LegaLogic Legasee-IPR Newsletter: “Patanjali can’t use Coronil trademark”- Arudra Engineers Pvt. Ltd vs Patanjali Ayurved Ltd.-Sep-2020

Trademark infringement is an unauthorized use of a trademark or service mark which is likely to cause confusion, deception or misunderstanding about the source of the goods and/or services. Patanjali Ayurved Limited (PAL) had launched a product named ‘Coronil Tablet’ holding out that it cures Coronavirus. A trademark infringement suit was filed by Arudra Engineers Private Limited (AEPL) against PAL for infringement of AEPL’s registered trademark bearing the name “Coronil” registered as “Coronil-92 B and Coronil-213 SPL”. The High Court of Madras in M/s. Arudra Engineering Private Limited v. M/s. Patanjali Ayurved Limitedin order O.A. No. 258 of 2020 in C.S.No.163 of 2020 held that AEPL is owner of registered marks “Coronil-92 B and Coronil-213 SPL”. PAL did not establish that their mark ‘Coronil Tablet’ is registered.

The Court held that permission was not granted to PAL to market its product, holding out that it cures Coronavirus but it was only the immunity booster. PAL did not show due cause in naming their product as ‘Coronil’, after Patanjali launched Cornonil, the Union AYUSH Ministry on July 1, 2020 said that PAL can sell the drug only as an immunity booster and not as a cure for COVID-19. Even though the business were altogether different, the stipulation by AEPL’ that use of Coronil mark by PAL amounted to an infringement of AEPL’s registered trademarks, the Court held that if PAL had not checked with the Registry, they were at fault and cannot plead ignorance and innocence and seek indulgence from this court. In the present case, Court allowed permanent injunction and imposed a cost of INR 10 lakhs on PAL. To avoid any infringement suit, it is necessary for applicants to check that the mark which they intend to file should not be visually and phonetically similar to the already filed mark / registered trademark. It is therefore important and advisable before filing application for trademark, to conduct thorough search to avoid future litigation.

GEOGRAPHICAL INDICATION (GI)

A geography indication means a sign used on products which corresponds to a specific geographical origin (e.g., a town, region, or country). They possess certain qualities or a reputation which are due to that origin. In addition, it tells us about the geographical origin and the traditional method of making or manufacturing. GIs are defined, under Article 22(1) of the TRIPS Agreement, as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” GIs are normally applied for agricultural products, foodstuffs, wine and spirit drinks. However, GIs take in ambit not only the agricultural products but also specific qualities of an industrial product that are specifically found in the area, such as specific manufacturing skills, and traditions like handcraft embedded by specific local community. The object of the Geographical Indications of Goods (Registration and Protection) Act, 1999 is three-fold (i) to protect adequately the interest of producers of such goods, (ii) to exclude unauthorized persons from misusing geographical indications and (iii) to promote goods bearing Indian GI in the export market.

What is the difference between a Geographical Indication and a Trademark?

Geographical indication and trademark both are distinctive signs used to distinguish goods or services in the marketplace. Trademark informs consumer about the goods and services source and their origination from a particular company. While Geographical indications are used to recognise goods and services from place of origin which helps consumer to associate a good with a particular quality, characteristic or reputation. For example BMW and Adidas are trademarks, while Scotch Whisky and Darjeeling Tea are geographical indicators.

Protecting Geographical Indications

The Registration and Protection of Geographical Indications in India is based on sui-generis legislation, Geographical Indications of Goods (Registration and Protection) Act, 1999. GIs are type of intellectual property (“IP”) eligible for relief from acts of infringement and/or unfair competition. There are three main ways to protect a geographical indication: • so-called sui generis systems (i.e. special regimes of protection); • using collective or certification marks; and • Methods focusing on business practices, including administrative product approval schemes.

International Protection of Trademark:

International registration of trademarks provides a single procedure for the registration of a mark in several territories. The Madrid System is a route from where applicant can file an international application from India, US or from any member country and designate any of 119 countries which are signatories to the Madrid Protocol. Obtaining international trademark registration through the Madrid Protocol is a three-stage process. Firstly, it is necessary to register a trademark application in home IP office. This is known as the “basic mark”. Applicant can then make an international application to WIPO through home office, choosing which countries applicant wish to designate. Applicant`s home IP office then certifies the application and forwards it to WIPO.

The second stage is where WIPO formally examines trademark. Where the international application complies with all relevant requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send applicant a certificate of international registration and will inform the IP Offices in each territory which applicant have designated. At stage three, each of the IP Offices in the designated territories will go ahead and make a decision as to whether it can register the trademark, in accordance with its own legislation. WIPO will then notify the outcome in each case and will record these decisions in the international register. It is important to keep on using trademarks in each country where they are registered in order to maintain them.