Introduction
The clash between intellectual property rights and business interests often leads to riveting legal battles, and the case of Raman Kwatra & Anr. versus M/s KEI Industries Limited stands as a testament to this dynamic. Decided by the High Court of Delhi on January 6, 2023, this case delves into the intricate world of trademark law, pitting a seasoned manufacturer of electrical appliances against a well-established cable and wire company over the use of the mark "KEI." At its core, this dispute raises fundamental questions about trademark infringement, the scope of registered marks, and the equitable principles governing such conflicts. The judgment not only resolves a specific commercial rivalry but also offers valuable insights into the interpretation of India's Trade Marks Act, 1999, making it a significant study for legal practitioners and businesses alike.
Detailed Factual Background
The appellants, Raman Kwatra and his proprietorship firm (collectively "the appellant"), are engaged in manufacturing electrical appliances such as fans, room coolers, geysers, and other household items. The appellant traces its use of the "Kwality Label," which incorporates the initials "KEI," back to 1966, when it was adopted by Raman Kwatra’s father, Late Shri Om Prakash Kwatra. This mark was registered under Classes 9 and 11 in 1997, albeit with a disclaimer on the words "KWALITY" and "INDIA," and is now owned by Raman Kwatra’s brother, Rakesh Kwatra. In 2008, the appellant conceived a new mark (referred to as the "impugned trademark") featuring "KEI" in the same font and style as the Kwality Label, which it began using for its products. The appellant applied for registration of this mark in 2016 under Classes 7, 11, and 35, but faced opposition, leaving it unregistered at the time of the dispute.
The respondent, KEI Industries Limited, is a prominent player in the wire and cable industry, claiming use of the "KEI" mark since 1968, when it began as a partnership firm named Krishna Electrical Industries. Incorporated as a public limited company in 1992, the respondent has since expanded into manufacturing various types of cables, including power cables, control cables, and house wires, serving sectors like power, oil refineries, and railways. The respondent secured registration for its word mark "KEI" and a device mark featuring "KEI" in Classes 6, 9, 16, 35, 37, and 42, with the device mark conceptualized in 2007. In September 2017, the respondent discovered the appellant’s trademark application during a routine check and issued a cease-and-desist notice on October 31, 2017, alleging infringement. The appellant refuted these claims in a reply dated November 27, 2017, setting the stage for a legal showdown.
Detailed Procedural Background
The respondent initiated legal action by filing a suit [CS(COMM) 9/2021] before the Delhi High Court, seeking a permanent injunction against the appellant’s use of the impugned trademark, alleging infringement and passing off. Alongside the suit, the respondent applied for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. On May 17, 2022, the learned Single Judge granted the interim injunction, restraining the appellant from using the impugned trademark or any deceptively similar marks in relation to electrical goods pending the suit’s disposal. The Single Judge found prima facie infringement of the respondent’s registered marks, prompting the appellant to file an intra-court appeal [FAO(OS) (COMM) 172/2022] challenging this order. The appeal, accompanied by an application (CM APPL. 30278/2022), was adjudicated by a Division Bench comprising Justices Vibhu Bakhru and Amit Mahajan, culminating in the judgment delivered on January 6, 2023.
Issues Involved in the Case
The case revolves around several critical legal issues. First, whether the appellant’s use of the impugned trademark infringes the respondent’s registered trademarks under Section 29 of the Trade Marks Act, 1999, particularly Sections 29(2) and 29(4). Second, whether the goods covered by the appellant’s impugned trademark (e.g., fans, geysers) are similar to those under the respondent’s registered marks (e.g., wires, cables), thereby justifying an infringement claim. Third, whether the respondent is estopped from alleging similarity between the marks due to prior representations made to the Trade Marks Registry. Fourth, whether the appellant’s registered "Pedestal Fan Label" and historical use of the "Kwality Label" bolster its defense. Finally, whether the defense of honest and concurrent use applies to resist the respondent’s injunction plea.
Detailed Submission of Parties
The appellant, represented by Senior Advocate Jayant Mehta, mounted a multi-pronged challenge to the Single Judge’s order. He argued that the impugned order overlooked the appellant’s registered "Pedestal Fan Label" (Registration No. 4639094) in Class 11, which incorporates the impugned trademark, and sought to amend the written statement to reflect this fact. He contended that the Single Judge erred in deeming the appellant’s goods similar to the respondent’s, as the latter deals in cables and wires, not household appliances. Mehta emphasized the appellant’s long-standing use of the "Kwality Label" since 1966, inherited through family business succession, asserting that the impugned trademark’s "KEI" was a bona fide continuation of this legacy. He further argued that the respondent’s prior assertion of dissimilarity before the Trade Marks Registry estopped it from claiming infringement, and that the defense of honest and concurrent use should shield the appellant.
