Madras High Court Reposes faith in ‘Dr Trust’ brand
The case highlights that due diligence must precede business diversification and new brand adoption. The Plaintiff, Nureca Limited (Nureca), filed the suit to restrain the Defendant, Thaker Brothers (Thaker) from using the mark Doctor’s Trust in relation to blood pressure monitors, pulse oximeters, blood glucose meters, infra-red thermometers. Thaker has filed application to set aside the injunction granted in favour of Nureca. The post discusses contention of the parties and the court ruling on similarity of marks. The rival marks are appended below:
Nureca in the suit contended
- They deal in health care and wellness products offering high quality blood pressure monitors, pulse oximeters, blood glucose meters, infra-red thermometers, Electrocardiogram (ECG) machines, etc.
- The mark Dr Trust was adopted by their predecessor in the year 2010. The ‘Dr Trust’ mark is registered in classes 5, 9 and 10 and they also maintain region specific domains drtrust.in and www.drtrustusa.com.
- The mark ‘Dr Trust’ and its variants are in continuous use since 2010 and the products have gained the trust of doctors, medical professionals and home users across the globe including India. The products are available through online e-commerce platforms, such as, Amazon, Flip Cart, Snapdeal, etc., and the trade and public exclusively associate the mark with them.
- In September 2020, they became aware of Thaker selling ‘oxygen concentrator’ in a phonetically identical and deceptively similar mark ‘DOCTOR’S TRUST’ .
- The cease-and-desist letter was not acted upon by Thaker and as the matter could not be amicably settled, Nureca filed the suit.
Thaker in their counter contended:
- They were founded in the year 1980, and were earlier in the business of importing, distributing and wholesale of PVC, resins and polymers under the registered trademarks ‘Thaker’s Gypstrong’ and ‘Orange by Thaker’.
- In March 2020, they diversified their business by entering the market for medical devices. They import oxymeters for distribution and applied for trademark registration under Class 10 for the mark ‘Divine Touch’.
- They shifted focus to other medical devices, such as, blood pressure monitors, digital thermometer, pulse oxymeters, oxygen concentrators etc., and trading in the name ‘Divine Touch’. To evidence the trust of the doctors they coined the trademark ‘Doctor’s Trust’.
- In their application for registration of the mark ‘Doctor’s Trust’, the trademark Registry at the examination stage did not raise objection with regard to any identical/similar mark on the Register. Therefore, they started using the trademark ‘Doctor’s Trust’ in September, 2020.
- Nureca does not have registration for the word mark Dr. TRUST in Class 10. The rival marks are distinguishable by word, font size and style.
- ‘Dr Trust’ is a generic word. The grant of registration to Nureca is subject to conditions and restrictions. The registration in abbreviation ‘Dr’ cannot be equated to the full form and claim protection under the Act.
- No prima facie case is made out and injunction ought to be set aside.
The Madras High Court after considering the pleadings, arguments and case laws held:
- Nureca has valid registration for the mark ‘Dr Trust’ in Class 5, 9 and 10. Thaker’s application for the mark ‘Doctor’s Trust’ is pending in Class 10 and not registered as yet.
- Documents and pleadings show prior use of the mark ‘Dr Trust’ mark by Nureca. The products are also available through online shopping websites. Though the rival marks are visually different they are phonetically similar and the products and trade channels overlap.
- Nureca has a valid registration for ‘Dr Trust’ and its variants and Thaker cannot seek shelter under the defense of ‘descriptive term’.
- Lack of good faith in adoption is evident from the fact that till March 2020, Thaker was dealing in a different business. Soon after pandemic Thaker to market the product has dishonestly adopted the mark ‘Doctor’s Trust’, to ride on the reputation and goodwill built by Nureca in the ‘Dr Trust’ mark. Even though Thaker has a valid registration for the mark ‘Divine Touch’, they are selling products under the name “Doctor’s Trust” which is visually deceptively similar and phonetically identical to Nureca’s mark ‘Dr Trust’. This amounts to infringement.
In light of the above findings the High Court confirmed the injunction in favour of Nureca till disposal of the suit.