Delhi High Court
Kei Industries Limited vs Mr. Raman Kwatra & Anr. on 17 May, 2022
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 14th December, 2021
Pronounced on: 17th May, 2022
+ CS(COMM) 9/2021 & I.A. 287/2021, IA. 290/2021,
I.A.287/2021, I.A.290/2021, I.A.15933/2021, I.A.15934/2021
KEI INDUSTRIES LIMITED ..... Plaintiff
Through: Mr. Chander M Lall, Sr. Adv.
with Mr. Pallav Plait, Ms. Ananya Chug &
Ms. Shreya Bhojnagarwala, Advs.
versus
MR. RAMAN KWATRA & ANR. ..... Respondents
Through: Mr. D.K. Yadav and Ms.
Kusum Kumari, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
J U D G M E NT
% 17.05.2022
I.A.287/2021 (under Order XXXIX Rules 1 and 2 of the CPC)
1. KEI Industries Ltd, the plaintiff, alleges infringement, by the
defendants, of its registered trademark "KEI", of which it has
registration both as a word mark and as the device mark.
Accordingly, the plaint seeks a decree of permanent injunction,
restraining the defendants from infringing the plaintiff's registered
trademarks either physically or via online platforms, along with other
prayers for rendition of accounts, delivery up and declaration.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 1 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
2. With the plaint, the plaintiff has filed an application, under
Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908
(CPC), seeking interlocutory injunctive reliefs. Learned Counsel for
both sides have been heard at length on this application, which the
present order disposes of.
Facts
3. The dispute, in the present case, is not so much one of whether
the mark used by the defendants does, or does not, infringe the
plaintiffs registered marks, but whether the defendants are entitled to
use the said mark. Given the nature of the controversy, it would be
appropriate to proceed by setting out the rival stands of both sides, as
they emerge from the pleadings.
Case set up by the plaintiff in the plaint
4. According to the plaintiff, it was initially functioning as
Krishna Electrical Industries, a partnership firm, which was
subsequently incorporated into the plaintiff-public limited Company
on 31st December, 1992. It claims to have been using the
trademark/trade name/corporate name 'KEI' since the commencement
of its business in 1968, and that the word mark 'KEI' was first
registered in favour of the plaintiff in Class 9 for Wires and Cables
(Electric and Telecommunication) on 27th September, 1988.
Thereafter, the said word Mark 'KEI' was registered, in favour of the
plaintiff, in Classes 6 , 16, 35, 37 and 42.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 2 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
5. The plaintiff claims to have conceptualised, designed and
adopted the logo mark " " in 2007, with respect to its goods
and services, since which time the plaintiff claims to have been using
the said logo extensively, exclusively and continuously. Registrations
for the said Device Mark are held, by the plaintiff, in
Classes 6 and 9, w.e.f. 14th June, 2007 and 29th June, 2007,
respectively, as well as in Classes 16, 35, 37 and 42. Among the
goods in respect of which the plaintiffs word and device marks are
registered are wires and cables and electrical items.
6. Though the plaint provides a tabular depiction of all
registrations held by the plaintiff, it may not be necessary, for the
purposes of the present order, to make exhaustive reference thereto.
Equally, the recitals, in the plaint, regarding the reputation that the
plaintiff claims to have amassed over the years, and the various
encomiums earned by it, relating to the use of the aforesaid marks, are
also not of particular significance. Suffice it to state that the plaintiff
avers that, by dint of long and extensive usage, the 'KEI' mark has
acquired considerable goodwill and reputation.
7. Around September 2017, avers the plaint, the plaintiff, during a
routine check of the online records of the Registry of Trade Marks,
noticed that the defendant had applied for registration of the
" " Mark under Classes 7, 11 and 35. In view of the fact that
the defendants, as per their application, were engaged in manufacture
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 3 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
and sale of, inter alia, electrical goods, the plaintiff, in an attempt to
assert its exclusive rights over the 'KEI' mark, addressed a cease and
desist notice, dated 31st October, 2017, to the defendants, calling upon
the defendants to cease and desist from using the Mark 'KEI' and to
withdraw the applications filed by them with the Trade Marks
Registry, for registration of the said marks. The defendants responded
to the legal notice, to which the plaintiff rejoined on 31st October,
2017. Oppositions were also filed, by the plaintiff, before the
Registry of Trade Marks, against the applications for registration filed
by the defendants.
8. The defendants having failed to discontinue usage of the
allegedly infringing mark, the plaintiff has filed the present
suit, seeking injunction as noticed here in before. The plaintiff alleges
that, as the trademark 'KEI' has, with the passage of time, become a
source identifier of the goods and businesses of the plaintiff, and as
'KEI' is the most prominent, essential and striking part of the
defendants' mark, it was inevitable that a person who came
across the defendants mark would be immediately deceived and
confused, and misled into believing that the defendants' goods
emerged from the plaintiff's stable. This possibility of deception,
asserts the plaint, is exacerbated by the fact that the defendants are
also using the impugned mark in connection with electrical goods.
The plaintiff alleges that the defendants are clearly trying to illegally
capitalise on the goodwill and reputation earned by the plaintiff, and
its mark. This, it is further alleged, has also diluted the goodwill and
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 4 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
reputation of the plaintiff's marks. For all these reasons, the plaintiff
seeks reliefs as noted hereinbefore.
