MANU/DE/2363/2018

Equivalent Citation: 253(2018)DLT39, 2018(75)PTC 8(Del)

IN THE HIGH COURT OF DELHI

CS (COMM) No. 100/2017
Decided On: 06.07.2018
Appellants: Mankind Pharma Ltd.
Vs.
Respondent: Chandra Mani Tiwari and ors.
Hon'ble Judges/Coram:
Rajiv Sahai Endlaw, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Amit Sibal, Sr. Adv., Namit Suri, Hemant Daswani,
Monika Mehalawat and Niloy Dasgupta, Advs.
For Respondents/Defendant: M.K. Miglani, Gaurav Miglani, Samreen Khan and Gunjan
Hans, Advs.
JUDGMENT
Rajiv Sahai Endlaw, J.
IA No. 1684/2017 (of the plaintiff under Order XXXIX Rules 1 & 2 of the Code of Civil
Procedure, 1908)
1 . The plaintiff has instituted this suit for perpetual injunction to restrain the two
defendants, viz. Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd., from
infringing the plaintiff's trade mark/trade name 'MANKIND' and series of marks with
the suffix/prefix 'KIND' and from passing off their business/goods as that of the
plaintiff, by adopting and using the trade name 'MERCYKIND PHARMACEUTICAL
PRIVATE LIMITED' or in any other manner whatsoever thereby and for ancillary reliefs
of delivery, rendition of accounts, damages etc.
2 . The suit came up before this Court first on 8th February, 2017, when though
summons thereof were issued but no ex parte relief granted. Pleadings have since
been completed and the counsels have been heard.
3. It is inter alia the case of the plaintiff, that (i) the plaintiff, being the fourth largest
pharmaceutical company of the country, is the registered proprietor of the mark
'MANKIND' in 42 different classes and has for three decades used numerous marks by
adding prefix or suffix to the elements 'MANKIND' and/or 'KIND' and is also the
registered owner of websites with 'MANKIND' in their web addresses; (ii) around 5th
November, 2016, the plaintiff, while going through the record of the Trade Marks
Registry, came across the trade name 'MERCYKIND PHARMACEUTICALS PRIVATE
LIMITED' of the defendant no. 2; (iii) defendant no. 2 is doing business under the
trade marks such as 'MERCYMOX', 'MERCYCOUGH', MERCYCOPE'; (iv) the defendants
refused to comply with the cease and desist notice issued prior to the institution of
the suit, giving false and frivolous reasons; (v) the defendants are carrying on their
business by impersonating themselves to be under the umbrella of the plaintiff; (vi)

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 the defendant No. 1 Chandra Mani Tiwari, being the founder Director of the defendant
no. 2, is one of the former employees of the plaintiff and the other founder Director
and shareholder of the defendant no. 2 is the wife of the defendant no. 1 Chandra
Mani Tiwari; (vii) the defendant no. 1, who served the plaintiff as Senior Territory
Executive from the year 2007 to the year 2014, has in his possession the entire
business modules of the plaintiff and is also liable for breach of his fiduciary duty
towards the plaintiff; (viii) the trade name 'MERCYKIND PHARMACEUTICALS PRIVATE
LIMITED' is deceptively similar to the plaintiff's corporate name/trade name
'MANKIND PHARMA LIMITED'; (ix) any trade name in the pharmaceutical industry
containing the element 'KIND', would amount to dilution of the plaintiff's well known
trade mark and result in infringement and/or passing off the plaintiff's reputed trade
name 'MANKIND' and/or family of marks containing the word/element 'KIND'; (x) use
by the defendants of the trade name 'MERCYKIND' is deliberate, in order to acquire
benefit of the goodwill and reputation of the plaintiff and to deceive the public; (xi)
the plaintiff, though sells its goods in Maharashtra through other entities, has no
office of its own in Maharashtra where the defendants are situated.
