One may refer with advantage to Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448. SC held: High Court failed to take note, plea of ‘honest and concurrent user’ as stated in Section 12(3) of The Trade and Merchandise Marks Act, 1958 is not a valid defence for infringement of copyright.
Afore-extracted finding is, in my considered opinion, an authority. The Trade Marks Act, 1999 envisages ‘honest and concurrent user’ only as a ground on which concurrent registrations of similar or identical marks could be granted by Registry of Trade Marks. There is no provision in The Trade Marks Act, 1999 which contemplates ‘honest and concurrent user’ as a defence to a charge of infringement of trade mark. Where a case of infringement is made out, injunction has to necessarily follow.
On facts, I have found a prima facie case of infringement of Kei Industries Ltd.’s registered trade marks.
– Hon’ble Justice C. Hari Shankar of Hon’ble High Court of Delhi, Kei Industries Ltd. v. Raman Kwatra, [I.A. 287/2021 in CS (COMM) 9/2021].
It brooks very little disagreement to say, ‘honest concurrent use’ is not so much a provision under The Trade Marks Act, 1999 as it is a principle. The principle of ‘honest concurrent use’ is regularly evaluated as part of a general defence to trade mark infringement. It ought to be impossible to miss instances where ‘honest concurrent use’ has been deployed within infringement frameworks. They emanate from diverse sources: Delhi, Bombay, and Kolkata High Courts. To endorse ‘honest concurrent use’ has no application as an infringement defence is to effectively set all this case law to one side.
Learned Single Judge had held, defence of ‘honest and concurrent user’ is not available under The Trade Marks Act, 1999.
Learned Senior Counsel, C.M. Lall earnestly contended, defence of ‘honest and concurrent user’ was not available. He referred to, Metro Playing Card Co. v. Wazir Chand Kapoor, 1972 SCC OnLine Del 325; Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co., 1989 SCC OnLine Del 34; Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448; Laxmikant Patel v. Chetanbhai Shah, (2002) 3 SCC 65; Ansul Industries v. Shiva Tobacco Company, 2007 SCC OnLine Del 74; Cadila Pharmaceuticals Ltd. v. Sami Khatib of Mumbai, 2011 SCC OnLine Bom 484; Inder Industries v. GEMCO Electrical Industries, 2012 SCC OnLine Del 241; Radico Khaitan Ltd. v. Brima Sagar Maharashtra Distilleries Ltd., 2014 SCC OnLine Del 2036; S. Oliver Bernd Freier Gmbh & Co. v. Jaikara Apparels, 2014 SCC OnLine Del 2686; Kalpataru Properties Pvt. Ltd. v. Kalpataru Buildtech Corp. Ltd., 2015 SCC OnLine Bom 5817.
It is not necessary for this Court to examine whether any defence of ‘honest and concurrent user’ is available. We consider it apposite to remand the matter to Learned Single Judge to prima facie examine Kei Industries Ltd.’s claim for infringement of its trademarks under Section 29(4) of The Trade Marks Act, 1999.
– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Raman Kwatra v. Kei Industries Limited, [FAO(OS) (COMM) 172/2022] decided on 06.01.2023.