Delhi High Court
Metro Institutes Of Medical ... vs Dr Fahad Islahi & Anr on 21 December, 2012
Author: V. K. Jain
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 21.12.2012
+ CS(OS) 3289/2012
METRO INSTITUTES OF MEDICAL SCIENCES P LTD
..... Plaintiff
Through: Mr Hemant Singh, Ms Mamta Jha,
Mr Sachin Gupta, Mr Shashi Ojha and
Mr Siddhant Asthana, Advs.
versus
DR FAHAD ISLAHI & ANR ..... Defendants
Through: Ms Prathiba M. Singh with Mr Varun Kumar,
Advs.
CORAM:
HON'BLE MR. JUSTICE V.K.JAIN
JUDGMENT
V.K.JAIN, J. (ORAL)
IAs No.20886/2012 (O. 39. R. 1&2 CPC) and 22389/2012 (O 39 R. 4 CPC)
1. The plaintiff is the registered proprietor of the trademark METRO in class 42
in respect of Medical Services: Hospital, Heart Institute, Pharmacy, Health Care,
Specialty Hospital, Research Institute and Medical Sciences since 20.04.2007.
While seeking registration of the aforesaid mark, the plaintiff claimed user since
April, 1997. The second registration held by the plaintiff is also in class 42 and the
trademark is „Metro Heart Institute‟ registered on 20.04.2007, again claiming user
since 02.04.1997. The third trademark registered in favour of the plaintiff-
company is Metro Hospital again in Class 42 in respect of Medical Services:
Hospital, Heart Institute, Pharmacy, Health Care, Specialty Hospital, Research
Institute and Medical Sciences. At the time of this registration also, the plaintiff
claimed user since 02.04.1997, however, the registration was restricted by the
Trademark Registry to the services in Union Territory of Delhi.
2. There are large number of documents filed by the plaintiff, evidencing use of
the name METRO by it in respect of hospital services. It was published in Times of
India dated 30.05.1997, that a patient having two holes in his heart had undergone
surgery at Noida hospital of the plaintiff. It was reported in Hindu dated
19.08.1997 that a gold stent had been implanted in Metro Hospital, headed by Dr
Purshottam Lal, who is its Chief Cardiologist and director of Metro Hospital and
Heart Institute. There are various other articles published in newspapers from time
to time highlighting the surgery and procedure carried out in the hospital of the
plaintiff.
Vide order dated 10.06.1997, Chief Commissioner of Income Tax granted
exemption to Metro Hospital and Heart Institute of the plaintiff at Noida. Vide
letter dated 19.12.1997, Paradeep Phosphates Ltd. empanelled Metro Hospital and
Heart Institute. Similar empanelment was given by Punjab & Sind Bank on
18.12.1997, by Canara Bank on 17.12.1997 by NBCC on 22.09.1997, by Indian Oil
Corporation on 1.12.1998, by Airports Authority of India on 28.05.1998 and by
Uttar Pradesh Financial Corporation on 10.12.1998.
3. The following are the revenues earned and the advertising and promotional
expenses incurred by the plaintiff:-
Financial Year Revenues Advertising &
Promotional
Expenses
1997-1998 5,40,06,654 3,10,184
1998-1999 9,34,08,539 7,35,961
1999-2000 12,67,70,802 7,86,057
2000-2001 15,95,14,074 10,61,666
2001-2002 22,8188,894, 13,49,147
2002-2003 36,17,85,901 28,70,757
2003-2004 50,69,97,749 33,65,565
2004-2005 73,94,01,136 36,92,905
2005-2006 87,34,97,248 19,43,528
2006-2007 105,36,61,287 36,14,840
2007-2008 125,01,75,705 45,57,393
2008-2009 162,06,19,360 77,71,328
2009-2010 156,88,38,544 62,91,018
2010-2011 151,71,29,084 63,77,424
2011-2012 181,44,84,017 60,43,959
TOTAL 1196,84,78,994 5,07,71,732
These revenues were earned from Hospital Services being run under the
name METRO.
4. The defendants started using a clinic under the name METRO HEALTH
CLINIC at Lucknow sometime in the year 2001 and they claim to be running a
hospital under the name METRO HOSPITAL & TRAUMA CENTRE at Lucknow
in the year 2005. The learned counsel for the defendants states that the first
document using the name METRO HOSPITAL which the defendant has been able
to locate is a receipt dated 11.07.2006 issued by Nagar Nigam, Lucknow though
she has filed documents evidencing use of the name METRO CLINIC and
METRO HEALTH CENTRE from 2001 onwards.
5. Since the plaintiff has been able to establish that it is the registered
proprietor of the trademark METRO in respect of hospital medical services,
hospital heart institute, pharmacy, etc. the defendants have no legal right to use the
said name unless it can show that the trademark/trade name METRO was being
used by them since prior to 02.04.1997. This is not the case of the defendants‟ that
they have been using the trademark/trade name METRO since prior to 02.04.1997.
