Introduction
In a recent landmark judgment[1], the Delhi High Court ordered the cancellation of the trademark registration for “NIKIND” in Class 5. The petitioner, Mankind Pharma Ltd., a renowned pharmaceutical company, filed the petition seeking the removal of the impugned trademark, claiming that it infringed upon their well-known trademark “MANKIND” and its associated family of marks with the word “KIND”. The court’s decision highlights the significance of protecting established trademarks and the severe consequences of trademark infringement in India’s intellectual property landscape.
Facts of the Case
The petitioner company is a pharmaceutical company and engaged in the manufacturing and marketing of medicinal, pharmaceutical, and veterinary preparations. The petitioner has been using the trademark “MANKIND” since 1986. The petitioner presented evidence that they held more than 150 registered trademarks, including the word “MANKIND” and/or “KIND” as part of their family of marks. These trademarks covered various classes of goods and services.
The impugned trademark, “NIKIND,” was registered in Class 5 for medicines for human purposes by the respondent, who failed to respond to the petition or appear before the court. Mankind Pharma argued that the impugned trademark was deceptively similar to their registered mark “NIMEKIND” and the family of marks containing the word “KIND.” They contended that the respondent’s use of the mark would create confusion among consumers, dilute their brand reputation, and unfairly trade upon their goodwill.
Issue of the Case
The primary issue in the case was whether the impugned trademark “NIKIND” infringed upon the petitioner’s well-known trademark “MANKIND” and its associated family of marks. Additionally, the court examined whether the impugned trademark should be cancelled for non-use and erroneous registration, as claimed by the petitioner.
Petitioner’s Arguments
Mankind Pharma Ltd. put forth compelling arguments to establish the strength and distinctiveness of their trademarks. They contended that their trademarks, including the word “MANKIND” and/or “KIND,” had acquired the status of well-known trademarks due to their long and continuous usage in the pharmaceutical industry. The petitioner presented extensive evidence, including the registration certificates of their trademarks, turnover figures, and a list of advertisements published in various newspapers, magazines, and news channels across India.
The petitioner emphasized that the impugned trademark “NIKIND” was deceptively similar to their registered mark “NIMEKIND” and the family of marks containing the word “KIND.” They argued that the respondent’s use of the mark would cause confusion among consumers, who associate the word “KIND” exclusively with the petitioner’s products. Moreover, they claimed that the respondent’s adoption of the impugned mark was a deliberate attempt to trade upon the petitioner’s goodwill and reputation.
Judgment
After careful consideration of the petitioner’s arguments and evidence, the Delhi High Court ruled in favour of Mankind Pharma Ltd. The court held that the impugned trademark “NIKIND” infringed upon the petitioner’s well-known trademark “MANKIND” and its associated family of marks. The court found that the respondent’s use of the mark was likely to create confusion and deceive consumers since both parties offered medicines for human purposes in Class 5.
Based on their analysis, the court ordered the cancellation of the impugned trademark registration. The court concluded that the impugned trademark was wrongly registered, lacked a bona fide intention of use.
Conclusion
The Delhi High Court’s judgment in the case of Mankind Pharma Ltd. v. Arvind Kumar Trading and Anr.as a significant milestone in trademark law in India. The ruling reaffirms the importance of safeguarding well-known trademarks and preventing their infringement. It emphasizes that even minor changes to an established mark, such as the addition of a distinguishing family name or characteristic, can lead to confusion and unauthorized exploitation of goodwill.
Trademark owners are now encouraged to diligently protect their trademarks and take legal action against any infringement to maintain their exclusive rights. The court’s decision sets a precedent for future trademark cases, reinforcing the principle of protecting well-established marks in the interest of fair competition and consumer protection.
The judgment also highlights the need for trademark applicants and registrants to exercise caution during the registration process and ensure their marks do not infringe upon existing well-known trademarks. This case serves as a reminder that trademark registration does not guarantee protection if it violates the rights of other established marks.
In conclusion, the Delhi High Court’s cancellation of the trademark registration for “NIKIND” reflects the court’s commitment to upholding the integrity of trademark laws and promoting fair competition in the Indian market. Trademark owners can take this judgment as a precedent to protect their valuable intellectual property rights and deter potential infringers from unauthorized use.
[1] Mankind Pharma Ltd. Vs Arvind Kumar Trading and Anr., C.O. (COMM.IPD-TM) 146/2022
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