Mankind Pharma Ltd. Vs. Chandra Mani Tiwari and Ors.
Citation: CS (COMM) No. 100/2017
Decided On: 06.07.2018
Facts of the Case:
The plaintiff has instituted this suit for perpetual injunction to restrain the two defendants, viz. Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd., from infringing the plaintiff’s trade mark/trade name ‘MANKIND’ and series of marks with the suffix/prefix ‘KIND’ and from passing off their business/goods as that of the plaintiff, by adopting and using the trade name ‘MERCYKIND PHARMACEUTICAL PRIVATE LIMITED’ or in any other manner whatsoever thereby and for ancillary reliefs of delivery, rendition of accounts, damages etc. The plaintiff, being the fourth largest pharmaceutical company of the country, is the registered proprietor of the mark ‘MANKIND’ in 42 different classes and has for three decades used numerous marks by adding prefix or suffix to the elements ‘MANKIND’ and/or ‘KIND’ and is also the registered owner of websites with ‘MANKIND’ in their web addresses. Around 5th November, 2016, the plaintiff, while going through the record of the Trade Marks Registry, came across the trade name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’ of the Defendant No. 2. Defendant No. 2 is doing business under the trademarks such as ‘MERCYMOX’, ‘MERCYCOUGH’, MERCYCOPE’. The defendants refused to comply with the cease and desist notice issued prior to the institution of the suit, giving false and frivolous reasons. The Plaintiff contended that trade name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’ is deceptively similar to the plaintiff’s corporate name/trade name ‘MANKIND PHARMA LIMITED’; any trade name in the pharmaceutical industry containing the element ‘KIND’, would amount to dilution of the plaintiff’s well known trade mark and result in infringement and/or passing off the plaintiff’s reputed trade name ‘MANKIND’ and/or family of marks containing the word/element ‘KIND’.
The Defendant contended that mere search on the online records of Registrar of Trade Marks in the relevant Class 05, reveals that there are over 120 trademarks registered and/or pending, other than the registrations or applications in the name of the plaintiff, in the names of several other entities/individuals, each of whom have registered and/or have applied for registration of marks with the suffix ‘KIND’. The defendant further contended that defendants’ corporate name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’, when seen as a whole, has no deceptive similarity with the plaintiff’s trade mark/trade name ‘MANKIND’ and the only common feature is the presence of publicijuris term ‘KIND’. It submitted that, in the course of its business, it coined and adopted several unique, distinctive and eye catchy trademarks with prefix ‘MERCY’ to market its medicinal and pharmaceutical preparations. It was contended that the Plaintiff did not hold any registration for the word ‘KIND’ per se and its trade name ‘MERCYKIND’ did not constitute infringement within the meaning of Section 29(5) of the Trade Marks Act, 1999. It was submitted that if ‘ATORKIND’ and ‘ATORVAKIND’ were visually, structurally and phonetically different, as admitted by the Plaintiff in the reply to the Examination Report of the Registrar of Trade Marks on the application of the Plaintiff for registration of “ATORVAKIND”, then ‘MERCYKIND’ and ‘MANKIND’ cannot be the same.
Issue:
Whether the Defendant is guilty of infringing the Plaintiff’s trademark and passing off of the Plaintiff’s goods by using the word ‘KIND’ in his tradename of “MERCYKIND”?
Judgment:
The question was answered by Court in negative. It held that ‘mere affixation of the name of the Defendant No.2 as manufacturer or marketer of the drugs/medicines sold by the Defendants would not qualify as a use thereof as a trade mark even under Section 29(6) of the Act.’ On the point of violation of Section 29(6) of the Trademarks Act, the Court held that ‘The Legislature, inspite of having used the words ‘identical with, or deceptively similar to’ in Section 29(1) to (4), having used different words in Section 29(5) and having not used such words in Section 29(5), is deemed to have not constituted use as name or part of the name, of a word or mark deceptively similar to the registered trade mark of the Plaintiff, as infringement thereof by the Defendants. What has been constituted as infringement under Section 29(5) is use of the registered trade mark as trade name or part of the trade name. Thus, there would have been infringement under Section 29(5), if the Defendants, as part of their name, had used ‘MANKIND’ or any other registered trade mark of the Plaintiff. Merely because ‘MERCYKIND’ in the name of Defendant No.2 Company may be deceptively similar to ‘MANKIND’ or any other registered trade mark of Plaintiff with ‘KIND’ as prefix or suffix, would not amount to infringement under Section 29(5).
