The Delhi High Court has reiterated that where infringement is made out, an injunction has to necessarily follow and that concurrent and honest use is no valid defense in view of Section 28 (1) of the Trademarks Act.
The single-judge bench of Justice C. Hari Shankar thus ruled in favour of Kei Industries Ltd. for an interlocutory injunction restraining the defendants, or anyone acting for their behalf from using the impugned mark 'KEI' in relation to any electrical goods or instruments.
The issue brought up in the petition was not 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.
It pertains to four trademarks, out of which three were registered and the impugned one was unregistered and was being used by the defendants in respect of electric fans, electrical water heaters etc.
The plaintiff is the proprietor of the registered word mark “KEI” registered under various classes of the Trademarks Rules, 2002.
The Court in its analysis rejected the submission of learned Counsel for the defendants 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.
It noted that Section 29(4) does not come in for application in the present case at all, in as much 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."
The Court thus prima facie opined that 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 mark, and are, even otherwise, “similar goods” within the meaning of Section 29(2) of the Trademarks Act.
As far as the similarity between defendant's mark and the plaintiff’s registered marks were concerned, the court noted that aspect of infringement is self apparent.
Noting that the plaintiff holds a valid and subsisting word mark registration for the word ‘KEI’, in respect of electric wires and cables, the court therefore ruled that 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."
Defendant’s defence of honest and concurrent user
The Court noted that Defendant 1 cannot plead that he was using the said mark in an honest and concurrent fashion. The availability, to Defendant 1, of the benefit of Section 12 of the Trademarks Act is, therefore, prima facie questionable, it added.
The Court stressed that 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 an does not envisage honest and concurrent user as a defence to an allegation of infringement of a registered trade mark.
It refferred to Power Control Appliances Vs. Sumeet Machines Pvt. Ltd., 1994 Latest Caselaw 99 SC 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.”
The Court noted that the above finding of the Apex Court as 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 Court ruled.
"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.'
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 court added.
Noting that 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), the Court cited the relevant provision and stated that 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 CS(COMM) 9/2021 Page 28 of 30 read as setting out the “reliefs in respect of infringement of a registered trade mark”, within the meaning of Section 28 (1)."
"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."
Case Title: KEI INDUSTRIES LIMITED vs MR. RAMAN KWATRA & ANR.
Case Details: CS(COMM) 9/2021
Coram: Justice C. Hari Shankar
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