The respondent, represented by Senior Advocate C.M. Lall, countered that its "KEI" mark, registered across multiple classes, enjoys a robust reputation, and the appellant’s use of an identical mark in the electrical goods sector risks confusion and dilution. Lall argued that while the respondent currently focuses on cables, its registrations, particularly the device mark’s coverage of "other kinds of electrical and electronic instruments," encompass allied goods like fans and geysers. He dismissed the estoppel argument, citing the lack of statutory estoppel and reserving the respondent’s right to legal remedies. Lall also relied on precedents to assert that honest and concurrent use is not a valid defense against infringement of a registered trademark, urging the court to uphold the injunction.
Detailed Discussion on Judgments Cited by Parties and Their Context
The respondent leaned heavily on judicial precedents to bolster its stance. In Power Control Appliances v. Sumeet Machines (P) Ltd. [(1994) 2 SCC 448], the Supreme Court held that honest and concurrent use, while a basis for concurrent registration under the Trade Marks Act, 1958, does not defend copyright infringement—a principle the respondent extended to trademarks. Laxmikant Patel v. Chetanbhai Shah [(2002) 3 SCC 65] reinforced that goodwill and reputation are protectable against deceptive similarity. Bombay High Court decisions like Cadila Pharmaceuticals Ltd. v. Sami Khatib [2011 SCC OnLine Bom 484] and Kalpataru Properties Pvt. Ltd. v. Kalpataru Buildtech Corp. Ltd. [2015 SCC OnLine Bom 5817] underscored the irrelevance of honest use in registered trademark disputes. Delhi High Court rulings, such as Inder Industries v. GEMCO Electrical Industries [2012 SCC OnLine Del 2416] and Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. [1989 SCC OnLine Del 34], emphasized protecting registered marks against confusion, regardless of intent.
The appellant countered with Telecare Networks India Pvt. Ltd. v. Asus Technology Pvt. Ltd. [(2019) 262 DLT 101], where the Delhi High Court dismissed estoppel against statute but was challenged here for misapplication, as the appellant argued equitable estoppel based on the respondent’s registry statements. The appellant also invoked statutory interpretation principles from Amar Chandra Chakraborty v. Collector of Excise [(1972) 2 SCC 442] and Rohit Pulp and Paper Mills Ltd. v. CCE [(1990) 3 SCC 447], advocating a restrictive reading of "other kinds of electrical and electronic instruments" under the ejusdem generis and noscitur a sociis rules, limiting the respondent’s mark to cables and related devices.
Detailed Reasoning and Analysis of Judges
The Division Bench, led by Justice Vibhu Bakhru, meticulously dissected the Single Judge’s findings. The court first addressed the similarity of goods, rejecting the Single Judge’s expansive interpretation of "other kinds of electrical and electronic instruments" in the respondent’s device mark registration. Applying ejusdem generis, the Bench held that this phrase, following specific items like cables, switchgears, and transformers, should be confined to instruments for controlling or manipulating electricity, not household appliances like fans or geysers. The court found the word mark "KEI" limited to "Wires and Cables (Electric and telecommunication)" in Class 9, further undermining the similarity claim under Section 29(2).
The Bench then tackled the estoppel issue, disagreeing with the Single Judge’s reliance on Telecare Networks. It held that the respondent’s assertion of dissimilarity between its mark and the appellant’s before the Trade Marks Registry—made to secure registration of "KEI" in Class 11—barred it from claiming similarity now, invoking the equitable principle against approbation and reprobation. The court also noted the appellant’s registered "Pedestal Fan Label," overlooked by the Single Judge, as a factor weakening the infringement case.
On honest and concurrent use, the Bench acknowledged Section 12 of the Trade Marks Act, which allows concurrent registration in special circumstances, but deemed it unnecessary to resolve this defense given the lack of goods similarity. However, it critiqued the Single Judge’s blanket rejection of this defense, suggesting its potential relevance in appropriate cases. Finally, while the respondent urged consideration under Section 29(4) (infringement for dissimilar goods with reputation), the Bench remanded this aspect to the Single Judge, noting its absence from earlier arguments but relevance in the plaint.
Final Decision
The Division Bench set aside the impugned order of May 17, 2022, lifting the interim injunction against the appellant. It remanded the matter to the Single Judge to examine the respondent’s claim under Section 29(4) of the Trade Marks Act, ensuring a fresh prima facie assessment of infringement based on reputation and unfair advantage. The appeal was disposed of without costs.
Law Settled in This Case
This judgment clarifies several aspects of trademark law in India. It reaffirms that the scope of a registered trademark’s goods must be interpreted restrictively using ejusdem generis when general terms follow specific ones, preventing overreach into unrelated product categories. It establishes that a party’s representations to the Trade Marks Registry can estop it from taking contradictory positions in litigation, grounding this in equitable principles rather than statutory estoppel. The decision also hints at the potential viability of honest and concurrent use as a defense against infringement, though it leaves this open for future adjudication. Finally, it underscores the distinct application of Section 29(4) for dissimilar goods, emphasizing reputation and detriment as key factors.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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