Full Judgment Text
$~52
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 09 August 2024
+ FAO(OS) (COMM) 191/2018, CM APPL. 34275/2018 &
CM APPL. 53909/2023
MANKIND PHARMA LTD .....Appellant
Through: Mr. Rajiv Nayar, Sr. Adv. and Mr.
Akhil Sibal, Sr.Adv. with Mr.
Ankur Sangal, Mr. Ankit Arvind,
Mr. Kiratraj Sadana, Ms. Nidhi
Pathak, Advs.
versus
CHANDRA MANI TIWARI & ANR .....Respondent
Through: Mr. Sanyat Lodha, Ms. Sanjana
Saddy, Advs.
CORAM:
HON'BLE MR. JUSTICE YASHWANT VARMA
HON'BLE MR. JUSTICE RAVINDER DUDEJA
O R D
E R
% 09.08.2024
1. The plaintiff/appellant impugns the order dated 06 July 2018
passed by the learned Single judge in terms of which its prayer for
grant of temporary injunction has come to be refused. The suit itself
had been instituted for the defendant/respondent being restrained from
adopting and using the trade name “MERCYKIND
PHARMACEUTICAL PRIVATE LIMITED”.
2. Shorn of unnecessary details, it appears to have been the case of
the plaintiff/appellant that it had adopted “MANKIND" as a trademark
in 1986. It is also stated to have applied for registration of that name
in Class 05 in 1995 claiming its use since 1986. It further asserts that
the plaintiff/appellant is a leading manufacturer in the pharmaceutical
business and holds as many as 157 trademarks with the suffix
“KIND”. It is stated to have revenues for more than INR 4000 crores
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and a turnover of INR 7000 crores.
3. It is further averred in the plaint that “MANKIND” was also
accorded the status of a well-known trademark. However, the
defendant/respondent assert that the Trade Mark Registry declared the
same as a well-known trademark vide order dated 14 December 2020
and hence post the institution of the suit.
4. It was alleged that the defendant was initially working with the
appellant as a Marketing Manager till he left their employment on 17
January 2015. According to them, the defendant initiated the process
for incorporation of a company under the corporate name
“MERCYKIND PHARMACEUTICALS PRIVATE LIMITED” on 14
January 2015 and which company came to be incorporated on 17
January 2015. The respondent is stated to have applied for registration
of the trademark “MERCYKIND PHARMACEUTICAL” on 20
January 2017. It is only thereafter and once it started using the trade
name “MERCYKIND” on its packaging that led to the institution of
the suit before this Court.
5. While refusing injunction, the learned Single Judge has firstly
taken into consideration the responses which were submitted by the
plaintiff/appellant itself before the Trademark Registry and where it
was faced with proposed registrations of drugs such as
“ATROVAKIND” and “STARKIND”. The learned Judge has
observed that it was incumbent upon the plaintiff to have made
appropriate disclosures in respect of the aforesaid prosecution history
while seeking injunction.
6. It then proceeds to note that the defendants are not using the
word “MERCYKIND” as a trademark. This observation flowed from
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the learned Judge taking into consideration that the goods of the
defendants were called “MERCYMOX”, “MERCYCOUGH” and
“MERCYCOPE”. It is in the aforesaid context that it has rendered
certain observations with respect to the scope and ambit of Section
1
29(6) of the Trade Marks Act, 1999 and the same in one sense being
unhinged from the requirements of sub-sections (1) and (4) thereof.
The principal grievance was noted by the learned Single Judge as
being of the plaintiff questioning the use of the suffix “KIND” by the
defendant.
7. As we go through the ultimate findings that have come to be
rendered by the learned Single Judge, we note that it has clearly taken
notice of the fact that the defendant had applied and filed for
registration of “MERCYKIND PHARMACEUTICAL” along with a
logo as a trademark. However, it has chosen to desist from rendering
any substantive findings since, and as is so recorded in the order, no
arguments in that respect appear to have been addressed on behalf of
the plaintiff/appellant.
8. Insofar as the question of similarity and likelihood of deception
or confusion is concerned, the learned Judge has observed as follows:-
“O. However, notice can be taken of the fact that pharmaceutical
products generally fall in two categories i.e. Over The Counter
drugs or prescribed or schedule drugs. Prescribed or schedule drugs
cannot be sold except on a prescription of, a qualified medical
practitioner. Neither Over The Counter drugs/medicines are known
to be asked for by the name of the manufacturer / marketeer thereof
nor are the qualified medical practitioners known to prescribe
drugs / medicines by the name of their manufacturer / marketeer
and are known to prescribe by the name/mark under which the said
drugs are sold and which in the case of drugs/medicines of the
defendants is not 'MERCYKIND'. In fact, of late, the qualified
1
Act
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medical practitioners are being instructed to prescribe the schedule
/ prescribed drugs by their pharmaceutical/generic names and not
even by their trade names.
