Delhi High Court
Mankind Pharma Ltd vs Chandra Mani Tiwari & Anr on 6 July, 2018
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 6th July, 2018
+ CS(COMM) No.100/2017
MANKIND PHARMA LTD. .... Plaintiff
Through: Mr. Amit Sibal, Sr. Adv. with Mr.
Namit Suri, Mr. Hemant Daswani,
Ms. Monika Mehalawat and Mr. Niloy
Dasgupta, Advs.
Versus
CHANDRA MANI TIWARI & ANR. ......Defendants
Through: Mr. M.K. Miglani, Mr. Gaurav
Miglani, Ms. Samreen Khan and Ms.
Gunjan Hans, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.1684/2017 (of the plaintiff under Order XXXIX Rules 1&2 of the
Code of Civil Procedure, 1908)
1. The plaintiff has instituted this suit for perpetual injunction to restrain
the two defendants, viz. Chandra Mani Tiwari and Mercykind
Pharmaceuticals Pvt. Ltd., from infringing the plaintiff‟s trade mark / trade
name „MANKIND‟ and series of marks with the suffix / prefix „KIND‟ and
from passing off their business / goods as that of the plaintiff, by adopting
and using the trade name „MERCYKIND PHARMACEUTICAL PRIVATE
LIMITED‟ or in any other manner whatsoever thereby and for ancillary
reliefs of delivery, rendition of accounts, damages etc.
CS(COMM) No.100/2017 Page 1 of 21
2. The suit came up before this Court first on 8 th February, 2017, when
though summons thereof were issued but no ex parte relief granted.
Pleadings have since been completed and the counsels have been heard.
3. It is inter alia the case of the plaintiff, that (i) the plaintiff, being the
fourth largest pharmaceutical company of the country, is the registered
proprietor of the mark „MANKIND‟ in 42 different classes and has for three
decades used numerous marks by adding prefix or suffix to the elements
„MANKIND‟ and / or „KIND‟ and is also the registered owner of websites
with „MANKIND‟ in their web addresses; (ii) around 5th November, 2016,
the plaintiff, while going through the record of the Trade Marks Registry,
came across the trade name „MERCYKIND PHARMACEUTICALS
PRIVATE LIMITED‟ of the defendant no.2; (iii) defendant no.2 is doing
business under the trade marks such as „MERCYMOX‟, „MERCYCOUGH‟,
MERCYCOPE‟; (iv) the defendants refused to comply with the cease and
desist notice issued prior to the institution of the suit, giving false and
frivolous reasons; (v) the defendants are carrying on their business by
impersonating themselves to be under the umbrella of the plaintiff; (vi) the
defendant No.1 Chandra Mani Tiwari, being the founder Director of the
defendant no.2, is one of the former employees of the plaintiff and the other
founder Director and shareholder of the defendant no.2 is the wife of the
defendant no.1 Chandra Mani Tiwari; (vii) the defendant no.1, who served
the plaintiff as Senior Territory Executive from the year 2007 to the year
2014, has in his possession the entire business modules of the plaintiff and is
also liable for breach of his fiduciary duty towards the plaintiff; (viii) the
trade name „MERCYKIND PHARMACEUTICALS PRIVATE LIMITED‟
is deceptively similar to the plaintiff‟s corporate name / trade name
CS(COMM) No.100/2017 Page 2 of 21
„MANKIND PHARMA LIMITED‟; (ix) any trade name in the
pharmaceutical industry containing the element „KIND‟, would amount to
dilution of the plaintiff‟s well known trade mark and result in infringement
and / or passing off the plaintiff‟s reputed trade name „MANKIND‟ and / or
family of marks containing the word/element „KIND‟; (x) use by the
defendants of the trade name „MERCYKIND‟ is deliberate, in order to
acquire benefit of the goodwill and reputation of the plaintiff and to deceive
the public; (xi) the plaintiff, though sells its goods in Maharashtra through
other entities, has no office of its own in Maharashtra where the defendants
are situated.
