Delhi High Court: An appeal was filed by Novakind Bio Sciences Private Limited (appellants), seeking to challenge the order dated 07-08-2023 passed by Single Judge which confirmed the ad-interim injunction granted on 20-04-2021 restraining appellants from using the mark “NOVAKIND” or any similar mark. A division bench of Yashwant Varma and Dharmesh Sharma, JJ., dismissed the petition being devoid of merits and upheld the view that the appellants’ use of the mark “NOVAKIND” was likely to cause confusion with the respondent’s registered trademark “MANKIND”.
The factual background revealed that Mankind Pharma (respondent) used the mark “MANKIND” since 1986 and holds 78 separate trademark registrations covering a variety of pharmaceutical products. The concern arose when Novakind (appellants) adopted the name “NOVAKIND” for its pharmaceutical products, including a product called “DEFZAKIND” (Deflazacort tablets). In response, the respondent issued a cease-and-desist notice on 25-08-2024, alleging trademark infringement and seeking an injunction to prevent the appellant from using “KIND” as part of their branding.
Counsel for respondents focused on the phonetic similarity between the marks “MANKIND” and “NOVAKIND” and submitted that the use of “KIND” was likely to cause confusion among the public, especially since “KIND” had become a dominant and distinctive feature of the respondent’s trademarks. It was also asserted that the appellant’s use of “KIND” for pharmaceutical products could mislead consumers into believing that the appellant’s products were part of the respondent’s well-established family of products. The respondent further pointed out that the appellants were possibly misrepresenting the registration of its trademarks and the location of its office on its products, exacerbating the potential for public confusion.
The Court noted that from a reading of Section 29(2) of the Act, a registered trademark stands infringed by a person, who not being a registered proprietor or a person who uses the same by way of permitted use, uses a mark in the course of trade, which because of its identity with the registered trademark and the similarity of goods or services are covered by the registered trademark. In terms of subsection (2), a case of infringement would also be made out if the mark which is used by the alleged infringer and its similarity to the registered trademark together with the identity of the goods or services covered by such registered trademark is likely to cause confusion.
The Court also noted that Section 29(4) of the Act sets out three circumstances in which a case of infringement would be established. The said provision too deals with a situation, where a person, who, not being a registered proprietor of the trademark, uses a mark which is identical with or similar to the registered trademark, and which may be used in relation to goods or services which are “not” similar to those associated with the registered trademark and where the registered trademark has a reputation in India.
The Court further observed that it becomes pertinent to note that while sub-section (2) deals with situations where the infringing mark is used in respect of goods or services which bear a similarity to the area in which the registered trademark operates, sub-section (4) extends to those situations where the mark may also be used in relation to goods or services, which may not be similar to those for which the trademark may be registered. Section 29(5) on the other hand, deals with a completely distinct situation and relates to the use of a registered trademark by a person as part of his trade name or name of his business concern.
The Court concluded that sub-sections (2), (3), (4) & (5) of Section 29 deal with distinct contingencies and it would be wholly incorrect to view the use of a registered trademark as part of the trade name or name of a business concern being liable to be tested solely on the anvil of Section 29(5). Sub-sections (2), (3) & (4) clearly appear and operate in separate silos. Thus, notwithstanding a deceptively similar adoption of a registered trademark as part of a trade name or the name of a business concern, such acts of infringement would also be liable to be decided based on prescriptions as contained in sub-sections (2), (3) & (4) of Section 29.
Thus, the Court found that the mark “MANKIND” had become distinct and was likely to be confused with mark “NOVAKIND.” The injunction was justified based on the risk of consumer confusion and the similarity of the marks in the context of identical pharmaceutical goods. The appeal was dismissed, and the injunction continued in favor of the respondent.
[Novakind Bio Sciences Private Limited v Mankind Pharma Limited, FAO(OS) (COMM) 212/2023, decided on 05-10-2024]
Judgment by: Justice Yashwant Varma
Advocates who appeared in this case :
Mr. Sushant Mahapatra, Mr. Rahul Kumar and Ms. Shruthi Uppvapali, Advocates for appellants
Mr. Amit Sibal, Sr. Adv. with Mr. Hemant Dawani, Ms. Saumya Bajpai, Mr. Rishabh Sharma, Mr. Shreyansh Gautam, and Mr. Saksham Dhingra, Advocates for respondents