P. Thus, mere affixation of the name of the defendant No.2
Company as manufacturer or marketeer of the drugs/medicines
sold by the defendants, would in my opinion, not qualify as a use
thereof as a trade mark, even under Section 29(6) of the Act.”
9. It has ultimately proceeded to observe that once it is found that
“MERCYKIND” is not a trademark, the question of Section 29(5) of
the Act being violated would not arise.
10. In our considered opinion and in light of the undisputed fact
that the plaintiff/appellant had adopted the trademark “MANKIND”
way back in 1986, the first issue which clearly merited consideration
was that of dishonest adoption. This we observe uninfluenced by the
fact that the defendant was an erstwhile employee of the plaintiff
appellant company.
11. In our considered opinion, the principles which must govern
infringement action in the case of pharmaceutical products are far
more stringent than those which may ordinarily be applicable. This
aspect was duly highlighted by us in Glenmark Pharmaceuticals
2
Ltd. vs. Sun Pharma Laboratories Ltd. where we had observed as
follows: -
“ 51. We at the outset note that the issue which stands raised would
have to be examined bearing in mind and at the forefront the
stringent, exacting and uncompromising standards which are liable
to be adopted when we test an action for infringement or passing
off pertaining to competing marks in the pharmaceutical sector as
opposed to any other genre of products. It would be pertinent to
recollect that in Cadila Healthcare the Supreme Court was
concerned with the asserted similarity between the brand names
“FALCITAB” and “FALCIGO”. The Trial Judge had refused
interim injunction on the basis that they differed in appearance,
2
2024 SCC OnLine Del 2707
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formulation and price. The aforesaid order of the Trial Judge was
affirmed by the High Court. Although the Supreme Court in Cadila
Healthcare refused to interfere with the judgment impugned and
had disposed of the Special Leave Petition with directions for
expeditious conclusion of the trial itself, there were notable
observations which came to be rendered and which are of
significant import.
52. Indisputably, our courts have consistently held that the question
of confusion is essentially one of first impression. It is in the
aforesaid backdrop that courts have held that the issue of deceptive
similarity has to be answered from the point of view of a man of
average intelligence with imperfect recollection. The tests which
28
were propounded in Re Pianotist Co application as far back as in
1906 have consistently guided courts in answering issues of
deceptive similarity. In Pianotist those principles were explained in
the following words:
“You must take the two words. You must judge of them, both by
their look and by their sound. You must consider the goods to
which they are to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In
fact, you must consider all the surrounding circumstances; and
you must further consider what is likely to happen if each of
those trade marks is used in a normal way as a trade mark for
the goods of the respective owners of the marks. If, considering
all those circumstances, you come to the conclusion that there
will be a confusion—that is to say, not necessarily that one man
will be injured and the other will gain illicit benefit, but that
there will be a confusion in the mind of the public which will
lead to confusion in the goods—then you may refuse the
registration, or rather you must refuse the registration in that
case.”
53. It has also been recognized by courts that while a close scrutiny
or comparison of the two competing marks may disclose some
points of distinction, the question itself is liable to be answered
from the point of view of the unwary purchaser and who is unlikely
to expend sufficient amount of time examining the marks
scrupulously or with a degree of exactness. Yet another precept
which precedents require us to bear in consideration is the essential
features of a trademark and in such situations marked or slight
differences in get-up, packaging or the manner in which the marks
are written fading into insignificance. Ultimately a challenge of
infringement or passing-off would have to be answered on the
anvil of a resemblance so near and unerring that it is likely to
deceive or cause confusion.
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54. We note that F. Hoffmann-La Roche was dealing with the issue
of deceptive similarity in the context of usage of the words
“DROPOVIT” and “PROTOVIT”. While examining the challenge
which stood raised, the Court pertinently observed that the question
of likelihood of confusion is neither liable to be considered nor
answered on a meticulous comparison of two words nor our courts
liable to undertake a “ letter by letter and syllable by syllable ”
comparison. All of the aforesaid principles, so enunciated, are a
reiteration of the underlying precept being of the marks being
examined from the gaze of a man of average intelligence and
imperfect recollection. In F. Hoffmann-La Roche the Supreme
Court ultimately came to conclude that the two words were so
dissimilar that there existed no reasonable probability of confusion
either from a visual or phonetic point of view.
