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21 Aug 2018

Use of a Trade Name similar to the Trade Mark does not necessarily constitute infringement

In a recent Trademark infringement matter, the Delhi High Court has held that in order to qualify as infringement under Section 29(5) of the Trademarks Act, 1999 (“Act”) there has to be exact use of the registered mark and mere use of a prefix/suffix would not amount to infringement. The Court was hearing a trademark infringement matter wherein the defendant had used a word “MERCYKIND” as part of its trade name which was allegedly similar to that of Plaintiff’s registered trademark “Mankind”.

BACKGROUND

Mankind Pharma Ltd., one of India’s largest Pharmaceutical Company (the “plaintiff”) instituted a Trademark Infringement suit seeking an injunction against Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd[i]., for infringing its registered trademark “MANKIND” and a series of other marks with the suffix/prefix “KIND” and for passing off their business/goods by adopting and using the trade name “MERCYKIND PHARMACEUTICAL PRIVATE LIMITED”.

While passing the order, the Court mentioned that the registered trademark “MANKIND” would be infringed under Section 29(5), if the defendants were found to be using “MANKIND” as part of their trade name. Here, the defendants are using “MERCYKIND” as part of their trade/corporate name which is not a registered trademark of the plaintiff. Thus, there would have been infringement under Section 29(5), if the defendants, as part of their trade name, had used “MANKIND”. Merely because the name of the defendant’s Company is deceptively similar to the plaintiff’s trademark “MANKIND” or any other registered trademarks of the plaintiff with “KIND” as prefix or suffix, it does not amount to infringement under Section 29(5).

This case makes an interesting read for the following reasons:

He who comes into equity must come with clean hands:

In this case, the Court took a strong objection to the fact that the plaintiff had concealed certain information from the Court which the Court considered to be relevant and had weightage in the matter.

The Plaintiff, not so long ago while responding to certain Trademark Examination Report for registration of two of their trademarks had taken a stand that “ATORVAKIND” (plaintiff’s mark) is different from “ATORKIND”; and “STARKIND” (plaintiff’s mark) is different from other cited marks such as “KINDERPLEX”, “KINDERBON”, “KINDERCAL”, “KINDIGEST”, “STAR-VIT”, “STAR”, “STARNET” and “STARCET”. The Court stated that such conduct of the plaintiff disentitles them to the equitable relief. Though the plaintiff contended that the statement made by the advocates for the plaintiff in the communications to the Trademark Registry is a submission of law made in the context and the plaintiff cannot be bound, however the Court refuted the plea and stated that the said contention would not make the fact “irrelevant”.

 “Use” of a trade mark:

Since the Plaintiff had alleged infringement under sub-sections (1) to (4) of Section 29, the Court took cognizance of the fact and considered to test whether the defendants were really using “MERCYKIND” as a trade mark.  

Section 29(6) of the Act defines the “use” of the mark: a person is considered to be using a registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.”

In this case the primary objection of the plaintiff was the word “MERCYKIND” which was being used by the defendants. However, upon observation, the Court found that the word “MERCYKIND” was used only in the name of the defendant Company. The Plaintiff had also contended that the defendants are carrying on the business in the same goods as the plaintiff, under the marks “MERCYMOX”, “MERCYCOUGH”, “MERCYCOPE”, etc. The Court observed that the issue was about the usage of the word “MERCYKIND”, which in fact was not the trade mark of the defendants and was also not used as a trade mark by the defendants. Once, it was established that the defendant’s trademarks were words with the mere prefix “MERCY”, the question of “MERCYKIND” also being the trade mark of the defendants with respect to the same goods of the defendants would not arise. Therefore, it was observed by the Court that “MERCYKIND” was not the trade mark of the defendants, therefore, Section 29(1) to (4) do not apply in this case.


Infringement of a trademark under Section 29(5):

The Court further determined the alleged infringement test under Section 29(5) of the Act, which is: “A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.”

What has been constituted as infringement under Section 29(5) is use of the registered trade mark as trade name or part of the trade name. Thus, the Court held that there would have been infringement under Section 29(5), if the defendants had used the plaintiff’s registered Trademark “MANKIND” as part of their trade name. Merely because “MERCYKIND” is the name of defendant Company, which may be deceptively similar to “MANKIND” or any other registered trade mark of plaintiff with “KIND” as prefix or suffix, would not amount to infringement under Section 29(5). Therefore, it was held that the use of a trade name similar or deceptively similar to the registered trade mark would not constitute infringement under Section 29(5). Thus, prima facie, no case of infringement within the meaning of Section 29 is made out.

Ref:

[i] http://delhihighcourt.nic.in/writereaddata/upload/Announcements/AnnouncementFile_8J7VKAUHFZD.PDF

https://www.livelaw.in/use-of-a-trade-name-similar-or-deceptively-similar-to-the-registered-trade-mark-would-not-constitute-infringement-under-section-295-of-trade-marks-act-delhi-hc-read-judgment/


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