Mankind Pharma CALDIKIND-P gets Delhi HC protection from lookalike CALIKA-P

Justice Saurabh Banerjee was deliberating a case, wherein, Mankind alleged trademark infringement and unfair trade practices, asserting that the packaging of “CALIKA-P” closely mimics that of its own “CALDIKIND-P” syrup.

Mankind Pharma Limited filed a lawsuit against Sanshiv Health Tech Private Limited, alleging copyright infringement, trademark violation, and unfair trade practices. The drug maker sought to stop Sanshiv from selling a product called “CALIKA-P,” claiming its packaging closely resembles Mankind’s “CALDIKIND-P” syrup.

Mankind alleged that key elements of its product’s trade dress, such as the color scheme and flowing milk design, have been imitated. This, they argued, could confuse consumers, especially as both products target the same market, with potential risks due to the pharmaceutical nature of the goods, specifically formulated for children.

Mankind adopted the trademark ‘CALDIKIND’ for pharmaceutical and medical preparation under Class 5 for its calcitriol, calcium and zinc capsules in the year 2007. Since then, it has been continuously and extensively using trademark ‘CALDIKIND’ in relation to its pharmaceutical products.

Subsequently in the year 2017, the petitioner also introduced another variant of ‘CALDIKIND’ specifically for children, in order to improve calcium absorption in their body and strengthen their bones. The said variant was launched under the trademark ‘CALDIKIND-P’, which includes calcium, phosphorus, magnesium, D-mannose, zinc and vitamin D3 suspension.

As the product ‘CALDIKIND-P’ was created for children and their needs, Mankind created and adopted an original and distinctive trade dress/ label for its product ‘CALDIKIND-P’ having a bright yellow-light colour scheme and a unique arrangement of selected elements such as the mango device and milk being poured down at the bottom part of the packaging designed the trade dress/ label of ‘CALDIKIND-P’ in the year 2017

The drug maker had applied for and obtained registrations over the trademark ‘CALDIKIND’ in Class 5 on July 16, 2007 having registration no. 1578946. Such registration is renewed, valid and subsisting. Mankind also holds both the trademark and copyright over this design.

Mankind in its submission had said that the sales figures of CALDKIND-P have grown from Rs 9.006 crores in the first financial year to Rs 12.33 crores in the most recent year.

Mankind alleged that Sanshiv’s product “CALIKA-P” mimics key elements of their trade dress, including ingredient placement and the milk depiction, to unlawfully associate their product with Mankind’s, thereby gaining an unfair advantage in the market. They submitted that such imitation, especially for pharmaceutical products formulated for children, could confuse consumers, potentially leading to harmful consequences. Both companies operate within the same trade channels, further increasing the likelihood of confusion.

Mankind contended that greater protection is necessary in cases involving pharmaceuticals due to the potential for confusion and its serious implications. It submitted;

“Since, as per settled law confusion of source or product between pharmaceutical goods may produce physically harmful results to purchasers, therefore a greater protection is required than in the ordinary case to avoid any possibility of confusion, more so, since in the present case pharmaceutical goods are specifically formulated for children.”

The Court heard the submissions advanced by the learned senior counsel for the complainant and went through the pleadings as also perused the documents on record. It drew a comparative analysis of the competing products of the parties.

The court observed;

“This seems to be a clear case of the defendants trying to come as near as possible to the plaintiff since there is no reason or occasion for them to have adopted the very same trade dress/ label/ artwork/ trade mark for their product ‘CALIKA-P’ syrup lest they want the members of the general public to believe that they and their products are emanating from the house of the plaintiff.”

“The defendants are clearly attempting to ride upon the goodwill and reputation of the plaintiff’s product by using the impugned trade dress and impugned trade mark for identical product.”

“Visually, there is no iota of difference inter se the trade dress/ label/ artwork/ trade mark for defendants’ ‘CALIKA-P’ syrup from that of the plaintiff. Therefore, the likelihood of confusion is more since the defendants are also dealing in the same products through the same trade channels and are targeting the same set of customers, in the present case, it is for the children. As the competing products are pharmaceutical preparations, it would be in interest of the general public if proactive steps are taken for restraining the defendants.”

“As the facts are pertaining to pharmaceutical products, in view of what is held in Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1, Brihan Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577 and Brittania Industries Ltd. v. ITC India Ltd. (2021) SCC OnLine Del 1489, this Court is to be more cautious and stringent while dealing with matters relating to such pharmaceutical products since there is a likelihood of confusion arising in the minds of general public, if the competing trade dress, trade mark and design of the defendants are allowed to subsist and/ or continue.”

“Therefore, exercising such due diligence and circumspection as per the settled law and in view of the factual matrix involved, especially as the defendants are guilty of blatantly adopting and using the impugned trade dress and design, the rights and interest of the plaintiff needs protection.”

It further noted;

“The plaintiff has, thus, been able to make out a prima facie case with the balance of convenience for grant of an ad interim ex-parte injunction in their favour and against the defendants. In case the defendants are not restrained by way of an ad interim ex-parte injunction, there is a likelihood of the plaintiff suffering irreparable harm, loss, injury and prejudice which cannot be compensated for in terms of money.”

Subsequently, the court held;

“Accordingly, till the next date of hearing, the defendants, their proprietors, partners or directors, as the case may be, their principal officers, servants, distributors, dealers and agents, and all others acting for and on behalf of the defendants are restrained from selling, offering for sale, advertising, directly or indirectly dealing with the goods and services under the impugned trade dress/ label and the impugned trade mark ‘CALIKA – P’ or any other trade dress/ label or trade mark which may be identical to or deceptively similar to the plaintiff’s trade dress/ label and trade mark ‘CALDIKIND’.”

The case has been adjourned until January 27, 2025.

Besides, the court also granted the Mankind’s request to appoint Local Commissioners to visit the defendants’ premises to inspect and seize infringing materials related to the plaintiff’s trademark. The defendants were suspected of stocking counterfeit products. The court directed the commissioners to seize and seal the products, take necessary documentation, and report back within two weeks. The order also allowed video recording of the proceedings and granted commissioners police assistance if needed. The defendants were required to preserve the sealed products for future court orders.

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