4. The defendants have contested the suit, pleading that (a) mere search
on the online records of Registrar of Trade Marks in the relevant Class 05,
reveals that there are over 120 trade marks registered and / or pending, other
than the registrations or applications in the name of the plaintiff, in the
names of several other entities / individuals, each of whom have registered
and / or have applied for registration of marks with the suffix „KIND‟; (b)
„KIND‟ forms a part of name of several registered companies; (c)
defendants‟ corporate name „MERCYKIND PHARMACEUTICALS
PRIVATE LIMITED‟, when seen as a whole, has no deceptive similarity
with the plaintiff‟s trade mark / trade name „MANKIND‟ and the only
common feature is the presence of publici juris term „KIND‟; (d) mere
presence of a publici juris term „KIND‟ does not make the marks of the
plaintiff and the defendants deceptively similar; the plaintiff itself took the
said position before the Registrar of Trade marks in its various trade marks
applications; (e) the Registrar of Trade Marks, while examining the
plaintiff‟s application for registration of trade mark „ATORVAKIND‟, had
CS(COMM) No.100/2017 Page 3 of 21
raised objection under Section 11 of the Trade Marks Act, 1999, on account
of its alleged similarity with the marks „ATORKIND‟ and „ATORKIND-F‟
cited in the Examination Report; (f) plaintiff, in its reply to the Examination
Report, stated that the marks, when considered as a whole, are entirely
different from the cited trade marks and the mark should be looked at as a
whole; (g) similar submissions were made by the plaintiff in the proceedings
before the Registrar of Trade Marks for registration of its mark
„STARKIND‟, wherein several marks incorporating the word „KIND‟ were
cited as conflicting and the plaintiff in its reply to the Examination Report
stated that all the cited marks were not structurally, phonetically and visually
similar to that of the plaintiff‟s proposed mark; (h) plaintiff having taken
such a stand, cannot maintain the present suit; (i) in CS(OS) No.489/2015
titled Mankind Pharma Limited Vs. Sudharkar Khanna & Ors., the
defendant who was operating under the entity name „KINDCARE‟, was
permitted to use the trade marks „KINDCARE‟, „KINDFER‟,
„KINDZYME‟, „KINDCAL‟; (j) plaintiff is aware of the defendants since
November, 2015 and has falsely pleaded knowledge on 5 th November, 2016;
(k) no particular registered trade mark of the plaintiff which is being
infringed is pleaded; (l) the defendants are the bona fide and honest adopter
of the name „MERCYKIND PHARMACEUTICALS PRIVATE LIMITED‟;
(m) the defendants, in the course of their business have coined and adopted
several unique, distinctive and eye catchy trade marks with prefix „MERCY‟
to market their medicinal and pharmaceutical preparations and have also
filed applications for registration of the same as trade marks; and, (n) trade
marks „MERCYMOX-CV‟, „MERCYCOUGH-B/DX (SYRUP)‟,
CS(COMM) No.100/2017 Page 4 of 21
„MERCYPAN-40/DSR‟ and „MERCYCID-SYR‟ have already been
registered.
5. Need to summarize the contents of the replication is not felt.
6. Though extensive arguments were heard but the counsels sought
liberty to file written submissions, which was granted and have filed written
submissions and in the light thereof need to advert to oral submissions is not
felt.
