Mankind Pharma Ltd vs Cadila Pharmaceuticals Ltd And ...
2015 Latest Caselaw 635 Del

*   IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                  Judgment reserved on : 15.01.2015
                                  Judgment delivered on : 22.01.2015

+   CS(OS) 2047/2014
    MANKIND PHARMA LTD
                                                                ..... Plaintiff
                         Through        Mr.Amit Sibal, Sr. Advocate with
                                        Mr.Hemant Daswani, Mr.Harsh
                                        Vardhan, Mr.Niloy Dasgupta, Mr.
                                        Anirban Sen and Mr.Namit Suri,
                                        Advocates.

                         versus

    CADILA PHARMACEUTICALS LTD AND ORS
                                      ..... Defendants
                         Through        Mr.Manish Kumar Choudhary
                                        and Mr.C.S.Patney, Advocates.

    INDERMEET KAUR, J.

I.A.No. 12676/2014 (XXXIX Rules 1 & 2 CPC)

1 Plaintiff, a duly incorporated company, is stated to be a

reputed manufacturer and merchant of vide range of

pharmaceutical, neutraceutical, veterinary and cosmetics

preparations in India sold under its various well-known

distinctive trademarks including MANKIND. This trademark

was adopted by the plaintiff in the year 1986. Although it is a

dictionary word but the plaintiff company was the first in India to

introduce the word in the market by virtue of qualitative,

affordable pharmaceuticals. Prior to the plaintiff‟s group of

companies there existed no trade name/brand name in the Indian

industries particularly in the pharmaceutical companies by the

word „KIND" let alone "MANKIND". The plaintiff has more

than 150 registration of the trademark of MANKIND and/or

KIND either with a suffix or prefix attached to it. (Attention has

been drawn to the said registration marks.) The plaintiff group is

selling all its products extensively under the aforenoted trade

name MANKIND and has more than 107 different products in

the market. It has acquired a goodwill and reputation of a highest

character. The presence of the plaintiff has been crystallized in

the every nook and corner of the country. Its products are well

advertised in all well-known journals including Debonair,

Filmfare, Femina, Grahasobha, Sarita, Saras, Salil etc. The

goodwill and reputation of the mark of the plaintiff MANKIND is

distinctive being a symbol of its high quality product. Plaintiff is

also registered with the mark METROKIND under registration

no.1204934 on 09.6.2003. The goods sold under the mark

METROKIND are with respect to a composition Metronidazone

i.e. an anti-infective medication used in the treatment of

infections.

2 The defendant has started using the mark MECOKIND

PLUS which is deceptively similar and almost identical with the

trade name „METROKIND‟ of the plaintiff. Enquiry had

revealed that the defendant does not have a registration but had

applied before the Registrar of Trademarks for registration of the

trademark MECOKIND which is pending since 29.3.2013. The

product of the defendant is also for a medicinal purpose which is

a non-scheduled drug and not being a schedule H drug, it is

available at the counter without a prescription.

3 Submission in the application being that the mark of the

defendant is deceptively similar to the mark of the plaintiff as

MECOKIND PLUS is not only phonetically and structurally

similar to the registered trademark METROKIND of the plaintiff

but keeping in view the fact that both the products are being sold

by the chemist being a pharmaceutical product across the counter,

there is every possibility of confusion and deception qua the

purchase of such a product by the consumer.

4 Learned senior counsel for the plaintiff in support of his

submissions has placed reliance upon MANU/MH/1633/2014

Neon Laboratories Ltd. Vs. Themis Medicate Ltd. MIPR 2010(2)

25 Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. Vs.

Shree Sita Chawal Udyog Mill, MIPR 2010 (1) 44 Novartis AG

Vs. Crest Pharma Pvt. Ltd. And Anr and (2001) 5 SCC 73 Cadila

Health Care Ld. Vs. Cadila Pharmaceuticals Ltd; submission

being that in the sale pharmaceutical products stricter standards

have to be applied to prevent likelihood of confusion as

consumption of such a product could even result in a physical

harm to the consuming public. Accordingly, an injunction has

been prayed seeking a restraint upon the defendant from using the

aforenoted mark MECOKIND PLUS.

