Mankind Pharma Wins PETKIND Trademark Battle, Court Orders Journal Advertisement Within Two Months

On February 6, 2024, the Registry issued a hearing notice, and on March 11, 2024, Mankind’s counsel appeared before the Examiner to present arguments. However, on March 15, 2024, the Examiner rejected the application, holding that PETKIND was visually and phonetically similar to PETKIND PHARMA and likely to cause confusion among consumers.

Aggrieved by the rejection of the application for registration of the subject trademark, Mankind approached the Court, submitting that the decision is arbitrary, legally flawed, and contrary to the basic principles governing trademark examination.

Hemant Daswani, the learned counsel for Mankind, submitted that the Appellant has over Two Hundred and Eighty Registered Marks out of which two hundred and ten trademarks are registered in Class 5 alone, wherein the word 'KIND' forms part of the essential feature of their trademarks ("KIND Family of Marks").

"The annual turnover in respect of twenty-five different top products of the Appellant containing the word element 'KIND' as a part of its Trade Mark cumulatively is over Rs 25,53,00,00,000/- (Rs. Two Thousand Five Hundred and Fifty Three Crores) for the Financial Year 2022-2023," Daswani added.

He submitted that Mankind is engaged in the business of selling the pet food products and the pet feed is being sold in the market with the brand name 'PETSTAR.' The appellant has another registered trademark, 'Mankind's Pet Cuisine,' for selling pet-related products.

He further submitted that against the cited mark, the appellant has filed a notice of opposition before the Respondent by asserting its rights over the KIND family of marks.

Mankind argued that it has continuously used KIND-suffixed marks since 1986, generating goodwill, well before Wellford’s adoption of the cited mark. The Respondent, however, maintained that Mankind’s reply to the Examination Report lacked substantive evidence and insisted that phonetic and structural similarity between PETKIND and PETKIND PHARMA created a likelihood of confusion in the same class of goods.

After considering both sides, Justice Tejas Karia held that mere similarity is not sufficient for refusal under Section 11(1) unless an actual likelihood of confusion is proven. The Court examined the refusal grounds under Section 11(1) of the Trade Marks Act, 1999, which deals with “relative grounds” for rejecting a trademark application where an earlier mark already exists. Justice Tejas Karia observed that mere similarity between two marks is not enough to justify rejection.

Under Section 11(1)(a), registration can be denied if a proposed mark is identical to an earlier mark and used for similar goods or services. Likewise, Section 11(1)(b) bars marks that are similar to an earlier one and used for identical or similar goods or services. However, in both cases, there must also be a likelihood of confusion among the public, including the possibility of the new mark being associated with the earlier one.

To support this view, the Court referred to Manu Garg & Ratan Behari Agrawal v. Registrar of Trade Marks (2023), where a coordinate bench clarified that Section 11(1) applies only when the goods or services are similar or identical — not simply because they fall under the same Class. The ruling also underscored that the decisive factor is the likelihood of confusion, not just resemblance between the marks.

The Court observed;

"The Appellant has several Trade Mark registrations granted in its favour in Class 5 that use the word 'KIND' as a suffix. Hence, the Appellant has developed a Family of Marks with the word 'KIND' as an essential part 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 the Appellant having established its first user of the word 'KIND' in the pharmaceutical market is entitled to a higher protection for the word 'KIND'. Due to its continuous and extensive usage, the word 'KIND' has come to be exclusively associated with the Appellant, and this would entitle the Appellant to a higher protection for the KIND Family of Marks."

"Likelihood of confusion is not to be easily presumed. The nature of the goods and the class of their purchasers has to be borne in mind. A perusal of the response to the Examination Report, shows that the Cited Mark was applied for on a proposed to be used basis and there is no active user of the Cited Mark."

"The Appellant has established that they have been using various marks with the suffix 'KIND' since 1986 and the use of the 'KIND' is affiliated to the Appellant especially with respect to goods falling under Class 5. The Appellant has over 210 registered Trade Marks in Class 5 alone with the suffix 'KIND' and the Appellant has amassed significant goodwill. The Cited Mark in the Examination Report would not lead to rejection of the Subject Trade Mark considering the overwhelming use and registrations of marks with the suffix 'KIND' by the Appellant."

Subsequently, the court held;

"In view of the above, the present Appeal is allowed and the Impugned Order is set aside. The Subject Trade Mark ought not to have been rejected and deserves to proceed for advertisement.

However, it is made clear that if there are any opposition proceedings filed against the Subject Trade Mark, the same would be decided in accordance with law on its own merits, without any reference to and without being influenced by the present Order.

The Respondent shall proceed with the advertising of the Subject Trademark, i.e., PETKIND, in accordance with the provisions of the Act, within two months."

To view the official order, click the link below:

https://indiankanoon.org/doc/125313925/