Delhi High Court
Imax Healthcare Private Limited & Anr. vs Max Healthcare Institute Limited on 26 March, 2025
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~64
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (COMM) 60/2025 & CM APPL. 12191/2025
IMAX HEALTHCARE PRIVATE
LIMITED & ANR. .....Appellants
Through:
versus
MAX HEALTHCARE
INSTITUTE LIMITED .....Respondent
Through: Ms. Abhilasha Nautiyal, Mr.
Siddharth Varshney and Mr. Yash Raj,
Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
ORDER (ORAL)
% 26.03.2025
C. HARI SHANKAR, J.
1. This appeal is directed against order dated 19 December 2024
passed by the learned District Judge (Commercial)1, on an application
filed by the respondent under Order XXXIX Rules 1 and 2 of the
Code of Civil Procedure, 19082 in CS (Comm) 247/20243.
2. The respondent was the plaintiff before the learned Commercial
Court. The respondent alleged that the appellant had infringed the
registered trademarks of the respondent. The suit was accompanied by
1 "learned Commercial Court" hereinafter
2 "CPC" hereinafter
3 Max Healthcare Institute Ltd v Imax Healthcare Pvt Ltd and Anr
an application under Order XXXIX Rules 1 and 2 of the CPC for
interlocutory injunction.
3. The application was initially rejected by the learned
Commercial Court by order dated 15 May 2024. Aggrieved thereby,
the respondent had approached this Court by way of FAO (Comm)
117/20244. The said FAO was disposed of by this Court by order
dated 25 September 2024. We deem it appropriate to reproduce paras
3 to 12 of the said order thus:
"3. Before us, it is not disputed that the mark of the plaintiff
appellant has been duly acknowledged by courts as being a "well-
known trademark". We in this respect firstly take note of the
following declaration which came to be made in the suit instituted
by the appellant being CS (COMM) 603/23:-
"9. Insofar as the claim of plaintiff regarding
declaration of well known trademark is concerned, the plaintiff
has filed several cases and has got injunction from this Court
itself. Injunction granted in one of the cases filed by plaintiff
was upheld up-till Hon'ble Supreme Court within the
knowledge of the Court.
10. In view of facts discussed hereinabove, the
judgments cited on issue; continuous presence of plaintiff in
healthcare services for more than 23 years; recognition of the
mark for healthcare services by various benches including
Hon'ble supreme Court and also considering the revenue of
plaintiff of last 4-5 years, it being INR 185,446 lacs in 2021
itself; the plaintiff can safely be declared as "well known"
mark in respect of health care services and is declared as such.
The suit is decreed in above terms. File be consigned to record
room."
4. Of equal significance are the following observations
rendered by this Court in Max Healthcare Instituted Ltd. v
Sahrudya Healthcare Pvt. Ltd5:-
4 Max Healthcare Institute Ltd v Imax Healthcare Pvt Ltd & Anr
5 2019 SCC OnLine Del 9036
"13. No merit is found in any of the elaborate
contentions of the senior counsel for the defendant and the
plaintiff is found entitled to interim injunction. I herein below
record my reasons therefor:
A. First I have considered de hors the legalities,
whether adoption by the defendant, admittedly much after
adoption by the plaintiff, of the trade marks/trade name
MAXCURE/MAXKURE/MAXCURE MEDICITI, for the
purposes of its hospital and/or healthcare services, is likely
to confuse public at large and whether it is likely to result in
the public at large believing the hospital and healthcare
services provided by the defendant to be those of the
plaintiff under the mark MAX HEALTHCARE, MAX
HOSPITAL, MAX MEDCENTRE, DR. MAX CLINIC and
MAX HEALTHSTAFF. I have not an iota of doubt that the
two marks are similar/deceptively similar and are likely to
cause confusion, resulting in the hospital/healthcare
services of the defendant being confused by public at large
and/or persons in need thereof as hospitals/healthcare
services of the plaintiff
B. I now proceed to consider, whether notwithstanding
the same, a case of infringement under the Trademarks Act
is made out. Ordinarily, in the light of the conclusion
aforesaid, the law cannot be without remedy therefor and/or
ought not to be interpreted as having no cure for the
purpose for which it has been enacted. The argument of the
senior counsel for the defendant, of the remedy being in an
action for passing off and not in an action for infringement,
assumes the statutory law of trade mark, enacted to protect
rights in trade marks and in public interest of preventing
consumers from being misrepresented/cheated, to be
weaker than the common law of trade marks whereunder an
action for passing off lies. It would be a travesty of law
making and would render law making into an ass (as
echoed by Mr. Bumble in Oliver Twist), if it were to be
held that inspite of the trade marks of the plaintiff being
registered under the provisions of the Trademarks Act, and
the defendant also having applied for registration of its
trade mark, and inspite of the two trade marks being
similar/deceptively similar and having potential of causing
misrepresentation/cheating the public and consumers, the
remedy would be under the common law and not the
statutory law. I reiterate that statute laws cannot be so
rendered to make them toothless and weak, defeating the
very purpose of enactment thereof.
