Delhi High Court: In the present case, an appeal was filed against order dated 15-3-2024 (‘impugned order’) , whereby Mankind Pharma’s (‘Mankind’) application for registration of ‘PETKIND’ mark in Class 5 was refused on ground that there is a prior application for registration of a mark, which is phonetically and visually similar to ‘PETKIND’ mark in respect of similar goods and services and under the same Class. A Single Judge Bench of Tejas Karia J., observed that Mankind had over 210 registered trade marks in Class 5 alone with the suffix ‘KIND’ and had amassed significant goodwill. The Court stated that ‘PETKIND PHARMA’ mark would not lead to rejection of the ‘PETKIND MARK’, considering the overwhelming usage and registrations of marks with the suffix ‘KIND’ by the Mankind. Thus, the Court set aside the impugned order and stated that the Registrar of Trade Marks should proceed with the advertising of the ‘PETKIND’ mark, in accordance with the provisions of the Trade Marks Act, 1999 (‘the Act’).
Background:
Mankind Pharma (‘Mankind’), is one of the largest pharmaceutical companies of India and a leading marketer of pharmaceutical, medicinal and veterinary preparations in India under its various distinctive and recognised well-known trade marks. Mankind had applied for registration of the ‘PETKIND’. The Registry of Trade Marks after examining the Application, issued an Examination Report dated 5-11-2021 (‘Examination Report’), which stated that the Application was open to objection on relative grounds of refusal under Section 11 of the Act because the same or similar Trade Mark(s) were already on record of the register for the same or similar goods or services.
Further, as per the Examination Report, an objection was raised under Section 11(1) of the Act, as the ‘PETKIND’ mark was identical with or similar to the mark ‘PETKIND PHARMA’ applied by Wellford Pharmaceutical (P) Ltd. Thus, because of such similarity, there existed a likelihood of confusion on the part of the public. Thereafter, a hearing was conducted before the Examiner wherein the Application was rejected vide the impugned order. Mankind, aggrieved by the rejection of the Application, had approached the Court through the present appeal.
Case Analysis and Decision:
The Court noted that from a bare reading of Section 11(1) of the Act, it was clear, that mere identity or similarity of the mark, of which registration is sought, and the earlier mark, is not sufficient as a ground to reject the registration application. Further, Section 11(1)(a) of the Act bars the registration of a Trade Mark that is identical/similar to an earlier Trade Mark and used in relation to identical/similar goods or services.
The Court observed that in either case, a third condition had to be satisfied that owing to the identity or similarity between the ‘PETKIND’ mark and ‘PETKIND PHARMA’ mark, and the identity or similarity between the goods covered under two marks, there existed a likelihood of confusion on the part of the public, which would include a likelihood of association with the earlier Trade Mark.
The Court further noted that the Mankind had several trade mark registrations granted in its favour in Class 5 that used the word ‘KIND’ as a suffix. The Court, thus observed that the Mankind had developed a Family of Marks with the word ‘KIND’ as an essential part of the marks. In Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd. 2015 SCC OnLine Del 6914, a Coordinate Bench of this Court had observed that the word ‘KIND’ has no relation to sale of the pharmaceutical products and Mankind having established its first user of the word ‘KIND’ in the pharmaceutical market was entitled to a higher protection for the word ‘KIND’.
The Court observed that likelihood of confusion was not to be easily presumed, and nature of the goods and class of their purchasers had to be borne in mind. The Court further observed that a perusal of the response to the Examination Report, showed that the Cited Mark was applied for on a proposed to be used basis and there was no active user of the Cited Mark.
The Court observed that the Mankind had established that they had been using various marks with the suffix ‘KIND’ since 1986 and the use of the ‘KIND’ was affiliated to the Mankind especially with respect to goods falling under Class 5. Further, Mankind had over 210 registered trade marks in Class 5 alone with the suffix ‘KIND’ and had amassed significant goodwill. The Court thus observed that the ‘PETKIND PHARMA’ mark would not lead to rejection of the ‘PETKIND’ mark, considering the overwhelming usage and registrations of marks with the suffix ‘KIND’ by the Mankind.
The Court observed that the ‘PETKIND’ mark ought not to have been rejected and deserved to proceed for advertisement. Thus, the Court set aside the impugned order and directed Registrar of Trade Marks, to proceed with the advertising of the ‘PETKIND’ mark, in accordance with the provisions of the Act, within two months.
[Mankind Pharma Ltd v. Registrar, Trade Marks, 2025 SCC OnLine Del 5602, decided on 22-8-2025]
Advocates who appeared in this case:
For the Appellant: Hemant Daswani, Saumya Bajpai and Pranjal, Advocates.
For the Respondent: Vinay Yadav, SPC along with Kamna Behrani, Ansh Kalra and Siddharth Gautam, Advocates.