TaxTMI 
TaxTMI 
2018 (7) TMI 2386
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....ccounts, damages etc. 2. The suit came up before this Court first on 8th February, 2017, when though summons thereof were issued but no ex parte relief granted. Pleadings have since been completed and the counsels have been heard. 3. It is inter alia the case of the plaintiff, that (i) the plaintiff, being the fourth largest pharmaceutical company of the country, is the registered proprietor of the mark 'MANKIND' in 42 different classes and has for three decades used numerous marks by adding prefix or suffix to the elements 'MANKIND' and / or 'KIND' and is also the registered owner of websites with 'MANKIND' in their web addresses; (ii) around 5th November, 2016, the plaintiff, while going through the record of the Trade Marks Registry, came across the trade name 'MERCYKIND PHARMACEUTICALS PRIVATE LIMITED' of the defendant no. 2; (iii) defendant no. 2 is doing business under the trade marks such as 'MERCYMOX', 'MERCYCOUGH', MERCYCOPE'; (iv) the defendants refused to comply with the cease and desist notice issued prior to the institution of the suit, giving false and frivolous reasons; (v) the defendants are carrying ....
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.... defendants deceptively similar; the plaintiff itself took the said position before the Registrar of Trade marks in its various trade marks applications; (e) the Registrar of Trade Marks, while examining the plaintiff's application for registration of trade mark 'ATORVAKIND', had raised objection under Section 11 of the Trade Marks Act, 1999, on account of its alleged similarity with the marks 'ATORKIND' and 'ATORKIND-F' cited in the Examination Report; (f) plaintiff, in its reply to the Examination Report, stated that the marks, when considered as a whole, are entirely different from the cited trade marks and the mark should be looked at as a whole; (g) similar submissions were made by the plaintiff in the proceedings before the Registrar of Trade Marks for registration of its mark 'STARKIND', wherein several marks incorporating the word 'KIND' were cited as conflicting and the plaintiff in its reply to the Examination Report stated that all the cited marks were not structurally, phonetically and visually similar to that of the plaintiff's proposed mark; (h) plaintiff having taken such a stand, cannot maintain the present suit; (i) i....
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....utt Sharma Vs. Navratna Pharmaceutical Laboratories (1965) 1 SCR 737, para no. 30 of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. (2014) 58 PTC 136 (Del), and, para nos.26, 29 to 33 of Sanofi India Ltd. Vs. Universal Neutraceuticals Pvt. Ltd. (2014) 60 PTC 593 (Del); (vii) the plaintiff is using 'KIND' in a plurality of registered marks as a common prefix or suffix and which has become the distinguishing element of the family of marks and is recognized by the customers as an identifying trade mark in itself; in these circumstances, even though the defendants' mark may not be close to a particular member of the family, the use of the distinguishing family feature or characteristics is likely to cause confusion; reliance is placed on McCarthy on Trademarks and Unfair Competition, Fourth Edition, Vol.4 23:61 at pages 23-244 and 23-245; (viii) adoption of essential feature 'KIND' in the defendants' trade name is use of the plaintiff's registered trade marks within the meaning of Section 29(5); reliance is placed on paras no.7, 9 to 11, 15,17, 18, 23, 25, 26, 29 to 33 and 53 of Sanofi India Ltd. supra, on paras no.5 to 8 of Kirorimal Kashiram Marke....
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....d. Vs. Cipla Industries Pvt. Ltd. (2017) 69 PTC 425 (Bom.); (d) the test of infringement under Section 29(5) is not any different for family of marks; (e) Amar Singh Chawal Wala, Kirorimal Kanshiram and Neon Laboratories supra relied upon by the senior counsel for the plaintiff were in trade mark versus trade mark situation and not considered under Section 29(5) which alone is attracted in the present case; (f) essential feature theory only applies to judge whether one trade mark is deceptively similar to another and is not applicable to cases coming within the purview of Section 29(5) of the Act; in Mex Switchgears supra cited by the senior counsel for the plaintiff, 'MEX' was not just a corporate name but also a trade mark; (g) similarly, in Citigroup Inc. Vs. Citicorp Business & Finance Pvt. Ltd. (2015) 216 DLT 359 cited by the senior counsel for the plaintiff during the hearing, 'CITICORP' per se was registered trade mark of the plaintiff and the same was used by the defendant therein, both as corporate name as well as trade mark; (h) the plaintiff's suit on the ground of passing off, as per averments in the plaint, is beyond the territorial jurisdiction of ....
