A Division Bench of the Madras High Court on Tuesday set aside a single judge order restraining Patanjali Ayurved from using “Coronil” in relation to its immunity booster product, finding that there was no prima facie case of trademark infringement made out against Patanjali (M/s.Pathanjali Ayurved Limited and anr v. Arudra Engineers Private Limited).
The August 6, 2020 order under challenge was passed by Justice CV Karthikeyan while allowing a trademark infringement suit by Chennai-based Arudra Engineering Private Limited.
Arudra had registered the trademark for ‘CORONIL-92 B’ as an Acid inhibitor product for industrial cleaning and chemical preparations for industrial use in June 1993.
The single Judge order was challenged in an appeal by Patanjali and the Divya Yog Mandir Trust (defendants).
A Bench of Justices R Subbiah and C Saravanan has now set aside the order upon finding that Arudra, while registering their trademarks, did not claim a monopoly over the word “Coronil” by itself and, as such, has not made out a case for interference by granting an interim injunction in their favour.
“In the instant case, registration has been obtained by the plaintiff (Arudra) over the label with the words and alpha numeral Coronil 92B and Coronil 213 SPL as a composite mark and not as a word for “Coronil as envisaged under Section 15 (of the Trade Marks Act)”, the Court said.
The Court added that situation would have been different, if Arudra had applied for registration of the word “Coronil” as a word mark.
“It would have been different if the respondent/plaintiff (Arudra) had obtained a registration of the word “Coronil” or any other word which was phonetically similar or identical with the aforesaid word. Therefore, it cannot be said that the respondent/ plaintiff had established prima facie for the purpose of grant of interim relief for the alleged infringement of trademark under Section 29(4) of the Trademarks Act, 1999,” the order said.
Senior Advocates Aryama Sundaram and Sathish Parasaran and Advocates Rohini Musa, a team of advocates from Athena Legal comprising of Simranjeeth Singh and Mizan Siddiqui, P Giridharan, and S Santhosh represented Patanjali and the Divya Yog Mandir Trust. Senior Advocate PR Raman and Advocate C Seethapathy appeared for Arudra.
The findings of the Division Bench on the issue include:
- The label marks registered by Arudra are composite marks, comprising of a common word “coronil” and the alpha numerals namely “92B” and “213 SPL” respectively. On the other hand, the defendants used the word “Coronil” as aword mark simpliciter.
- Arudra has neither applied for nor registered the word “coronil” as a word mark even though it was an invented word and, prima facie, a distinctive word.
- The usage of “coronil” by Arudra in relation to their products meant for cleaning of industrial machinery was suggestive and perhaps intended to inspire an imagination that the use of the product would prevent corrosion in the industrial machines. It was, perhaps, meant to allude to the quality of the product.
- Even though “coronil” was an invented word, Arudra chose not to apply for the trademark registration of the word “coronil”. Thus, Arudra’s registration was compromised by Arudra itself, when it was satisfied with registration of the composite labels.There was a defect in its birth which was never cured over a period of last 27 years.
- Both of Arudra’s labels were registered with a disclaimer with respect to the alpha numerals namely 92 B and 213 SPL. However, no monopoly was claimed over the words “Coronil” by Arudra. The registration of the labels did not confer any exclusive rights over the word “Coronil.”
- The registration of a trademark does not confer any exclusive right or monopoly over a part of the trademark so registered.
- The registration granted to Arudra has to be seen as a whole of label consisting of device, the word “Coronil” and the disclaimed portions. It cannot mean that the registration of the trademark of Arudra was for the word “Coronil” to the exclusion of the other feature namely the device the alpha numerals 92B and 213 SPL.
- If Arudra held an independent registration for the word “Coronil”, it can be said that a suit or an action for infringement of trademark under Section 29(4) of the Trade Mark Act, 1999 would be maintainable.
- However, mere registration of a composite mark, consisting several features namely a device, a word and disclaimed alpha numerals 92 B and 213 SPL cannot give any right to file a suit for infringement under Section 29(4) of the Trade Marks Act, 1999.
- For the purpose of Section 29 (4)of the Trademarks Act, 1999, Arudra cannot claim monopoly over the word “Coronil” as it was registered as a part of a composite mark.
- When each part of a label mark is capable of being individually registered, the Court cannot dissect and split up into its component parts and grant an injunction.
- Though Arudra’s label incorporates the word “Coronil”, it cannot be said that the word “Coronil” adopted by the Patanjali was similar to that of the registered labels of Arudra.
Since Arudra was found to have not claimed any monopoly over the word “Coronil”, the Division Bench concluded that prima facie, the single judge order should be set aside even if Arudra may have a case for the dilution of its trademark.
“In case, there is dilution of the trademark/label of the respondent/plaintiff, the respondent/plaintiff can claim damages which has to be determined only after a trial,” the Court said.
The Bench added that Arudra’s contention that the use of “Coronil” by Patanjali was intended to derive unfair advantage was an aspect to be determined in trial.
As far as the present appeal against the injunction order was concerned, the Court concluded, prima facie, that the use of “Coronil” in relation to the immunity booster being manufactured and sold by Patanjali would not be detrimental to Arudra’s reputation.
With these, among other observations, the Division Bench has set aside Justice Karthikeyan’s August 6 injunction order, and consequently also set aside the Rs 10 lakh fine imposed on the defendants.
The Court has also opined that the main suit between Arudra and the defendants over the trademark rights for “Coronil” should be disposed of in a time-bound manner by the Commercial Division of the High Court.