The CORONIL Trademark Litigation Saga: The Story So Far
The recent antics of Pathanjali Ayurved Limited’s (“Pathanjali”) protagonist, Baba Ramdev, regarding its claim to have found a ‘cure’ to the worldwide pandemic crisis portrayed by the corona virus, COVID-19, have been making rounds on national news. Baba Ramdev had publicly claimed that Pathanjali’s product namely CORONIL is an ayurvedic medicinal cure to the corona virus. While the factum of the medicine allegedly being claimed as a cure for the corona virus and the adoption of the trademark CORONIL (which is, clearly, derived from the word CORONA in corona virus), may or may not have legal ramifications of its own, this act, has most certainly aggrieved another party which alleged that the adoption and use of the mark CORONIL by Pathanjali violates its statutory and common law rights in the trademark CORONIL — 92B. Let us embark upon a study of this case from a trademark law enthusiast’s perspective and see how the events unfolded in this contemporarily relevant trademark litigation.[1]
The plaintiff, namely Arudra Engineers Pvt. Ltd., is the registered proprietor and user of the trademark CORONIL — 92B in respect of acid inhibitor for industrial use. By virtue of extensive use of the mark, the plaintiff claims to have established a substantial reputation across the country as well as abroad. Aggrieved by the defendant’s claim to have prepared a medicine, namely CORONIL, as a cure for corona virus, and its use of the mark CORONIL, thereof, the plaintiff filed a suit for infringement of trademark under Section 29(4) of the Trade Marks Act, 1999 (“TM Act”). Albeit, the rival goods in the instant case (ayurvedic medicine/immunity booster v. acid inhibitor for industrial) were dissimilar, given that the plaintiff contended that the case falls within the purview of Section 29(4) of the TM Act, the Hon’ble Madras High Court, vide order dated July 17, 2020, granted an ex parte injunction restraining the defendant from infringing the plaintiff’s mark.
The interim injunction had been granted on the ground that the defendants had violated plaintiff’s rights in the mark CORONIL under Section 29(4) of the Trade Marks Act, 1999. It was also claimed by the plaintiff that the actions of the defendants would not come within the purview of the defense of bona fide description of the character or quality of goods, as the defendants were not using the mark in accordance with honest practices in industrial or commercial matters.
Aggrieved by this order, the defendants filed an application for vacation of the said order. In the said application, the defendants alleged that there was no similarity between the Coronil tablet sold by Divya Pharmacy and the chemical products sold by the plaintiff which are used for sanitizing and cleaning heavy industrial machinery and containment units at factories. The defendants, inter alia, claimed that the name “CORONIL” was also justified stating that it is a common practice in the field of pharmaceutical drugs to name the drug after the ailment/organ/medical compound.
Plaintiff contended, based on the packaging of the defendants’ product which featured the popular image of the Coronavirus, that while the defendants’ product was meant to be only an immunity booster, the actual intention was to mislead the general public into a belief that the tablets were for cure of Coronavirus. Not only was the word ‘Coronil’ used, but also, a pictorial representation of the Coronavirus was imprinted on the label of the box containing the tablets. The plaintiffs further brought to the Courts notice, that in the communication from Ministry of Ayush, it was specifically stated that there was no approval for marketing the defendants’ tablets as a cure for corona virus.
As regards the defendants’ contention that in Section 29(4) of the Trade Marks Act, 1999, the Parliament had actually intended to use the word “well known mark in India” but the enactment contained the words “has a reputation in India”, the Court, interestingly, drew inspiration from a case not related trademark infringement. In the said case of Bostock v. Clayton Country, Georgia, decided on 15.06.2020 and reported in 2020 U.S. LEXIS 3252, the issue was expansion of the terms of a statute relating to prohibition of sex discrimination in employment. The employers had agitated interpreting that sex discrimination based on homosexuality and transgender status should be excluded. It was urged before the Court that a plain reading of the statute should not be applied, and consideration must be given for undesirable policy consequences which would follow. However, it was held that “the place to make new legislation, or address unwanted consequences of old legislation, lies in Congress. When it comes to statutory interpretation, our role is limited to applying the law’s demands as faithfully as we can in the cases that come before us. As judges we possess no special expertise or authority to declare for ourselves what a self-governing people should consider just or wise. And the same judicial humility that requires us to refrain from adding to statutes requires us to refrain from diminishing them.”
