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WITHOUT PREJUDICE

Date: 28.07.2022

To,
Mankind Pharma Limited
208, Okhla Industrial Estate,
Phase-III, New Delhi
South Delhi DL 110020

Subject: Notice to Cease and Desist from Manufacturing,

marketing, selling and using products bearing mark
“NUCORT” and “NUCORT-M” which is identical to our brand
“ NUCART” which is registered under the Trademarks Act,
1999 read with the Rules framed there under.

Dear Sir,

1. For, on behalf of and under the instructions of GUFIC BIOSCIENCES LTD,

Subhash Road, Gufic house, vile Parle (East) Mumbai-400057 (hereinafter
referred to as “our Client”), we hereby serve you with the present legal notice for
which you are requested to take strict note of and act accordingly.

2. That our Client is in the business of manufacturing and marketing a wide

variety of pharmaceutical, ayurvedic and medicinal preparations. It is
pertinent to mention that our Client is also known for the various personal
hygiene products that our Client manufacture and market.

3. Our Client has gained an impeccable reputation for the quality, effectiveness
and extensive acceptance of its products in the Indian drug market and our
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products are also used globally.

4. That our Client in connection with its well-established business, conceived and
adopted NUCART (word) as the trademark comprising of the Word (NUCART in
Capital) under the Trademarks act, 1999.

5. A table elucidating the details of the mark registered by our client and the status of
the registration are produced herein under
Mark Trademark Class Application Status of
No. Date Registrati
on
NUCART 1128872 5 26.08.2002 Registered

SALES, ADVERTISING AND TURNOVER FIGURES OF OUR CLIENT:

6. The widespread sales and advertisements through various publicity mediums for
the vast array of goods bearing the above trademarks have added to its reputation
and goodwill giving it the additional status of a house mark. Our client by itself
and/or through its permitted users has also invested enormous sum of money in
publicizing and advertising the said marks/trades.

7. That our Client has been honestly, bonafidely and in the course of trade using its
said trademark/label as proprietor thereof continuously, commercially, openly,
exclusively and to the exclusion of others in the course of trade without any
interruptions and interference from any corner whatsoever and has built up an
envious, enormous and valuable trade, goodwill and reputation in respect thereof.
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OUR CLIENT IS THE PRIOR USER OF THE TRADEMARKS:

8. Our client is the proprietor, prior and senior adopter and user of this said
trademarks/label/trade name. The said business being carried on by our client
under these said trademarks name is a very extensive one. The said business under
the said trade mark/label/trade name are identified as exclusively originating from
our client's source and are identified with our client.

9. The said trademarks have already become distinctive and associated with our
client and our client’s said business on account of its long, continuous, extensive
and exclusive user thereof. The business bearing the said trade mark/label/trade
name is highly demanded in the markets on account of their standard quality and
precision.

10. It is most respectfully submitted that our client herein is the open and exclusive
user of the Trademark “NUCART” under Class 5 since 2002. That due to its
longstanding and continuous use (since 2002) and outreach in India, the
Trademark has become distinctive in nature and is widely recognized.

11. That it is germane to mention that our Client’s mark “NUCART” is the one of
the most important brand of our Client’s Company and has been the front runner
for over 19 years and has continued to win the confidence of its prescribers for the
treatment of bacterial infection primarily in India.

12. The word “NUCART” is exclusively identified with our Client’s name and the
consumers, general public, physicians and members of trade associate the word
“NUCART” with us and none else.
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GOODWILL AND MARKET REPUTATION:

13. The said Trade Mark/label has already become a distinctive indicium of our client
and our client’s said business there under. The purchasing public, trade and public
at large associates, identifies and distinguishes the said trade mark/label with our
clients said business alone. Our client's business is dependent thereon. Our client
contends that the said trade mark/label have acquired secondary significance
denoting the said business of our client and are recognized with our client’s source
alone. They have become synonymous with the business of our client.

BRAND PROMOTION AND SPONSORSHIP ACTIVITIES OF OUR

CLIENT:

14. Our client is the proprietor of this said trademarks/label both under the statutory
law and under the common law and hence nobody can be permitted to use or deal
with the same or any other Trade Mark /label identical with or deceptively similar
thereto, either by itself or in its essential/constituent features including the
copyright thereon in relation to the same/similar/allied/cognate business as that of
our client or for that matter any specification of or business without the leave and
license of our client. Any such violative use will be in violation of our client
proprietary Trade Mark and copyright rights thereto.

