COVID-19 Trademark

Curious Case of Coronil: Madras HC Restrains Patanjali from Using Trademark ‘Coronil’ for Its Immunity Booster Tablet


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The Hon’ble Madras High Court has passed a detailed order on merits injuncting Patanjali from using the trademark ‘Coronil’. The order I daresay is one of the most elaborate and lucid orders in recent times from the High Court touching on the interpretation of the Trade Marks Act, especially Section 29(4). The breadth of resources relied upon, several of which appear to be the Judge’s own efforts definitely makes this judgment worthy of a patient read.  This remarkable judgment is also vindication of that elaborate hearings and orders can happen on video conferencing during these turbulent times. A game changer on many levels! Kudos to the counsels and the judge for making this happen.

Factual Background

The plaintiff is the registered proprietor of the marks “CORONIL-92 B” and “CORONIL-213 SPL” under Class 1 for industrial chemicals. The defendant launched the much vaunted CORONIL for curing coronavirus, but in the face of a battery of complaints including from the AYUSH Ministry, restated the same to be an immunity booster against coronavirus. The plaintiff sued relying on Section 29(4), stating that it had reputation in India and abroad. It also took an interesting argument that the use of the mark by the defendant would dilute the plaintiff’s reputation due to the perceived inefficacy of the product and the accompanying negative press. The defense was predictably on the grounds of the products being wholly different and there being no possibility of confusion. The Court has given numerous findings, which are quite frankly best read as extracts:

1. Findings on honesty of defendant’s adoption

“120. At any rate, at this stage of proceeding, the plaintiff will have to establish only a prima facie case. Whether the product of the defendants actually cures Coronavirus or does not cure Coronavirus is a matter of evidence and beyond the purview of this Court. But even if there is a slight doubt in the minds of the defendants themselves that their product will not cure Coronavirus, then I hold that the defendants have not shown due cause to still insist upon using the word ‘Coronil’.

Obviously it does not cure Coronavirus. 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’…

123. When this is the factual position and it had been made clear that the Coronil Tablet projected by the defendants is not a cure for Coronavirus. I am not able to find any link between the proposed tablet and the Coronavirus infection as such. Consequently, use of the very name ‘Coronil’ by the defendants is without any due cause and as a matter of fact, it is taking unfair advantage of the term ‘Coronil’ which is a registered trademark of the plaintiff. Taking such unfair advantage is specifically prohibited under Section 29(4)(c) of the Trade Marks Act, 1999.

Usage of the word ‘Coronil’ and usage of the common pictorial image of Coronavirus are to put it very mildly, misleading and cannot be permitted and is therefore prohibited.” (emphasis added)

2. Findings on Sec 29(4)

“103. This distinction has been kept in mind by the Parliament, while examining Section 29(4)(c) of the Trade Marks Act, 1999. Section 29 of the Trade Marks Act, 1999, gives protection against infringement of registered trademarks. The various circumstances are given. Section 29(1) of the Trade Marks Act, 1999, is when an identical mark is used for the class of goods, which are similar to the same class for which the registration has been effected. Under Section 29(4) of the Trade Marks Act, 1999, protection is granted even when the offending mark is used for a different class of goods. The only pre-condition is that the plaintiff’s mark should have a “reputation in India”.

In the instant case, the words specifically used are “reputation in India”. It means only “reputation in India” and does not mean “well known mark”…

106. It is thus seen that to maintain the sanctity of judicial discipline, the Court cannot by any stretch of imagination impute words not in the provision or in the statute. To reiterate the words are “reputation in India”, nothing more, nothing less.

We do not have a million of such heavy industries. If those few industries situated across the length and breadth of the country have come to know about the product of the plaintiff, then a reasonable conclusion can be drawn that the plaintiff has established a reputation in India among the industrial fraternity in which they operate and supply their chemical agent. It is also stated in the plaint, that the trademark of the plaintiff is known throughout the globe in the field of chemical cleaning. Therefore, I would hold that the plaintiff has made out a prima facie case of their mark ‘Coronil’ being a reputed mark in India in the particular field, where it is used.

Comment : This standard for Section 29(4) is a revelation, as it allows for marks of significant repute in the domestic market to seek injunction across classes without subjecting themselves to the onerous requirements of being declared a well-known mark under Section 2(zg). This given with the increasing emphasis of territoriality of trademark law as reflected in the Prius order of the Supreme Court (covered on the blog here), renders Section 2(zg) more or less obsolete. This requirement is a dynamic requirement requiring proof of reputation when staking a claim allowing a court to apply its mind, rather than pointing to a register to claim such repute under Section 2(zg). This certainly would signal a wave of infringement claims across classes. The standard of repute also explicitly does not require one to be known amongst the entire public but only amongst the relevant class of consumers, thereby bringing local players on par with international brands such as Whirlpool, Coca-Cola and Sony for the purpose of trademark jurisprudence. This is a rather perceivable enhancement of the strength of numerous trademarks in India.

Imposition of Cost

“128. Profiteering by tapping on panic is not a new phenomenon. Very early in law course, every student is introduced to Louisa. Carlill Vs. Carbolic Smoke Ball Co. (1893) 1 QB 256. Of course it is on interpretation of a contract, binding unilateral offer and its acceptance. But, Lord Lindley, had also succicently put the vagaries in an advertisement for treatment of a epidemic flu in the following words:…

130. In the instant case, it is debatable whether the defendants can be said to be indulging in honest practise in projecting their tablets as a cure for Coronavirus.

