The Delhi High Court recently upheld an interim order restraining Kent RO Systems Limited from selling fans under the trademark “KENT" [Kent RO Systems Vs Kent Cables]..A Division Bench of Justices Navin Chawla and Madhu Jain held that Kent Cables had made out a prima facie case of prior use of Kent mark for fans and that Kent RO cannot now lay claim to it.."While we are mindful of the fact that not allowing the appellants to launch their fans with the mark in which they have otherwise acquired substantial goodwill for other products, may cause prejudice to them, it is all of their own doing," the Court said. .Kent RO Systems said it adopted the mark “KENT” in 1988 for oil meters. It later expanded the brand to water purifiers, air purifiers and other home appliances. The company claimed extensive goodwill due to large sales and marketing expenditure.Kent Cables said it adopted the mark earlier, in 1984, for insulated wires, cables and electrical components. It obtained trademark registration for the mark in 1986.The company later expanded its business to electrical appliances and claimed it had been selling fans under the mark “KENT” since around 2009.The dispute escalated in 2022 when Kent RO alleged that Kent Cables was expanding into electrical appliances and kitchen appliances using the mark “KENT.”Kent RO filed a suit seeking to restrain Kent Cables from using the mark for such products.Kent Cables filed a counter-suit. It sought to restrain Kent RO from launching fans under the same mark.In May 2023, a single-judge of the High Court found a prima facie case in favour of Kent Cables and restrained Kent RO from manufacturing or selling fans under the mark “KENT.”Kent RO then filed the present appeal before the Division Bench..The Bench held that Kent Cables were the earlier adopters of the mark.The Court also noted that Kent Cables had produced documents showing use of the mark for fans since at least 2009. These included invoices, government approvals, certifications and advertisements.The Division Bench also observed that fans were a natural extension of Kent Cables’ electrical business.“Appliances like fans can be said to be a natural progression of business for the respondents from their original business of electric wires and cables,” the Court said.The Court rejected Kent RO’s argument that fans were allied goods to water purifiers. It said classification under the same trademark class is not decisive.“Classification is only for purposes of grant of registration and cannot determine similarity of goods,” the Bench observed.The Court also noted that Kent RO had not obtained trademark registration for fans.Pertinently, the Court also took into account the delay by Kent RO in approaching the Court. Kent RO had opposed Kent Cables’ trademark application for fans in 2007. It had also issued a cease-and-desist notice in 2011. However, it did not file a suit until 2022.The Court said this conduct amounted to acquiescence.“Having opposed the registration and issued a notice, the appellants could not keep quiet and allow the respondents to grow,” the Bench said.The Court further held that Kent Cables had shown prior use of the mark for fans. Under the Trade Marks Act, prior use can defeat a later claim of infringement.The Bench also upheld the restraint on Kent RO launching fans under the mark.The Bench clarified that its observations are only prima facie and will not affect the final trial..Kent RO was represented by Senior Advocate Chander M Lall with advocates Ankur Sangal, Ankit Arvind, Shashwat Rakshit, Amrit Sharma and Annanya Mehan from Khaitan & Co. .Kent Cables was represented by Senior Advocate Jayant Mehta and advocates Sandeep Das, Ninad Dogra and Om Shelat..[Read Judgment].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.
