In the realm of intellectual property law, the determination of the relevant
date for proving trademark infringement and passing off claims holds paramount
importance. The recent case of Appolo Burn Hospital vs. Apollo Hospitals
Enterprises Ltd. provides a pertinent context for discussing this issue.
Background of the Case:
The dispute in question arises from a lawsuit filed by the Plaintiff, who is the
owner and operator of the renowned Apollo Hospitals group of medical
establishments. The Plaintiff initiated legal action, alleging trademark
infringement by the Defendant. Central to the case was the Plaintiff's
contention that they had registered various trademarks and trade names, all
containing the term "Apollo," with the Trademark Registry. These registrations
occurred over the period from 2007 to 2020, with the Plaintiff claiming to have
used the mark since as early as 1979.
Crucially, the Plaintiff received an email from a patient of the Defendant's
establishment, Appolo Burn Hospital, on August 30, 2022. This email prompted the
Plaintiff to take legal action. The court's analysis primarily revolved around
the question of when the relevant date for determining trademark infringement
and passing off claims should be.
Determining the Relevant Date:
The cornerstone of this case lies in the determination of the relevant date. The
Court observed that the relevant date should be the one on which the Defendant
entered the market with their business.
It held that, to establish trademark infringement, the Plaintiff must prove
that, on the date when the Defendant commenced its business, the Plaintiff had a
registered trademark. In this instance, the Defendant had been using the name "Appolo"
since 1992 when they operated as an Orthopedic Nursing Home. At that time, the
Plaintiff did not possess a registered trademark for "Apollo." Therefore, the
court concluded that infringement had not occurred.
The court also rejected the allegation of passing off. To establish passing off,
it is crucial for the Plaintiff to demonstrate that, at the time the Defendant
established their hospital, the Plaintiff had already carved a niche for itself
and had gained significant recognition and reputation. In this case, the
Plaintiff failed to provide sufficient evidence of their widespread recognition
and goodwill. Therefore, the court dismissed the passing off claim.
Implications of the Court's Decision:
The decision in the Appolo Burn Hospital case holds several significant
implications for trademark law and intellectual property protection:
Importance of Timely Registration:
The case underscores the necessity of timely trademark registration. Trademark
owners must register their marks before competitors enter the market to ensure
robust protection against infringement claims.
To establish infringement, trademark owners must provide clear evidence of their
registered trademark's existence at the time the alleged infringing activity
Recognition and Reputation:
In passing off cases, it is imperative for the Plaintiff to demonstrate
substantial recognition and goodwill associated with their mark. Mere
registration may not suffice.
Vigilance in Protection:
Delay in initiating legal action can weaken a trademark owner's case. Courts may
view undue delay as acquiescence, which may adversely affect the outcome of the
The Concluding Note:
The Appolo Burn Hospital vs. Apollo Hospitals Enterprises Ltd. case highlights
the critical role of the relevant date in determining trademark infringement and
passing off claims. It emphasizes the necessity of timely trademark
registration, the burden of evidence on the trademark owner, and the requirement
to demonstrate recognition and reputation in passing off cases.
Case Law Discussed:
Case Title: Appolo Burn Hospital Vs Apollo Hospitals Enterprises Ltd.,
Date of Judgement:07/09/2023
Case No. O.A.Nos. 183 & 184 of 2023 in C.S.(Comm Div). No. 54 of 2023
Neutral Citation No: N.A.
Name of Court: Madras High Court
Name of Hon'ble Judge: P.T.Asha, H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539