4 . The defendants have contested the suit, pleading that (a) mere search on the
online records of Registrar of Trade Marks in the relevant Class 05, reveals that there
are over 120 trade marks registered and/or pending, other than the registrations or
applications in the name of the plaintiff, in the names of several other
entities/individuals, each of whom have registered and/or have applied for
registration of marks with the suffix 'KIND'; (b) 'KIND' forms a part of name of
several registered companies; (c) defendants' corporate name 'MERCYKIND
PHARMACEUTICALS PRIVATE LIMITED', when seen as a whole, has no deceptive
similarity with the plaintiff's trade mark/trade name 'MANKIND' and the only common
feature is the presence of publici juris term 'KIND'; (d) mere presence of a publici
juris term 'KIND' does not make the marks of the plaintiff and the defendants
deceptively similar; the plaintiff itself took the said position before the Registrar of
Trade marks in its various trade marks applications; (e) the Registrar of Trade Marks,
while examining the plaintiff's application for registration of trade mark
'ATORVAKIND', had raised objection under Section 11 of the Trade Marks Act, 1999,
on account of its alleged similarity with the marks 'ATORKIND' and 'ATORKIND-F'
cited in the Examination Report; (f) plaintiff, in its reply to the Examination Report,
stated that the marks, when considered as a whole, are entirely different from the
cited trade marks and the mark should be looked at as a whole; (g) similar
submissions were made by the plaintiff in the proceedings before the Registrar of
Trade Marks for registration of its mark 'STARKIND', wherein several marks
incorporating the word 'KIND' were cited as conflicting and the plaintiff in its reply to
the Examination Report stated that all the cited marks were not structurally,
phonetically and visually similar to that of the plaintiff's proposed mark; (h) plaintiff
having taken such a stand, cannot maintain the present suit; (i) in CS(OS) No.
489/2015 titled Mankind Pharma Limited Vs. Sudharkar Khanna & Ors., the defendant
who was operating under the entity name 'KINDCARE', was permitted to use the trade
marks 'KINDCARE', 'KINDFER', 'KINDZYME', 'KINDCAL'; (j) plaintiff is aware of the
defendants since November, 2015 and has falsely pleaded knowledge on 5th
November, 2016; (k) no particular registered trade mark of the plaintiff which is
being infringed is pleaded; (l) the defendants are the bona fide and honest adopter of
the name 'MERCYKIND PHARMACEUTICALS PRIVATE LIMITED'; (m) the defendants, in
the course of their business have coined and adopted several unique, distinctive and
eye catchy trade marks with prefix 'MERCY' to market their medicinal and
pharmaceutical preparations and have also filed applications for registration of the
same as trade marks; and, (n) trade marks 'MERCYMOX-CV, 'MERCYCOUGH-B/DX

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 (SYRUP)', 'MERCYPAN-40/DSR' and 'MERCYCID-SYR' have already been registered.
5. Need to summarize the contents of the replication is not felt.
6 . Though extensive arguments were heard but the counsels sought liberty to file
written submissions, which was granted and have filed written submissions and in
the light thereof need to advert to oral submissions is not felt.
7 . It is the contention of the plaintiff (i) that in CS (OS) No. 1949/2014 titled
Mankind Pharma Ltd. Vs. Ultrakind Health Care & Anr., vide order dated 8th July,
2014, the defendants have been restrained from using the trade name 'ULTRAKIND
HEATH CARE' and/or from using the trade mark 'MECOKIND' or any other mark with
the word element 'KIND'; (ii) in Mankind Pharma Ltd. Vs. Cadila Pharmaceuticals Ltd.
MANU/DE/0200/2015, it has been held that the defendant cannot copy the
essential/predominant part of the trade mark of the plaintiff which is 'KIND'; (iii)
adoption of 'MERCYKIND' by the defendants is mala fide and dishonest; (iv) the
action of the defendants amounts to infringement under Section 29(5) of the Trade
Marks Act, 1999; (v) a 'mark' under Section 2(m) of the Act includes a 'name'; (vi)
the defendants have adopted essential and predominant feature of the registered
trade mark of the plaintiff; reliance is placed on para no. 28 of Kaviraj Pandit Durga
Dutt Sharma Vs. Navratna Pharmaceutical Laboratories MANU/SC/0197/1964 : (1965)