55. However, Cadila Healthcare assumes significance insofar as
medicines and drugs are concerned in light of the following
observations which were rendered:
“ 21. It will be useful to refer to some decisions of American
courts relating to medicinal products. In the case of American
Cynamid Corpn. v. Connaught Laboratories Inc . [231 USPQ
128 (2nd Cir 1986)] it was held as under:
“Exacting judicial scrutiny is required if there is a
possibility of confusion over marks on medicinal
products because the potential harm may be far more
dire than that in confusion over ordinary consumer
products.”
22. It may here be noticed that Schedule „H‟ drugs are those
which can be sold by the chemist only on the prescription of
the doctor but Schedule „L‟ drugs are not sold across the
counter but are sold only to the hospitals and clinics.
Nevertheless, it is not uncommon that because of lack of
competence or otherwise, mistakes can arise specially where
the trade marks are deceptively similar. In Blansett
Pharmaceuticals Co. v. Carmick Laboratories Inc . [25 USPQ
2, 1473 (TTAB 1993)] it was held as under:“Confusion and
mistake is likely, even for prescription drugs prescribed by
doctors and dispensed by pharmacists, where these similar
goods are marketed under marks which look alike and sound
alike.”
23. In the case of Glenwood Laboratories, Inc. v. American
Home Products Corpn . [173 USPQ 19 (1972) 455 F Reports
2d, 1384 (1972)] the Court of the United States had held that:
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“The fact that confusion as to prescription drugs could
produce harm in contrast to confusion with respect to
non-medicinal products is an additional consideration
for the Board as is evident from that portion of the
opinion in which the Board stated:„The products of the
parties are medicinal and the applicant's product is
contraindicated for the disease for which the opposer's
product is indicated. It is apparent that confusion or
mistake in filling a prescription for either product could
produce harmful effects. Under such circumstances, it
is necessary for obvious reasons, to avoid confusion or
mistake in the dispensing of the pharmaceuticals.‟
The board's view that a higher standard be applied to
medicinal products finds support in previous decisions of this
Court, Clifton v. Plough [341, F 2d 934, 936, 52, CCPA
1045, 1047 (1965)] („it is necessary for obvious reasons, to
avoid confusion in the dispensing of
pharmaceuticals‟), Campbell Products, Inc. v. John Wyeth &
Bro. Inc . [143, F 2d 977, 979, 31 CCPA 1217 (1944)] („it
seems to us that where ethical goods are sold and careless use
is dangerous, greater care should be taken in the use of
registration of trade marks to assure that no harmful
confusion results‟).”
24. In the case of R.J. Strasenburgh Co. v. Kenwood
Laboratories, Inc . [106 USPQ 379 (1955)] as noted in the
decision of Morgenstern Chemical Co. case , it had been held
that:“ Physicians are not immune from confusion or mistake.
Furthermore it is common knowledge that many prescriptions
are telephoned to the pharmacists and others are handwritten,
and frequently handwriting is not unmistakably legible.
These facts enhance the chances of confusion or mistake by
the pharmacists in filling the prescription if the marks appear
too much alike when handwritten or sound too much alike
when pronounced.”
25. The drugs have a marked difference in the compositions
with completely different side effects, the test should be
applied strictly as the possibility of harm resulting from any
kind of confusion by the consumer can have unpleasant if not
disastrous results. The courts need to be particularly vigilant
where the defendant's drug, of which passing-off is alleged, is
meant for curing the same ailment as the plaintiff's medicine
but the compositions are different. The confusion is more
likely in such cases and the incorrect intake of medicine may
even result in loss of life or other serious health problems. In
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this regard, reference may usefully be made to the case
of Glenwood Laboratories, Inc. v. American Home Products
Corpn. [173 USPQ 19 (1972) 455 F Reports 2d, 1384 (1972)]
where it was held as under:
“The products of the parties are medicinal and the
applicant's product is contraindicated for the disease for
which opposer's product is indicated. It is apparent that
confusion or mistake in filling a prescription for either
product could produce harmful effects. Under such
circumstances it is necessary for obvious reasons, to avoid
confusion or mistake in the dispensing of the
pharmaceuticals.”
