Recently Delhi supreme court during a case of Mankind Pharma Ltd Vs Chandra Mani Tiwari and Anr. held that ‘to constitute infringement under Section 29(5), it’s required to possess an equivalent or identical brand name and merely having an identical or deceptively similar trademark to the registered trademark wouldn’t constitute infringement.’
The plaintiff i.e. the Mankind pharma Ltd. was the registered proprietor and is registered in 42 other classes also . It had been using the mark since three decades by adding prefix or suffix to the mark. On November 5 , 2016, Plaintiff found through Trademark registry records that the Defendants were using the brand name “Mercykind Pharmaceuticals Private Limited” and was doing the business under the trademarks like “Mercymox”, “Mercycough” and “Mercycope”.
Cease and Desist notice was sent to the defendants to prevent using the trademark, but an equivalent was refused to comply giving false and frivolous reasons. Therefore Plaintiff instituted the suit against defendants seeking final injunction to restrain the defendants from infringing the plaintiff’s trademark/Trade name “Mankind” and its series of marks with “Kind” and from passing off their business/ goods as that of the plaintiff.
The issue that arose within the case was whether the Defendant is guilty of infringing the Plaintiff’s trademark and spending off of the plaintiff’s goods by using the word “Kind” in his brand name 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 had been further contended that the Defendants brand name “Mercykind Pharmaceuticals Private Limited” is deceptively almost like the mark of Plaintiff “Mankind”. it had been argued that any brand name within the drug company containing the element “Kind” would amount to dilution of the plaintiff’s documented mark and end in infringement or passing off plaintiff’s reputed brand name “Mankind”.
Defendants on the opposite hand contended that mere search of the web records of the registrar of Trademarks in school 5 would reveal that there are over 120 trademark registered or pending, aside from the registrations or applications within the name of the plaintiff, within the name of several other entities/ individuals, each of whm have registered or have applied for registration of marks with suffix “Kind”.
It was further argued that Defendant’s Trademark “Mercykind Pharmaceuticals Private Limited” when taken as an entire is totally different from the Plaintiff’s mark. They argued that mere presence of publici juris term“Kind” within the mark doesn’t make the marks of the plaintiff and Defendant deceptively similar. it had been submitted that the plaintiff isn’t having any trademark registered on their name of the mark “Kind” therefore, mercikind didn’t constitute infringement within the meaning of section 29(5) of the Trademarks Act, 1999.
It was further submitted that the marks Atorkind and Atorvakind are visually, structurally different from one another as admitted by plaintiff itself within the reply to examination report issued on the appliance of the plaintiff for registration of the mark “Atorvakind”, then Mercykind and Mankind can’t be same.
Court considered the very fact that since atokind and Atorvakind aren’t similar, it itself constitutes the relevant fact to be considered for the needs of interim injunction. Therefore, the court held that since the plaintiff concealed this fact, it had been disentitled to any equitable relief.
Court analysed the question of whether the affixation of the name of the Defendant No.2 with the word Mercykind ” amount to use as a trademark for the needs of section 29 of the Trademarks Act, 1999?
The court answered the question in negative, it had been held that “mere affixation of the name of the Defendant No.2 as manufacturer or marketeer of the drugs/medicines sold by the Defendants wouldn’t qualify as a use thereof as a trade mark even under Section 29(6) of the Act.’
Court also opined that drugs are prescribed by the doctors by their generic name and not brand name , and hence the showing of the manufacturer’s name within the drug was of not much consequence.
Therefore, distinguishing between cases of infringement by use of ‘trade name’ under Section 29(5) of the Trade Marks Act, and therefore the cases of infringement by use of ‘trademark’ under sub-sections (1) to (4) of Section 29, the Court held that ‘to figure out a case of infringement by use of ‘trade name’ under Section 29(5), mere similarity or deceptive similarity with the registered trademark wasn’t sufficient which there has got to be exact use of registered trademark or a part of it because the brand name of the business. The test of “similarity or deceptive similarity” was applicable just for cases of infringement by use of ‘trade mark’ covered by sub-sections (1) to (4) of Section 29.’