1 SCR 737, para no. 30 of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd.
MANU/DE/0528/2014 : (2014) 58 PTC 136 (Del), and, para nos. 26, 29 to 33 of
Sanofi India Ltd. Vs. Universal Neutraceuticals Pvt. Ltd. MANU/DE/2670/2014 :
(2014) 60 PTC 593 (Del); (vii) the plaintiff is using 'KIND' in a plurality of registered
marks as a common prefix or suffix and which has become the distinguishing element
of the family of marks and is recognized by the customers as an identifying trade
mark in itself; in these circumstances, even though the defendants' mark may not be
close to a particular member of the family, the use of the distinguishing family
feature or characteristics is likely to cause confusion; reliance is placed on McCarthy
on Trademarks and Unfair Competition, Fourth Edition, Vol. 4 23:61 at pages 23-244
and 23-245; (viii) adoption of essential feature 'KIND' in the defendants' trade name
is use of the plaintiff's registered trade marks within the meaning of Section 29(5);
reliance is placed on paras no. 7, 9 to 11, 15, 17, 18, 23, 25, 26, 29 to 33 and 53 of
Sanofi India Ltd. supra, on paras no. 5 to 8 of Kirorimal Kashiram Marketing &
Agencies Vs. Shree Sita Chawal Udyog Mill MANU/DE/2307/2010 :and on paras no.
17 to 18 of Amur Singh Chawal Wala Vs. Shree Vardhman Rice MANU/DE/0745/2009
: (2009) 40 PTC 417 (Del); (ix) defendants' arguments, that Section 29(5) only
covers adoption of identical mark, is contrary to the legislative intent behind Section
29(5); reliance in this regard is placed on para no. 44 of Bloomberg Finance LP Vs.
Prafull Saklecha MANU/DE/3673/2013 : 2014 (1) RAJ 44 (Del), para 15 of London
Rubber Vs. Durex MANU/SC/0134/1963 : (1964) 2 SCR 211, Larsen and Toubro Ltd.
Vs. Lachmi Narain Trades MANU/DE/0187/2008, para 7 of Ruston & Hornsby Ltd. Vs.
The Zamindara Engineering Co. MANU/SC/0304/1969 : 1970 AIR SC 1649, and,
paras no. 30 and 33 of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd.
MANU/DE/0528/2014 : (2014) 58 PTC 136 (Del); (x) use by other companies of
similar mark and which others have a minuscule turnover, is no ground to deny
interim injunction to the plaintiff; reliance is placed on para no. 22 of Rolex SA Vs.
Alex Jewellery Pvt. Ltd. MANU/DE/0796/2009, para no. 33 of Novartis AG Vs. Crest
Pharma Pvt. Ltd. MANU/DE/1587/2009 : (2009) 41 PTC 57 Del, and, para no. 50 of
Express Bottlers Services Pvt. Ltd. Vs. Pepsi Inc MANU/WB/0158/1988 : (1989) 9 PTC
14 (Cal); (xi) the argument of the defendants, on the basis of the reply of the
plaintiff to the Registrar of Trade Marks at the time of seeking registration of its

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 various other marks, is misconceived as the claim of the plaintiff is on the basis of
series/family of marks of the plaintiff and the principles applicable thereto would not
apply in the instant case; and, (xii) the balance of convenience is in favour of the
plaintiff.
8 . It is the contention of the defendants that (a) the objection of the plaintiff is on
the basis of presence of the word 'KIND' in the corporate name 'MERCYKIND
PHARMACEUTICAL PRIVATE LIMITED' of the defendants; however the plaintiff does
not hold any registration for the word 'KIND' per se and the trade name 'MERCYKIND'
of the defendants does not constitute infringement within the meaning of Section
29(5) of the Trade Marks Act, 1999; (b) legislature, in Section 29(5), has
intentionally not provided for infringement in cases of deceptively similar marks;
reliance is placed on para no. 41 of Bloomberg Finance LP supra; (c) plaintiff cannot
resort to sub-sections other than sub-section (5) of Section 29 of the Trade Marks
Act; reliance is placed on para no. 27 of Cipla Ltd. Vs. Cipla Industries Pvt. Ltd.
