Registration Of Trademark In Other Countries Doesn't By Itself Entitle Party To Its Registration In India: Delhi High Court

The Delhi High Court has made it clear that registration of a trademark in other countries does not by itself entitle registration of the said mark in India.While allowing Mankind Pharam's objection to registration of a trademark for the pharmaceutical product line of a Chinese company in India, single judge Justice Saurabh Banerjee observed, “simpliciter registration of a mark in another jurisdiction does not entitle a person/ entity for registration of the same in India.”Mankind deals in a wide variety of medicinal ranges including under the trademark 'FLORA', coined in the year 1995. It was opposed to the registration of the 'FLORASIS' trademark of the Chinese company (respondent no.1).The Deputy Registrar of Trademarks (respondent no.2) had rejected Mankind's objections on following grounds:Application of respondent no.1 is honest and bona fide as the impugned mark is already registered in various countries;Even by stricter measures, trademark 'FLORA' is visually, phonetically or structurally different from 'FLORASIS';Combination of mandarin characters with 'FLORASIS' gives it a unique impression, depiction and recollection in the Indian context.Mankind argued that although the goods of the Respondent no.1 are not identical, however, they are sold across the same counters and through the same channels of trade and thus creates a likelihood of confusion among the customers. It further contended:Merely addition of a suffix 'SIS' and a mandarin character does not materially distinguish the mark;It is likely to hint to the average consumer with imperfect recollection that the impugned mark is nothing but an extension of Mankind's brand;Courts have repeatedly held that a comparison of trademarks/ products involving pharmaceutical preparations needs to be stricter. At the outset, the High Court observed that a close comparison of the two marks reveals that there are hardly any visible differences to the naked eye of any average person with imperfect recollection belonging to the trade or to the general public. In fact, it observed that the impugned mark 'FLORASIS' is visually, structurally and phonetically similar to Mankind's registered trademark 'FLORA' and is likely to be perceived as yet another variant emanating from the latter's brand.It observed, “Since there is a high degree of resemblance between them, it is likely that the common people start believing that there exists some semblance of a relation/ connection inter se both…all/ any kind of creating confusion, suspicion and deception in the minds of the common people has to be avoided with utmost care and caution as the same could be severely detrimental to the public health and welfare”The Court further observed that while the Deputy Registrar had recorded that the intentions of the respondent no.1 are bona fide as the said mark 'FLORASIS' is registered in various countries, however, it observed that under the peculiar facts and circumstances involved, simpliciter registration of a mark in another jurisdiction does not entitle a person/ entity for registration of the same in India.Furthermore, the Court observed that in India, merely adding a mandarin character cannot add any distinctiveness thereto for being granted registration, and that too qua a pharmaceutical product, especially, when the said character cannot be deciphered by the general public and/ or the members of trade.As such, it allowed Mankind's appeal and directed the Deputy Registrar to remove the entry pertaining to registration of 'FLORASIS'.Appearance: Mr. Hemant Daswani, Ms. Saumya Bajpai, Advs for Appellant; Mr. Amit Tiwari, Advocate with Mr. Vikram Singh Dalal, Mr. Yashpriya Sahran and Mr. Pratham Chawla, Advocates for RespondentCase title: Mankind Pharma Limited v. Zhejiang Yige Enterprise Management Group Co. Ltd. & Anr.Citation: 2025 LiveLaw (Del) 557Case no.: C.A.(COMM.IPD-TM)Click here to read order

Registration Of Trademark In Other Countries Doesn't By Itself Entitle Party To Its Registration In India: Delhi High Court

Kapil Dhyani

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