7. It is the contention of the plaintiff (i) that in CS(OS) No.1949/2014
titled Mankind Pharma Ltd. Vs. Ultrakind Health Care & Anr., vide order
dated 8th July, 2014, the defendants have been restrained from using the trade
name „ULTRAKIND HEATH CARE‟ and / or from using the trade mark
„MECOKIND‟ or any other mark with the word element „KIND‟; (ii) in
Mankind Pharma Ltd. Vs. Cadila Pharmaceuticals Ltd. 2015 SCC OnLine
Del 6914, it has been held that the defendant cannot copy the essential /
predominant part of the trade mark of the plaintiff which is „KIND‟; (iii)
adoption of „MERCYKIND‟ by the defendants is mala fide and dishonest;
(iv) the action of the defendants amounts to infringement under Section
29(5) of the Trade Marks Act, 1999; (v) a „mark‟ under Section 2(m) of the
Act includes a „name‟; (vi) the defendants have adopted essential and
predominant feature of the registered trade mark of the plaintiff; reliance is
placed on para no.28 of Kaviraj Pandit Durga Dutt Sharma Vs. Navratna
Pharmaceutical Laboratories (1965) 1 SCR 737, para no.30 of Mex
Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. (2014) 58 PTC 136
(Del), and, para nos.26, 29 to 33 of Sanofi India Ltd. Vs. Universal
Neutraceuticals Pvt. Ltd. (2014) 60 PTC 593 (Del); (vii) the plaintiff is
CS(COMM) No.100/2017 Page 5 of 21
using „KIND‟ in a plurality of registered marks as a common prefix or suffix
and which has become the distinguishing element of the family of marks and
is recognized by the customers as an identifying trade mark in itself; in these
circumstances, even though the defendants‟ mark may not be close to a
particular member of the family, the use of the distinguishing family feature
or characteristics is likely to cause confusion; reliance is placed on McCarthy
on Trademarks and Unfair Competition, Fourth Edition, Vol.4 23:61 at pages
23-244 and 23-245; (viii) adoption of essential feature „KIND‟ in the
defendants‟ trade name is use of the plaintiff‟s registered trade marks within
the meaning of Section 29(5); reliance is placed on paras no.7, 9 to 11,
15,17, 18, 23, 25, 26, 29 to 33 and 53 of Sanofi India Ltd. supra, on paras
no.5 to 8 of Kirorimal Kashiram Marketing & Agencies Vs. Shree Sita
Chawal Udyog Mill MANU/DE/2307/2010 and on paras no.17 to 18 of
Amar Singh Chawal Wala Vs. Shree Vardhman Rice (2009) 40 PTC 417
(Del); (ix) defendants‟ arguments, that Section 29(5) only covers adoption of
identical mark, is contrary to the legislative intent behind Section 29(5);
reliance in this regard is placed on para no.44 of Bloomberg Finance LP Vs.
Prafull Saklecha 2014 (1) RAJ 44 (Del), para 15 of London Rubber Vs.
Durex (1964) 2 SCR 211, Larsen and Toubro Ltd. Vs. Lachmi Narain
Trades MANU/DE/0187/2008, para 7 of Ruston & Hornsby Ltd. Vs. The
Zamindara Engineering Co. 1970 AIR SC 1649, and, paras no.30 and 33 of
Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. (2014) 58 PTC
136 (Del); (x) use by other companies of similar mark and which others have
a minuscule turnover, is no ground to deny interim injunction to the plaintiff;
reliance is placed on para no.22 of Rolex SA Vs. Alex Jewellery Pvt. Ltd.
2009 SCC OnLine Del 753, para no.33 of Novartis AG Vs. Crest Pharma
CS(COMM) No.100/2017 Page 6 of 21
Pvt. Ltd. (2009) 41 PTC 57 Del, and, para no.50 of Express Bottlers
Services Pvt. Ltd. Vs. Pepsi Inc (1989) 9 PTC 14 (Cal.); (xi) the argument of
the defendants, on the basis of the reply of the plaintiff to the Registrar of
Trade Marks at the time of seeking registration of its various other marks, is
misconceived as the claim of the plaintiff is on the basis of series / family of
marks of the plaintiff and the principles applicable thereto would not apply
in the instant case; and, (xii) the balance of convenience is in favour of the
plaintiff.
