"No Monopoly Over Coronil"; Madras High Court Sets Aside Order Restraining Patanjali Ayurveda from Using The trademark 'Coronil'

A Division Bench of the Madras High Court has set aside a Single Bench order restraining Patanjali Ayurveda from using the trademark 'Coronil'- the controversial drug that the company initially claimed to be a cure for the deadly Corona virus. The mark 'Coronil' became a subject matter of lis when a Chennai based private company Arudra Engineering moved the High Court claiming rights over it. The company contended that Patanjali was infringing its rights over their registered marks, 'CORONIL-92 B' and 'CORONIL- 213 SPL', both used as chemical preparations in industries. The Single Judge had thereafter granted interim injunction in favour of the Plaintiff, noting that the similarity in the name is "obvious". In appeal, a Division Bench of Justices R Subbiah and C Saravanan was of the opinion that Arudra cannot claim rights over the word "Coronil" as a word mark simpliciter since the company had not claimed monopoly over this word alone. Arudra has rights over a Composite mark Reference was made to Section 17 of the Trade Marks Act, 1999, where under protection is only afforded to the entire trademark as registered, and not to mere parts of the trade mark. The Bench observed, "The above label marks were registered as composite marks. As is evident, these label mark consists of a common device, common word "coronil" and alpha numerals namely "92 B" and "213 SPL" respectively. On the other hand, the defendants used the word "Coronil" as a word mark simpliciter. Though both the registrations of the above labels in favour of the respondent/plaintiff, they were registered with a disclaimer to the alpha numerals namely 92 B and 213 SPL. No monopoly was claimed over the words "Coronil" by the respondent/plaintiff." No monopoly over word Coronil The Bench found that registration of the above labels by Arudra did not confer any exclusive rights over the word "Coronil". It opined that registration of a trade mark does not confer any exclusive right or monopoly over a part of the trade mark so registered. Reliance was placed on Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., where the Supreme Court had held that the distinct label registered as a whole cannot possibly give any exclusive statutory right to the proprietor of the trade mark in close any particular word the name contained therein apart from the mark as a whole. Further, the Division Bench noted that Arudra had neither applied for nor registered the word "coronil" as a word mark even though it was an invented word and prima facie distinctive word. It said, "It was an invented word as there is no word which was known as "coronil". Yet the respondent/plaintiff choose not to apply for registration of the word "coronil". Thus, the respondent/plaintiff''s registration was compromised by the respondent/plaintiff itself and it was satisfied with registration of the composite labels. There was a defect in its birth which was never cured over a period of last 27 years. … when each part of a label mark is capable of being individually registered, we cannot dissect and split up into its component parts and grant an injunction." The Bench stated that if Arudra held an independent registration for the word "Coronil", then it could be said that a suit or an action for infringement of trade mark under the Trade Mark Act, 1999 was maintainable. "It is only thereafter further enquiry under Section 29(4) of the Trade Mark Act, 1999 could have been made by the Court as to ascertain whether the respondent/plaintiff was entitled for further protection. Mere registration of a composite consisting several features namely a device, a word and disclaimed alpha numerals 92 B and 213 SPL cannot any right to file a suit for infringement under Section 29(4) of the Trade Marks Act, 1999," it added. Inter alia, the Bench noted that there was a disclaimer for the alpha numeral 92 B and 213 SPL in the registered label of Arudra. However, there was no disclaimer for the word "coronil" and thus, the company cannot claim monopoly it. Other Findings Though Arudra's label is registered as a trademark and incorporates the word "Coronil", it cannot be said that the word "Coronil" adopted by Patanjali is similar to that of Arudra's registered labels.It would have been different if Arudra had obtained a registration of the word "Coronil" or any other word which was phonetically similar or identical with the aforesaid word. Therefore, it cannot be said that Arudra had established a prima facie case for the purpose of grant of interim relief for the alleged infringement of trademark under Section 29(4) of the Trademarks Act, 1999.Use of the word 'Coronil' in the process of manufacture and sale of a tablet as an immunity booster, will not be detrimental to the distinctive character or repute of the registered trade mark of Arudra. Lastly, the Bench made it clear...

"No Monopoly Over Coronil"; Madras High Court Sets Aside Order Restraining Patanjali Ayurveda from Using The trademark 'Coronil'

Akshita Saxena

Tags