Name of the case- Mankindd Pharma Limited Vs Arvind Kumar Trading and Others.
C.O. (Comm. IPD-TM) 146/2022 Decided On, 18 April 2023 At, High Court of Delhi By, THE HONORABLE JUSTICE: AMIT BANSAL By, J. For Petitioner: Hemant Daswani and Saumya Bajpai, Advocates

ISSUE –

The main question before the Court was whether the trademark ‘NIKIND’, registered in Class 5 in the name of the respondent (Arvind Kumar Trading), must be expunged from the Register of Trade Marks due to similarity with Mankind Pharma’s popular “KIND” family of trademarks, non-use of the mark by the respondent, and absence of bona fide intention to use the trademark when the application was made.

RULE-

The Court reviewed the case in the context of a number of provisions of the Trade Marks Act, 1999. Section 11(1) and 11(2) provide for refusal of registration of trademarks similar or deceptively similar to already registered marks when use is likely to cause confusion. Section 47(1)(a) and (b) permit removal of a registered mark due to non-use within a period of five years from registration. Section 57 authorizes the Honourabe Court to canceled a trademark erroneously registered. The clause of  the ‘well-known trademark’ under the Section 2(1)(zg) was also be applicable in identifying the distinctiveness of the marks of the  given petitioner.

ANALYSIS-

The Court observed that the mark “MANKIND” had been taken by Mankind Pharma as far back as 1986 and that there was widespread use of the “KIND” suffix in more than 150 trademarks, with well-established goodwill and turnover under these marks. It was discovered that the trademark ‘NIKIND’ was likely to cause confusion with Mankind’s registered mark ‘NIMEKIND’, which is both in Class 5 for pharmaceutical products. In spite of notice service, the given respondent did not turn up or submit any such reply, which established default of defense. The honourable Court has been considered the  precedent in Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd., in which the Delhi High Court had previously established that the “KIND” suffix, while not necessarily descriptive of drugs, had gained distinctiveness because of extended and continuous usage. Additionally, the respondent did not repel claims that the trademark ‘NIKIND’ was never utilized for a period of five years from registration, warranting cancellation under Section 47(1)(a) and (b). The use of ‘NIKIND’ seemed to be a bad faith effort to capitalize on the reputation of the petitioner’s well-established brand.

CONCLUSION-

The Delhi High Court found the trademark ‘NIKIND’ to be liable for deletion from the Register for being misleadingly similar to Mankind Pharma’s “KIND” family of marks, for non-use, and for absence of bona fide intent in the course of registration. The honourable Court granted the rectification petition, ordered the deletion of the ‘NIKIND’ mark under Sections 11, 47, and 57 of the Trade Marks Act. I concur with the judgment since it appropriately enforces the principles of prior user rights, protection from misleading similarity, and ensuring integrity in the register of trademarks by erasing unused or opportunistically filed marks.