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Court held that the name 'Appolo' is perceived to be synonymous to Apollo and therefore it was entitled to the highest level of protection
Granting relief to Apollo Hospitals Enterprises Ltd, Chennai in a trademark infringement suit against the use of “New Appolo Hospital” by a Doctor in Bihar, the Madras High Court recently recognized the trademark "Apollo" as a well-known mark in the healthcare and pharmaceutical industry.
The bench of Justice Abdul Quddhose also acknowledged the entitlement of the Apollo group to the highest level of protection for its trademark.
The bench said, "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".
While dealing with the plea filed by Apollo Hospitals Enterprises Ltd, Chennai (plaintiff) seeking permanent injunction against defendant Dr.Dheeraj Saurabh, Proprietor of New Appolo Hospital, Motihari, Bihar, from diluting the distinctive character of the plaintiff’s trademarks, court affirmed Apollo's proprietary rights over the trademarks 'Apollo', 'Apollo Hospitals', 'Apollo Clinic', and 'Apollo Diagnostic' and its variants.
Regarding the issue as to whether the trademark 'Apollo' falls within the definition of a 'Well-Known mark' within the meaning of Section 2(1)(zg) of the Trade Marks Act, court observed that Apollo satisfied all criteria for recognition as a well-known mark.
Court outlined ten factors to adjudicate whether a trademark qualifies as a well-known mark, including the extent of public knowledge, duration of use, advertising methods, geographical extent, and enforcement history and held that since Apollo fulfilled all these, it is a well-known mark, deserving the highest level of protection.
Through the present petition, the court was informed that in July 2022, Apollo Hospitals Enterprises Ltd discovered the defendant's unauthorized use of a deceptively similar mark for its hospital business. Despite a cease and desist notice, the defendant refused to halt the use of the offending trademark. Apollo argued that it holds proprietary rights over the trademark "Apollo" and its variants, having obtained registration in 2008.
Ruling in favour of Apollo, court noted that the defendant's use of a similar mark with a dishonest intention for undue profits constituted both trademark infringement and passing off.
Consequently, court permanently enjoined the defendant from using Apollo's registered trademark, citing the potential confusion it could cause in the minds of the public, who may mistake the defendant's hospital for one run by the plaintiff.
Case Title: Apollo Hospitals Enterprises Ltd v Dr Dheeraj Saurabh
Court held that Apollo trademark fell within the definition of well-known mark within the meaning of Section 2(1)(zg) of the Trade Marks Ac and deserved protection, that is conferred to well-known marks under the Act.
Court held that the documentary evidence placed on record before it clearly established that Apollo Hospitals Enterprises Ltd, Chennai had the proprietary right over the trademarks 'Apollo', 'Apollo Hospitals', 'Apollo Clinic', and 'Apollo Diagnostic' and its variants.
Regarding the issue as to whether the trademark 'Apollo' falls within the definition of Well-Known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, court observed that Section 11(6) lays down the conditions/factors which are taken into consideration for grant of a well-known trademark. Which include- (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.
Justice Abdul Quddhose, presiding over a plea by Apollo Hospitals Enterprises Ltd, acknowledged the plaintiff's entitlement to the highest level of protection. The court declared Apollo's "Apollo mark" a well-known trademark, and it issued a permanent injunction against DR Dheeraj Saurabh, proprietor of New Apollo Hospital in Bihar, restraining him from using similar marks.
Apollo Hospitals Enterprises Ltd informed the court that in July 2022, it discovered the defendant's unauthorized use of a deceptively similar mark for its hospital business. Despite a cease and desist notice, the defendant refused to halt the use of the offending trademark. Apollo argued that it holds proprietary rights over the trademark "Apollo" and its variants, having obtained registration in 2008.
The court, after reviewing documents demonstrating Apollo's registration of the mark under various classes, affirmed Apollo's proprietary rights over the trademark.
Regarding the grant of recognition as a well-known mark, the court emphasized that both the court and the trademark registry have concurrent powers. It outlined ten factors to adjudicate whether a trademark qualifies as a well-known mark, including the extent of public knowledge, duration of use, advertising methods, geographical extent, and enforcement history.
In this case, the court concluded that Apollo satisfied all criteria for recognition as a well-known mark, deserving the highest level of protection. The court further noted that the defendant's use of a similar mark with a dishonest intention for undue profits constituted both trademark infringement and passing off.
Consequently, the court permanently enjoined the defendant from using Apollo's registered trademark, citing the potential confusion it could cause in the minds of the public, who may mistake the defendant's hospital for one run by the plaintiff.
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