Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr.

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. 2018:DHC:3940

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 plaintiff‟s 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 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 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 5th 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)‟, „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 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 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 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 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 „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 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:

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.