56. The aforesaid principles as propounded clearly point towards a
more exacting and stringent test being adopted when an action of
infringement or passing-off comes to be laid in respect of drugs. As
was pertinently observed by the Supreme Court in Cadila
Healthcare , in the case of drugs, the tests to be adopted is that of
“ exacting judicial scrutiny ”. It was further held that the mere fact
that the drug was being sold on the basis of a prescription or
dispensed by pharmacists would also not constitute a reliable
determinant which would dilute the strict view test as articulated
by it while attempting to answer the question of possibility of
confusion. This the Supreme Court so held bearing in mind the
injurious or detrimental possibilities attendant to an inadvertent
purchase, sale and consequential consumption of a drug. It also
took into consideration the harmful effect that a usage of a drug
may have even though the competing products may be meant for
curing an identical ailment. Not stopping at this, the Court also
found that notwithstanding the pharmaceutical market being
regulated by prescriptions and the dispensation of products being
overseen and supervised by trained physicians, those factors would
not allay the fears and apprehensions attendant to an incorrect or
inappropriate drug being accidentally dispensed. This is evident
from the following observations appearing in Paras 27 and 28 of
the report:
“27. As far as the present case is concerned, although both
the drugs are sold under prescription but this fact alone is not
sufficient to prevent confusion which is otherwise likely to
occur. In view of the varying infrastructure for supervision of
physicians and pharmacists of medical profession in our
country due to linguistic, urban, semi-urban and rural divide
across the country and with high degree of possibility of even
accidental negligence, strict measures to prevent any
confusion arising from similarity of marks among medicines
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are required to be taken.
28. Here it will be useful to refer to the decision
of Morgenstern Chemical Co. case where it has been held as
under:
“(5) In the field of medical products, it is particularly
important that great care be taken to prevent any
possibility of confusion in the use of trade marks. The
test as to whether or not there is confusing similarity in
these products even if prescribed and dispensed only by
professionally trained individuals does not hinge on
whether or not the medicines are designed for similar
ailments. The rule enunciated by Judge Helen in Cole
Chemical Co. v. Cole Laboratories [DC Mo 1954, 118 F
Supp 612, 616, 617, 101, USPQ 44, 47, 48] is applicable
here:
„The plaintiff and the defendant are engaged in the
sale of medical preparations. They are for ultimate
human consumption or use. … They are particularly
all for ailments of the human body. Confusion in such
products can have serious consequences for the
patient. Confusion in medicines must be avoided.
*
Prevention of confusion and mistakes in medicines is
too vital to be trifled with.‟
The observations made by Assistant Commissioner
Leeds of the Patent Office in R.J. Strasenburgh
Co. v. Kenwood Laboratories, Inc . [106 USPQ 379
(1955)] USPQ 380 are particularly apt,
that:„Physicians are not immune from confusion or
mistake. Furthermore it is common knowledge that
many prescriptions are telephoned to the pharmacists
and others are handwritten, and frequently
handwriting is not unmistakably legible. These facts
enhance the chances of confusion or mistake by the
pharmacists in filling the prescription if the marks
appear too much alike when handwritten or sound too
much alike when pronounced.‟
The defendant concedes that physicians and
pharmacists are not infallible but urges that the
members of these professions are carefully trained to
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detect difference in the characteristics of
pharmaceutical products. While this is doubtless true
to dos ( sic ) not open the door to the adoption by
manufacturers of medicines of trade marks or names
which would be confusingly similar to anyone not
exercising such great care. For physicians and
pharmacists are human and in common with the rest
of mankind are subject to human frailties. In the field
of medicinal remedies the courts may not speculate as
to whether there is a probability of confusion between
similar names. If there is any possibility of such
confusion in the case of medicines public policy
requires that the use of the confusingly similar name
be enjoined (see Lambert Pharmacol Ltd. v. Bolton
Chemical Corpn. [DCNY 1915, 219 F 325, 326]).”
57. More significantly, the Supreme Court proceeded to hold and
spoke of a lesser degree of proof being applicable in the case of
medicinal products while answering the question of confusing
similarity and the same being warranted in order to subserve large
public interest. These observations are found in para 32 of the
report, which is extracted hereinbelow:
“ 32. Public interest would support lesser degree of proof
showing confusing similarity in the case of trade mark in
respect of medicinal products as against other non-medicinal
products. Drugs are poisons, not sweets. Confusion between
medicinal products may, therefore, be life threatening, not
merely inconvenient. Noting the frailty of human nature and
the pressures placed by society on doctors, there should be as
many clear indicators as possible to distinguish two medicinal
products from each other. It is not uncommon that in hospitals,
drugs can be requested verbally and/or under critical/pressure
situations. Many patients may be elderly, infirm or illiterate.
They may not be in a position to differentiate between the
medicine prescribed and bought which is ultimately handed
over to them. This view finds support from McCarthy on
rd
Trade Marks , 3 Edn., para 23.12 of which reads as under:
“The tests of confusing similarity are modified when the
goods involved are medicinal products. Confusion of
source or product between medicinal products may
produce physically harmful results to purchasers and
greater protection is required than in the ordinary case. If
the goods involved are medicinal products each with
different effects and designed for even subtly different
uses, confusion among the products caused by similar
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marks could have disastrous effects. For these reasons, it
is proper to require a lesser quantum of proof of confusing
similarity for drugs and medicinal preparations. The same
standard has been applied to medical products such as
surgical sutures and clavicle splints.””