.................
E. MAX is not an abbreviation in English language of
the word 'maximum' and can at best be said to be used in
slang language. It is also not as if the word MAX, in
relation to hospital and healthcare services, is a generic or a
laudatory word. Moreover, the plaintiff admittedly holds
registration for MAX in relation to hospital and healthcare
services and it is not in the jurisdiction of this Court to hold
the registration to have been wrongly granted. The
exclusive jurisdiction therefor is with the Registrar of Trade
Marks and/or with the Intellectual Property Appellate
Board (IPAB). The defendant did not take any objection to
registration sought by the plaintiff of the label/device marks
with the word MAX in relation to hospital/healthcare
services in the last 16 years since when the marks of the
plaintiff have been registered. On the contrary, the
defendant, also in the business of providing
hospital/healthcare services under the name of Sunshine,
when desirous of changing the said name, chose the word
MAX and also applied for registration of label/device
marks with the said word. The consistent view of this Court
in Automatic Electric Ltd. v R.K. Dhawan6, The Indians
Hotel Company Ltd. v Jiva Institute of Vedic Science and
Culture7, Anchor Health & Beauty Care Pvt. Ltd. v
Procter & Gamble Manufacturing (Tianjin) Co. Ltd.8,
appeal preferred whereagainst was dismissed vide judgment
reported as Procter & Gamble Manufacturing (Tianjin)
Co. Ltd. v Anchor Health & Beauty Care Pvt. Ltd9and
SLP(C) No. 15928-15929/2014 preferred where against
were dismissed on 3rd July, 2014, and Vega Auto
Accessories (P) Ltd. v S.K. Jain Bros Helmet (I) Pvt. Ltd10
has been that a defendant who has itself applied for
registration of a mark is stopped from contending the mark
to be not registrable, when faced with an action for
infringement. The said argument is thus not available to the
defendant.
F. The mere fact that others, also providing
hospital/healthcare services may be using the word MAX is
no ground for depriving the plaintiff of injunction against
the defendant if otherwise a case therefor is made out. I
have in Sunil Mittal v. Darzi On Call11. Insecticides
6 77 (1999) DLT 292
7 (2008) 37 PTC 468 (Del) (DB)
8 2014 SCC OnLine Del 2968
9 211 (2014) DLT 466 (DB)
10 2018 SCC OnLine Del 9381
(India) Ltd. v Parijat Industries (India) Pvt. Ltd12, H&M
Hennes & Mauritz AB v HM Megabrands Pvt. Ltd13and
Purshotam Keshwani v Nishant Mitrasen Mahimtura14
held that the owner of a registered trade mark is not
expected to indulge in the business of litigation of suing
each and every person adopting the same/similar mark,
irrespective of impact thereof on the business of the
plaintiff. It is in the discretion of a plaintiff, whom to sue
and whom not to sue and merely because a plaintiff in a suit
for infringement of trade mark has not sued another, is no
ground to defeat the suit against the infringer against whom
the plaintiff has chosen to act.
