KEI Industries Limited Vs. MR. Raman Kwatra & Anr.
JUSTICE C. Hari Shankar
Plaintiff– KEI INDUSTRIES LIMITED
Defendant – MR. RAMAN KWATRA & ANR
The plaintiff KEI industries Limited filed a suit seeking a decree of permanent injunction to restrain the defendants Mr. Raman Kwatra from infringing the plaintiffs registered trademark physically or via online platforms.
Section 29(4) of Trademarks Act – Infringement of Registered Trademarks.
Section 12 of Trademarks Act – Registration of similar trademark for two entities if they are for honest and concurrent use.
Section 135 of Trademarks Act – Relief for Infringement of any registered Trademark.
- The plaintiff had filed an application seeking injunction through Order XXXIX Rules 1 and 2 of the Code of Civil procedure for the use of “KEI”.
- According to the plaintiff they were using the corporate name “KEI” since the year 1968 and got it registered under Class 9 for Wires and Cables in the year 1988.
- The design and logo of “KEI” was adopted and registered in the year 2007.
- The plaintiff in the year 2017 found out that the defendants had applied for “KEI” logo and was engaged in the same line of business that is “electrical goods”.
- Thereby the plaintiff filed a suit for injunction in order to restrain the defendants from using the mark.
Whether “honest and concurrent use” be used as a defence for Trademark Infringement?
Advancements made by the plaintiffs
- The plaintiffs stated that “KEI” was a source identifier of goods and brought in customers and the defendants “KEI” logo was similar and deceiving and confusing thereby misleading the customers.
- The defendants were trying to illegally make profits by using the goodwill and reputation of the plaintiff which led to dilution of the goodwill and reputation of the plaintiff’s marks.
- The plaintiffs stated that the impugned mark was of 2008 and the original mark which dated back to 1966 was not in question. Thereby the plaintiffs have the priority.
- The learned counsel for plaintiffs relied upon telecare Networks India Pvt Ltd Vs. Asus technology and stated that assertions made to the Trade mark registry, in order to obtain registration was not relevant while examining the aspect of infringement.
Advancements made by the defendants
- The defendants stated that his father OPK had been using this logo since 1966 but did not get it registered.
- OPK had applied for registration of the mark in Class 9 and 11 in the year 1997. The mark was recognised under Class 9 in the year 2005 claiming user since 1966.
- When OPK transferred his complete shares to his son that is the defendant making him the sole owner of the property the defendant conceived the impugned “KEI” mark and applied for registration under Classes 7 and 11 with the Trade Marks Registry in the year 2016.
- The defendants stated that the right to use “KEI” mark dates back to 1966 and claimed priority over the “KEI” mark of the plaintiff.
- The learned counsel for defendants stated that the plaintiffs does not satisfy the ingredients under Section 29(4)(c) of the Trademarks Act, 1999 and also sought protection under Section 12 of the Trademarks Act, 1999.
- The court held that the Section 29(4) of Trademarks Act, 1999 doesn’t come into action as it relates to cases wherein the allegedly infringing mark was used in relation to good or services which are not similar to those which the trademark was registered. Here the impugned mark was prima facie similar to the goods registered under plaintiffs “KEI”.
- The plaintiff’s mark was registered back in 1988 and the defendants mark was only registered in 2008 therefore the plaintiff’s had priority of registration.
- The defendants use of Section 12 of Trademarks Act,1999 stating he was using the mark in an honest and concurrent fashion was prima facie questionable and also no provision in Trademarks Act existed which makes honest and concurrent use as a defence to an infringement of trademark rather it is only granted by the Registry of Trademarks to grant registrations of identical marks.
- As per Section 28(1) of the Trademarks act, 1999 it states that when a valid trademark is registered it must give the owner exclusive rights to use it in his wish and also obtain relief when there is a trademark infringement. The so relief could be obtained through Section 135 (1) and (2) of the Trademarks Act, 1999.
The court concluded that there was a prima facie case of infringement by the defendants and that honest and concurrent use cannot be taken as a defence for trademark infringement. The court passed an interlocutory injunction restraining the defendants from using the impugned “KEI” mark in relation to any goods or instruments.
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