Case of defendants in written statement
9. In their written statement, the defendants have stated that trade
and business, in the name and style of Kwality Electrico (India) was
commenced, by Om Prakash Kwatra ("OPK", hereinafter), the father
of Defendant 1 Raman Kwatra, in 1966, under the trademark/label
" ", in relation to electrical goods such as electric fans, room
coolers, geysers, electric heating apparatus, electric rods, and the like.
It is averred that Kwality Electrico (India) was registered, on 1 st
September, 1966, as a sole proprietorship of OPK. Thereafter, two
partnership deeds came to be executed, the first on 1st April, 1998 and
the second on 1st April, 2001. Though the former partnership deed,
dated 1st April 1988, is not on record, the latter partnership deed dated
1st April 2001 makes reference to the former. The partnership deed
dated 1st April, 2001, states that OPK, Rakesh Kwatra and Defendant
1 Raman Kwatra executed a partnership deed on 1st April, 1998, to
work as a partnership under the name and style of Kwality Electrico
(India), and that the second partnership deed, dated 1st April, 2001,
was only executed to modify the terms of remuneration of the
partners. Later, by a Dissolution Deed dated 31 st March, 2004, the
aforesaid partnership Kwality Electrico (India) was dissolved, as
Rakesh Kwatra did not desire to continue as a partner. The
Dissolution Deed also records the intent of OPK and Raman Kwatra
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 5 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
to continue the business, after taking over all assets and liabilities of
Kwality Electrico (India). To formalise this intention, a third
partnership deed was executed between OPK and Raman Kwatra on
17th April, 2004, in which the intent of OPK and Raman Kwatra to
continue the business under the same name and style of Kwality
Electrico (India), was again reiterated, with the partnership coming
into effect on 1st April, 2004, i.e. immediately consequent to the
dissolution deed dated 31st March 2004 becoming operative. This
third partnership deed dated 17th April, 2004 recorded that the
partnership would be dealing in the business of electrical goods and
appliances, kitchenware, etc., and that OPK and Raman Kwatra would
have shares in the business in the ratio of 60:40. All assets and
liabilities of the erstwhile partnership, comprising OPK, Rakesh
Kwatra and the Raman Kwatra were taken over by this firm.
10. On 25th May, 2009, an Indemnity Bond was executed by
Defendant 1 Raman Kwatra in favour of DSIDC Ltd. The Indemnity
Bond noted that an industrial plot bearing No. 123, Pocket M, Sector
3, Bawana Industrial Complex, Delhi, had been leased out by DSIDC,
vide letter dated 23rd October, 2000, to OPK, and manifested the right
and wish of OPK to transfer the said plot and constitution of the firm
to Raman Kwatra, out of natural love and affection. The relevant
covenants, effecting this transfer, in the Indemnity Bond, read thus:
"AND WHEREAS the transferor wishes to transfer the above
said plot and Constitution of the said firm to the transferee,
Sh. Raman Kwatra son of Sh. Om Prakash Kwatra R/o 87,
Tagore Park, K he-110009 who shall be sole Proprietor of the
said firm (hereinafter called the transferee) who is son of the
transferor out of natural love and affection after having
obtained necessary permission of the Competent Authority.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 6 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
AND WHEREAS the lessee/transferor has applied to the
lessor under the terms of lease for grant of permission to
transfer of leasehold rights in the plot and for the change of
Constitution of the said firm to the transferee;
AND WHEREAS the aforesaid transferee has agreed to
accept transfer of leasehold rights in the said plot and
Constitution of the said firm;
AND WHEREAS the lessee has applied to the lessor under
the terms of lease to transfer of leasehold rights in favour of
the transferee on the same terms and conditions as contained
in the lease deed.
AND WHEREAS on the face of a representation made by the
transferee, the lessor has agreed to give consent for the lessee
for transfer of his leasehold rights if the transferee furnishes
indemnity bond to the lessor or indemnify and the lessor
against all losses or damages that it may sustain on account of
giving consent for the said transfer.
Therefore, in consideration of the aforesaid agreement, the
said Sh. Raman Kwatra son of Sh. Om Prakash Kwatra, R/o
87, Tagore Park, Delhi-110009 and his heirs, successors,
executed as and administrators jointly and severally undertake
to keep the lessor harmless and indemnify against all losses or
damages whatsoever that may be sustained by or any claim,
litigation is, proceedings etc. that may be taken out against it,
or in respect thereof, whatsoever arising out of the transfer of
leasehold rights in the plot and for the change of Constitution
of the said firm in favour of the transferee."
11. Simultaneously, on 25th May, 2009, OPK issued a Consent
Letter in favour of Defendant 1 Raman Kwatra, formalising his
consent to change of the constitution of the firm Kwality Electrico
(India), from a partnership of OPK and Raman Kwatra into a sole
proprietorship of Raman Kwatra.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 7 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
12. The DSIDC wrote to Kwality Electrico (India) on 24th
November, 2009, acknowledging the change in constitution of the
partnership firm Kwality Electrico (India) into a sole proprietorship of
Defendant 1 Raman Kwatra.
