Madras High Court holds ‘Care’ to be generic.

The case note illustrates the inherent difficulty in enforcing rights in a word that is descriptive of services. The Plaintiff, Praba’s V Care Health Clinic Pvt. Ltd (Praba) filed the suit against the Defendant, I-Care Aesthetic Clinic (I-Care), before the Madras High Court alleging trademark infringement, passing off, etc. 

Praba seeks a perpetual injunction restraining I-Care from infringing their registered trademark ‘V CARE’ and any other mark/device/logo deceptively similar to their mark.

Praba in the suit states:

1. They conceived and adopted the mark V-CARE in 1999 in respect of cosmetics, soaps, personal care products, skin care products, body care products, services relating to health care services, medical laboratory services, medical and scientific research, and health-related consulting services, etc. The mark is registered in class 42, and they claim use since 1999 and have several registrations for the mark V-CARE.
2. The wordmark V CARE and the device mark/label in an artistic manner and trade dress including its lettering style, colour scheme, placement of words, etc., is original within the meaning of the Copyright Act.
3. The mark “V CARE” has acquired reputation and goodwill among the trade and public owing to its long usage of over 20 years.
4. Praba noticed that one of their former employees with a malafide intention had commenced cosmetic services under the mark ‘I CARE’ Aesthetic Clinic, which is similar to their trademark/label. The letter ‘I’ is strikingly similar to the letter ‘V’, and the depiction of the word ‘CARE’ in the same manner is enough to demonstrate the malafides. Moreover, there are phonetic similarities between the rival marks.

I-Care filed written statement contending:

1. They are a partnership firm trading under the name ‘I Care Aesthetic Clinic’ and deal with hair replacement, skincare and slim care centre specializing in all types of treatments related to hair, skin & slimming.
2. To create an innovative trading style, they coined and adopted the highly stylized and unique trademark and started using the same in September 2018.
3. The trademark ‘V-CARE’ is not similar to ‘I CARE’, a highly stylized device mark with several other elements attached to it.
4. The word ‘Care’ is used in common parlance in the fields of healthcare and cosmetics. All the parts of the V-CARE trademark are essential features, and this is evidenced by the condition imposed on Praba by the Trademark Registry that they cannot claim exclusive use of the word ‘Care.’
5. Praba has adopted a strategy of dissecting a composite mark to allege infringement and passing-off though there is no deceptive similarity between the rival marks.
6. I-Care also filed an application seeking summary dismissal of the suit on the ground that ‘CARE’ is a common word and it is not distinctive but descriptive. There are large number of marks containing the word ‘Care’ on the Register.

Praba contends that ‘V CARE’ and ‘I CARE’ are phonetically similar as ‘V’ (We), and ‘I’ are pronouns, which usually are inter-placed. Moreover, whether the mark ‘V CARE’ has acquired reputation and goodwill is to be tested through witnesses. Thus, summary judgment of dismissal without examination of witnesses is not possible.

The Court after considering the pleadings, arguments and case laws made the following observations:

• I-Care has pointed out the following differences in the rival marks.
• The hair root around the symbol ‘I’ indicates hair.
• The female face – represents ‘beauty’, which relates to skin-related services.
• The symbol ‘I’ represents slimming.
• On a perusal of the rival marks, it is evident that no phonetic, visual or structural similarity exists. The only common element is ‘Care’, a generic word over which Praba cannot claim exclusivity. Admittedly, even the trademark registration certificate is granted subject to the condition that no exclusive right is claimed over the word ‘Care’. Thus, trademark registration is for the composite words ‘V CARE’.
• I-Care further contends that there are a large number of marks on the Register containing the term ‘Care’ which evidences the fact that the word ‘Care’ is common to the trade. Thus, no person of average intelligence and imperfect recollection is likely to be misled or confused by the rival marks, either juxtaposition or separately seen.
• Considering the above, there is no real prospect for Praba to succeed, and there is no other compelling reason to dispose of the instant suit.

Thus, the Court allowed the application to pass summary judgment and accordingly dismissed the lawsuit.

Authors:

Ranjan Narula
Managing Partner
RNA, Technology and IP Attorneys
Board Member, International Trademark Association (INTA)

Ranjan founded the specialist IP law firm, RNA, in 2004, and is now its Managing Partner. He has twenty seven years’ post qualification experience working on contentious and non-contentious IP and Technology issues. Ranjan has been practicing as an advocate and patent attorney since 1991 handling a wide range of IP, IT and Technology matters including IP management issues, strategic advice on IP clearance, acquisition, and enforcement. Ranjan has worked in-house and in private practice including a stint with international IP practice heading its India operations. In 2019, Ranjan was invited to join the INTA, Board of Directors.

Ranjan has been ranked as a leading IP practitioner by various publications including WTR 1000, IP Star (Managing IP), WIPR leaders, Who’s Who legal, Asia IP experts and others. Ranjan is regularly invited to speak by Universities and chamber of commerce on IP issues. He has authored several articles and papers on key IP issues that are published by IP magazines and blogs such as IAM, World Trade Mark Review, Bloomberg, Lexology, IP Kat etc.

Mohandas Konnanath
Managing Associate

Mohandas Konnanath is a Managing Associate at RNA, IP Attorneys. He joined the bar in 1995. Mohandas is a dual qualified lawyer, India and England and Wales and has obtained his Masters in Intellectual Property Law from Bournemouth University, UK, in 2006. He heads the Chennai operations of the firm and handles litigation, opposition, prosecution matters, attends hearings before the Trademark Registry and Intellectual Property Appellate Board. In his current role, he advices a wide range of clients on contentious and non-contentious IP matters. He also regularly writes and lectures on IP issues.