PATANJALI CAN USE THE TRADEMARK “CORONIL” INJUNCTION REFUSED BY MADRAS HIGH COURT – HERE IS WHY?
The Single Bench of Madras high court restrained Patanjali from using the word “Coronil” for their immunity booster product. The company claimed to be a cure for the Novel Coronavirus. The said order was reversed by the division bench on 2nd February 2021, stating that “Elements registered as composite marks cannot claim individual monopoly rights.”
CORONIL VS CORONIL
The Respondent is a private limited company manufacturing material handling systems and polymeric epoxies. They had registered the mark “Coronil- 213 SPL, and Coronil 92-B” in 1993, and the said marks are renewed till 2027. The Appellate Company (Patanjali) started marketing the product in the name of Coronil in 2020. Upon attaining this knowledge, the respondents knocked on the door of the Court to protect their mark.
PATANJALI RESTRAINED FROM USING THE TRADEMARK “CORONIL” BY THE SINGLE JUDGE
The Respondent/Plaintiff Company filed an injunction suit restraining Patanjali to use the word Coronil for the immunity booster against the coronavirus. The respondent claimed that they had coined the term- Coronil, and the same was being used on all their products with different numbers. These were registered as a composite mark, and the use of the word Coronil by the Appellant will infringe their trademark rights if the injunction is denied.
The learned Single bench judge Justice CV Karthikeyan compared both the marks and concluded that the marks were a blatant imitation of each other and granted the injunction in favor of the respondent/plaintiff.
DIVISION BENCH OF HIGH COURT ALLOWS PATANJALI TO USE THE TRADEMARK “CORONIL”
On Appeal, the division bench reversed the Single bench’s decision, gave down a list of observations, and set aside the injunction order passed.
- Word Mark of “Coronil” not registered
- The court observed that the marks were registered as Coronil- 213 SPL and Coronil 92-B as a composite label, and no separate registration was sought for the word “Coronil.” Though the term was coined or invented in the 1990s, the registration was done only for the entire combination of the words, making it a composite mark.
- The above marks were registered as a composite mark, whereas the appellate/ defendants used the words coronil in simpliciter.
- The respondents neither applied nor registered for the word “Coronil” even though it was a prima facie invented and distinguished back then.
- With having the due advantage of registration for the term, respondent compromised their rights and were satisfied with the composite mark itself.
- The registration of the marks being composite, the respondents have no right to claim the monopoly over the simpliciter term “Coronil.”
Case laws Referred in the Judgement :
Registrar of TradeMarks Vs. Ashok Chandra Rakhit Ltd, The distinct label registered as a whole cannot possibly give any exclusive statutory right to the proprietor of the trademark in close any particular word the name contained therein apart from the mark as a whole.
Amritdhara Pharmacy Vs. Satya Deo Gupta– The Court rightly pointed out that “The trademark is the whole thing, the whole word has to be considered.”
Kaviraj Pandit Durga Dutt Sharma V. Navaratha Pharmaceutical Laboratories, the court rightly conferred that “Where common marks are included in the trademarks to be compared or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are common.” To make a stronger opinion, the court also remarked that when each part of a label mark is capable of being individually registered, we cannot dissect and split it up into its parts and grant an injunction.
Though the respondent’s mark consists of the term “Coronil,” it cannot, however, be said that the word adopted by appellant and respondents is the same. The entire mark registered as a whole doesn’t give the respondent’s monopoly rights over the part of the mark. The case would have been different if the registration was sought for the term “Coronil” as well. Therefore, the respondent established no prima facie case, and hence the injunction order was set aside.
The Bottom Line:
“Words marks and Device marks go hand in hand to provide comprehensive protection to your brand.”
It is evident from the given case that the Company and the brand “Coronil”, though being an invented term, lost its rights over the mark because they negligently compromised over registering the brand as a “Wordmark.” Had they not compromised over the registration of the word mark – “Coronil”, they would have received the decision in their favor. It is always important to protect your brand from a 360-degree standpoint, and that is why we recommend prospective trademark proprietors to register their trademark in both word mark and device mark.