13. Registrations of the mark: OPK applied, on 4th April, 1997, for
registration of the " " mark in Classes 9 (for Electrical iron,
electric kettle, electric rods, testers and electrical accessories and
appliances included in Class 9 and parts thereof) and 11 (for electric
fans, room coolers and geysers, electric heating apparatus and parts
thereof). It is admitted, by Defendant 1 Raman Kwatra, in his reply to
IA 287/2021 (which is being decided by the present order), that,
before his demise, OPK "granted his son Rajiv Kwatra permission to
use the brand 'KWALITY'" on the basis of which permission Rajiv
Kwatra, trading as Orsons Home Appliances, obtained registrations,
of the " " mark, in Class 9 on 23rd April, 2005, claiming user
since 30th October, 1966 and in Class 11 on 2nd March, 2007, claiming
user since 10th October, 1966. Both were device marks, and the
registrations contain disclaimers for the words 'Kwality.' and 'India'.
14. Use of impugned mark by Defendant 1 Raman
Kwatra: The written statement of Defendant 1 Raman Kwatra states
that, consequent to the conversion, by OPK, of the erstwhile
partnership of OPK and Raman Kwatra into a proprietorship of
Raman Kwatra, he, i.e. Raman Kwatra obtained TIN No.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 8 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
07710360485 and continued the business of the erstwhile partnership
firm under the trademark 'KEI'. It is further asserted, in the written
statement, that, in 2008, Defendant 1 conceived the impugned
mark, which he has been using since then. The written
statement also asserts that the abbreviated 'KEI', in the format in
which it finds place in the impugned mark, was in use since
1966, through OPK.
15. On 11th May, 2016, the defendants filed applications under
Classes 7 and 11 with the Trade Marks Registry, seeking registration
of the impugned Mark in respect of electric motor pumps,
juicer, mixer, grinders, cooler pumps, fans, exhaust fans, air
conditioners, toaster, geysers, electric oven, electric kettles, electric
iron, electric voltage regulators and similar goods. As they have been
opposed, registrations have not been granted.
16. Nonetheless, the written statement avers that the defendants
trace their right to use the 'KEI' mark back to 1966, when its use was
commenced by OPK. As such, the defendants claim priority of user,
over the plaintiff, of the 'KEI' mark.
Rival Contentions
17. Arguing for the plaintiff, Mr. Chander M. Lall, learned Senior
Counsel submitted that, by using the impugned mark in which the
letters 'KEI' forms the dominant part, the defendants are clearly
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 9 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
infringed the plaintiffs registered word mark 'KEI' as well as the
device mark . He contests the stand of the defendants that
Defendant 1 Raman Kwatra inherited, from OPK, the right to use the
'KEI' mark. There is no line of succession, points out Mr. Lal, to be
found in the written statement of the defendants, on the basis whereof
it could be said that the defendants succeeded to the rights to use the
'KEI' mark or the device mark " " which was originally being
used by OPK since 1966. That being the position, Mr. Lall submits
that the coinage and adoption, by Defendant 1 Raman Kwatra of the
impugned Mark is of 2008 vintage, so that the plaintiff has
priority of user.
18. Mr Lall submits that, by virtue of the Indemnity Bond and
Consent Letter dated 25th May, 2009 and the DSIDC letter dated 24th
November, 2009, it was the erstwhile firm, of which OPK and
Defendant 1 Raman Kwatra were partners, which was converted into
a sole proprietorship of Raman Kwatra. As such, Mr. Lall submits
that Raman Kwatra succeeded only to the firm, which was converted
into a sole proprietorship in his name. Insofar as the right to use the
" " mark was concerned, Mr. Lall points out that there is a
candid acknowledgement, in the written statement of Defendant 1, as
well as in the reply of Defendant 1 to the present application, that the
right to use the 'KWALITY' mark was granted, by OPK, to Rajiv
Kwatra and that, on the basis of the said right, Rajiv Kwatra had
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 10 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
applied for, and obtained, registration of the Mark in
Classes 9 and 11. There was no claim, by the defendants, of any user
of the impugned Mark, any time prior to 2008.
19. Even in the response, dated 27th November, 2017, to the cease
and desist notice dated 31st October, 2017, from the plaintiff, Mr. Lall
points out that there is no reference to the earlier logo which
had been used by OPK since 1966. Nor does the said response even
referred to any acquisition of the right to use the 'KEI' mark, by the
defendants, from OPK.
20. Adverting to the invoices of April, 2010 and later, placed on
record by the defendants to substantiate their claim of prior user, Mr.
Lall points out that the letters 'KEI' have been entered, by hand,
against each item in the invoice, so as to make it appear that the goods
were bearing the 'KEI' brand. Invoices, on watermarked paper with
the ' ' logo as the watermark, he points out, only dates from
May 2015.