8. It is the contention of the defendants that (a) the objection of the
plaintiff is on the basis of presence of the word „KIND‟ in the corporate
name „MERCYKIND PHARMACEUTICAL PRIVATE LIMITED‟ of the
defendants; however the plaintiff does not hold any registration for the word
„KIND‟ per se and the trade name „MERCYKIND‟ of the defendants does
not constitute infringement within the meaning of Section 29(5) of the Trade
Marks Act, 1999; (b) legislature, in Section 29(5), has intentionally not
provided for infringement in cases of deceptively similar marks; reliance is
placed on para no.41 of Bloomberg Finance LP supra; (c) plaintiff cannot
resort to sub-sections other than sub-section (5) of Section 29 of the Trade
Marks Act; reliance is placed on para no.27 of Cipla Ltd. Vs. Cipla
Industries Pvt. Ltd. (2017) 69 PTC 425 (Bom.); (d) the test of infringement
under Section 29(5) is not any different for family of marks; (e) Amar Singh
Chawal Wala, Kirorimal Kanshiram and Neon Laboratories supra relied
upon by the senior counsel for the plaintiff were in trade mark versus trade
mark situation and not considered under Section 29(5) which alone is
attracted in the present case; (f) essential feature theory only applies to judge
whether one trade mark is deceptively similar to another and is not
CS(COMM) No.100/2017 Page 7 of 21
applicable to cases coming within the purview of Section 29(5) of the Act; in
Mex Switchgears supra cited by the senior counsel for the plaintiff, „MEX‟
was not just a corporate name but also a trade mark; (g) similarly, in
Citigroup Inc. Vs. Citicorp Business & Finance Pvt. Ltd. (2015) 216 DLT
359 cited by the senior counsel for the plaintiff during the hearing,
„CITICORP‟ per se was registered trade mark of the plaintiff and the same
was used by the defendant therein, both as corporate name as well as trade
mark; (h) the plaintiff‟s suit on the ground of passing off, as per averments in
the plaint, is beyond the territorial jurisdiction of this Court; reliance is
placed on Jay Engineering Works Ltd. Vs. Ramesh Aggarwal (2006) 33
PTC 561 (Del) inasmuch as there is no averment of any cause of action
having accrued within the jurisdiction of this Court; (i) the plaintiff is
estopped from contending contrary to the stand taken by it before the
Registrar of Trade Marks; reliance is placed on S.K. Sachdeva Vs. Shree
Educare Ltd. (2016) 65 PTC 614 (Del.), Living Media Ltd. Vs. Alpha
Dealcom Pvt. Ltd. (2014) 58 PTC 589 (Del) and Unichem Laboratories Ltd.
Vs. Ipca Laboratories Ltd. (2011) 45 PTC 488 (Bom); (j) if „ATORKIND‟
and „ATORVAKIND‟ are visually, structurally and phonetically different as
admitted by the plaintiff in the reply to the Examination Report of the
Registrar of Trade Marks on the application of the plaintiff for registration of
„ATORVAKIND‟, „MERCYKIND‟ and „MANKIND‟ cannot be the same;
(k) the argument of the plaintiff is identical to as of plaintiff in Living Media
Ltd. supra, where also the plaintiff had a family of marks with the word
„TODAY‟; (l) Dr. Willmar Schwabe, a reputed pharmaceutical company is
also using the marks incorporating the word „KIND‟ such as „ENUKIND‟,
„COLIKIND‟ and „CALCIOKIND‟; and, (m) search reports from the
CS(COMM) No.100/2017 Page 8 of 21
Registrar‟s office can be considered at this stage to lend support to the fact
that there are various other companies using the word „KIND‟ in their
registered or pending marks and hence the mark of the plaintiff is not
distinctive; reliance is placed on P.P. Jewelers Pvt. Ltd. Vs. P.P. Buildwell
Pvt. Ltd. (2009) 41 PTC 217 (Del) and on Aviat Chemicals Pvt. Ltd. Vs.
Intas Pharmaceuticals Ltd. (2001) 21 PTC 601 (Del).
9. Having pondered over the respective pleadings and contentions, I am
unable to find the plaintiff entitled to any interim relief. The reasons thereof
are given herein below:
A. The communication dated 18th April, 2016 of the plaintiff qua
„ATORVAKIND‟ at pages 117 and 118 of the defendants
documents is as under:
"To,
The Registrar of Trade Marks,
The Trade Mark Registry,
Mumbai
Dear Sirs,
Re: Trade Mark Number 3032480 dated August 14, 2015 for the
mark ATORVAKIND (word) in class 05, in the name of
Mankind Pharma Ltd. .
We refer to the examination report issued for the subject application
under above reference.
Regarding objection raised under section 11 we submit:
The present trade mark when considered as a whole is entirely different
from all the cited trademarks and is completely an honest and bonafide
adoption in good faith and without any reference to and / or knowledge
of the alleged marks cited in the search report. The present mark is
being an invented word is therefore capable of distinguishing from that
of others.
