Yashoda Super Specia... v. Yashoda Medicare And...

1. 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. CMA No. 757 of 2010 is directed against the order, dated 19.8.2010, in IA No. 3445 of 2009 in OS No. 567 of 2009, on the file of the XIV Additional Chief Judge, (FTC), City Civil Court, Hyderabad, whereunder and whereby the application filed under Order XXXIX Rules 1 and 2 read with 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. CMA 758 of 2010 is directed against the order, dated 19.8.2010, in IA No. 3444 of 2009 in OS 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 read with 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 IA No. 3444 of 2010 in OS 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 care services, including pharmacy services 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 care services, including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy, scientific medical and industrial research.

6. The said registration is subsisting upto 2015. The trademark ‘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 plaintiffs said hospital.

Year Turnover 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/-

7. 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 trademark ‘Yashoda’ in relation to the hospital and nursing homes and medical research, for which services, the plaintiff's said trademark 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.

8. 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 plaintiffs 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 plaintiffs 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 plaintiffs 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.

9. The averments in the affidavit filed in support of the application and also in the counter in IA No. 3445 of 2009 in OS No. 567 of 2009 are same as that of the averments in IA No. 3444 of 2009 in OS No. 567 of 2009.

10. 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?

11. 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.

12. Now the point for determination is whether the plaintiff is entitled for temporary injunction as prayed for pending disposal of the suit?

13. 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 be 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.

14. 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.

15. Both the Counsel relied on several decisions, which will be referred to at appropriate time.

16. 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.

17. 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.

18. 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.

19. The case of the plaintiff is that the plaintiff registered the trademark ‘Yashoda’ bearing No. 1332531, dated 17.1.2005 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 6.10.2005, 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 upto 2015. Under Section 28 of the Act subject to the other provisions of this Act, the registration of a trademark shall, if valid, give to the registered proprietor of the trademark 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.

20. Learned Counsel for the defendants contended that under Section 17(2) of the Act, the plaintiff has no exclusive right, which reads thus:

17. Effect of registration of parts of a mark.

(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 trademark; or

(ii) which is not separately registered by the proprietor as a trademark; or

(b) contains any matter which is common to be trade or is otherwise of a non-distinctive character.

21. The registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered.

22. 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.

23. 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.”

24. 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.

25. Learned Counsel for the plaintiff relied on a decision reported in Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, 2002 (24) PTC 355 (Del.), 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 thereof the name by competitors.”

26. He relied on another decision reported Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, 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 trademark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered.”

27. 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, 2010 (2) SCJ 344, 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 before this Court shows that in India as many as 117 companies including computer and software companies and institutions are operating by using word ‘Skyline’ as part of their name/nomenclature. In United States of America at least 10 educational/training institutions are operating with different names using ‘Skyline’ as the first word. In United Kingdom also two such institutions are operating. In view of this, it is not possible to agree with the learned Counsel for the appellant that the Skyline is not a generic word but is a specific word and his client has right to use that word to the exclusion of others.”

28. Basing on the above judgment, it is stated that ‘Yashoda’ is a generic name as it is being used more than 150 companies in the country. That is a case where the plaintiff therein did not register under the Act by registering the word Skyline to use in the goods/service. Though during pendency of the suit, the plaintiff therein got registered trademark Skyline Institute, in this case the word ‘Yashoda’ was registered under the Act for the purpose of rendering services mentioned in class 42 of the registration. Therefore, the plaintiff in this case has got prima facie right to use the word ‘Yashoda’ as it has been duly registered under the Act. Though it does not confer any exclusive right, but certainly it gives a right to the plaintiff. It is not the case of the defendants that they have got registered the name ‘Yashoda’ under the Act or ‘Yashoda Medicare and Research Centre (P) Ltd.’, has been registered under the Act. Therefore, it was held in the above case that prima facie case has not been established. Hence, the above decision has no application to the present facts of the case.

29. He relied on another decision reported in Mandali Ranganna v. T. Ramachandra, (2008) 11 SCC 1 : AIR 2008 SC 2291, wherein it was held thus (Para 18):

“While considering an application for grant of injunction, the Court will not only take into consideration the basic elements in relation thereto viz., existence of a prima facie case, balance of convenience and irreparable injury, it must also take into consideration the conduct of the parties. Grant of injunction is an equitable relief. A person who had kept quiet for a long time and allowed another to deal with the properties exclusively ordinarily would not be entitled to an order of injunction. The Court will not interfere only because the property is a very valuable one. We are not however obvious of the fact that grant or refusal of injunction has serious consequence depending upon the nature thereof. The Courts dealing with such matters must make all endeavours to protect the interest of the parties. For the said purpose, application of mind on the part of the Courts is imperative. Contentions raised by the parties must be determined objectively.”

