Summary
In this case involving Kent Ro Systems Limited and Kent Cables Private Limited, a dispute arose over which side could use the mark KENT for fans. Kent RO relied on its reputation in water purifiers and home appliances, while Kent Cables relied on its earlier adoption of KENT for electrical goods and its prior use of the mark for fans. The Delhi High Court held, that at the interim stage, Kent Cables had shown a better claim in relation to fans. It therefore upheld the earlier order restraining Kent RO from manufacturing and selling fans under KENT during the pendency of the suits.
Background
Kent RO, known in the market for water purifiers and home appliances, filed a suit against Kent Cables in 2022 over the use of the mark “KENT” on kitchen appliances. In the said suit, Kent RO asserted that it had adopted the “KENT” mark in 1988 for oil meters and later expanded the mark into water purifiers, air purifiers, and other home appliances. In the suit, Kent claimed that it had built a very large goodwill and reputation in the mark through sales, advertising, and long market presence. Kent RO, however, did not immediately seek relief against Kent Cables in relation to fans. Instead, it asked the court for liberty to bring a separate case on that issue after examining the extent of Kent Cables’ use of the “KENT” mark for fans.
Kent Cables then approached the court with its own case, stating that it had adopted the mark “KENT” earlier, in 1984, for wires, cables, switches, and allied electrical goods. It also said that it had applied for registration of “KENT” for fans in 1998 and had been selling fans under KENT at least from 2009. According to Kent Cables, Kent RO was now trying to enter the fan market under the same mark even though Kent Cables had already built a business in “KENT” fans.
Subsequently, Kent RO filed a separate suit against Kent Cables in relation to electrical products, including fans. Both sides therefore, sought injunctions against each other in relation to fan products sold under the “KENT” mark.
The Single Judge decided the interim applications together. The court refused Kent RO’s request for interim injunction against Kent Cables and, at the same time, restrained Kent RO from manufacturing and selling fans under “KENT” during the pendency of the suits. Aggrieved by this decision, Kent RO challenged the interim order before the Division Bench.
Issues Before the Court
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- Whether Kent Cables’ use of the mark “KENT” for fans amounted to infringement of Kent RO’s registered trademark under Section 29 of the Trade Marks Act, 1999.
- Whether fans were similar, allied, or cognate goods in relation to the goods for which Kent RO had registration and use.
- Whether Section 34 protected Kent Cables’ prior use of KENT for fans against Kent RO’s claim for an injunction.
- Whether Kent RO had acquiesced in Kent Cables’ use of KENT for fans.
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Kent RO’s Arguments
Kent RO argued that it had adopted KENT in 1988 and had built a very strong market reputation in the mark through its water purifiers and home appliances. It said that fans are home appliances and are allied and cognate to products such as air purifiers and water purifiers. It also argued that fans fall in Class 11, where it held registrations for water purifiers, and that Kent Cables’ use of KENT for fans therefore amounted to infringement under Section 29(2)(a).
Kent RO further argued that KENT had become closely associated with it in the minds of consumers because of its sales and advertising. It said that Kent Cables did not have registration for fans, that its fan application was only on a proposed to be used basis, and that Kent RO had already opposed that application and sent a cease and desist notice. It also argued that there was actual market confusion and that delay alone should not defeat an injunction.
Arguments by Kent Cables
Kent Cables argued that it was the earlier adopter of the mark “KENT”, having used it from 1984 for wires, cables, switches, and allied electrical goods, with registration dating back to 1986. It said that it had also applied for KENT for fans in 1998 and had shown actual use of KENT for fans from at least 2009 through invoices, government approvals, certifications, and advertisements.
Kent Cables further argued that Kent RO had no registration for fans and could not claim rights over every product that falls in Class 11 merely because it had registration for water purifiers in that class. It said that classification by itself does not decide whether goods are similar. Kent Cables also argued that Kent RO knew of its fan business at least by 2011 but still did not take timely legal action, and had therefore acquiesced. It also submitted that the Single Judge had correctly exercised discretion and that the appellate court should not interfere.
Court’s Analysis
The court first looked at which party had adopted the mark “KENT” earlier. The court said that Kent Cables had adopted KENT in 1984 for wires, cables, and related goods, while Kent RO adopted KENT in 1988 for oil meters. On that basis, the court held that Kent Cables was the earlier adopter of the mark and that its adoption could not be treated as mala fide.
The court then looked at how the dispute developed over time. The court observed that both businesses had expanded into new product lines. Kent RO moved from oil meters into water purifiers and other home appliances. Kent Cables, on the other hand, moved from electrical goods such as wires and cables into fans. The court noted that Kent Cables had, at least prima facie, shown use of KENT for fans from 2009 and that both sides had co existed for years in their own areas of business.
