The importance of a Trademark and the benefits it confers on a business entity cannot in any manner be overlooked. Through a logo or a symbol, a Trade Mark is inherently capable of conveying a company’s reputation or goodwill on a cursory glance made by an average purchaser. Such being the case, any act of imitation of a trademark by a third party can have a detrimental impact to one’s business.

Max – an essential feature?

A dispute arose between Max Healthcare Institute Limited and Shahrudya Health Care Private Limited, the Plaintiffs and Defendants respectively. The Plaintiff is a company, established under a joint venture agreement between Max India Limited and Life Healthcare Corporation and is a pioneer in healthcare services. The healthcare business of the Plaintiff was later transferred to Max India by Max Financial Services Limited (in short MFSL) by virtue of a Demerger. The Trade Mark ‘MAX’ was adopted and used by Max Financial Services Limited and its respective group Companies. The Plaintiff is also the registered proprietor of six label marks bearing the word ‘MAX’. Subsequent knowledge of the defendant carrying on the same business under the mark MAXCURE/MAXKURE HOSPITALS led the Plaintiff to file the instant suit before the Hon’ble Delhi High Court. The subject matter of the dispute revolves around whether –

  • the Defendant has committed an act of infringement;
  • the word ‘MAX’ forms an essential part of the Plaintiff’s mark.

The counsels for the Plaintiff contended that owing to a strong adherence towards the maintenance of high standards of quality, the Plaintiff has earned a substantial amount of goodwill under the trademark/trade name MAX/MAX HEALTHCARE. Thus, the mark establishes a nexus between the services rendered under the said mark with the plaintiff alone and none other. The counsels for the defendant, however, contended that the Plaintiffs cannot claim proprietorship over the word ‘MAX’ and the Plaint does not contain any reference to the word ‘MAX’ being an essential part of their mark.

Findings by the Court

The Court opined that the word ‘MAX’ has been adopted and extensively used by the Plaintiff and its group companies namely – Max Life Insurance Co. Limited, Max Bupa Health Insurance Co.Ltd., Max Healthcare Institute Limited (Plaintiff) and Max Speciality Films Limited. As such the said mark operates not only as a trademark but also as a trade name for various business ventures.

Essential feature – an Integral part of Infringement

The basic principle followed by Courts to decide a case of infringement involving the concept of an essential part of a trademark depends on the facts of the case and the evidences submitted. If a word forming part of a mark has come to associate the goods sold under said mark with its owner, it amounts to infringement of the mark itself when the word is adopted as a mark or part of a mark by another trader. The deceptive similarity between rival marks must be decided not only based on visual, structural and phonetic comparisons but also the nature of goods/services and the purchasing public.

The Court, on drawing reference to the plaint, concluded that the word ‘MAX’ forms an essential feature of the plaintiff’s registered trademarks and the act of the defendant amounts to infringement.

Conclusion

In order to decide infringement, apart from ocular examination, the likelihood of confusion from the perspective of a common man of average intelligence and imperfect memory must also be given equal weight-age. Taking stock of various judgments in the ascertainment of what constitutes infringement of an essential part of a mark, the instant case was also decided on the principle of adjudging similarity by looking beyond visual comparison and into the impression the mark creates in the minds of the general public.

Summary