Delhi High Court - Orders
Novakind Bio Sciences Private Limited vs Mankind Pharma Limited on 5 October, 2023
Author: Yashwant Varma
Bench: Yashwant Varma, Dharmesh Sharma
$~37
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO(OS) (COMM) 212/2023
NOVAKIND BIO SCIENCES PRIVATE LIMITED
..... Appellant
Through: Mr. Sushant Mahapatra, Mr.
Rahul Kumar and Ms. Shruthi
Uppvapali, Advs.
versus
MANKIND PHARMA LIMITED ..... Respondent
Through: Mr. Amit Sibal, Sr. Adv. with
Mr. Hemant Dawani, Ms.
Saumya Bajpai, Mr. Rishabh
Sharma, Mr. Shreyansh
Gautam, and Mr. Saksham
Dhingra, Advs.
CORAM:
HON'BLE MR. JUSTICE YASHWANT VARMA
HON'BLE MR. JUSTICE DHARMESH SHARMA
ORDER
% 05.10.2023 CM APPL. 51452/2023-Ex. & CM APPL. 51511/2023-Ex.
Allowed, subject to all just exceptions.
The applications shall stand disposed of.
FAO(OS) (COMM) 212/2023, CM APPL. 51451/2023-Stay
1. The Defendant has approached us by way of this appeal aggrieved by the impugned order of 07 August 2023, in terms of which the learned Single Judge has proceeded to confirm the ad interim injunction which was granted on 20 April 2021. The operative portion of that order of injunction reads as under:-
"13. Prima facie, the suffix "KIND", being common to all the products of the plaintiff, has attained distinctiveness within This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:29 the meaning of Section 17(2) (b) and Section 32 of the Trademarks Act, 1999. The orders passed by this court in cases involving similar challenges by the plaintiff also underscore this position.
14. The use, by the defendant, of "KIND", as the suffix for its pharmaceutical product, therefore, prima facie, infringes the plaintiffs‟ registered trademark and has the pernicious possibility of confusing or deceiving the public into believing the products of the defendants to be those of the plaintiff.
15. In similar circumstances, this court has, in Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd. and in Mankind Pharma Ltd. v. Sebakind Pvt. Ltd., granted interim injunction in favour of the plaintiff, of which the latter was granted at an ex-parte ad interim stage.
16. Additional seriousness is imbued, to the challenge of the plaintiff, by the fact that the defendant is probably resorting to misrepresentation regarding the registration of its trademarks as well as the location of its registered office, on the body of its products. Given the fact that the products of the defendants are pharmaceutical products, this is a serious matter, and entirely justifies the prayer of the plaintiff for ad interim injunction.
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18. Till the next date of hearing, the defendant is restrained from further manufacturing, either on its own behalf or through any job worker, marketing or clearing, for sale in the market, any pharmaceutical product, bearing the "KIND"
suffix or which may in any other manner infringe the registered trademarks of the plaintiff."
2. The dispute appears to have arisen in the context of the plaintiff/respondent having adopted the trademark „MANKIND‟ since 1986 and having obtained as many as 78 registrations in different classes using the word MANKIND as well as separate prefixes and suffixes as detailed in the plaint. Those registrations are not questioned in the appeal.
3. The suit thus came to be instituted consequent to the appellant using the mark "NOVAKIND BIO SCIENCES PRIVATE LIMITED"
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:29 on various pharmaceutical preparations manufactured and sold by it. The plaintiff/ respondent is stated to have issued a Cease and Desist notice on 25 August 2020 and asserted that "NOVAKIND BIO SCIENCES PRIVATE LIMITED" as adopted by the appellant infringes its registered trademark. The plaintiff also sought an injunction against the use of the mark "DEFZAKIND" for Deflazacort tablets packaged and sold by the defendant.
4. The photographic representation of a tablet strip of DEFZAKIND stands extracted in paragraph 5 of the impugned order, and since the same would have some bearing, it is reproduced hereinbelow:-
5. The learned Single Judge on an examination of the competing marks firstly found that the adoption of „NOVAKIND‟ would clearly This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:30 fall foul of the phonetic similarity test. This is evident from the findings which stand recorded in paragraphs 15 to 17 of the impugned order and which read as follows:
"15. When used for medicinal preparations, the Supreme Court, in Amritdhara Pharmacy v. Satya Deo Gupta, held the marks "AMRITDHARA" and "LAKSHMANDHARA" to be so structurally and phonetically similar as to confuse a customer of average intelligence and imperfect recollection. Mutatis mutandis, it has to be held that the marks "NOVAKIND" and "MANKIND", when used for pharmaceutical preparations, are also confusing, especially as it is not in dispute that the plaintiff uses, for all its products, the suffix "KIND" which has, therefore, become a source identifier of sorts for the plaintiff. Recognizing this fact, a coordinate bench of this Court has, in fact, in Mankind Pharma Ltd v. Cadila Pharmaceuticals Ltd, injuncted the defendant, in that case, from using the mark METROKIND, holding the suffix "KIND" to be a dominant feature of the plaintiff‟s trademarks.
