JUDGMENT V.K. JAIN, J. IAs No.20886/2012 (O.39. R. 1 & 2 CPC) and 22389/2012 (O 39 R. 4 CPC) 1. The plaintiff is the registered proprietor of the trademark METRO in class 42 in respect of Medical Services: Hospital, Heart Institute, Pharmacy, Health Care, Specialty Hospital, Research Institute and Medical Sciences since 20.04.2007. While seeking registration of the aforesaid mark, the plaintiff claimed user since April, 1997. The second registration held by the plaintiff is also in class 42 and the trademark is Metro Heart Institute registered on 20.04.2007, again claiming user since 02.04.1997. The third trademark registered in favour of the plaintiff-company is Metro Hospital again in Class 42 in respect of Medical Services: Hospital, Heart Institute, Pharmacy, Health Care, Specialty Hospital, Research Institute and Medical Sciences. At the time of this registration also, the plaintiff claimed user since 02.04.1997, however, the registration was restricted by the Trademark Registry to the services in Union Territory of Delhi. 2. There are large number of documents filed by the plaintiff, evidencing use of the name METRO by it in respect of hospital services. It was published in Times of India dated 30.05.1997, that a patient having two holes in his heart had undergone surgery at Noida hospital of the plaintiff. It was reported in Hindu dated 19.08.1997 that a gold stent had been implanted in Metro Hospital, headed by Dr Purshottam Lal, who is its Chief Cardiologist and director of Metro Hospital and Heart Institute. There are various other articles published in newspapers from time to time highlighting the surgery and procedure carried out in the hospital of the plaintiff. Vide order dated 10.06.1997, Chief Commissioner of Income Tax granted exemption to Metro Hospital and Heart Institute of the plaintiff at Noida. Vide letter dated 19.12.1997, Paradeep Phosphates Ltd. empanelled Metro Hospital and Heart Institute. Similar empanelment was given by Punjab & Sind Bank on 18.12.1997, by Canara Bank on 17.12.1997 by NBCC on 22.09.1997, by Indian Oil Corporation on 1.12.1998, by Airports Authority of India on 28.05.1998 and by Uttar Pradesh Financial Corporation on 10.12.1998. 3. Vide letter dated 19.12.1997, Paradeep Phosphates Ltd. empanelled Metro Hospital and Heart Institute. Similar empanelment was given by Punjab & Sind Bank on 18.12.1997, by Canara Bank on 17.12.1997 by NBCC on 22.09.1997, by Indian Oil Corporation on 1.12.1998, by Airports Authority of India on 28.05.1998 and by Uttar Pradesh Financial Corporation on 10.12.1998. 3. The following are the revenues earned and the advertising and promotional expenses incurred by the plaintiff:- Financial Year Revenues Advertising & Promotional Expenses 1997-1998 5,40,06,654 3,10,184 1998-1999 9,34,08,539 7,35,961 1999-2000 12,67,70,802 7,86,057 2000-2001 15,95,14,074 10,61,666 2001-2002 22,8188,894, 13,49,147 2002-2003 36,17,85,901 28,70,757 2003-2004 50,69,97,749 33,65,565 2004-2005 73,94,01,136 36,92,905 2005-2006 87,34,97,248 19,43,528 2006-2007 105,36,61,287 36,14,840 2007-2008 125,01,75,705 45,57,393 2008-2009 162,06,19,360 77,71,328 2009-2010 156,88,38,544 62,91,018 2010-2011 151,71,29,084 63,77,424 2011-2012 181,44,84,017 60,43,959 TOTAL 1196,84,78,994 5,07,71,732 These revenues were earned from Hospital Services being run under the name METRO. 4. The defendants started using a clinic under the name METRO HEALTH CLINIC at Lucknow sometime in the year 2001 and they claim to be running a hospital under the name METRO HOSPITAL & TRAUMA CENTRE at Lucknow in the year 2005. The learned counsel for the defendants states that the first document using the name METRO HOSPITAL which the defendant has been able to locate is a receipt dated 11.07.2006 issued by Nagar Nigam, Lucknow though she has filed documents evidencing use of the name METRO CLINIC and METRO HEALTH CENTRE from 2001 onwards. 5. Since the plaintiff has been able to establish that it is the registered proprietor of the trademark METRO in respect of hospital medical services, hospital heart institute, pharmacy, etc. the defendants have no legal right to use the said name unless it can show that the trademark/trade name METRO was being used by them since prior to 02.04.1997. This is not the case of the defendants that they have been using the trademark/trade name METRO since prior to 02.04.1997. According to them, they adopted and started using the name METRO for the first time in the year 2001. Though the name being used by the defendant is METRO HOSPITAL & TRAUMA CENTRE, that would really make no difference because it is the word METRO which constitutes the core and most essential part of the trademark/trade name being used by the defendant and that exactly is the registered trademark of the plaintiff-company. Though the name being used by the defendant is METRO HOSPITAL & TRAUMA CENTRE, that would really make no difference because it is the word METRO which constitutes the core and most essential part of the trademark/trade name being used by the defendant and that exactly is the registered trademark of the plaintiff-company. The defendant has lifted and is using the whole of the registered trademark of the plaintiff-company and that too in respect of the same services which are covered by the said registered trademark. 