Concurrent & Honest Use Can’t Be Valid Defense in Infringement Cases

 Shivani Thakur

Published on: May 30, 2022, at 18:00 IST

The Delhi High Court has reiterated that where infringement is made out, an injunction has to necessarily follow and that concurrent and honest use is no valid defense in view of Section 28 (1) of the Trademarks Act.

Justice C. Hari Shankar thus ruled in favor of KEI Industries Ltd. Whereby the Respondent, or any person acting on his behalf, shall be liable to use the mark ‘KEI’ applied in relation to any electrical article or apparatus.

The issue brought up in the Petition was not whether the mark used by the defendants does, or does not, infringe the plaintiffs registered marks, but whether the defendants are entitled to use the said mark.

The Plaintiff is the proprietor of the registered word mark “KEI” registered under various classes of the Trademarks Rules, 2002.

The Court in its analysis rejected the submission of learned Counsel for the defendants that the plaintiff was not entitled to relief as the plaintiff had failed to establish the existence of the ingredients of Section 29(4) (c) of the Trademarks Act.

The court noted, “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.”

Noting that the plaintiff holds a valid and subsisting word mark registration for the word ‘KEI’, in respect of electric wires and cables therefore ruled that any use, by any other party, of the acronym ‘KEI’, in respect of identical or similar goods would amount to infringement.

The use, by the defendants, of the impugned mark, in respect of electric fans, electric water heaters, immersion water heaters etc. is, therefore, prima facie infringing of the plaintiff’s registered work mark ‘KEI’ word mark and device mark, within the meaning of Section 29(2) of the Trademarks Act.”

The Court noted that the a provision which permits grant of concurrent registrations of identical or similar trade marks, if the use of the latter mark is honest and concurrent, cannot be used as a defense to a charge of infringement.

Thus the Court ruled, “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. 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.

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.”

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