Will estoppel apply to submissions made before Trademarks Registry? What Delhi High Court held

The Delhi High Court recently had occasion to touch upon the law of estoppel in the context of submissions made before the Trademarks Registry when seeking the registration of a trademark [Raman Kwatra and Anr. V. KEI Industries Ltd.].A division bench of Justices Vibhu Bakhru and Amit Mahajan opined that a party that has obtained the registration of a trademark on the basis of certain representations and assertions made before the Trademarks Registry would be disentitled to any equitable relief by making contrary submissions before Court..As explained in the Court’s judgment passed earlier this month,“A party that has made an assertion that its mark is dissimilar to a cited mark and obtains a registration on the basis of that assertion, is not to be entitled to obtain an interim injunction against the proprietor of the cited mark, on the ground that the mark is deceptively similar. It is settled law that a person is not permitted to approbate and reprobate. A party making contrary assertions is not entitled to any equitable relief.” .The observation was made while setting aside a single Judge order which had restrained the appellants (defendants before the single Judge) from using a trademark involving the use of “KEI” (in words or as a logo) in relation to electrical goods sold by them..The single-judge had passed the order under challenge in a trademark infringement suit that had accused the appellants of infringing the registered trademark of the plaintiff (the respondent in the appeal before the division bench)..The division bench, however, concluded that the single-judge’s order was erroneous on several aspects..Notably, the division bench noted that the submissions made in Court by the respondent/ plaintiff appeared contradictory to submissions earlier made by it before the Trademarks Registry when its trademark application was being examined. .The Court recounted that in response to an examination report, the respondent had asserted that its services were different from the services represented by other marks cited by the Registry as being similar. Therefore, the respondent/ plaintiff could not now claim that the goods of the appellants and the respondent were similar, the Court said..“There is a clear assertion made by the respondent that its services are different to that of the cited marks. It is not open for the respondent to now claim that appellant's goods covered under the impugned trademark are similar to its goods and services,” the judgment said..Dismissing contentions by the respondent that its response to the Trade Mark Registry was without prejudice to other rights and contentions, the Court added,.“Undoubtedly, the respondent had reserved its right to avail of appropriate remedies in respect of the impugned trademark, however, reserving a right to avail of other remedies would not include the right to make a contrary assertion. A party approaching the Trade Marks Registry must be held to its statements made before the Trade Marks Registry and cannot be permitted to make a factual assertion contrary to what it claims before the Trade Marks Registry.”.The division bench also found that appellants and respondent were selling different kinds of goods, with the appellants being engaged in the sale of electrical appliances and the respondent being engaged in dealing with power cables and other kinds of cables and wires..Earlier, on applying the principle of ejusdem generis, the single-judge had opined that the registered trademark of the plaintiff/ respondent, which covered “other kinds of electrical and electronic instruments”, also covered the electrical appliances sold by the defendant/ appellant..The division bench, on the other hand, disagreed, noting that the respondent had trademark registrations under Class 6, 7, 9, 35 etc. of the Trademark Rules. None of these covered “electric appliances such as fans, geysers, immersion rods etc” which were the goods that the appellants dealt with..The division bench observed that the single-jude erred in premising its decision on the similarity of goods as opposed to actually comparing the goods’ description. Differing with the single-judge’s conclusions on the matter of similarity of the parties’ goods, the division bench went on to hold,“Such expansive interpretation would militate against the rule of ejusdem generis ... It is apparent that if the words “other kinds of electrical and electronic instruments” are read in an expansive manner, as interpreted by the learned Single Judge, the same would cover all other electrical appliances as well such as televisions, computers, electrical time pieces etc. Plainly, such interpretation would be contrary to the rule of ejusdem generis and nosciture a sociis.”.In view of these among other reasons, the division bench proceeded to set aside the single-judge order in so far as it had concluded that a case for infringement under Section 29 (2) of the Trademarks Act had been made out..The matter was remanded back to the single-judge in view of submissions made by the respondent that the case involved questions of whether there was infringement under Section 29 (4) of the Act. .[Read Judgment]