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THE CONFOUNDING MARK OF ‘CORONIL’: A CRITICAL ANALYSIS OF "PATANJALI CASE"

Updated: Aug 22, 2020

(M/S. ARUDA ENGINEERS PRIVATE LIMITED V. M/S. PATANJALI AYURVED LIMITED & ORS.)

Background

The Hon’ble High Court of Madras weighed on the merits of restraining Patanjali from using the trademark ‘Coronil’ in the elaborate order pronounced on the 6th August 2020. The Hon’ble Justice Karthikeyan gave a meticulous interpretation of Section 29(4) of the Indian Trademark Act by placing reliance upon a plethora of judicial resources in this coherent order. The judgement looks into the elements of the doctrine of trademark dilution[1] to establish the merits for granting a permanent injunction against the infringement of the registered trademark of ‘Coronil’ by Patanjali. The intention of the Parliament whilst formulating the Section 29(4) with the words "reputation in India" has also been discussed in detail by the court as the defendants contended that the plaintiff's mark is measured upon the standard of "well known in India" instead of reputation. The defendant's initial projection of the product as a cure for coronavirus was analysed as well to determine whether they had a due cause to use a similar trademark. The order has been suspended as of now as the judge would later take up the appeal for final disposal, but a critical analysis of the judgement is necessary to comprehend the numerous pioneering standpoints taken by the court on the subject matter. This article discusses the legislative intent of the Parliament whilst formulating the provision of Section 29(4) of the Indian Trademark Act, 1999, the court’s interpretation on the condition of ‘due cause’ to establish the principle of equity in the trademark law, and the determinative rules for the infringement of the composite trademarks as was laid down in the case of M/s. Arudra Engineers Private Limited v. M/s Patanjali Ayurved Limited.

Factual Background

The plaintiff of the case is M/s. Arudra Engineers Private Limited which is a registered Class 1 company dealing with the manufacturing of chemicals and cleaning agents for the heavy machinery industries and is the registered proprietor of the trademarks- “CORONIL-92B” and “CORONIL-213 SPL” till 2027. The defendant of the case is M/s Patanjali Ayurved Limited that introduced their product called the 'Coronil Tablet' as the much-anticipated cure for the coronavirus, but later retracted from their standpoint owing to the numerous complaints lodged against them and restated the product as an immunity booster against cough and fever. A suit was filed by the plaintiff against the defendant for its usage of the same mark ‘Coronil’ on the ground of seeking protection against the infringement of its trademark which would result in the dilution of the former’s repute in the domestic and international market.

Ruling of The Court

The court granted a permanent injunction against the usage of the word 'Coronil' as a mark for the defendant's product. They also asked the defendant company to jointly pay the costs of Rs. 5,00,000/- for exploiting the prevalent "fear and panic among the general public by projecting a cure for the Coronavirus, when their 'Coronil Tablet' is not a cure but rather an immunity booster for cough, cold and fever".

Critical Analysis

The Standard for Section 29(4): Reputation or Well-Known Mark?

The single-judge bench first undertook the task of determining the intention of the legislators (given that the judiciary must act upon the basis of the intention of the legislature[2])while drafting the provision of Section 29(4) (c) of the Indian Trademark Act, 1999 as the defendants had placed much reliance on how the Parliament's aspiration whilst formulating the legislation was to extend the legal protection to the well-known trademarks. They had repeatedly highlighted upon their company as being a “10,000 crore company” that was well known in the Indian and international market in comparison to the plaintiff’s that had a market value of “mere” 10 crores and hence, insisted upon the court to read the words 'well-known trademarks' in place of the 'reputation in India' as provided in Section 29(4) (c). Hence, the defendants wanted to use the standard of well-known mark to establish their claim over the usage of the mark ‘Coronil’ and invalidate the claims of the plaintiff against trademark infringement on the grounds of them not being a well-known company in the country.

