Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd.

Indermeet Kaur, J.

I.A No. 12676/2014 (XXXIX Rules 1 & 2 CPC)

1. Plaintiff, a duly incorporated company, is stated to be a reputed manufacturer and merchant of vide range of pharmaceutical, neutraceutical, veterinary and cosmetics preparations in India sold under its various well-known distinctive trademarks including MANKIND. This trademark was adopted by the plaintiff in the year 1986. Although it is a dictionary word but the plaintiff company was the first in India to introduce the word in the market by virtue of qualitative, affordable pharmaceuticals. Prior to the plaintiff's group of companies there existed no trade name/brand name in the Indian industries particularly in the pharmaceutical companies by the word ‘KIND” let alone “MANKIND”. The plaintiff has more than 150 registration of the trademark of MANKIND and/or KIND either with a suffix or prefix attached to it. (Attention has been drawn to the said registration marks.) The plaintiff group is selling all its products extensively under the aforenoted trade name MANKIND and has more than 107 different products in the market. It has acquired a goodwill and reputation of a highest character. The presence of the plaintiff has been crystallized in the every nook and corner of the country. Its products are well advertised in all well-known journals including Debonair, Filmfare, Femina, Grahasobha, Sarita, Saras, Salil etc. The goodwill and reputation of the mark of the plaintiff MANKIND is distinctive being a symbol of its high quality product. Plaintiff is also registered with the mark METROKIND under registration no. 1204934 on 09.6.2003 The goods sold under the mark METROKIND are with respect to a composition Metronidazone i.e an anti-infective medication used in the treatment of infections.

2. The defendant has started using the mark MECOKIND PLUS which is deceptively similar and almost identical with the trade name ‘METROKIND’ of the plaintiff. Enquiry had revealed that the defendant does not have a registration but had applied before the Registrar of Trademarks for registration of the trademark MECOKIND which is pending since 29.3.2013 The product of the defendant is also for a medicinal purpose which is a non-scheduled drug and not being a schedule H drug, it is available at the counter without a prescription.

3. Submission in the application being that the mark of the defendant is deceptively similar to the mark of the plaintiff as MECOKIND PLUS is not only phonetically and structurally similar to the registered trademark METROKIND of the plaintiff but keeping in view the fact that both the products are being sold by the chemist being a pharmaceutical product across the counter, there is every possibility of confusion and deception qua the purchase of such a product by the consumer.

4. Learned senior counsel for the plaintiff in support of his submissions has placed reliance upon Neon Laboratories Ltd. v. Themis Medicate Ltd. MIPR 2010 (2) 25 Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill, MIPR 2010 (1) 44 Novartis AG v. Crest Pharma Pvt. Ltd. and (2001) 5 SCC 73 Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd..; submission being that in the sale pharmaceutical products stricter standards have to be applied to prevent likelihood of confusion as consumption of such a product could even result in a physical harm to the consuming public. Accordingly, an injunction has been prayed seeking a restraint upon the defendant from using the aforenoted mark MECOKIND PLUS.

5. Reply to the pending application and written statement to the suit have been filed. Submission of the defendant is that the product sold under the name MECOKIND PLUS is available in either a capsule, tablet or an injection form whereas METROKIND which is the mark of the plaintiff under which his products are sold is available as an ointment and there is no scope of deception. Defendant product is sold under the name MECOKIND PLUS which is distinctively different from the product of the plaintiff which is sold under the trade name METROKIND; METROKIND is an ointment and can be used for an external purpose alone; the product of the defendants i.e MECOKIND PLUS has to be ingested being a capsule, tablet/injection. Even otherwise the word KIND/MANKIND is generic term and is in public domain. Plaintiff cannot claim monopoly over the same. He cannot claim himself to be the owner of such words. It is admitted by the defendant that they have applied for the registration of mark MECOKIND with the Registrar of Trademarks and their application is pending since 29.3.2013 It is denied that the mark of the defendant MECOKIND PLUS is deceptively similar and identical to the trademark METROKIND of the plaintiff; the marks are structurally different; the defendant has adopted the word MECO on account of the active ingredient “Mecobalamin” as per the Japanese firm Copoeia, and KIND has been added to make the word fanciful. There is no scope of the customer/consumer being deceived; the plaintiff on his product/lable has clearly mentioned that it is for “external use only”; it is to be used under the medical supervision; it is an ointment. The product of the defendant is related to a nerve disorder and at the cost of repetition, since it contains the ingredients “Mecobalamin” that is why the mark MECO has been used to which the suffix KIND has been added; the plaintiff has no ownership over this generic word KIND.

