Mankind Pharma Limited v. Chandra Mani Tiwari & ANR

$~10 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 100/2017, I.A. 1684/2017 & I.A. 1685/2017 MANKIND PHARMA LIMITED .....Plaintiff Through:

Mr. Rajiv Nayar, Sr. Adv. with Mr.

Ankur Sangal, Mr. Ankit Arvind, Mr.

Kiratraj Sadana and Ms. Nidhi Pathan, Advs.

versus CHANDRA MANI TIWARI & ANR.

.....Defendants Through:

Mr. A.K. Pandey and Mr. Hem Kumar, Advs.

M: 9811029458 Email: aklegal1966@gmail.com

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA

O R D E R

% 19.09.2024 1.

The present suit has been filed seeking permanent injunction restraining the defendants from infringing the plaintiff's trademark/trade name 'MANKIND' and series of marks with the suffix/prefix 'KIND' in any manner whatsoever, and to stop usage of the trademark/trade name 'MERCYKIND'.

2.

As per the case canvassed by the plaintiff, the facts are as follows: 2.1 The plaintiff is the registered proprietor of the mark 'MANKIND' in forty two different Classes, i.e., in Classes-1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 30, 31, 34, 35, 36, 38, 39, 40, 41, 42, 43, 44 and 45.

2.2 The plaintiff has for nearly three decades, coined and used numerous CS(COMM) 100/2017 Page 1 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

marks by adding a prefix or suffix to the elements MANKIND and/or KIND. As a result of which, the plaintiff's group has more than 150 trademarks registered with the suffix/prefix MANKIND and/or KIND. 2.3 The plaintiff has extensively sold its products under the trade name MANKIND and more than hundred different products with the suffix/prefix KIND across the length and breadth of the country, reaching to millions of people. The goodwill and reputation of its trademark/trade name MANKIND, has made the said trademark/ trade name distinctive, being a symbol of high quality products.

Thus, due to the goodwill generated by the plaintiff for nearly three decades, the use and registration of more than hundred trademarks containing the word element MANKIND and/or KIND in various Classes, the public and trade exclusively associate the goods and services with the mark/ trade name MANKIND and marks containing the word element KIND, with the plaintiff and no one else. 2.3 Around November, 2016, while going through the records of the Trademark Registry, the plaintiff came across the trade name of defendant no.2, MERCYKIND Pharmaceuticals Pvt. Ltd., wherein, defendant no.2 claimed to be doing business under the impugned trade name bearing various trademarks, such as MERCYMOX, MERCYCOUGH, MERCYCOPE, in relation to medicinal and pharmaceutical preparations. Hence, the present suit has come to be filed. 3.

This Court notes that vide order dated 09th September, 2024, the submission made on behalf of the defendants was recorded, i.e., the defendants have already changed their trademark. However, for changing the corporate name, certain formalities are to be undertaken, for which, the defendants stated that they needed some more time. Further, it was also CS(COMM) 100/2017 Page 2 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

submitted on behalf of the defendants that they have certain stock of goods, for disposal of which, time is required.

4.

Today, learned counsel appearing for the defendants submit that the defendants are presently engaged in the process of changing its registered company name, as per applicable regulatory requirements. However, the process of changing the company name requires the defendants to undertake multiple formalities, including, but not limited to, drafting and passing a resolution in accordance with the Companies Act; obtaining necessary approvals from regulatory authorities, including, the Registrar of Companies; completing all legal, procedural and administrative formalities associated with the name change; notifying the relevant stakeholders and updating contractual obligations, licenses, permits, etc. Thus, it is submitted that time may be granted for carrying out the requisite formalities for completion of the process for change of name of the defendant company. 5.

Learned counsel for the defendants has also handed over details of the existing stock, which is annexed as Annexure-A to the present order. It is submitted that the said existing stock is worth approximately ₹70 lac s, and time may be granted to exhaust the said stock. 6.

Learned Senior Counsel appearing for the plaintiff submits, under instructions, that in view of the fact that the defendants have already changed their trade name, decree may be passed in favour of the plaintiff and that the plaintiff is ready to give up its prayer for costs and damages. 7.

However, with regard to further prayers of the defendants regarding grant of time, it is submitted that only reasonable time may be granted to the defendants, in that regard.

8.

Having heard learned counsels for the parties, it is directed as follows: CS(COMM) 100/2017 Page 3 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

8.1 The suit is decreed in favour of the plaintiff and against the defendants in terms of prayers (a) to (d) of paragraph 48 of the Prayer Clause in the plaint.

8.2 The defendants shall withdraw all their opposition/rectification proceedings filed against the plaintiff, pending before the Trade Marks Registry.

8.3 The defendants shall also withdraw their application, if any, for trademark registration, pending before the Trade Marks Registry, for the trademark 'MERCYKIND', or any other trademark, which is deceptively similar to the plaintiff's trademark 'MANKIND'/ 'KIND' and its formative trademarks.

8.4 The defendants shall exhaust their existing stock, as per the details given in Annexure-A of the present order, within a period of one year from today.

8.5 It is also directed that defendants shall change their company name and complete the requisite formalities, within a period of five months from today. Further, the defendants shall not use the corporate name 'MERCYKIND Pharmaceuticals Private Limited', after five months from today.

8.6 The defendants shall also not manufacture any product under the trademark/ trade name MERCYKIND, from today.

9.

Let decree sheet be drawn up, in the aforesaid terms. 10.

Accordingly, the present suit, along with the pending applications, stands disposed of.

MINI PUSHKARNA, J SEPTEMBER 19, 2024/kr CS(COMM) 100/2017 Page 4 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

Annexure-A CS(COMM) 100/2017 Page 5 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

CS(COMM) 100/2017 Page 6 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

CS(COMM) 100/2017 Page 7 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

CS(COMM) 100/2017 Page 8 of 9 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

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