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06 August 2018

Trademark – No infringement if mark not used as trademark

Delhi High Court has denied interim injunction against use of trade name MERCYKIND which was alleged to be infringing the mark MANKIND and also its series of marks with suffix/prefix KIND. The court in this regard noted that plaintiff had taken different stand before the Registrar, in defence to a claim for infringement, where its several marks incorporating word KIND were cited as conflicting.

The court in Mankind Pharma Ltd. v. Chandra Mani Tiwari held that prima facie no infringement under clauses (1) to (4) of Section 29 of Trade Marks Act, 1999 was made out as MERCYKIND was not used as trademark by the defendant. The Court for this purpose observed that pharmaceutical/medicinal products of the defendant were not named MERCYKIND.

It rejected the contention of the plaintiff that use of MERCYKIND even in the name of defendant’s company, is use as a trade mark. It was observed that mere affixation of the name of the defendant company as manufacturer or marketer of the drugs/medicines sold by the defendants, would not qualify as use as a trade mark, even under Section 29(6).

Similarly, observing that use of registered trademark as trade name or part of trade name was absent, the Court in its decision dated 06.07.2018 has held that there was no infringement under clause (5) of Section 29. It was held that merely because MERCYKIND in the name of defendant No.2 Company 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).