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 applications.

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
Email:[email protected], Mob: 9990389539