16. The plaintiff has, in its favour, registration of the mark "MANKIND" in every class. Inasmuch as the marks "MANKIND" and "NOVAKIND", even when compared as sole marks, are phonetically deceptively similar, their concluding "KIND" suffix/syllable being the same, the submission of Mr. Mahapatra that the plaintiff does not have any registration for the mark "KIND", fails to impress.
17. Moreover, the plaintiff is not pitching its case on infringement merely on the suffix "KIND". The mark "NOVAKIND", even seen as a whole, is phonetically deceptively similar to the mark "MANKIND". The "KIND" suffix not being endemic to pharmaceutical preparations, there is every likelihood of a customer of average intelligence and imperfect recollection, who chances across the defendant‟s "NOVAKIND" product, to believe it to be one of the KIND family of the marks belonging to the plaintiff. At the very least, therefore, the possibility of an impression of association between the defendant‟s mark and the plaintiff‟s mark, in the mind of the customer of average intelligence and imperfect recollection would exist. Such likelihood of association is statutorily sufficient to constitute the infringement within the meaning of Section 29(2)(b)10 of the Trade Marks This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:30 Act, inasmuch as the two marks are deceptively similar and they are used for identical goods. Where similar marks are used for identical goods, and, owing to similarity of the marks and identity of the goods in respect of which they are used, there is likelihood of association of the defendant‟s mark with the plaintiff‟s, Section 29(2)(b) categorically holds that a case of infringement is made out."
6. Before us, the principal submission which has been addressed centres upon Section 29(5) of the Trade Marks Act, 19991, whereby the learned counsel for the appellant contended that since „NOVAKIND‟ formed part of its corporate name, the allegation of infringement would have to be tested solely on the anvil of that provision and sub-sections (2) to (4) of Section 29 would be wholly inapplicable.
7. While negating that argument, the learned Single Judge has taken a note of the fact that the said contention essentially proceeds on the basis of a judgment rendered by a Full Bench of the High Court of Bombay in Cipla Ltd. v. Cipla Industries Pvt. Ltd.2. The learned Single Judge has noticed the decisions rendered by this Court in Bloomberg Finance LP v. Prafull Saklecha & Ors3 and Novartis AG & Anr v. Novaegis (India) Private Limited4, where an identical question came to be answered against the appellant. The learned Single Judge has thus deferred to the view as expressed in Bloomberg and Novartis.
8. The appellant has in this appeal commended for our consideration the judgment of the Bombay High Court in Cipla and reiterated the submissions which were addressed before the learned 1 the Act 2 2017 SCC Online Bom 6791 3 2013 SCC Online Del 4159 4 2023 SCC Online Del 1123 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:30 Single Judge. We find ourselves unable to accede to the aforenoted submission for the following reasons.
9. As is evident from a reading of Section 29(2) of the Act, a registered trademark stands infringed by a person, who not being a registered proprietor or a person who uses the same by way of permitted use, uses a mark in the course of trade, which because of its identity with the registered trademark and the similarity of goods or services are covered by the registered trademark. In terms of sub- section (2), a case of infringement would also be made out if the mark which is used by the alleged infringer and its similarity to the registered trademark together with the identity of the goods or services covered by such registered trademark is likely to cause confusion.
10. Section 29(4) of the Act sets out three circumstances in which a case of infringement would be established. The said provision too deals with a situation, where a person, who, not being a registered proprietor of the trademark, uses a mark which is identical with or similar to the registered trademark, and which may be used in relation to goods or services which are „not‟ similar to those associated with the registered trademark and where the registered trademark has a reputation in India.
11. It becomes pertinent to note that while sub-section (2) deals with situations where the infringing mark is used in respect of goods or services which bear a similarity to the area in which the registered trademark operates, sub-section (4) extends to those situations where the mark may also be used in relation to goods or services, which may not be similar to those for which the trademark may be registered.
12. Section 29(5) on the other hand, deals with a completely distinct situation and relates to the use of a registered trademark by a This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:30 person as part of his trade name or name of his business concern.
13. It is thus manifest that sub-sections (2), (3), (4) & (5) of Section 29 deal with distinct contingencies and it would be wholly incorrect to view the use of a registered trademark as part of the trade name or name of a business concern being liable to be tested solely on the anvil of Section 29(5). Sub-sections (2), (3) & (4) clearly appear and operate in separate silos.
14. Thus, notwithstanding a deceptively similar adoption of a registered trademark as part of a trade name or the name of a business concern, such acts of infringement would also be liable to be decided on the basis of prescriptions as contained in sub-sections (2), (3) & (4) of Section 29.
15. We thus find no justification to take a view contrary to what was expressed in Bloomberg and Novartis.
16. We consequently find no merit in the instant appeal. The appeal stands dismissed.
YASHWANT VARMA, J.
DHARMESH SHARMA, J.
OCTOBER 5, 2023/kk This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 09/10/2023 at 21:16:30