The Delhi High Court has clarified that an appellate court will not interfere with the exercise of discretion by a Single Judge in granting or refusing an interlocutory injunction unless the discretion is shown to have been exercised arbitrarily, capriciously, perversely, or by ignoring settled principles of law. The High Court ruled that the Kent RO Systems (appellants) were rightly denied an interim injunction against the Kent Cables (respondents) and were correctly injuncted from using the mark ‘KENT’ for fans.
The ruling was premised on the grounds that the respondents were the prior users of the mark for fans, a right protected under Section 34 of the Trade Marks Act, 1999, and the appellants, despite being aware of the respondents’ use of the mark for fans for over a decade, delayed taking action, thereby acquiescing to such use and disentitling themselves to the discretionary relief of injunction.
As the appellants had not yet launched their fans, while the respondents had an established business, the balance of convenience lay in favour of the respondents, who were the prima facie proprietors of the mark for that specific product, added the Court.
The Division Bench comprising Justice Navin Chawla and Justice Madhu Jain observed that while Kent RO adopted the mark ‘KENT’ for oil meters in 1988, Kent Cables had adopted the same mark for wires and cables in 1986. Therefore, Kent Cables was the first adopter of the mark, albeit for different products, and their adoption could not be considered mala fide.
The Bench analysed Kent RO’s claim of infringement under Section 29(2)(a) of the Trade Marks Act, 1999, and noted that Kent RO’s trademark registrations in Class 11 were specifically for ‘water purifiers’ and related goods, not for ‘fans’. It held that merely because fans and water purifiers fall under the same class (Class 11), they are not automatically considered cognate goods, as classification is for registration purposes and not determinative of similarity.
The Bench considered that the expansion by Kent Cables from electric wires and cables into fans could be seen as a natural progression of their business. Since Kent Cables started using the mark for fans in 2009, when Kent RO was admittedly not in the fan business, their use could not be said to be taking unfair advantage of Kent RO’s trademark.
Further, the Bench found that Kent RO was aware of Kent Cables’ use of the mark for fans since at least 2011, when it issued a cease-and-desist notice, and had opposed their trademark application in 2007. By not taking legal action for over a decade and allowing Kent Cables to grow its business, Kent RO had acquiesced to the use of the mark by Kent Cables. This delay and acquiescence disentitled Kent RO from the discretionary relief of an interim injunction.
The Bench also observed that Section 34 of the Trade Marks Act, 1999, protects the vested rights of a prior user. The prior use of the mark ‘KENT’ for fans by Kent Cables was found to be sufficient to disentitle Kent RO from obtaining an injunctive relief against them at the interim stage.
As far as propriety of injunction against Kent RO is concerned, the Bench upheld the injunction restraining Kent RO from launching fans. It reasoned that Kent RO had not used the mark for fans until the suit was filed. Ordinarily, there can only be one proprietor of a mark for a specific product, and prima facie, for fans, that proprietor is Kent Cables.
Briefly, the appellants, Kent RO Systems, are engaged in manufacturing and selling electronic goods like water purifiers, air purifiers, and kitchen appliances under the trademark ‘KENT’. They adopted the mark ‘KENT’ in 1988 for oil meters, which was registered in 1994, and in 1999, they launched RO-based water purifiers under the ‘KENT’ mark and subsequently expanded into other home appliances. Kent RO claims to be the prior user of the mark for home appliances and asserts that ‘KENT’ has become a well-known trademark due to extensive sales and promotional expenditure.
In July 2022, Kent RO discovered that the respondents were planning to expand their business into electrical and kitchen appliances, including fans, under a deceptively similar mark, leading Kent RO to file a suit for injunction concerning kitchen appliances, while reserving the right to sue separately for fans.
The respondents, Kent Cables claimed that they adopted the trademark ‘KENT’ in 1984 for insulated wires and cables and obtained their first registration in Class 09 in 1986, with use claimed since 1986. They contended that they were the prior adopters of the mark, and also filed an application to register ‘KENT’ for fans under Class 11 in 1998. Upon learning that Kent RO was planning to launch fans and other electronic goods, Kent Cables filed a suit to restrain Kent RO. Subsequently, Kent RO filed another suit to restrain Kent Cables from selling fans and other electrical items under the ‘KENT’ mark.
The Single Judge dismissed Kent RO’s application for an interim injunction and allowed Kent Cables’ application, thereby restraining Kent RO from manufacturing and selling fans under the trademark ‘KENT’.
Appearances:
Senior Advocate Chander M. Lall, along with Advocates Ankur Sangal, Ankit Arvind, Shashwat Rakshit, Amrit Sharma, and Annanya Mehan, for the Appellants
Senior Advocate Jayant Mehta, along with Advocates Sandeep Das, Ninad Dogra, and Om Shelat, for the Respondents
