*THE HON’BLE SRI JUSTICE K.C.BHANU +CIVIL MISCELLANEOUS APPEAL NOS. 757 AND 758 OF 2010. %06-10-2010 # M/s Yashoda Super Speciality Hospitals, a partnership firm, Represented by its partner G.Devender Rao …Appellant-Plaintiff Vs. $ 1.Yashoda Medicare and Research Centre (P) Ltd., a company registered under Companies Act,1956, Having its registered office at New Delhi, rep. by Its Director and another …Respondents-Defendants !Counsel for the Appellant: Mr. Suni Ganu for Mr.Papa Reddy ^Counsel for the Respondents: Mr.C.Hanumantha Rao <Gist : >Head Note: ? Cases referred: 1.2002 (24) PTC 355 (DEL) 2.AIR 1965 SC 980 3.2010 (2) SCJ 344 4.AIR 2008 SC 2291 5.2009 (7) SCJ 579 6.2009 (7) SCJ 599 7.AIR 2010 SC 296 8.AIR 1970 SC 2062 9.AIR 1971 SC 898 10.1997-DLT-67-803 THE HON’BLE SRI JUSTICE K.C.BHANU CIVIL MISCELLANEOUS APPEAL NOS. 757 AND 758 OF 2010 DATED:06th OCTOBER, 2010 Between: M/s Yashoda Super Speciality Hospitals, a partnership firm, Represented by its partner G.Devender Rao …Appellant-Plaintiff And 1.Yashoda Medicare and Research Centre (P) Ltd., a company registered under Companies Act,1956, Having its registered office at New Delhi, rep. by Its Director and another …Respondents-Defendants THE HON’BLE SRI JUSTICE K.C.BHANU CIVIL MISCELLANEOUS APPEAL NOS. 757 AND 758 OF 2010 COMMON JUDGMENT: Since the common question of law and fact is involved in both the appeals, that in the first instance both the counsel advanced their arguments in the Miscellaneous Petitions, but on hearing both the counsel, they stated that those arguments may be treated as arguments in the main appeals and at request of both the counsel, the Civil Miscellaneous Appeals are disposed of by way of this common judgment. 2. C.M.A.No.757 of 2010 is directed against the order, dated 19-08-2010, in I.A.No.3445 of 2009 in O.S.No.567 of 2009, on the file of the XIV Additional Chief Judge, (F.T.C.), City Civil Court, Hyderabad, whereunder and whereby the application filed under Order XXXIX Rules 1 and 2 r/w Section 151 CPC to grant interim injunction restraining the respondents-defendants , their directors, servants and agents from infringing the petitioner- plaintiff’s registered trademark ‘Yashoda’ bearing registration Nos. 1332531 and 1390868 both in class 42 by using the trademark ‘Yashoda Medicare’ or any other trade mark deceptively similar thereto or any other trademark containing or comprising of the word ‘Yashoda’ or word deceptively similar thereto in relation to medical, hygienic, health and beauty care series including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy, scientific and medical research and similar services, was dismissed. 3. C.M.A.758 of 2010 is directed against the order, dated 19-08-2010, in I.A.No.3444 of 2009 in O.S.No.567 of 2009, on the file of the XIV Additional Chief Judge, (F.T.C.), City Civil Court, Hyderabad, whereunder and whereby the application filed under Order XXXIX Rules 1 and 2 r/w Section 151 CPC to grant interim injunction restraining the respondents-defendants , its directors, servants and agents from infringing the petitioner-plaintiff’s registered trademark ‘Yashoda’ bearing registration Nos. 1332531 and 1390868 both in class 42 by using the corporate name and/or trade name and style ‘Yashoda Medicare & Research Centre (P) Ltd.,’’ or any other name containing the word ‘Yashoda’ or containing any other word deceptively similar to the word ‘Yashoda’ upon and in relation to medical, health and beauty care series including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy, scientific and medical research and similar services, was dismissed. 4. The appellants herein are the plaintiffs and the respondents herein are the defendants in the main suit. 5. The averments in the affidavit filed in support of the application in I.A.No.3444 of 2010 in O.S.No.567 of 2009 are; originally the plaintiff is a partnership firm duly registered under the Indian Partnership Act, 1932. The same was constituted in the year 1986 and the business was commenced in the name and style of ‘Yashoda Hospitals’, Somajiguda, Hyderabad. Subsequently, the same was changed into ‘Yashoda Super Speciality Hospital’ w.e.f. 21-11-1998. The partners of the plaintiff firm have also adopted the name ‘Yashoda’ even in the business establishments in the year 1984 itself. They have floated another company by name M/s Dattachandra Hospitals Pvt. Ltd., which is running hospitals under the aegis of Yashoda Hospitals at Malakpet, Hyderabad, S.P. Road, Secunderabad and also a cancer hospital at Somajiguda. Thus the plaintiff