The Delhi High Court has clarified that owing to the identity or similarity between the subject Trade Mark and the Cited mark, and the identity or similarity between the goods covered under two marks, if there exists a likelihood of confusion on the part of the public, which would include a likelihood of association with the earlier Trade Mark, the same would clearly be a ground for refusal of registration under Section 11 of the Trade Marks Act, 1999.
The Court observed that the Appellant has developed a family of marks with ‘KIND’ as an essential part and that prior judicial decisions have recognized the Appellant’s entitlement to a higher degree of protection for this word due to its extensive and continuous usage.
Accordingly, in light of the Appellant’s overwhelming use and numerous registrations of marks with the ‘KIND’ suffix, the Court concluded that the Cited Mark should not bar the registration of the Subject Trade Mark. Consequently, the impugned order was set aside, and the Respondent was directed to proceed with advertising the ‘PETKIND’ application.
A Single Judge Bench of Justice Tejas Karia observed that the Appellant has developed a family of marks with ‘KIND’ as an essential part and that prior judicial decisions have recognized the Appellant’s entitlement to a higher degree of protection for this word due to its extensive and continuous usage.
The Bench highlighted that the Appellant’s ‘MANKIND’ mark is officially listed as a well-known trademark. Critically, the Bench found that the Appellant holds 65 registered trademarks in Class 31 alone with the suffix ‘KIND’ and has amassed significant goodwill.
Furthermore, the Bench noted that the Cited Mark was filed on a “proposed to be used” basis with no evidence of active use, whereas the Appellant has been using various marks with the suffix ‘KIND’ since 1986.
Briefly, the Appellant (Mankind Pharma) had challenged the order passed by the Registrar of Trade Marks (Respondent), who had refused the Appellant’s application for the registration of the mark ‘PETKIND’ in Class 31, on the grounds that a prior application for the phonetically and visually similar mark ‘PETKIND’ already existed for similar goods and services in the same class. The refusal was based on Sections 9(1)(a), 9(1)(b), and 11(1) of the Trade Mark Act.
The Appellant, a major Indian pharmaceutical company, had applied for the ‘PETKIND’ mark for a range of agricultural, horticultural, and animal foodstuff products. An Examination Report raised an objection under Section 11(1), citing the likelihood of public confusion due to the similarity with the earlier mark. After a hearing, the application was rejected, leading the Appellant to file the present appeal, claiming the decision was arbitrary and legally flawed.
Appearances:
Advocates Hemant Daswani and Saumya Bajpai, for the Appellant
CGSC Nidhi Raman, along with Advocates Om Ram and Mayank Sansanwal, for the Respondent
