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Mankind Pharma Ltd. v/s Chandra Mani Tiwari & Another

    CS(COMM) No. 100 of 2017

    Decided On, 06 July 2018

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE RAJIV SAHAI ENDLAW

    For the Plaintiff: Amit Sibal, Sr. Advocate, Namit Suri, Hemant Daswani, Monika Mehalawat, Niloy Dasgupta, Advocates. For the Defendants: M.K. Miglani, Gaurav Miglani, Samreen Khan, Gunjan Hans, Advocates.



Judgment Text

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) 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 (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. 2015 SCC OnLine Del 6914, 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 (1965) 1 SCR 737, para no.30 of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. (2014) 58 PTC 136 (Del), and, para nos.26, 29 to 33 of Sanofi India Ltd. Vs. Universal Neutraceuticals Pvt. Ltd. (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 Amar Singh Chawal Wala Vs. Shree Vardhman Rice (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 2014 (1) RAJ 44 (Del), para 15 of London Rubber Vs. Durex (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. 1970 AIR SC 1649, and, paras no.30 and 33 of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. (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. 2009 SCC OnLine Del 753, para no.33 of Novartis AG Vs. Crest Pharma Pvt. Ltd. (2009) 41 PTC 57 Del, and, para no.50 of Express Bottlers Services Pvt. Ltd. Vs. Pepsi Inc (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 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. (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. (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 (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. (2016) 65 PTC 614 (Del.), Living Media Ltd. Vs. Alpha Dealcom Pvt. Ltd. (2014) 58 PTC 589 (Del) and Unichem Laboratories Ltd. Vs. Ipca Laboratories Ltd. (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. (2009) 41 PTC 217 (Del) and on Aviat Chemicals Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd. (2001) 21 PTC 601 (Del).

9. Having pondered over the respective pleadings and contentions, I am unable to 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

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 of 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 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 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.

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 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. 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 provi

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sion 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. 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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