It is also detrimental to the repute of the registered trademark Coronil of the plaintiff since, there is a prima facie possibility that the  general public might question whether the trademark ‘Coronil’ of the plaintiff would also not prevent corrosion by drawing the analogy of the ‘Coronil’ of the defendants, which does not cure Coronavirus…

140. The defendants have invited this litigation on themselves. 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. They cannot plead ignorance and innocence and seek indulgence from this Court. Either way, indulgence is refused.

Insofar as costs are concerned, the defendants have repeatedly projected that they are 10,000 Crores company. However, they are still chasing further profits by exploiting the fear and panic among the general public by projecting a cure for the Coronavirus, when actually their ‘Coronil Tablet’ is not a cure but rather an immunity booster for cough, cold and fever. The defendants must realize that there are organisations which are helping the people in this critical period without seeking recognition and it would only be appropriate that they are made to pay costs to them.

Accordingly, I hold that, costs of Rs.5,00,000/- (Rupees Five Lakhs only) is to be paid jointly by the defendants to the Dean, Adyar Cancer Institute (WIA), East Canal Bank Road, Adyar, Chennai, and further Rs.5,00,000/- (Rupees Five Lakhs only) is to be paid jointly by the defendants to the Dean, Government Yoga and Naturopathy Medical College & Hospital, Arumbakkam, Chennai – 106. In both the organisations, treatments are afforded free of cost without any claim to either trademark, trade name, patent or design, but only with service as a moto.”

Comments and Conclusion

The above portion is obviously quite damning on the defendant, with repercussions that will inevitably reverberate beyond trademark law. This does however, impose a duty of care on defendants to query on registrations prior to launch. This judgment also reiterates the healthy trend of our courts that “big fish cannot eat small fish”. The defendant rather repeatedly pointed out that “plaintiff’s mark is known only to a very small number in the industrial fraternity and that the plaintiff also has a very small market” and highlighted their relative might of being a 10,000 crore company. This has been unequivocally rejected and the reputation of the plaintiff has been identified and protected, even against a much larger player. The level playing field that this creates certainly brings a refreshing tinge of equity into trademark law.

Please click here to view our previous posts related to IP and Covid-19.

Arun C Mohan

Arun C Mohan

Arun is a graduate of the London School of Economics and has experience in working on intellectual property and commercial matters, in India and internationally. He has appeared in various landmark litigation including the Novartis and TVS/Bajaj cases. He was a consulting editor of the Manupatra Intellectual Property Reports (MIPR), and has lectured in various colleges with an emphasis on intellectual property litigation.

3 comments.

  1. AvatarIP Ji

    90% of this so called article is the judgement, and the so called “comments” are pedestrian at best. In fact, the author doesn’t even take the trouble of leaving a comment for 1/3rd of the points he’s written about. A look at how the judge tackled 29(4) and its ingredients, such as detriment, undue/unfair advantage, and reputation (The analysis is downright disappointing . The judgement reads that although the plaintiff has only 30 clients, and has produced no advertising material, some of those 30 clients are big clients, and since India only has some big companies, the Plaintiff has reputation. What sort of analysis on reputation is that? )

    Anyway, instead of articles like these where the author merely reproduces the judgement, and not even the necessary parts of the judgement (like analysis on reputation/ detriment/unfair advantage etc), the entire article could have been summed up as follows:

    Read the judgement.

    Reply
    1. Arun MohanArun Mohan

      Hi!
      I do agree, the judgement is definitely worth a read! As for your criticism that ” What sort of analysis on reputation is that? ” on the reputation, I personally think its a fair interpretation on the facts. Given the narrow class of customers, repute amongst the big players certainly demonstrates reputation, albeit not in the sense of say a soap or chips. The interpretation in the order is quite indepth running over a 100 pages, and I have extracted bits that I felt are relevant. Please do post if if you find any other interesting bit!

      Reply
  2. AvatarIP Ji

    Just to understand, and without looking at this through the lens of a small fish big fish situation, a consideration alien to a commercial dispute, you think that his analysis on reputation is solid? So tomorrow if there is a dolphin cleaning agency, which cleans the dolphin’s fins, and it has been called Dolphina, with 80% market share, and tomorrow there is a new disease that scientists call Dolphi , that earlier trademark, whose total knowledge would probably be shared by say 300 people all over the world, can be used to upset a registration. We are talking about a level of reputation that has to be pitched quite high for a dilution claim!

    Please understand the origin of dilution. You have the US where only famous marks are given dilution protection. You have UK where the language is almost identical here and there is a very high level of reputation that needs to be proved for it, so please understand that dilution being an exception to confusion because it is protection across classes is a much higher threshold. I googled the word Coronil and didn’t even find 1 result of this alleged Plaintiff. Where do they claim any reputation from?

    Protection across classes is a very high power given and there must be some proof of some sort of association/linkage by a consumer who sees the junior mark and thinks/recalls the senior mark. If no one even knows the senior mark where is the question of linkage? Principles of dilution have been tarnished here, including the principle of tarnishment itself.

    Reply

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