carries an old established and reputed business of running hospitals under the name of ‘Yashoda Super Speciality Hospital’. The defendant is a company registered under the Companies Act, 1956, which is incorporated to carry on the business and running a hospital. The plaintiff is seeking redressal for infringement of its registered trademark ‘Yashoda’ and to seek an order of injunction restraining the defendants from using trademark and the name ‘Yashoda’ or any other trademark or name containing the word ‘Yashoda’. The plaintiff is the proprietor of the following trademarks, which have been duly registered in the names of its partners as per the provisions of the Trade Marks Act, 1999 (for short ‘the Act’): Mark Number Date Class Services Yashoda (word) 1332531 17-1-2005 42 Medical, hygienic, health and beauty c a r e services, including pharmacy s e r v i c e s and advice, hospitals and nursing homes, physical therapy and physiotherapy; scientific medical and industrial research. 105910 Yashoda 1390868 6-10-2005 42 Medical, hygienic, health and beauty c a r e services, including pharmacy s e r v i c e s and advice, hospitals and nursing homes, physical therapy and physiotherapy; scientific medical and industrial research. The said registration is subsisting up to 2015. The trade mark ‘Yashoda’ is infringed by a person who, uses in the course of trade, trade mark which is identical with or deceptively similar to the plaintiff’s registered trademark ‘Yashoda’ in relation to the aforesaid services for which its said trademark has been registered. The annual turn over of the plaintiff’s hospital which is as below, is a telling testimony of the well known status of the plaintiff’s said hospital. Year Turn over in Rupees 1997-1998 1,56,15,434/- 1998-1999 3,78,09,151/- 1999-2000 7,07,52,895/- 2000-2001 16,32,94,613/- 2001-2002 12,24,82,716/- 2002-2003 16,98,51,881/- 2003-2004 19,15,83,892/- 2004-2005 25,48,92,761/- 2005-2006 28,69,07,501/- 2006-2007 44,77,86,369 2007-2008 54,62,76,854/- In April, 2009, the plaintiff came to know through website that the defendant is in the hospital business and has named its hospital as ‘Yashoda Medicare’ and learnt that the defendant company is incorporated with the name of plaintiff trademark ‘Yashoda’ for the purpose of rendering same services for which the plaintiff’s trademark ‘Yashoda’ has been registered under the Act. Therefore, it is clear that the defendants are using the mark and the name ‘Yashoda Medicare’ which is identical with and/or deceptively similar to the plaintiff’s aforesaid trade mark ‘Yashoda’ in relation to the hospital and nursing homes and medical research, for which services, the plaintiff’s said trade mark has been duly registered as aforesaid. The plaintiff is likely to suffer irreparable loss on account of aforesaid acts of infringement committed by the defendant. Hence, the application. 6. The defendants filed counter stating that the company is not only registered for extending the medical care in various cities and parts of the country, but also was registered for research centres to be established in connection with the aims and objectives of the company more clearly stated in the Memorandum of Association and Articles of Association. The plaintiff partnership firm has no research activity. The defendants are interested to serve the needy patients of different ailments have an idea to establish Medicare centres in various important cities in India and had with dedication and commitment decided to extend expertise services to the patients ailing with different diseases in different parts of the country and got the company named as ‘Yashoda Medicare and Research Centre (P) Ltd.’ All the directors, who are devotees of Lord Krishna have chosen their noble idea of extending the Medicare to the needy patients in various cities and parts of the country who are having lot of attachment to Lord Krishna and faith. Having considered the Memorandum and Articles of Association of their company, the Registrar of Companies, Delhi issued a certificate of incorporation. In the beginning, they had taken up three cities i.e.,Bangalore, Ranchi and Varanasi for extension of medicare by establishing hospitals. For the purpose of establishing hospitals, they have procured required sites. The suit filed by the plaintiff is frivolous, vexatious and unsustainable. There is no cause of action for filing the present suit. The plaintiff firm is located at Hyderabad, whereas the defendants company whose hospitals are to be established in Bangalore, Ranchi