58. Equally instructive are the following principles which came to
be identified by our Court in Novartis AG:
21. I do not accept the submission of the learned counsel
for the defendant as I feel that it is more dangerous if the
pharmaceuticals products bearing the same mark is used
for different purposes for the same ailment or even
otherwise. I also do not accept the contention of the
defendant's counsel that there would be no confusion if the
product contain different ingredients/different salt. In my
opinion, it is more dangerous and harmful in the trade if
the same trade mark is used for different ailments. The
Apex court has already dealt with this proposition of law
in the case of Cadila Healthcare Ltd. v. Cadila
Pharmaceuticals , (2001) 5 SCC 73 : (2001) 21 PTC 300
(SC) and held as under:
“25. The drugs have a marked difference in the
compositions with completely different side effects, the
test should be applied strictly as the possibility of harm
resulting from any kind of confusion by the consumer
can have unpleasant if not disastrous results. The courts
need to be particularly vigilant where the defendant's
drug, of which passing off is alleged, is meant for
curing the same ailment as the plaintiffs medicine but
the compositions are different. The confusion is more
likely in such cases and the incorrect intake of medicine
may even result in loss of life or other serious health
problems. In this regard, reference may usefully be
made to the case of Glenwood Laboratories,
Inc. v. American Home Products Corp , 173 USPQ 19
(1972) 455 F. Reports 2d, 1384 (1972), where it was
held as under:
“The products of the parties are medicinal and
applicant's product is contraindicated for the disease
for which opposer's product is indicated. It is
apparent that confusion or mistake in filling a
prescription for either product could produce
harmful effects. Under such circumstances, it is
necessary for obvious reasons, to avoid confusion or
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mistake in the dispensing of the pharmaceuticals.”
22. The other argument of the counsel for the defendant
that the plaintiffs product is available in tablets and oral
suspension form and the defendant's product is available in
injection form has also no force as it has been seen from
experience of the pharmaceuticals products available in all
over the world that most of the companies are making
pharmaceuticals products in both the forms i.e. tablets as
well as in injection form under the same trade mark. As
per well settled law, the actual confusion and deception is
not required in order to prove the case of passing, off even
if the defendant has adopted the mark innocently and the
court comes to the conclusion that the two trade marks are
deceptively similar, injunction under the said
circumstances has to be granted. Actual deception is not
required in an action of passing off. Century
Traders v. Roshan Lal Duggar & Co. , AIR 1978 Del 250 :
1 Supp PTC 720 (Del) (DB). Therefore there is no chance
of confusion and deception.
59. As is evident from the aforesaid extracts, our Court found that a
difference in ingredients or salts which make up competing
pharmaceutical products, would not be aspects which could be said
to be germane when it come to the question of likelihood of
confusion. It also negated the mode and method of ingestion as
well as the form of the competing products. This is evident from
para 22 of the report and where the Court held that the fact that the
competing products were dispensed either in the form of a tablet or
an oral suspension would be wholly irrelevant.
60. We find that the aspect of heightened scrutiny was also
emphasized by a Division Bench of the Bombay High Court
in Macleods Pharmaceuticals. While enunciating the first principles
which must be borne in mind, the Bombay High Court in paras 21
and 22 held as follows:
“ 21. This Court in the decision of Boots Company Plc,
England (supra) after considering various judgments held
that there are three tests which have to be considered for
deciding the question whether the trade mark is
deceptively similar to the other mark or not and they
are:—
(1) The mark has to be considered as a whole ,
(2) It is a question of first impression and
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(3) The question has to be considered from the view point
of a man of average intelligence .
22. The Delhi High Court in Win-Medicare Pvt.
Ltd. (supra) after considering the relevant decisions on the
question of misrepresentation or deception between two
trade marks held that following Rules of Comparison can
be culled out from various pronouncements of the
Courts from time to time :
I. Meticulous Comparison not the correct way .
II. Mark must be compared as a whole
III. First Impression .
IV. Prima Facie view not conclusive .
V. Structural Resemblance .
VI. Similarity in Idea to be considered.”
61. The test of “exacting judicial scrutiny”, when we are called
upon to deal with medicinal products was reiterated and re-
affirmed as would be evident from para 23:
23. The Supreme Court in the decision between Milment
Oftho Industries (supra) after reviewing the law on the
subject held as follows:
“8. In respect of medicinal products it was held that
exacting judicial scrutiny is required if there was a
possibility of confusion over marks on medicinal
products because the potential harm may be far more
dire than that in confusion over ordinary consumer
products. It was held that even though certain
products may not be sold across the counter,
nevertheless it was not uncommon that because of
lack of competence or otherwise that mistakes arise
specially where the trade marks are deceptively
similar. It was held that confusion and mistakes could
arise even for prescription drugs where the similar
goods are marketed under marks which looked alike
and sound alike. It was held that physicians are not
immune from confusion or mistake. It was held that it
was common knowledge that many prescriptions are
telephoned to the pharmacists and others are
handwritten, and frequently the handwriting is not
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legible. It was held that these facts enhance the
chances of confusion or mistake by the pharmacists in
filling the prescription if the marks appear too much
alike.
