Max Healthcare (registered proprietor of composite marks

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filed a trademark infringement suit seeking to injunct the defendant from use of MAXCURE HOSPITAL and MAXKURE. Max Healthcare’s admitted position (in its plaint) was that the mark MAX was not owned by it, and was instead owned and registered by its affiliate. Notably, this affiliate-owner of the mark MAX was not made a party to the suit.

The defendant consequently applied for the plaint to be rejected on the grounds of –

1. Non-joinder of a necessary party – the registered proprietor of MAX; and

2. The lack of any pleading in the plaint that ‘MAX’ was an essential feature of Max Healthcare’s registered marks.

The Delhi High Court (vide its order of November 29, 2017) dismissed the Defendant’s application (for rejection of plaint). The Court admitted the plaint for infringement of the composite marks (of which Max Healthcare is the registered proprietor), while observing that the plaint was liable to be rejected for infringement of the word mark MAX (for non-joinder of necessary party).

The Court also held that it was evident that MAX is the essential feature of the composite marks.

During the pendency of a cancellation action against Nestle’s Registration for the mark A+ Device in respect of milk products, the Delhi High Court vide its order dated December 5, 2017 made its prior order for maintaining status quo absolute. Nestle alleged that its rights in the mark were prior owing to the Assignment Deed wherein use claim for milk products is since 2004. On the other hand, the defendant commenced use only in June 2011. Nestle’s application for injunction was denied on the grounds that –

1. A+ is laudatory and descriptive and accordingly, to be protected as a trademark, it would need to be shown by the claimant that the mark by extensive usage has acquired distinctiveness and is associated only with the claimant.

2. If the Plaintiff were to finally succeed, compensation could easily lie by way of damages.

The order observes that the status quo has continued for a period of over five years without the parties proving their case by leading evidence. Both parties presently use the mark A+ as a sub brand in conjunction with Nestle and Amul.

Notably, the Court observed that invoices of the assignee do not show any use on milk products. Moreover, assignment of the mark to Nestle for a mere Re 1 in respect of milk products only (permitting the assignee to use the mark for all other goods falling under Class 29) is significant as it prima facie shows that the mark was never in use for such products by the assignee.

In its November 22 order, The Delhi High Court refused to grant Mattel, owner of BARBIE, an ex-parte injunction sought to restrain the release of a Hindi film featuring BARBIE in one of its songs. Mattel alleged that its BARBIE mark was being tarnished by the association with the song, which was allegedly provocative and inappropriate for its target consumer. The ex-parte relief was denied on the grounds, inter alia, that –

1. Grant of such a restraint would damage the right to freedom of speech and expression, and be against public interest; and

2. Use by the defendants of the mark BARBIE in the song is akin to a parody of Barbie as opposed to infringement.

Notably, reliance was placed on the decision of US Court of Appeals (Ninth Circuit), denying Mattel relief against use of BARBIE in a pop song by the band Aqua, which seems to have been accorded strong persuasive value.