Back
2026 Supreme(Online)(Mad) 72680
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Kumaresh Babu, J
HMS MEDICAL SYSTEMS REP BY ITS AUTHORISED SIGNATOR – Appellant
Versus
B JAYAMANI and another – Respondent
OA Nos. 928 & 929 of 2025 | C.S.(COMM.DIV.)No.238 of 2025
For the Appellants/Petitioners: Devi .N
For the Respondents: Ramesh Ganapathy
A registered trade mark holder is entitled to an injunction against a deceptively similar mark, but such an injunction may be made subject to the outcome of a pending rectification application regarding the validity of the mark.
Headnote:(A) Trade Mark Infringement - Deceptive Similarity - A registered trade mark holder is prima facie entitled to protection against the use of a deceptively similar mark by another party. (Para 10)
(B) Descriptive Marks - Exclusive Right - While a mark that is purely descriptive in nature cannot be monopolized, the determination of whether a mark is descriptive or distinctive is a matter for trial and cannot be conclusively decided at the application stage. (Para 11, 12)
(C) Rectification Proceedings - Effect on Injunction - Where a rectification application is pending against a registered trade mark, an interim injunction may be made absolute but must remain subject to the final outcome of the rectification proceedings. (Para 13, 14)
Issues: Whether the ad interim injunction should be made absolute despite a pending rectification application and the respondent's contention that the mark is descriptive.
To grant an ad interim injunction restraining the Respondents, its Partners, men, servants, agents or anyone claiming through or under his from in any manner infringing the Plaintiff’s trade mark HMS DIGILASER which is similar or in any way deceptively similar to or colourable imitation of the defendant’s BMS DIGILASER PRO or any other name/mark which is similar or deceptively similar and identical to the trade mark HMS DIGILASER of the Applicant and in any manner selling and advertising the same for sale, pending disposal of the suit and pass such further or other orders as deemed fit by this Court.
PRAYER in O.A.No.929 of 2025:-
To grant an ad interim injunction restraining the Respondents, its Partners, men, servants, agents or anyone claiming through or under his from in any manner passing off the registered trade mark HMS DIGILASER by adopting and using the mark BMS DIGILASER PRO or any other name/ mark which is similar or deceptively similar and identical to the trade mark HMS DIGILASER of the plaintiff and in manner of passing as and for those of the plaintiff by selling the products and by advertising the same for sale pending disposal of suit and pass such further or other orders as deemed fit by this Court.
In both the O.As:-
For Applicant(s): Ms.Devi .N
For Respondent(s): Mr.Ramesh Ganapathy for RR1 & 2
COMMON ORDER
The present Applications have been filed seeking ad interim injunctions restraining the Respondents, its Partners, men, servants, agents or anyone claiming through or under his from in any manner infringing and passing off Plaintiff/Applicant’s trade mark.
Heard Ms.Devi.N, learned counsel for the applicant and Mr.Ramesh Ganapathy, learned counsel appearing on behalf of the respondents.
Learned counsel appearing for the applicant would submit that the applicant is a leading manufacturer in the medical equipments particularly in the treatment of physiotherapy and electrotherapy. The applicant had been marketing its products under the trade mark DIGILASER which had also been registered with the Registrar of Trade Marks.
While that being so, it had come to the knowledge of the applicant that a product carrying a trade mark DIGILASER PRO which was deceptively similar to the product of the applicant which has a registered trade mark. She would further submit that the said product was also available on an online platform which was removed when it was brought to the intermediatory that there has been an infringement of the plaintiff’s trade mark.
When that being so, the respondent had also filed a Rectification Application in respect of the applicant’s trade mark and the same is pending. She would further rely upon the judgment of the Hon’ble Apex court reported in 2004 (3) SCC 92 to assert the applicant’s right for an infringement. Further for the very same principle she had also relied upon the judgment of the Hon’ble Apex Court in the case of N.R.Dongree and Ors. Vs Whirlpool Corpn. And Ors. reported in 1996 (5) SCC 714 and in the case of Parle Products (P) Ltd., Vs. Respondent: J.P & Co., reported in 1972 (1) SCC 618.
Countering her arguments, Mr.Ramesh Ganapathy, learned counsel for the respondents would submit that the respondent is engaged in manufacture of supply of physiotherapy and electrotherapy equipments from the year 2001. He would submit that the products are only sold in the hospitals, physiotherapy centres, rehabilitation clinics, and by trained healthcare professionals. He would submit that the respondent had independently adopted the “BMS DIGILASER- PRO” as early as in the year 2014 and he would further submit that the term “DIGI” had denoted the Digital Technology and laser based physiotherapy treatment and “PRO” had signified a professional-grade and in that regard an application was also been taken out by the respondent for registration of its trade mark and its pending registration. Thereafter, according to him, the trade mark is not de
