RAINBOW CHILDRENS MEDICARE LIMITED Vs. RAINBOW HEALTH CARE

JUDGEMENT

(1.) These appeals arise from the orders dtd. 18/6/2024 passed by the LXXXII Addl. City Civil and Sessions Judge, Bengaluru (CCH-83) ('Trial Court' for short) on IAs No.II and III in Com.OS No.538/2023, by which order the Trial Court has dismissed the IAs filed by the appellant herein under Order XXXIX Rules 1 and 2 read with Sec. 151 of CPC and vacated the ad-interim injunction orders dtd. 20/4/2023 on the above IAs. The said applications were filed by the appellant herein for the following reliefs:

(2.) The facts to be noted are, it was the case of the appellant herein that it was incorporated in the year 1998 in Hyderabad. It is a leading chain of paediatric multi-speciality, obstetrics and gynaecology hospitals in India and is known for providing world-class super speciality medical/healthcare services for children and fertility under the name/trading style of 'Rainbow Children's Hospital' and for women care under the name/trading style 'Birth Right'. The appellant was one of the first corporate entities to establish a children's hospital under the name 'Rainbow Children's Hospital' in the year 1999 in India. With over 23 years of excellence, the appellant has set a benchmark in neonatal and paediatric intensive care and holds one of the most successful records/rates regarding pre-term births. It has established hospitals in several cities such as Hyderabad, Vijayawada, Vishakhapatnam, Bengaluru, Chennai and New Delhi. It maintains a website 'https://www.rainbowhospitals.in'. It initially commenced its business operations as a paediatric speciality hospital with a total capacity of 50 beds in Hyderabad in the year 1999. Thereafter, in the course of creating a strong clinical expertise, the appellant subsequently expanded its operations to multi-speciality, obstetrics and gynaecology. As of today, the appellant operates 16 hospitals and 3 clinics in 6 cities across India with a total bed capacity of 1600 plus beds and more than 650 doctors. The appellant is a public listed company whose shares are traded on the National Stock Exchange (NSE) and Bombay Stock Exchange (BSE). Subsequent to the IPO, the equity shares of the appellant were listed on NSE and BSE on 10/5/2022. It established 3 paediatric multi-speciality and super-speciality hospitals situated at Hebbal, Bannerghatta Road and Marathahalli in Bengaluru with two hospitals having been accredited by the National Accreditation Board for Hospitals and Healthcare Providers. The appellant first conceived of and adopted its proprietary and registered trademark/tradename 'Rainbow' in the year 1998. It is the case that, was the first honest, bonafide, prior adopter and user of the trademark/tradename 'Rainbow' in relation to medical/healthcare services in India more than 23 years ago. The trademark/tradename 'Rainbow' since its adoption in the year 1998, has been used continuously, extensively and without interruption by the appellant in India in relation to the various medical/healthcare services offered by the appellant. It is the case of the appellant that over a period of more than two decades, the appellant's proprietary and registered trademark/ wordmark/tradename 'Rainbow' has, on account of the outstanding services rendered by the appellant and the appellant's Pan-India presence, became well entrenched in the minds of consumers and general public as being associated solely with the appellant and is synonymous with the exemplary and reliable quality services of the appellant associated with the paediatric, obstetrics and gynaecology hospital chain in India. Having created a vast market, in order to protect its intellectual property including its trademark/tradename, the appellant got registered the trademark 'Rainbow' and other 18 registrations. The registered trademark under 'Rainbow' is valid and subsisting registration in favour of the appellant and as such, the appellant is entitled to all statutory rights, protections and remedies as available under the Trademarks Act, 1999 ('the Act' for short). The appellant has successfully obtained ad-interim injunctions from various Courts against the infringing third parties who have unscrupulously copied the appellant's trademark.

(3.) It was during the routine checks, it came across the 1st respondent's listing under the title 'Rainbow Health Care' with the logo on various websites such as www.justdial.com, www.practo.com and www.timesmed.com. It was also noted that the respondents are also advertising their services under the infringing mark on its website https://www.rainbowhealthcareblr.in. Respondent No.1 has listed their services under Rainbow Healthcare with trademark on Google. The appellant immediately issued a cease-and-desist notice dtd. 28/11/2022 informing that the appellant is the prior registered user of the trademarks 'Rainbow' and called upon the respondents to immediately cease-and-desist from using the infringing marks. It is the case of the appellant, pursuant to receipt of the cease-and- desist notice, while the respondents recognized the appellant's right over the mark 'Rainbow' and offered to enter into a co-existence agreement with the appellant, the respondents also raised unsubstantiated contentions vide reply dtd. 10/12/2022. It is the case of the appellant that in the reply dtd. 10/12/2022, the respondents took various frivolous pleas including that the respondent No.1 is the prior user of the mark 'Rainbow' since 2013, despite being fully aware that the appellant has been using the said mark since 1998. The appellant in response to the reply dtd. 10/12/2022, sent a response dtd. 27/12/2022, reiterating its stand that it is the prior user of the mark 'Rainbow' and called upon the respondents to comply with the requirements of the cease-and-desist notice dtd. 28/11/2022. However, instead of complying with the directions of the appellant, the respondents once again issued an untenable reply dtd. 2/1/2023. It is the case of the appellant that, the respondents, in blatant violation of the appellant's registered trademark, continued to illegally use the infringing mark till today. The respondents have adopted an identical and deceptively similar trademark to that of the appellant and are also providing identical services as that of the appellant i.e., healthcare services for paediatrics. It was in the aforesaid background the suit Com.OS No.538/2023 has been filed by the appellant. It was the case of the appellant that, the respondents' illegal and infringing activities, especially use of impugned marks for identical services, amounts to a direct violation of the exclusive statutory rights granted under Ss. 28(1) and 29(1) of the Act. According to the appellant, the respondents providing identical services as that of the appellants having registered trademark 'Rainbow', there is every likelihood of confusion that is bound to occur in the mind of consumers to contact the respondents and seek services from any part of the country. The current and potential damage to appellant increases manifold since the respondents are conducting their business for identical services under the impugned trademarks. The respondents' use of the impugned marks is illegal and the same will dilute appellant's trademark. It was their case that the appellant has made out a strong prima facie case for grant of reliefs claimed, including reliefs in the nature of injunctive reliefs, which earlier was granted, but later on vacated.