21. Apropos an assertion, contained in the reply to the objection
placed by the Trade Mark Registry in its Examination Report in
response to the application No 3693720, submitted by the plaintiff for
registration of the word Mark 'KEI', that, with respect to the
defendants' mark, the plaintiff's Mark was "distinctive of the services
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 11 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
of" the plaintiff and, in view of the difference between the services of
the plaintiff and of the defendants, "there is not any likelihood of
confusion", Mr. Lall submits that this assertion could not amount to
an acknowledgement that the use of the impugned Mark,
by the defendants, would not result in the section or confusion. He
also points out that, in the very next paragraph of its response, the
plaintiff had clearly stated that it was contemplating considering
appropriate legal remedies to protect his lawful rights and interests
over the use of its proprietary and well-known Mark 'KEI'. Mr. Lall
has also placed reliance on the judgement of a coordinate Single
Bench of this Court in Teleecare Networks India Pvt Ltd v. Asus
Technology Pvt Ltd1 to contend that assertions in submissions made
to the Trade Marks Registry, in order to obtain registration, are not
relevant while examining the aspect of infringement.
22. Responding to Mr. Lall's submissions, Mr. D.K. Yadav,
learned Counsel for the defendants drew my attention to the manner in
which the mark was originally used by OPK since 1966 as
well as the line of succession, under which three partnership deeds,
and one dissolution deed came to be executed resulting, in his
submission, in the defendants succeeding to the right to use the 'KEI'
mark. Mr. Yadav has also invoked Section 29(4)(c)2 of the Trade
1 262 (2019) DLT 101
2 29. Infringement of registered trade marks.--
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which--
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 12 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
Marks Act, 1999, to contend that the plaintiff does not satisfy the
ingredients of the said clause, which would be necessary for the
plaintiff to be able to make out a case of infringement. Mr. Yadav has
also sought protection under Section 123 of the Trade Marks Act,
pleading honest and concurrent user of the impugned Mark, as his
father OPK had been using the impugned Mark since 1966, and he
was using the mark independently since 2008. he submits that the
impugned Mark, used by his client, was different from the mark to
which Rajiv Kwatra succeeded. Mr. Yadav places reliance, in this
context, on the judgement of a learned Single Judge of this Court in
Mittal Electronics v. Sujata Home Appliances (P) Ltd4.
23. Referring to the tabular representation of the registration is held
by the plaintiff, as contained in the plaint, Mr. Yadav submits that the
plaintiff's registration is only in Class 9 for wires and cables and that
it has not succeeded in obtaining registration under Class 11, whereas
the defendant is manufacturing electrical appliances, which fall under
Classes 7 and 11, under the impugned mark. As such, contends Mr.
Yadav, Section 29(2) of the Trade Marks Act would not apply, and,
insofar as Section 29(4) of the Trade Marks Act is concerned, the
plaintiff has failed to establish satisfaction of the ingredients of clause
(c) of the sub- Section. Mr. Yadav submits that the suppression, by
(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark.
3 12. Registration in the case of honest concurrent use, etc.--In the case of honest concurrent use or
of other special circumstances which in the opinion of the Registrar, make it proper so to do, he
may permit the registration by more than one proprietor of the trade marks which are identical or
similar (whether any such trade mark is already registered or not) in respect of the same or similar
goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to
impose.
4 2020 (83) PTC 358 (Del)
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 13 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
the plaintiff, of the fact that its application seeking registration of its
mark under Class 11 was refused by the Trade Marks Registry,
disentitles the plaintiff to any injunction, for which purpose he relies
on the judgements of this Court in Living Media India Ltd. v. Alpha
Dealcom Pvt Ltd5, Poly Medicure Ltd v. Polybond India Pvt Ltd6,
Keller Williuuams Realty IMC v. Dingle Buildcons Pvt Ltd7, Shri
Gopal Engineering & Chemical Works v. POMX Laboratory8 and
Teleecare Network1.
24. Arguing in rejoinder, Mr. Lall submits that the defendants have
clearly admitted having adopted the impugned logo only in
2008, whereas the plaintiff's adoption is of 1968. He refers, in this
context, to the sales figures provided in para 8 of the plaint, and points
out that, even in 2008, the sales of products using his client's mark
were to the tune of ₹ 1055 crores. Clearly, therefore, submits Mr.
Lall, the user, by the defendants, of the impugned mark, is subsequent
in point of time to the user by the plaintiff of its registered mark.
25. Mr. Bhalla reiterates his submission that Defendant 1 Raman
Kwatra did not succeed to the user of the or 'KEI' mark,
from OPK or otherwise. He cannot, therefore, plead honest and
concurrent user, especially as the right to use the mark,
5 208 (2014) DLT 145 : 2014 (58) PTC 589 (Del)
6 MANU/DE/3395/2019
7 MANU/DE/0951/2020
8 47 (1992) DLT 480
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 14 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
which was earlier being used by OPK, had specifically been assigned
by OPK to Rajiv Kwatra. As Rajiv Kwatra was using the said mark in
the same business as Defendant 1 Raman Kwatra, Mr. Lall submits
that Defendant 1 cannot seek shelter under Section 12 of the Trade
Marks Act. Even otherwise, submits Mr. Lall, Section 12 is a
provision which applies only to registration and not to use. Referring
to the registrations held by his client, Mr. Lall submits that they
extended to the areas covered by the products of the defendants, as
they cover "all kinds of electrical and electronic instruments".
