Recently, a trademark legal dispute ensued between two companies for a showdown before the Hon’ble Madras High Court[i]. The suit was filed by M/s. Arudra Engineering Private Limited, subsequently, amended to M/s. Arudra Engineers Private Limited, Chennai (“Plaintiff”), is in the business of chemical cleaning and manufacturing of Material Handling Systems and Polymeric Expoxies to sanitize and clean heavy industrial machinery and containment units at factories with minimal corrosion thus reducing the overall depreciation in the value of the units, alleging trademark infringement against M/s. Patanjali Ayurved Limited, New Delhi, a consumer goods company, and subsequently, by amendment also against Divya Yog Mandir Trust, Haridwar, Uttarakhand (“Defendants”).
The plaintiff is the registered proprietor of the marks “CORONIL-92 B” and “CORONIL-213 SPL” and has been in use since 14.06.1993 for “Acid inhibitor for industrial cleaning, chemical preparations for industrial use” under Class 1 bearing Registration Nos. 599279 and 599281, respectively, with valid and subsisting registrations up to 14th June 2027. The defendant launched the much talked about ‘CORONIL’ tablets for curing coronavirus, however, following an uproar created in the minds of the people that caused an unsettling commotion in the country concerning the mark as it was launched prematurely claiming to provide an absolute cure without conducting the requisite human trials in the first place, relaunched it as an immunity booster to prevent cough and cold.
It is pertinent to note here that that the application for registration of the trademark “Coronil Tablet” bearing no. 4532424 had been filed on a proposed to be used basis on 16/06/2020 under Class 5 in the name of Divya Yog Mandir Trust for “ayurvedic medicines and herbal preparations, pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; capsules for pharmaceutical purposes, syrups for pharmaceutical purposes, tablets, sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; rubbing alcohol, alcohol-based antibacterial skin sanitizer gels, germicidal preparations (other than soap) & washes (sterilizing); disinfectants and antiseptics, disinfectants for household use, air sanitizers, sanitizing wash for fruit and vegetables, sanitizers for household use, alcohol-based antibacterial preparations for destroying vermin; pesticides insecticides, herbicides, fungicides, mosquito repellents & mosquito repellent coils” and the current status as on date is “Examination Report Issued” and an objection has been raised by the Registrar under Section 11 (1) of the Trademarks Act, 1999. It is highly possible that the marks cited in the Examination Report can be overcome without much of a fight and the mark “Coronil Tablet” may be on its way to be advertised soon. However, any likelihood of opposition cannot be ruled out, given the mark “Coronil” has become generic with time and is claimed by an umpteen number of companies in the market.
A single-judge bench of Justice C.V. Karthikeyan, upheld its initial interim injunction vide order dated 17.07.2020, which was already granted in favour of the Plaintiff and thus, made it further absolute restraining the Defendants from using an identical mark “Coronil” and imposed costs to the tune of Rupees Ten Lac to be jointly paid by the Defendants in its recent judgment dated 06.08.2020.
Key observations of the Court (Single Bench judgment dated 06.08.2020)
- Prior Registration of Plaintiff’s trademark, even if it was for a different class of goods – the only pre-condition being that the plaintiff’s mark should have a reputation in India;
- The similarity between the significant component, i.e the unique and distinctive portions of the marks, i.e. ‘Coronil’, is quite obvious;
- Plaintiff’s trademark has gained a reputation in India concerning anti-corrosion chemical agents and as a matter of fact, the defendants are taking unfair advantage of the term ‘Coronil’ as per the provisions laid out under Section 29(4)(c) of the Trademarks Act, 1999;
- Usage of the mark ‘Coronil’ by the Defendants was without due cause – “Permission has not been granted to the defendants to market the product and hold out that it cures Coronavirus. When it does not cure Coronavirus, then the defendants could have used any name to signify their product as an immunity booster and market the same to the general public rather than play upon the fear and panic among the public by introducing a product ostensibly to cure Coronavirus, when as a fact, it does not and later stating it is an immunity booster. The stand of the defendants does not augur well with their statement that they have a due cause. They do not have a due cause. It must be kept in mind, that there is no cure for Coronavirus anywhere in the world as on date. People are dying. In these tragic times, the defendants seek to make money, money, money. They seek to exploit the fear among the people by projecting that they could cure Coronavirus. There is no cause much less due cause, and much less just cause to permit the defendants from using the word ‘Coronil’.”
