The Trademark Opposition proceeding are in fact mother for all Trademark
Infringement litigation. Whosoever is desirous of getting statutory right in
Trademark, obviously has to undergo the rigors of Trade mark Opposition
proceeding, in case the Opposition is filed by a party.
The Trademark Opposition proceeding includes the pleading like filing of notice
of Opposition, Counter statement etc. Naturally a party has to take some stand
regarding deceptive similarity of a Trademark.
Similarly when ever any Trademark application is filed by a party, the Registrar
of Trademark issues examination report to party , there by mention prior
existing registered or pending trademark applications of other party.
The applicant obviously has to meet the objection taken by the Registrar of
Trademark regarding prior existing registered Trademarks or pending
It is but natural , that the applicant has to deny the possibility of confusion
vis a vis the prior existing Trade Marks of third parties as mentioned in the
examination report by Registrar of Trademark.
Now the question arises, when this applicant for Trademarks files a Suit
against one of the parties, whose trademarks have been cited in examination
report and about which the Trademark applicant has already taken.tye stand that
conflicting trademarks are not similar, can he take the contrary stand in Suit
proceeding that both the conflicting Trademarks of parties are similar?
What would be effect of admission made by a party before the registrar of
Trademark , in a Suit for infringement? This question was answered by Hon'ble
High Court of Delhi in Judgement dated 17.05.2022 passed in Suit bearing CS Comm
No. 9 of 2021 titled as KEI Industries Limited Vs Mr. Raman Kwatra and another.
The subject matter Suit was filed by the Plaintiff on the basis of proprietary
right in the Trademark/Label KEI against use of similar Trademark/Label KEI by
the Defendant in relation to similar products.
In this case in reply to the objection raised by the Trade Mark Registry in its
Examination Report, the plaintiff took the stand with respect to the defendants'
cited mark that the plaintiff's Mark was "distinctive of the services of the
plaintiff and in view of the difference between the services of the plaintiff
and of the defendants there is not any likelihood of confusion.
Now question was that once the Plaintiff took this stand before the Registrar of
Trademark that there is no any possibility of confusion and deception , can the
Plaintiff be declined injunction?
The answer of Hon'ble High Court of Delhi was affirmative as injunction was .
The Hon'ble High Court of Delhi , while doing so relied upon the Judgement
titled as H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd. where by it was
held that merely because the plaintiffs at the stage of seeking registration
took a stand as aforesaid, cannot stop the plaintiff from exercising its
statutory and natural rights. There is no estoppels against statute. The
relevant extract of said Judgement is reproduced as under:
"15. The plea of the defendants, of the plaintiffs, at the time of seeking
registration and when confronted with 'HMT', 'HMV', 'HMW', 'H.M. Tex Kamal' and
'H.M.C.', having taken a stand that the mark has to be considered in entirety,
may be considered at this stage. The question to be adjudicated is, whether the
plaintiffs, having taken such a stand, is estopped from suing for infringement.
The question, in my opinion, cannot be answered in abstract and has to be
answered on facts. None of the businesses, marks whereof as aforesaid the
plaintiffs were confronted with, were in any business even remotely connected to
business of the plaintiffs.
In fact the marks HMT & HMV were abbreviations of their earlier names Hindustan
Machine Tools and His Masters Voice respectively and which businesses, over the
years had come to be referred by their abbreviation. Merely because the
plaintiffs at the stage of seeking registration took a stand as aforesaid,
cannot stop the plaintiff from exercising its statutory and natural rights.
There is no estoppels against statute."
Following this principle as already laid down by Hon'ble High Court of Delhi in
the afore mentioned Judgement, the Hon'ble High Court of Delhi rejected reliance
made by the Defendant on admission made by the Plaintiff in reply to the
examination report issued by the Registrar of Trademarks.
The principle that can be culled out of the present discussion here is that the
Plaintiff is having statutory right to seek remedy of infringement against the
Defendant on the basis of registered Trademark. This statutory right of
Plaintiff can not be diluted on the basis of any stand taken by the Plaintiff in
reply to examination report issued by the examiner of Trademark.
Written By: Ajay Amitabh Suman, Advocate
, Hon'ble High Court of Delhi
, Mob: 9990389539