Appeal makes sense of contrary submissions before Trademarks Registry and Delhi High Court

On 6 January 2023 the Delhi High Court Division Bench ruled to set aside a previous order by a single judge granting an interim injunction (Rawan Kwatra v KEI Industries Ltd FAO(OS)(COMM) 172/2022). The bench also laid down its observations on the law of estoppel with respect to submissions made before the Trademarks Registry at the time of seeking a trademark registration.

In a suit before the Delhi High Court – KEI Industries Ltd v Raman Kwatra (CS (COMM) 9/2021) – the plaintiff, KEI Industries, claimed passing off and infringement of its marks KEI and KEI DEVICE by Rawan Kwatra by virtue of its adoption and use of the mark KEI for identical or similar goods (ie, electrical products). The court found that the plaintiff had priority of both registration and use, and accordingly granted an interim injunction against the defendants on 17 May 2022.

One of the issues in the lawsuit involved the fact that the Trademark Registry had cited Rawan Kwatra’s mark KEI as a conflicting mark in its examination report on the plaintiff’s application for registration of the mark KEI in Class 7 (no 3693720). To overcome the objection, KEI Industries argued that its mark was “distinctive of its services” and because of the parties’ different business, “there was no likelihood of confusion” between the two marks. In the current suit, the defendants therefore asserted that the plaintiffs could not now claim the contrary. The Delhi High Court judge rejected this argument, holding that just because the plaintiff had taken a stand at the registration stage, that assertion could not stop it from exercising its statutory and natural rights at a later date.

However, in hearing the appeal, the Delhi High Court Division Bench held that once a party has made an assertion –  that “its mark is dissimilar to a cited mark” – and obtained a registration on the basis of that assertion, it is not entitled to obtain an interim injunction against the proprietor of the cited mark, on the grounds that the “mark is deceptively similar” to its own. In other words, when seeking registration before the Trademarks Registry, a party must be held to its statements and cannot be permitted to make a “factual”, contrary assertion subsequently before the court.

This order has higher standing than that issued by the single judge. The principle of ‘approbate and reprobate’ has been upheld with respect to statements before the registry and parties ought to be mindful of the need for consistency. However, the Division Bench has opined the above with respect to factual assertions, which leads one to ponder on what statements would amount to being factual in nature. Are the rival marks dissimilar when viewed as a whole a factual statement, or is a statement about disparate goods a factual statement? Only time will tell.