Introduction:The case of KRB Enterprises & Ors. Vs KRBL Limited revolves around a trademark dispute adjudicated by the High Court of Delhi. This appeal, filed under Section 13(1A) of the Commercial Courts Act, 2015, challenges an ad-interim injunction order issued by the District Judge, restraining the appellants from using the trademark 'KRB', which was alleged to be deceptively similar to the respondent's registered trademark 'KRBL'. The dispute centers on allegations of trademark infringement and passing off, with the respondent claiming prior use and registration of its mark, while the appellants argued honest adoption and acquiescence by the respondent.
Factual Background: The appellants, comprising KRB Enterprises (a partnership firm), KRB Rice Mills Private Limited, and Rajesh Kumar Jindal (proprietor of Jindal Traders), are engaged in manufacturing, trading, and marketing goods such as rice, coffee, and sugar, falling under Class 30 of the Trade Marks Act, 1999. The respondent, KRBL Limited, is a well-established company involved in the production, processing, and marketing of food products like rice, quinoa, and chia seeds. Incorporated in 1993 as Khushi Ram Bihari Lal Ltd., it adopted the name KRBL Ltd. in 2000 and has since used the trademark 'KRBL' along with a device of paddy forming a diamond shape, registered under Class 35 (advertising, distribution, marketing, wholesale, and retail services related to rice) and previously under Class 30 (goods like rice). The respondent also holds a copyright registration for the artistic work of its trademark.
The respondent alleged that the appellants’ use of the mark 'KRB' infringed its registered trademark 'KRBL' and constituted passing off by creating confusion among consumers. The respondent claimed continuous use of its mark since 2000, supported by substantial sales figures and advertising efforts, establishing significant goodwill.
It discovered the appellants’ use of 'KRB' in 2016 through trademark applications and opposed them, but found no market use until May 2022, prompting the filing of a suit in July 2022. The appellants countered that they adopted 'KRB' in 2009, derived from the initials of family members, and had been using it openly without objection. They further claimed that the respondent acquiesced to their use, as evidenced by commercial transactions since 2014, and argued that the respondent’s withdrawal of its Class 30 registration indicated abandonment.
Procedural Background: The respondent initiated a suit, CS(COMM) No. 430/2022, before the District Judge (Commercial Courts), South District, Saket Courts, Delhi, seeking an injunction against the appellants for trademark infringement and passing off. On February 21, 2024, the District Judge granted an ad-interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, restraining the appellants from using the 'KRB' mark. Aggrieved, the appellants filed an appeal (FAO(COMM) 69/2024) before the High Court of Delhi, challenging the injunction on grounds including lack of jurisdiction, non-use of the respondent’s mark on goods, absence of deceptive similarity, acquiescence, and abandonment.
Legal Issue: The primary legal issue in this case is whether the appellants’ use of the trademark 'KRB' infringes the respondent’s registered trademark 'KRBL' under Class 35 and constitutes passing off, warranting an ad-interim injunction?
Subsidiary issues include whether the respondent’s registration in Class 35 extends protection to goods in Class 30, whether the respondent acquiesced to the appellants’ use of the mark, whether the respondent abandoned its mark by withdrawing its Class 30 registration, and whether the District Judge had territorial jurisdiction to entertain the suit?
Discussion on Judgments: The parties relied on several judicial precedents to support their arguments, each cited in specific contexts to address trademark law principles, acquiescence, abandonment, and jurisdiction.
The appellants cited Edward v. Dennis, (1885) 30 Ch D 454, to argue that trademark protection requires actual use on goods, asserting that the respondent’s non-use of 'KRBL' on its products (which were sold under brands like 'India Gate') precluded infringement claims.
Similarly, In re Ducker’s Trade Mark, [1929] 1 Ch 113, was referenced to emphasize that trademark rights depend on use, reinforcing their claim of the respondent’s non-use.
The appellants also relied on Thermax Trade Mark, (1985) RPC 403, and George Key Ld’s TM, (1953) 71 RPC, to support the requirement of actual use for trademark protection.
Have a Break Trade Mark, 1993 RPC Volume 10, was cited to argue that the respondent’s mark, registered in Class 35 (services), does not extend to Class 30 (goods).
Sumant Prasad Jain v. Sheojanam Prasad, (1973) 1 SCC 56, was invoked to underline the necessity of use for trademark rights.
On jurisdiction, the appellants cited Dhodha House v. S.K Maingi, (2006) 9 SCC 41, Jay Engineering Works Ltd. v. Ramesh Aggarwal, 2006 SCC OnLine Del 1356, Indian Performing Rights Society Limited v. Sanjay Dalia, (2015) 10 SCC 161, and Shree Nath Heritage Liquor Pvt. Ltd. v. Octga Green Power & Sugar Co. Ltd., 2017 SCC OnLine Del 9137, arguing that the suit was filed in the wrong territorial jurisdiction.
For acquiescence, they relied on Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, and M/s KRBL Limited v. Lal Mahal Ltd. & Anr., 2015 SCC OnLine Del 13793, asserting that the respondent’s delay and prior business dealings constituted acquiescence.
On the anti-dissection principle, the appellants cited Stiefel Laboratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296, Parle Products v. J.P & Co., AIR 1972 SC 1359, and Griffith v. Vick Chemicals, AIR 1956 Cal 654, arguing that the marks must be compared as a whole, not dissected into parts.