and Varanasi and that having undertaken the Herculean and stupendous task of extending medicare by establishing the hospitals at present Bangalore, Ranchi and Varanasi, they cannot be restrained by extending discretionary equitable relief. The affidavit sworn by the plaintiff is irrelevant and imaginary and the plaintiff approached the Court with unclean hands. The defendants company is proceeding with the endeavour of extension of medicare to the needy patients of Bangalore, Ranchi and Varanasi, for which the defendants company is legally and lawfully entitled to as per the Memorandum and Articles of Association. Extending medicare services to the needy patients suffering from various ailments more so with large number of cardiac problems cannot be the monopoly of any individual partnership firm or the company as it is the necessity to extend such medicare to the ailing patients who require the urgent and immediate medicare in short span of time in the hospitals that would be available to them nearest to their residences. Seeking relief of infringement the plaintiff’s trademark is without any substance and basis. The word ‘Yashoda’ with prefix of nomenclature, there are 63 companies registered in India and one such hospital by name ‘Yashoda Cardiac Institute’ is located in Andhra Pradesh. The plaintiff’s firm holds a trademark of the word ‘Yashoda’ and people would recognize the word of plaintiff concern in relation to the trademark and would not be deceived by use of the word ‘Yashoda Medicare’ and that ‘Yashoda’ is a proper noun, the name of the mother of Lord Krishna and therefore, it is very auspicious. The plaintiff cannot claim such a name and restrain defendants company from undertaking medicare job. The word ‘Yashoda’ is a household name in India and has a religious significance and there is no infringement of any trademark. The corporate name of the defendants is neither imitation nor colourable imitation of the plaintiff’s trademark. It is not the case of the plaintiff that it has lost patients on account of the defendants establishing the hospital at Bangalore. There is no infringement per se and if the injunction is granted it would not only cause huge and irreparable loss to the defendants company but also cause unexplainable hardship to the needy ailing patients of different diseases in Bangalore, Ranchi and Varanasi and therefore, the defendants pray to dismiss the application. 7. The averments in the affidavit filed in support of the application and also in the counter in I.A.No.3445 of 2009 in O.S.No.567 of 2009 are same as that of the averments in I.A.No.3444 of 2009 in O.S.No.567 of 2009. 8. Basing on the above pleadings, the trial Court framed the following point for consideration viz., whether the petitioner is entitled for temporary injunction as prayed for? 9. The trial Court after considering the three well established principles in granting injunction came to the conclusion that the plaintiff obtained the trademark word ‘Yashoda’ and therefore, prima facie case is in favour of the plaintiff, but on the ground of balance of convenience that if the injunction is not granted, it would not cause any inconvenience to the plaintiff and with regard to the third principle, irreparable injury, there is no possibility of one being accused of deceptively similar with the other and the likely customer mistaking one with the other, that therefore, the plaintiff is not entitled for grant of temporary injunction and accordingly dismissed both the applications. Aggrieved thereby, these appeals have been preferred. 10. Now the point for determination is whether the plaintiff is entitled for temporary injunction as prayed for pending disposal of the suit? 11. Learned counsel appearing for the appellant-plaintiff contended that the word ‘Yashoda’ was registered as a trademark and prima facie they have got a right under the Act to use the name, that having invested crores of rupees with regard to establishing infrastructure viz., purchasing machines, engaging reputed Doctors and incurring considerable expenditure for giving vide publicity, the plaintiff has got created an effectual impression in the minds of the patients that if the patients go to the ‘Yashoda hospital’, their diseases would be well attended, that patients from all over the country were coming to the hospital of the plaintiff for diagnosis and treatment, that the defendants except registering the company under the Companies Act, 1956, they have not obtained any trademark for use of the word ‘Yashoda’, that they have deceptively using the word ‘Yashoda’ and thereby trying to mislead the patients attracting to the hospital of the defendants and giving a belief that plaintiff as if opened a branch at Bangalore and it would cause more hardship to the plaintiff, that the plaintiff built up a ample reputation throughout the country rendering good services to the patients and by starting a new company in the brand name of ‘Yashoda’, the people are likely to misled and it would cause irreparable injury to the plaintiff company, which cannot be compensated in terms of money and hence, he prays to set aside the order of the trial Court and grant temporary injunction. 