and applied for trademark registration under Class 10 for the mark “DIVINE TOUCH” on 05/06/2020. The registration for the mark “DIVINE TOUCH” was granted on 08/01/2021. The respondent later shifted its focus on other medical devices, such as, blood pressure monitors, digital thermometer, pulse oxymeters, oxygen concentrators etc. and trading it in the name “DIVINE TOUCH”. To indicate the trust of the doctors, the respondent had coined and

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adopted the trademark

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6/15

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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7.For his application to this mark, the Trademark Registry raised objection

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only under Section 9 and not under Section 11. Since the objection was not for being identical or similar to any mark, which has already been registered by a third party including the applicant's mark “DR TRUST”, the respondent started using the trade mark “DOCTOR’S TRUST” for its product from the month of September, 2020. .

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8.The applicant is not the registered Proprietor of the word mark ‘DR TRUST’. The application filed by the applicant for registration for word mark “DR TRUST” under Class 10, was opposed by the respondent and the same is pending. As on date the applicant does not have registration for the word mark “DR TRUST” under Class 10 for surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials. The respondent trademark “DOCTOR’S TRUST” is distinct from the applicant mark for which registration has been granted vide registration No.3380757.

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021 in C.S.No.19 of 2021

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9.The applicant registration is for the mark:-

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10.The respondent registration is for the mark:-

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11.The respondent's mark is distinct and distinguishable by word, font size,

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style. The overall artistic depiction of the logo devised by the respondent is distinct from the applicant. Further, the applicant has suppressed the fact that, its trade mark Registration No.2297560 under Class 5 for the mark a condition attached to it i.e. “REGISTRATION OF THIS TRADEMARK SHALL GIVE NO RIGHT TO THE EXLCUSIVE USE OF THE WORDS OF

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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THE DESCRIPTIVE NATURES” and also subject to the restriction that BOTH/ALL LABELS SHALL BE USED TOGETHER.

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12.The respondent was first using the mark “DOCTOR'S TRUST” and thereafter, adopted the other mark “DIVINE TOUCH”. The trademark “DIVINE TOUCH” got registered on 08/01/2021 and the application for the mark “DOCTOR'S TRUST” is still pending with the Registry of Trademark. Being distinct and dissimilar, the applicant cannot complain of infringement or passing off. No case is prima facie made out by the applicant for injunction. No prejudice

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or irreparable injury will cause to the applicant, if the respondent continues to use the mark “DOCTOR'S TRUST”.

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13.Heard the oral submissions made by the learned counsels and scrutinized the documents relied on.

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14.The applicant herein have a valid registration for the mark “DR TRUST”

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for Class 5, 9 and 10. For these marks, he has a valid registration in Abroad also.

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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As far as the respondent is concerned, he claims that he has applied for

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the trade mark “DOCTOR'S TRUST” and it is under consideration. For the mark, “DIVINE TOUCH” in Class 10 the respondent has obtained registration on 08.01.2021 as a proposed user for the goods such as, medical masks, medical gloves and medical instruments etc. The respondent has applied for registration for the trade mark “DOCTOR'S TRUST” on 12.07.2020. The Trademark Registry has not yet granted registration. Even before grant of registration, admittedly, the respondent is using the said mark.

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16.From the affidavit of the applicant, it is seen that opposition and

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interlocutory petition have been filed before the Trademark Registry, Chennai in respect of the application made by the respondent for the identical mark “DOCTOR'S TRUST”. The main defence taken by the respondent herein for using

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the said impugned mark is two fold. Firstly, the applicant is not using the mark “DR TRUST” for a long time, but only for the past six years, he could produce the documents to show the usage of the mark. Secondly, the mark “DR TRUST” and

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10/15

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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“DOCTOR'S TRUST” are distinct and distinguishable.