(Emphasis added)”
62. After noticing the decision in Cadila Healthcare , the Bombay
High Court culled out the following principles:
“25. The principles which are emerging from the decisions
set out hereinabove are summarised in the following
manner:
(a) When a particular medicinal or a pharmaceutical product
is involved as the impugned trade mark which may deceive
the public or cause a confusion with respect to another
trademark, it is the Court's primary duty to take utmost care
to prevent any such possibility of confusion in the use of
trademarks.
(b) Confusion in case of a non-medicinal or a
nonpharmaceutical product may only cause economic loss
to the person, but on the other hand, a confusion in terms of
medicinal or a pharmaceutical product may have disastrous
effect on the health. Hence, it is proper to require a lesser
quantum of proof of confusing similarity for such products.
(c) The Court may not speculate as to whether there is a
probability of confusion between the marks. Mere existence
of the slightest probability of confusion in case of medicinal
product marks, requires that the use of such mark be
restrained.
(d) While arriving at a conclusion with respect to the
similarity and confusion between medicinal products, the
same should be examined from the point of view of an
ordinary common man of average intelligence instead of
that of a specialised medicinal practitioner. Courts must
decide the same from the view point of man with average
intelligence considering multiple factors such as the first
impression of the mark, salient features of both the
products, nature of the commodity, overall similarity and
the possibility of the same creating a confusion amongst the
public at large.
(e) The primary duty of the Court is towards the public and
the purity of the register. Duty of the Court must always be
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to protect the public irrespective of what hardship or
inconvenience it may cause to a particular party whose trade
mark is likely to deceive or cause confusion.
(f) The following rules of comparison can be culled out
from various pronouncement of Court from time to time.
(i) Meticulous comparison is not the correct way.
(ii) Mark must be compared as whole.
(iii) First impression.
(iv) Prima facie view is not conclusive.
(v) Structural resemblance.
(vi) Similarity in idea to be considered.
(g) The main object of maintaining trade mark register is
that the public should know whose goods they are buying. It
is therefore essential that the register should not contain the
trade mark which is identical by which purchaser may likely
to be deceived by thinking that they are buying the goods of
a particular company/industry whereas he is buying the
goods of another company/industry.””
12. Additionally, we also bear in consideration the judgment
rendered by a learned Single Judge in Mankind Pharma Ltd. v.
3
Novakind Bio Sciences (P) Ltd , and who had explained the scope of
Section 29 of the Act in the following terms: -
“ 15. When used for medicinal preparations, the Supreme Court in
Amritdhara Pharmacy v. Satya Deo Gupta [Amritdhara Pharmacy
v. Satya Deo Gupta, 1962 SCC OnLine SC 13 : AIR 1963 SC 449]
, held the marks “AMRITDHARA” and “LAKSHMANDHARA”
to be so structurally and phonetically similar as to confuse a
customer of average intelligence and imperfect recollection.
Mutatis mutandis, it has to be held that the marks “NOVAKIND”
and “MANKIND”, when used for pharmaceutical preparations, are
also confusing, especially as it is not in dispute that the plaintiff
uses, for all its products, the suffix “KIND” which has, therefore,
become a source identifier of sorts for the plaintiff. Recognising
this fact, a Coordinate Bench of this Court has, in fact, in Mankind
3
2023 SCC OnLine Del 4806
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Pharma Ltd. v. Cadila Pharmaceuticals Ltd. [Mankind Pharma Ltd.
v. Cadila Pharmaceuticals Ltd., 2015 SCC OnLine Del 6914 :
(2015) 61 PTC 465] , injuncted the defendant, in that case, from
using the mark METROKIND, holding the suffix “KIND” to be a
dominant feature of the plaintiff's trade marks.
16. The plaintiff has, in its favour, registration of the mark
“MANKIND” in every class. Inasmuch as the marks “MANKIND”
and “NOVAKIND”, even when compared as sole marks, are
phonetically deceptively similar, their concluding “KIND”
suffix/syllable being the same, the submission of Mr Mahapatra
that the plaintiff does not have any registration for the mark
“KIND”, fails to impress.
