Application of Estoppel to Submissions made before the Trademarks Registry: Delhi High Court

The Delhi High Court has recently analyzed the application of the law of estoppel with respect to submissions made before the Trademarks Registry while registering a trademark. In the recent case of Raman Kwatra & Anr. v. M/s. Kei Industries Limited[1], the Court observed that once a party has made certain representations and assertions before the Trademark Registry to obtain the registration of a trademark, it cannot seek an equitable relief by making submissions contrary to such representations and assertions before the Court.

Analyzing the Judgment

Contentions of the Appellant

• The Appellant contended that the learned Single Judge erred in ruling that the impugned trademark is not registered. The Appellant, to substantiate his claim, submitted his trademark application for the impugned trademark, “KEI” in Class 11.
• He additionally contended that the goods covered by the Appellant’s trademark are distinct from those covered by the Respondent’s trademarks.
• Further, he stated that his father has been using the trademark, “Kwality Label” in connection with identical goods since 1966 and that the Appellant created the impugned trademark by using the letters “KEI” in the same typeface and style as the “Kwality Label” trademark.
• The Appellant based his fourth contention on the basis that the Respondent is precluded from asserting that the contested mark is deceptively similar to its own trademarks, as this assertion is entirely contrary to its earlier assertions made before the Trademark Registry during the registration. The Respondent had gained the registration on the basis that the two marks were distinct.
• TheAppellant alsoclaimed the defence of honest and concurrent use.

Contentions of the Respondent

• The Respondent argued that their registered trademark covered electrical appliances, allowing potential product portfolio expansion in the future.
• He pointed out that, in addition to electrical wires and cables, the Respondent’s device mark included other kinds of “electrical and electronic instruments.”
• As per the Respondent, the defence of honest and contemporaneous usage was not available to the Appellant. In order to substantiate his claims, he cited cases such as Power Control Appliances v. Sumeet Machines (P) Ltd.[2] and Laxmikant Patel v. Chetanbhai Shah[3].

Court’s Decision

• The Court ruled that the Appellant did not infringe on the Respondent’s registered trademark “KEI” because it was only registered in Class 9 for “Wires and Cables (Electric and telecommunication)” and Class 35 for particular services.
• The Court relied on Amar Chandra Chakraborty v. Collector of Excise, Government of Tripura & Ors[4]and observedthat the ejusdem generis rule did not apply to the Respondent’s trademark since it only covered specific goods and services rather than “other sorts of electrical and electronic instruments,” which encompassed the Appellant’s goods.
• As a result, the Appellant was held not liable for trademark infringement under Section 29(2)[5] of the Trademarks Act, 1999 (hereinafter referred to as the Act).
• The court was also satisfied with the Appellant’s contention that a party who has obtained trademark registration based on specific representations and declarations made before the Trade Marks Registry would be ineligible for equitable redress if it claimed otherwise.
• The Court concluded that if a party has obtained the registration of their trademark by alleging that their mark is distinctfrom a cited mark, such party cannot obtain an interim injunction against the cited mark’s owneron the contention that the marks are deceptively similar.

Conclusion

The Respondent had contended infringement of their registered trademark primarily under Section 29(4)[6] of the Act. Thus, in addition to setting aside the impugned order of the Single Judge, the Court remanded the matter back to the Single Judge to examine the claim under Section 29(4). The Court’s decision established a substantive principle that parties cannot contradict the statements made before the Trademark Registry, in order to obtain favourable outcomes in court.

[1]Raman Kwatra&Anr. v. M/s. Kei Industries Limited, 2023/DHC/000083

[2] Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448.

[3]Laxmikant Patel v. Chetanbhai Shah, (2002) 3 SCC 65.

[4] Amar Chandra Chakraborty v. Collector of Excise, Government of Tripura & Ors., (1972) 2 SCC 442.

[5] Section 29(2), Trade Marks Act, 1999.

[6] Section 29(4), Trade Marks Act, 1999.