Mankind's KIND Brand Upheld by Delhi HC, KINDPAN Trademark Quashed

The order was passed by Justice Saurabh Banerjee in the petition filed by Mankind under Section 57 of the Trade Marks Act, 1999.

The Court was hearing a plea seeking cancellation of the trademark registration granted to Preet Kamal Grewal, a Ludhiana-based proprietorship trading as Sanavita Medicare, who had registered ‘KINDPAN’ under Class 5 of the Act.

Mankind Pharma, represented by Advocates Hemant Daswani, Saumya Bajpai and Pranjal, argued that the pharmaceutical giant had adopted the trademark ‘MANKIND’ as early as 1986 and was incorporated under the same name in 1991. The company emphasized its massive brand portfolio containing over 300 trademarks incorporating the term ‘KIND’, registered across multiple classes. Mankind's counsel also referred to the company’s registration of ‘KIND’ under Class 5 in 2013 (Reg. No. 2457970), predating the impugned ‘KINDPAN’ mark filed in 2014 on a "proposed to be used" basis.

The counsel stated that “the petitioner has come to acquire substantial reputation and goodwill in the pharmaceutical industry, both in India and abroad,” and that the ‘KIND’ element acts as a “signature mark” and a “source identifier” for Mankind’s products.

It was further submitted that ‘KIND’ was not a generic or descriptive term in the pharmaceutical sector, and its extensive and arbitrary use by Mankind over the years had endowed it with distinctiveness and secondary meaning. Reliance was placed on several precedents, including Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd., Caterpillar Inc. v. Mehtab Ahmed, Bata India Ltd. v. Chawla Boot House, and Mankind Pharma Ltd. v. Novakind Bio Sciences Pvt. Ltd., to argue that the ‘KIND’ family of marks deserved heightened protection.

The petitioner also referred to a Chartered Accountant’s certificate showing an annual turnover of Rs. 4,794 crores in 2019-2020 and to its recognition as a “well-known trademark” under Section 2(1)(zg) of the Act, published in Journal No. 1978 dated December 14, 2020.

Importantly, the counsel argued that even minor variations of the ‘KIND’ mark were likely to create confusion among the public and trade, and that the impugned mark ‘KINDPAN’ “confers an undue advantage on [the respondent] by spring boarding on the reputation of the petitioner.” Quoting Neon Laboratories Ltd. v. Themis Medicare Ltd., counsel emphasized: “If there be a series of marks registered to a single proprietor, a new mark with a feature prominent in that series leads to a perfectly natural assumption by a consumer that the new mark, too, emanates from the same proprietor.”

While Respondent No. 1 (Preet Kamal Grewal) did not appear despite due service and was proceeded ex-parte by an order dated December 11, 2023, Respondent No. 2 (Trade Marks Registry) entered appearance but failed to file a reply.

The lack of denial or rebuttal to the petitioner’s assertions led the Court to hold that all averments made by Mankind were “deemed admitted as true.” The Court also noted that the respondent’s registration of ‘KINDPAN’ came despite Mankind already having a valid registration for ‘KIND’ under the same Class.

After examining the facts and submissions, the Court observed;

"The undeniable/ admitted facts are that the trademark 'MANKIND' and 'KIND' family of marks belonging to the petitioner are unique and fanciful, neither generic nor laudatory and have no direct connection with the petitioner nor with the goods falling in Class 5 of the Act for which they are being used; and that the petitioner is the prior adopter thereof; and that the petitioner has been using them from the time of its first inception way back in the year 1986; and the petitioner is the owner and registered proprietor of the said 'MANKIND' and 'KIND' family of marks; and today the petitioner has gained such reputation and developed a goodwill in the said 'MANKIND' and 'KIND' family of marks that they are identified/ connected with the petitioner, and it only, and especially when they are qua medicinal, pharmaceutical and veterinary preparations in Class 5 of the Act; and the petitioner has all throughout, from time to time, ever-zealously protected the said 'MANKIND' and 'KIND' family of marks; and when the respondent no.1 applied for the registration of the impugned mark in the same Class 5 of the Act, the petitioner had already been granted registration for the very same trademark 'KIND' vide registration no. 2457970 dated 10.01.2013 in Class 5 of the Act for medicinal, pharmaceutical and veterinary preparations by the very same respondent no.2; and that the respondent no.1, in any ways, applied for registration of the impugned mark on a "proposed to be used" basis."

The Court found that the adoption of ‘KINDPAN’ by the respondent was not coincidental, but “an attempt to encroach upon the established goodwill and built-up reputation of the petitioner” and likely to cause confusion in the market. It noted;

“The aforesaid and the conduct(s) of the respondent no.1 establishes that there was no plausible occasion and/ or reason for it to first adopt and then apply for the very impugned mark 'KIND' as that of the petitioner and which is similar in more than one way to the trademark 'MANKIND' and 'KIND' family of marks belonging to the petitioner. The same casts a shadow of doubt since the respondent no.1 was in the same field of offering the very same medicinal and pharmaceutical preparations as the petitioner. The only plausible occasion and/ or reason for doing that is seemingly that the respondent no.1 wanted to encroach upon the established goodwill and built-up reputation of the petitioner in and to the trademark 'MANKIND' and 'KIND' family of marks to establish a possible connection with the petitioner as also to potentially causing confusion amongst the members of the trade, the general public and all. All these amount to diluting the distinctiveness of the trademark 'MANKIND' and 'KIND' family of marks belonging to the petitioner.”

Citing provisions of Section 11(1) and 11(2) of the Trade Marks Act, the Court concluded that the impugned registration was “not sustainable and is liable to be taken off.”

"Thus, in view of the aforesaid submissions made by the learned counsel for the petitioner as also considering the aforesaid factual matrix involved, the registration of the impugned mark in the name of respondent no.1 is not sustainable and is liable to be taken off."

Subsequently, the Court allowed the petition and directed;

“The Trade Marks Registry is directed to remove the impugned trademark 'KINDPAN' registered vide trademark no. 2795896 in Class 5 of the Act, issued in the name of respondent no. 1.”

The Registry was further directed to send a copy of the order to the Trade Marks Registry for compliance.

To view the original order, click on the link below:

https://indiankanoon.org/doc/150021357/