Delhi High Court Favors Mankind Pharma in Trademark Infringement; Orders Removal of ‘Nikind’ Mark from Trademark Register
Delhi High Court Favors Mankind Pharma in Trademark Infringement; Orders Removal of ‘Nikind’ Mark from Trademark Register
The Delhi High Court by its single judge Justice Amit Bansal has ruled in favor of Mankind Pharma Limited and has ordered the removal of a registered “Nikind” mark from the register of trademarks observing that it was identical and deceptively similar to “Nimekind” mark owned by Indian pharmaceutical and healthcare products company Mankind Pharma Limited.
In the present case, a plea was filed by the Petitioner- Mankind Pharma Limited seeking cancellation or removal of the trademark “Nikind” registered in Class 5 in the name of Arvind Kumar Trading from the Register of Trade Marks.
The Petitioner company claimed that it is the owner of “Mankind” or “Kind” marks and have acquired the status of a well-known trademark in terms of section 2(1)(zg) of the Trademarks Act, 1999 (in short the Act).
The Respondent- Arvind Kumar Trading had registered the mark “Nikind” in respect of medicines for human purpose in class 5. The trademark registration application was filed on 28 February, 2012.
The Petitioner stated that a cease-and-desist notice was issued upon the registered proprietor of the impugned mark which was not replied to.
The petitioner asserted that it had registration of the mark “NIMEKIND” in Class 5 in its favor vide certificate of registration dated 28th September, 2005. The Petitioner argued that impugned trademark was similar to the Petitioner’s similar registered mark “NIMEKIND” and family of marks containing the word “KIND” and therefore, the mark was liable to be removed in terms of Section 11 (1) and (2) of the Act.
Further, it contended that the impugned trademark was liable to be removed for ‘non-use’ in terms of Section 47 (1) (a) and (b) of the Act, as up to three months before the date of application, a continuous period of five years from the date of registration had elapsed, during which period there had been no bonafide use of the impugned trademark in relation to goods for which the registration was granted.
Moreover, the Petitioner proclaimed that it is prior user and owner of the mark “MANKIND” and family of marks containing the word “KIND” and the impugned trademark had been wrongly entered in the Register and therefore, was liable to be cancelled in terms of Section 57 of the Act.
The Court noted that the Petitioner had several registrations granted in its favor with the prefixes to the word “KIND” and hence, had developed a family of marks with the word “KIND” as an essential part of the petitioner’s trademarks.
The judge noted, “Although, the word ‘KIND’ is not related to the products being sold by the petitioner, but due to its long and extensive usage it has come to be exclusively associated with the petitioner and this would entitle the petitioner to a higher protection for the ‘KIND’ family of marks. Merely changing the first part of the mark by use of the distinguishing family ‘name’ (i.e., ‘KIND’ in the present case) or characteristic is likely to cause confusion both in trade and in the mind of public.”
The Court was of the view that the adoption and the use of the impugned trademark ‘NIKIND’ by the respondent no.1, which was very similar to the trademark ‘NIMEKIND’ of the petitioner, was likely to create confusion in the market.
“Not only is the trademark of the respondent no.1 confusingly/deceptively similar to the petitioner’s prior adopted, registered, trademark ‘NIMEKIND’ or family of marks of the petitioner but the nature of the goods of the petitioner and the respondent no.1 are identical i.e., medicines for human purpose falling in Class 5,” the judge remarked.
Hence, it was clear that the adoption of the said mark by the respondent no.1 was with the sole purpose of trading upon the goodwill and reputation of the petitioner. The mark of the respondent no.1 was also likely to deceive unwary consumers of its association with the petitioner.
Therefore, Court opined that the aforesaid registration in favor of the respondent no.1 could not have been granted in terms of Section 11(1) and 11(2) of the Act and was liable to be cancelled under Section 57 of the Act.