CS(COMM) No.100/2017 Page 9 of 21
Further it is submitted that the mark shall be looked into as a whole and
when done so, the Applicant‟s mark is visually, phonetically and
structurally dissimilar from the marks cited in the search report.
In view of above submission, it is humbly requested to waive off the
objection and accept the mark.
Yours sincerely,
For Daswani & Daswani
Sd/-
Ishanki Gupta"
B. The communication dated 2nd January, 2015 of the plaintiff qua
„STARKIND‟ at page 124 of the defendants documents is as
under:
"To,
The Registrar of Trade Marks,
The Trade Mark Registry,
New Delhi
Dear Sirs,
Re: Trade Mark Number 2307155 dated March 28, 2012 for the
mark STARKIND (word) in class 05, in the name of Mankind
Pharma Limited
.
We refer to the examination report issued for the subject application
under above reference.
Regarding objection rose in paragraph 1:
It is submitted that all the cited marks are not structurally, phonetically
and visually similar to that of the applicant‟s trade mark.
It is further submitted that the applicant follows the practise of adding
word element KIND as suffix / prefix to the mark. The applicant has
more than 150 marks registered which contains word element KIND as
suffix / prefix. A copy of list is annexed as Annexure A.
It is therefore requested that objections be waived.
Acceptance is requested.
Yours sincerely,
For Daswani & Daswani
Sd/-
Hemant Daswani"
C. The aforesaid stand of the plaintiff before the Registrar of Trade
Marks, was / is relevant for the purpose of grant of interim injunction.
Though the senior counsel for the plaintiff contended that what is
stated by the advocates for the plaintiff in the aforesaid
communications is a submission of law made in the context and the
plaintiff cannot be bound thereby, but it cannot be said that the said
contention makes the fact aforesaid „not relevant‟. The fact, that the
plaintiff took a stand, not so long back, that (i) „ATORVAKIND‟ is
different from „ATORKIND‟ and that (ii) „STARKIND‟ is different
from „KINDERPLEX‟, „KINDERBON‟, „KINDERCAL‟,
„KINDIGEST‟, „STAR-VIT‟, „STAR‟, „STARNET‟, „STARCET‟,
„KINDHEALTH‟, „KIND-PLUS‟, „KINDCAL‟, „KINDMAX‟ and
„KINDFLOX-OZ‟, certainly has a weightage for purposes of interim
injunction, specially ex-parte. The plaintiff, while approaching this
Court for ex parte relief against the defendants, concealed the said
relevant fact from this Court and called upon the Court to, without the
said fact being before the Court, grant injunction against the
defendant. Such conduct of the plaintiff disentitles the plaintiff to the
equitable relief, at least at this stage. I must however state that thought
has indeed crossed my mind, whether in defence to a claim for
infringement, which is a statutory right of a registered proprietor of a
trade mark, the plea of estoppel, which is not available against statute,
is at all available to the defendants.
D. Though for the aforesaid reason, the plaintiff would be
disentitled from interim relief even if any prima facie merit was found
in the arguments of the senior counsel for the plaintiff, but for the sake
of completeness, the same may also be dealt with.
E. Infringement is dealt with in Section 29 of the Act. Sub-
Sections (1) to (4) of Section 29 provide for infringement by use, in
the course of trade, of a mark which is identical with or deceptively
similar to the registered trade mark of the plaintiff.
F. The objection of the plaintiff is to use by defendants of the word
„MERCYKIND‟ because „MERCYKIND‟ is to be found, only in the
name of the defendant No.2 Company. Else, according to the plaintiff
also, defendants are carrying on business in the same goods as the
plaintiff, under the marks „MERCYMOX‟, „MERCYCOUGH‟,
„MERCYCOPE‟, etc. It is the case of defendants, that
„MERCYKIND‟, to which objection is taken, is not the trade mark of
the defendants and is not used as trade mark by the defendants.
G. The senior counsel for the plaintiff however has argued, that
since the definition of „mark‟ in Section 2(m) includes a „name‟, use
by the defendants of „MERCYKIND‟, even in the name of defendant
No.2 Company, is use as a trade mark.
