Procedural History:
The petitioner, Mankind Pharma Limited, filed a petition seeking the
cancellation/removal of the trademark "NIKIND" registered under no. 2290683 in
Class 5 by the respondent, Arvind Kumar Trading and Anr. The petitioner claimed
to have adopted the mark "MANKIND" in 1986 and had acquired numerous trademarks
with the word "KIND." The petitioner alleged that the impugned trademark "NIKIND"
was deceptively similar to their registered mark "NIMEKIND" and was likely to
cause confusion in the market. The petitioner also argued that the impugned
trademark had been wrongly entered in the Register and was liable to be
cancelled.
The Intellectual Property Appellate Board (IPAB) initially issued notice in the
case in November 2018, but due to the enactment of the Tribunals Reforms Act,
2021, the matter was transferred to the High Court of Delhi. Despite notice, the
respondent did not appear or file a counter-statement.
Court: High Court of Delhi
Case No.: C.O. (COMM.IPD-TM) 146/2022
Date of Decision: 18th April, 2023
Issues Presented:
- Whether the impugned trademark "NIKIND" is deceptively similar to the
petitioner's registered mark "NIMEKIND" and likely to cause confusion in the
market?
- Whether the impugned trademark was wrongly entered in the Register and
is liable to be cancelled?
- Whether the impugned trademark is liable to be removed for non-use?
Rules of Law:
- Section 11(1) and 11(2) of the Trademarks Act, 1999 - Prohibits the
registration of trademarks that are identical or deceptively similar to
prior registered trademarks and likely to cause confusion.
- Section 47(1)(a) and (b) of the Trademarks Act, 1999 - Allows for the
removal of trademarks for non-use if a continuous period of five years has
elapsed since the date of registration without any bona fide use.
- Section 57 of the Trademarks Act, 1999 - Provides for the cancellation
of wrongly entered trademarks.
Analysis and Reasoning:
The court analyzed the petitioner's claims and supporting evidence, including
the extensive usage of the mark "MANKIND" and the registration of various marks
containing the word "KIND." The court also considered the similarity between the
impugned trademark "NIKIND" and the petitioner's registered mark "NIMEKIND" and
the identical nature of the goods covered by both marks.
The court found that the adoption of the impugned trademark by the respondent
was likely to cause confusion in the market and was an attempt to trade upon the
goodwill and reputation of the petitioner. The court concluded that the impugned
trademark's registration was in violation of Section 11(1) and 11(2) of the Act
and was liable to be cancelled.
The court further held that the respondent failed to rebut the petitioner's
claim that the impugned trademark had not been used in relation to the
registered goods, making it liable for removal under Section 47(1)(a) and (b) of
the Act.
Holding and Decision:
The court allowed the petition and ordered the removal of the impugned trademark
"NIKIND" from the Register of Trade Marks.
Implications and Significance:
This case reaffirms the importance of protecting well-known trademarks and
preventing the registration of deceptively similar marks likely to cause
confusion in the market. It highlights the courts' willingness to cancel wrongly
entered trademarks and remove trademarks for non-use.
Conclusion:
The High Court of Delhi held that the impugned trademark "NIKIND" was
deceptively similar to the petitioner's registered mark "NIMEKIND" and likely to
cause confusion. The court ordered the cancellation and removal of the impugned
trademark from the Register of Trade Marks. This decision reinforces the
protection of well-known trademarks and strengthens the enforcement of trademark
rights in the jurisdiction.
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