Mankind Pharma fails to stop Mercykind
‘Mankind’ and ‘Mercykind’ two words which in common parlance relate to humanity and forgiveness was the bone of contention in an action before the Delhi High Court between two pharmaceutical entities operating under the Mercykind and Mankind tradename. Mankind Pharma Ltd (Mankind) filed suit against Mercykind Pharmaceuticals Pvt. Ltd (Mercykind) alleging trademark infringement and passing off to restrain Mercykind from operating under the said name.
The issues that arose for consideration in this case were:
- Scope of section 29(5) of the Trademarks Act and if it covers use as a trade name identical mark only or includes a similar mark as well. Section 29 (5) provides that a registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
- Whether use of a trade name on the packaging to identify manufacturer or marketer of the drugs/medicines qualify as use as a trade mark under Section 29(6) of the Act.
Section 29(6) provides for the purposes of this section, a person uses a registered mark, if, in particular, he-
- affixes it to goods or the packaging thereof;
- offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
- imports or exports goods under the mark; or
- uses the registered trade mark on business papers or in advertising.
- The impact of Plaintiff submitting in response to the examination report issued by the Trademark Registrar to their application for ATORVAKIND and STARKIND 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’,
Mankind in support of their case contended:
- They are the registered proprietor of the mark ‘MANKIND’ in 42 different classes and has for several decades used numerous marks by adding prefix or suffix to the elements ‘MANKIND’ and/or ‘KIND’.
- In November, 2016, they came across the trade name ‘MERCYKIND PHARMACEUTICALS PRIVATE LIMITED’
- Mercykind is using trademarks such as ‘MERCYMOX’, ‘MERCYCOUGH’, MERCYCOPE’ and their Director is one of the former employees of Mankind.
- ‘MERCYKIND’ is deceptively similar to ‘MANKIND’ and any trade name in the pharmaceutical industry containing the element ‘KIND’ would amount to infringement, passing off and dilution of ‘MANKIND’.
- There are a large number of KIND suffix marks on the Register and several entities are using the word KIND as part of their tradename.
- The marks when compared as a whole are not similar and they are using several marks with prefix ‘Mercy’ and a few of them are registered as well.
- Mankind at the time of the examination of their ATORVAKIND mark in response to other conflicting ‘KIND’ marks had contended before the Trademark Registry that the marks when compared as a whole are not similar and the marks are not to be dissected.
- Mankind does not hold registration for the word ‘KIND’ per se and the trade name ‘MERCYKIND’ does not constitute infringement within the meaning of Section 29(5) of the Trade Marks Act, 1999, as the legislature has not provided for infringement in cases of deceptively similar mark.
The court after hearing the parties at length and considering the pleadings and written submissions held:
- Mankind’s objection is to use of ‘Mercykind’ as a trade name and not as trademark. The latter uses ‘Mercy’ as a prefix for medicinal products such as ‘MERCYMOX’, ‘MERCYCOUGH’, ‘MERCYCOPE’, ‘MERCYPAN’ and ‘MERCYCID’. The name ‘MERCYKIND PHARMACEUTICAL PRIVATE LIMITED’ is also to be found on their goods in compliance of various laws, rules, etc. However, affixation of the name as manufacturer or marketer of the drugs/medicines sold by them will not qualify as use thereof as a trade mark, even under Section 29(6) of the Act.
- A literal interpretation of Section 29 (5) makes it clear that the intent of the legislature is to constitute infringement under Section 29(5) the party has to use an identical mark as its trade name and not similar or deceptively similar mark.
- On passing off plea, the court held in the instant case ‘MERCYKIND’ is being used as a trade name and not trademark. The court taking cue from Section 134(1)(c) of the Act ruled that it has to be shown that the mark/word ‘MERCYKIND’, to which objection is taken, is being used as a trade mark.
In view of the above the Court dismissed the injunction application filed by Mankind.
Our Comment– the author is of the view that the court has taken a narrow view of passing off provisions by reading down its applicability to trademark use only.