G. That brings me to the star argument of the senior
counsel for the defendant, of the label/device mark of the
plaintiff being entirely different from the label/device mark
of the defendant. I must admit that I myself being a resident
of Delhi since birth, and familiar as any other citizen of
Delhi with Max Hospitals, having not only visited patients
therein but having also umpteen times passed in front of
Max Hospitals/Healthcare Services. had never noticed the
device of a single/double cross appearing on the
label/device marks of the plaintiff or even the words
Healthcare or Health Staff. If at all any other word besides
MAX stuck to the mind, that was of Super Speciality as one
of the twin MAX hospitals in Saket is called. My mind
always identified the hospitals of the plaintiff with the word
MAX. and not necessarily along with the word Healthcare
or Hospital or Medcentre or Health Staff or with the
medical cross. I can well imagine others, not having
dealings with the plaintiff also associating plaintiff only
with MAX and with no other device or word. In addition,
what my mind was familiar with, was the earlier names of
the hospitals, management whereof has been taken over by
the plaintiff and/or management whereof was taken by the
plaintiff and on which take over, the plaintiff invariably
adds MAX to the earlier/existing names. Mention in this
context can be made of Janki MAX and MAX Centre for
Liver & Biliary Sciences also. The same would be the
position of others. Again, I have wondered whether the
legislators of Trademarks Act providing for registration of
label/device marks can be presumed to be ignorant of
human psychology and/or the way the human mind
perceives such marks. The answer is again no. It has been
held in Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath
12 252 (2018) DLT 129
13 2018 SCC OnLine Del 9369
14 2019 SCC OnLine Del 7392
Heritage Liquor Pvt. Ltd15. affirmed by the Division Bench
in Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender
& Distillers Pvt. Ltd16., Prathiba M. Singh v Singh &
Associates17 and Gillette Company LLC v Tigaksha
Metallics Pvt. Ltd18. that the test for infringement of a
label/word mark is the test of prominent word of the mark.
Besides the judgment cited by the senior counsel for the
plaintiff, mention may be made of Ramdev Food Products
(P) Ltd. v. Arvindbhai Rambhai Patel19 where it has been
held that adoption by the defendant of a prominent word in
the label/device mark of the plaintiff amounts to
infringement. The label/device marks may be of different
kinds. Those with words only as prominent part thereof
with a not so prominent device, have in Keshav Kumar
Aggarwal v NIIT Ltd.20, Jagdish Gopal Kamath v Lime &
Chilli Hospitality Services21, Mallcom (India) Ltd. v
Rakesh Kumar22 and New Balance Athletics, INC v Apex
Shoe Company Pvt. Ltd23., appeal preferred whereagainst
was dismissed vide order dated 26th March, 2019 in
FAO(OS) (COMM) No. 59/2019 titled Apex Shoe
Company Pvt. Ltd. v New Balance Athletics, INC, held to
be infringed by the defendant who in his label/device
adopts the same word/s by making only variation in the not
so prominent device. The nature of business/services also
are of several kind. A label/device mark in relation to some
businesses, as of textile and/or prints, may invite the
attention of the public and/or the consumer to the brand of
the label/device mark but no so in others. The business of
providing hospitals/healthcare services is such, where
people/consumers pay least attention to the device or the
label mark and read generally the first word of the label
mark by which the hospital/healthcare services come to be
known and recognized.
H. I am also unable to accept the contention of the
senior counsel for the defendant, that the test of
infringement is not in the mark or its use but on paper. The
same cannot possibly be. The Courts adjudicate trade mark
disputes applying the test of similarity/deceptive similarity,
and which test has to be in relation to how
15 211 (2014) DLT 346
16 221 (2015) DLT 359
17 2014 SCC OnLine Del 1982
18 251 (2018) DLT 530
19 (2006) 8 SCC 726
20 199 (2013) DLT 242
21 2015 SCC OnLine Bom 531
22 2019 SCC OnLine Del 7646
23 2019 SCC OnLine Del 7393
similarity/deceptive similarity is perceived in the minds of
the concerned persons and not on paper. Moreover it is only
in Courts that the two marks are available side by side, for
comparison. Not so in the market. The test to be applied is
of the market place.