12. On the other hand, learned counsel appearing for the respondents-defendants contended that the plaintiff has no absolute right to use the word ‘Yashoda’, which is a generic name, that there cannot be any mark in relation to the services to be rendered by the hospitals as it is not included under Section 2 (z) of the Act, that there are several establishments and more than 150 registered under the name ‘Yashoda’ including one hospital in Andhra Pradesh prefixing the word ‘Yashoda’, that defendants invested crores of rupees and recruited young doctors with a commitment to render services to the patients, that the plaintiff cannot have a right of monopoly in the hospital business, that the name of one of the directors of the company is ‘Yashoda’ and the directors are the firm believers of Lord Krishna, whose mother is ‘Yashoda’, that therefore, they have started the hospital ‘Yashoda Medicare and Research Centre (P) Ltd.,’, that the defendants have incurred crores of rupees for construction of 220 bedded hospital at Bangalore and also ready to function as the doctors were already recruited and extending medicare by the defendants hospital is a necessity and it is the interest of the defendants to pay its loans salaries and incur the expenditure for running the hospital, that the finding of the trial Court that there is a prima facie case in favour of the plaintiff is unsustainable, that as the plaintiff failed to establish balance of convenience and irreparable injury, the trial Court rightly dismissed the applications and absolutely there are no grounds to interfere with the same. 13. Both the counsel relied on several decisions, which will be referred to at appropriate time. 14. Grant or refusal of injunction is guided by three well established principles viz.,1) if the plaintiff has made out a prima facie case, 2) if the balance of convenience is in his favour i.e., it would be greater inconvenience to the plaintiff if the injunction is not granted than the inconvenience which the defendant or persons claiming through him would be put to and 3) if the temporary injunction is granted, plaintiff suffers irreparable injury. 15. Temporary injunction is explained in sub-section (1) of Section 37 of the Specific Relief Act, 1963 which reads temporary injunctions are such as are to continue until a specified time, or until the further order of the Court and they may be granted at any stage of a suit, and are regulated by Civil Procedure Code. It has to be remembered that a suit for injunction is equitable remedy and the primary requirement for grant of equitable relief is, a person who claims the remedy must come before the Court with clean hands. He must show equity and entitlement under the equity, the relief as sought. Fairness and good faith are two important things required for obtaining any equitable relief. 16. With regard to prima facie case, it is a case to be made out by proper and sufficient material. The court must be satisfied that there is a serious question to be tried at the hearing and that on the facts before it, there is a probability that the plaintiff is entitled to relief. The material available to the Court at the hearing of the application, must satisfy that the success at the trial is probable and impending danger must be eminent and impressive. By probability is meant the likelihood of anything to be true, deducted from its conformity to our knowledge, observation and experience. 