Trade mark infringement requires use of the registered mark as a trade name; merely similar corporate names are insufficient.

Prior non-disclosure of the applicant's earlier stand before the Trade Marks Registry was material to interim equitable relief, and the Court treated the omission as inconsistent with the duty of full disclosure and clean hands. On infringement, use of "MERCYKIND" in the corporate name did not by itself establish trade mark use, and Section 29(5) was read to require use of the registered mark, or part of it, as the trade name; a merely deceptively similar name was insufficient. The passing off claim also did not justify interim relief on the pleaded facts, and the territorial basis was doubtful.

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Issues: (i) Whether the plaintiff's prior stand before the Trade Marks Registry and non-disclosure of material facts disentitled it to interim equitable relief; (ii) whether the defendants' use of "MERCYKIND" in the corporate name amounted to infringement under Section 29 of the Trade Marks Act, 1999, including Section 29(5); and (iii) whether the passing off claim could sustain interim relief and territorial jurisdiction in the facts pleaded.

Issue (i): Whether the plaintiff's prior stand before the Trade Marks Registry and non-disclosure of material facts disentitled it to interim equitable relief.

Analysis: The plaintiff had earlier asserted before the Trade Marks Registry that marks such as "ATORVAKIND" and "STARKIND" were to be seen as a whole and were distinct from cited marks incorporating "KIND". Those representations were relevant at the stage of interim relief. The plaintiff did not place that material before the Court when seeking ex parte relief. Such omission was material because an applicant for an interim injunction must approach the Court with full disclosure and clean hands.

Conclusion: The plaintiff was not entitled to interim equitable relief on account of its prior stand and concealment of material facts.

Issue (ii): Whether the defendants' use of "MERCYKIND" in the corporate name amounted to infringement under Section 29 of the Trade Marks Act, 1999, including Section 29(5).

Analysis: The Court distinguished between use of a mark as a trade mark and mere use of a company name. The defendants' medicines were sold under marks such as "MERCYMOX", "MERCYCOUGH", "MERCYCOPE", "MERCYPAN" and "MERCYCID", and "MERCYKIND" was not shown to be the trade mark under which the goods were marketed. Mere mention of the corporate name on products or business papers did not amount to trade mark use on the facts. As to Section 29(5), the provision was read as applying where the registered trade mark itself, or a part of it, is used as the trade name or part of the business name. A merely deceptively similar name was held insufficient for infringement under that sub-section. The defendants were also not shown to be using the plaintiff's registered mark "MANKIND" or any registered family mark as part of their name.

Conclusion: No prima facie case of trade mark infringement was made out under Section 29, including Section 29(5).

Issue (iii): Whether the passing off claim could sustain interim relief and territorial jurisdiction in the facts pleaded.

Analysis: The plaint did not plead any cause of action within the territorial jurisdiction of the Court for the passing off claim, while the defendants were located in Maharashtra. Further, since the disputed expression was not being used as a trade mark, the passing off case also did not justify interim injunction on the pleaded facts.

Conclusion: The passing off claim did not support interim relief and the territorial basis pleaded was doubtful.

Final Conclusion: The application for temporary injunction failed and the plaintiff was denied interim protection.

Ratio Decidendi: For infringement under Section 29(5), the registered trade mark must be used as the trade name or part of the trade name of the business concern; a merely deceptively similar corporate name, without use of the registered mark itself as such, is insufficient.

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