Injunction Has To Follow Where Trademark Infringement Is Established, Concurrent & Honest Use No Defence: Delhi High Court

The Delhi High Court has observed that where a case of infringement is made out, an injunction has to necessarily follow and that it is no defence to the defendant to urge that the user of the allegedly infringing mark was honest and concurrent.

Justice C Hari Shankar, who found a prima facie case in favour of Kei Industries Limited for an interlocutory injunction, thus restrained the defendants, or anyone acting for their behalf from using the impugned mark 'KEI' in relation to any electrical goods or instruments, including electrical fans, room coolers, geysers, electric heating apparatus etc., pending disposal of the suit.

The suit was filed by Kei Industries Limited alleging infringement, by the defendants, of its registered trademark "KEI", of which it had registration both as a word mark and as the device mark.

Accordingly, the plaint sought 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.

While the matter involved Four Trademarks, of which three were registered and one (the impugned mark) was unregistered, the impugned mark was being used by the defendants in respect of electric fans, electrical water heaters etc.

The Defendant 1 claimed, in his written statement, to have coined and devised the impugned mark in 2008. The Court noted that the defendants had applied for registration of the aforesaid mark in Classes 9 and 11, but had not succeed in obtaining registration, in view of the opposition by the plaintiff.

The Court said that on comparison of the impugned mark with the KWALITY mark, it was apparent that the letters "KEI" had been copied by Defendant 1 in exactely the same lettering, font and style in which they find place in the KWALITY mark which was validly reigstered in favour of Rajiv Kwatra.

The Court thus observed that the goods in respect of which the defendants were using the impugned KEI were, prima facie, similar to the goods in respect of which the plaintiff's word mark and device mark were registered.

The Court said thus:

"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."

Thus, in the prima facie opinion of the Court, it was observed that electrical fans, geysers and water immersion rods, in respect of which defendants were using the impugned KEI mark were allied and similar to the goods in respect of which the plaintiff's word mark and device mark were registered.

While noting that 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, the Court added:

"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."

Reference was made to sec. 28(1) of the Trade Marks Act which 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."

"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," the Court said.

Case Title: KEI INDUSTRIES LIMITED v. MR. RAMAN KWATRA & ANR.

Citation: 2022 LiveLaw (Del) 462

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