6. The learned counsel for the defendants has pointed out that there are number of other hospitals in the country which have obtained registrations of various trademarks, which contain the word METRO as a part of the trademark. Admittedly, the defendants do not held any registration of the trademark/trade name being used by them. It would not be really necessary to take any view in respect of legality or otherwise of such names being used by other persons since they are not in challenge in the present suit. But, mere use of the trademarks, including the word METRO as its part by several other persons does not give any liberty to the defendant to infringe the registered trademark of the plaintiff in respect of the same services which the plaintiff-company is providing under the said mark. Prima facie, there may be a number of reasons for the plaintiff not taking legal action against the user of those marks. Their user may be prior to that of the plaintiff or may not have been in its knowledge. Yet another possibility in this regard is that the plaintiff may not have felt any threat to its business from them. The plaintiff cannot be denied injunction merely because there are other hospitals using the word METRO as a part of their registered trademark. I am satisfied that use of the word METRO as a part of the trade name and trade mark constitutes infringement of registered trademark METRO of the plaintiff. 7. The plaintiff cannot be denied injunction merely because there are other hospitals using the word METRO as a part of their registered trademark. I am satisfied that use of the word METRO as a part of the trade name and trade mark constitutes infringement of registered trademark METRO of the plaintiff. 7. The learned counsel for the defendants submits that since the business of the defendant is confined to Lucknow and it does not propose to enter any city, where the plaintiff has a presence and the defendant would need substantial time even if it were to make some changes in the present name being used by it, suitable time may be granted for this purpose and in the meantime, the defendants may be permitted to continue with the existing name. I, however, find no justification for granting the permission sought by the learned counsel for the defendants. The case of the plaintiff is that theirs is a reputed chain of hospitals and they are running hospital at various places, including Noida, Faridaba, Meerut, Vadodra, Gurgaon and Jaipur. He further states that they are seeking to open new hospitals one in Haridwar in Uttarakhand and the other somewhere in Punjab. The defendants cannot be allowed to continue to take advantage of the reputation which the hospitals of the plaintiff enjoy amongst the public. Any person coming across the hospital of the defendants may, on account of use of the mark METRO, as a part of its trade name/trademark, either presume that this is one of the hospitals being run by the plaintiff or that it has come kind of an association with the plaintiff being its franchise/associate. If the quality of the services provided in the hospital of the defendant is not as good as is the quality of the services being provided in the hospitals of the plaintiff, that is likely to affect the brand name and brand equity which the hospitals of the plaintiff enjoy in this country, besides prejudicially affecting the patients and their family members who make take treatment in the hospital of the defendants on the assumption that they are getting the treatment in one of the hospitals of the plaintiff-company. Therefore, it would be in the interest of the public as well that the defendant is not allowed to use the word METRO as a part of its trade name/trademark. 8. Therefore, it would be in the interest of the public as well that the defendant is not allowed to use the word METRO as a part of its trade name/trademark. 8. Considering all the facts and circumstances of the case, including that the defendant claims to be running this hospital for last about 07 years, in my view, the ends of justice would be met by directing as under:- i. The defendants shall not use their existing name METRO HOSPITAL & TRAUMA CENTRE, but they may use the name “LUCKNOW METRO” provided the words “a unit of Dr.Fahad Islahi & Aamir Islahi” are written just below the mark/name “LUCKNOW METRO”. The letters of the word LUCKNOW wherever used with the word METRO shall not be small in size than the letters of the word METRO. ii. The defendants will put up a sign board at the main entrance of its hospital stating therein that the hospital has no connection with the hospitals of METRO INSTITUTE OF MEDICAL SCIENCES PRIVATE LIMITED. The size of the sign board would be at least 4X7 feet and it would be a well illuminated sign board. iii. The defendants would publish advertisement in one Hindi and one English newspaper widely circulated in Lucknow stating therein that their hospital has no connection with METRO INSTITUTE OF MEDICAL SCIENCES PRIVATE LIMITED and is not its associate or affiliate. iv. The use of the name LUCKNOW METRO would start only after the defendants have fully complied with this order. v. The defendants will keep accounts of the turnover and profits made by them from the hospital being run at Lucknow. Both the applications stand disposed of in terms of this order. CS(OS) 3289/2012 Written statement be filed within four weeks. Replication, if any, can be filed within two weeks thereafter. The parties to appear before Joint Registrar for admission/denial of the documents on 14.02.2013. The matter be listed before Court on 21.03.2013 for framing of issues. Dasti under the signature of Court Master.