Referring to the judgement of the Supreme Court in Vishnudas
Trading v. Vazir Sultan Tobacco Co. Ltd9, included by the
defendants in their list of judgements, Mr. Lall points out that, in the
said decision, the Supreme Court held that the registration granted for
tobacco would cover cigarettes as well, though it did opine that the
registrant ought to have got the mark rectified to lessen its sweep. He
points out that the defendants have not applied to the Trade Marks
Registry for rectification of the plaintiff's registered trademark. Nor
have they pleaded, in their written statement, that the plaintiff
registered trade marks are unduly wide.
26. Adverting once again to the defendant's reliance on the
statement, in the response of the plaintiff to the objections raised by
the Trade Marks Registry to the plaintiff's application for registration,
to the effect that the marks of the plaintiff and the defendant were
completely different and dissimilar, Mr. Lall submits that the plea of
absence of likelihood of confusion had been made with respect to the
9 (1997) 4 SCC 201
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 15 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
plaintiff's application for registration, and did not amount to an
acknowledgement to the effect that the defendant's mark would not
result in confusion with the plaintiffs, or to an acquiescence, by the
plaintiff, not to proceed against the defendants. No estoppel could,
therefore, he submits, be pleaded by the defendants against the
plaintiff on account of the said statement. The principle of approbate
and reprobate would not, in such circumstances, apply, submits the
Lall.
27. Apropos the plea of delay pleaded by the respondent, in the
plaintiff seeking legal redress, Mr. Lall, apart from citing the well-
known judgement of the Supreme Court in Midas Hygiene v. Sudhir
Bhatia10, also submits, on facts, that there was, in fact, no delay, as
the earliest invoice filed by the defendant was of 11 th April, 2015,
whereas the cease and desist notice had been served by the plaintiff on
the defendants on 31st October, 2017. Relying on the judgement of a
Division Bench of this Court in Pankaj Goel v. Dabur India Ltd11,
Mr. Lall submits that there was no compulsion, in law, on the
plaintiff, to sue the defendants, till the defendants' business became
substantial. For this reason, the plaintiff waited till the defendant
obtained registration, to file the present suit. He has also relied, in this
context, on the judgements of a learned Single Judge of this Court in
Amar Singh Chawalwala v. Rajdhani Roller Flour Mills Pvt Ltd12.
Additionally, on the aspect of infringement, Mr. Lall has cited the
judgements of Division Benches of this Court in L & T Ltd v. Lachmi
10 2004 (28) PTC 121 (SC) : (2004) 3 SCC 90
11 2008 (38) PTC 49 (Del)
12 1990 (10) PTC 220 (Del)
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 16 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
Narain Trades13 and Marico Ltd v. Agro Tech Foods Ltd14, as also
the Single Bench decisions in Shree Rajmoti Industries v. Shri
Vishwaprabha Food Products Pvt Ltd15, Honda Giken Kogyo
Kabushiki Kaisha v. Rakesh Bhray16, Baker Hughes Ltd v. Hiroo
Kushalani17.
28. Relying on Section 124 of the Trade Marks Act, Mr. Lao
submits that there is no proscription to suing, for infringement, the
proprietor of the trade mark, so long as the plaintiff had opposed the
registration before the Trade Marks Registry. Mr. Lall has also
invited my attention to earlier orders passed by this Court, in which
the plaintiffs registered marks had been protected by interlocutory
injunctions.
Analysis
29. This is, essentially, a Tale of Four Trademarks, of which three
are registered and one (the impugned mark) is unregistered. The
plaintiff is the proprietor of the registered word mark "KEI" registered
under Class 9 of the Schedule to the Trademarks Rules, 2002 on 27th
September, 1988, in respect of wires and cables (electric and
telecommunication) and of the device mark registered on
14th June, 2007 under Class 6 in respect of stainless steel wires and
on 29th June, 2007 under Class 9 in respect of electrical wires and
13 149 (2008) DLT 46 : 2008 (36) PTC 223 (Del)
14 174 (2010) DLT 279 (DB)
15 2018 SCC OnLine Del 11595
16 143 (2007) DLT 564
17 74 (1998) DLT 715
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 17 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
cables, electrical switchgear and other kinds of electrical and
electronic instruments.
30. The third mark, figuring in the present proceedings is the
mark, registered in favour of Rajiv Kwatra, the son of Sh.
Om Prakash Kawtra and elder brother of Defendant 1, on 23rd April,
2005, under Class 9 in respect of "electrical fan, electric kettle,
electric rods, testers and electrical accessories and appliances
including in class-9" and on 2nd March, 2007 under Class 11 in respect
of "electric fans, room-coolers & geysers electric-heating apparatus &
parts of the foresaid including in class-11". This mark is, therefore, a
device mark, as is apparent even from the trade marks application
status on the website of the Registry of Trademarks. It is also
important to note that the mark has been referred to as "KWALITY
(DEVICE)". Thus, the "KWALITY mark" refers to , which
is a device mark.