MANU/MH/0222/2017 : (2017) 69 PTC 425 (Bom.); (d) the test of infringement
under Section 29(5) is not any different for family of marks; (e) Amar Singh Chawal
Wala, Kirorimal Kanshiram and Neon Laboratories supra relied upon by the senior
counsel for the plaintiff were in trade mark versus trade mark situation and not
considered under Section 29(5) which alone is attracted in the present case; (f)
essential feature theory only applies to judge whether one trade mark is deceptively
similar to another and is not applicable to cases coming within the purview of Section
29(5) of the Act; in Mex Switchgears supra cited by the senior counsel for the
plaintiff, 'MEX' was not just a corporate name but also a trade mark; (g) similarly, in
Citigroup Inc. Vs. Citicorp Business & Finance Pvt. Ltd. MANU/DE/2943/2014 :
(2015) 216 DLT 359 cited by the senior counsel for the plaintiff during the hearing,
'CITICORP' per se was registered trade mark of the plaintiff and the same was used
by the defendant therein, both as corporate name as well as trade mark; (h) the
plaintiff's suit on the ground of passing off, as per averments in the plaint, is beyond
the territorial jurisdiction of this Court; reliance is placed on Jay Engineering Works
Ltd. Vs. Ramesh Aggarwal MANU/DE/3629/2006 : (2006) 33 PTC 561 (Del) inasmuch
as there is no averment of any cause of action having accrued within the jurisdiction
of this Court; (i) the plaintiff is estopped from contending contrary to the stand taken
by it before the Registrar of Trade Marks; reliance is placed on S.K. Sachdeva Vs.
Shree Educare Ltd. MANU/DE/0182/2016 : (2016) 65 PTC 614 (Del), Living Media
Ltd. Vs. Alpha Dealcom Pvt. Ltd. MANU/DE/0461/2014 : (2014) 58 PTC 589 (Del) and
Unichem Laboratories Ltd. Vs. Ipca Laboratories Ltd. MANU/MH/0773/2011 : (2011)
45 PTC 488 (Bom); (j) if 'ATORKIND' and 'ATORVAKIND' are visually, structurally and
phonetically different as admitted by the plaintiff in the reply to the Examination
Report of the Registrar of Trade Marks on the application of the plaintiff for
registration of 'ATORVAKIND', 'MERCYKIND' and 'MANKIND' cannot be the same; (k)
the argument of the plaintiff is identical to as of plaintiff in Living Media Ltd. supra,
where also the plaintiff had a family of marks with the word 'TODAY'; (l) Dr. Willmar
Schwabe, a reputed pharmaceutical company is also using the marks incorporating
the word 'KIND' such as 'ENUKIND', 'COLIKIND' and 'CALCIOKIND'; and, (m) search
reports from the Registrar's office can be considered at this stage to lend support to
the fact that there are various other companies using the word 'KIND' in their
registered or pending marks and hence the mark of the plaintiff is not distinctive;
reliance is placed on P.P. Jewelers Pvt. Ltd. Vs. P.P. Buildwell Pvt. Ltd.
MANU/DE/2509/2009 : (2009) 41 PTC 217 (Del) and on Aviat Chemicals Pvt. Ltd. Vs.
Intas Pharmaceuticals Ltd. MANU/DE/1563/2001 : (2001) 21 PTC 601 (Del).
9 . Having pondered over the respective pleadings and contentions, I am unable to

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 find the plaintiff entitled to any interim relief. The reasons thereof are given herein
below:
A. The communication dated 18th April, 2016 of the plaintiff qua
'ATORVAKIND' at pages 117 and 118 of the defendants documents is as
under:
"To,
The Registrar of Trade Marks,
The Trade Mark Registry,
Mumbai
Dear Sirs,
Re: Trade Mark Number 3032480 dated August 14, 2015 for the
mark ATORVAKIND (word) in class 05, in the name of Mankind
Pharma Ltd.
We refer to the examination report issued for the subject application
under above reference.
