Delhi HC Cancels UNKIND Trademark, Upholds Mankind Pharma's KIND Family Rights

The respondent, Ram Kumar trading as Dr Kumars Pharmaceuticals, adopted the mark ‘UNKIND’ on 17 July 2008 with a user claim dating back to 30 June 2006. Upon noticing the registration, Mankind Pharma sent a Cease and Desist Notice, which went unanswered.

Mankind Pharma highlighted its long-standing use and market reputation: “The Petitioner has been using the mark 'MANKIND' since 1986 through its predecessor-in-interest whereas Respondent No.1 had applied for registration of the Impugned Trade Mark with user claim since 30.06.2006. However, the Petitioner is yet to come across goods bearing the Impugned Trade Mark.”

It also emphasized its market success: “For the year 2017, the Petitioner group of companies had achieved annual turnover of ₹3525.56 Crores. In the year 2017, the Petitioner group for the top 24 products containing the word element 'KIND' had achieved annual turnover of over ₹1300 Crores. The Mark 'MANKIND' … has been determined under Rule 124 of the Trade Marks Rules, 2017 as a well-known Trade Mark … and included in the list of well-known Trade Marks.”

The petitioner stressed that ‘KIND’ is distinctive and exclusively associated with Mankind Pharma: “The word ‘KIND’ is not related to the products being sold by the Petitioner, but due to its long and continuous usage, the said word has been exclusively associated with the Petitioner.”

Mankind further argued non-use by the respondent and the likelihood of market confusion: “The Impugned Trade Mark is liable to be removed for non-use in terms of Section 47(1)(a) and (b) of the Act… Merely changing the first part of the Impugned Trade Mark and using the distinguishing family name or characteristic is likely to cause confusion in the market.”

The respondent, Ram Kumar trading as Dr Kumars Pharmaceuticals, did not appear before the Court despite being provided multiple opportunities and being served through all permissible modes, including WhatsApp.

As a result, the Court noted: “In the absence of any appearance and reply by Respondent No. 1, the pleadings made in the present Petition have remained uncontroverted. Accordingly, for all purposes, the pleadings herein are deemed to have been admitted by Respondent No. 1.”

This effectively meant that all submissions and claims made by Mankind Pharma were taken as admitted by the respondent, allowing the Court to proceed with the matter ex parte.

The Court recognised the distinctiveness and goodwill of the KIND family of marks:

The Petitioner has several Trade Mark registrations granted in its favour that use the word 'KIND' as a suffix. Hence, the Petitioner has developed a Family of Marks with the word 'KIND' as an essential part of the Petitioner's Trade Marks. In Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd. 2015 SCC OnLine Del 6914, a Coordinate Bench of this Court has observed that the word 'KIND' has no relation to sale of the Pharmaceutical products and the Petitioner having established its first user of the word 'KIND' in the pharmaceutical market is entitled to a higher protection for the word 'KIND'.

It also noted:

"Although the word 'KIND' is not related to the pharmaceutical products being sold by the Petitioner, but due to its continuous and extensive usage, the said mark 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 Impugned Trade Mark and using the distinguishing family name or characteristic is likely to cause confusion in the market."

"From the averments made in the Petition and the evidence on record, the Petitioner has established that it is the prior registered proprietor and a prior user of the mark 'MANKIND' and KIND Family of Marks since the year 1986 through its predecessor."

On deceptive similarity and dishonest adoption, the Court held:

“The Impugned Trade Mark is confusingly / deceptively similar to the Petitioner’s prior adopted, registered Mark ‘MANKIND’ and KIND Family of Marks. The Impugned Trade Mark has been adopted by Respondent No.1 dishonestly to trade upon the established goodwill and reputation of the Petitioner and to project itself to be associated with the Petitioner. Therefore, the continuation of the Impugned Trade Mark on the Register of Trade Marks is in contravention of the provisions of Section 11 of the Act and is liable to be cancelled under Section 57 of the Act.”

Consequently, the Court directed:

“The Trade Marks Registry is directed to remove the Impugned Trade Mark ‘UNKIND’ bearing Application No. 1711563 registered in Class 35 from the Register of Trade Marks.”

It also instructed the Registry to send a copy of the order for compliance:

“The Registry is directed to send a copy of the present order to the Trade Mark Registry at e-mail - llc-ipo@gov.in for compliance.”