SPECIAL PROVISION IN RESPECT OF PHARMACEUTICALS

PRODUCTS:

15. It is evident from the Judgments of the Indian courts that even the tiniest potential
of confusion or deception related with the use of deceptively similar marks on
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medicinal products has been taken into account by the courts. The Courts have
always used the approach of judging misleading likeness from the perspective of a
consumer with average intelligence and shaky memory. In pharmaceutical
trademark issues, the reliance on human memory has been given little weight, as
even a smidgeon of doubt on the side of a consumer could result in a fatality. This
appears to be the correct strategy, especially when considering consumer well-
being. To avoid a trademark conflict, pharmaceutical brand owners must do
thorough searches both in the Trademarks Registry's databases and in physical
markets before designating a trademark.

16. That our Client’s mark is in respect of pharmaceuticals products however by using
our Client’s mark you have infringed our Client statutory rights and the law
established in the Supreme Judgment in Cadila Healthcare Ltd. v/s Cadila
Pharmaceutical Ltd, 2001(5) SCC 73 wherein the Hon’ble Supreme Court laid
down some factors for deciding the question of deceptive similarity depending
upon the facts and circumstances of each case. These are the following factors:

a. The nature of the marks i.e. whether the marks are word marks, label marks,
composite marks
b. The degree of resemblances between the marks, phonetically similar and hence
similar in idea.
c. The nature of the goods in respect of which they are used as trademarks.
d. The similarity in the nature, character and performance of the goods of the rival
traders.
e. The class of purchasers who are likely to buy the goods bearing the marks they
require, on their education and intelligence and a degree of care they are likely to
exercise in purchasing and/or using the goods.
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f. The mode of purchasing the goods or placing orders for the goods; and
g. Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks

RIGHTS OF THE TRADEMARK HAVING LETTERS

17. It is germane to mention that the Indian courts have taken cognizance of the fact
that the letters have their own respective and exclusive right.
18. Here are various Judgments and case laws where the Hon’ble Courts have
recognized right in Letter Trade Marks:

19. Tube Investments of India Ltd. v. Trade Industries:(1997) 6 SCC 35:-The

Competing Trade Marks were TI (within 2 concentric circles) vs. TI (within a
single circle)-In this case the Court has granted injunction on the letter trade mark
on the ground of Visual similarity between the two marks, coupled with the fact
that the Defendant is using the same trade mark in relation to goods falling within
the same class, even though different from goods for which mark is registered
prima facie, poses a real danger that the product of the Defendant can be passed
off as a product of the Plaintiff.

20. Aktiebolaget SKF v. Rajesh Engineering Corporation: 1996 PTC (16)160: -

The Competing Trade Marks were SKF vs. SKI. In this case different
explanations of the Defendant for using a mark do not strengthen its case but
detracts from the truthfulness of the explanation. The use of SKI by the Defendant
therefore is not bona fide and is a colorable imitation of SKF. Since adoption of
the mark is dishonest, any use will be of no consequence.

21. Weiss Associates, Inc v. HRL Associates, Inc(902 F.2d 1546):- The Competing
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Trade Marks were TMM vs. TMS. In this case the Court has held that it is more
difficult to remember a series of arbitrarily arranged letters than it is to remember
figures. Even though the parties’ products were purchased by discriminating
purchasers, there was nevertheless a likelihood of confusion at the initial stage of
the purchasing process. It is submitted that in this case, the Court has given better
protection to letter trademarks vis-à-vis the numeral trademarks and granted the
protection.

22. Chemetron Corporation v. Morris Coupling and Clamp Co: 203 U.S.P.Q.
537: - The Competing Trade Marks were TT vs. TT. In this case the Court has
observed that notwithstanding the design element of the opposite party’s mark, it
is the letters “TT” that form the salient features of the mark and it is this feature
that creates the commercial impression of the mark which the ordinary purchaser
is likely to remember and rely upon as an indication of origin. The Court further
observed that it must be remembered that purchasers do not always have the
opportunity to compare marks on a side-by-side basis and thus the tests that must
be applied in determining the likelihood of confusion is not whether the marks are
distinguishable when compared side-by-side but rather whether they so resemble
one another as to be likely to cause confusion and this necessarily requires us to
consider the fallibility of memory of the average purchaser who normally retains
only a general impression of trademark over a period of time.

23. That in and around ___________ our client came to know about your
illegal/unauthorized usage of the mark with name “NUCORT” and “NUCORT-
M” (hereinafter referred as “impugned mark”).

