A question of deceptive similarity of a prominent part of a trade mark cropped up before the Delhi High Court in the case of Max Healthcare Institute Ltd vs Sahrudya Health Care Pvt Ltd. Here, the word 'MAX' was claimed to have been deceptively copied by the defendant. The adoption of the word was made in relation to same services as offered by the plaintiff.
The plaintiff, notably known as Max Hospital, instituted a trade mark infringement suit against the defendant. They claimed that the defendant, who was in the business of healthcare, started using the word 'MAX' by changing the suffix and the rest of the label.
The defendant was previously running a healthcare business under the name of Sunshine Hospital and Mediciti Hospitals. They contended that the plaintiff has registered a label mark, due to which it can only exercise proprietary rights over the entire label and not just a part or words in the label.
The defendant was also argued that Section 17 of the Trade Marks Act safeguards the trademark as a whole i.e., inclusive of all the devices used in a trademark and not parts thereof. And that the word 'MAX' is an abbreviation of the English word maximum, which is an adjective and hence cannot be registered as a trademark exclusively.
This contradicted the defendant's stance as the court prima facie established the plaintiff's right to sue for infringement. The defendant had itself applied for the registration of the disputed word 'MAX' while arguing that the plaintiff cannot own a trade mark over a regular English adjective.
When deciding the issue, the Delhi High Court stated that "the test for infringement of a label / word mark is the test of prominent word of the mark and that adoption of a prominent word in the label / device mark amounts to infringement." In other words, an infringement can take place even if only a part of the label or word mark has been copied. Provided that such part of the label or the word mark is famous and can create confusion even if used in isolation.
Moreover, the defendants could not offer a satisfactory explanation as to why they switched their business name from Sunshine to specifically Maxkure/ Maxcure. The Court went on to observe that the defendants did so merely to ride over the goodwill of the plaintiff.
It is interesting to note that not long ago, the Bombay High Court in the matter of Macleods Pharmaceuticals Ltd. vs Swisskem Healthcare & Anr., made an observation that the prefix and the first syllable of a trade mark plays an important role in determining whether an infringement has taken place or not. The trade marks in question were PANDERM and POLYDERM, which were decided to be different from each other due to their prefixes.
In the immediate case, the court reiterated the importance of a prefix, especially when it is famous and how the human mind perceives and connects brands with their services, without actually paying attention to the whole label.
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