The court drew inspiration from the recent judgement of the Hon'ble Supreme Court of the United States in the case of Bostock v. Clayton Country, Georgia to stress upon the importance of textual interpretation of the words of the statute. The bench emphasised on how the notion of 'well-known trademark' was not even in existence in the 1958 Act and was only conceptualised in the Trademark Act, 1999 under the provision of Section 2(1) (zg). The concept was not even indirectly instituted in the provision of Section 29(4) (c) as the Parliament had very succinctly described the marks as those which had “a reputation in India". Hence, in the instant case, the court concluded that the legislator intended Section 29 (4) (c) to be interpreted in its pure grammatical sense that is, the provision could not be applied under the ambit of ‘well-known mark’ as the words specifically used in the provision was ‘reputation in India’

The Madras High Court's interpretation of the standard of repute is a revelation as it brings the small, domestic players of the market at par with the various international brands. It allows the court an opportunity to apply its judicial mind and consider the whole gamut of factors to conclude on the repute of the plaintiff company. The judgement extended the canopy of judicial protection against trademark infringement towards numerous Indian marks. Considering the Supreme Court’s increased emphasis on the territoriality of the trademark law in the case of Toyota Jidosha Kabushiki Kaisha v. M/s. Prius Auto Industries Limited, this High Court order pretty much diminishes the scope of the Section 2 (zg) that defined 'well-known mark' in the legislation.

The Determination of Composite Trademark Infringement

The single judge bench of the Madras High Court also dwelt upon the subject of determining trademark infringement of composite marks as the plaintiff’s registered mark( ‘CORONIL-92B’ and ‘CORONIL-213 SPL’)are composite marks. These marks have been described as having a droplet that ended with the letter ‘A’, followed by the name ‘Coronil’ and finally, attached with the suffixes ‘92B’ and ‘213 SPL’, respectively. It was only after a detailed examination of the case N.S.Krishnamoorthy and Another v. Afru Hearing Aid Centre that the court held that the primary word in contention was ‘Coronil’ wherein the plaintiff used the mark to signify “Corrosion+Nil", while the defendant used it for "Coronavirus+Nil". Therefore, on the plaintiff's claim, a prima facie case was made out by the Hon'ble judge as they had a prior registration which accorded them protection against infringement by a different class of goods. According to the bench, it was not an obligation to have the whole or a part be registered as a separate trademark, for Section 15(1) used the word "may apply" and it would be absurd to register common numeral digits of 92 and 213 as independent marks.

The court in order to reach this conclusion, placed reliance upon the rule of identification of dominant mark rule which means that a prominent part of the composite mark would enjoy dominance in comparison to the other constituent elements. For instance, in this case, 'Coronil' is the dominant part of the mark and is compared with that of the defendant's. The Delhi High Court in the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. had harmonised the two existent principle of anti-dissection rule and identification of dominant mark rule and had hence, concluded that while the comparison of the Composite Marks should be done as a whole, the concerned mark’s certain component may create an impression upon the consumer’s mind. Therefore, the Madras High Court’s stance in this confounding Coronil Case creates a rather baffling scenario in the cases of composite trademark infringement.

Other Aspects

The court also indulged in giving a detailed finding on the defendant's honesty and further went on to establish the relationship between their dishonest projection of the Coronil Tablet and their fraudulent intention. They asserted that the defendant’s action of delineating their mark as a cure for coronavirus amongst the consumers was a marketing gimmick to earn more profits by exploiting the existent public fear towards the pandemic. The fact that the Ayurveda company took a vacillating stand in describing their product from that of a cure for the coronavirus to an immunity booster for cough and cold became the primal reasoning to hold that the defendants had infringed the trademark of Plaintiff without any due cause which consequently diluted the plaintiff's reputation concerning the quality of their service.

It was hence, held by the Madras High Court after careful consideration and analysis that a permanent injunction was to be granted and a cost of Rs. 5,00,000/- was to be paid by the defendants. The defendant’s tenacious insistence on it being a “10,000 crore company” while arguing “plaintiff’s mark is known only to a very small number in the industrial fraternity and that the plaintiff also has a very small market” was vehemently rejected. This decision imposed the duty of care upon the defendants to inspect the Trade Mark Registry before launching their product with the same mark. The judgement ensures that the trademark rights of small scale companies are not infringed upon by the likes of the defendants and gives recognition to the reputation of the plaintiff.

This order albeit was suspended by the court for two weeks after a lapse of 9 days from when it was pronounced and is going to be taken up as an appeal for final disposal. However, the Hon’ble Justice Karthikeyan’s interpretation in M/s. Aruda Engineers Private Limited v. M/s. Patanjali Ayurved Limited. would always be considered as the judgement that reverberated the principle of equity in the domain of trademark law.

[1] Brajendu Bhaskar, “Trademark Dilution Doctrine: The Scenario Post TDRA, 2005”, NUJS Law Review 1. 637 (2008). [2] Salmond, Jurisprudence, 11th Ed., 152 (1957).

Title Image Source: Times of India


This article has been written by Ilina Peehu who is a student at GNLU, Gujarat.