17. Moreover, the plaintiff is not pitching its case on infringement
merely on the suffix “KIND”. The mark “NOVAKIND”, even seen
as a whole, is phonetically deceptively similar to the mark
“MANKIND”. The “KIND” suffix not being endemic to
pharmaceutical preparations, there is every likelihood of a
customer of average intelligence and imperfect recollection, who
chances across the defendant's “NOVAKIND” product, to believe
it to be one of the KIND family of the marks belonging to the
plaintiff. At the very least, therefore, the possibility of an
impression of association between the defendant's mark and the
plaintiff's mark, in the mind of the customer of average intelligence
and imperfect recollection would exist. Such likelihood of
association is statutorily sufficient to constitute the infringement
within the meaning of Section 29(2)(b) [ 29. Infringement of
registered trade marks.—(2) A registered trade mark is infringed
by a person who, not being a registered proprietor or a person using
by way of permitted use, uses in the course of trade, a mark which
because of— ∗∗∗ (b) its similarity to the registered trade mark and
the identity or similarity of the goods or services covered by such
registered trade mark;is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered
trade mark.] of the Trade Marks Act, inasmuch as the two marks
are deceptively similar and they are used for identical goods.
Where similar marks are used for identical goods, and, owing to
similarity of the marks and identity of the goods in respect of
which they are used, there is likelihood of association of the
defendant's mark with the plaintiff's, Section 29(2)(b) categorically
holds that a case of infringement is made out.
18. But, submits Mr Mahapatra, Section 29(2)(b) has no
application in the present case, as cases where the defendant's mark
is used as part of its corporate name have to be examined solely
within the peripheries of Section 29(5), and the applicability of
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Sections 29(2) to (4) of the Trade Marks Act stand ruled out. He
has relied for this purpose, on the judgment of the Full Bench of
the High Court of Bombay in Cipla Ltd. case [Cipla Ltd. v. Cipla
Industries (P) Ltd., 2017 SCC OnLine Bom 6791 : AIR 2017 Bom
75] .
19. As a legal proposition, and without examining its applicability
to the facts of the present case, there can be little doubt that the
judgment of the Full Bench of this High Court of Bombay in Cipla
Ltd. case [Cipla Ltd. v. Cipla Industries (P) Ltd., 2017 SCC
OnLine Bom 6791 : AIR 2017 Bom 75] supports the contention
that Mr Mahapatra advances. The Full Bench of the High Court of
Bombay in Cipla Ltd. case [Cipla Ltd. v. Cipla Industries (P) Ltd.,
2017 SCC OnLine Bom 6791 : AIR 2017 Bom 75] has, indeed,
expressed the view that, in the case of marks which are used as part
of the corporate name of the defendant, the case would have to be
tested on the anvil of Section 29(5) of the Trade Marks Act alone
and that Sections 29(2) to 29(4) would have no applicability in
such a case.
20. Apart from my own judgment in Novartis AG case [Novartis
AG v. Novaegis (India) (P) Ltd., 2023 SCC OnLine Del 1124] ,
this Court, speaking much earlier through Justice Dr S. Muralidhar
(as he then was) has, in Bloomberg Finance LP case [Bloomberg
Finance LP v. Prafull Saklecha, 2013 SCC OnLine Del 4159 :
(2014) 207 DLT 35] , specifically held that, while Section 29(5)
applies in a case where a registered trade mark is used by another
person as part of its corporate name, nonetheless, even if it is found
on facts that Section 29(5) does not apply, the applicability of the
preceding sub-sections (1) to (4) of Section 29 is not ruled out. I
may reproduce, for this purpose, Paras 36 and 51 of Bloomberg
Finance LP case [Bloomberg Finance LP v. Prafull Saklecha, 2013
SCC OnLine Del 4159 : (2014) 207 DLT 35] and Paras 40 and 41
of Novartis AG case [Novartis AG v. Novaegis (India) (P) Ltd.,
2023 SCC OnLine Del 1124] , which speak for themselves, thus:
From Bloomberg case [Bloomberg Finance LP v. Prafull Saklecha,
2013 SCC OnLine Del 4159 : (2014) 207 DLT 35]
“36. The expression „mark‟ has been defined in Section 2(m)
of the TM Act to include „a device brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination
thereof‟. (emphasis supplied) Therefore, for the purpose of
Section 29(4), the use of a mark as part of a corporate name
would also attract infringement. In other words, if the
registered mark is used by a person, who is not the registered
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proprietor of such mark or a permitted user, as part of the
corporate name under which he trades then also infringement
would also result. What is however important is that the
registered trade mark must be shown to have a reputation in
India and should be shown to have been used by the infringer
„without due cause‟. Further, it should be shown that such
adoption or use has resulted in the infringer taking unfair
advantage of the registered mark or is detrimental to the
distinctive character or repute of the registered trade mark.
