Madras High Court Protects Apollo's Brand Identity, Restrains Bihar Hospital from Using New Appolo

Madras High Court Protects Apollo's Brand Identity, Restrains Bihar Hospital from Using New Appolo

In a recent ruling, the Madras High Court has granted well-known mark status to the trademark "Apollo" for the healthcare and pharmaceutical industry. This decision comes as a relief to Apollo Hospitals Enterprises Ltd, which had filed a plea seeking such recognition and an injunction against the defendant, Dr Dheeraj Saurabh, proprietor of New Appolo Hospital in Bihar, for using a deceptively similar mark.

The Court of Justice Abdul Quddhose observed that the name "Apollo" is synonymous with the plaintiff and is entitled to the highest level of protection as the public associates it exclusively with the plaintiff in the healthcare and pharmaceutical sectors. This recognition falls under Section 2(1)(zg) of the Trade Marks Act, which defines a well-known mark.

Apollo informed the Court that it had become aware of the defendant's blatant use of a deceptively similar mark in July 2022. Despite a cease and desist notice, the defendant refused to desist from using the offending trademark. Apollo highlighted its reputation for providing high-quality services and its right over the mark's artistic work, registered in 2008.

The Court, upon examining Apollo's documents evidencing the mark's registration under various classes, deemed Apollo to hold proprietary rights over the trademark "Apollo" and its variants.

Regarding the grant of well-known mark status, the Court acknowledged the Trade Marks Rules amendment in 2018, empowering the trademark registry to grant such recognition. However, it emphasised that this amendment did not diminish the Court's power to confer such status. It affirmed that the Court and the registry hold concurrent powers to recognise a mark as well-known.

The Court outlined 10 factors to be considered when determining whether a trademark qualifies as a well-known mark:

1. Extent of knowledge of the mark among the relevant public segment

2. Duration of use

3. Extent of products and services associated with the mark

4. Method, frequency, and duration of advertising and promotion of the mark

5. Geographical extent of the trading area where the mark is used

6. Registration of the mark

7. Volume of goods and services sold under the mark

8. Nature and extent of use of similar marks by others

9. The extent to which rights claimed in the mark have been successfully enforced

10. Actual number of consumers consuming goods or availing services under the brand

The Court concluded that Apollo satisfied all these criteria, granting it well-known mark status and the highest level of protection.

The Court further opined that the defendant's use of the mark with a dishonest intention to profit from public confusion would constitute trademark infringement and passing off. Therefore, the Court permanently enjoined the defendant from using Apollo's registered trademark.