The interpretation of Section 29(5) of the Trade Marks Act, 1999, and the requirement for use of a trade name identical or deceptively similar to a registered trade mark to constitute infringement.

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 plaintiffs 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 relief’s of delivery, rendition of accounts, damages etc.

2. The suit came up before this Court first on 8th 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 plaintiffs corporate name/trade name ‘MANKIND PHARMA LIMITED’; (ix) any trade name in the pharmaceutical industry containing the element ‘KIND’, would amount to dilution of the plaintiffs well known trade mark and result in infringement and/or passing off the plaintiffs 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 plaintiffs 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