∗∗∗
51. The legal position emerging as a result of the above
discussion may be summarised as under:
(a) Section 29(5) of the TM Act, 1999 relates to a situation
where: (i) the infringer uses the 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‟; and (ii)
the business concern or trade is in the same goods or services in
respect of which the trade mark is registered.
(b) This is in the nature of a per se or a „no-fault‟ provision
which offers a higher degree of protection where both the above
elements are shown to exist. If the owner/proprietor of the
registered trade mark is able to show that both the above
elements exist then an injunction order restraining order the
infringer should straightway follow. For the purpose of Section
29(5) of the TM Act, 1999 there is no requirement to show that
the mark has a distinctive character or that any confusion is
likely to result from the use by the infringer of the registered
mark as part of its trade name or name of the business concern.
(c) However, in a situation where the first element is present and
not the second then obviously the requirement of Section 29(5)
is not fulfilled. Where the registered trade mark is used as part
of the corporate name but the business of the infringer is in
goods or services other than those for which the mark is
registered, the owner or proprietor of the registered trade mark
is not precluded from seeking a remedy under Section 29(4) of
the TM Act, 1999 if the conditions attached to Section 29(4) are
fulfilled.
(d) Given the object and purpose of Sections 29(1) to (4),
Section 29(5) cannot be intended to be exhaustive of all
situations of uses of the registered mark as part of the corporate
name. Section 29(5) cannot be said to render Section 29(4)
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otiose. The purpose of Section 29(5) was to offer a better
protection and not to shut the door of Section 29(4) to a
registered proprietor who is able to show that the registered
mark enjoying a reputation in India has been used by the
infringer as part of his corporate name but his business is in
goods and services other than that for which the mark has been
registered.
(e) A passing-off action is maintainable in the case of a well-
known mark even if the goods and services being dealt with by
the parties are not similar.”
From Novartis AG case [Novartis AG v. Novaegis (India) (P)
Ltd., 2023 SCC OnLine Del 1124]
“40. Adverting, now, to the submissions advanced by Mr
Jayant Kumar regarding the various sub-clauses of Section
29 of the Trade Marks Act, I am unable to subscribe with
the view that he seeks to espouse. Section 29(5), in my
considered opinion, is an additional ground of
infringement, apart from the grounds contained in Sections
29(1) to (4). Section 29(5) states that a registered trade
mark is infringed by a person who uses such registered
trade mark as part of his trade name or part of the name of
his business concern, while dealing with goods of service
in respect of which the trade mark is registered.
Undoubtedly, if a defendant falls within the mischief of
Section 29(5), he would be guilty of infringement under
that provision. That does not, however, in my mind, dilute,
in any fashion, the impact or import of Sections 29(1) to
(4). Neither have Sections 29(1) to (4) been made subject
to Section 29(5), nor is there any non obstante clause in
Section 29(5) which would render the preceding sections
subject to it.
41. Besides, Sections 29(1) to (4) refer to the defendant
using a „mark‟. The expression „mark‟ is defined in
Section 2(1)(m) of the Trade Marks as including „a device,
brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of
colours or any combination thereof‟. As such, within the
broad parentheses of the expression „mark‟ are included
„headings‟, „names‟, „words‟ and „letters‟. „NOVAEGIS‟,
even as part of the business name of the defendant is,
therefore, a „mark‟ as defined in Section 2(1)(m).”
(emphasis supplied)
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21. With greatest respect to the Full Bench of the High Court of
Bombay, therefore, I would choose to follow the contrary view that
this Court has been adopting in such cases.”
The aforesaid decision ultimately came to be affirmed by us in
Novakind Bio Sciences Private Limited vs. Mankind Pharma
4
Limited .
13. Although we are informed that during the pendency of the
present appeal, the defendant has made significant changes both in its
logo and get up of products which are being marketed by it, in our
considered opinion, these and other issues which arise would clearly
merit consideration afresh by the learned Single Judge.
14. We accordingly allow the instant appeal along with pending
applications and set aside the order dated 06 July 2018 passed by the
learned Single Judge. The application under Order XXXIX Rule 1 & 2
of the Code of Civil Procedure, 1908 shall consequently stand revived
for consideration afresh. All rights and contentions of respective
parties are kept open.
15. We request the learned Single Judge to take up application for
temporary injunction with due expedition subject to the status of its
Roster and the pendency of matters of older vintage.
16. List before the concerned Roster Bench on 27.08.2024.
YASHWANT VARMA, J.
RAVINDER DUDEJA, J.
AUGUST 09, 2024/ neha
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FAO (OS) (COMM) 212/2023
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