Regarding objection raised under section 11 we submit:
The present trade mark when considered as a whole is
entirely different from all the cited trademarks and is
completely an honest and bonafide adoption in good faith
and without any reference to and/or knowledge of the
alleged marks cited in the search report. The present mark is
being an invented word is therefore capable of
distinguishing from that of others.
Further it is submitted that the mark shall be looked into as
a whole and when done so, the Applicant's mark is visually,
phonetically and structurally dissimilar from the marks cited
in the search report.
In view of above submission, it is humbly requested to
waive off the objection and accept the mark.
Yours sincerely,
For Daswani & Daswani
Sd/-
Ishanki Gupta"
B. The communication dated 2nd January, 2015 of the plaintiff qua
'STARKIND' at page 124 of the defendants documents is as under:
"To,
The Registrar of Trade Marks,
The Trade Mark Registry,
New Delhi

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 Dear Sirs,
Re: Trade Mark Number 2307155 dated March 28, 2012 for the mark
STARKIND (word) in class 05, in the name of Mankind Pharma
Limited
We refer to the examination report issued for the subject application
under above reference.
Regarding objection rose in paragraph 1:
It is submitted that all the cited marks are not structurally,
phonetically and visually similar to that of the applicant's
trade mark.
It is further submitted that the applicant follows the practise
o f adding word element KIND as suffix/prefix to the mark.
The applicant has more than 150 marks registered which
contains word element KIND as suffix/prefix. A copy of list is
annexed as Annexure A.
It is therefore requested that objections be waived.
Acceptance is requested.
Yours sincerely,
For Daswani & Daswani
Sd/-
Hemant Daswani"
C. The aforesaid stand of the plaintiff before the Registrar of Trade Marks,
was/is relevant for the purpose of grant of interim injunction. Though the
senior counsel for the plaintiff contended that what is stated by the advocates
for the plaintiff in the aforesaid communications is a submission of law made
in the context and the plaintiff cannot be bound thereby, but it cannot be said
that the said contention makes the fact aforesaid 'not relevant'. The fact, that
the plaintiff took a stand, not so long back, that (i) 'ATORVAKIND' is different
from 'ATORKIND' and that (ii) 'STARKIND' is different from 'KINDERPLEX',
'KINDERBON', 'KINDERCAL', 'KINDIGEST', 'STAR-VIT', 'STAR', 'STARNET',
'STARCET', 'KINDHEALTH', 'KIND-PLUS', 'KINDCAL', 'KINDMAX' and
'KINDFLOX-OZ', certainly has a weightage for purposes of interim injunction,
specially ex-parte. The plaintiff, while approaching this Court for ex parte
relief against the defendants, concealed the said relevant fact from this Court
and called upon the Court to, without the said fact being before the Court,
grant injunction against the defendant. Such conduct of the plaintiff
disentitles the plaintiff to the equitable relief, at least at this stage. I must
however state that thought has indeed crossed my mind, whether in defence
to a claim for infringement, which is a statutory right of a registered
proprietor of a trade mark, the plea of estoppel, which is not available
against statute, is at all available to the defendants.
D. Though for the aforesaid reason, the plaintiff would be disentitled from
interim relief even if any prima facie merit was found in the arguments of the

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 senior counsel for the plaintiff, but for the sake of completeness, the same
may also be dealt with.
E. Infringement is dealt with in Section 29 of the Act. Sub-Sections (1) to (4)
of Section 29 provide for infringement by use, in the course of trade, of a
mark which is identical with or deceptively similar to the registered trade
mark of the plaintiff.
F. The objection of the plaintiff is to use by defendants of the word
'MERCYKIND' because 'MERCYKIND' is to be found, only in the name of the
defendant No. 2 Company. Else, according to the plaintiff also, defendants
are carrying on business in the same goods as the plaintiff, under the marks
'MERCYMOX', 'MERCYCOUGH', 'MERCYCOPE', etc. It is the case of defendants,
that 'MERCYKIND', to which objection is taken, is not the trade mark of the
defendants and is not used as trade mark by the defendants.
G. The senior counsel for the plaintiff however has argued, that since the
definition of 'mark' in Section 2(m) includes a 'name', use by the defendants
of 'MERCYKIND', even in the name of defendant No. 2 Company, is use as a
trade mark.