I. A person visits a hospital or a healthcare facility in
an anxious state of mind, whether for himself or for near
and dear ones and is not prone to pay minute attention to all
the contents of the label/word mark and is prone to identify
the hospital by the most prominent word on the label/device
mark and which in the case of the label/device mark of the
plaintiff is, MAX. As aforesaid, the hospitals of the plaintiff
are known as MAX, and mere mention of MAX, even
without the word hospital or healthcare, brings to mind the
hospital/healthcare services of the plaintiff and nothing
else. unless mention is in the context of insurance and/or
financial services. When I was told for the first time that
Malhotra Heart Institute. Lajpat Nagar. New Delhi was
being taken over by 'Metro', I asked, why would Delhi
Metro Rail Corporation take over a heart hospital, only to
be told of Metro Hospitals, till then not having presence in
Delhi, though having hospitals outside.
K. The business of hospitals/providing healthcare
services today is such which is no longer territorial. Though
a doctor practicing medicine individually may have his
medical practice confined to a particular region, but once
the hospitals/healthcare services have been corporatized,
the business of providing medical facilities is no longer
territorial. The plaintiff in the plaint has already listed a
large number of hospitals under its umbrella and it is not as
if the defendant also is a one man show. The structure on
which the defendant has designed itself appears to be the
same as the plaintiff. Thus merely because presently the
plaintiff does not have a hospital/services in Andhra
Pradesh and Telangana and the defendant today is confined
to Andhra Pradesh and Telangana is no reason to deny
injunction. Neither can the plaintiff be restrained from
expanding, nor the defendant. Moreover, today we are
living in an era of medical tourism where each of such
corporate as the plaintiff and the defendant vie with each
other to earn maximum foreign exchange by providing
cheaper and better medical treatment than available in a
large number of other countries. In such an atmosphere,
when a prospective patient desires to avail of services of the
plaintiff and scouts on the intemet for the most convenient
hospital from the plaintiff's stable from his/her perspective,
the possibility of ending up confusing the
hospital/healthcare of defendant for that of the plaintiff. is
writ large. Moreover, once the registration of trade mark
granted is valid throughout India, it is no ground to deny
injunction that the defendant for the time being has no
intent to enter National Capital Region where presently the
hospitals/healthcare centres of the plaintiff are primarily
located.
L. Merit is also found in the contention of the senior
counsel for the plaintiff, of the mala fides of the defendant
being evident from the adoption by the defendant of the
same marks with same prominent word as in the marks of
plaintiff. in relation to same services as offered by plaintiff.
It is not the case of the defendant and indeed it cannot be of
anyone claiming any knowledge of providing
hospital/healthcare services, that the defendant did not
know of the plaintiff. The defendant, in spite thereof, when
desirous of changing the name of its hospitals/healthcare
services from that of Sunshine, chose to adopt impugned
marks similar to that of the plaintiff's and which can be
nothing else but in an attempt to ride over the goodwill of
the plaintiff and to make patients believe that they were
getting treatment of the same standard/quality, for which
the plaintiff has identified itself. There is no explanation,
why the defendant chose to adopt the same name for its
hospitals as that of the hospitals of the plaintiff."
5. The appellant had also set out in the plaint the details of the
injunctions, ex parte, interim and final granted by this Court in
various suits instituted by it. This becomes evident from a reading
of paragraph 16 of the plaint which is extracted below:-
"16. The Plaintiff has been vigilant in protecting its
rights and interest in its intellectual property in India and
has consistently monitored and taken appropriate measures
to tackle misuse of its trade marks by unrelated third parties
in different forums. The Plaintiff has obtained several
interim injunctions, including ex-parte ad interim
injunctions and decrees of permanent injunctions from the
Delhi High Court and this Hon'ble Court restraining the
following third parties from using the trade mark MAX in
any manner.
