Summary
The High Court affirmed that trademark registrations confer protection across India, regardless of geographic scope of operations. In Rainbow Children’s Medicare Limited v. Rainbow Health Care, the court reinstated an interim injunction, finding the defendants’ adoption of the mark dishonest and likely to confuse consumers. It rejected arguments based on delay and prior use, emphasizing settled principles that protect registered rights nationally.
Facts
The appellant-plaintiff, Rainbow Children’s Medicare Limited (RCML), is a leading pediatric and maternity healthcare provider established in 1998. It operates several paediatric multi-speciality, obstetrics and gynaecology hospitals across India under the brand “Rainbow Hospitals”, and owns several registered trademarks for the word “Rainbow” in Classes 42 and 44. In 2022, RCML came across defendants’ listing under the title ‘Rainbow Health Care’ on a few online platforms, and issued a cease and desist notice. The defendants responded by claiming that they were the prior user since 2013, and continued using the marks.
RCML filed a commercial suit in 2023 seeking a permanent injunction and damages against Rainbow Health Care, alleging infringement and passing off of its registered trademarks.
Issues
The Trial Court had framed the following issues:
(1) Whether RCML had made a prima facie case?
(2) Whether RCML proved the balance of convenience in its favor?
(3) Whether RCML proved that if the injunction is not granted it would suffer from irreparable loss?
(4) Whether RCML is entitled to relief of temporary injunction as prayed for?
The Trial Court determined that RCML established the hospital and Bengaluru city in the year 2015, and brought the legal action against the Defendants after 10 years of the commencement of business. Thus, there was no prima facie evidence at the time to show dishonest adaption by the Defendants. Hence, the balance of convenience was in favour of the Defendant, and RCML was not entitled to an injunction.
This order was appealed in the present case.
RMCL’s Submissions
In support of its appeal, RCML submitted that, the impugned order(s) passed by the Trial Court was erroneous both on facts and in law, as it:
- found the appellant has established prima facie case and despite the same, has denied temporary injunction.
- misapplied the law and found that there is no evidence of dishonest adoption of RCML’s registered trademarks since, (i) RCML set up its first hospital in Bengaluru two years after the Defendants and (ii) the Defendants stated that they chose the name ‘Rainbow Healthcare’ since they provide paediatric, obstetric and gynaecological services and children are fascinated by rainbows.
- failed to consider that RCML is the prior user of the registered trademark and has been using the mark ‘Rainbow’ right since 1999 for over two decades. RCML has hospitals across the country as well as a significant online presence and it is a settled law that when a trademark is registered, it is accorded protection across the country and not to a specialized location.
- failed to note that the very fact that Defendants failed to conduct a basic search for existing registered trademarks similar to ‘Rainbow Healthcare’ shows that their adoption was dishonest.
- failed to note that the Defendants’ adoption of the same arbitrary mark, 14 years after RCML commenced its business, must be seen as dishonest prima facie, as rainbows have no direct connection with healthcare services.
- wrongly relied upon the fact that the suit was initiated 10 years after Defendants’ business commenced to find that the balance of convenience and irreparable injury are in favour of Defendants. This ignored well-established law stating that delay in approaching the Court cannot be a ground to deny an interim injunction and when the adoption of the mark itself is dishonest, the adopter cannot be permitted to continue to use the mark.
- failed to appreciate that, RCML has registered trademarks, whereas Defendants have not attempted to secure registration for their tradename ‘Rainbow Healthcare’.
Defendants’ Submissions
Defendants claimed as follows:
- They had been using “Rainbow Health Care” since July 2013, and operating at a remote location away from RCML’s hospitals.
- They claimed honest and bona fide adoption of the name based on their medical specialization and personal fascination with rainbows.
- They cited delay and acquiescence by RCML, as RCML had knowledge of their operations since 2015 based on evidence submitted by RCML, but acted only in 2023, and RCML did not approach the court with clean hands.
High Court Decision and Analysis
The High Court held as follows:
- Trademark Protection is Pan-India:
- As RCML’s registrations contain no geographic or other restrictions, the said registrations offer protection in the entirety of India.
- Geographical presence is not required to assert trademark rights, and RCML has established extensive and continuous use of its trademarks in India.
- Prior Registration Prevails:
- It is a settled position of law that once registration in a trademark exists and there is an infringement of the trademark, the injunction must follow.
- Despite Defendants’ use since 2013, RCML had established registrations prior to 2013 and also prior use since 1998.
- Delay Does Not Bar Injunction: Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. (Relying on Midas Hygiene Industries P. Ltd.). Further, it noted that, acquiescence required a positive assent by the plaintiff, and “cannot be inferred merely by reason of the fact that the plaintiff has not taken any action against the infringement of its rights.”
- Likelihood of Confusion: as both parties provide pediatric services and use the word “Rainbow”, there is high probability of consumers being misled about affiliations.
- Trial Court Error:
- The High Court criticized the Trial Court for failing to apply settled principles and overlooking facts supported by evidence, particularly in light of the similarity of the marks and the services rendered using the marks.
- The High Court cited multiple judgments reinforcing that injunctions are justified where prior trademark rights are infringed.
Final Order
- The Trial Court orders vacating the interim injunction were set aside.
- The original ex-parte ad-interim injunction dated 20 April 2023 was reinstated until final disposal of the suit.
Citation: Rainbow Children’s Medicare Limited v. Rainbow Health Care & Anr., Karnataka High Court, COMAP No.286 of 2024, on 23rd April, 2025, https://indiankanoon.org/doc/199444299/
Author: Ms. Ashwini Arun
Article Review Dr. Kalyan C. Kanakanala
Accessibility Review: Ms. Kavya Sadashivan