In a significant ruling, the Delhi High Court held that the registration of a trademark in foreign countries alone does not give an automatic right for its registration in India. The judgment was passed in favor of Mankind Pharma, which objected to a trademark application by a Chinese company for the mark “FLORASIS.”
Mankind Pharma, known for its wide range of pharmaceutical products, has used the mark “FLORA” since 1995. The company raised objections against the Chinese firm's attempt to register “FLORASIS” for similar products in India. The Deputy Registrar of Trademarks initially rejected Mankind’s opposition, accepting the Chinese company’s defense that the mark was already registered in other countries and was visually and phonetically different from “FLORA.”
However, the High Court disagreed.
“Simpliciter registration of a mark in another jurisdiction does not entitle a person or entity to register it in India,”
said Justice Saurabh Banerjee.
Mankind argued that while the goods may not be identical, they are sold through the same trade channels, potentially misleading customers. They emphasized that the difference between “FLORA” and “FLORASIS” is minor, with the suffix “SIS” and the use of Mandarin characters failing to create a meaningful distinction. This could lead customers to mistakenly associate the mark with Mankind’s established brand.
The Court noted that pharmaceutical trademarks require stricter scrutiny due to their public health implications. A close examination showed that the two marks were visually, structurally, and phonetically similar.
“The impugned mark ‘FLORASIS’ is likely to be perceived as a variant of ‘FLORA’, potentially misleading the average consumer,”
the Court said.
“All forms of confusion, suspicion, or deception must be prevented with the highest level of care and caution, especially in matters affecting public health and safety.”
The Court also addressed the argument about the addition of Mandarin characters, stating that it did not add any distinctive value for Indian consumers, especially when such characters are not understood by the general public or trade professionals in India.
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“In India, just adding a Mandarin character doesn’t make a trademark distinctive, particularly in the pharmaceutical sector,”
Ultimately, the Court allowed Mankind’s appeal, setting aside the Deputy Registrar’s decision and ordering the removal of the “FLORASIS” mark from the Indian trademark registry.
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 Respondent
Case title: Mankind Pharma Limited v. Zhejiang Yige Enterprise Management Group Co. Ltd. & Anr.
Case no.: C.A.(COMM.IPD-TM)