6. Learned counsel for the defendant to support his submission has placed reliance upon 2001 PTC 601 (Aviat Chemicals Pvt. Ltd. & Anr.…Plaintiffs; v. Intas Pharmaceuticals Ltd.…Defendant., 2007 (34) PTC 18 (Del) Kalindi Medicure Pvt. Ltd. v. Intas Pharmaceuticals Ltd. 2010 (42) PTC 772 (Del) Schering Corporation v. Alkem Laboratories Ltd. as also another judgment of the Division Bench of this Court reported as in FAO(OS) 352/2011 IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd. decided on 09.5.2012 Submission being that admittedly, the word KIND has not been registered with the plaintiff; being a generic word and being publici juris; in no manner can it be said that the product of the plaintiff is deceptively similar to the product of the defendant. On all counts the application is liable to be dismissed.

7. Rejoinder has been filed reiterating the averments made in the application and denying the averments made in the reply.

8. At the outset, the objection taken by the learned counsel for the defendant is that certified copies of the certificate of registration of the plaintiff are not on record; admittedly, only photocopies are on record. The submission of the learned counsel for the plaintiff on this score is that there is no serious quarrel to the admitted fact that the plaintiff in fact has registration over the mark METROKIND and MANKIND; his submission is that he has applied for certified copies of the registration certificates but they are yet to be obtained; they shall be filed in Court as and when the same are obtained. Reliance has been placed upon a judgment of Bench of this Court reported as 2010 (42) PTC 469 (Ozone Spa Pvt. Ltd…. Plaintiff v. M/S. Ozone Club Defendant to support his argument that where the original/certified copies of the trademark certificate/registration certificate were not before the Court at the time of dealing with the application under Order XXXIX Rule 1 and 2 CPC but there being no serious dispute to the fact that the said marks were registered in favour of the plaintiff, the Court on the undertaking of the plaintiff that he would produce the original/certified copies of the documents, as and when the same are obtained the Court had proceeded to decide the application under Order XXXIX Rule 1 and 2 CPC noting the admitted position that the plaintiff did have the mark registered in his favour. In view of this legal position, learned counsel for the defendant at this stage does not really press this objection.

9. Another half hearted objection raised by the learned counsel for the defendant is on the authority of Sanjeev Singh to sign and verify the plaint. The averments in the plaint have been perused; the board resolution authorizing Sanjeev Singh to institute and verify the present proceedings have also been perused. At this stage there is no merit in this objection of the defendant.

10. Perusal of the record shows that the plaintiff (MANKIND Pharma Ltd.) is a company which is manufacturing and selling various ranges of pharmaceuticals products and has a distinctive trademark. The trademark MANKIND was registered with the plaintiff in the year 1986 and this is evident from its registration certificate. The plaintiff has also placed on record the various other pharmaceuticals products which it is selling in the market with the word KIND to which various pre-fixes have been added, they are DOLOKIND, VITAKIND, AMLOKIND, CALDIKIND CEFAKIND, MOXIKIND, NUROKIND, RABEKIND, TELMIKIND, VOMIKIND, ASTHAKIND, DROTIKIND, FERIKIND, HERPIKIND, MEFKIND, VITAKIND, ELECTROKIND, LIPIKIND, LOSAKIND, PIOKIND and TEXAKIND. It's turnover is running into several crores. For the year 2012-13 the cumulative turnover of these products was more than 1322.52 crores. Submission is that this is by itself indicates that the plaintiff company has a huge market in the Indian pharmaceutical industry and the word KIND has been prefixed with various other words for the sale of the products of the plaintiff; it has thus become a distinctive mark of the plaintiff.

