While granting a permanent injunction in favour of Kent Cables Pvt Ltd, the Delhi High Court (HC) has asked Kent RO Systems Ltd not to use Kent Cables' registered trademark 'KENT' while selling electrical and electronic goods, including but not limited to fans, lighting products, wires, and cables.
In an order, Justice Jyoti Singh says, "...this court comes to an irresistible conclusion that at this prima facie stage, the balance of convenience lies in favour of Kent Cables rather than Kent RO. Accordingly, intervention application (IA) 13851/2022 filed by Kent Cables is allowed to the extent of permanently restraining Kent RO, its directors, members, employees, agents, associates, servants and representatives and all other persons, including a body corporate on their behalf from manufacturing and selling fans under trademark KENT, directly or indirectly, amounting to passing off their goods as those of Kent Cables, during the pendency of the suit. IA 14316/2022 filed by Kent RO for restraining Kent Cables from selling fans is dismissed."
"Kent Cables has made out a case of prior user and passing off by prima facie establishing its reputation and goodwill, confusion likely to be caused amongst the public if Kent RO sells its fans, considering the identity in the trademark KENT and the resultant damage to its reputation," the bench says.
The HC noted that Kent RO has remained dormant for years concerning the use of its mark KENT in fans, and in the interregnum, Kent Cables has increased its sales considerably. "What is the extent of sales of Kent Cables as well as the supineness of Kent RO in remaining dormant, would be a matter of evidence during the trial of the suit. The balance of convenience lies in favour of Kent Cables, which has developed a well-established business in the manufacture and sale of fans and has been continuing for over 15 years and if Kent Cables is now restrained from selling fans, it will result in irreparable harm and injury while on the other hand, Kent RO was yet to launch the fans in 2022 and in any case has its prime business in purifiers and home appliances and restraint on launching fans would not create any dent in its business at this stage."
The bench also observed that Kent Cables had been a prior user while Kent RO, on the other hand, had not used its trademark for the manufacture and/ or sale of fans since 1999, when it stepped into the manufacture and sale of water purifiers. "In spite of knowledge of the sale of fans by Kent Cables at least in 2011, took no steps to protect its interests," the HC says.
In 1988, Mahesh Gupta, chairman and managing director (CMD) of Kent RO adopted the 'KENT' trademark for oil meters and started using it as 'KENT Oil Meters'. In 1999, Mr Gupta launched reverse osmosis (RO)-based domestic water purifiers in the Indian market under the trademark KENT for which a patent was also granted, which has now expired.
Kent RO is primarily in the business of dealing in water purifiers under the mark KENT and Kent Cables has no objection to the use of the trademark in relation to water purifiers.
However, in the third week of August 2022, Kent Cables received information from its distributors that Kent RO was planning to launch fans and perhaps lighting products and cables under the trademark KENT. After investigation on social media platforms, it came across various posts by Kent RO where it advertised vacancies for hiring specialists in the division of fans. Kent Cables then filed oppositions and rectifications against applications filed by Kent RO for registration in Classes 09 and 11.
Kent RO has registrations in Class 07, but they do not pertain to fans, and registration in Class 09 does not cover wires, while registrations in Class 11 do not cover lighting.
Kent Cables contended that Kent RO has no right to adopt the mark KENT regarding fans, lighting products, switches, and wires for which the company is a prior user.
Last year, Kent RO filed a suit before the HC which, on 29 July 2022, directed both parties to maintain a status quo while restraining Kent Cables from launching its kitchen appliance products till the next date of hearing.
"Way back in 2011, Kent RO admittedly knew of the sale of fans by Kent Cables and took no action to protect its interests with respect to fans. The fact situation as it stands today is that Kent Cables has been selling fans for over a decade and has humongous volumes of sales while Kent RO is yet to launch. Therefore, at this prima facie stage, the argument of allied and cognate cannot aid Kent RO," the HC says in the order.