Likelihood of Confusion Is Not to Be Presumed Merely Due to Visual or Phonetic Similarity – Delhi High Court Allows Mankind Pharma to Register ‘PETKIND’

“Appellant having established its first user of the word ‘KIND’ in the pharmaceutical market is entitled to a higher protection for the word ‘KIND’” –  In a significant ruling Delhi High Court allowed Mankind Pharma Limited to proceed with the registration of the trademark ‘PETKIND’, setting aside the Trademark Examiner’s refusal under Section 11(1) of the Trade Marks Act, 1999. Justice Tejas Karia, while deciding C.A.(COMM.IPD-TM) 54/2024, held that a mere phonetic or visual similarity between trademarks is not sufficient to assume a likelihood of confusion unless supported by compelling evidence.

“The present case is a classic example of why the test of confusion must be applied with greater scrutiny and not in abstract,” the Court remarked.

The controversy arose after Mankind Pharma, one of India’s largest pharmaceutical companies, applied for registration of the mark ‘PETKIND’ in Class 5, which includes pharmaceutical, medicinal, and veterinary products. The mark was intended for use on pet-related products, aligning with the company’s expanding portfolio, which already includes brands like ‘PETSTAR’ and ‘Mankind’s Pet Cuisine’.

However, the Trademark Examiner, through an order dated 15.03.2024, rejected the application citing the presence of an earlier trademark application for ‘PETKIND PHARMA’, filed by Wellford Pharmaceuticals Pvt. Ltd. on a proposed-to-be-used basis. The Examiner invoked Section 11(1) of the Act, concluding that the similarity between the two marks was likely to create confusion in the minds of the public.

Challenging this rejection, Mankind Pharma filed an appeal under Section 91 of the Trade Marks Act, 1999, asserting its longstanding proprietary rights over the suffix ‘KIND’.

The central legal question before the Court was whether the mere existence of a visually and phonetically similar mark in the same class was sufficient to trigger refusal under Section 11(1)(a) and 11(1)(b) of the Trade Marks Act.

Justice Karia noted,

“It is clear, from a bare reading of Section 11(1) of the Act that mere identity or similarity of the mark… is not sufficient as a ground to reject the application seeking registration.”

He further clarified that, “An additional requirement under both Sections 11(1)(a) and 11(1)(b) of the Act would be the aspect of likelihood of confusion. Likelihood of confusion is not to be easily presumed.”

Relying on the decision in Manu Garg & Ratan Behari Agrawal v. Registrar of Trade Marks, the Court reiterated that similarity in class alone is not determinative, and the assessment must include nature of goods, commercial impression, and the target consumer base.

Mankind Pharma's Case – A Legacy of the ‘KIND’ Family

Mankind’s counsel presented that the company holds over 280 registered trademarks, 210 of which are in Class 5, all forming part of a distinct family of marks ending with the suffix ‘KIND’. The Court took note of the enormous goodwill amassed by the company and remarked,

“The Appellant has developed a Family of Marks with the word ‘KIND’ as an essential part… and is entitled to a higher protection.”

It was also brought to the Court’s attention that the Registrar of Trade Marks had earlier declared ‘MANKIND’ as a well-known trademark under Rule 124 of the Trade Marks Rules, 2017, and the said status had been published in the Trade Marks Journal.

Moreover, Mankind had filed a notice of opposition against the cited ‘PETKIND PHARMA’ mark and established that its own turnover had reached over ₹1,962 crores in the financial year preceding Wellford’s application, clearly indicating prior use and dominance in the market.

The Court was critical of the Examiner's failure to consider Mankind’s written submissions and supporting documents and noted that,

“The Impugned Order was passed without putting on record the Written Submissions and the Supporting Documents filed by the Appellant… despite the Appellant’s request.”

Likelihood of Confusion

A pivotal finding of the Court was that the cited ‘PETKIND PHARMA’ application by Wellford was filed only on a “proposed to be used” basis and had no actual use in commerce. The Court observed:

“A perusal of the response to the Examination Report, shows that the Cited Mark was applied for on a proposed to be used basis and there is no active user of the Cited Mark.”

Justice Karia ruled that the public's association of the word ‘KIND’ was firmly with Mankind Pharma and that such an association had developed over decades of use:

“Due to its continuous and extensive usage, the word ‘KIND’ has come to be exclusively associated with the Appellant, and this would entitle the Appellant to a higher protection for the KIND Family of Marks.”

The Court emphasized that the rejection was unwarranted given the sheer weight of prior use and registrations in favour of Mankind Pharma, holding that:

“The Cited Mark in the Examination Report would not lead to rejection of the Subject Trade Mark considering the overwhelming use and registrations of marks with the suffix ‘KIND’ by the Appellant.”

In conclusion, the Court allowed the appeal and directed the Trade Marks Registry to proceed with the advertisement of the ‘PETKIND’ mark in the Trade Marks Journal within two months, while making it clear that any opposition filed in due course would be adjudicated on its own merits, uninfluenced by the present order.

“The Subject Trade Mark ought not to have been rejected and deserves to proceed for advertisement,” the Court concluded.

The judgment underscores a vital principle in trademark law—that the likelihood of confusion must be established not merely on theoretical similarity, but on real commercial impact, consumer perception, and market usage. The High Court’s ruling stands as a strong reaffirmation of proprietary rights built on consistent use, market goodwill, and brand association.

By recognizing Mankind Pharma's long-standing relationship with the ‘KIND’ suffix, the Court reaffirmed that prior use and recognition cannot be disregarded by mechanical application of statutory provisions.

Date of Decision: August 22, 2025