Physician, chemist may get confused due to common suffix 'KIND': HC on Mankind, Novakind trademark dispute

Presiding over the case, Justice C Hari Shankar observed that the physician or chemist may get confused due to common ‘KIND’ suffix.

In this case, Mankind Pharma (the petitioner) was the fifth largest pharmaceutical company of India and it Chairman and founder adopted the trademark ‘MANKIND’ as part of the trading style in 1986. The petitioner used “KIND” as second part of the name of various pharmaceutical preparations which the drug maker manufactured and sold.

Aggrieved by the mark NOVAKIND BIO SCIENCES PRIVATE LIMITED, used by Novakind for various pharmaceutical products manufactured and sold by it. A cease-and-desist notice was issued by Mankind to the Novakind calling upon it to desist using the mark ‘NOVAKIND’ as according to the petitioner, the said mark, by including “KIND” as the second part of the word “NOVAKIND” infringed the its registered trademark.

It was in these circumstances that Mankind approached the High Court by means of the suit, seeking a permanent injunction restraining the Novakind from using “KIND” as a part of the trade name/trademark under which Novakind manufactured and sold any of its medicinal and pharmaceutical preparations.

Senior Advocate Amit Sibal with Advocate Hemant Daswai appeared for the plaintiff (Mankind) while Advocate Sushant Mahapatra appeared for the defendant (Novakind).

Examining the case, the court noted;

“The “KIND” suffix not being endemic to pharmaceutical preparations, there is every likelihood of a customer of average intelligence and imperfect recollection, who chances across the defendant’s “NOVAKIND” product, to believe it to be one of the KIND family of the marks belonging to the plaintiff. At the very least, therefore, the possibility of an impression of association between the defendant‟s mark and the plaintiff‟s mark, in the mind of the customer of average intelligence and imperfect recollection would exist. Such likelihood of association is statutorily sufficient to constitute the infringement within the meaning of Section 29(2)(b)10 of the Trade Marks Act."

The court also noted the plight of the less privileged, who often rely on more affordable clinics and doctors who might prescribe medicines based on the manufacturer. It said;

“The poor, and those who are unable to afford the services of the more upmarket physician, often people these “clinics”. Many of these “doctors” prescribe medicines based on their manufacturer. Again, it is a well known fact that the same drug, when manufactured by different companies, may work differently, and that, at the very least, with different degrees of efficacy."

Considering all facts and perspectives, the court stressed the potential confusion among professionals and emphasised the importance of distinct naming conventions for pharmaceutical products. It observed;

"A physician, or dispensing chemist, who finds drugs manufactured by the plaintiff especially effective, may prefer them, but may get confused into believing the drugs manufactured by the defendant to be those of the plaintiff, owing to the common "KIND" suffix. At the end of the day, the guiding principle is that, where medicines are concerned, even the slightest possibility of confusion cannot be permitted, and that, therefore, drugs - especially prescription drugs - have to be clearly distinguishable from one another."

The Coordinate bench had previously granted an ex-parte ad interim injunction, stopping Novakind from producing any pharmaceutical item bearing the ‘Kind’ suffix or in any way infringing on Mankind’s registered trademark.

In its latest order, the High Court held that the marks of the plaintiff and the defendant are deceptively similar. It said;

"In view of the aforesaid, the marks of the plaintiff and the defendant being deceptively similar ... to avoid an injunction, having failed to find favour with this Court, the ad interim injunction granted by this Court on 20 April 2021 is made absolute pending disposal of the present suit."

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

https://indiankanoon.org/doc/158521843/