Delhi High Court: A Single Judge Bench of Jyoti Singh, J.* opined that permitting Kent RO Systems Ltd. (‘Kent RO’), who had not been in the business of fans, to launch fans at this stage would prima facie lead to confusion amongst the potential customers of fans apart from diverting the clientele of Kent Cables (P) Ltd. (‘Kent Cables’) and causing loss and injury and the confusion would be pronounced by the use of identical trade mark ‘KENT’ by rival parties. Thus, the Court permanently restrained Kent RO from manufacturing and selling fans under ‘KENT’ mark and dismissed the application filed by Kent RO for restraining Kent Cables from selling fans.
Background
An application had been filed by Kent Cables seeking permanent injunction restraining Kent RO and all others acting on their behalf from infringing Kent Cables registered trade mark KENT on the products or as part of the corporate name and/or any other trade mark deceptively similar thereto in relation to same or similar electronic or electrical goods as well as from passing off by using the trade mark KENT in relation to electronic/electrical goods including, but not limited to fans, lighting products, wires and cables etc.
A similar application was filed by Kent RO seeking permanent injunction restraining Kent Cables and all others acting on their behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any electric appliances including but not limited to iron water heaters, all types of fans etc. under the trade mark KENT or any other mark including device marks 
and 
which might be identical or deceptively similar to Kent RO’s registered trade mark KENT amounting to infringement as also passing off.
Based on the similitude of facts and the issues involved in the two suits, both the applications were decided by common judgment.
Analysis, Law, and Decision
The Court noted that Kent Cables adopted the trade mark ‘KENT’ in 1984 and its first registration dates to 1986 in Class 9 whereas Kent RO first adopted the trade mark ‘KENT’ in 1988 for oil meters and subsequently, expanded into product categories such as Water Purifiers, Kitchen Appliances etc. In 1999, Kent RO introduced its revolutionary product ‘Reverse Osmosis’ and was also a registered proprietor for trade mark ‘KENT’ in Class 11 for products, such as Water Purifiers, Water Pressure Boosting System etc. The Court further noted that the bone of contention between the parties was their respective claims qua fans and it was, therefore, pertinent to mention that according to Kent Cables, they had been selling fans since 1984 openly, continuously and extensively in India while Kent RO was in the process of launching when the present suit was filed by Kent Cables seeking injunction.
1. Whether Kent RO had infringed the trade mark of Kent Cables?
The Court opined that it was unnecessary to refer to Section 29(2)(b) of the Trade Marks Act, 1999 since the rival registered trade marks were identical and not similar. The Court noted that Kent Cables was registered in Class 9 for insulated electric wires and cables, switches, fuses, cut-outs, plugs, sockets etc. and had applied for registration in Class 11 for goods relating to installation for lighting, heating, cooking, steam generating etc. including fans and thus, it was apparent that the registration for trade mark ‘KENT’ at this stage did not cover fans.
The Court opined that to establish infringement under Section 29(2) of the Act even at the prima facie stage, twin conditions must be satisfied by a registered proprietor of the trade mark: (a) the impugned mark was identical/similar; and (b) the rival goods were identical/similar and/or allied and cognate. The Court further opined that it was imperative to show that fans were allied and cognate to the goods, electrical cables, wires, switches, plugs, sockets, electrical coil holders, electric starters for which it was registered, to claim that Kent RO had infringed Kent Cables’ trade mark ‘KENT’.
The Court referred to Raman Kwatra v. KEI Industries Ltd., 2023 SCC OnLine Del 38, wherein it was held that “it could not be accepted that cables/wires were similar to fans etc”. Thus, this Court held that it could no longer be held in favour of Kent Cables that fans were allied and cognate to wires/cables etc. and therefore, the claim for infringement under Section 29(2) was prima facie not made out.
2. Whether Kent Cables could claim an injunction against Kent RO in respect of sale of fans on ground of ‘prior user’ and/or ‘passing off’?