It was held that in the earlier Act, namely, Trade Marks Act, 1958, there was no comparative definition since there was no concept of a ‘well known’ trademark. A ‘well known trademark’ simply did not exist in the statute books. It is not mentioned in Section 29 (4)© of the Trade Marks Act, 1999. The words used by the parliament in Section 29(4) are, ‘a mark which “has a reputation in India”’. It is very consciously used. Examining the other statutory provisions, namely Section 11(6) and (7) of the Trade Marks Act, 1999, the Court held that there are a whole gamut of factors to be considered as per which the statute recognizes a trademark as a “well known mark”, then there is a mandatory and statutory limitation placed on the Registrar to protect that mark against the registration of an identical or similar trademark.
The Court then went on to state that Section 29(4)© has been framed with this distinction in mind. Under Section 29(4) of the Trade Marks Act, 1999, protection is granted even when the offending mark is used for a different class of goods. The only pre-condition is that the plaintiff’s mark should have a “reputation in India”. It was held that in order to maintain the sanctity of judicial discipline, the Court could not, by any stretch of imagination, impute words not in the provision or in the statute. Accordingly, it was held that the words in Section 29(4)© are “reputation in India”, nothing more, nothing less.
The Court considered that CORONIL was the word relied on both the plaintiff and defendants in their respective marks. The plaintiff uses it as ‘’Corrosion — Nil’ and defendants used it for ‘Coronavirus — Nil’.
The Court noted that permission had not been granted to the defendants to market the product and hold out that it cures corona virus. When it does not cure corona virus, then the defendants could have used any name to signify their product as an immunity booster and market the same to the general public rather than play upon the fear and panic among the public by introducing a product ostensibly to cure Coronavirus, when as a fact, it does not and later stating it is an immunity booster. It was also held that this stand was contrary to their statement that the defendants had a due cause to adopt the mark.
The Court further noted, “It must be kept in mind, that there is no cure for Coronavirus anywhere in the world as on date. People are dying. In these tragic times, the defendants seek to make money, money, money. They seek to exploit the fear among the people by projecting that they could cure Coronavirus. There is no cause much less due cause, and much less just cause to permit the defendants from using the word ‘Coronil”
Further, it was held that “the defendants have repeatedly projected that they are 10,000 Crores company. However, they are still chasing further profits by exploiting the fear and panic among the general public by projecting a cure for the Coronavirus, when actually their ‘Coronil Tablet’ is not a cure but rather an immunity booster for cough, cold and fever. The defendants must realize that there are organizations which are helping the people in this critical period without seeking recognition and it would only be appropriate that they are made to pay costs to them”.
Accordingly, the Court dismissed the applications filed by the defendants and imposed costs to the tune of INR 10,00,000 upon the defendants of which INR 5,00,000 to be paid to the Dean, Adyan Cancer Institute and remaining INR 5,00,000 to the Dean, Government Yoga and Naturopathy Medical College & Hospital, the organizations in which free of costs treatments are afforded.
Aggrieved by the above order passed by the Madras High Court, the appellant, Pathanjali Ayurved Limited & Anr., filed an appeal. Before the Division Bench of the Madras High Court, the appellant/defendant contended that the product of respondent/plaintiff are not similar and in fact, six other parties are marketing the tablets by using the name CORONIL, and there is no likelihood of creating any confusion in the minds of the consumers with regard to these two products by using the name CORONIL. On the contrary, the respondent contended that a case was being made under Section 29(4) of the Trade Marks Act, 1999, under which protection is granted even when the offending mark is used for a different class of goods and hence, the respondent/plaintiff is entitled for injunction.
Given that the respondent already had the benefit of the interim injunction which had been granted, it was conceded that there is no necessity to grant interim order, as no prejudice will be caused to the appellants/defendants, if the impugned order is allowed to continue pending final hearing of the Original Side Appeal.
In light of this, the impugned order of the learned Single Judge was held to be stayed until the appeal is heard finally. Aggrieved by this a Special Leave Petition was filed by the plaintiff.[2] However, the Hon’ble Supreme Court refused to interfere with the Division Bench’s stay order, leaving the matter to be disposed-off by the High Court in the final hearing scheduled on 30th September.
Given the above-noted turn of events and the fact that it appears that both parties in this suit are heavily invested in their respective marks, it will be interesting to see how this litigation proceeds.
[1] M/s. Arudra Engineers Private Limited v. M/s. Pathanjali Ayurved Limited & Anr., CS №163 of 2020, Madras High Court
[2] Arudra Engineers Pvt. Ltd. v. M/s Pathanjali Ayurved Limited & Anr. Petition(s) for Special Leave to Appeal © No(s). 9746/2020, Supreme Court of India