H. The first question to be thus determined is, whether the defendants are
using 'MERCYKIND' as a trade mark, for the test prescribed in sub-sections
(1) to (4) of Section 29 of the Act, to apply.
I. Section 2(1)(zb) defines a 'trade mark' as a mark capable of being
represented graphically and which is capable of distinguishing the goods of
one person from those of others and for the purposes of indicating or as to
indicate a connection in the course of trade between the goods and the
person having right as proprietor to use the mark, whether with or without
any indication of the identity of that person.
J. Notice in this regard may also be taken of Section 29(6) of the Act as
under:
"29(6) For the purposes of this section, a person uses a registered
mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services under
the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in
advertising."
K. The goods of the defendants i.e. pharmaceutical/medicinal products, are
not named 'MERCYKIND'; each medicine has different name, though with
'MERCY' as prefix viz. 'MERCYMOX', 'MERCYCOUGH', 'MERCYCOPE',
'MERCYPAN' and 'MERCYCID'. The objection of the plaintiff is not to the word
'MERCY' but to the use of the word 'KIND' in the name of the defendant No. 2

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 Company in conjunction with 'MERCY'. The plaintiff in its plaint has admitted
'MERCYMOX', 'MERCYCOUGH', 'MERCYCOPE', 'MERCYPAN' and 'MERCYCID'
etc. to be the trade marks of the defendants. Adopting the argument of the
senior counsel for the plaintiff, of the word/term 'KIND' in the trade marks of
the plaintiff indicating the source of the goods to be the plaintiff, it follows
that use of the term 'MERCY' in the trade marks of the defendants indicates
the source thereof to be the defendants. Once, it is found that such names of
the medicines of the defendants with the prefix 'MERCY' are the trade marks
of the defendants, the question of 'MERCYKIND' also being the trade mark of
the defendants with respect to the same goods and of the goods of the
defendants having two trade marks, would not arise. Therefrom, it follows
that 'MERCYKIND' is not the trade mark of the defendants.
L. I however find the defendants to have, at page 88 of their documents,
filed copy of an application filed for registration of 'Mercykind
Pharmaceutical' along with the logo as a trade mark. No arguments were
however addressed with respect thereto and the plaintiff has neither pleaded
the same nor the senior counsel for the plaintiff has addressed any
arguments with respect to the same. On the contrary, it was the categorical
case of the counsel for the defendants that 'MERCYKIND' is not used by the
defendants as a trademark. I am thus, for the purposes of the present
application, not considering the same and it will be open to the plaintiff to, if
so chooses, oppose the said application of the defendants.
M. However the name 'MERCYKIND PHARMACEUTICAL PRIVATE LIMITED' of
the defendant No. 2 Company is also to be found on the goods i.e.
pharmaceutical products manufactured and marketed by the defendants,
either in compliance of various Laws, Rules, Regulations requiring the name
of manufacturer/marketeer to be so mentioned, or otherwise.
N. I have thus wondered, whether such affixation of the name of the
defendant No. 2 Company with the word 'MERCYKIND', to which objection is
taken, to the medicines of the defendants, amounts to use thereof as a trade
mark, for the purposes of Section 29 of the Act, by virtue of sub-section (6)
thereof reproduced above.
O. However, notice can be taken of the fact that pharmaceutical products
generally fall in two categories i.e. Over The Counter drugs or prescribed or
schedule drugs. Prescribed or schedule drugs cannot be sold except on a
prescription of a qualified medical practitioner. Neither Over The Counter
drugs/medicines are known to be asked for by the name of the
manufacturer/marketeer thereof nor are the qualified medical practitioners
known to prescribe drugs/medicines by the name of their
manufacturer/marketeer and are known to prescribe by the name/mark under
which the said drugs are sold and which in the case of drugs/medicines of
the defendants is not 'MERCYKIND'. In fact, of late, the qualified medical
practitioners are being instructed to prescribe the schedule/prescribed drugs
by their pharmaceutical/generic names and not even by their trade names.