The court then examined Kent RO’s claim of infringement. It reviewed Kent RO’s trademark registrations and found that, in Class 11, Kent RO’s registrations were specifically for water purifiers, machines for water purification, cabinets for purifiers, and related goods. The court held that Kent RO did not have a registration for fans.
The court rejected the argument that fans must be treated as similar goods simply because they also fall in Class 11. The court stated that classification is only for registration purposes and does not by itself determine whether goods are similar or cognate. According to the court, fans do not become allied or cognate goods to water purifiers or air purifiers merely because they are placed in the same class.
The court also attached importance to the fact that Kent RO had not obtained registration for fans and had not used KENT for fans until the dispute arose. The court treated this as relevant while considering whether Kent RO could complain that Kent Cables was infringing its mark in relation to fans.
The court also considered Section 29(4) of the Trade Marks Act. For those unaware, this provision deals with a situation where a registered trademark owner complains that another party is using the same or a similar mark for goods that are not similar to the goods covered by the registration. For such a claim to succeed, the use must be without due cause and must take unfair advantage of, or harm, the distinctive character or reputation of the registered mark.
The court said that Kent Cables had already been using KENT for electrical goods and that fans could prima facie be seen as a natural business expansion from wires, cables, switches, and related electrical products. The court therefore noted that Kent Cables’ use of KENT for fans in 2009, when Kent RO was not selling fans, could not be viewed as use without due cause or as taking unfair advantage of Kent RO’s mark.
The court then considered Section 34 in relation to prior use and observed that Kent Cables had, at the interim stage, shown prior use of KENT for fans. According to the court, this prior use itself was enough to defeat Kent RO’s claim for interim injunction against Kent Cables in relation to fans.
On acquiescence, the court placed strong reliance on Kent RO’s own conduct. The court noted that Kent RO had opposed Kent Cables’ application for KENT for fans in 2007 and had sent a cease and desist notice in 2011. Even so, Kent RO did not take timely legal action against Kent Cables in relation to fans. In its first suit, it even reserved liberty to file a later action on fans instead of seeking immediate relief. At the same time, Kent Cables had placed documents showing use of the mark “KENT” for fans from at least 2009. The court therefore held that Kent RO could not remain silent, allow Kent Cables to continue in the fan market, and then seek interim restraint only when Kent RO itself wanted to launch fans. The court held that Kent RO had acquiesced in Kent Cables’ use of KENT for fans.
The court then addressed the injunction granted against Kent RO. Here, the court noted that Kent RO had not launched fans under KENT before the suit was filed. It also noted that Kent RO itself had pleaded that use of the same mark for fans would lead to confusion. The court stated that ordinarily there can be only one proprietor of a mark for a product and that, at least prima facie for fans, that position lay with Kent Cables. On that basis, the court found no error in the Single Judge’s decision refusing Kent RO from using KENT for fans at the interim stage.
Finally, the court considered the scope of appeal and stated that an appellate court does not lightly interfere with a discretionary interim order passed by a Single Judge. It said that interference is warranted only where the order is arbitrary, capricious, perverse, or contrary to settled principles of law. The court found no such defect in the impugned order and therefore refused to interfere.
Findings
The court held that:
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- at the prima facie stage, Kent Cables had shown earlier adoption of KENT, prior use of KENT for fans, and a stronger passing off case in relation to fans.
- Kent RO did not have trademark registration for fans and could not establish infringement merely by relying on Class 11 registration for water purifiers.
- classification of goods under the Trade Marks Act is meant for registration purposes and does not by itself determine whether goods are similar or cognate.
- fans do not become allied or cognate goods to water purifiers or air purifiers merely because they fall in the same class.
- Kent Cables had shown prior use of KENT for fans at least from 2009, which attracted protection at the interim stage.
- Kent Cables’ expansion from wires, cables, and switches into fans could prima facie be seen as a natural progression of its business.
- Kent RO had acquiesced in Kent Cables’ use of KENT for fans because it knew of that use, opposed the application, issued a cease and desist notice, and still did not take timely action.
- Kent RO was not entitled to interim injunction against Kent Cables because it failed to satisfy the requirements of prima facie case, balance of convenience, and irreparable harm.
- the interim restraint against Kent RO from manufacturing and selling fans under KENT was justified at this stage.
- the appellate court would not interfere with the Single Judge’s discretionary interim order unless it was arbitrary, perverse, capricious, or contrary to settled law, and no such ground was made out.
- the appeals were dismissed and the observations in the judgment were only prima facie and would not bind the final trial.
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Case Citation: Kent Ro Sys. Ltd. v. Kent Cables Pvt. Ltd., FAO(OS)(COMM) 141/2023 & FAO(OS)(COMM) 142/2023, Del. High Ct., decided on March 11, 2026. Available on: https://indiankanoon.org/doc/73270760/
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels