Common field of activity isn’t essential for passing off when a name carries secondary meaning
Introduction:
In the intricate landscape of intellectual property law, few cases encapsulate the tension between heritage and innovation as vividly as Kirloskar Diesel Recon Pvt. Ltd. and Others vs. Kirloskar Proprietary Ltd. and Others. Decided on October 10, 1995, by the Bombay High Court, this dispute pits a venerable industrial dynasty—the Kirloskar Group—against a trio of upstart companies helmed by a former insider, all vying for the right to wield the iconic "Kirloskar" name. This legal showdown, rooted in a passing-off action, explores the boundaries of trademark protection, the relevance of business similarity, and the equitable limits of delay, weaving a narrative that balances corporate identity with public perception. With its blend of historical legacy and modern legal principles, the case stands as a cornerstone in India’s jurisprudence on trade names and goodwill.
Detailed Factual Background:
The story begins in 1888, when Laxmanrao Kashinath Kirloskar and his brother Ramuanna launched a bicycle repair business in Belgaum. By 1910, their operations had relocated to Kundal, later rechristened Kirloskarwadi, a testament to their growing influence. In 1920, the brothers transformed their enterprise into a public limited company, birthing the "Kirloskar Group of Companies." Over decades, this group evolved into a sprawling conglomerate, its name synonymous with quality across diverse sectors—from pumps and engines to financial services. The respondents in this case—Kirloskar Proprietary Ltd., Kirloskar Brothers Ltd., Kirloskar Cummins Ltd., Kirloskar Electric Co. Ltd., Kirloskar Pneumatic Co. Ltd., Kirloskar Leasing and Finance Ltd., and Kirloskar Investments and Finance Ltd.—embodied this legacy. Kirloskar Proprietary Ltd., the first respondent, held registered trademarks and copyrights for "Kirloskar" under the Trade and Merchandise Marks Act, 1958, and the Copyright Act, 1957, licensing these to respondents 2 to 5 and permitting use by respondents 6 and 7. By 1992, the group boasted a turnover of Rs. 625 crores, assets of Rs. 325 crores, and a global reputation reinforced by a 1988 centenary celebration marked by a commemorative postal stamp.
The appellants entered this narrative in 1991. Kirloskar Diesel Recon Pvt. Ltd. (incorporated March 12, 1991), Kirloskar Transport Pvt. Ltd. (January 22, 1991), and Kirloskar Holdings Pvt. Ltd. (April 3, 1991) were promoted by the second appellant, a former president of Kirloskar Cummins Ltd. from 1983 to 1985. Each adopted "Kirloskar" as part of its corporate name, ostensibly to capitalize on the name’s cachet. The respondents caught wind of this on May 28, 1992, via a letter from patent agents about Kirloskar Holdings’ logo registration attempt, prompting further investigation. On August 3, 1992, they issued a cease-and-desist letter, alleging passing off and deception. The appellants rebuffed this, claiming a right to the name, setting the stage for litigation.
Detailed Procedural Background
The respondents filed three civil suits—Nos. 3, 4, and 5 of 1993—in the District Court of Pune, seeking a permanent injunction to bar the appellants from using "Kirloskar" in their corporate names or trading styles to pass off their goods or businesses as those of the respondents. Concurrently, they sought interim injunctions under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908. On June 14, 1994, the III Additional District Judge, Pune, granted these interim reliefs, restraining the appellants pending the suits’ final resolution.The appellants appealed to the Bombay High Court, filing Appeals from Order Nos. 1152, 1153, and 1154 of 1994, each corresponding to one of the suits. Given their shared factual and legal core—differing only in the first appellant per case—the High Court consolidated them for a unified judgment. On October 10, 1995, after extensive arguments, the court delivered its verdict, affirming the lower court’s order.
Issues Involved in the Case:
The case crystallized into several pivotal issues: Did the District Court, Pune, have jurisdiction under Section 105(c) of the Trade and Merchandise Marks Act, 1958, to hear the passing-off suits? Did the appellants’ use of "Kirloskar" constitute passing off, despite differing business fields? Did the respondents’ delay in filing the suits amount to acquiescence, barring relief? Could the appellants claim a bona fide right to use "Kirloskar" under Section 34 as a surname? And did the balance of convenience favor granting or denying the interim injunction?
Detailed Submission of Parties:
The appellants, led by Mr. Kane, mounted a multifaceted defense. They challenged the District Court’s jurisdiction, arguing the respondents lacked a unified cause of action, rendering the suits misjoined. They asserted that their distinct business activities—unlike the respondents’—precluded passing off, as no confusion was plausible among discerning customers. They emphasized that their corporate names were legally allotted under the Companies Act, 1956, unchallenged within the one-year statutory window, and invoked Section 34, claiming the second appellant’s surname justified their use. Delay was a key plank: a 1991 notice to Kirloskar Cummins Ltd.’s board, they argued, gave the respondents constructive knowledge, and their inaction until 1993 signaled acquiescence or waiver. Finally, they contended that the balance of convenience favored them, as an injunction would disrupt their nascent businesses, while the respondents’ established status mitigated any harm.