i. Max Care Hospitals, Hyderabad
ii. Max Health Hospitals, Hyderabad
iii. Max Care Hospital, Warangal
iv. Max Care Hospital, Trichy
v. Max Care Hospital, Ahmednagar
vi. Max Care Hospital, Gwalior
vii. Maxcare Hospital, Pune
viii. Max Care Hospital & Hemodialysis Centre,
Bijnor
ix. Maxcure Hospital / Maxkure Maxcure
Mediciti, Telangana
x. Max Hospital, Varanasi
xi. Max Global Pharmacy, Delhi
xii. Max 24x7 Medicos, Delhi
xiii. Max Hospital, Moradabad
xiv. Max Associates, Kannur
xv. Max Care Hospital/ New Max Care
Hospital, Patna
xvi. Care Max Superspeciliatiy Hospital,
Jalandhar
xvii. New Max Care Hospital, Patna
xviii. Max Care Chemist, New Delhi
xix. Caremax Hospital, Jalandhar
xx. Max Aid Hospitals, Hyderabad
xxi. Maxicure Hospitals, Hyderabad"
6. The District Judge, however, has made the following
observations while rejecting the application for temporary
induction:-
"So far as plaintiff's case is concerned, there is no doubt
that plaintiff is claiming itself to be a user of this trademark
"Max" since 2000 and has also got the registration in its
favour, however, all the registrations which the plaintiff
holds are of "composite trademark" and not in respect of
singular word "Max" alone. Since plaintiff as well as
defendant both are operating in the same area of health
care, hence plaintiff cannot claim any exclusive right or
domain over the use of word "health care".
Even the composition and structure of both the entities is
also different as plaintiff herein is a limited company
whereas defendant is a private Ltd. Company having
different composition and constitution.
So far as the deception is concerned, though the word
"IMAX" used by the defendant within the territory of state
of Tamil Nadu may prima facie gives an impression, as if it
is a part of plaintiff company, however, since the plaintiff is
not operating in the said State at any place whatsoever,
hence, this possibility is also ruled out."
7. As is evident, the District Judge appears to have been
influenced by a perceived distinction between the "composition"
and "structure" of both the entities. We find ourselves unable to
fathom or comprehend how the perceived distinction in the
corporate composition of the appellant and the defendant could
have constituted a factor relevant or germane for the purposes of
examining whether the grant of an injunction was warranted.
8. The District Judge further, and while accepting that the use
of the word 'IMAX' may prima facie give an impression that it
was connected with the plaintiff company and lend credence to the
assertion of deceptive similarity, held against the appellants solely
on the ground that the defendant was not operating in the State.
This finding is rendered ignoring the allegation of the appellants of
sales being in fact affected within its territorial jurisdiction as well
as its online presence.
9. Equally unsustainable are the following observations
entered by the District Judge in the order impugned before us:-
"Lastly it has been submitted and argued that plaintiff had
already more than 21 injunction (including ex-parte
injunctions) in its favour is also of no use and avail as the
orders passed by coordinate benches of this court are not
binding as a precedent on this court and law of injunction is
very clear and provides that injunction is purely a
discretionary relief and even if the plaintiff or the defendant
as the case may be, is able to successfully establish a prima
facie case, balance of convenience as well as irreparable
loss and injury being caused to it, then also the court has the
discretion to refuse and decline the injunction."
10. The aforesaid finding is yet again demonstrative of a
complete non-application of mind bearing in mind the indisputable
fact of some of those injunctions having been granted by this Court
and which were clearly not orders made by "coordinate benches"
of the trial court. The District Judge also chose to ignore the final
decree which had come to be passed in the suit instituted by the
appellant and details whereof have been noticed hereinabove.
Equally unsustainable is the understanding of the District Judge
that since the grant of injunction is "discretionary", it could be
refused even if factors such as prima facie case, balance of
convenience and irreparable injury are established. The District
Judge clearly fails to bear in consideration that when courts chose
to describe the grant of injunction in exercise of jurisdiction
conferred upon a court to be discretionary, those precedents clearly
did not intend to lay down a precept that the refusal or grant could
be arbitrary.
11. We would hope and trust that, in the future, the District
Judge would be more circumspect and cautious in the exercise of
the salutary power and jurisdiction vested in it.
12. We for reasons aforenoted allow the instant appeal and set
aside the order dated 15 May 2024. The application under Order
XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908 shall
consequently stand revived on the board of the concerned District
Judge to be disposed of afresh and in accordance with law. All
rights and contentions of respective parties on merits are kept
open."