The Court relied on Jai Prakash Gupta v. Vishal Aluminium Mfg. Co., 1996 SCC OnLine Del 599, wherein this Court recognized “superiority of the rights of a prior user to a registrant” and had held that “a prior user would have an advantage over a prior registrant of a trade mark and in an action for passing off, prior registration was an irrelevant factor”. The Court further relied on Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, wherein the Supreme Court held that “it was not essential for the plaintiff to prove long use to establish reputation in a passing off action and it would depend upon the volume of sales and extent of advertisement”. The Court also relied on Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672 (‘Neon Laboratories Ltd.’), wherein the Supreme Court observed that “’first in the market’ test had always enjoyed pre-eminence”.
The Court noted that Kent Cables adopted the trade mark ‘KENT’ in 1984 and the first registration recognizing the statutory rights of Kent Cables in the trade mark was in 1986. The Court further noted that Kent Cables had prior registration in the trade mark for wires, cables, switches, etc. and thus opined that in terms of registration of the trade mark, Kent Cables was prior in point of time than Kent RO, whose first registration in the device mark ‘KENT OIL METERS’ was in 1994 and the next registration was in 1999 for ‘KENT R-O WATER MAKER’. The Court also noted that Kent Cables had placed on record extensive material to prima facie evidence use of the trade mark ‘KENT’ for sale of fans commencing from 2006 and going up to 2022 and thus, the Court opined that it was difficult to agree with the submissions of Kent RO that Kent Cables had not been able to substantiate its sales from 2006.
Thus, the Court opined that Kent Cables who was admittedly prior registrant of the trade mark ‘KENT’ had, prima facie, succeeded in showing prior user and adoption of the trade mark ‘KENT’ for fans and would be entitled to the benefit of the judgments of the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, Neon Laboratories Limited (supra) and N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, wherein pre-eminence had been given to “prior user” and “first in the market” test.
The Court noted that Kent Cables had been selling fans at least from 2006 and its brochures were widely advertised apart from Google search results for the phrase Kent Fans showing only Kent Cables Fans in addition to search results on various third-party websites and thus, opined that there was every likelihood that a potential customer would be confused into thinking that the fans, if and when launched by Kent RO, were from the stable of Kent Cables. Further, the Court opined that permitting Kent RO, who had not been in the business of fans, to launch fans at this stage would prima facie lead to confusion amongst the potential customers of fans apart from diverting the clientele of Kent Cables and causing loss and injury and the confusion would be pronounced by the use of identical trade mark ‘KENT’ by rival parties.
The Court opined that the fact that “Kent RO had remained dormant for years together with respect to the user of its mark KENT in fans and in the interregnum, Kent Cables had increased its sales considerably” could not be overlooked. Thus, the Court held that at this prima facie stage, balance of convenience lies in favour of Kent Cables rather than Kent RO and therefore, the Court permanently restrained Kent RO, its directors, members, employees, agents, associates, servants and representatives and all other persons on their behalf from manufacturing and selling fans under trade mark KENT, directly or indirectly, amounting to passing off their goods as those of Kent Cables, during the pendency of the suit. Further, the Court dismissed the application filed by Kent RO for restraining Kent Cables from selling fans.
[Kent Cables (P) Ltd. v. Kent RO Systems Ltd., 2023 SCC OnLine Del 3288, decided on 30-5-2023]
*Judgment authored by: Justice Jyoti Singh
Advocates who appeared in this case :
For the Plaintiffs: Sandeep Sethi, Rajiv Nayar, Akhil Sibal, Senior Advocate; Swathi Sukumar, Pratyush Rao, Himangi Kapoor, Ritik Raghuvanshi, Ankur Sangal, Ankit Arvind, Shashwat Rakshit, Kiratraj Sadana, Asavari Jain, Advocates;
For the Defendants: Rajiv Nayar, Akhil Sibal, Sandeep Sethi, Senior Advocates; Ankur Sangal, Ankit Arvind, Shashwat Rakshit, Kiratraj Sadana, Asavari Jain, Swathi Sukumar, Pratyush Rao, Himangi Kapoor, Ritik Raghuvanshi, Advocates.