The respondents, represented by Mr. Tulzapurkar, countered robustly. They defended jurisdiction under Section 105(c), asserting that "Kirloskar" as a trade name fell within the Act’s ambit. They argued that their century-long reputation made "Kirloskar" exclusively theirs, and the appellants’ use misrepresented a connection, likely deceiving the public—common fields notwithstanding. Fraudulent intent wasn’t required, only a likelihood of confusion, which their goodwill substantiated. They dismissed the Section 34 defense, noting it didn’t extend to artificial entities, and denied delay or acquiescence, pointing to prompt action post-discovery in 1992. The balance, they claimed, tilted toward them: their entrenched reputation trumped the appellants’ recent ventures, and public interest demanded protection from deception.
The appellants leaned on an array of precedents:
Alkem Laboratories Pvt. Ltd. vs. Alchem (India) Ltd., Notice of Motion No. 3028 of 1988 in Suit No. 3198 of 1988 (Bombay High Court, November 27, 1990, Srikrishna, J.): Dissimilar products (pharmaceuticals vs. ferric alum) and no secondary meaning in "Alkem" denied an injunction, supporting distinct activities.Indian Aluminium Co. Ltd. vs. Indals (Agencies) Pvt. Ltd., Notice of Motion No. 7 of 1990 in Suit No. 3648 of 1989 (Bombay High Court, November 25, 1991, Jhunjhunuwala, J.): Bona fide adoption of "Indals" with no confusion risk prevailed, aligning with the appellants’ intent claim.Aktiebolaget Volvo vs. Volvo Steels Ltd., Notice of Motion No. 950 of 1995 in Suit No. 1055 of 1955 (Bombay High Court, April 28, 1995, Jhunjhunuwala, J.): Distinct fields (cars vs. steel) and minimal plaintiff reputation in India negated passing off, echoing dissimilarity.S.M. Chemicals & Electronics Ltd. vs. Symtronics, Notice of Motion No. 38 of 1975 in Suit No. 25 of 1975 (Bombay High Court, August 7, 1975, Rege, J.): Different goods and no confusion risk denied relief, reinforcing the appellants’ argument.The Pianolist Company Ltd., (1906) 23 RPC 774: UK allowance of surname use absent fraud bolstered Section 34.R.T. Engineering & Electronics Co., AIR 1972 Bombay 157: Literate buyers reduced confusion, per Bombay High Court, aiding customer discernment.Stringfellow vs. McCain Foods (GB) Ltd., (1984) RPC 501: UK ruling on nightclubs vs. fries supported distinct fields.Victory Transport Co. Pvt. Ltd. vs. District Judge, Ghaziabad: Allahabad High Court’s tests of secondary meaning and confusion likelihood favored the appellants.Sony Kabushiki Kaisha vs. Shamrao Maskar: Bombay High Court found electronics vs. nail polish unconfusing, per dissimilarity.John Taylor Peddie, 61 RPC 31: UK surname use upheld, reinforcing Section 34.Parker-Knoll Ltd. vs. Knoll International Britain (Furniture & Textiles) Ltd., 1961 RPC 346: UK confusion alone didn’t suffice, cited for limits.urton vs. Turton, (1889) 42 Ch D 128: Honest surname use permitted, per UK court, for bona fides.Parker-Knoll Ltd. vs. Knoll International Ltd., 1962 RPC 265: House of Lords allowed some confusion, but appellants focused on its constraints.Boswell-Wilkie Circus vs. Brian Boswell Circus, (1986) FSR 479: South African distinct contexts reduced confusion.County Sound Plc vs. Ocean Sound Ltd., (1991) FSR 367: UK radio services lacked confusion, per dissimilarity.Harold Lee (Mantles) Ltd. vs. Harold Harley (Fashions) Ltd., 71 RPC 57: Honest use prevailed, cited for intent.K.G. Khosla Compressors vs. Khosla Extraktions Ltd., AIR 1986 Delhi 181: Delhi’s name protection was distinguished.Poddar Tyres Ltd. vs. Bedrock Sales Corporation: Bombay’s injunction was downplayed for differing facts.Optrex India Ltd. vs. Optrex Ltd., Appeal No. 381 of 1989 (Bombay High Court, November 15-17, 1989, Desai and Kenia, JJ.): Distinct fields denied relief.
