The Delhi High Court, in Mankind Pharma Ltd v. Ram Kumar, ruled in favor of Mankind Pharma, granting stronger protection to its "Kind" family of trademarks. Justice Tejas Karia held simply tweaking the prefix of an established brand name cannot shield deceptively similar marks, emphasizing that competitors cannot exploit the goodwill of an established brand.
The case concerned the petitioner's challenge to the respondent's mark "Unkind", seeking cancellation of the trademark as it infringed their "Kind" family of marks.
Mankind Pharma argued that decades of use since 1986 had established distinctiveness and strong consumer association with its "Kind" marks, which had become synonymous with them in the pharmaceutical industry. The central issue was whether the respondent's mark "Unkind" was deceptively similar and likely to mislead consumers into believing an association with the petitioner's products. Reliance was placed on the fact that pharmaceutical consumers are highly prone to confusion, with serious health implications.
The defendant argued that the term "Kind" is a common English word that cannot be monopolized. Moreover, the prefix "Un" makes the rival marks sufficiently distinctive. The defendant submitted that no evidence of actual consumer confusion was provided by the petitioner and therefore, registration of "Unkind" was lawful.
The Delhi High Court acknowledged that Mankind Pharma's "Kind" family of marks had acquired distinctiveness through continuous and extensive use. Applying the "family of marks doctrine," the Court held that competitors cannot imitate such marks by introducing minor variations, such as altering the prefix. Finding that the respondent had acted in bad faith by adopting the impugned mark, the Court ordered the removal of "Unkind" from the Trade Marks Register under Section 57.
The Court reaffirmed that even common words can gain secondary meaning through extensive use, deserving stronger trademark protection. Stressing stricter standards in the pharmaceutical sector to prevent consumer confusion, it ordered removal of "Unkind," thereby safeguarding prior user rights, protecting public interest, and reinforcing the family of marks doctrine in India.
The judgement can be accessed here: Mankind Pharma Ltd. v. Ram Kumar M/s Dr. Kumars Pharmaceuticals (C.O. (COMM.IPD-TM) 566/2022)
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