30. He relied on another decision reported in Prabhjot Singh Mand v. Bhagwant Singh, 2009 (7) SCJ 579, wherein it was held thus (Para 25):

“… But it is beyond any cavil of doubt that before passing an interim order, the Courts should not only consider prima facie case, balance of convenience, and irreparable injury but also its effect on public interest also.”

31. He relied on another decision reported in Kishorsinh Ratansinh Jadeja v. Maruti Corp., 2009 (7) SCJ 599, wherein it was held thus (Para 22):

“It is well established that while passing an interim order of injunction under Order XXXIX Rules 1 and 2 CPC, the Court is required to consider three basic principles, namely

(i) prima facie case

(ii) balance of convenience and inconvenience; and

(iii) irreparable loss and injury.

None of the said principles have been considered by the High Court while passing the second and third interim orders dated 22nd April, 2008 and 7th May, 2008 nor has the High Court taken into account the long silence on the part of the respondent No. 1 corporation in filing a suit after 19 years.”

32. He relied on another decision reported in Kashi Math Samsthan v. Srimad Sudhindra Thirtha Swamy, (2010) 1 SCC 689 : AIR 2010 SC 296, wherein it was held thus (Para 13):

“It is well settled that in order to obtain an order of injunction, the party who seeks for grant of such injunction has to prove that he has made out a prima facie case to go for trial, the balance of convenience is also in his favour and he will suffer irreparable loss and injury if injunction is not granted. But it is equally well settled that when a party fails to prove prima facie case to go for trial, question of considering the balance of convenience or irreparable loss and injury to the party concerned would not be material at all, that is to say, if that party fails to prove prima facie case to go for trial, it is not open to the Court to grant injunction in his favour even if he has made out a case of balance of convenience being in his favour and would suffer irreparable loss and injury if no injunction order is granted.”

33. There is no dispute about the proposition of law laid down by the apex Court with regard to the principles in granting injunction.

34. With regard to the infringement of trademark learned Counsel for the defendants relied on a decision reported in F-Hoffimann La Rache and Co. Ltd. v. Geoffrey Manners and Co., Private Ltd., (1969) 2 SCC 716 : AIR 1970 SC 2062, wherein it was held thus (Para 12):

“In order to decide whether the word ‘DROPOVIT’ is deceptively similar to the word ‘PROTOVIT’ each of the two words must, therefore, be taken as a whole word.

Each of the two words consists of eight letters the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel V the next is a consonant and the fifth is again a common vowel ‘o’. The combined effect is to produce an alliteration. The affidavits of the appellant indicate that the last three letters ‘VIT’ is a well-known common abbreviation used in the pharmaceutical trade to denote vitamin preparations. In his affidavit dated January 11, 1961 Frank Murdoch, has referred to the existence on the Register of about 57 trademarks which have the common suffix ‘VIT’ indicating that the goods are vitamin preparations. It is apparent that the terminal syllable ‘VIT’ in the two marks is both descriptive and common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters ‘D’ and ‘P’ in ‘DROPOVTT and the corresponding letters ‘P’ and ‘T’ in ‘PROTOVIT’ cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view.”

35. That is a case where the above trademarks have been registered. In those circumstances, it was held that the marks must be taken as a whole. The true test is whether the totality of the numbers trademark is such that it is likely to cause deceptive in the minds of the persons accustomed to the existed trademark.

36. He relied on another decision reported in National Bell Co., and Gupta Industrial Corporation v. Metal Goods Mfg. Co (P) Ltd., (1970) 3 SCC 665 : AIR 1971 SC 898, wherein it was held thus (Para 13):

“Section 11, as already noticed, does not, as Section 9 does, lay down the requisites for registration, but lays down prohibition against certain marks from being registered Clauses (b), (c) and (d) of Section 11 obviously do not apply in the present case but reliance was placed on Clauses (a) and (e) i.e, that the use of these trademarks would be likely to deceive or cause confusion and that they were such that they were otherwise disentitled to protection in a Court.”

