The Delhi High Court has held that the adoption of prominent word of the label/device mark amounts to infringement. It observed that Section 17 of the Trademarks Act which confers exclusive right only to the use of the trademark as a whole is not applicable where the trademark contains matter common to trade or otherwise non-distinctive.
The plaintiff had instituted the suit to restrain the defendant from providing any services under the name MAXCURE HOSPITAL / MAXKURE / MAXCURE MEDICITI, alleged to be confusingly similar to the plaintiff’s trade mark MAX HOSPITAL. The defendant on the other hand contended that they had not used and not sought registration of MAX as a standalone mark but as part of a larger phrase.
The Court in the case of MAX Healthcare Institute Ltd. v. Sahrudya Health Care Pvt. Ltd. was of the view that the two marks were similar / deceptively similar and are likely to cause confusion, resulting in the hospital / healthcare services of the defendant being confused by public at large with that of the plaintiff.
It observed that the defendant did not take any objection to registration sought by the plaintiff of the label / device marks with the word MAX in relation to hospital / healthcare services in the last 16 years, and on the contrary applied for registration of label / device marks with the said word. The contention that test of infringement is not in the mark or its use but on paper, was also rejected.
Relying on precedents, the Court observed that the test for infringement of a label / word mark is the test of prominent word of the mark and that adoption of a prominent word in the label / device mark amounts to infringement.
It observed that the business of providing hospitals / healthcare services is such, where people / consumers pay least attention to the device or the label mark and read generally the first word of the label mark by which the hospital / healthcare services come to be known.
While retraining the defendant from using the said mark, the Court was of the view that once registration of trademark is valid throughout India, there is no ground to deny injunction noting that defendant has no intent to enter National Capital Region.