5 Reply to the pending application and written statement to

the suit have been filed. Submission of the defendant is that the

product sold under the name MECOKIND PLUS is available in

either a capsule, tablet or an injection form whereas

METROKIND which is the mark of the plaintiff under which his

products are sold is available as an ointment and there is no scope

of deception. Defendant product is sold under the name

MECOKIND PLUS which is distinctively different from the

product of the plaintiff which is sold under the trade name

METROKIND; METROKIND is an ointment and can be used for

an external purpose alone; the product of the defendants i.e.

MECOKIND PLUS has to be ingested being a capsule, tablet/

injection. Even otherwise the word KIND/MANKIND is generic

term and is in public domain. Plaintiff cannot claim monopoly

over the same. He cannot claim himself to be the owner of such

words. It is admitted by the defendant that they have applied for

the registration of mark MECOKIND with the Registrar of

Trademarks and their application is pending since 29.3.2013. It is

denied that the mark of the defendant MECOKIND PLUS is

deceptively similar and identical to the trademark METROKIND

of the plaintiff; the marks are structurally different; the defendant

has adopted the word MECO on account of the active ingredient

"Mecobalamin" as per the Japanese firm Copoeia, and KIND has

been added to make the word fanciful. There is no scope of the

customer/consumer being deceived; the plaintiff on his

product/lable has clearly mentioned that it is for "external use

only"; it is to be used under the medical supervision; it is an

ointment. The product of the defendant is related to a nerve

disorder and at the cost of repetition, since it contains the

ingredients "Mecobalamin" that is why the mark MECO has been

used to which the suffix KIND has been added; the plaintiff has

no ownership over this generic word KIND.

6 Learned counsel for the defendant to support his

submission has placed reliance upon 2001 PTC 601 (Del) Aviat

Chemicals Pvt. Ltd. and Anr. Vs. Intas Pharmaceuticals Ltd.,

2007 (34) PTC 18(Del) Kalindi Medicure Pvt.Ltd. Vs. Intas

Pharmaceuticals Ltd. and Anr. 2010(42) PTC 772 (Del) Schering

Corporation & Ors. Vs. Alkem Laboratories Ltd. as also another

judgment of the Division Bench of this Court reported as in

FAO(OS) 352/2011 IHHR Hospitality Pvt. Ltd. Vs. Bestech India

Pvt. Ltd. decided on 09.5.2012. Submission being that

admittedly, the word KIND has not been registered with the

plaintiff; being a generic word and being publici juris; in no

manner can it be said that the product of the plaintiff is

deceptively similar to the product of the defendant. On all counts

the application is liable to be dismissed.

7 Rejoinder has been filed reiterating the averments made in

the application and denying the averments made in the reply.

8 At the outset, the objection taken by the learned counsel for

the defendant is that certified copies of the certificate of

registration of the plaintiff are not on record; admittedly, only

photocopies are on record. The submission of the learned counsel

for the plaintiff on this score is that there is no serious quarrel to

the admitted fact that the plaintiff in fact has registration over the

mark METROKIND and MANKIND; his submission is that he

has applied for certified copies of the registration certificates but

they are yet to be obtained; they shall be filed in Court as and

when the same are obtained. Reliance has been placed upon a

judgment of Bench of this Court reported as 2010(42) PTC 469

(Del) Ozone Spa Pvt. Ltd. Vs. Ozone Club to support his argument

that where the original/certified copies of the trademark

certificate/registration certificate were not before the Court at the

time of dealing with the application under Order XXXIX Rule 1

and 2 CPC but there being no serious dispute to the fact that the

said marks were registered in favour of the plaintiff, the Court on

the undertaking of the plaintiff that he would produce the original

/certified copies of the documents, as and when the same are

obtained the Court had proceeded to decide the application under

Order XXXIX Rule 1 and 2 CPC noting the admitted position that

the plaintiff did have the mark registered in his favour. In view of

this legal position, learned counsel for the defendant at this stage

does not really press this objection.

9 Another half hearted objection raised by the learned

counsel for the defendant is on the authority of Sanjeev Singh to

sign and verify the plaint. The averments in the plaint have been

perused; the board resolution authorizing Sanjeev Singh to

institute and verify the present proceedings have also been

perused. At this stage there is no merit in this objection of the

defendant.

