In the Nick of Time: Madras High Court Analyses ‘Relevant Date’ in Trademark Infringement Lawsuits


In the domain of intellectual property law, establishing the relevant date for substantiating allegations of trademark infringement and passing off is of utmost significance. A notable contribution to this aspect has been advanced by the Madras High Court in the recent legal proceedings of Appolo Burn Hospital v. Apollo Hospitals Enterprises Ltd. on September 7, 2023.

An Insight into the Factual Matrix

The dispute in question emanates from a legal action initiated by the Plaintiff, who is the proprietor and operator of the well-known group of medical facilities known as Apollo Hospitals. The Plaintiff has alleged trademark infringement by the Defendant as the central issue in this case. The core argument put forth by the Plaintiff is that they have registered several trademarks and trade names containing the term “Apollo” with the Trademark Registry. These registrations span from 2007 to 2020, and the Plaintiff asserts that they have been using this mark as early as 1979. Of significant importance, the Plaintiff received an email from a patient of the Defendant’s establishment, Appolo Burn Hospital, on August 30, 2022, which prompted them to initiate legal proceedings.

Primary Issues Involved

The Court’s examination predominantly centered on the issues of relevant timing for establishing claims of trademark infringement and passing off.

Court’s Observations and Inferences

Determining the Relevant Date

The pivotal aspect of this case hinges on determining the relevant date. The Court’s observation centers on designating the date when the Defendant entered the market with their business as the crucial reference point. It was determined that to establish trademark infringement, Plaintiff needed to demonstrate that, at the time Defendant commenced their business activities, Plaintiff had a registered trademark. In this specific scenario, the Defendant had been utilizing the name “Appolo” since 1992 when they operated as an Orthopedic Nursing Home. At that juncture, the Plaintiff did not possess a registered trademark for “Apollo.” Consequently, the Court concluded that no infringement had taken place. The Court’s verdict underscored that there was no case of trademark infringement since the applicant’s use of the disputed mark in 1992 preceded the registration of the respondent’s mark in 2007.

Acquiescing delay in filing

The Court determined that the applicant had implicitly consented to the situation by delaying the filing of the lawsuit. This delay was evident since their initial hospital was inaugurated in 2009, yet the suit was not initiated until 2023.

Rejecting the Passing off contention

The Court also rejected the allegation of passing off. To establish passing off, it is crucial for Plaintiff to demonstrate that, at the time Defendant established their hospital, 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.

The Court’s Verdict

Based on the aforementioned grounds of discussion, the Madras High Court lifted the interim orders, finding that the respondent could not establish a prima facie case for an injunction. Consequently, the Court dismissed the passing-off claim.

Closing Remarks

The case of Appolo Burn Hospital v. Apollo Hospitals Enterprises Ltd. underscores the pivotal significance of the relevant date in the adjudication of trademark infringement and passing off claims. It underscores the importance of prompt trademark registration, places emphasis on the evidentiary obligations of trademark owners, and highlights the necessity to establish recognition and reputation in passing off cases.

About Tejaswini Kaushal 17 Articles
Ms. Tejaswini Kaushal is a 3rd-year B.A. LL.B. (Hons.) student at Dr. Ram Manohar Lohiya National Law University, Lucknow. She is keenly interested in Intellectual Property Law, Technology Law, and Corporate Law.

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