The main legal point established in the judgment is that the defendant's use of 'NOVAKIND Biosciences Pvt Ltd' as a trade mark for pharmaceutical products constituted infringement under Section 29(2)(b) of the Trade Marks Act, emphasizing the need for clear distinguishability of pharmaceutical products to avoid confusion among customers.

JUDGMENT (Oral)

I.A. 5700/2021 (under Order XXXIX Rules 1 and 2 of the CPC) & I.A. 3248/2023 (under Order XXXIX Rule 4 of the CPC)

1. The plaintiff is the fifth largest pharmaceutical company of India. The chairman and founder the plaintiff, Mr. Ramesh Chand Juneja, adopted the trademark MANKIND as part of the trading style of the plaintiff in 1986. Para 3 of the plaint sets out the encomiums and accolades that the plaintiff has earned over a course of time and, for the purposes of this order, it is not necessary to advert thereto, as they are not in debate. It is further asserted, in the plaint, that 268 brands of the plaintiff are listed amongst the top five brands, in pharmaceutical products, with 85 brands at the first and 67 brands at the second place. The plaintiff is also the registered owner of the websites: mankindpharma.com, mankindunwanted.com, mankindmanforce.com, mankinddontworry.com, mankindkaloree1.com, futuremankind.com, vetmankind.com, caremankind.com, petmankind.com, mankindpharma.net, magnetmankind.com, specialmankind.com, mankindpharma.asia, mankindpharma.cn, mankindpharma.org, mankindpharma.us and mankindpharma.edu.

2. The plaintiff uses "KIND" as second part of the name of various pharmaceutical preparations which the plaintiff manufactures and sells. The marks of the plaintiff which use "KIND" as the second part thereof have been referred to, in the plaint, as the "KIND family of marks".

3. The plaintiff is aggrieved by the mark NOVAKIND BIO SCIENCES PRIVATE LIMITED, used by the defendant for various pharmaceutical products manufactured and sold by it. A cease and desist notice was issued by the plaintiff to the defendant on 25 August 2020, calling upon the defendant to desist using the mark "NOVAKIND BIO SCIENCES PRIVATE LIMITED" as in the perception of the plaintiff, the said mark, by including "KIND" as the second part of the word "NOVAKIND" infringed the plaintiff's registered trademark.

4. It is in these circumstances that the plaintiff has approached this Court by means of the present suit, seeking a permanent injunction restraining the defendant from using "KIND" as a part of the trade name/trademark under which the defendant manufactures and sells any of its medicinal and pharmaceutical preparations.

5. The plaint also seeks an injunction against the use, by the defendant, of the mark "DEFZAKIND", for Deflazacort tablets, packed and sold by it. The plaint provides a photographic representation of the "DEFZAKIND" strip, which is of some importance and which, therefore, may be reproduced as under:

[IMG]

6. The plaint is accompanied by IA 5700/2021, preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).

7. While issuing summons in the present suit, this Court, vide order dated 20 April 2021, granted an ex parte ad interim injunction restraining the defendant from manufacturing, either on its own behalf or through any job worker, marketing or clearing, for sale in the market, any pharmaceutical product bearing the "KIND" suffix or which may, in any other manner, infringe the registered trademark of the plaintiff.

8. That order continues to remain in force till date. In the interregnum, the defendant has filed IA 3248/2023 under Order XXXIX Rule 4 of the CPC, seeking vacation of the order dated 20 April 2021. Pleadings in both these applications are complete. Both the applications have been heard by me today at some length. Mr. Amit Sibal, learned Senior Counsel appeared for the plaintiff and Mr. Mahapatra, learned Counsel appeared for the defendant. This judgment disposes of both the applications.

9. Mr. Mahapatra, learned Counsel for the defendant raises various defences against the charge of infringement and passing off, levelled by the plaintiff. These may be enumerated thus:

(i) The plaintiff has no registration, in its favour, of the mark "KIND" it cannot, therefore, claim exclusivity over "KIND" as a suffix in the name of any pharmaceutical