The respondents countered with:
Azim Gadighar vs. Abdul Aziz: Bombay High Court upheld jurisdiction for passing off, per Section 105(c).K.G. Khosla Compressors Ltd. vs. Khosla Extraktions Ltd., AIR 1986 Delhi 181: Delhi protected names beyond goods.Albion Motor Car Co. Ltd. vs. Albion Carriage and Motor Body Works Ltd., 34 RPC 257: UK confusion in related fields justified relief.Baume & Co. Ltd. vs. A.H. Moore Ltd., (1958) 2 All ER 113: UK restrained honest use causing deception.Bajaj Electricals Ltd. vs. Metals & Allied Products, Bombay: Bombay relied on Parker-Knoll for injunctions.Sturtevant Engineering Co. Ltd. vs. Sturtevant Mills Co. of USA Ltd., (1936) 3 All ER 137: UK confusion risk sufficed.John Haig & Co. Ltd. vs. John D.D. Haig Ltd., (1957) 16 RPC 381: UK reputation trumped honest use.Fine Cotton Spinners vs. Harwood Cash & Co. Ltd., 24 RPC 533: Pre-Parker-Knoll goodwill transfer was distinguished.Kingston, Miller & Co. Ltd. vs. Thomas Kingston & Co. Ltd., (1912) 1 Ch D 575: UK confusion risk warranted relief.Parker-Knoll Ltd. vs. Knoll International Ltd., 1962 RPC 265: House of Lords prioritized fair trading.Boswell-Wilkie Circus vs. Brian Boswell Circus, (1985) FSR 434: South African alignment with Parker-Knoll. Hindustan Pencils Pvt. Ltd. vs. India Stationery Products Co.: Delhi favored injunctions over delay for public interest.Astra-IDL Ltd. vs. T.T.K. Pharma Ltd.: Bombay upheld relief despite delay if strong prima facie.Schering Corporation vs. Kilitch Co. (Pharma) Pvt. Ltd., 1994 (1) IPLR 1: Bombay ruled time lapse isn’t laches.Daimler Benz Aktiegesellschaft vs. Hybo Hindustan: Delhi protected household names.Bhandari Homeopathic Laboratories vs. L.R. Bhandari, 1976 Tax LR 1382 (Delhi): Companies lacked surname defense.North Cheshire and Manchester Brewery Co. Ltd. vs. Manchester Brewery Co. Ltd., (1899) AC 83: House of Lords restrained deceptive names.Ewing vs. Buttercup Margarine Co. Ltd., (1917) 2 Ch 1: UK confusion risk sufficed.Sarabhai International Ltd. vs. Sara Exports International, AIR 1988 Delhi 134: Delhi extended name protection.Saville Perfumery Ltd. vs. June Perfect Ltd., 58 RPC 147: UK likelihood of confusion sufficed.Wright, Layman & Umney Ltd. vs. Wright, 66 RPC 149: UK reputation protection was key.British Bata Shoe Co. Ltd. vs. Czechoslovak Bata Co. Ltd., 64 RPC 72: UK upheld interlocutory relief.Sheraton Corporation of America vs. Sheraton Motels Ltd., (1964) RPC 202: UK favored early injunctions. Poddar Tyres Ltd. vs. Bedrock Sales Corporation: Bombay reinforced name protection.Power Control Appliances vs. Sumeet Machines Pvt. Ltd., 1994 AIR SCW 2760: Supreme Court required active acquiescence.
Detailed Reasoning and Analysis of Judge:
The Bombay High Court’s delivered a comprehensive analysis. On jurisdiction, the court affirmed Section 105(c)’s broad scope, interpreting "trade mark" to include trade names like "Kirloskar,".Delay was swiftly dispatched: the 1½-year gap from the 1991 notice to the 1993 suits was deemed inconsequential. Citing Astra-IDL, Hindustan Pencils, Schering, and Power Control Appliances, the judge held that delay didn’t imply acquiescence absent intent to license, especially with a strong prima facie case and public interest at stake. The appellants’ insider knowledge undermined estoppel claims.The passing-off crux saw the judge reject the appellants’ common-field argument. Tracing its evolution from McCulloch (65 RPC 58) to its debunking in Henderson (1969 RPC 218) and Marage Studies (1991 FSR 145), the court emphasized "Kirloskar"’s household status and the respondents’ diverse portfolio—overlapping with appellants’ objects. Cases like Albion and Daimler Benz supported a focus on public confusion, not activity parity. The appellants’ use risked goodwill erosion, per Ewing and North Cheshire.Section 34’s bona fide use defense collapsed: Parker-Knoll (1962 RPC 265), Bhandari, and Sarabhai clarified that artificial entities lack surname rights, and the second appellant’s prior role negated good faith. Confusion likelihood, not intent, drove relief, per Saville Perfumery and Baume.Balance of convenience tilted decisively: the respondents’ 50-year legacy, vast operations, and reputation dwarfed the appellants’ recent, unproven ventures. Injunctions preserved the status quo without halting the appellants’ businesses, only their use of "Kirloskar," aligning with Poddar Tyres and Sheraton.
Final Decision:
The Bombay High Court dismissed the appeals, upheld the interim injunctions with costs, and denied a stay, expediting certified copies.
Law Settled in This Case:
The judgment established that: Section 105(c) governs passing off via trade names; common field of activity isn’t essential for passing off when a name carries secondary meaning; delay doesn’t preclude injunctions if the case is strong and public interest demands protection; Section 34 doesn’t shield artificial entities’ name use without bona fides; and interlocutory relief prioritizes goodwill over mere inconvenience.
Case Title: Kirloskar Diesel Recon Pvt. Ltd. Vs Kirloskar Proprietary Ltd.
Date of Order: October 10, 1995
Case No.: Appeals from Order Nos. 1152, 1153, and 1154 of 1994
Neutral Citation: AIR 1996 BOM 149; 1996 (2) BOMCR 642; (1996) 98 BOMLR 972
Name of Court: Bombay High Court
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