37. Similarly, the provisions under Section 29(2) of the Act is enacted under the Trade Marks Act, which reads thus:

“29, Infringement of registered trademarks

2. A registered trademark 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-mark which because of—

(a) its identity with the registered trademark and the similarity of the goods or services covered by such registered trademark; or

(b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or

(c) its identity with the registered trademark and the identity of the goods or services covered by such registered trademark.

is likely to cause confusion on the part the public, or which is likely to have an association with the registered mark.

38. He relied on another decision reported in S.B.L Limited v. The Himalaya Drug Co., 1997 DLT (67) 803, wherein it was held thus (Para 20):

“A mark is said to be common to the trades when (i) it is in common use in the trade, or (2) when it is open to the trade to use. Any symbol, word or get up commonly used by traders in connections with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particular trade, or public juris. Further words, expressions, or devices which are descriptive of particular goods are open to use by all persons engaged in the trade. Such matters which are generally of a non-distinctive character may or may not be in actual use at any particular time. What is important is that the trading public has a right to use them in connection with their business.”

39. Bearing the above principles in mind, it has to be seen whether the plaintiff's trademark is infringed by the defendants who have not registered the name and is likely to cause confusion in the minds of the public or which is likely to have an association with the registered trademark. As already pointed out by the learned Counsel for the plaintiff that the trademark of ‘Yashoda’ (word) is registered. Similarly, the mark ‘105910 ‘Yashoda’ was registered in respect of 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 and the said registration of the trademark is valid and subsisting upto 2015. On the other hand, the defendants have not registered the mark or word under the Act. According to their pleadings, they simply registered ‘Yashoda Medicare and Research Centre (P) Ltd.’, under the Companies Act, 1956, whereas the plaintiff was carrying on business for quite a long period under the name and style of ‘Yashoda Super Speciality Hospital’ with the registration of the mark ‘Yashoda’. The Act was enacted to provide for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks and Merchandise. The effect of registration of trademark is that no other person is entitled to use trademark without the consent from the person who got registered. It is the specific case of the plaintiff that they are carrying on medical services originally in the name of ‘Yashoda Hospital’ by virtue of partnership deed and thereafter ‘Yashoda Super Speciality Hospital’ since 1986 openly, extensively and to the knowledge of everyone in the country by giving vide publicity. The quality of the medical services rendered by the plaintiff to the patients has earned impeccable reputation and these services acquired a distinctiveness. This can be legitimately inferred from the turnover of the plaintiff, which was substantially increasing from year to year. In 1997–1998, the turnover is Rs. 1,56,15,436/-, whereas the turnover in the year 2007–2008 is Rs. 54,62,76,854/-. This would suggest the quality of services rendered to the patients. The defendants are intended to start new business at present i.e, in the year 2010. Therefore, prima facie there is a possibility of deception and confusion in the medical services to the patients because the plaintiff had already established a good reputation throughout the country with regard to medical services by using the word ‘Yashoda’. In a common parlance though the plaintiffs firm is named as ‘Yashoda Super Speciality Hospital’ and the defendants company is a ‘Yashoda Medicare and Research Centre (P) Ltd.’, majority of patients are guided by the name ‘Yashoda’. The possibility of patients of the plaintiff firm going to the defendants hospital thinking that both are one and the same cannot be ruled out. The services of the plaintiff are associated in the minds of the general public, Since the defendants have not registered the word ‘Yashoda’ under the Act, they have no right to use that word and that there is possibility of deception and confusion.

40. Coming to the balance of convenience, the Court must compare the amount of mischief done or threatened to the plaintiff and must weigh the same against inflicted by the injunction upon the defendant and see that the comparative mischief or inconvenience which is likely to arise from withholding the injunction will be greater than that which is likely to arise from granting it. As seen from the averments in the plaint, it is clear that due to super quality of services rendered by the plaintiff in the hospital, the same has acquired widespread popularity and well recognition.

