Court’s Decision
The Division Bench of the Delhi High Court upheld the ad-interim injunction granted by the District Judge in favour of the respondent under Order XXXIX Rules 1 & 2 CPC, restraining the appellants from using the mark “KRB” or any other deceptively similar mark to “KRBL” in relation to rice and other food grains. The High Court found no perversity or arbitrariness in the discretionary exercise of the trial court’s jurisdiction and declined to interfere with the injunction order.
Facts
The respondent is the registered proprietor of the trademark “KRBL” with a paddy-shaped device in Class 35 for advertising, marketing, distribution, and retail of rice. It claims user since 2000 and showed substantial sales, advertisement expenditure, domain name registration (krblrice.com), and copyright over the artistic logo. The respondent alleged that the appellants were using a deceptively similar mark “KRB” for selling rice, thereby infringing its trademark and passing off their goods as that of the respondent.
The appellants include firms and individuals using the “KRB” mark since 2009, allegedly derived from ancestral names. They claimed prior use, honest adoption, and that the respondent’s own rice sales were under brands like “India Gate,” not “KRBL.” They also pointed to a prior commercial relationship, alleging acquiescence and delay on the part of the respondent in filing suit.
Issues
- Whether the respondent’s mark “KRBL,” registered only under Class 35, can be protected against goods like rice (Class 30)?
- Whether the appellants’ mark “KRB” is deceptively similar to “KRBL”?
- Whether the respondent abandoned its rights in “KRBL” due to withdrawal of registration under Class 30?
- Whether the suit was barred by acquiescence or delay?
- Whether the trial court exercised discretion arbitrarily or perversely in granting injunction?
Petitioner’s (Appellant’s) Arguments
- Respondent’s mark is not used on rice products but only as a corporate name.
- Trademark is registered only in Class 35 (services), not in Class 30 (goods like rice).
- Respondent withdrew its Class 30 registration, showing intent to abandon.
- “KRB” mark was adopted in 2009 based on ancestral initials; no bad faith.
- Delay of 8 years in filing the suit; commercial transactions prove knowledge and acquiescence.
- Copyright in “KRB” artistic work is with the appellant.
- Suit filed in wrong jurisdiction (Saket instead of Tis Hazari).
- No prima facie case, balance of convenience, or irreparable harm shown.
Respondent’s Arguments
- Trademark “KRBL” is used continuously as source identifier since 2000, registered in Class 35.
- The “KRB” mark is deceptively similar and adopted dishonestly in proximity to respondent’s market.
- Withdrawal of Class 30 registration was due to mistaken legal advice; fresh application was filed the next day.
- Acquiescence does not apply; market search in 2016 showed no use by appellants; use discovered only in 2022.
- Use of KRBL as corporate name and domain name builds brand identity and goodwill.
- Appellants’ claims of long usage are unsupported; earliest documents date only to 2011.
- Respondent’s mark enjoys reputation; protection under Section 29 of the Trade Marks Act extends even to non-similar goods/services if likelihood of confusion exists.
Analysis of the Law
- The High Court emphasized that even a corporate name can function as a trademark under Section 2(1)(zb) of the Trade Marks Act, 1999.
- Section 2(2)(c)(i) clarifies that “use” includes use not just upon goods but in any relation to them (e.g., advertising, packaging, domain).
- Under Section 29, a mark can be infringed if deceptively similar and likely to cause confusion—even across allied or cognate classes (Class 30 and 35).
- The Court distinguished the scope of an appeal from an injunction order: unless there is perversity, arbitrariness, or ignorance of settled principles, appellate courts should not interfere (relying on Wander Ltd. v. Antox India and Ramakant Ambalal Choksi v. Harish Ambalal Choksi).
Precedent Analysis
- Wander Ltd. v. Antox India (1990) — limits appellate interference in discretionary injunctions.
- Hardie Trading v. Addisons Paint (2003) — broad interpretation of “use” in relation to goods.
- Power Control Appliances v. Sumeet Machines (1994) — acquiescence must be clear and positive.
- Laxmikant V. Patel (2002) — even trade names can be protected under passing off laws.
Court’s Reasoning
- The respondent demonstrated long, consistent use of “KRBL” as a source identifier; protection not confined to use as a physical brand on goods.
- Even if Class 30 registration was withdrawn, the immediate reapplication and continued use rebut any claim of abandonment.
- Marks “KRB” and “KRBL” are deceptively similar. Though dissecting marks is discouraged, dominant part (“KRB”) is common.
- The delay in filing suit is explained; no clear or informed acquiescence shown.
- Injunction was granted judicially and based on settled principles—prima facie case, balance of convenience, and irreparable injury were rightly considered.
Conclusion
The Delhi High Court dismissed the appeal and upheld the injunction. It held that the trial court had exercised its discretion in a legally sound and reasonable manner, and that the appellants’ use of “KRB” was prima facie infringing and deceptively similar to the respondent’s mark “KRBL.”
Implications
- Affirms that use of corporate names can be protected as trademarks if they function as source identifiers.
- Clarifies that trademark protection under Class 35 can extend to Class 30 due to allied and cognate nature of goods and services.
- Reinforces the high threshold for appellate interference with trial court’s discretionary orders.
- Signals that minor variations in marks (dropping a letter) may still constitute infringement if likelihood of confusion exists.