H. The first question to be thus determined is, whether the
defendants are using „MERCYKIND‟ as a trade mark, for the test
prescribed in sub-sections (1) to (4) of Section 29 of the Act, to apply.
I. Section 2(1)(zb) defines a „trade mark‟ as a mark capable of
being represented graphically and which is capable of distinguishing
the goods of one person from those of others and for the purposes of
indicating or as to indicate a connection in the course of trade between
the goods and the person having right as proprietor to use the mark,
whether with or without any indication of the identity of that person.
J. Notice in this regard may also be taken of Section 29(6) of the
Act as under:
"29(6) For the purposes of this section, a person uses a registered
mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services
under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or
in advertising."
K. The goods of the defendants i.e. pharmaceutical/medicinal
products, are not named „MERCYKIND‟; each medicine has different
name, though with „MERCY‟ as prefix viz. „MERCYMOX‟,
„MERCYCOUGH‟, „MERCYCOPE‟, „MERCYPAN‟ and
„MERCYCID‟. The objection of the plaintiff is not to the word
„MERCY‟ but to the use of the word „KIND‟ in the name of the
defendant No.2 Company in conjunction with „MERCY‟. The
plaintiff in its plaint has admitted „MERCYMOX‟,
„MERCYCOUGH‟, „MERCYCOPE‟, „MERCYPAN‟ and
„MERCYCID‟ etc. to be the trade marks of the defendants. Adopting
the argument of the senior counsel for the plaintiff, of the word/term
„KIND‟ in the trade marks of the plaintiff indicating the source of the
goods to be the plaintiff, it follows that use of the term „MERCY‟ in
the trade marks of the defendants indicates the source thereof to be the
defendants. Once, it is found that such names of the medicines of the
defendants with the prefix „MERCY‟ are the trade marks of the
defendants, the question of „MERCYKIND‟ also being the trade mark
of the defendants with respect to the same goods and of the goods of
the defendants having two trade marks, would not arise. Therefrom, it
follows that „MERCYKIND‟ is not the trade mark of the defendants.
L. I however find the defendants to have, at page 88 of their
documents, filed copy of an application filed for registration of
„Mercykind Pharmaceutical‟ along with the logo as a trade mark. No
arguments were however addressed with respect thereto and the
plaintiff has neither pleaded the same nor the senior counsel for the
plaintiff has addressed any arguments with respect to the same. On
the contrary, it was the categorical case of the counsel for the
defendants that „MERCYKIND‟ is not used by the defendants as a
trademark. I am thus, for the purposes of the present application, not
considering the same and it will be open to the plaintiff to, if so
chooses, oppose the said application of the defendants.
M. However the name „MERCYKIND PHARMACEUTICAL
PRIVATE LIMITED‟ of the defendant No.2 Company is also to be
found on the goods i.e. pharmaceutical products manufactured and
marketed by the defendants, either in compliance of various Laws,
Rules, Regulations requiring the name of manufacturer / marketeer to
be so mentioned, or otherwise.
N. I have thus wondered, whether such affixation of the name of
the defendant No.2 Company with the word „MERCYKIND‟, to
which objection is taken, to the medicines of the defendants, amounts
to use thereof as a trade mark, for the purposes of Section 29 of the
Act, by virtue of sub-section (6) thereof reproduced above.
O. However, notice can be taken of the fact that pharmaceutical
products generally fall in two categories i.e. Over The Counter drugs
or prescribed or schedule drugs. Prescribed or schedule drugs cannot
be sold except on a prescription of a qualified medical practitioner.
Neither Over The Counter drugs / medicines are known to be asked
for by the name of the manufacturer / marketeer thereof nor are the
qualified medical practitioners known to prescribe drugs / medicines
by the name of their manufacturer / marketeer and are known to
prescribe by the name/mark under which the said drugs are sold and
which in the case of drugs / medicines of the defendants is not
„MERCYKIND‟. In fact, of late, the qualified medical practitioners
are being instructed to prescribe the schedule / prescribed drugs by
their pharmaceutical/generic names and not even by their trade names.
