In a recent
Trademark infringement matter, the Delhi High Court has held that in order to
qualify as infringement under Section 29(5) of the Trademarks Act, 1999 (“Act”)
there has to be exact use of the registered mark and mere use of a
prefix/suffix would not amount to infringement. The Court was hearing a trademark
infringement matter wherein the defendant had used a word “MERCYKIND” as part
of its trade name which was allegedly similar to that of Plaintiff’s registered
trademark “Mankind”.
BACKGROUND
Mankind Pharma Ltd., one of
India’s largest Pharmaceutical Company (the “plaintiff”) instituted a Trademark Infringement suit seeking an injunction
against Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd[i].,
for infringing its registered trademark “MANKIND” and a series of other marks
with the suffix/prefix “KIND” and for passing off their business/goods by
adopting and using the trade name “MERCYKIND
PHARMACEUTICAL PRIVATE LIMITED”.
While passing
the order, the Court mentioned that the registered trademark “MANKIND” would be
infringed under Section 29(5), if the defendants were found to be using
“MANKIND” as part of their trade name. Here, the defendants are using “MERCYKIND”
as part of their trade/corporate name which is not a registered trademark of
the plaintiff. Thus, there would have been infringement under Section 29(5), if
the defendants, as part of their trade name, had used “MANKIND”. Merely because
the name of the defendant’s Company is deceptively similar to the plaintiff’s
trademark “MANKIND” or any other registered trademarks of the plaintiff with
“KIND” as prefix or suffix, it does not amount to infringement under Section
29(5).
This case makes an interesting read for the
following reasons:
He who comes into equity must come with clean hands:
In this case, the Court took a strong objection to the fact that the plaintiff had concealed certain information from the Court which the Court considered to be relevant and had weightage in the matter.
The Plaintiff, not so long ago while responding to certain Trademark Examination Report for registration of two of their trademarks had taken a stand that “ATORVAKIND” (plaintiff’s mark) is different from “ATORKIND”; and “STARKIND” (plaintiff’s mark) is different from other cited marks such as “KINDERPLEX”, “KINDERBON”, “KINDERCAL”, “KINDIGEST”, “STAR-VIT”, “STAR”, “STARNET” and “STARCET”. The Court stated that such conduct of the plaintiff disentitles them to the equitable relief. Though the plaintiff contended that the statement made by the advocates for the plaintiff in the communications to the Trademark Registry is a submission of law made in the context and the plaintiff cannot be bound, however the Court refuted the plea and stated that the said contention would not make the fact “irrelevant”.
“Use” of a trade mark:
Since the Plaintiff had alleged infringement under sub-sections (1)
to (4) of Section 29, the Court took cognizance of the fact and considered to
test whether the defendants were really using “MERCYKIND” as a trade mark.
Section 29(6) of the Act defines
the “use” of the mark: a person is considered to be using a registered mark,
if, in particular, he—
(a) affixes it to goods or the packaging thereof;
(b)
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;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers
or in advertising.”
In this case the primary objection of the plaintiff was the word “MERCYKIND”
which was being used by the defendants. However, upon observation, the Court
found that the word “MERCYKIND” was used only in the name of the defendant
Company. The Plaintiff had also contended that the defendants are carrying on the
business in the same goods as the plaintiff, under the marks “MERCYMOX”,
“MERCYCOUGH”, “MERCYCOPE”, etc. The Court observed that the issue was about the
usage of the word “MERCYKIND”, which in fact was not the trade mark of the
defendants and was also not used as a trade mark by the defendants. Once, it was
established that the defendant’s trademarks were words with the mere prefix “MERCY”,
the question of “MERCYKIND” also being the trade mark of the defendants with
respect to the same goods of the defendants would not arise. Therefore, it was
observed by the Court that “MERCYKIND” was not the trade mark of the
defendants, therefore, Section 29(1) to (4) do not
apply in this case.
Infringement of a trademark under Section 29(5):
The Court further determined the alleged infringement test under
Section 29(5) of the Act, which is: “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.”
What has been constituted as infringement under Section 29(5) is use
of the registered trade mark as trade name or part of the trade name. Thus, the
Court held that there would have been infringement under Section 29(5), if the
defendants had used the plaintiff’s registered Trademark “MANKIND” as part of
their trade name. Merely because “MERCYKIND” is the name of defendant Company, which
may be deceptively similar to “MANKIND” or any other registered trade mark of
plaintiff with “KIND” as prefix or suffix, would not amount to infringement
under Section 29(5). Therefore, it was held that the use of a trade name
similar or deceptively similar to the registered trade mark would not
constitute infringement under Section 29(5). Thus, prima facie, no case of
infringement within the meaning of Section 29 is made out.
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