17. The case of the plaintiff is that the plaintiff registered the trademark ‘Yashoda’ bearing No. 1332531, dated 17-01-2005 in Class 42 with regard to the various services viz., medical, hygienic, health and beauty care services, including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy; scientific medical and industrial research. Similarly, it is registered with mark “105910,Yashoda” with No.1390868, dated 06-10-2005, Class 42 and the services are Medical, hygienic, health and beauty care services, including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy; scientific medical and industrial research. It is the case of the plaintiff that the said registration marks are valid and subsisting up to 2015. Under Section 28 of the Act subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark in the manner provided by this Act. Section 28 of the Act is subjected to other provisions of the Act. 18. Learned counsel for the defendants contended that under Section 17 (2) of the Act, the plaintiff has no exclusive right, which reads thus: 17.Efect of registration of parts of a mark. (1) … (2) Notwithstanding anything containing in sub-section (1) when a trademark- (a) contains any part- (i)which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to be trade or is otherwise of a non-distinctive character. The registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. As rightly pointed out by the learned counsel for the defendants that Section 28 of the Act is subjected to other provisions of the Act. Though Section 28 of the Act confers exclusive right to use the trademark, which is registered in relation to the goods or services, that is subject to Section 17 of the Act, which does not confer any exclusive right. 19. The further contention of the learned counsel for the defendants is that the services used in Section 28 of the Act does not include medical field in view of the fact that service is defined under Section 2 (z) of the Act, which reads thus: “’service’ means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.” Therefore, his contention is that hospital services do not include a service within the meaning of Section 28 of the Act. The definition of service under Section 2 (z) of the Act is not specifically included in the medical field, but it does not exclude medical service. Simply because medical services has not been included in Section 2(z) of the Act, it cannot be said that the services of the medical field entitling registration under the provisions of the Act is excluded. As seen from the documents filed by the plaintiff, the plaintiff obtained registration under Section 28 of the Act. In view of the fact that the authorities concerned registered the trademark name ‘Yashoda’ in relation to the medical field and the same has been duly registered in accordance with the provisions of the Act, prima facie at this stage, the plaintiff has got a right though not an exclusive right to use the word ‘Yashoda’ in relation to the medical services also. 20. Learned counsel for the plaintiff relied on a decision reported in INFO EDGE (INDIA) PVT. LTD., AND ANOTHER V SHAILESH GUPTA AND ANOTHER [1], wherein it was held thus (para 21): “If a product of a particular character or composition is marketed in a particular area or place under a descriptive name and gained a reputation thereunder, that name which distinguished it from competing products of different composition, the goodwill in the name of those entitled to make use of it there was protected against deceptive use there of the name by competitors.” 21. He relied on another decision reported KAVIRAJ PANDIT DURGA DUTT SHARMA V NAVARATNA PHARMACEUTICAL LABORATORIES [2], wherein it was held thus (paras 28 and 29): “… In an action for infringement the plaintiff must no doubt, make out that the use of the Defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and defendant’s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. Where the two marks are identical no further questions arise, for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered.” 22. On the other hand, learned counsel for the defendants relied on a decision reported in SKYLINE EDUCATION INSTITUTE (INDIA) PRIVATE LTD., V S.L.VASWANI AND ANOTHER [3], wherein it was held thus (para 18): “In our opinion, the findings recorded by the learned Single Judge and Division Bench on the crucial factors like prima facie case, balance of convenience and equity are based on a correct and balanced consideration of various facets of the case and it is not possible to find any fault with the conclusions recorded by them that it is not fit case for restraining the respondents from using the word ‘Skyline’ in the name of the institute established by them. It has not been disputed on behalf of the appellant that the word ‘Skyline’ is being used as trade name by various companies/organizations/business concerns and also for describing different types of institute/institutions. The voluminous record produced by the respondents