Delhi High Court Overturns Trade Mark Registrar's Decision; Mankind Pharma's 'PETKIND' to be Advertised Court Recognizes Mankind Pharma's 'KIND' as a Well-Known Family of Marks, Directs Registrar to Proceed with Trade Mark Advertisement
In a significant judgment delivered by the Delhi High Court, Mankind Pharma Limited's appeal against the refusal of its trade mark application for 'PETKIND' has been allowed, overturning the Registrar of Trade Marks' prior decision. The court held that the refusal was unjustified due to Mankind Pharma's established goodwill and prior use of the 'KIND' family of marks.
The case revolved around the application for the trade mark 'PETKIND', which was initially rejected by the Registrar on grounds of similarity to an existing mark within the same class. The Registrar cited concerns over potential public confusion due to the likeness between the marks. However, Mankind Pharma contended that they have an established family of marks with the suffix 'KIND', which includes over 280 registered trade marks, and is widely recognized in the pharmaceutical and veterinary sectors.
Justice Tejas Karia, presiding over the case, recognized the extensive use and goodwill associated with Mankind Pharma's 'KIND' family of marks. The court noted that the mark 'MANKIND' is already recognized as a well-known trade mark, further strengthening Mankind Pharma's claim. It was observed that the cited mark was proposed and had no active user, which diminished the likelihood of public confusion.
The court emphasized that mere similarity of marks is insufficient to deny registration. Instead, a likelihood of confusion must be established based on the facts, including the nature of goods and the consumer base. The judgment noted that the appellant's extensive use and goodwill negated any likelihood of confusion with the cited mark.
Consequently, the court directed the Registrar to proceed with the advertisement of the 'PETKIND' trade mark within two months, allowing for any opposition proceedings to be handled independently and on their own merits.
This judgment reinforces the importance of demonstrating significant prior use and goodwill in overcoming objections based on similarity with existing marks. It also highlights the legal protection afforded to well-known trade marks and recognized families of marks.
Bottom Line:
Trade Marks Law - Registration of a trade mark cannot be refused merely on the ground of similarity with an earlier mark if the applicant demonstrates significant prior use, goodwill, and a family of marks associated with the applicant's business.
Statutory provision(s): Trade Marks Act, 1999 Sections 11(1)(a), 11(1)(b), 91
Mankind Pharma Limited v. Registrar of Trade Marks, (Delhi) : Law Finder Doc Id # 2835382