10 Perusal of the record shows that the plaintiff (MANKIND

Pharma Ltd.) is a company which is manufacturing and selling

various ranges of pharmaceuticals products and has a distinctive

trademark. The trademark MANKIND was registered with the

plaintiff in the year 1986 and this is evident from its registration

certificate. The plaintiff has also placed on record the various

other pharmaceuticals products which it is selling in the market

with the word KIND to which various pre-fixes have been added,

they are DOLOKIND, VITAKIND, AMLOKIND, CALDIKIND

CEFAKIND, MOXIKIND, NUROKIND, RABEKIND,

TELMIKIND, VOMIKIND, ASTHAKIND, DROTIKIND,

FERIKIND, HERPIKIND, MEFKIND, VITAKIND,

ELECTROKIND, LIPIKIND,LOSAKIND, PIOKIND and

TEXAKIND. It‟s turnover is running into several crores. For the

year 2012-13 the cumulative turnover of these products was more

than 1322.52 crores. Submission is that this is by itself indicates

that the plaintiff company has a huge market in the Indian

pharmaceutical industry and the word KIND has been prefixed

with various other words for the sale of the products of the

plaintiff; it has thus become a distinctive mark of the plaintiff.

11 Admittedly, the word KIND is a generic word which finds

mention in the dictionary; however, the submission of the plaintiff

that it is his invention and it was he who has first started using it

for pharmaceutical products, is evident from the fact that the

trademark MANKIND came to be registered in his favour in the

year 1986. His trademark application is of the 3000 series.

Learned counsel for the defendant to contradict this argument of

the learned counsel for the plaintiff has drawn attention of this

Court to the written statement of defendant no.2 where in para 8 it

had been stated that the trademark with the word KIND either as

prefix or as suffix has been used by several other persons and in

fact stood registered in Class-5 (pharmaceutical products) prior in

time to the plaintiff.

12 A perusal of the aforenoted chart however negatives this

argument. This chart shows that the word KIND (used as suffix or

prefix) had been registered for pharmaceutical products (in class

No. 5) for the first time only on the application commencing from

the 6000 series onwards meaning thereby all these parties (relied

upon by the defendants) were registered with the word KIND at a

later point of time than the plaintiff. "SERVICE TO MANKIND

THE WILL TO SERVE which is at serial no.22 (has been

registered in the 8000 series) and vehement attention has been

drawn to the search report of the Trademark Registry (filed by the

defendant) to support a submission that this trademark was being

used by a third party even in the year 1999. Submission of the

plaintiff on this count being that even as per the case of the

defendant this is user of the year 1999 whereas the plaintiff has

been using the word KIND for its products, (which is evident

from its registration certificate of the trademark MANKIND),

since the year 1986.

13 Thus the argument of the learned senior counsel for the

plaintiff that the word „KIND‟ for pharmaceutical products had

been launched and used by the plaintiff for the first time in the

market for sale of pharmaceutical product and is prior user of the

word KIND either as a prefix or as a suffix stands established.

14 The product of the plaintiff is METROKIND. It is an

ointment which comes in a green and white packaging and is used

for a bacterial infection. It is priced at Rs.25.83. The product of

the defendant is MECOKIND PLUS. It has been marketed by the

Cadila Pharmaceuticals Ltd.; it is priced at Rs.95/-. It is either in

tablet form or capsule form or in an injection form. Both the

products are sold over the counter and not being schedule H

drugs, a prescription is not required. The packaging of

„METROKIND‟ is a white green cover whereas „MECOKIND

PLUS‟ has a black cover. The entire word „METROKIND‟ has

been written in capital letters; so also the word „MECOKIND

PLUS‟. All the alphabets not only being in the capital form also

have the same style; all the alphabets are in a straight format.

Defendant appears to have deleted the 3rd and the 4th alphabets i.e.

„T‟ and „R‟ and replaced it with the alphabet „C‟ and added the

word „PLUS‟. The essential features of the trademark of the

plaintiff appear to have been adopted by the defendant. The visual

impact on the two packaging appears to be largely similar.

15 The contention of the defendant that there are other

companies who are also selling medicines with the prefix KIND

and for which three packagings of „RAMIKIND‟, „VOGLIKIND

PLUS‟ and „TELKIND‟ have been placed on record. A perusal of

these three strips (all in tablet form) shows that they have been

manufactured by the same company i.e. Mission Cure Pharma

Pvt. Ltd.; on all these packets, „Mission‟ is more much striking in

comparison with the actual medicinal format whether it is

„RAMIKIND‟, „VOGLIKIND PLUS‟ or „TELKIND‟. These

strips of medicines have also been handed over to the learned

senior counsel for the plaintiff who informs this Court that legal

action has already been initiated by the plaintiff company against

this company namely Mission Cure Pharma Pvt. Ltd.