41. From the averments, prima facie it is clear that the defendants acquired lands and constructed building for running the hospital, but as on the date of filing of the suit, they have not established their hospital and medical activities have not been commenced. Whereas the plaintiffs established remarkable distinctiveness in the medical field with more than two decades in addition to holding registered trademark ‘Yashoda’ because of their proper diagnosis and treatment to the patients. The turnover has been increasing year by year. Whereas, the defendants company medical services is at the stage of inception. No harm would be caused to the defendants if they removed the word ‘Yashoda’ from ‘Yashoda Medicare and Research Centre (P) Ltd.’ and prefix some other name. If the word ‘Yashoda’ is continued to be prefixed to the other words of the defendants company, certainly it would cause greater mischief hardship and inconvenience to the plaintiffs. If the word ‘Yashoda’ is removed, no mischief or inconvenience would be caused to the defendants. From the record available, it is clear that the substantial number of patients must have understand the name ‘Yashoda’ hospital for dedicated services rendered to the patients. It is important to consider that when the name of the plaintiff in the ordinary common parlance resembles the name of the defendants, there is likelihood of deception and perplexity. By using the similarity of name, there is every possibility that the use of the name complained of would result for the defendants appropriating some material advantage of the plaintiff's business. It is not open that any person to carry on his business in the manner as to represent that it is the business of another or connected with the business of other in any way. No doubt, every person has legitimate right to carry on his own business in his own name, but he has no right to carry on business, which may have effect of passing of his services as the services of another. When the opening name of plaintiff and defendants is similar and similarity is sufficient to give rise to great risk of confusion from the point of view of a common man and the two trade names are not distinctively different insofar as ordinary prudent man. The plaintiff was carrying on the business long prior to the commencement of business of defendants, the plaintiff is entitled for injunction. When the plaintiff is using the word ‘Yashoda’ extensively and acquired reputation for its services rendered with the trademark, it is entitled protection by way of injunction from its infringement by the defendants.

42. Coming to the irreparable injury, the injury must be material and substantial one and not adequately reparable in damages. It cannot be measured by any known pecuniary standard. One of the basic principles on which injunction should be issued is that plaintiff must show that an injunction is necessary to protect him from irreparable injury and that mere inconvenience is not enough. The plaintiff is carrying on business under the name and style of ‘Yashoda Super Speciality Hospital’ and ordinary prudent man would ordinarily call the same as ‘Yashoda’ hospital. Similarly when the defendants intended to carry on medical activities under the name and style of ‘Yashoda Medicare and Research Centre (P) Ltd.’, there is every likelihood of patients may be under the impression that both hospitals are under the one management. In such a way, there is every likelihood of patients from three cities viz., Bangalore, Ranchi and Varanasi may go to the hospitals of the defendants thinking that it is the hospital of the plaintiff and that possibility cannot be ruled out. In such a case, the plaintiff would suffer irreparable injury, which cannot be compensated in terms of money. On the other hand, no injury would be caused to the defendants if they start the medical services in three cities by deleting the word ‘Yashoda’ from ‘Medicare and Research Centre (P) Ltd.’, in view of the fact that their establishments are admittedly at threshold. It is not the case of the plaintiff that the defendants cannot carry on the medical services for which it was registered, but their grievance is only infringement of trademark as there is possibility of misleading and confusion in the minds of the patients. Therefore, even if the defendants are directed to delete the word ‘Yashoda’ and prefix some other word or name to the ‘Medicare and Research Centre (P) Ltd.’, no irreparable damage or loss would be caused to the defendants. It is not the case of the plaintiff that it intended to start a branch at Bangalore or any other places in India, but at the same time, it is the specific case of the plaintiff that patients from all over the country would come to take treatment in the plaintiff's hospital because of their name and fame and eminence. Therefore, irreparable injury would be caused to the plaintiff if the defendants' are permitted to use the word ‘Yashoda’. These aspects have not been considered by the trial Court. Hence, the plaintiff is entitled for interim injunction as prayed for pending disposal of the suit.

43. Accordingly, both the civil miscellaneous appeals are allowed. There shall be interim injunction in favour of the plaintiff and as against the defendants restraining them, their directors, servants and agents from infringing the registered trademark ‘Yashoda’ bearing Registration Nos. 1332531 and 1390868 both in Class 42 by using the corporate prefix word ‘Yashoda’ to the words ‘Medicare and Research Centre (P) Ltd.’, for the purpose of which the registration of trademark ‘Yashoda’ was given by the competent authority. However, this order will not preclude the defendants to prefix any other word or name to the ‘Medicare and Research Centre (P) Ltd.’ Any finding or observation is made only for the purpose of disposal of the civil miscellaneous appeals. No observation in this judgment can be construed as a finding of this Court during the trial of the suit. No order as to costs.