SpicyIP Tidbit: Analysing the Mankind Pharma Order through the lens of the Modi Pharma Case on the ‘Family of Marks Doctrine’
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[This post is authored by Bhavya Gupta. Bhavya is a third year BA. LLB student at the National Law School of India University, Bangalore. Her academic and professional interests lie in corporate law, intellectual property, competition law and international arbitration.]
The Delhi High Court recently in Mankind Pharma Ltd. v. Ram Kumar M/s Dr. Kumars Pharmaceuticals (C.O. (COMM.IPD-TM) 566/2022) ordered for the cancellation of the “UNKIND” mark in Class 35, providing a useful opportunity to reflect on the judicial reading of the “family of marks” doctrine in Indian jurisprudence. This becomes particularly relevant when read alongside the Division bench’s cautionary approach towards the concept in Modi Mundipharma Pvt. Limited v. Speciality Meditech Pvt. Ltd. (RFA(OS)(COMM) 8/2023). (You can find prior reference to the Modi pharma case here.)
The Family of Marks Doctrine
Under the Family of Marks doctrine, the owner of a collection of different marks that share a common element can assert infringement by a third-party mark without establishing infringement of any single mark in the family, based on infringement of the element common to the plaintiff’s family. In the Modi case, the Court provided a critical refinement of this doctrine; while recognising its validity using Amar Singh Chawla and Neon Laboratories, the Court firmly rejected the idea of a blanket monopoly.
In that case, the Court had held that the proprietor of the family marks (there “CONTIN-”) cannot claim it as absolute and mandated a merit-based analysis of each case. Simply, put protection would not be automatic just because a mark belongs to a larger family of trademarks, and the application would not apply as a standalone right to monopolise the term in question. DHC thus moved away from an overly-protectionist and presumptive approach to an evidence based and competition friendly one.
Applying the Modi Lens to Mankind
Mankind pharmaceuticals have been in this industry since 1986 and has an expensive portfolio of more than 300 marks under the “KIND” suffix. The case concerns the defendants “UNKIND” mark being deceptively similar to their “KIND” family of marks. In contrast, the defendant’s mark was registered in 2008 and never really in commerce. Moreover, the respondent failed to defend the registration and left the claims largely uncontested, which made the to assume that the pleadings were admitted by the respondent.
What becomes of note here, is the pharmaceutical context as these goods are highly sensitive. Unlike consumer goods where confusion would risk dilution or losses, pharmaceutical goods risk public safety and health. Also, the Court invoked Section 47 of the Trade Mark Act permitting cancellation of a trademark which has not been used for five years or has been used but without bona fide intent. They held that trademark rights are not meant to be ‘warehoused’, and registration must be backed by genuine, commercial use.
In their ruling, the Court did not grant a blanket injunction against all marks using “KIND”; instead, they made a specific finding for the mark in question. With the conclusion that the “UNKIND” mark was deceptively similar to Mankind’s family of marks adopted “dishonesty to trade upon the established goodwill” of the petitioner. (¶24) the court impliedly read the mark “KIND” as a unique signifier of the plaintiffs’ products, which was a distinguishing characteristic gained after decades of use and crores of sales. This a direct application of the Modi principle, i.e the family of marks doctrine was used as evidence to support a likelihood of confusion under Section 11 for this particular mark and not to create a monopoly.
Broader Implications
This seems to be a correct application of the reimagined family of marks doctrine. Instead of a narrow construction, the Court allowed for a flexible case-specific analysis. This is where the rule diverged from the troubling rise in ‘prefix and suffix’ monopolisations exemplified by the the cases surrounding “Mc”. Granting an overworking injunction without allowing anybody to use of the word “KIND” would have been a dangerous overreach, stifling competition and claiming ownership of a common English word, which has nothing to do with pharmaceutical per se.
These judgements are not a green light for conglomerates to aggressively police common prefixes, rather it is meant to police those who adopt marks with no bona fide intent and are aiming to ride the coattails of other brands’ hard-earned reputation. This goes back to the trademark protection basics where it states that trademark protection is earned and not inherited by virtue of market share.
The Court is essentially sending a message that brands should focus on building a defensible trademark around a real business and generate goodwill and have evidence of distinctiveness rather than using the argument of “common words” as a shield.