31. The fourth mark, which is the impugned mark and which is
unregistered, is , of which the defendants have sought, but have
been unable to obtain, registration, Admittedly, this mark is being
used by the defendants in respect of electric fans, electrical water
heaters etc. Photographs of packages reflecting the use of the
impugned mark in respect to ceiling fans and immersion water heaters
have also been filed in the pleadings, in para 32 of the pleadings.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 18 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
Defendants did not succeed to the use of the 'KEI' mark
32. It is admitted, in the written statement filed by defendant in
response to the present suit, as under:
"Mr. Rajiv Kwatra, brother of defendant no.1 started the
business under the brand "KWALITY as late Om Prakash
Kwatra before his holy demise, granted his son Rajiv Kwatra
permission to use the brand 'KWALITY'. Mr. Rajiv Kwatra
also got the trademark/label registered in classes 9 & 11 in
his name".
(Emphasis supplied)
The documents under which the right to use the "KWALITY" mark
was granted by OPK to Rajiv Kwatra is not forthcoming on the
record. Nonetheless, it is admitted, in the afore-extracted passage from
the written statement of the defendants in the present suit, that the
right to use the "KWALITY" brand was granted, prior to his demise,
by OPK to Rajiv Kwatra and that it was on that basis that Rajiv
Kwatra applied and obtained the registration for the mark
under Classes 9 and 11 on 23rd April, 2005 and 2nd March, 2007
respectively. In each of the said certificates, the mark is referred to as
the "KWALITY (DEVICE)" mark.
33. Clearly, therefore, the Defendant 1 was conscious of the fact
that, though under the indemnity bond and consent letters dated 25 th
May, 2009 supra, the erstwhile partnership, in the names of OPK and
Defendant 1 had been converted into a proprietorship of Defendant 1,
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 19 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
the right to use the mark had been specifically bequeathed by
OPK to Rajiv Kwatra. Defendant 1 has not disputed the legitimacy of
the registrations obtained by Rajiv Kwatra in respect of the said
mark under Classes 9 and 11 on 23rd April, 2005 and 2nd
March, 2007. As such, prima facie, Defendant 1 has conceded that the
right to use the mark vested, by virtue of the bequest by
OPK, entirely in his elder brother Rajiv Kwatra, and that he had no
right to use the said mark. In view thereof, it is not open to Defendant
1 to plead that he had succeeded to the right to use the mark
from OPK. Despite the line of succession by which the initial
proprietorship of OPK was converted into a partnership of OPK,
Rakesh Kwatra and Defendant 1, thereafter, into a partnership of OPK
and Defendant 1 and, thereafter, into a proprietorship of Defendant 1,
the right to use the mark was specifically vested by OPK,
after his demise, in Rajiv Kwatra and, in respect of the said mark,
Rajiv Kwatra obtained registrations under Classes 9 and 11, the
validity of which has not been sought to be called into question by the
defendants.
34. The Defendant 1 claims, in his written statement, to have
coined and devised the impugned mark in 2008. The defendants
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 20 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
had applied for registration of the aforesaid mark in Classes 9 and 11,
but have not succeed in obtaining registration, in view of the
opposition by the plaintiff thereto.
35. When one compares the impugned mark with the
mark which was being used by OPK and to the use of which Rajiv
Kwatra succeeded, it is apparent that the letters "KEI" have been
copied by Defendant 1 in exactely the same lettering, font and style in
which they find place in the mark , which was validly
reigstered in favour of Rajiv Kwatra.
36. Prima facie, Defendant 1 had no right to use the said mark
which, in respect of its dominant part, was identical to the
, the right to use in respect of which had been specifically
assigned by OPK to Rajiv Kwatra and which stood validly registered
by Rajiv Kwatra.
Deceptive similarity and infringement
37. Approaching, now, the aspect of deceptive similarity, Mr. D.K.
Yadav, learned Counsel for the defendants, had sought to contend that
the plaintiff was not entitled to relief as the plaintiff had failed to
establish the existence of the ingredients of Section 29(4)(c) of the
Trademarks Act. This submission, in my prima facie opinion, is bereft
of merit.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 21 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
38. Section 29(4) does not come in for application in the present
case at all, inasmuch as it relates to cases in which the allegedly
infringing mark is used in relation to goods or services which are not
similar to those for which the trademark is registered. In the present
case, the goods in respect of which the defendants are using the
impugned are, prima facie, similar to the goods in respect of
which the plaintiff's "KEI" word mark and device mark are
registered, as the registration held by the plaintiff covers, apart from
the specific items referred to in the registeration, also "other kinds of
elecrical and electronic instruemnts". If one were to construe the
expression "other kinds of electrical and electronic instruments"
ejusdem generis to the words which precede the said expression in
registration certificates issued to the plaintiff, the electrical and
electronic instruments which would be covered by the said expression
would be analogous to electrical wires and cables, electrical switch
gears, control panels, circuit breakers, transformers, amplifiers,
switches and fuses of all kinds.
39. In my prima facie opinion, electrical fans, geysers and water
immersion rods, in respect of which defendants are using the
impugned are allied and similar to the goods in respect of which
the plaintiff's word mark and device mark are registered. They,
therefore, fall within the ambit of the expression "other kinds of
electrical and electronic instruments" as contained in the registration
granted to the plaintiff of its 'KEI' word mark and device
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 22 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
mark, and are, even otherwise, "similar goods" within the meaning of
Section 29(2) of the Trademarks Act.