16 In the judgment of Neon Laboratories Ltd., the plaintiff

who had been registered with the trade marks LOX 2%

ADRENALINE, LOX 4%, LOX HEAVY 5%, LOXALPRIN,

LOXALPRY, LOXIMLA, PLOX AND RILOX had sought

infringement against the defendant‟s user of XYLOX 2%,

XYLOX HEAVY, XYLOX GETL and XYLOX ADRENALINE.

This was for a sale of pharmaceutical products. The Bench of the

Bombay High Court while granting injunction in favour of the

plaintiff had noted that since the plaintiff has adopted a series of

marks „LOX‟, the consumers of the plaintiff‟s products would be

acquainted with the mark; „XYLOX‟ would be assumed to be a

part of the family of the plaintiff‟s series of marks. Relying upon

the pronouncement of the Apex Court in Cadila Healthcare Ltd.

Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 and applying

the test of a common man of average intelligence and imperfect

recollection and noting that the phonetic similarity test is crucial

and probably the principle test, the said Court had noted that the

defendant‟s „XYLOX‟ family of marks was confusing and

deceptively similar to the plaintiff‟s mark „LOX‟ family of marks.

17 The extract of the Apex Court in Cadila Healthcare Ltd. is

also relevant in this context and reads herein as under:-

"A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health."

18 In Kirorimal Kashiram Marketing and Agencies Pvt. Ltd.

Vs. Shree Sita Chawal Udyog Mill2010 (44) PTC 293 (Delhi), the

Court was dealing with the trade mark „Double Deer‟ of the

plaintiff and „Golden Deer‟ of the defendant. The product being

sold under these names was rice. The Division Bench of this

Court had noted that „Deer‟ was the prominent part of the trade

mark of the plaintiff and the use of the word „Golden Deer‟ by the

defendant amounted to a deception and infringement of the

product of the plaintiff. The Court had gone on to examine that

although the word „Deer‟ had been arbitrarily adopted by the

plaintiff with respect to its product being rice and was nowhere

connected with the sale of rice but such an adoption in fact

amounts to a higher degree of protection and particularly so as the

trade mark of the plaintiff was a registered trade mark.

19 In this context, the submission of the learned counsel for

the plaintiff that registration of his trade mark „MANKIND‟ for

the sale of pharmaceutical products and the plaintiff admittedly

having several other registrations either with the prefix or suffix

to the work „KIND‟ and although the „KIND‟ admittedly has no

co-relation with the sale of the pharmaceutical products, the

plaintiff having established his first user of the word „KIND‟ in

the pharmaceutical market, the ratio of this judgment entitles him

to a higher protection for the word „KIND‟ is an argument which

has force. In the instant case the plaintiff is using the word

„KIND‟ with the prefix „MAN‟ since the year 1986; his

registration for the mark „METROKIND‟ is of the year 2003. The

defendant cannot copy the essential/ predominant part of the trade

mark of the plaintiff which in this case is „KIND‟ as admittedly

the plaintiff has a registration for the trade mark „MANKIND‟

from the year 1986 and for „METROKIND‟ since the year 2003

and at the cost of repetition the plaintiff being the prior user in the

market of the word „KIND‟ for sale of pharmaceutical products

stands established by him.

20 The Supreme Court in Kaviraj Pandit Durga Dutt Sharma

Vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980

had quoted with approval the following text:-

"if the essential features of a trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sales show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."

21 The test of phonetic similarity was considered by the

Supreme Court in the case of Amritdhara Pharmacy Vs. Satya

Deo. In this context, the Court had noted as under:-

""an unwary purchaser of average intelligence and imperfect recollection would not split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar' or 'current of Lakshman'. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'. It was emphasized that the whole word had to be considered. It was held that "the overall similarity between the two names in respect of the same description of the goods would likely to cause confusion within the meaning of Section 10(1) of the Trade Marks Act, 1940."

22 Thus it is the overall similarities of the mark which are the

test to decide as to where they can cause confusion to a man of

average intelligence.

23 Pharmaceutical products which are sold over the counter as

in the instant case both the products of the plaintiff and of the

defendant being „non-scheduled drugs‟, they can bought without a

prescription require a stricter, greater and higher standard of care.