P. Thus, mere affixation of the name of the defendant No. 2 Company as
manufacturer or marketeer of the drugs/medicines sold by the defendants,
would in my opinion, not qualify as a use thereof as a trade mark, even
under Section 29(6) of the Act.

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 Q. Once it is found that 'MERCYKIND' is not a trade mark of the defendants,
Section 29(1) to (4) do not apply. The need thus, to address the lengthy
arguments urged with respect to 'family of marks' is not felt.
R. The emphasis of the senior counsel for the plaintiff also, was on Section
29(5) which is as under:
"29(5) A registered trade mark is infringed by a person if he uses
such registered trade mark, as his trade name or part of his trade
name, or name of his business concern or part of the name, of his
business concern dealing in goods or services in respect of which the
trade mark is registered."
S. While the test of infringement under Section 29(1) to (4) is "... identical
with or deceptively similar to...", the test of infringement under Section
29(5) of the mark, of which infringement is claimed, as would be apparent
from language thereof reproduced above, is "uses such registered trade mark
as his trade name or part of his name or name of his business concern or
part of the name, of his business concern, dealing in goods or services in
respect of which the trade mark is registered". Thus, the registered trade
mark 'MANKIND' or any other registered trade marks with 'KIND' as prefix or
suffix of the plaintiff would be infringed under Section 29(5), if the
defendants were to be found to be using 'MANKIND' or any of the other
registered trade marks of the plaintiff with 'KIND' as prefix or suffix as part
of their trade name. Neither is it so the case of the plaintiff nor are the
defendants found to be using 'MANKIND' or any other registered trade mark
of the plaintiff with 'KIND' as prefix or suffix as part of their name. What the
defendants are using as part of the corporate name of the defendant No. 2
Company is, 'MERCYKIND'.
T. The contention of the senior counsel for the plaintiff is that even though
the defendants are not using, as part of their trade name, any registered
trade mark of the plaintiff but use by the defendants of 'MERCYKIND' which is
deceptively similar to the registered trade marks of the plaintiff, is
infringement under Section 29(5) of the Act.
U. I am however unable to agree. The Legislature, inspite of having used the
words "...identical with, or deceptively similar to..." in Section 29(1) to (4),
having used different words in Section 29(5) and having not used such
words in Section 29(5), is deemed to have not constituted use as name or
part of the name, of a word or mark deceptively similar to the registered
trade mark of the plaintiff, as infringement thereof by the defendants. What
has been constituted as infringement under Section 29(5) is use of the
registered trade mark as trade name or part of the trade name. Thus, there
would have been infringement under Section 29(5), if the defendants, as part
of their name, had used 'MANKIND' or any other registered trade mark of the
plaintiff. Merely because 'MERCYKIND' in the name of defendant No. 2
Company may be deceptively similar to 'MANKIND' or any other registered
trade mark of plaintiff with 'KIND' as prefix or suffix, would not amount to
infringement under Section 29(5).
V. I am unable to find any of the judgments cited addressing the issue as
aforesaid of interpretation of Section 29(5) of the Act. In fact, the said

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 judgments are not found to address the issue, whether use as name or part
of name, of a mark/word deceptively similar to the registered trade mark,
constitutes infringement under Section 29(5) of the Act.