40. Insofar as similarity between and the plaintiff's registered
marks are concerned, the aspect of infringement is self apparent. The
plaintiff holds a valid and subsisting word mark registration for the
word 'KEI', in respect of electric wires and cables. Any use, by any
other party, of the acronym 'KEI', in respect of identical or similar
goods would amount to infringement. The use, by the defendants, of
the impugned mark, in respect of electric fans, electric water
heaters, immersion water heaters etc. is, therefore, prima facie
infringing of the plaintiff's registered work mark 'KEI' word mark
and device mark, within the meaning of Section 29(2) of the
Trademarks Act.
41. I also find substance in the contention of Mr. Lall that, in
removing, from the impugned mark, the reference to "Kwality
Electrico India", which figured in the earlier mark being used
by OPK and registered in favour of Mr.Rajiv Kwatra, the defendants
have removed the main feature by which a customer could know that
the mark related to "Kwality Electrico (India)" and not to the plaintiff.
42. As things stand, the impugned defendants' mark is merely
'KEI' depicted in a particular style. There is no other textual material,
in the mark, apart from the letters 'KEI'. The mark is used in respect
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 23 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
of electical goods, while the planitiff's word mark 'KEI' and device
mark are also registered in respect of electrical goods and
instruments. There is, therefore, clear prima facie infringement, by
the defendants, by use of the impugned mark, of the plaintiff's
registered word. 'KEI' mark and device mark.
43. The defendants, admittedly, coined the impugned mark only in
2008. The plaintiff's word mark registration dates back to 27th
September, 1988 and its device mark registrations to 14th and 29th
June, 2007. The plaintiff, therefore, has priority of registration, vis-à-
vis the defendants. The planitiff has claimed user since 1966, which
has been accepted by the Registry of Trade Mark while granting
registration to the plaintiff. The earliest invoices of the defendants, as
Mr. Lall, has correctly points out are of the year 2015. The plaintiff
has, therefore, not only priority of registration but also priority of user
vis-à-vis the defendants.
44. A clear prima facie case of infringement, by the defendants, by
their use of the mark, of the plaintiff's registered word and
device marks, is, therefore, made out.
Defendant's defence of honest and concurrent user
45. Prima facie, in my view, Defendant 1 cannot, therefore, plead
that he was using the said mark in an honest and concurrent fashion.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 24 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
The availability, to Defendant 1, of the benefit of Section 12 of the
Trademarks Act is, therefore, prima facie questionable.
46. Even otherwise, as Mr. Lall has pointed out, Section 12 is
essentially a provision which enables the Registrar to permit
registration of a mark which is identical or similar to an existing mark
in respect of same or similar goods. It does not envisage honest and
concurrent user as a defence to an allegation of infringement of a
registered trade mark. One may refer with advantage, in this context,
to the judgement of the Supreme Court in Power Control Appliances
v. Sumeet Machines18 , which dealt with an allegation of infringement
under the Copyright Act, 1957. Honest and concurrent user was
pleaded as a defence to the charge of infringement, for which purpose
reliance was placed on the Trade and Merchandise Marks Act, 1958
("the 1958 Act"). There was no provision dealing with honest and
concurrent user in the Copyright Act. The Supreme Court, while
rejecting the plea of the defendant, in para 42 of the report in the said
case, held thus:
"The High Court had failed to note the plea of honest and
concurrent user as stated in Section 12(3) of 1958 Act for
securing the concurrent registration is not a valid defence for
the infringement of copyright."
No doubt, in that case, the Supreme Court was dealing with a
somewhat unusual defence of honest and concurrent user, predicated
on Section 12 of the 1958 Act as a defence to an allegation of
copyright infringement, under the Copyright Act. Nonetheless, the
afore-extracted findings of the Supreme Court are also, in my
18 (1994) 2 SCC 448
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 25 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
considered opinion, an authority for the proposition that a provision
which permits grant of concurrent registrations of identical or similar
trade marks, if the use of the latter mark is honest and concurrent,
cannot be used as a defence to a charge of infringement. To that
extent, the position, as it obtained in the 1958 Act, vis-à-vis the
Copyright Act, is identical to the position which obtains in the present
Trade Marks Act, 1999. The Trade Marks Act, too, envisages honest
and concurrent user only as a ground on which concurrent
registrations of similar or identical marks could be granted by the
Registry of Trade Marks. There is no provision, in the Trade Marks
Act, which contemplates honest and concurrent user as a defence to a
charge of infringement of trade mark. Where a case of infringement
is made out, therefore, injunction has necessarily to follow, and it is
no defence to the defendant to urge that the user, by the defendant, of
the allegedly infringing mark, was honest and concurrent. \
47. Section 28(1) of the Trade Marks Act is clear and categorical in
this regard. It states that "the registration of trademark shall, if valid,
give to the registered proprietor of the trademark the exclusive right to
the use of the trademark in relation to the goods or services in respect
of which the trademark is registered and to obtain relief in respect of
infringement of the trademark in the manner provided by this Act".