P. Thus, mere affixation of the name of the defendant No.2
Company as manufacturer or marketeer of the drugs/medicines sold by
the defendants, would in my opinion, not qualify as a use thereof as a
trade mark, even under Section 29(6) of the Act.
Q. Once it is found that „MERCYKIND‟ is not a trade mark of the
defendants, Section 29(1) to (4) do not apply. The need thus, to
address the lengthy arguments urged with respect to „family of marks‟
is not felt.
R. The emphasis of the senior counsel for the plaintiff also, was on
Section 29(5) which is as under:
"29(5) A registered trade mark is infringed by a person if he
uses such registered trade mark, as his trade name or part of his
trade name, or name of his business concern or part of the name,
of his business concern dealing in goods or services in respect of
which the trade mark is registered."
S. While the test of infringement under Section 29(1) to (4) is
"...identical with or deceptively similar to...", the test of infringement
under Section 29(5) of the mark, of which infringement is claimed, as
would be apparent from language thereof reproduced above, is "uses
such registered trade mark as his trade name or part of his name or
name of his business concern or part of the name, of his business
concern, dealing in goods or services in respect of which the trade
mark is registered". Thus, the registered trade mark „MANKIND‟ or
any other registered trade marks with „KIND‟ as prefix or suffix of the
plaintiff would be infringed under Section 29(5), if the defendants
were to be found to be using „MANKIND‟ or any of the other
registered trade marks of the plaintiff with „KIND‟ as prefix or suffix
as part of their trade name. Neither is it so the case of the plaintiff nor
are the defendants found to be using „MANKIND‟ or any other
registered trade mark of the plaintiff with „KIND‟ as prefix or suffix
as part of their name. What the defendants are using as part of the
corporate name of the defendant No.2 Company is, „MERCYKIND‟.
T. The contention of the senior counsel for the plaintiff is that even
though the defendants are not using, as part of their trade name, any
registered trade mark of the plaintiff but use by the defendants of
„MERCYKIND‟ which is deceptively similar to the registered trade
marks of the plaintiff, is infringement under Section 29(5) of the Act.
U. I am however unable to agree. The Legislature, inspite of
having used the words "...identical with, or deceptively similar to..."
in Section 29(1) to (4), having used different words in Section 29(5)
and having not used such words in Section 29(5), is deemed to have
not constituted use as name or part of the name, of a word or mark
deceptively similar to the registered trade mark of the plaintiff, as
infringement thereof by the defendants. What has been constituted as
infringement under Section 29(5) is use of the registered trade mark as
trade name or part of the trade name. Thus, there would have been
infringement under Section 29(5), if the defendants, as part of their
name, had used „MANKIND‟ or any other registered trade mark of the
plaintiff. Merely because „MERCYKIND‟ in the name of defendant
No.2 Company may be deceptively similar to „MANKIND‟ or any
other registered trade mark of plaintiff with „KIND‟ as prefix or
suffix, would not amount to infringement under Section 29(5).
V. I am unable to find any of the judgments cited addressing the
issue as aforesaid of interpretation of Section 29(5) of the Act. In fact,
the said judgments are not found to address the issue, whether use as
name or part of name, of a mark / word deceptively similar to the
registered trade mark, constitutes infringement under Section 29(5) of
the Act.
