Extensive usage and association of a family of marks can entitle higher protection and similarity with potential to deceive consumers can lead to the removal of a trademark from the Register of Trade Marks.

JUDGMENT :

Amit Bansal, J.

The present petition has been filed seeking cancellation/removal of the impugned trademark ‘NIKIND’ (word per se), registered under no. 2290683 in Class 5 in the name of the respondent no. 1, from the Register of Trade Marks.

2. Briefly, the case set up in the petition is that the petitioner company is engaged in the business of manufacturing and marketing medicinal, pharmaceutical and veterinary preparations. The mark “MANKIND” was adopted in the year 1986 by the predecessors of the petitioner.

3. The petitioner has more than 150 trademarks registered wherein the word “MANKIND” and/or “KIND” forms a part of its trademarks (hereinafter referred to as ‘family of marks’). The petitioner is also the proprietor of the mark ‘MANKIND’ in all 45 Classes. A list of 133 marks belonging to the “KIND” family of marks registered in favour of the petitioner has been given at page 239 of the petition. The petitioner is also the owner of the various websites which include the word “MANKIND”.

4. The petitioner has also filed CA Certificate showing a turnover of the petitioner company in the year 2016-2017 of about Rs. 3525.91 crores. The turnover of the petitioner company in respect of products sold under its “KIND” family of marks for the period April, 2017 to October, 2017 was approximately Rs. 843 crores. The petitioner's family of marks have been advertised in various newspapers, magazines and news channels across India.

5. On account of long usage of the mark “MANKIND” and/or “KIND” family of marks, the said marks have acquired the status of ‘well-known trademark’ in terms of Section 2(1)(zg) of the Trademarks Act, 1999 (hereinafter referred to as ‘the Act’).

6. The petitioner came across the registration of the mark “NIKIND” (hereinafter referred to as ‘impugned trademark’) vide registration no. 2290683 in respect of medicines for human purpose in class 5 in India. The application for registration of the impugned trademark was filed on 28th February, 2012 claiming user from 25th November, 2011. A cease and desist notice was issued upon the registered proprietor of the said mark, which was not replied to.

7. It has been averred that due to long and continuous usage of the trademark “MANKIND” and family of marks containing the word “KIND”, the petitioner has acquired goodwill and reputation along with the public exclusively associating the trademark “MANKIND” and family of marks containing the word “KIND” with the petitioner.

8. The petitioner has registration of the mark “NIMEKIND” in Class 5 in its favour vide certificate of registration dated 28th September, 2005. The impugned trademark is similar to the petitioner's similar registered mark “NIMEKIND” and family of marks containing the word “KIND” and therefore, the mark is liable to be removed in terms of Section 11(1) and (2) of the Act.

9. The impugned trademark is liable to be removed for ‘non-use’ in terms of Section 47(1)(a) and (b) of the Act, as upto three months before the date of application, a continuous period of five years from the date of registration has elapsed, during which period there has been no bonafide use of the impugned trademark in relation to goods for which the registration was granted.

10. The petitioner is also prior user and owner of the mark “MANKIND” and family of marks containing the word “KIND” and the impugned trademark has been wrongly entered in the Register and therefore, is liable to be cancelled in terms of Section 57 of the Act.

11. Accordingly, the petitioner has filed the present petition.

PROCEEDINGS IN THE CASE

12. Notice in the present petition was issued by the Intellectual Property Appellate Board (IPAB) on 1st November, 2018. However, the respondent no. 1 failed to appear before IPAB despite service. Thereafter, due to the enactment of the Tribunals Reforms Act, 2021, the matter has been placed before this Court and notice was issued to the respondent no. 1 by this Court on 1st November, 2022. None has appeared on behalf of