W. I am also unable to find any other judgment addressing the aforesaid
aspect of interpretation of Section 29(5) of the Act, save the dicta of the
Division Bench of the Bombay High Court in Raymond Ltd. Vs. Raymond
Pharmaceuticals Pvt. Ltd. MANU/MH/0704/2010 : 2010 (7) Mh.L.J. 646,
holding (i) that Sub-Sections (1), (2), (4) and (5) of Section 29 of the Act
deal with different types of infringement of registered trade mark and it is
not merely enumerative; (ii) comparison of the provisions of 1958 Act and
the 1999 Act shows that 1958 Act did not have a provision corresponding to
Sub-Section (5) of Section 29; it is a new provision; (iii) perusal of Section
158 of the 1999 Act shows that apart from repealing 1958 Act, certain
provisions of the Companies Act were also amended by the 1999 Act; (iv)
two provisions of the Companies Act which have been amended by the 1999
Act, are Sections 20 and 22 of the Companies Act; (v) the provisions of
various Sub-Sections of Section 29 of the Act are in a scheme and none of
the provisions are either surplus or otiose; (vi) it appears that the Legislature
decided to treat cases, where the defendant uses registered trade mark of the
plaintiff as part of his trade name, as a distinct subject for the purpose of
laying down law in relation to infringement of registered trade mark and
legislated that if the defendant uses registered trade mark of the plaintiff as
part of his trade name, then if the goods in relation to which the defendant is
so using the trade mark are the same as the goods in respect of which the
plaintiff's trade mark is registered, then only it will amount to infringement
and not in case where the goods of the defendant are dissimilar; (vii) use of
a registered trade mark as a part of trade name was a known phenomena;
(viii) passing of action was initiated in such cases; (ix) a special provision
has now been made to deal with that situation by incorporating sub-section
(5) of Section 29 and therefore, so far as subject of using of a registered
trade mark as a trade name is concerned, provision is contained in sub
Section (5) of Section 29 and therefore on that subject no other provision
would apply; generalia specialibus non derogant is a cardinal principle of
interpretation; it means that the general provision will always yield to a
special provision; (x) construed in accordance with this fundamental
principle, a special provision governing cases of a defendant using a
registered trade mark as a part of his trade name is incorporated in Section
29(5) and therefore, that subject will be governed only by that provision and
therefore reliance on any other provision including Section 29(4) is ruled
out; (xi) thus, in the case of infringement of a registered trade mark by use
as a trade name, the provisions of Section 29(4) cannot be relied on; (xii)
the legislature, in Section 29(5) has used the phrase "dealing in goods or
services in respect of which the trade mark is registered"; the legislature has
not used the phrase "goods similar or goods identical to the goods in respect
of which the trade mark is registered"; (xiii) thus, in order to claim that use
of a registered trade mark as part of trade name by the defendants amounts
to infringement, the plaintiffs have to establish that the defendants are
dealing in the goods in respect of which the mark is registered; in other
words, if the defendants are not dealing in goods in respect of which the
trade mark is registered, then the use of the registered trade mark as a part
of trade name by the defendant would not amount to infringement.

07-08-2020 (Page 10 of 11) www.manupatra.com The Rajiv Gandhi National University of Law
 X. I respectfully concur with the dicta aforesaid of the Division Bench of the
Bombay High Court. What has been held by the Bombay High Court qua
goods, i.e. for infringement of a registered trade mark by use as trade name,
the goods in which the defendant is dealing have to be "same/identical" and
not "similar", equally applies to the use of the trade mark as trade name. Use
of a trade name similar or deceptively similar to the registered trade mark
would not constitute infringement under Section 29(5).
Y. Thus, prima facie, no case of infringement within the meaning of Section
29 is made out.
Z. As far as the claim of the plaintiff on the ground of the defendants passing
off their goods as that of the plaintiff is concerned, the plaintiff in para 46 of
the plaint have not invoked the territorial jurisdiction of this Court on the
ground of any cause of action having accrued within the jurisdiction of this
Court. Elsewhere also in the plaint, it has not been pleaded that any cause of
action has accrued to the plaintiff within the territorial jurisdiction of this
Court. It is otherwise not in dispute that the defendants are at Maharashtra.
Merit is thus found in the contention of the counsel for the defendants, of
territorial jurisdiction of this Court to entertain the suit, insofar as on the
ground of passing off, being suspect.
ZA. Even otherwise, once it is found that the defendants are not using
'MERCYKIND', to which alone objection is taken, as a trade mark, no ground
for grant of interim injunction under the said ground also is made out.
Section 134(1)(c) of the Act refers to a suit "for passing off arising out of the
use by the defendant of any trade mark which is identical with or deceptively
similar to the plaintiff's trade mark, whether registered or unregistered".
Thus, unless it is shown that the use of the mark/word 'MERCYKIND', to
which objection is taken, is as a trade mark, no case on the ground of
passing off also, would be made out.
10. IA No. 1684/2017 is accordingly dismissed.
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