11. Admittedly, the word KIND is a generic word which finds mention in the dictionary; however, the submission of the plaintiff that it is his invention and it was he who has first started using it for pharmaceutical products, is evident from the fact that the trademark MANKIND came to be registered in his favour in the year 1986. His trademark application is of the 3000 series. Learned counsel for the defendant to contradict this argument of the learned counsel for the plaintiff has drawn attention of this Court to the written statement of defendant no. 2 where in para 8 it had been stated that the trademark with the word KIND either as prefix or as suffix has been used by several other persons and in fact stood registered in Class-5 (pharmaceutical products) prior in time to the plaintiff.

12. A perusal of the aforenoted chart however negatives this argument. This chart shows that the word KIND (used as suffix or prefix) had been registered for pharmaceutical products (in class No. 5) for the first time only on the application commencing from the 6000 series onwards meaning thereby all these parties (relied upon by the defendants) were registered with the word KIND at a later point of time than the plaintiff. “SERVICE TO MANKIND THE WILL TO SERVE which is at serial no. 22 (has been registered in the 8000 series) and vehement attention has been drawn to the search report of the Trademark Registry (filed by the defendant) to support a submission that this trademark was being used by a third party even in the year 1999. Submission of the plaintiff on this count being that even as per the case of the defendant this is user of the year 1999 whereas the plaintiff has been using the word KIND for its products, (which is evident from its registration certificate of the trademark MANKIND), since the year 1986.

13. Thus the argument of the learned senior counsel for the plaintiff that the word ‘KIND’ for pharmaceutical products had been launched and used by the plaintiff for the first time in the market for sale of pharmaceutical product and is prior user of the word KIND either as a prefix or as a suffix stands established.

14. The product of the plaintiff is METROKIND. It is an ointment which comes in a green and white packaging and is used for a bacterial infection. It is priced at Rs. 25.83 The product of the defendant is MECOKIND PLUS. It has been marketed by the Cadila Pharmaceuticals Ltd.; it is priced at Rs. 95/-. It is either in tablet form or capsule form or in an injection form. Both the products are sold over the counter and not being schedule H drugs, a prescription is not required. The packaging of ‘METROKIND’ is a white green cover whereas ‘MECOKIND PLUS’ has a black cover. The entire word ‘METROKIND’ has been written in capital letters; so also the word ‘MECOKIND PLUS’. All the alphabets not only being in the capital form also have the same style; all the alphabets are in a straight format. Defendant appears to have deleted the 3rd and the 4th alphabets i.e ‘T’ and ‘R’ and replaced it with the alphabet ‘C’ and added the word ‘PLUS’. The essential features of the trademark of the plaintiff appear to have been adopted by the defendant. The visual impact on the two packaging appears to be largely similar.

15. The contention of the defendant that there are other companies who are also selling medicines with the prefix KIND and for which three packagings of ‘RAMIKIND’, ‘VOGLIKIND PLUS’ and ‘TELKIND’ have been placed on record. A perusal of these three strips (all in tablet form) shows that they have been manufactured by the same company i.e Mission Cure Pharma Pvt. Ltd.; on all these packets, ‘Mission’ is more much striking in comparison with the actual medicinal format whether it is ‘RAMIKIND’, ‘VOGLIKIND PLUS’ or ‘TELKIND’. These strips of medicines have also been handed over to the learned senior counsel for the plaintiff who informs this Court that legal action has already been initiated by the plaintiff company against this company namely Mission Cure Pharma Pvt. Ltd.