4. The impugned order has come to be passed by the learned
Commercial Court purportedly in compliance of the directions
contained in para 12 of the aforesaid judgment dated 25 September
2024 in FAO (Comm) 117/2024.
5. The learned Commercial Court has, unfortunately, treated the
observations of the High Court as having foreclosed the issue and that
nothing was left for consideration in the appeal.
6. This is apparent from the manner in which the impugned order
has been structured. The learned Commercial Court has initially noted
the fact that the respondent was seeking an injunction against the
appellant and has, thereafter, proceeded to refer to the order dated 15
May 2024 passed by his predecessor whereby the respondent's
application for injunction was rejected. The impugned order,
thereafter, proceeds to refer to the judgment dated 25 September 2024
in FAO (Comm) 117/2024, which already stands extracted
substantially hereinabove. Thereafter, the impugned order proceeds
thus:
"In view of the observations as made by the Hon'ble
Division Bench, this court finds that in order to implement the
observations made by Hon'ble High Court of Delhi, an interim
injunction is warranted in the given facts and circumstances of this
case.
Sh. Parish Mishra, Ld. Counsel for defendant has drawn my
attention to page no. 12 of his reply, wherein he had mentioned
about five trademarks registered with the word "MAX" namely
"IMAXX HAIR, Pathmax, maxvision, Clumax Diagnostics and
LiMax", and has stated that since all those trademarks have been
duly registered, the Plaintiff cannot claim any exclusive domain
over the word "MAX".
These observations had already been made by this court in
the impugned order dated 15.05.2024 and had already been dealt
by the Hon'ble High Court of Delhi in its order setting aside the
order of this court.
Hence, no further deliberations are called upon on this
issue at this stage.
Accordingly, Plaintiff's application u/o XXXIX rule 1 & 2
CPC r/w 151 CPC stands allowed and defendants, their partners,
directors, proprietors if any, franchisees, officers, servants, agents,
distributors, stockists, representatives and anyone acting for or on
their behalf, are hereby restrained from using the trademark
"IMAX" or any other trademarks similar to that of Plaintiff either
visibly or phonetically till disposal of the present suit."
(Emphasis supplied)
7. Clearly, the learned Commercial Court has not performed the
task assigned to it by para 12 of the judgment dated 25 September
2024, inasmuch as there is no consideration on the merits of the
respondent's application. The learned Commercial Court has, in a
somewhat peculiar fashion, observed that, in order to implement the
observations of this Court in its judgment dated 25 September 2024,
there was no option but to grant interim injunction to the respondent.
8. We do not understand the judgment dated 25 September 2025
of the Division Bench of this Court as completely foreclosing the
aspect of the merits of the matter. The learned Commercial Court
ought to have adverted to the merits and arrived at a decision one way
or the other.
9. We note the submission of Ms. Abhilasha Nautiyal, learned
Counsel for the respondent that the appellant had resorted to filing
fabricated documents, including a bill pertaining to a COVID test kit
nearly a year before COVID hit the country. She has further sought to
contend that the appellant has relied on material which was never
placed before the learned Commercial Court.
10. We do not express any opinion on these aspects. It would be
open for the respondent to raise all these contentions and any other
that it may choose before the learned Commercial Court.
11. We, however, expect that the learned Commercial Court would
consider all these aspects while taking a de novo decision in the
matter.
12. In order to expedite matters, we direct both sides to appear
before the learned Commercial Court on 3 April 2025. The learned
Commercial Court would re-consider the respondent's prayer for
interim injunction uninfluenced by the observations contained in the
order impugned before us.
13. Both sides undertake not to take any adjournment on the said
date.
14. We request the learned Commercial Court to decide the
application either on the same day or as expeditiously as possible
thereafter preferably within two weeks thereof. The learned
Commercial Court would also adjourn the contempt petition filed by
the respondent to a date after the decision on the interim application.
15. Should either side be aggrieved by the order that may come to
be passed in the de novo proceeding, the remedy available in law
would stand reserved. This appeal stands disposed of in the aforesaid
terms.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
MARCH 26, 2025
ar
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