Deceptively Similar To Mankind's Mark: Delhi High Court Directs Removal Of ‘Nikind’ Mark From Trademarks Register

The Delhi High Court has directed removal of a registered “Nikind” mark from the register of trademarks observing that it was identical and deceptively similar to “Nimekind” mark owned by Indian pharmaceutical and healthcare products company Mankind Pharma Limited.

Justice Amit Bansal observed that the adoption and use of the trademark “Nikind” by a trading entity is very similar to the trademark “Nimekind” and is likely to create confusion in the market.

“Not only is the trademark of the respondent no.1 confusingly/deceptively similar to the petitioner‟s prior adopted, registered, trademark "NIMEKIND" or family of marks of the petitioner but the nature of the goods of the petitioner and the respondent no.1 are identical i.e., medicines for human purpose falling in Class 5,” the court said.

The court was hearing a plea filed by Mankind Pharma Limited seeking cancellation or removal of the trademark “Nikind” registered in Class 5 in the name of Arvind Kumar Trading from the Register of Trade Marks.

It was the case of the pharmaceutical company that it is the owner of “Mankind” or “Kind” marks and have acquired the status of a well-known trademark in terms of section 2(1)(zg) of the Trademarks Act, 1999.

The plea was filed against Arvind Kumar Trading which had registered the mark “Nikind” in respect of medicines for human purpose in class 5. The trademark registration application was filed on February 28, 2012.

It was also Mankind Pharma’s case that a cease and desist notice was issued upon the registered proprietor of the impugned mark which was not replied to.

Ordering removal of the impugned mark from the trademarks register, Justice Bansal noted that Mankind Pharma has several registrations granted in its favour with the prefixes to the word “Kind” and hence, has developed a family of marks with the said word as an essential part of the its trademarks.

“Although, the word “KIND” is not related to the products being sold by the petitioner, but due to its long and extensive usage it has come to be exclusively associated with the petitioner and this would entitle the petitioner to a higher protection for the “KIND” family of marks. Merely changing the first part of the mark by use of the distinguishing family „name‟ (i.e., “KIND” in the present case) or characteristic is likely to cause confusion both in trade and in the mind of public,” the court said.

It also added that the adoption of the mark “Nikind” by Arvind Kumar Trading was with the sole purpose of trading upon the goodwill and reputation of Mankind Pharma and that the impugned mark is also likely to deceive unwary consumers of its association with the pharmaceutical company.

“Therefore, the aforesaid registration in favour of the respondent no.1 could not have been granted in terms of Section 11(1) and 11(2) of the Act and is liable to be cancelled under Section 57 of the Act,” Justice Bansal said.

It added: “Respondent has failed to rebut the contention of the petitioner that the impugned trademark was registered without any bonafide intention on the part of the registered proprietor to use the same in relation to the products covered by the registration and there has been no use of the impugned trademark in relation to the products upto a date of three months before the date of the rectification application. Hence, the mark is liable to be removed in terms of Section 47(1)(a) of the Act.”

Case Title: MANKIND PHARMA LIMITED v. ARVIND KUMAR TRADING AND ANR.

Citation: 2023 LiveLaw (Del) 333

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