All forms of intellectual property has been a much combated issue due to various legal issues springing up on account of usage of such property. Trademarks, in particular, are the hot property of IP as they exist in almost every sphere of a common man’s life. However, when such trademarks are used by third parties in a manner which has some linkage to the registered trademark, disputes are bound to arise. The Delhi High Court, however, clarified the provision of Section 29(5) of the Trademarks Act to highlight the distinction between actual usage of a registered trademark and using a trademark similar to the already registered trademark. The case was adjudicated upon by the Hon’ble Justice Rajiv Sahai Endlaw.
In the case of Mankind Pharma Ltd Versus Chandra Mani Tiwari and Anr, an injunction application was filed by Mankind seeking to restrain the Defendant from using “Mercykind” as the name of its company due to reasons that the Plaintiff Company was manufacturing and selling its products by using “KIND” as a suffix or prefix. The Plaintiff further stated that by using the name “KIND” as the name of the company, the Defendant had infringed the Plaintiff’s registered trademark under which it manufactured and sold products having the name “KIND” as suffix or prefix in the products sold by the Plaintiff. The Court rejected this contention of the Plaintiff on the reasoning that none of the products of the defendant was sold under the label ‘Mercykind’ and that Mercykind was not used as a “trade mark”.
The Plaintiff had further contended that the name “Mercykind” was used in all products sold by the Defendant company and as such amounted to violation of Section 29(6) of the Trademarks Act. The Court noted that the name ‘Mercykind’ was shown as the name of manufacturer in all products as per drug regulatory laws, and it was not used as a product name. The Court also opined that drugs are prescribed by doctors by their generic name and not trade name, and hence the showing of manufacturer’s name in the drug was of not much consequence. The Court highlighted its reasoning on the contentions of the Plaintiff as follows:
“U. ………….The Legislature, in spite of having used the words “…identical with, or deceptively similar to…” in Section 29(1) to (4), having used different words in Section 29(5) and having not used such words in Section 29(5), is deemed to have not constituted use as name or part of the name, of a word or mark deceptively similar to the registered trade mark of the plaintiff, as infringement thereof by the defendants. 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, there would have been infringement under Section 29(5), if the defendants, as part of their name, had used „MANKIND‟ or any other registered trade mark of the plaintiff. Merely because „MERCYKIND‟ in the name of defendant No.2 Company 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).”
Whilst dismissing the Interim Application seeking for injunction, the Court made specific reference to the Division Bench judgment of the Bombay High Court in Raymond Ltd. Vs. Raymond Pharmaceuticals Pvt. Ltd. 2010 (7) Mh.L.J. 646 as follows:
“I respectfully concur with the dicta aforesaid of the Division Bench of the Bombay High Court. What has been held by the Bombay High Court qua goods, i.e. for infringement of a registered trade mark by use as trade name, the goods in which the defendant is dealing have to be “same/identical” and not “similar”, equally applies to the use of the trade mark as trade name. Use of a trade name similar or deceptively similar to the registered trade mark would not constitute infringement under Section 29(5).”
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