Point of law: Registration of trademark shall, if valid, give to registered proprietor of trademark exclusive right to use of trademark in relation to goods or services in respect of which trademark is registered and to obtain relief in respect of infringement of trademark in manner provided by this Act.

JUDGMENT :

I.A.287/2021 (under Order XXXIX Rules 1 and 2 of the CPC)

1. KEI Industries Ltd, the plaintiff, alleges infringement, by the defendants, of its registered trademark “KEI”, of which it has registration both as a word mark and as the [logo 1]device mark. Accordingly, the plaint seeks a decree of permanent injunction, restraining the defendants from infringing the plaintiff’s registered trademarks either physically or via online platforms, along with other prayers for rendition of accounts, delivery up nd declaration.

2. With the plaint, the plaintiff has filed an application, under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs. Learned Counsel for both sides have been heard at length on this application, which the present order disposes of.

Facts

3. The dispute, in the present case, is not so much one of 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. Given the nature of the controversy, it would be appropriate to proceed by setting out the rival stands of both sides, as they emerge from the pleadings. Case set up by the plaintiff in the plaint

4. According to the plaintiff, it was initially functioning as Krishna Electrical Industries, a partnership firm, which was subsequently incorporated into the plaintiff-public limited Company on 31st December, 1992. It claims to have been using the trademark/trade name/corporate name ‘KEI’ since the commencement of its business in 1968, and that the word mark ‘KEI’ was first registered in favour of the plaintiff in Class 9 for Wires and Cables (Electric and Telecommunication) on 27th September, 1988. Thereafter, the said word Mark ‘KEI’ was registered, in favour of the plaintiff, in Classes 6, 16, 35, 37 and 42.

5. The plaintiff claims to have conceptualised, designed and adopted the logo mark “IMAGE” in 2007, with respect to its goods and services, since which time the plaintiff claims to have been using the said logo extensively, exclusively and continuously. Registrations for the said Device Mark IMAGE are held, by the plaintiff, in Classes 6 and 9, w.e.f. 14th June, 2007 and 29th June, 2007, respectively, as well as in Classes 16, 35, 37 and 42. Among the goods in respect of which the plaintiffs word and device marks are registered are wires and cables and electrical items.

6. Though the plaint provides a tabular depiction of all registrations held by the plaintiff, it may not be necessary, for the purposes of the present order, to make exhaustive reference thereto. Equally, the recitals, in the plaint, regarding the reputation that the plaintiff claims to have amassed over the years, and the various encomiums earned by it, relating to the use of the aforesaid marks, are also not of particular significance. Suffice it to state that the plaintiff avers that, by dint of long and extensive usage, the ‘KEI’ mark has acquired considerable goodwill and reputation.

7. Around September 2017, avers the plaint, the plaintiff, during a routine check of the online records of the Registry of Trade Marks, noticed that the defendant had applied for registration of the [logo 2]Mark under Classes 7, 11 and 35. In view of the fact that the defendants, as per their application, were engaged in manufacture and sale of, inter alia, electrical goods, the plaintiff, in an attempt to assert its exclusive rights over the ‘KEI’ mark, addressed a cease and desist notice, dated 31st October, 2017, to the defendants, calling upon the defendants to cease and desist from using the Mark ‘KEI’ and to withdraw the applications filed by them with the Trade Marks Registry, for registration of the said marks. The defendants responded to the legal notice, to which the plaintiff rejoined on 31st October, 2017. Oppositions were also filed, by the plaintiff, before the Registry of Trade Marks, against the applications for registration filed by th