The plaintiff, known for its manufacturing and distribution of Ayurvedic, Unani, and herbal medicines, has operated under the brand “MULTANI” for decades. Among its vast portfolio, the “KUKA” range, particularly cough syrups and tablets, has emerged as a household name. The “KUKA” mark was adopted as early as 1938 and has been used consistently ever since. The brand’s longstanding heritage was evident from its registered trademarks dating back to 1951, which were reinforced by more recent registrations and applications, both domestically and internationally.
The dispute arose when the plaintiff discovered in July 2024 that counterfeit versions of its “KUKA” cough syrup were being sold in foreign markets, particularly Moldova and Russia, under the deceptively similar mark “KYKA.” What raised deeper concerns was that the defendants were supplying these counterfeit products to the same Moldovan distributor that had been associated with the plaintiff’s products since 2012. Not only did the counterfeit labels mimic the original brand, but the defendants also leveraged an established distribution network to blur the lines of authenticity, potentially misleading consumers and tarnishing the plaintiff’s global reputation.
Shocked by this calculated act of infringement, the plaintiff approached the Delhi High Court seeking a permanent injunction against the defendants for trademark infringement, copyright violation, and passing off. The court promptly granted an ex parte ad interim injunction on August 30, 2024, restraining the defendants from using the mark “KYKA” or any identical or deceptively similar branding that could infringe on the plaintiff’s “KUKA” mark.
Interestingly, the matter was referred to mediation on December 2, 2024, and resulted in a full settlement. The defendants agreed to compensate the plaintiff with INR 6,50,000, which was handed over in court. The suit was consequently decreed in terms of the settlement agreement. However, the plaintiff also requested a declaration that “KUKA” be recognised as a well-known trademark, invoking Section 2(1)(zg) of the Trade Marks Act, 1999.
The Delhi High Court meticulously reviewed the statutory requirements laid down under Sections 11(6) and 11(7) of the Trade Marks Act to determine if the “KUKA” mark met the criteria for being declared well-known. The court considered factors such as the public recognition of the mark, its duration and geographical use, the extent of its promotion and advertising, the reach of trademark registrations, and past enforcement success.
The evidence submitted by the plaintiff highlighted that “KUKA” products are widely available across India in pharmacies and on e-commerce platforms. Advertisements dating back to 1938, featuring prominent brand ambassadors like Boman Irani, extensive presence on social media, and significant advertising investments, reaching over INR 2.6 crores in FY 2023–24, demonstrated the brand’s formidable market presence. The court also considered international exports dating as far back as 2004, with clearances for markets like Moldova, Russia, Uzbekistan, Armenia, and several others. These were substantiated through internal export records, customs documentation, and Ministry of Health approvals from Moldova.
In terms of legal enforcement, the plaintiff had a track record of protecting the “KUKA” brand. It had successfully opposed similar marks like “KUKAL,” “KUKA Cattle Feed,” and “KAIKA KULFI” across various trademark classes. The plaintiff had even secured a favourable settlement in CS(COMM) 341/2019, another trademark infringement suit.
The court concluded that the mark “KUKA” had not only achieved distinctiveness and brand equity in India but had also extended its recognition internationally. Justice Bansal emphasised that the brand had acquired recognition across a broad section of the public, evident from its widespread availability, significant consumer engagement, continuous commercial use since 1938, and the efforts undertaken to maintain and defend its proprietary rights.
In light of these observations, the court declared “KUKA” to be a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999. This declaration is particularly significant, as it affords broader protection to the mark against potential infringers even in dissimilar product categories, ensuring that the mark is safeguarded from dilution or exploitation in the future.