Even The Slightest Possibility Of Confusion In Drugs Is Impermissible In The Pharmaceutical Sector

The misrepresentation of trademarks in the pharmaceutical sector can have disastrous consequences and can prove to be fatal. The Hon'ble Delhi Court recently reiterated the said stand in the case of Mankind Pharma Limited v. Novakind Bio Sciences Private Limited (Suit) wherein it held the marks 'NOVAKIND' and 'MANKIND' are confusing when used for pharmaceutical preparations. While arriving at a conclusion, the Court opined that the slightest possibility of confusion cannot be permitted; thus, drugs, particularly prescription drugs, need to be distinguishable from one another.

Impermissible

BRIEF FACTS OF THE CASE

The Plaintiff, (Mankind Pharma Limited) a leading pharmaceutical organization and the fifth largest in India adopted the trademark MANKIND, as part of the trading style of the Plaintiff in 1986. The Plaintiff's brands are listed among the top five brands in pharmaceutical products, and in addition to the aforesaid, the Plaintiff is also the registered owner of the websites namely "mankindpharma.com, mankindunwanted.com, mankindmanforce.com, mankinddontworry.com, mankindkaloree1.com, futuremankind.com, vetmankind.com, caremankind.com, petmankind.com, mankindpharma.net, magnetmankind.com, specialmankind.com, mankindpharma.asia, mankindpharma.cn, mankindpharma.org, mankindpharma.us and mankindpharma.edu." The Plaintiff uses 'KIND' (KIND family of marks) in the second part of the name for the pharmaceutical preparations that it manufactures and sells.

The Plaintiff had approached the Court due to the Defendant's (Novakind Bio Sciences Private Limited) use of the mark 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' for the purpose of selling various pharmaceutical products.

In 2020, the Plaintiff had issued a cease-and-desist notice to the Defendants calling upon them to desist the use of the mark 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' on grounds that the term 'KIND' forming part of 'NOVAKIND' infringed the Plaintiff's registered trademark. Due to non-compliance with the aforesaid, the Plaintiff sought a permanent injunction against the Defendant restraining them from using "KIND" as a part of the trade name/trademark for manufacturing and selling any of its medicinal and pharmaceutical preparations. The Plaintiff also sought an injunction against the use of the mark "DEFZAKIND", for Deflazacort tablets, packed and sold by the Defendant due to the use of the term 'KIND.'

The Court while issuing summons in the Suit vide its order dated April 20, 2021, granted ex parte ad interim injunction in favour of the Plaintiff restraining the Defendants from manufacturing, selling, marketing, etc. any pharmaceutical product bearing the "KIND" suffix. Thereafter, the said order was contested by the Defendant as they sought to vacate the same.

SUBMISSIONS BY THE PARTIES

At the outset, the Defendants contended that no exclusivity can be claimed over the term 'KIND' as a suffix for any pharmaceutical product and that it is not a registered mark of the Plaintiff. Secondly, the Defendants submitted that they were using the mark 'NOVAKIND' as its corporate name and not as its trademark, hence no injunction lies in favour of the Plaintiff and further emphasized the applicability of Section 29(5) of the Trademarks Act, 1999 (Act) while also placing reliance on the case of Cipla Ltd. v. Cipla Industries Pvt. Ltd. The Defendant also argued that there is a statutory requirement to mention the name and address of the manufacturer of pharmaceutical preparations as under the Drugs and Cosmetics Act, 1940.

The Defendants also relied on submissions that there is no chance of confusion as pharmaceutical products are prescribed and dispensed by individuals such as doctors and chemists who are trained in their profession to do so. Lastly, it was contended that the Defendants pharmaceutical products are sold and prescribed under the brand name and not under the name of the manufacturer of the drug.

In response to the Defendants submissions, the Plaintiffs argued that the Defendants mark 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' is prominently placed on its pharmaceutical products alongside, thereby proclaiming that it is, in fact, the registered trademark of the Defendant. Thus, it was argued that the Defendant was highlighting the mark 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' as its source identifier thereby intentionally proclaiming that it "has all intent to use the trade name "NOVAKIND" as it has built its trade reputation and goodwill".

COURT ANALYSIS: NOVAKIND v. MANKIND

The Court at the very outset opined that the marks 'NOVAKIND' and 'MANKIND' when used for pharmaceutical preparations are indeed confusing as the Plaintiff uses the suffix 'KIND' for all its pharmaceutical products and reiterated a co-ordinate bench decision of the Court inMankind Pharma Ltd v. Cadila Pharmaceuticals Ltd. wherein it was held that the suffix 'KIND' was a dominant feature of the Plaintiff's trademark.

The Court highlighted that apart from the Plaintiff having the registration of the mark 'MANKIND' in every class, it is clear that the marks 'MANKIND' and 'NOVAKIND' when compared as sole marks are phonetically deceptively similar due to the presence of the 'KIND' suffix. Additionally, it was held that the mark 'NOVAKIND' when viewed as a whole is phonetically similar to the mark 'MANKIND' thereby maintaining that owing to the similarity of the marks and identity of the goods in respect of which they are used, there is likelihood of association of the Defendant's mark with the Plaintiff's.

The court while relying on the case of Bloomberg Finance LP v. Prafull Saklecha held that "while Section 29(5) applies in a case where a registered trademark is used by another person as part of its corporate name, nonetheless, if it is found on facts that Section 29(5) does not apply, the applicability of the preceding sub-sections (1) to (4 )of Section 29 is not ruled out", rejected the Defendants submission that 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' is not a trade mark. In doing so, the Court maintained that all the indicia provided under Section 2(zb) of the Trade Marks Act, 1999 which defines a mark stands fulfilled by the Defendants mark 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' and therefore the Defendant uses 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' as a trademark and not as its corporate name. As a result of the aforesaid, the Court took a contrary view from that of the judgment of Cipla Ltd. v. Cipla Industries Pvt. Ltd. delivered by the Hon'ble Bombay High Court.

The Court aptly held that the Defendants use of 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' on its pharmaceutical products packaging for purposes of sale amounts to 'use of the mark' within the meaning of the Act. It was rightly pointed out that indeed the Defendant was using 'NOVAKIND BIO SCIENCES PRIVATE LIMITED' as a source identifier as it displayed the same prominently on its products strips along with the symbol, thus attracting the provision of Section 29(2)(b) of the Act. It was also noted that the statutory requirement of affixing the company name on the pharmaceutical product does not justify the Defendant using a company name which infringes the registered trade mark of the Plaintiff.

The application of the test of deceptive similarity as provided by the Court is such that the application of the test is to be conducted from the perspective of the customer if there is a possibility of confusion in the mind of a customer, the test stands satisfied.

While arriving at a conclusion, the Court further maintained that the poor who are unable to afford the services of upmarket physicians frequent services of clinics where many of the doctors practising therein prescribe medicines based on their manufacturer. In view thereof, the Court observed that 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.

Considering all of the aforesaid, the Court made absolute the interim injunction order dated April 20, 2021, against the Defendant from manufacturing medicines using the suffix "Kind" until the final disposal of a trademark infringement suit filed by the Plaintiff.

The case illustrated above is a stark reminder of the importance of ensuring that no pharmaceutical preparation or drug should be deceptively similar, as 'Drugs are poisons, not sweets'.

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