‘Honest and Concurrent Use’: A Ground for Defence in Trademark Infringement Matter Case: KEI Industries Limited v. Raman Kwatra and Another [CS(COMM) 9/2021]

In the realm of trademark law, the defense of "honest concurrent use" stands as a safeguard for parties engaged in the use of similar or identical trademarks, allowing them to coexist peacefully in the marketplace under specific conditions. This defense holds particular significance in jurisdictions where the rights of prior users are respected alongside those of registered trademark holders. This paper offers a comprehensive examination of the concept of honest concurrent use as a defense in trademark infringement cases. It delves into the fundamental principles, legal precedents, and practical considerations surrounding this defense, providing insights for legal practitioners and trademark owners.

‘Honest and Concurrent Use’: A Ground for Defence in Trademark Infringement Matter Case: KEI Industries Limited v. Raman Kwatra and Another [CS(COMM) 9/2021]

 KEI Industries Limited v. Raman Kwatra and Another [CS(COMM) 9/2021]

Introduction

In the dynamic landscape of trademark law, the concept of honest concurrent use emerges as a balancing force, harmonizing the rights of trademark owners with the realities of commercial activity. As businesses strive to establish their brand identities and protect their intellectual property, the defense of honest concurrent use offers a pathway for coexistence and cooperation in the marketplace. Here we will look into a case of the Delhi High Court titled 'KEI Industries Limited vs. Raman Kwatra & Anr.' that focuses on the issue "Honest and Concurrent use ground for defense in trademark infringement. The Plaintiff (KEI Industries) filed the suit against the Defendants (Raman Kwatra & Anr.) claiming trademark infringement against the use of the mark KEI.

Contentions by The Plaintiff (KEI Industries Ltd.):

The mark KEI has been used by the plaintiff since 1968 and was registered in 1988 in class 9 for wires and cables. Since 2007 the mark KEI has been used for wires, cables, and other kinds of electrical items and instruments. Plaintiff around September 2017 noticed that Defendant No.1 had applied the mark for registration under classes 7, 11, and 35 for electrical goods and accordingly opposed it. A legal notice has also been issued by the Plaintiff to Defendants addressing the above issue which was not responded favorably by the Defendants. The Defendant's mark is prominently identical to the KEI.

Contentions by the Defendants (Raman Kwatra & Anr.):

Since 1966 through use by Defendant No.1's father (OPK) the defendants have prior rights in the mark KEI and also Defendants have been using the mark since 2008 honestly and concurrently for electrical goods. As OPK's business under the mark, KEI falls under Defendant No.1's sole proprietorship, the right in the mark KEI developed upon them through OPK. The Trademarks Registry cited the Defendants’ mark to be clashing with the Plaintiff’s trademark operation for the mark KEI in its examination report, Plaintiff, in its reply to the examination report, stated its mark to be “distinctive of the services of” Plaintiff and that given the difference between the parties’ services, there's no liability of confusion in the request concerning the contending marks.  The constituents of Section 29(4)(c) of the Trademarks Act, 1999(the Act) aren't satisfied to make out a case of violation.  The plaintiff’s enrollment is only in class 9 for cables and lines. It has not succeeded in carrying enrollment in class 11, whereas the Defendants are manufacturing electrical appliances in classes 7 and 11 under the mark.

Court's findings:

Defendant No. 1 succeeded only to OPK’s business and not to the right to use the KEI. OPK permitted Defendant No. 1’s family to use the brand ‘KWALITY’ who also attained enrollment of the KWALITY device mark, comprising the mark KEI, in his name in classes 9 and 11. The Defendants haven't disputed the legality of the said enrollment and therefore have no right in the said mark.  The Defendants’ mark and the Plaintiff’s mark are analogous. There's no other textual material in the mark KEI.  Section 29(4) of the Act is applicable where the infringing mark is used for different goods or services. In this case, the contending goods are analogous. The Plaintiff’s enrollment for the mark also covers ‘other kinds of electrical and electronic instruments’, which include electrical cables and lines, switch gears, control panels, circuit combers, mills, amplifiers, switches, and fuses. therefore, Defendant’s goods electrical suckers, geysers, and water absorption rods under the mark are confederated and analogous to Plaintiff’s goods.  Defendants chased the mark only in 2008 and filed checks since 2015 whereas the Plaintiff’s word mark enrollment is since 1988 and use since 1966 which has been accepted by the Trademarks Registry. therefore, the Plaintiff is previous in use and enrollment of the mark KEI.  Section 12 of the Act contemplates honest and concurrent use only as a ground for granting concurrent enrollments of analogous or identical marks by the Trademarks Registry. Where a case of violation is made out, instruction has to follow. therefore, the plea of honest and concurrent use cannot act as a defense against trademark violation.  No substantial benefit is accrued to the Defendants from the Plaintiff’s statement in its reply to the Registry’s expostulation to the Plaintiff’s mark KEI, to the effect that the Defendants’ mark wasn't deceptively analogous to Plaintiff’s mark. As there's no estoppel against the enactment, the Plaintiff’s station before the Registry is inapplicable.

Conclusion

The Court in this case inspected the rights of an enlisted proprietor (under Section 28) and provisions under Section 135 i.e., “Relief in suits for infringement or for passing off” to decipher that there are no provisions under the Trade Marks Act that mulls over ‘honest and concurrent use’ as a ground on which the Offended party can be denied an order. In simple words, the Court made no exclusion to cases where there is a genuine fair (honest) and concurrent use by a party. In any case, it would show that considering the ‘balance of convenience’ and ‘comparative hardship’ caused to the parties, fair choice (honest) and concurrent use are basic components to be considered by the court when giving a brief order.