24. It is imperative to mention that neither your mark is registered under the purview
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of trademarks act nor you have applied to get your mark registered. However,
from your portfolio it is clearly visible that you have adopted our Client’s mark in
its entirety. A tabular representation of both the mark shows the similarity
between the marks.
Our Client’s Mark Impugned Mark
NUCART “NUCORT” and
“NUCORT-M”

25. That your mala fide intentions are further supported by the fact that the impugned
mark have the same scheme and categorizations, which makes it possible for any
first-time customer/non-regular user to be confused and fall trap to the wrong
belief that the goods are substitutes for one another, run by the same organization
or are affiliates of each other owing to their close resemblance to one another.

26. You in the instant case has used our client’s well- known trademark “NUCART”
on goods or originating from our client and are therefore guilty of falsely applying
our client’s trademark, without the consent of our client and selling such goods. In
light of the aforesaid, you are liable under Sections 102, 103 and 104 of the Trade
Marks Act, 1999.

27. The use of the prominent part of our client’s Trademark “NUCART” by you
constitutes clear acts of misrepresentation in as much as you are making false
representations to the public and reaping monetary gains by associating
themselves with our clients’ popular and reputed trademarks.

28. In fact, it is in the interest of the general public that you should not be permitted to
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use/exploit our clients’ trademarks, so as to even remotely cause confusion
/misrepresentation and thereby take unfair advantage of our clients’ reputation in
the market in which the general public has reposed their trust and confidence.

29. The adoption of the impugned trademarks by you is totally dishonest. It is obvious
that you were always aware of our client’s goods and his trademarks, which has
acquired tremendous reputation over the years. It is also obvious that you have
deliberately adopted an identical/deceptively similar trademark, as that of our
client, with a view to mislead the public into believing that the said goods emanate
from our client and thus trade upon the immense reputation and goodwill of our
client in the same.

30. Our client's trademark has a high degree of distinctiveness and our client's
business bearing the said trademark has been used extensively over a long period
of time all over the country, they have been given large publicity and they enjoy
great popularity and are well recognized by the members of the trade and public as
emanating from our client alone. Our client’s said registered trademarks are, thus,
associated solely with our client. Any use of the impugned trademarks or any
other mark, identical or deceptively similar to our client's said trademarks by you
or by any other person, would inevitably cause deception and confusion in the
minds of the purchasing public.

31. The use of an identical or deceptively similar trademark, by you, would

doubtlessly dilute the reputation and goodwill attached to our client's trademark.
Moreover, the unauthorized and indiscriminate use by you of the impugned
trademark in respect of an identical goods as that of our client, will diminish the
selling power, distinctive quality and value of the registered trademark of our
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client. Your goods with impugned trade mark can be easily passed off as and for
our client’s goods.

32. Your adoption and use of the impugned mark is blatant infringement of our
client’s exclusive statutory and proprietary rights and vesting in its marks and is
bound to tarnish, impair, dilute our client’s fair name and reputation, and lead to
confusion and deception amongst trade and public. Your conduct is bound to
mislead and deceive the member of trade and public into falsely believing that
your business is that of our client or under its supervision or authorization or
license or sponsorship or agency and/or in affiliation or collaboration or tie-up
therewith, and make unjust gains on such accounts. This constitutes a clear case of
passing off and misrepresentation.

33. However, without prejudice to our Client’s rights and contentions, we have been
authorized by our Client to provide you with a last and final opportunity to settle
the matter upon satisfaction of the following requisitions:

a. You undertake not to use or apply to register any mark which contains and
comprise of the mark “NUCART” or any other trade mark identical or similar to
our client’s mark in connection with any business anywhere in India.
b. You will cease all use of any impugned mark or any other mark which contains or
comprises of the marks “NUCART” and in relation to your business/goods in
any manner whatsoever as a trademark, trade name, domain name, website
address and/or email and not claim or display or project or hold out or indicate
any association with our client in any manner whatsoever.
c. You will execute and provide our client with written undertaking to the effect that
you will not in future directly or indirectly appropriate/use any impugned
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trademark or any other proprietary content content/material/images/artistic works
of our client in any capacity whatsoever in relation to Medical products or in any
class whatsoever, anywhere in India by way of any medium including the internet
and will not attempt to secure any rights therein by way of trademark, copyright,
domain name, trade name or company name registrations or in any other manner.

34. Please note that if you fail to comply with the aforesaid requisitions within a time
period of 15 days from the receipt of this legal notice our Client will be
constrained to initiate appropriate civil and criminal proceedings against you,
without any further notice, which shall be at your own risk as to the costs and
consequences thereof

For Gufic Biosciences Limited