Commercial Courts lack extraterritorial jurisdiction; injunctions apply only within India
Introduction:
The case concerns a trademark dispute between Remedi Healthcare India Pvt Ltd and Neurosynaptic Communications Pvt Ltd over the trademark "Remedi" in the medical and healthcare industry. The Commercial Court granted an interim injunction in favor of Neurosynaptic Communications Pvt Ltd, restraining the appellants from using the trademark "Remedi."
The appellants challenged this order under Section 13(1A) of the Commercial Courts Act, 2015, arguing that the injunction was unwarranted and that their application under Section 124 of the Trade Marks Act, 1999, for challenging the validity of the respondent's trademark, was wrongly dismissed.
Detailed Factual Background:
The appellants, Remedi Healthcare India Pvt Ltd, are an Indian subsidiary of Remedi, Inc., a South Korean company engaged in providing medical equipment and services.
They claimed to have been using the trademark "Remedi" since 2012 on sophisticated medical devices. The respondent, Neurosynaptic Communications Pvt Ltd, operates in medical diagnostics and telemedicine services and had registered the trademark "Remedi" under Class 10 for diagnostic apparatus in India on 2 April 2019.
The respondent had alerted the appellants about their registered trademark when the appellants incorporated their Indian subsidiary in September 2023.
However, the appellants continued using the "Remedi" mark. The respondent then filed a commercial suit (Com O.S. No. 111/2024) before the Additional District and Sessions Judge (Commercial Court Division), Bengaluru Rural District, seeking:
A permanent injunction against the appellants' use of "Remedi."
Damages for trademark infringement.
A declaration that the appellants were passing off their goods as those of the respondent.
Detailed Procedural Background:
1. The respondent filed Com O.S. No. 111/2024, claiming trademark infringement and passing off.
2. The Commercial Court granted an interim injunction on 6 July 2024, preventing the appellants from using the "Remedi" trademark.
3. The appellants filed I.A. Nos. 5 and 7 under Section 124 of the Trade Marks Act, 1999, seeking a stay of proceedings to challenge the validity of the respondent’s trademark before the appropriate authority.
4. The Commercial Court dismissed the Section 124 application, holding that the validity challenge was not prima facie tenable and that the interim injunction should remain in effect.
5. The appellants filed the present Commercial Appeal before the Karnataka High Court, challenging both the grant of injunction and the dismissal of their Section 124 application.
Issues Involved in the Case
1. Whether the Commercial Court erred in granting an interim injunction against the appellants' use of "Remedi."
2. Whether the Commercial Court erred in rejecting the appellants’ application under Section 124 of the Trade Marks Act, 1999.
3. Whether the appellants' claim of prior global use of "Remedi" since 2012 justified lifting the injunction.
4. Whether the Commercial Court’s injunction extended beyond India’s territorial jurisdiction.
Detailed Submission of Parties:
Appellants (Remedi Healthcare India Pvt Ltd) argued that:
They had been using the "Remedi" trademark since 2012 globally, whereas the respondent's registration only dates back to 2019.
The respondent's application for trademark registration in Class 10 had been abandoned earlier, making the later grant of registration potentially invalid.
There was no likelihood of confusion between their sophisticated medical devices and the respondent's diagnostic services.
The respondent had approached the court with unclean hands, failing to disclose relevant facts.
The injunction should not apply outside India since the appellants are registered in Korea and have a global presence.
Respondent (Neurosynaptic Communications Pvt Ltd) argued that:
Their trademark "Remedi" was registered in India on 2 April 2019, and they had been using it since 2004.
The appellants incorporated their Indian subsidiary only in September 2023, after being explicitly warned of the trademark conflict.
Under Indian trademark law, registration grants exclusive rights, making the appellants' prior international use irrelevant for operations within India.
Even if a validity challenge was raised under Section 124, Section 124(5) allows the court to grant an injunction while the validity issue is pending.
Detailed Discussion on Judgments Cited by Parties
The appellants relied on:
Google LLC v. MakeMyTrip (India) Pvt Ltd (2023 FAO(OS) COMM Nos. 147/2022 & 148/2022) – Holding that mere registration does not automatically grant exclusivity if prior use can be proven.
Khoday Distilleries Ltd v. Scotch Whisky Association (2008) 10 SCC 723 – Holding that prior user rights prevail over subsequent registration.
Paramount Surgimed Ltd v. Paramount Bed India Pvt Ltd (2017 SCC OnLine Del 8728) – Holding that likelihood of confusion must be assessed based on market realities.
The respondent relied on:
Midas Hygiene Industries (P) Ltd v. Sudhir Bhattia (2004) 3 SCC 90 – Holding that injunctions in trademark cases must be granted to protect registered proprietors.
Neon Laboratories Ltd v. Medical Technologies Ltd (2016) 2 SCC 672 – Holding that registration gives statutory rights over common law claims of prior use.
Wander Ltd v. Antox India P Ltd (1990 Supp SCC 727) – Holding that appellate courts should not interfere with injunctions unless they are perverse or arbitrary.
Detailed Reasoning and Analysis of Judges:
The Karnataka High Court held that:
The respondent had established prior and continuous use of the "Remedi" mark since 2004.
The appellants failed to prove actual commercial use of "Remedi" in India before 2023.
Section 124(5) of the Trade Marks Act allows an injunction even if a validity challenge is raised.
The Commercial Court acted within its jurisdiction in granting the injunction.
However, the injunction cannot extend beyond India, as the Commercial Court lacks extraterritorial jurisdiction.
Final Decision:
The Commercial Appeal was dismissed, and the injunction was upheld for India.
The High Court clarified that the injunction does not apply outside India.
No costs were awarded.
Law Settled in This Case:
Registered trademark holders are entitled to injunctive relief against infringers.
Prior use claims must be substantiated with evidence of commercial use in India.
Courts can grant injunctions even when a validity challenge is pending under Section 124(5).
Commercial Courts lack extraterritorial jurisdiction; injunctions apply only within India.
Case Title: Remedi Healthcare India Pvt Ltd vs Neurosynaptic Communications Pvt Ltd
Date of Order: 31 August 2024
Case No.: Commercial Appeal No. 264 of 2024
Name of Court: High Court of Karnataka at Bengaluru
Name of Judge: Hon’ble Mrs. Justice Anu Sivaram and Hon’ble Mr. Justice G. Basavaraja
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