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....ct application under above reference. Regarding objection raised under section 11 we submit: The present trade mark when considered as a whole is entirely different from all the cited trademarks and is completely an honest and bonafide adoption in good faith and without any reference to and / or knowledge of the alleged marks cited in the search report. The present mark is being an invented word is therefore capable of distinguishing from that of others. Further it is submitted that the mark shall be looked into as a whole and when done so, the Applicant's mark is visually, phonetically and structurally dissimilar from the marks cited in the search report. In view of above submission, it is humbly requested to waive off the objection and accept the mark. Yours sincerely, For Daswani & Daswani Sd/- Ishanki Gupta" B. The communication dated 2nd January, 2015 of the plaintiff qua 'STARKIND' at page 124 of the defendants documents is as under: "To, The Registrar of Trade Marks, The Trade Mark Registry, New Delhi Dear Sirs, Re: Trade Mark Number 2307155 dated ....
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.... plea of estoppel, which is not available against statute, is at all available to the defendants. D. Though for the aforesaid reason, the plaintiff would be disentitled from interim relief even if any prima facie merit was found in the arguments of the senior counsel for the plaintiff, but for the sake of completeness, the same may also be dealt with. E. Infringement is dealt with in Section 29 of the Act. Sub- Sections (1) to (4) of Section 29 provide for infringement by use, in the course of trade, of a mark which is identical with or deceptively similar to the registered trade mark of the plaintiff. F. The objection of the plaintiff is to use by defendants of the word 'MERCYKIND' because 'MERCYKIND' is to be found, only in the name of the defendant No.2 Company. Else, according to the plaintiff also, defendants are carrying on business in the same goods as the plaintiff, under the marks 'MERCYMOX', 'MERCYCOUGH', 'MERCYCOPE', etc. It is the case of defendants, that 'MERCYKIND', to which objection is taken, is not the trade mark of the defendants and is not used as trade mark by the defendants. G. ....
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....39;MERCY' in the trade marks of the defendants indicates the source thereof to be the defendants. Once, it is found that such names of the medicines of the defendants with the prefix 'MERCY' are the trade marks of the defendants, the question of 'MERCYKIND' also being the trade mark of the defendants with respect to the same goods and of the goods of the defendants having two trade marks, would not arise. Therefrom, it follows that 'MERCYKIND' is not the trade mark of the defendants. L. I however find the defendants to have, at page 88 of their documents, filed copy of an application filed for registration of 'Mercykind Pharmaceutical' along with the logo as a trade mark. No arguments were however addressed with respect thereto and the plaintiff has neither pleaded the same nor the senior counsel for the plaintiff has addressed any arguments with respect to the same. On the contrary, it was the categorical case of the counsel for the defendants that 'MERCYKIND' is not used by the defendants as a trademark. I am thus, for the purposes of the present application, not considering the same and it will be open to the plaintiff to, if ....
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....is 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." S. While the test of infringement under Section 29(1) to (4) is " ... identical with or deceptively similar to ... ", the test of infringement under Section 29(5) of the mark, of which infringement is claimed, as would be apparent from language thereof reproduced above, is "uses such registered trade mark as his trade name or part of his 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". Thus, the registered trade mark 'MANKIND' or any other registered trade marks with 'KIND' as prefix or suffix of the plaintiff would be infringed under Section 29(5), if the defendants were to be found to be using 'MANKIND' or any of the other registered trade marks of the plaintiff with 'KIND' as prefix or suffix as part of their trade name. Neither is it so the case of the plaintiff nor are the defendants found to be using 'MANKIND' or any other registered trade mark of the plaintiff with 'KI....
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....parison of the provisions of 1958 Act and the 1999 Act shows that 1958 Act did not have a provision corresponding to Sub-Section (5) of Section 29; it is a new provision; (iii) perusal of Section 158 of the 1999 Act shows that apart from repealing 1958 Act, certain provisions of the Companies Act were also amended by the 1999 Act; (iv) two provisions of the Companies Act which have been amended by the 1999 Act, are Sections 20 and 22 of the Companies Act; (v) the provisions of various Sub-Sections of Section 29 of the Act are in a scheme and none of the provisions are either surplus or otiose; (vi) it appears that the Legislature decided to treat cases, where the defendant uses registered trade mark of the plaintiff as part of his trade name, as a distinct subject for the purpose of laying down law in relation to infringement of registered trade mark and legislated that if the defendant uses registered trade mark of the plaintiff as part of his trade name, then if the goods in relation to which the defendant is so using the trade mark are the same as the goods in respect of which the plaintiff's trade mark is registered, then only it will amount to infringement and not in case ....