According to them, they adopted and started using the name METRO for the first
time in the year 2001. Though the name being used by the defendant is METRO
HOSPITAL & TRAUMA CENTRE, that would really make no difference because
it is the word METRO which constitutes the core and most essential part of the
trademark/trade name being used by the defendant and that exactly is the registered
trademark of the plaintiff-company. The defendant has lifted and is using the
whole of the registered trademark of the plaintiff-company and that too in respect
of the same services which are covered by the said registered trademark.
6. The learned counsel for the defendants has pointed out that there are number
of other hospitals in the country which have obtained registrations of various
trademarks, which contain the word METRO as a part of the trademark.
Admittedly, the defendants do not held any registration of the trademark/trade
name being used by them. It would not be really necessary to take any view in
respect of legality or otherwise of such names being used by other persons since
they are not in challenge in the present suit. But, mere use of the trademarks,
including the word METRO as its part by several other persons does not give any
liberty to the defendant to infringe the registered trademark of the plaintiff in
respect of the same services which the plaintiff-company is providing under the
said mark. Prima facie, there may be a number of reasons for the plaintiff not
taking legal action against the user of those marks. Their user may be prior to that
of the plaintiff or may not have been in its knowledge. Yet another possibility in
this regard is that the plaintiff may not have felt any threat to its business from
them. The plaintiff cannot be denied injunction merely because there are other
hospitals using the word „METRO‟ as a part of their registered trademark. I am
satisfied that use of the word METRO as a part of the trade name and trade mark
constitutes infringement of registered trademark METRO of the plaintiff.
7. The learned counsel for the defendants submits that since the business of the
defendant is confined to Lucknow and it does not propose to enter any city, where
the plaintiff has a presence and the defendant would need substantial time even if it
were to make some changes in the present name being used by it, suitable time may
be granted for this purpose and in the meantime, the defendants may be permitted
to continue with the existing name. I, however, find no justification for granting
the permission sought by the learned counsel for the defendants. The case of the
plaintiff is that theirs is a reputed chain of hospitals and they are running hospital at
various places, including Noida, Faridaba, Meerut, Vadodra, Gurgaon and Jaipur.
He further states that they are seeking to open new hospitals one in Haridwar in
Uttarakhand and the other somewhere in Punjab. The defendants cannot be allowed
to continue to take advantage of the reputation which the hospitals of the plaintiff
enjoy amongst the public. Any person coming across the hospital of the defendants
may, on account of use of the mark METRO, as a part of its trade name/trademark,
either presume that this is one of the hospitals being run by the plaintiff or that it
has come kind of an association with the plaintiff being its franchise/associate. If
the quality of the services provided in the hospital of the defendant is not as good
as is the quality of the services being provided in the hospitals of the plaintiff, that
is likely to affect the brand name and brand equity which the hospitals of the
plaintiff enjoy in this country, besides prejudicially affecting the patients and their
family members who make take treatment in the hospital of the defendants on the
assumption that they are getting the treatment in one of the hospitals of the
plaintiff-company. Therefore, it would be in the interest of the public as well that
the defendant is not allowed to use the word METRO as a part of its trade
name/trademark.
8. Considering all the facts and circumstances of the case, including that the
defendant claims to be running this hospital for last about 07 years, in my view, the
ends of justice would be met by directing as under:-
i. The defendants shall not use their existing name METRO HOSPITAL
& TRAUMA CENTRE, but they may use the name "LUCKNOW
METRO" provided the words "a unit of Dr.Fahad Islahi & Aamir
Islahi" are written just below the mark/name "LUCKNOW METRO".
The letters of the word LUCKNOW wherever used with the word
METRO shall not be small in size than the letters of the word
METRO.
ii. The defendants will put up a sign board at the main entrance of its
hospital stating therein that the hospital has no connection with the
hospitals of METRO INSTITUTE OF MEDICAL SCIENCES
PRIVATE LIMITED. The size of the sign board would be at least
4X7 feet and it would be a well illuminated sign board.
iii. The defendants would publish advertisement in one Hindi and one
English newspaper widely circulated in Lucknow stating therein that
their hospital has no connection with METRO INSTITUTE OF
MEDICAL SCIENCES PRIVATE LIMITED and is not its associate
or affiliate.
iv. The use of the name LUCKNOW METRO would start only after the
defendants have fully complied with this order.
v. The defendants will keep accounts of the turnover and profits made by
them from the hospital being run at Lucknow.
Both the applications stand disposed of in terms of this order.
CS(OS) 3289/2012
Written statement be filed within four weeks. Replication, if any, can be
filed within two weeks thereafter.
The parties to appear before Joint Registrar for admission/denial of the
documents on 14.02.2013.
The matter be listed before Court on 21.03.2013 for framing of issues.
Dasti under the signature of Court Master.
V.K. JAIN, J
DECEMBER 21, 2012/bg
