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2019 Supreme(Del) 535
IN THE HIGH COURT OF DELHI AT NEW DELHI
S. RAVINDRA BHAT, PRATEEK JALAN, JJ.
Disposafe Health and Life Care Ltd. and Another – Appellants
Versus
Hindustan Syringes and Medical Devices Ltd. – Respondent
First Appeal From Order (OS) (Comm) Nos. 269, 272 of 2018, Caveat Nos. 1074, 1079 of 2018, Civil Miscellaneous Application Nos. 48680, 48681, 48934, 48935 of 2018
Decided On : 03-05-2019
Amit Sibal, Hemant Daswani, Soham Kumar, Aisvary Vikram, Saksham Dhingra, Peeyosh Kalra, V. Mohini, Udayvir Rana.
A generic word cannot be exclusively claimed by any person and an injunction will not be granted to restrain the use of such a word.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - GENERIC WORDS - DESCRIPTIVE WORDS - SECONDARY MEANING - INJUNCTION - INTERIM INJUNCTION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - DELAY AND LACHES - ACQUIESCENCE - ESTOPPEL - TRADE MARKS ACT, 1999 - SECTION 17 - SECTION 30 - SECTION 35 - SECTION 9(1)(B).
Fact of the Case:
Disposafe Health & Lifecare Ltd (DHL) and Disposafe Healthcare (P) Ltd (DHPL) (collectively referred to as "DH") filed a suit against Hindustan Syringes and Medical Devices Ltd. (Hindustan) for infringement of trademark and passing off. DH claimed that it was the leading manufacturer and trader of medical, surgical instruments and appliances, sold under the trademarks and is a proprietor of the trademark DISPOSAFE. Hindustan, in its suit, claimed to being a leading manufacturer and trader of medical and surgical instruments and appliances sold under various trademarks. It alleged to launching, in 1986, its medical and surgical instruments and appliances under the mark DISPOVAN and which has been, extensively and regularly used since then.
Finding of the Court:
The court held that the word "DISPO" is a generic word and cannot be exclusively claimed by any person. It is a portmanteau word, which is a word that results from blending two or more words, or parts of words, such that the portmanteau word expresses some combination of the meaning of its parts. The court also held that the trademark DISPOCANN and DISPOVAN are registered trademarks of Hindustan and DH cannot use these marks. However, the court refused to grant an injunction restraining DH from using the mark DISPOSAFE, as it held that the mark is generic and descriptive and has not acquired a secondary meaning.
Issues: 1. Whether the word "DISPO" is a generic word and can be exclusively claimed by any person? 2. Whether the trademarks DISPOCANN and DISPOVAN are registered trademarks of Hindustan and DH can use these marks? 3. Whether an injunction should be granted restraining DH from using the mark DISPOSAFE?
Ratio Decidendi: 1. The court held that the word "DISPO" is a generic word and cannot be exclusively claimed by any person. It is a portmanteau word, which is a word that results from blending two or more words, or parts of words, such that the portmanteau word expresses some combination of the meaning of its parts. The court also held that the trademark DISPOCANN and DISPOVAN are registered trademarks of Hindustan and DH cannot use these marks. However, the court refused to grant an injunction restraining DH from using the mark DISPOSAFE, as it held that the mark is generic and descriptive and has not acquired a secondary meaning. 2. The court held that the word "DISPO" is a generic word and cannot be exclusively claimed by any person. It is a portmanteau word, which is a word that results from blending two or more words, or parts of words, such that the portmanteau word expresses some combination of the meaning of its parts. The court also held that the trademark DISPOCANN and DISPOVAN are registered trademarks of Hindustan and DH cannot use these marks. However, the court refused to grant an injunction restraining DH from using the mark DISPOSAFE, as it held that the mark is generic and descriptive and has not acquired a secondary meaning.
Final Decision: The appeals are partly allowed in the above terms. No costs.
S. RAVINDRA BHAT, J.
1. This judgment will dispose of two appeals, FAO (OS) (Comm) 272/2018 is preferred by Disposafe Health & Lifecare Ltd (DHL) and Disposafe Healthcare (P) Ltd (DHPL) both collectively referred to hereafter as "DH" it challenges the denial of injunction in a commercial suit (IA 2618/2016, filed in C.S. (Comm.) 139/2016 which is referred to as "the first suit" or "the DH suit"). The learned single judge denied the interim injunction which DH claimed in the first suit, against Hindustan Syringes and Medical Devices Ltd. (hereafter "Hindustan"). FAO 269/2018 is also preferred by DHL and DHPL against the interim injunction granted in C.S. (Comm) 1494/2016 (hereafter "the second suit") preferred by Hindustan. DH, its assignees, successors-in-interest, licensees, franchisee, partners, directors, representatives etc. were restrained from using the trade mark DISPOCAN and other DISPO formative marks identical to and/or similar to Hindustan's trade marks DISPOVAN and DISPOCANN singularly or in conjunction with any other word or monogram/logo or label in any manner whatsoever. The impugned order was to be operative after four weeks i.e. till November 28, 2018.
2. Dh was incorporated in the year, 2007 under the Indian Companies Act, 1956. It sells medical disposable devices such as I.V. Cannulas, three way Stop Cock, Injection Stopper, Nebulizers, Blood Lancets, Nebulizer Face Masks, Oxygen Masks under the trade name and/or trade marks Disposafe Health and Life Care Limited and Disposafe Health Care Private Limited for which the DH companies had applied for trade mark registrations which are still pending before the Registrar.
3. The first suit claimed that DH collectively were leading manufacturers and traders of medical, surgical instruments and appliances, sold under the trademarks and is a proprietor of the trademark DISPOSAFE. Both plaintiffs were incorporated in 2007; they have been continuously using the mark in relation to their goods, (i.e. Nebulizers since 2011 and IV cannulas etc. since 2013). It is alleged that the word mark DISPOSAFE has been used not only commercially, but also in international fairs and other such events (in Dubai, Germany, Brazil, USA etc) so that it gained publicity and prominence. It also alleged that its open and continuous use of the mark is backed up by its sales of the products, with the DISPOSAFE mark. Furthermore, it also alleged that it spent substantial amounts towards construction of its plant and manufacturing facilities and had been sanctioned loans from public banks, to the tune of over Rs. 48 crores. It launched a website www.disposafe.com in 2007. DH alleged that its healthy marketing strategies led to its becoming the only company in India in the medical disposable devices field to achieve a turnover of more than Rs. 18 crores within the first eight months of its commercial sales activities. It also submits that it is member of an association since 2013, namely Association of Indian Medical Device Industry (herein referred to as "AIMED") having its office at GL-3, Ashoka Estate, 24, Barakhamba Road, New Delhi and that the defendant/Hindustan's Rajiv Nath is the forum coordinator of that association. DH claimed to acquiring a reputation as manufacturer and seller of safe medical devices and its sales have steadily increased; it also claims to be member of various trade associations and that it possesses clearances from various authorities, such as drug control office, etc. The application for its mark Disposafe For Healthy Living has been pending in the Trademark Registry, since July 25, 2013. Similarly, its claim for registration of Disposafe For Safe Lancets is pending from the same date.
4. Dh claims to have noticed on February 17, 2016, while browsing the records of the Trade Marks Register on the internet, coming across the impugned trade mark DISPOSAFE of Hindustan which applied for registration of the impugned trade mark DISPOSAFE under the application numbe
