Madras High Court Declines Interim Relief To Hospital In 'RIO' Trademark Row With Diagnostic Centre

The Madurai bench of the Madras High court has dismissed an appeal filed by Rio Children's Hospital against the refusal of an interim injunction restraining Tirunelveli-based Rio Scans and Labs from using the mark "RIO".

The court held that the parties' rival claims over the trade name could be decided only after a full-fledged trial.

Justice P. Vadamalai upheld a September 2024 order of the Principal District Judge, Madurai. The order had declined interim relief sought by the hospital in a trademark dispute pending since 2022.

"Whether the petitioner has acquiesced right as per Section 33 of the Trade Mark Act or whether the trade mark of the respondent is identical and deceptive, which is an infringement of the petitioner's mark as per Section 29(1) of the Trade Mark Act, can be decided only after a full-fledged trial," the court held.

Rio Children's Hospital claimed it had been using "RIO" as part of its corporate identity since 2013. It pointed to healthcare facilities including Rio Children's Hospital, Rio Mum & Me and Rio Mum & Me Scans.

The hospital contended that Rio Scans and Labs had adopted an identical trade name for services in the medical field. According to it, this caused confusion among the public and diluted its rights in the mark.

Rio Scans and Labs opposed the plea. It argued that "RIO" was a commonly used term. The diagnostic centre also contended that the hospital had failed to establish exclusive use of the mark through documentary evidence.

The court noted that both sides were claiming rights over the trade name "RIO". It recorded that the parties had relied on competing assertions regarding their use of the mark.

The court observed that Section 28 of the Trade Marks Act does not allow one registered proprietor of an identical or similar trademark to assert exclusive rights against another merely because of registration

The court also referred to the Supreme Court's decision in Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra.

The judgment held that generic or descriptive expressions ordinarily cannot be monopolised unless they have acquired a distinct association with a proprietor's goods or services.

"Both sides have not marked any of the documents to establish their prima facie case," the court observed.

The court further recorded the diagnostic centre's contention that the hospital's applications for registration of the "RIO" mark were pending before the trademark authorities. It also noted the contention that the hospital had filed proceedings seeking cancellation of the diagnostic centre's registration.

Finding no infirmity in the trial court's assessment at the interim stage, the High court upheld the order refusing injunction. The appeal was consequently dismissed.

Noting that the suit has been pending since 2022, the court directed the trial court to dispose of it within five months. Both sides were asked to cooperate with the proceedings and avoid seeking unnecessary adjournments.