Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 10.10.2026
Delhi HC: Mere Trademark Similarity Not Enough for Refusal Under Section 11(1)
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Delhi High Court has set aside the refusal of Mankind Pharma Limitedβs application to register βPETKIND,β holding that similarity with an earlier pending mark alone does not establish the likelihood of consumer confusion required under trademark law.
Background of the dispute
Mankind Pharma applied on 1 October 2021 to register PETKIND in Class 5 for medicinal, pharmaceutical and veterinary preparations, including dietary, nutritional and vitamin food supplements. The Trade Marks Registry refused the application in March 2024 under Section 11(1) of the Trade Marks Act, 1999.
The refusal was based on an earlier application by Wellford Pharmaceutical Pvt. Ltd. for PETKIND PHARMA, also in Class 5. The Registry found the marks visually and phonetically similar and considered the relevant goods similar enough to create a likelihood of public confusion.
Mankind Pharma appealed the decision to the Delhi High Court under Section 91 of the Act.
Mankind Pharmaβs case: a long-established βKINDβ family of marks
Mankind Pharma argued that it had built extensive goodwill around trademarks incorporating the word βKIND.β The company stated that it owns more than 280 registered marks, including over 210 registrations in Class 5 containing βKINDβ as an essential element.
The company also relied on the reputation of its principal mark, MANKIND, which has been recognised as a well-known trademark under the Trade Marks Rules, 2017. It submitted that its βKINDβ marks had been in use since 1986 and that the word had become strongly associated with Mankind Pharma in the pharmaceutical and veterinary market.
Its evidence included substantial commercial use: the top 25 products carrying the βKINDβ element generated aggregate turnover of more than Rs. 2,553 crore in the 2022β23 financial year. Mankind also noted that it already operates in pet-related products under brands including PETSTAR and Mankindβs Pet Cuisine.
The company had separately opposed Wellfordβs application for PETKIND PHARMA. It stressed that the cited mark had been filed on a βproposed to be usedβ basis in December 2020, indicating no established market use at the time of filing.
The Registryβs position
The Registrar defended the refusal, arguing that PETKIND and PETKIND PHARMA were phonetically and structurally similar, covered closely related Class 5 goods, and addressed the same consumer base. On that basis, the Registry maintained that registration of PETKIND could result in confusion or association among consumers.
The Registry also contended that Mankindβs initial response to the examination report lacked sufficient supporting material and detailed reasoning.
What the Court decided
Justice Tejas Karia allowed Mankind Pharmaβs appeal and directed the Trade Marks Registry to advertise the PETKIND application within two months.
The Court clarified that Section 11(1) requires more than a finding that two marks are identical or similar and that the goods fall within the same class. The key statutory test is whether the combined similarity of the marks and goods creates a real likelihood of confusion, including a likelihood of association, among the public.
Importantly, the Court reiterated that goods being placed in the same trademark class does not by itself justify refusal. The analysis must focus on the actual similarity of the goods or services and the likelihood of consumer confusion in the relevant market.
Why the prior PETKIND PHARMA application did not block registration
The Court found that Mankind Pharma had demonstrated sustained, extensive and prior use of βKINDβ marks in Class 5. Its large portfolio of registrations, long-standing commercial presence and substantial goodwill supported the conclusion that βKINDβ had become associated with Mankind in the pharmaceutical sector.
The Court also noted that the cited PETKIND PHARMA application was filed on a proposed-to-be-used basis and did not show active use. Against Mankindβs evidence of use since 1986, the cited application was insufficient to justify rejection of PETKIND.
The judgment further relied on earlier decisions recognising Mankind as the prior and established user of its βKINDβ family of marks. It observed that βKINDβ has no direct connection with pharmaceutical products, strengthening Mankindβs claim to enhanced protection for the distinctive element.
Legal significance of the ruling
The decision reinforces several practical principles for trademark applicants and examiners:
- Same class is not enough: A Class 5 overlap does not automatically prove that goods are similar for the purpose of Section 11(1).
- Confusion must be assessed, not assumed: Similarity in marks and goods must lead to a genuine likelihood of consumer confusion or association.
- Prior use carries substantial weight: Evidence of long, continuous and extensive market use can outweigh an earlier filed but unused application.
- Trademark families can receive broader protection: A proprietor with a well-established series of marks sharing a distinctive feature may obtain stronger protection for that common element.
- Advertisement is not final registration: PETKIND will proceed to advertisement, but any opposition to the mark must still be independently decided on its merits.
Outcome
The Delhi High Court set aside the 15 March 2024 refusal order and held that Mankind Pharmaβs PETKIND application should proceed to advertisement under the Trade Marks Act. The Court expressly preserved the right of any party to oppose the application during the statutory opposition process, with such proceedings to be determined independently of this ruling.
The ruling is a useful reminder that trademark examination must be based on marketplace realities, evidence of use and the statutory confusion test, rather than a mechanical comparison of marks within the same class.
Connected Matter
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Source: Delhi High Court
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