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+ CS(COMM) NO.866/2016
2. The suit came up first before this Court on 20 th July, 2016 when the
defendant, being on caveat, appeared. The plaintiff on that date gave up the
relief claimed in the suit for passing off and confined the suit to the relief of
infringement of trade mark. The suit was entertained and summons thereof
CS(COMM) No.866/2016 Page 1 of 26
and notice of the application for interim relief issued and the statement of
the defendant, that it did not propose to launch any fresh operations under
the mark ‘MAXCURE’ or ‘MAXKURE’, was recorded and the defendant
ordered to be bound therewith.
4. It is inter alia the case of the plaintiff, that (i) the trade mark ‘MAX’
has been owned and used by Max Financial Services Ltd. (MFSL), MFSL
group of companies, Max India and Max India group of companies, in
respect of goods and services falling under various categories, and has been
in use not just as a trade mark but also as a trade name for various business
ventures; mention is made of Max Life Insurance Co. Ltd., Max Bupa
Health Insurance Co. Ltd., Max Healthcare Institute Ltd. i.e. the plaintiff,
Max Speciality Films Ltd., Hutchison Max Telecom Pvt. Ltd., Comsat Max
Pvt. Ltd., Max – GB Pvt. Ltd., Max Atotech Pvt. Ltd. and Avnet Max Pvt.
Ltd.; (ii) the plaintiff is a joint venture between Max India Ltd. and Life
Healthcare group, which is a premier South African healthcare service
provider; (iii) the existing healthcare business of the plaintiff was
transferred by MFSL to Max India in pursuance of a Scheme of Demerger;
(iv) the plaintiff started its operations in India in 2000 as a division of
CS(COMM) No.866/2016 Page 2 of 26
MFSL and since June, 2002, the plaintiff was formed as an independent
company; (v) since the year 2000, the plaintiff has opened nearly fourteen
hospitals / healthcare centres in Delhi, Gurgaon, Mohali, Bathinda,
Dehradun and Greater Noida; (vi) the plaintiff also organizes regular health
camps and health awareness / check up programmes in various parts of the
country and abroad; (vii) the word ‘MAX’ has come to be closely
associated with the plaintiff and the plaintiff has various registrations of
MAX HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR.
MAX CLINIC and MAX HEALTHSTAFF, all under Class 42 and dated
between 2003-2005; (viii) the plaintiff, just prior to the institution of the
suit, was made aware of the use of the mark / name MAXCURE
HOSPITAL / MAXKURE by the defendant and on making investigations
learnt that the defendant has also adopted MAXCURE MEDICITI, which is
deceptively similar to plaintiff’s trade mark; (ix) the defendant is providing
full fledged healthcare services; (x) it was further learnt that the marks
MAXCURE HOSPITAL / MAXKURE and MAXCURE MEDICITI were
recently adopted by the defendant and the defendant were earlier running
the said hospitals / health facilities under the name of Sunshine Hospital
and Mediciti Hospitals; (xi) the plaintiff has also learnt of the applications
filed by the defendant in June – July, 2015 for registration of MAXCURE /
MAXKURE; (xii) the defendant has also registered a domain name
www.maxcurehospitals.com which is similar to the plaintiff’s trade mark
and the said domain name has also been registered only on 29 th May, 2015;
(xiii) adoption by the defendant of MAXCURE HOSPITAL / MAXKURE
and MAXCURE MEDICITI is dishonest; (xiv) the defendant in response to
the cease and desist notice refused to comply, claiming the mark to be
CS(COMM) No.866/2016 Page 3 of 26
different and also suggested amicable settlement; and, (xv) attempts of the
plaintiff at settlement did not bear fruit.
5. The defendant contested the suit pleading, that (a) as per the
averments in the plaint, MAX INDIA is the owner of the goodwill in the
trade mark and the suit is bad for non-joinder of MAX INDIA; (b) the
defendant was incorporated in Hyderabad, Telangana, in the year 2011 and
is a pioneer in healthcare services in South India; (c) within a short span of
five years, the defendant’s operations have grown into six hospitals spread
throughout Telangana and part of Andhra Pradesh; (d) the defendant has
invested considerable sum in building the brand MAXCURE / MAXKURE
and MAXCURE MEDICITI; (e) there are significant difference between
the trade mark of the plaintiff and the defendant; (f) the defendant has not
used and not sought registration of MAX as a standalone mark but as part
of a larger phrase and have not sought protection over the over the word
‘MAX’ itself; the defendant’s marks are MAXCURE and MAXKURE; (g)
visually also, the marks of the defendant are distinct from that of the
plaintiff; the defendants’ marks show a stylized ‘wing’ logo in a
combination of red and maroon, below the words MAXCURE or
MAXKURE, again in a combination of red and maroon; on the other hand,
the plaintiff’s mark uses a light turquoise medical cross with two human
hands reaching towards the center of the cross next to the words MAX
HEALTHCARE, MAX HOSPITAL, MAX MEDCENTRE, DR. MAX
CLINIC, MAX HEALTHSTAFF, all either completely in navy blue or in a
combination of navy blue and orange; (h) all the marks of the plaintiff are
label marks; (i) trade mark registration of a label mark only grants rights
6. The plaintiff has filed a replication inter alia pleading that (i) the
plaintiff’s hospitals are providing medical facilities not only to patients
from the entire country but also from abroad; (ii) the defendant is
misconstruing the contents of the plaint to plead that the plaintiff is only the
owner of the trade mark and not of the goodwill attached thereto; (iii)
though the defendant on 20th July, 2016 stated that it did not propose to
launch any fresh operations under the mark MAXCURE or MAXKURE but
in the written statement has pleaded in contravention thereof; (iv) the
plaintiff has lodged opposition to the applications of the defendant for
registration of trade marks; (v) there is no difference between the trade
mark of the plaintiff and the defendant; the essential feature of the trade
marks is common; (vi) the general public is likely to associate the hospitals
and services of the defendant as that of the plaintiff; (vii) the adoption and
usage of the word / mark MAX by the promoters of the plaintiff itself took
more than 35 years and has fame and reputation in various areas of business
and commerce including healthcare; (viii) the defendant is estopped from
pleading non-registrability of the mark of the plaintiff, having itself applied
for registration; (ix) the other entities who have applied for or obtained
registration of marks are either in other fields of activity or their
applications have been opposed by the plaintiff and several of them have
already abandoned their applications; and, (x) even otherwise, mere
presence of third party marks on the register does not show actual usage.