16. In the judgment of Neon Laboratories Ltd., the plaintiff who had been registered with the trade marks LOX 2% ADRENALINE, LOX 4%, LOX HEAVY 5%, LOXALPRIN, LOXALPRY, LOXIMLA, PLOX AND RILOX had sought infringement against the defendant's user of XYLOX 2%, XYLOX HEAVY, XYLOX GETL and XYLOX ADRENALINE. This was for a sale of pharmaceutical products. The Bench of the Bombay High Court while granting injunction in favour of the plaintiff had noted that since the plaintiff has adopted a series of marks ‘LOX’, the consumers of the plaintiff's products would be acquainted with the mark; ‘XYLOX’ would be assumed to be a part of the family of the plaintiff's series of marks. Relying upon the pronouncement of the Apex Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 and applying the test of a common man of average intelligence and imperfect recollection and noting that the phonetic similarity test is crucial and probably the principle test, the said Court had noted that the defendant's ‘XYLOX’ family of marks was confusing and deceptively similar to the plaintiff's mark ‘LOX’ family of marks.

17. The extract of the Apex Court in Cadila Healthcare Ltd. is also relevant in this context and reads herein as under:-

“A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.”

18. In Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill 2010 (44) PTC 293 (Delhi), the Court was dealing with the trade mark ‘Double Deer’ of the plaintiff and ‘Golden Deer’ of the defendant. The product being sold under these names was rice. The Division Bench of this Court had noted that ‘Deer’ was the prominent part of the trade mark of the plaintiff and the use of the word ‘Golden Deer’ by the defendant amounted to a deception and infringement of the product of the plaintiff. The Court had gone on to examine that although the word ‘Deer’ had been arbitrarily adopted by the plaintiff with respect to its product being rice and was nowhere connected with the sale of rice but such an adoption in fact amounts to a higher degree of protection and particularly so as the trade mark of the plaintiff was a registered trade mark.

19. In this context, the submission of the learned counsel for the plaintiff that registration of his trade mark ‘MANKIND’ for the sale of pharmaceutical products and the plaintiff admittedly having several other registrations either with the prefix or suffix to the work ‘KIND’ and although the ‘KIND’ admittedly has no co-relation with the sale of the pharmaceutical products, the plaintiff having established his first user of the word ‘KIND’ in the pharmaceutical market, the ratio of this judgment entitles him to a higher protection for the word ‘KIND’ is an argument which has force. In the instant case the plaintiff is using the word ‘KIND’ with the prefix ‘MAN’ since the year 1986; his registration for the mark ‘METROKIND’ is of the year 2003. The defendant cannot copy the essential/predominant part of the trade mark of the plaintiff which in this case is ‘KIND’ as admittedly the plaintiff has a registration for the trade mark ‘MANKIND’ from the year 1986 and for ‘METROKIND’ since the year 2003 and at the cost of repetition the plaintiff being the prior user in the market of the word ‘KIND’ for sale of pharmaceutical products stands established by him.

20. The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 had quoted with approval the following text:-

“if the essential features of a trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sales show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”

21. The test of phonetic similarity was considered by the Supreme Court in the case of Amritdhara Pharmacy v. Satya Deo Gupta . In this context, the Court had noted as under:-

““an unwary purchaser of average intelligence and imperfect recollection would not split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as ‘current of nectar’ or ‘current of Lakshman’. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between ‘current of nectar’ and ‘current of Lakshman’. It was emphasized that the whole word had to be considered. It was held that “the overall similarity between the two names in respect of the same description of the goods would likely to cause confusion within the meaning of Section 10(1) of the Trade Marks Act, 1940.”

22. Thus it is the overall similarities of the mark which are the test to decide as to where they can cause confusion to a man of average intelligence.

23. Pharmaceutical products which are sold over the counter as in the instant case both the products of the plaintiff and of the defendant being ‘non-scheduled drugs’, they can bought without a prescription require a stricter, greater and higher standard of care.