24 Admittedly the product of the plaintiff „METROKIND‟ is

an ointment which is used to cure bacterial infections. The

product of the defendant „MECOKIND PLUS‟ is in the form of

tablets/capsules or injection and is prescribed for a nerve disorder.

Such a contention was raised before a Bench of this Court in

Novartis AG Vs. Crest Pharma Pvt. Ltd. and Anr. 2009 (41) PTC

57 (Del).

25 In that case, the contention of the defendant was that the

drug of the plaintiff was prescribed for urinary a respiratory track

infection whereas the defendant‟s product being an antibiotic was

prescribed mostly for post operative cases; ingredients of the two

products were also different and being used in tablet and oral

suspension form, there was no question of any deceptive

similarity between the two. While repelling this contention, a

Bench of this Court relying upon the judgment of Cadila

Healthcare had noted with approval the observations of the

Supreme Court in this context which read herein as under:-

"The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results."

26 The Courts have time and again reiterated that greater care

has to be taken in dealing with medicinal and pharmaceutical

products. The test is to see whether or not there is confusing

similarity in these products even if prescribed and dispensed only

by professionally trained individuals. The medicinal preparation

is to be ultimately consumed in the human body, confusion in

such products can have series consequences for such a patient;

deception in medicines thus at all costs must be avoided. The

Courts have also gone on to say that physicians are not immune

from confusion or mistake. It is also common knowledge that

sometimes an order for medicines is placed on telephone to

pharmacists and chemists and sometimes they are hand-written;

frequently handwriting is not legible. These facts also enhance the

chances of confusion or mistake by the pharmacists or the

chemists when the marks appear so much alike when handwritten

or heard on telephone. Physicians and pharmacists are also human

and being commons with the rest of mankind are subject to

human frailties. The test of a human being of an average

intelligence has to be applied.

27 The judgments relied upon by the learned counsel for the

defendants are all distinct on their facts. In the case of Aviat

Chemicals Pvt. Ltd., a Bench of this Court had noted that the

word „LIPI‟ was a generic common word which had been in use

for the last several years; „LIPICARD‟ had been launched by the

plaintiff much later i.e. in the year 2010 thus not entitling him to

the relief. In Kalindi Medicure Pvt. Ltd., the Court had noted that

pricing of the defendant product was 52 times more than the price

of the product of the plaintiff; being an intra-muscular injection,

there was no other mode of usage; it did not make out a case of

deceptive similarity. The judgment of Schering Corporation

related to the word fragment TEM which was held to be publici

juris and also generic and descriptive of the chemical compound

„TEMOZOLOMIDE‟ the plaintiffs were thus not entitled to the

exclusive user thereof.

28 The plaintiff has made out a prima-facie case in its favour.

The mark of the defendants „MECOKIND PLUS‟ is deceptively

similar with the trademark of the plaintiff. It appears to have

been adopted by the defendant in a malafide manner for which he

has offered no explanation; even presuming „MECO‟ has been

adopted by him being an essential ingredient of

„mecobalamin/methylcobalamin‟ yet the addition of the work

KIND to MECO for which the defendant explains is for the

reason that word KIND is fanciful, appears to be a far-fetched and

dissatisfactory explanation.

29 „METROKIND‟ and „MECOKIND PLUS‟ are also

phonetically similar; a person of ordinary intelligence might well

mistake „METROKIND‟ for „MECOKIND‟. If such a mistake

occurs and a person suffering from a bacterial infection consumes

a tablet for a nerve disorder the result could well be catastrophic

as neither his infection would cure and instead he might have an

adverse reaction, to say the least. Accordingly, this Court is of

the view that a prima-facie case is made out in favour of the

plaintiff for grant of injunction. Irreparable loss and injury would

be caused to the plaintiff if the injunction, as prayed for, is not

granted to him. Balance of convenience is also in its favour.

30 Accordingly, the defendants/their dealer/agents/

associates/directors/partner/employees/servants or assigns are

restrained from using the trade mark „MECOKIND PLUS‟ or any

other mark with the word „KIND‟ which is phonetically or

deceptively similar to that of the plaintiff‟s well-known registered

trade mark „METROKIND‟ and the family of marks with the

prefix/suffix „KIND‟ in relation to medicinal and pharmaceutical

products.

31     Application disposed of.




                                    INDERMEET KAUR, J

JANUARY 22, 2014

A