8. The senior counsel for the defendant has argued that, (I) the plaintiff
has concealed that the word MAX per se has not been registered in favour
of the plaintiff and that the application of the plaintiff for registration
thereof is pending; (II) the plaintiff has not filed the legal documents of
registration of its mark and only from such legal documents it can be
known whether there is any disclaimer; (III) all registrations are of a device
/ label mark; (IV) though the plaintiff may perhaps have a case for passing
off, but certainly not of infringement; (V) MAX is an abbreviation of
‘maximum’, which is an adjective and not registrable; (VI) others in
Hyderabad have been using the word MAX since prior to the year 2000;
(VII) the label mark of the defendant is totally different from the label mark
of the plaintiff; (VIII) the plaintiff has not claimed the relief of infringement
of MAX HEALTHCARE and claims the reliefs only of MAX, but of which
the plaintiff does not hold any registration; (IX) the plaintiff thus does not
have any prima facie case; (X) what has to be compared are two labels and
not the words on the label; (XI) the test of infringement is not in the usage
of the mark but on paper; reference is made to Vardhman Buildtech Pvt.
Ltd. Vs. Vardhman Properties Ltd. 233 (2016) DLT 25 (DB) to contend
that the plaintiff therein holding registration of a label mark VARDHMAN
PLAZA was refused interim injunction against those using VARDHMAN
(ii) Without prejudice to Issue (i), if the suit filed seeks relief in
respect of a word mark, whether it can be maintainable if the
alleged registered proprietor of the word mark is not a party to
the suit, in terms of Sections 52 and 53 of the Trade Marks
Act, 1999?
(XXII) as per the Information Memorandum of Max India Pvt. Ltd., the
plaintiff is merely a permitted user of MAX and not entitled to sue for
infringement thereof; (XXIII) the plaintiff is proprietor of the device / label
mark only and if makes out a case of infringement thereof, can maintain the
suit; reliance is placed on P.K. Sen Vs. Exxon Mobile Corporation 236
(2017) DLT 333 (DB) but which is on the aspect of territorial jurisdiction;
(XXIV) in paragraph 10 of the judgment dated 29 th November, 2017 of
9. The senior counsel for the plaintiff has contended that (a) the
plaintiff, since the institution of the suit, has also obtained other
registrations, registration whereof was pending at the time of institution of
the suit; (b) the plaintiff is admittedly prior user by fifteen years; (c) the
change effected by the defendant from Sunshine to MAX shows the intent
of the defendant to cash on the goodwill of the plaintiff; (d) MAX is a
(ii) Parle Products (P) Ltd. Vs. J.P. & Co, Mysore AIR 1972 SC
1359, holding that marks are remembered rather by general
impressions or by some significant detail, than by any
photographic recollection of the whole and that variations in
detail might be supposed by customers who are already
acquainted with the mark, to have been made by the owners of
the trade mark for reasons of their own;
(v) Dabur India Ltd. Vs. Real Drinks Pvt. Ltd. 2014 (57) PTC
213 (Del), where interim injunction was granted to plaintiff
holding registration of Real Pineapple Juice Carton against
defendant using the word ‘Real’;
(vi) Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd.
2014 (58) PTC 136 (Del), to contend that MAX is not an
abbreviation of ‘maximum’;
and, (f) in Vardhman Buildtech Pvt. Ltd. supra, VARDHMAN was held to
be not an essential feature of the mark.
10. The senior counsel for the defendant, in sur-rejoinder contended that
(i) the suit has been confined to the ground of infringement only and the
judgments cited by the senior counsel for the plaintiff are relating to the
CS(COMM) NO.866/2016
15. List on 13th August, 2019 for consideration, whether the suit is
required to be put to trial.