The respondent countered with Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, Jaquar Company Pvt Ltd. v. Villeroy Boch Ag & Anr., 2023 SCC OnLine Del 2734, Montari Overseas Ltd. v. Montari Industries Ltd., 1996 16 PTC 142, and Montari Industries Ltd. v. Montari Overseas Ltd., (1995) 15 PTC 399, to argue that a trade name can function as a trademark if it serves as a source identifier, supporting their claim of continuous use of 'KRBL'.
For deceptive similarity and dishonest adoption, they cited Midas Hygiene Industries (P) Ltd. & Anr. v. Sudhir Bhatia & Ors., (2004) 3 SCC 90, Sterling Agro Industries Limited v. AST Trading Company & Ors., 2024 SCC OnLine Del 1145, T.V Venugopal v. Ushodaya Enterprises Limited & Anr., (2011) 4 SCC 85, M/s Ansul Industries v. M/s Shiva Tobacco Company, ILR (2007) I Delhi 409, and Rolex SA v. Alex Jewellery Pvt Ltd. & Ors., 2009 SCC OnLine Del 753, asserting that the appellants’ mark 'KRB' was likely to cause confusion.
On abandonment, the respondent relied on McCarthy on Trademarks, Chapter 17, and Hardie Trading Ltd. & Anr. v. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92, arguing that abandonment requires an intent to permanently relinquish rights, which was absent given their immediate reapplication for Class 30 registration.
For diligence in protecting their mark, they cited N.R Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 16 PTC 476.
On acquiescence, they referenced Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited, (2019) 80 PTC 491, arguing that low-level business transactions did not imply management knowledge or consent. Finally, on the extension of Class 35 protection to Class 30, they cited FDC Limited v. Docsuggest Healthcare Services Pvt Ltd. & Ors., 2017 (69) PTC 218 (Del), emphasizing the allied nature of goods and services.
Reasoning and Analysis of the Judge:The Division Bench cited Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727, and Ramakant Ambalal Choksi v. Harish Ambalal Choksi & Ors., 2024 SCC OnLine SC 3538, which hold that an appellate court should not interfere with a trial court’s discretionary order unless it is arbitrary, capricious, or perverse. The court emphasized that perversity arises from a complete misreading of evidence or reliance on conjectures, not merely a different interpretation of facts.
On the substantive issues, the court rejected the appellants’ claim that the respondent’s mark 'KRBL', registered in Class 35, did not extend to Class 30 goods. Citing Section 2(2)(c) of the Trade Marks Act, 1999, and Google Llc v. DRS Logistics (P) Limited & Ors., 2023 SCC OnLine Del 4809, the court held that the use of a mark encompasses not only physical application but also any relation to goods or services, such as advertising or marketing. The respondent’s extensive documentation, including invoices and sales figures from 2000 to 2021, demonstrated continuous use of 'KRBL' as a source identifier, satisfying the definition of a trademark under Section 2(1)(zb). The court found that the appellants’ mark 'KRB' was deceptively similar to 'KRBL', as the dominant parts of the marks were nearly identical, likely causing consumer confusion, especially given the identical goods (rice) involved.
Addressing acquiescence, the court relied on Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, and Make My Trip (India) Pvt. Ltd., (2019) 80 PTC 491, holding that acquiescence requires positive acts of encouragement, not mere silence or low-level transactions.
The respondent’s lack of knowledge about the appellants’ use until 2022, despite earlier trademark oppositions in 2016, negated acquiescence. The court also dismissed the abandonment argument, noting that the respondent’s withdrawal of its Class 30 registration in 2017, followed by an immediate reapplication, was due to erroneous legal advice and did not indicate an intent to abandon, as required by McCarthy on Trademarks and Hardie Trading Ltd., (2003) 11 SCC 92.
On jurisdiction, the court found that the respondent’s pleadings regarding the availability of infringing products online supported the South District’s jurisdiction under Section 134 of the Trade Marks Act, deeming the issue a matter for trial. The court concluded that the respondent established a prima facie case of infringement and passing off, with the balance of convenience and risk of irreparable injury favoring the injunction.
Final Decision:The High Court dismissed the appeal, upholding the District Judge’s ad-interim injunction against the appellants.
Law Settled in This Case: This case reinforces several key principles of trademark law in India. First, it clarifies that a trade name can function as a trademark if it serves as a source identifier, even if not physically affixed to goods, as per Sections 2(1)(m), 2(1)(zb), and 2(2)(c) of the Trade Marks Act, 1999.
Second, it establishes that trademark protection under Class 35 (services) can extend to Class 30 (goods) if the goods and services are allied, focusing on the likelihood of confusion rather than strict class boundaries. Third, it reiterates that acquiescence requires positive acts of encouragement, not mere silence or low-level transactions, and that abandonment necessitates a clear intent to relinquish rights. Finally, the case underscores the limited scope of appellate interference in discretionary injunction orders, requiring a demonstration of perversity or arbitrariness.
KRB Enterprises Vs KRBL Limited :May 26, 2025 : FAO(COMM) 69/2024 :2025:DHC:4364-DB :High Court of Delhi:Hon'ble Judge: Justice Navin Chawla and Justice Shalinder Kaur
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