W. I am also unable to find any other judgment addressing the
aforesaid aspect of interpretation of Section 29(5) of the Act, save the
dicta of the Division Bench of the Bombay High Court in Raymond
Ltd. Vs. Raymond Pharmaceuticals Pvt. Ltd. 2010 (7) Mh.L.J. 646,
holding (i) that Sub-Sections (1), (2), (4) and (5) of Section 29 of the
Act deal with different types of infringement of registered trade mark
and it is not merely enumerative; (ii) comparison of the provisions of
1958 Act and the 1999 Act shows that 1958 Act did not have a
provision corresponding to Sub-Section (5) of Section 29; it is a new
provision; (iii) perusal of Section 158 of the 1999 Act shows that apart
from repealing 1958 Act, certain provisions of the Companies Act
were also amended by the 1999 Act; (iv) two provisions of the
Companies Act which have been amended by the 1999 Act, are
Sections 20 and 22 of the Companies Act; (v) the provisions of
various Sub-Sections of Section 29 of the Act are in a scheme and
none of the provisions are either surplus or otiose; (vi) it appears that
the Legislature decided to treat cases, where the defendant uses
registered trade mark of the plaintiff as part of his trade name, as a
distinct subject for the purpose of laying down law in relation to
infringement of registered trade mark and legislated that if the
defendant uses registered trade mark of the plaintiff as part of his trade
name, then if the goods in relation to which the defendant is so using
the trade mark are the same as the goods in respect of which the
plaintiff‟s trade mark is registered, then only it will amount to
infringement and not in case where the goods of the defendant are
dissimilar; (vii) use of a registered trade mark as a part of trade name
was a known phenomena; (viii) passing of action was initiated in such
cases; (ix) a special provision has now been made to deal with that
situation by incorporating sub-section (5) of Section 29 and therefore,
so far as subject of using of a registered trade mark as a trade name is
concerned, provision is contained in sub Section (5) of Section 29 and
therefore on that subject no other provision would apply; generalia
specialibus non derogant is a cardinal principle of interpretation; it
means that the general provision will always yield to a special
provision; (x) construed in accordance with this fundamental principle,
a special provision governing cases of a defendant using a registered
trade mark as a part of his trade name is incorporated in Section
29(5) and therefore, that subject will be governed only by that
provision and therefore reliance on any other provision
including Section 29(4) is ruled out; (xi) thus, in the case of
infringement of a registered trade mark by use as a trade name, the
provisions of Section 29(4) cannot be relied on; (xii) the legislature, in
Section 29(5) has used the phrase "dealing in goods or services in
respect of which the trade mark is registered"; the legislature has not
used the phrase "goods similar or goods identical to the goods in
respect of which the trade mark is registered"; (xiii) thus, in order to
claim that use of a registered trade mark as part of trade name by
the defendants amounts to infringement, the plaintiffs have to establish
that the defendants are dealing in the goods in respect of which the
mark is registered; in other words, if the defendants are not dealing in
goods in respect of which the trade mark is registered, then the use of
the registered trade mark as a part of trade name by the defendant
would not amount to infringement.
X. I respectfully concur with the dicta aforesaid of the Division
Bench of the Bombay High Court. What has been held by the Bombay
High Court qua goods, i.e. for infringement of a registered trade mark
by use as trade name, the goods in which the defendant is dealing have
to be "same / identical" and not "similar", equally applies to the use of
the trade mark as trade name. Use of a trade name similar or
deceptively similar to the registered trade mark would not constitute
infringement under Section 29(5).
Y. Thus, prima facie, no case of infringement within the meaning
of Section 29 is made out.
Z. As far as the claim of the plaintiff on the ground of the
defendants passing off their goods as that of the plaintiff is concerned,
the plaintiff in para 46 of the plaint have not invoked the territorial
jurisdiction of this Court on the ground of any cause of action having
accrued within the jurisdiction of this Court. Elsewhere also in the
plaint, it has not been pleaded that any cause of action has accrued to
the plaintiff within the territorial jurisdiction of this Court. It is
otherwise not in dispute that the defendants are at Maharashtra. Merit
is thus found in the contention of the counsel for the defendants, of
territorial jurisdiction of this Court to entertain the suit, insofar as on
the ground of passing off, being suspect.
ZA. Even otherwise, once it is found that the defendants are not
using „MERCYKIND‟, to which alone objection is taken, as a trade
mark, no ground for grant of interim injunction under the said ground
also is made out. Section 134(1)(c) of the Act refers to a suit "for
passing off arising out of the use by the defendant of any trade mark
which is identical with or deceptively similar to the plaintiff‟s trade
mark, whether registered or unregistered". Thus, unless it is shown
that the use of the mark/word „MERCYKIND‟, to which objection is
taken, is as a trade mark, no case on the ground of passing off also,
would be made out.
10. IA No.1684/2017 is accordingly dismissed.
RAJIV SAHAI ENDLAW, J.
JULY 06, 2018
„gsr/bs‟/pp..