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17.The learned counsel appearing for the respondent submitted that, the word “DR TRUST” is a generic word. The grant of trademark to the applicant is subject to conditions and restrictions. There are several products carrying prefix “DR”. To determine infringement, the mark as a whole should be looked into as contemplated under Section 17 of the Trade Marks Act. The registration in any abbreviation like “DR” cannot be equated to the full form and claim protection under the Act. There is no registration in favour of the applicant for the word mark “DR TRUST”. Only the logo have a valid registration. Under Section 29 of the Trade Marks Act,1999, the use of the registered trade mark by its Proprietary will not amount to infringement of the trade mark of other registered Proprietaries, even if it is used in the identical goods or services. Under Section 30 (2) of the Trademarks Act, 1999, the use of the Trademark “DOCTORS TRUST” by the respondent is protected.

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https://www.mhc.tn.gov.in/judis/

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in C.S.No.19 of 2021

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O.A.Nos.414 and 415 of 2021

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18.Further, the learned counsel for the respondent contended that, there is

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no similarity between the two marks to infer infringement or passing off. It is also contended by the respondent's counsel that, the channel of sale of the applicant's goods and the respondent's goods are different. While the applicant adopts the business to business model(B2B), the respondent follows the business to customer (B2C) through online and therefore, there is no possibility of deceiving the

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customers of average intelligent and poor re-collection.

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19.In support of his submission, the learned counsel appearing for the respondent rely upon the following judgments:-

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(i)Indo-phama Phamaceutical Works Ltd., having its Corporate Office at 201-203, Saffron, Ambawadi, Ahmedabad 308 006, and registered office at 204, Neelkanth Commercial Centre, 2^nd Floor, Shar Road, Andheri (E), Mumbai 400 048 v. Citadel Fine Pharmaceuticals Ltd., 265, T.T.K.Road,

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Madras 600 018 reported in 1998-2-L.W. 646;

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(ii)Automatic Electric Limited v. R.K.Dhawan & Anr. reported in 1999(19)PTC 81(Del); and

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(ii)Laxmikant V.Patel v. Chetanbhai Shah and another reported in

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(2002) 3 SCC 65

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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20.However, the learned counsel appearing for the applicant is able to

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persuade this Court in respect of the prior use of the mark “DR TRUST” and likelihood of confusion to be caused in the mind of the customers. The documents

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and pleadings of the applicant indicates that, his products are also available through Amazon, Filpcart, Snapdeal etc., The mark of the applicant and the respondent, though visually different, phonetically it is identical and the products

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are also the same and the channel of sale over laps. While the applicant have a valid registration for “DR TRUST” and its variants logo and word, the respondent cannot take umbrage under defence of 'descriptive term'. Particularly, the conduct of the respondent, who is adopting the mark “DOCTOR'S TRUST” clearly indicate that, it is a dishonest adaptation. Till the breakdown of pandemic, admittedly, the respondent was in a different business. As a shrewd entrepreneur

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the respondent has diversified his business into import and distribution of medical equipments. Soon after the breakdown of pandemic, to market his product easily he has dishonestly adopted the mark “DCOTOR'S TRUST”, to have a ride over the advantage of the reputation and goodwill built by the applicant. While the respondent have a valid registration under the trademark “DIVINE TOUCH”,

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021 in C.S.No.19 of 2021

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purposely selling its products carrying the name “DOCTOR'S TRUST”. The mark
of the respondent deceptively similar visually and phonetically identical to the
applicants trademark “DR TRUST”, this amounts to infringement. It is to be
noted, the applicant has moved the Registry of Trademark opposing grant of
registration to the respondent mark “DOCTOR'S TRUST”.
21.In the said circumstances, in the interest of justice, since the balance of
convenience is in favour of the applicant, the interim injunction already granted on
19.07.2021 is made absolute. Accordingly, these applications are allowed. No
order as to costs.
07.10.2021
Index:yes
ari

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https://www.mhc.tn.gov.in/judis/

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O.A.Nos.414 and 415 of 2021

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in C.S.No.19 of 2021

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DR.G.JAYACHANDRAN,J.

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ari
Pre-delivery Common Order made in
O.A.Nos.414 and 415 of 2021
in
C.S.No.19 of 2021