Prior use of a trademark is crucial in determining rights in trademark disputes, emphasizing the need for procedural correctness in trademark registration cases.

1. The present petition has been filed seeking rectification and removal of entry of trademark, , used by respondent no.1, under Registration no. 1340261 in class 42. 2. It is submitted that petitioner no.1-Yashoda Super Speciality Hospital and petitioner no.2-Yashoda Health Care Service Private Limited, are the largest healthcare group in Andhra Pradesh and Telangana operating successfully, fully independent, super specialty hospitals in and around Hyderabad. It is submitted that petitioners have been carrying an old, well established and reputed business of running hospitals, under the name and style ‘Yashoda’.

3. It is further submitted that in order to protect the goodwill and reputation it has earned over the years on the trade name and trademark ‘Yashoda’ and ‘Yashoda Hospitals’, in relation to Hospitals, Nursing, Medical Research, Heathcare, Pharmacy and other allied services, the petitioner has sought registrations of its trademarks with which its chain of Hospitals, Medical Care Centres are being associated, so as to have protection against any illegal use. Thus, the petitioner had registered the following trademarks, under The Trademarks Act, 1999 , which are valid and subsistent:

Mark Number Regd.

Date Class Service Yashoda (word) 1332531 17.10.2006 (later Class Medical, hygienic, health and beauty care services, including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy;

scientific medical and industrial research (label device of bulb) 1390868 18.01.2008 (later Class Medical, hygienic, health and beauty care services, including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy;

scientific medical and industrial research (Logo) 1390869 20.03.2007 (later Class Medical, hygienic, health and beauty care services, including pharmacy services and advice, hospitals and nursing homes, physical therapy and physiotherapy;

scientific medical and industrial research

4. It is submitted that in addition to the above registered trademarks, the petitioner had also registered two logos associated with the words ‘Yashoda Super Speciality Hospital’ vide registration no. A-66390/04 dated 20th February, 2004 and ‘Yashoda’ vide Registration no. A-58888/2001 dated 28th

5. It is submitted that the petitioner came to know in the year 2006, that the respondent no.1 is intending to open an institute under the name of ‘Yashoda’ and issued a cease and desist legal notice dated 12 February, 2001 under the Copyright Act, 1957.

th January, 2006. The respondent no.1 issued reply dated 13th 6. It is further submitted that respondent no.1 was previously called, M/s Shashi Nursing Homes Pvt. Ltd. at the time of its incorporation on 21 February, 2006 to the same, however, the respondent no. 1 was completely silent on the year of adoption of ‘Yashoda’, as a Mark.

st 7. Issue notice. Notice is accepted by learned counsel appearing for the respondents.

June, 1988. Subsequently, the respondent no.1 changed its name to ‘Yashoda Hospital and Research Centre Limited’. It is submitted that respondent was aware of the petitioner and its trademark ‘Yashoda’ and the petitioner is the prior user of the said trademark. Thus, it is submitted that the impugned trademark of respondent no.1 is registered for providing services identical to that of the petitioner. Thus, the present petition has been filed.

8. Learned counsel appearing for the respondents submits that since the record is bulky and various translations need to be done, they may be granted eight weeks’ time to file reply.

9. Accordingly, let reply be filed within a period of eight weeks. 10. Rejoinder thereto, if any, be filed within four weeks, thereafter.

11. Learned counsel appearing for the respondents further submits that the plaintiffs have filed a suit for infringement against the respondents herein, in City Civil Court, Hyderabad. She further submits that no injunction has been granted, in favour of the petitioners, i