- Dishonest Adoption by the defendants and have caused substantial damage to the reputation and is detrimental to the distinctive character of the mark of the plaintiff;
- Possibility of confusion exists since both the marks are exactly the same;
- Possibility of dilution exists since the defendants have not shown due cause in naming their product ‘Coronil’, when in fact their product does not cure Coronavirus;
- Defendants have not established that their mark ‘Coronil Tablet’ is registered;
- Both the words ‘Coronil’ are the same and identical; and
- Emphasis on Due-Diligence – “A simple check with the Trade Marks Registry would have revealed that ‘Coronil’ is a registered trademark. If they had, and had still, with audacity used the name ‘Coronil’, then they deserve no consideration at all. They cannot assume they can bulldoze their way and infringe a registered trademark. They must realise there is no equity in trade and commerce. If they had not done a check with the Registry, then they are at fault.”
The Madras High Court has done a remarkable job of assembling a compendium of existing precedents on the findings on Section 11(6) and Section 29 (4) of the Trademarks Act, 1999, and has paved a roadmap with increased awareness and understanding of trademark jurisprudence and in turn, striking the right balance in examining the issue at hand which was much needed to reignite the trademark law consciousness in the country in these troubling times. In summary, the judgment is a notable addition to the domain of trademark law.
However, shortly after this judgment, the Defendants approached the Division Bench of the Hon’ble Madras High Court comprising of Justices R Subbiah and C Saravanan and obtained a stay – arguing that ‘Coronil’ is a generic term derived from coronavirus, is being used by nearly 191 companies (six of them are engaged in manufacturing tablets) and there exists no likelihood of confusion between the products sold by them and the goods sold by the plaintiffs for heavy machinery companies along with a host of other arguments advanced.
Further, the Supreme Court vide its order dated 27.08.2020 refused to entertain a plea challenging the Madras High Court decision to stay a single Judge order, which had restrained Patanjali Ayurved Ltd from using the trademark ‘Coronil’. The Chief Justice, SA Bobde remarked “if we prevent the use of the word “Coronil” during the pandemic on the ground that there is some pesticide on its name, it will be terrible for the first product.” The matter is ripe for final arguments before the Madras High Court.
An excellent PR Strategy was adopted by Patanjali Ayurved Ltd. in grabbing the media headlines by resorting to sensational claims of curing COVID-19. It has been already touted to be one of the few favourite Indian companies identified by the current dispensation and the push of the ‘Atmanirbhar Bharat’ campaign is here to stay leading to its high rate of achieving fruition in the days ahead. The clinical masterstroke to switch your claims overnight from presenting a complete cure to being a mere immunity booster after undergoing dodgy clinical trials and the inability to get a license for treating COVID-19. Well, Hold Press Conferences and be on Prime Time – Yoga Guru selling you a cure in these troubling times will catch eye-balls. People will tend to buy and vision it as the next best thing available in the market to tackle the deadly virus. So why not try it! Let’s see how it works. Indulge in opportunistic trademark filings. Target a ‘small fish’ already using a pre-existing mark with an identical/similar term ‘Coronil’ with prior use for unrelated goods. And, finally with the hope of achieving the pedestal to become the No. 1 #Best Seller on Amazon under the category of ‘Cough & Cold’ selling it as a Patanjali Corona Kit consisting of ‘Coronil’ Tablet among two other unrelated items – obviously with the best cure, right? Sold out, by the way. Hurry!
[i] Arudra Engineers Private Limited and Ors. vs. Patanjali Ayurved Limited and Ors. (O.A. No. 258 of 2020 in C.S. No. 163 of 2020, Madras High Court)
Yashvardhan Rana is an Intellectual Property Lawyer with a particular focus on IP prosecution practice encompassing a broad range of areas including but not limited to – from registrability analysis and risk management to provide legal opinions on trademark clearance and protection strategy for the availability of use, adoption, and registrability of trademarks to be launched by individuals, small businesses, Fortune 500 companies as well as top FMCGs in India and large corporations, including assisting them with filing new trademark and copyright applications and maintaining their trademark portfolios worldwide.
He is based out of New Delhi and is an active member of the Bar Council of Delhi, Delhi High Court Bar Association, APAA, AIPPI, INTA, LAWASIA, IBA, and FICCI IP Forum. In January 2020 he was appointed as an Editor, The Trade Mark Reporter, INTA, and in November 2019, he was the recipient of the Top 50 Emerging IP Professional in the world award – The IPR Gorilla, 2nd Edition held in Dubai. Recently, he has been inducted as an ‘esteemed member’ of the FICCI IP Forum for IP Professionals to address the existing and evolving IPR issues in India along with stalwarts from the legal industry. He has also authored several articles on Intellectual Property Law and Practice which are published in leading blogs, websites, journals, and magazines.
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