“Apollo” A Well Known Mark In Pharma Industry: Madras High Court Injuncts Bihar Hospital From Using “New Appolo Hospital” Mark

Justice Abdul Quddhose was hearing a plea by Apollo Hospitals Enterprises Ltd to declare their “Apollo” mark as a well-known trade mark and to injunct the defendant, DR Dheeraj Saurabh, proprietor of New Appolo Hospital in Bihar from using their marks.

“The name 'Appolo' is perceived to be synonymous to the plaintiff and the plaintiff is therefore entitled to the highest level of protection as the public at large associate the name 'Apollo' only with the plaintiff insofar as health and pharmaceutical segments are concerned. Therefore, the plaintiff's trademark falls within the definition of well-known mark within the meaning of Section 2(1)(zg) of the Act and deserves protection, that is conferred to well-known marks under the Trade Marks Act,” the court observed.

Apollo informed the court that in July 2022, it came to know that the defendant was blatantly using a deceptively similar mark for its hospital business. It was further informed that though a cease and desist notice was sent calling upon the defendant to not use the mark, the defendant refused to accept guilt or to stop using the offending trademark. Highlighting the various quality services provided by Apollo, it was contended that they have a right over the artistic work in the label having obtained registration in the year 2008.

After looking into the documents produced by Apollo showing the registration of the mark under different classes, the court was satisfied that Apollo had proprietary rights over the trademark “Apollo” and its variants.

Recognition As A Well-Known Mark By The High Court

With respect to the grant of recognition as well well-known mark, the court observed that after amendment in 2018, the Trade Marks Rules empowered the trademark registry to grant recognition of a trademark as a well-known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act 1999. However, the court noted that the amendment had not taken away the court’s power to grant such recognition. The court thus observed that the court and the registry had concurrent powers to recognise a mark as a well-known trademark.

The court noted that for adjudicating whether a trademark is a well-known mark, ten factors had to be considered.

(i) The extent of knowledge of the mark vis-à-vis the relevant public segment;

(ii) Duration of use;

(iii) Extent of product and services to which the mark is being used;

(iv) Method, frequency and duration of advertising and promotion of the mark;

(v) Geographical extent of trading area where the mark is being used

(vi) Registration of the mark

(vii) Volume of goods and services being sold under the mark;

(viii) Nature and extent of use of same or similar marks by other parties;

(ix) Extent to which rights claimed in the mark have been successfully enforced; and

(x) Actual number of consumers consuming goods or availing services under the brand.

In the present case, the court observed that Apollo had satisfied all the tests for granting recognition as a well-known mark and thus entitled to the highest level of protection.

The court also opined that the defendants were using the mark in the same area of business only with a dishonest intention of making undue profits and if they were allowed to use the name ‘New Appolo’, it will cause confusion in the minds of public who would believe it to be hospital run by the plaintiff. Thus, the court observed that the defendant had not only infringed the plaintiff’s trademark but also committed an act of passing off. Thus, the court permanently injuncted the defendant from using the registered trademark of Apollo.

Counsel for the Plaintiff: Mr.H..Siddarth for M/s.Cibi vishnu & P.Giridharan

Citation: 2023 LiveLaw (Mad) 360

Case Title: Apollo Hospitals Enterprises Ltd v Dr Dheeraj Saurabh

Case No: C.S.(Comm.Div.) No.55 of 2023