Recently, the Delhi High Court in the case of Mankind Pharma Ltd Vs. Chandra Mani Tiwari and Anr. held that ‘to constitute infringement under Section 29(5), it is required to have the same or identical trade name and merely having a similar or deceptively similar trademark to the registered trademark would not constitute infringement.’
- Mankind Pharma Ltd. (hereinafter referred to as 'the Plaintiff’) was the registered proprietor of the mark ‘MANKIND’ in 42 different classes. It had been using it for three decades by adding prefix or suffix to the elements ‘MANKIND’ and/or ‘KIND’.
- Around November 5, 2016, the Plaintiff, while going through the record of the Trade Marks Registry, found out that the trade name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’ (hereinafter referred to as ‘Defendant No. 2’) belonged to Chandra Mani Tiwari (hereinafter referred to as the ‘Defendant No. 1’), who was the director of Defendant No. 2.
- The Defendant no. 2 was doing business under the trademarks such as ‘MERCYMOX’, ‘MERCYCOUGH’ and ‘MERCYCOPE.
- Cease and Desist letters were sent to the Defendants. However, it refused to comply giving false and frivolous reason.
- Therefore, the Plaintiff instituted a suit against the Defendants before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction to restrain the Defendants 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.
- 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”?
- It was contended that the Defendants were carrying on their business by impersonating themselves to be under the umbrella of the Plaintiff.
- It was contended that the trade name ‘MERCYKIND PHARMACEUTICAL PRIVATE LIMITED’ was deceptively similar to the Plaintiff’s corporate name/trade name ‘MANKIND PHARMA LIMITED’.
- It argued that any trade name in the pharmaceutical company containing the element ‘KIND’ would amount to dilution of the Plaintiff’s well-known trademark and result in infringement and/or passing off the Plaintiff’s reputed trade name ‘MANKIND’.
- It contended that on doing a mere search of the online records of the Registrar of Trade Marks in Class 05 would reveal that there are over 120 trademarks registered 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 or have applied for registration of marks with the suffix ‘KIND’.
- It argued that on seeing its corporate name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’, as a whole, had no deceptive similarity with the Plaintiff’s trademark ‘MANKIND’.
- It further argued that mere presence of a publici juris term ‘KIND’ does not make the marks of the Plaintiff and the Defendant deceptively similar.
- 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 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 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.
- The Court noted that the Plaintiff took a stand ‘ATORVAKIND’ is different from ‘ATORKIND’. This according to the Court was a relevant fact to be considered for the purposes of interim injunction. Therefore, the Court held that since Plaintiff concealed this fact, it was disentitled to any equitable relief.
- The Court analyzed the question that whether the affixation of the name of the Defendant No.2 with the word ‘MERCYKIND’ amount to use as a trade mark for the purposes of Section 29 of the Trade Marks Act, 1999?
- The question was answered by Court in negative. It held that ‘mere affixation of the name of the Defendant No.2 as manufacturer or marketeer 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.’
- The Court also opined that drugs are prescribed by doctors by their generic name and not trade name, and hence the showing of manufacturer’s name in the drug was of not much consequence.
- 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).’
Therefore, distinguishing between cases of infringement by use of ‘trade name’ under Section 29(5) of the Trade Marks Act, and the cases of infringement by use of ‘trademark’ under sub-sections (1) to (4) of Section 29, the Court held that ‘to make out a case of infringement by use of ‘trade name’ under Section 29(5), mere similarity or deceptive similarity with the registered trademark was not sufficient and that there has to be exact use of registered trademark or part of it as the trade name of the business. The test of “similarity or deceptive similarity” was applicable only for cases of infringement by use of ‘trade mark’ covered by sub-sections (1) to (4) of Section 29.’