The manner in which relief, in respect of infringement of a registered
trademark, can be obtained under the Trade Marks Act, is to be found
in Section 135 thereof, sub-sections (1) and (2) of which read thus:
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 26 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
"135. Relief in suits for infringement or for passing off. -
(1) The relief which a court may grant in any suit
for infringement or for passing off referred to in
Section 134 includes injunction (subject to such terms,
if any, as the court thinks fit) and at the option of the
plaintiff, either damages or an account of profits,
together with or without any order for the delivery-up
of the infringing labels and marks for destruction or
erasure.
(2) The order of injunction under sub-section (1)
may include and ex parte injunction or any
interlocutory order for any of the following matters,
namely: -
(a) for discovery of documents;
(b) preserving of infringing goods,
documents or other evidence which are related
to the subject-matter of the suit;
(c) restraining the defendant from disposing
of or dealing with his assets in a manner which
may adversely affect plaintiff's ability to
recover damages, costs or other pecuniary
remedies which may be finally awarded to the
plaintiff."
Though, for reasons which are not immediately clear, Section 135,
though titled "Relief in suits for infringement or for passing off", does
not explicitly set out the reliefs to which the proprietor of a trademark,
which has been infringed by another, is entitled (as envisaged by
Section 28 (1)), but, rather, sets out the reliefs which a Court may
grant, in a suit for infringement or passing off. A meaningful
interpretation of Section 135, read in conjunction with Section 28,
would, however, in my view, necessarily require Section 135 to be
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 27 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
read as setting out the "reliefs in respect of infringement of a
registered trade mark", within the meaning of Section 28 (1).
48. Read thus, honest and concurrent user by the defendant, of the
infringing trade mark, even if it exists, is not statutorily envisaged as a
ground on which the plaintiff, whose marks has been infringed, can be
denied an injunction, to which Section 135(1), read with Section
28(1), guarantees the plaintiff. There is, therefore, prima facie
substance in the contention of Mr. Lall that it is not open to the
defendants to plead, as a defence to infringement of the plaintiff's
registered trademarks, honest and concurrent user.
Plaintiff's averment in its reply to the objection of the Registry of
Trade Marks and its import
49. In view of the aforesaid prima facie findings arrived at by this
Court on a comparison of marks, no substantial benefit could accrue
to the defendants from the plaintiff's statement, in its reply to the
objection raised by the Registry of Trade Marks in response to the
plaintiff's application for registration of its mark, to the effect that the
defendants' mark was not deceptively similar to that of the plaintiff.
Even otherwise, on this issue, the coordinate Single Bench has, in its
judgment in Teleecare Networks India Pvt Ltd1, held thus:
"41. Once a mark is registered, the certificate of registration
has to be seen as it is. Post grant of registration of the mark
ZEN, neither the Examination Report dated 01st May, 2010
nor the plaintiff's reply are relevant documents. In H&M
Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd.19, it has
been held as under:--
19 (2018) 251 DLT 651
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 28 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
15. The plea of the defendants, of the plaintiffs, at
the time of seeking registration and when confronted
with 'HMT', 'HMV', 'HMW', 'H.M. Tex Kamal' and
'H.M.C.', having taken a stand that the mark has to be
considered in entirety, may be considered at this stage.
The question to be adjudicated is, whether the
plaintiffs, having taken such a stand, is estopped from
suing for infringement. The question, in my opinion,
cannot be answered in abstract and has to be answered
on facts. None of the businesses, marks whereof as
aforesaid the plaintiffs were confronted with, were in
any business even remotely connected to business of
the plaintiffs. In fact the marks HMT & HMV were
abbreviations of their earlier namesHindustan Machine
Tools and His Masters Voice respectively and which
businesses, over the years had come to be referred by
their abbreviation. Merely because the plaintiffs at the
stage of seeking registration took a stand as aforesaid,
cannot stop the plaintiff from exercising its statutory
and natural rights. There is no estoppels against
statute."
42. In any event, as there is no estoppel against statute, the
stand taken by plaintiff in reply to the examination report is
not relevant."
50. As, on facts, I have found there to be a prima facie case of
infringement, by the defendants, of the plaintiff's registered trade
marks, I do not deem it necessary to burden this judgement with a
discussion of all the judgements cited at the Bar, many of which are,
in any event, merely interlocutory orders, which cannot be said to be
of binding precedential authority.
Signature Not Verified
Digitally Signed CS(COMM) 9/2021 Page 29 of 30
By:SUNIL SINGH NEGI
Signing Date:17.05.2022
17:22:35
Conclusion
51. For all the aforesaid reasons, I am of the opinion that the
plaintiff has succeeded in making out a prima facie case for an
interlocutory injunction, restraining the defendants, or their agents,
sister concerns or any entity incorporated by the Defendants or anyone
acting for and on their behalf as the case maybe, from using the
impugned mark , in relation to any electrical goods or
instruments, including electrical fans, room coolers, geysers, electric
heating apparatus etc., or any allied or similar goods, pending disposal
of the present suit.
52. The present stay application is allowed accordingly.
C. HARI SHANKAR, J.
MAY 17, 2022 r.bararia/dsn Signature Not Verified Digitally Signed CS(COMM) 9/2021 Page 30 of 30 By:SUNIL SINGH NEGI Signing Date:17.05.2022 17:22:35