Delhi High Court Orders Removal of ‘Nikind’ Mark from Trade Marks Register for being Deceptively Similar to ‘Nimekind’ Mark

29th May, 2023 - 12:35 pm Categories: Trademark 0 Comments

Introduction

In the case of Mankind Pharma Limited v. Arvind Kumar and Anr.[1], the Delhi High Court directed the removal of the ‘Nikind’ mark from the trade marks registry, for being identical and deceptively similar to the mark ‘Nimekind’ owned by the Indian pharmaceutical & healthcare company, Mankind Pharma Limited. The Petitioner was engaged in the business of manufacturing and marketing medicinal, pharmaceutical and veterinary preparations, and their mark ‘Mankind’ was adopted in 1986. The Petitioner was the proprietor of the mark ‘Mankind’ in all 45 classes, and the owner of websites containing the word ‘Mankind’. The Petitioner also held registrations to 133 ‘Kind’ formative trademarks. More particularly, the trademark ‘Nimekind’ was registered on 28 September 2005. On account of long and continuous usage, the Petitioner’s trademarks containing the word ‘Kind’ had acquired significant goodwill and reputation. Further, the Petitioner’s mark had been advertised in various newspapers, magazines and news channels across India, thus acquiring the status of a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

[Image Sources : Shutterstock]

The trademark ‘Nikind’ (“the impugned mark”) was filed for registration on 28 February 2012, claiming usage from 25 November 2011. On finding out, the Petitioner issued a cease-and-desist notice to the Respondents. However, the Respondents failed to reply. The Petitioner contended that ‘Nikind’ was similar to ‘Nimekind’ and the family of marks containing ‘Kind’. Therefore, the impugned mark had to be removed from the trade marks register under the refusal provisions in Section 11(1) and (2) of the Trad Marks Act. The Petitioner also contended the mark was liable to be removed under Section 47(1)(a) and (b) for non-use as there had been no bonafide use of the impugned mark in relation to goods for which registration was granted for a continuous period of five years. The Petitioner relied on the judgment in Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd[2], where it was held that, “the plaintiff has established him to be the first user of the word “KIND” therefore, has a higher protection…” Thus, the Petitioner contended that the impugned mark was to be cancelled under Section 57 as the Petitioner was the prior user and owner and the impugned mark had been wrongly entered.

Analysis

The Court held that the Petitioner held several registrations for the suffix ‘Kind’ and, hence, it is an essential part of the Petitioner’s trademarks.  The adoption and the use of the impugned mark ‘Nikind’ would cause confusion in the market as it was deceptively similar to the Petitioner’s marks. Further, the mark was registered in the same class for identical goods. Therefore, the use of the impugned mark was adopted with the sole purpose of trading on the goodwill and reputation of the Petitioner and was also likely to deceive unwary consumers of its association with the Petitioner. Therefore, the impugned mark must have been refused registration under Section 11(1) and 11(2) and was liable to be cancelled under Section 57 of the Trade Marks Act. The Respondent had also failed to rebut the contention that the impugned trademark was registered without any bonafide intention to use the same and there has been no actual use of the impugned mark for a continuous period of five years till three months before the rectification application was filed. Hence, the Court held that the mark was liable to be removed as it was deceptively similar to the Petitioner’s mark, causing confusion and harming the reputation and goodwill of the brand ‘Mankind’.

Author: Sarah Wilson, A Student at Christ (deemed to be University) Bengaluru in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

[1] C.O. (COMM.IPD-TM) 146/2022

[2] 2015 SCC OnLine Del 6914