24. Admittedly the product of the plaintiff ‘METROKIND’ is an ointment which is used to cure bacterial infections. The product of the defendant ‘MECOKIND PLUS’ is in the form of tablets/capsules or injection and is prescribed for a nerve disorder. Such a contention was raised before a Bench of this Court in Novartis AG v. Crest Pharma Pvt. Ltd. 2009 (41) PTC 57 (Del).

25. In that case, the contention of the defendant was that the drug of the plaintiff was prescribed for urinary a respiratory track infection whereas the defendant's product being an antibiotic was prescribed mostly for post operative cases; ingredients of the two products were also different and being used in tablet and oral suspension form, there was no question of any deceptive similarity between the two. While repelling this contention, a Bench of this Court relying upon the judgment of Cadila Healthcare had noted with approval the observations of the Supreme Court in this context which read herein as under:-

“The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results.”

26. The Courts have time and again reiterated that greater care has to be taken in dealing with medicinal and pharmaceutical products. The test is to see whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals. The medicinal preparation is to be ultimately consumed in the human body, confusion in such products can have series consequences for such a patient; deception in medicines thus at all costs must be avoided. The Courts have also gone on to say that physicians are not immune from confusion or mistake. It is also common knowledge that sometimes an order for medicines is placed on telephone to pharmacists and chemists and sometimes they are hand-written; frequently handwriting is not legible. These facts also enhance the chances of confusion or mistake by the pharmacists or the chemists when the marks appear so much alike when handwritten or heard on telephone. Physicians and pharmacists are also human and being commons with the rest of mankind are subject to human frailties. The test of a human being of an average intelligence has to be applied.

27. The judgments relied upon by the learned counsel for the defendants are all distinct on their facts. In the case of Aviat Chemicals Pvt. Ltd., a Bench of this Court had noted that the word ‘LIPI’ was a generic common word which had been in use for the last several years; ‘LIPICARD’ had been launched by the plaintiff much later i.e in the year 2010 thus not entitling him to the relief. In Kalindi Medicure Pvt. Ltd., the Court had noted that pricing of the defendant product was 52 times more than the price of the product of the plaintiff; being an intra-muscular injection, there was no other mode of usage; it did not make out a case of deceptive similarity. The judgment of Schering Corporation related to the word fragment TEM which was held to be publici juris and also generic and descriptive of the chemical compound ‘TEMOZOLOMIDE’ the plaintiffs were thus not entitled to the exclusive user thereof.

28. The plaintiff has made out a prima-facie case in its favour. The mark of the defendants ‘MECOKIND PLUS’ is deceptively similar with the trademark of the plaintiff. It appears to have been adopted by the defendant in a malafide manner for which he has offered no explanation; even presuming ‘MECO’ has been adopted by him being an essential ingredient of ‘mecobalamin/methylcobalamin’ yet the addition of the work KIND to MECO for which the defendant explains is for the reason that word KIND is fanciful, appears to be a far-fetched and dissatisfactory explanation.

29. ‘METROKIND’ and ‘MECOKIND PLUS’ are also phonetically similar; a person of ordinary intelligence might well mistake ‘METROKIND’ for ‘MECOKIND’. If such a mistake occurs and a person suffering from a bacterial infection consumes a tablet for a nerve disorder the result could well be catastrophic as neither his infection would cure and instead he might have an adverse reaction, to say the least. Accordingly, this Court is of the view that a prima-facie case is made out in favour of the plaintiff for grant of injunction. Irreparable loss and injury would be caused to the plaintiff if the injunction, as prayed for, is not granted to him. Balance of convenience is also in its favour.

30. Accordingly, the defendants/their dealer/agents/associates/directors/partner/employees/servants or assigns are restrained from using the trade mark ‘MECOKIND PLUS’ or any other mark with the word ‘KIND’ which is phonetically or deceptively similar to that of the plaintiff's well-known registered trade mark ‘METROKIND’ and the family of marks with the prefix/suffix ‘KIND’ in relation to medicinal and pharmaceutical products.

31. Application disposed of.