Use of a Mark as Part of a Trade Name
Introduction:
Trademark infringement cases often involve intricate legal arguments that revolve around the nature and use of marks. One such argument arises when a defendant contends that their use of a mark is not infringing because it is part of their corporate name and not used as a trademark. This article examines the legal implications of using a mark as part of a trade name and analyses a specific case where such a defence was rejected by the Hon'ble High Court of Delhi.
Defendant's Argument and Plaintiff's Claim:
In the case at hand, the plaintiff filed a suit for trademark infringement based on their proprietary rights in the trademark "MANKIND." The plaintiff sought a permanent injunction against the defendant's use of the mark "NOVAKIND" as part of its corporate name, "NOVAKIND BIO SCIENCES PRIVATE LIMITED." The defendant attempted to escape liability by asserting that their use of the mark was not as a trademark but as a component of their trade name.
The Definition of "Mark":
A fundamental aspect of this analysis is the definition of a "mark." In the context of trademark law, a mark includes a name, signature, word, letter, or any combination thereof. This definition encompasses a broad range of elements that can be used to identify the source of goods or services in commerce.
Use of the Mark in Trade:
The court assessed whether the defendant's use of the mark "NOVAKIND" could be considered as a trademark within the meaning of Section 2(zb) of the Trade Marks Act.
The court found that the mark was prominently used on the strip of the pharmaceutical preparation, indicating its association with the defendant's products. This prominent use in the course of trade demonstrated that the defendant's contention that the mark was not used in the course of trade was untenable.
Trade Mark Vs Corporate Name/Trade Name:
The court rejected the defendant's argument that their use of the mark was merely part of their corporate name. It held that the mark's conspicuous presence on the pharmaceutical product indicated its role in distinguishing the defendant's products. Thus, the court concluded that the defendant was using the mark as a trademark within the purview of the Trade Marks Act.
Reliance on the Drugs and Cosmetics Act:
The defendant also relied on the Drugs and Cosmetics Act, which mandated the affixation of the company name on pharmaceutical products. The court dismissed this argument, stating that the legal requirement to display the company name did not absolve the defendant from infringing a registered trademark. The court emphasized that the defendant could have adopted a non-infringing company name to comply with both the Drugs and Cosmetics Act and the Trade Marks Act.
The Concluding Note:
The court's decision underscores that the mere inclusion of a mark in a corporate name does not shield a defendant from liability if the mark is used to indicate the source of goods in commerce. This analysis emphasizes the importance of carefully navigating trademark law to protect proprietary rights and prevent infringement, even in scenarios involving corporate names and statutory requirements.
The Case Law Discussed:
Date of Judgement/Order:07/08/2023
Case No. CS(COMM) 188/2021
Neutral Citation: 2023:DHC:5653
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar , HJ
Case Title: Mankind Pharma Limited vs Novakind Bio Sciences Private Limited
Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Advocate Ajay Amitabh Suman
IP ADJUTOR
Patent and Trademark Attorney
ajayamitabhsuman@gmail.com
9990389539
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