Mankind not so kind to ‘Novakind’
Two entities in the pharmaceutical industry vie for their rights before the Delhi High Court. The Plaintiff, Mankind Pharma Limited filed the suit against the Defendant, Novakind Bio Sciences Private Limited alleging trademark infringement, passing off, etc. The High Court was pleased to pass an ex-parte injunction at the admission stage. The Defendant has filed an application to set aside the injunction which is being considered by the Court.
The Plaintiff in the suit contends:
- They adopted the trademark ‘MANKIND’ in the year 1986 and has been extensively used and is well known among the trade and public.
- Owner of several websites containing the mark ‘MANKIND’ such as: www.mankindpharma.com, www.mankindunwanted.com, www.mankindmanforce.com, www.mankinddontworry.com, www.mankindkaloree1.com, www.futuremankind.com, etc., to name a few.
- Manufacture and sell various pharmaceutical preparations which uses ‘KIND’ as second part and is usually referred to as the ‘KIND family of marks.’
- They are aggrieved by the Defendant’s use of the mark/name Novakind Bio Sciences Private Limited, and the cease-and-desist notice was not acted upon by the latter which resulted in the filing of the suit.
- They seek to restrain the Defendant from using the mark ‘DEFZAKIND’, for Deflazacort tablets, and from using ‘KIND’ as a part of the trade name/trademark.
The Defendant seeks vacation of the injunction on the following:
- The plaintiff does not have registration for the word ‘KIND’ and thus cannot claim exclusivity over the said word.
- They are not using ‘NOVAKIND’ as a trademark and only as part of the trading name.
- It is mandatory to mention the name and address of the manufacturer of pharmaceutical preparations under the Drugs and Cosmetics Act, 1940. Thus, there is no infringement as it is only compliance with rules.
- Pharmaceutical preparations are not sold by the name of the company manufacturing the preparation, but by their brand names. Thus, ‘DEFZAKIND’ would be sold and prescribed under the said brand name and not by the name of the manufacturer of the drug.
The court after considering the pleadings, arguments and case laws held:
- The defendant’s contention that they are not using ‘NOVAKIND’ as a trademark will not succeed. From the images, it is evident that ‘NOVAKIND’ is not shown merely as a distributor of ‘DEFZAKIND’, but the mark ‘Novakind Biosciences Private Limited’, figure prominently on the strip in white letters on a bold red background . Moreover, the defendant has used ® with the aforesaid mark, thus confirming that it is the registered trademark. The defendant by its own showing is highlighting ‘Novakind Biosciences Private Limited’ as its source identifier and, therefore, as a trademark within the meaning of the Trademarks Act.
- The argument that the defendant is statutorily required to affix the company name is irrelevant and ought to fail. The fact that the company name must be affixed does not justify their using a mark which infringes the registered trademark of the plaintiff. The defendant can adopt a name which is non-infringing in nature which will comply both with the Drugs and Cosmetics Act as well as the Trademarks Act.
- The defendant’s further contention that pharmaceutical products will be sold by their brand names by pharmacists and not the company name which avoids confusion has no legal significance. The mark ‘NOVAKIND’, seen as a whole, is phonetically deceptively similar to ‘MANKIND’. The ‘KIND’ suffix not being prevalent to pharmaceutical preparations, there is every likelihood of a customer who chances across the defendant’s ‘NOVAKIND’ product, to believe it to be one of the ‘KIND’ family of marks belonging to the plaintiff. It is judicially settled that the test of deceptive similarity must be viewed from the point of view of a customer of average intelligence and imperfect recollection. Thus, the moment there is a possibility of confusion in the mind of such a consumer, the test of deceptive similarity stands satisfied.
Considering the above the Court confirmed the injunction against the defendant restraining them from dealing with any pharmaceutical product bearing the suffix ‘KIND’ or using any mark deceptively similar to the Plaintiff’s registered trademark.
The pharmaceutical trademarks war is not new. Usually, conflicts in the industry arise due to marks derived from the chemical composition of the medicines/pharmaceutical preparations or the disease that it is meant to treat. In the instant case, the dispute is over the use of the word KIND in conjunction with other words for use in relation to pharmaceutical products. Although the word KIND is a common dictionary word, the court has considered that it is not commonly used in the pharmaceutical industry and is not descriptive of pharmaceutical goods. And reinforced the proposition that any possibility of consumer confusion in the pharmaceutical preparations can lead to disastrous consequences and therefore must be avoided.