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Prosecution History Estoppel and Trade Mark Infringement: Recent Developments

Updated: May 19, 2023

Recently, the doctrine of prosecution history estoppel, which finds its roots in patent infringement proceedings, has been seeing frequent application in trade mark infringement proceedings as well. While estoppel does not find reference in the trade mark statute, the Indian Evidence Act, 1872 defines estoppel as “when one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing[1]. This doctrine, which often serves as a strong arrow in a litigant’s quiver of arguments, is based on the premise that parties cannot take a stance which is completely contrary to their submissions as regards the same trade marks made in earlier proceedings. As such, an understanding of the numerous ways in which courts have been applying this doctrine becomes essential in order to ensure that trade mark rights are not sacrificed based on frivolous submissions.

In SK Sachdeva & Anr. v. Shri Educare Limited & Anr.[2], the respondents/plaintiffs had filed a suit against the appellants/defendants alleging infringement of its earlier mark, SHRI RAM. The appellants/defendants preferred an appeal against the interim injunction granted by the single judge of the Delhi High Court on the ground that the respondents/plaintiffs are estopped from enforcing their rights in the mark SHRI RAM owing to its submissions at the Trade Marks Registry (“Registry”). As per the appellants/defendants, the respondents/plaintiffs had, in their response to the Examination Report issued in relation to their trade mark application for the mark SHRI RAM EDUCARE, in which the Registry had cited several SHRI RAM marks, categorically stated that SHRI RAM, being the name of a Hindu deity, could not be monopolized by one party and was common to trade. Thereafter, the respondents/plaintiffs withdrew this reply ahead of filing the instant suit and did not disclose these material facts to the court. The Division Bench of the Delhi High Court, taking into consideration, the respondents/plaintiffs’ submissions at the Registry and misconduct in withdrawing the reply and concealing material facts from the court, held that the respondents/plaintiffs were now estopped from making submissions contrary to their stance before the Registry, and vacated the injunction.

In the recent landmark case of Raman Kwatra & Anr. v. M/s KEI Industries Ltd.[3], the Division Bench of the Delhi High Court set aside an injunction on the ground that the plaintiff/respondent had made an assertion in its reply to the Examination Report issued in relation its KEI Device mark, that it is dissimilar to the defendant/appellant’s mark KEI which was cited in the report as a pre-existing mark. Therefore, the court was of the opinion that, the plaintiff/respondent is not entitled to obtain an interim injunction against the proprietor of the cited mark, on a completely contrary ground that the marks are deceptively similar. The Division Bench set aside the injunction holding that “statements made ‘without prejudice’ and to reserve rights to avail legal remedies before the Trade Marks Registry do not entitle a party to make a contrary assertion in Court.

Further, in M/s Lightbook & Anr. v. Pravin Shriram Kadam & Ors.[4], the Delhi High Court held that a plaintiff cannot, at the prima facie stage, escape the consequences of submissions made in other proceedings. The defendant, in this case, had filed a petition for rectification of the plaintiff’s registration for the mark LIGHTBOOK at the Registry, on the basis of its prior rights in the mark LIGHTBOOK. The court observed that, the plaintiff had, in its counter statement to the rectification petition, not only asserted that there is no possibility of confusion between the rival marks, but also that there did not exist any such confusion in the market. Accordingly, the plaintiff was estopped from taking a contrary stand, and did not grant an interim injunction. Further, the court opined that omission on part of the plaintiff to place this reply on record ipso facto disentitled the plaintiff to claim any relief at the interim stage.

From a review of the above cases, it is clear that courts are using the broadest possible interpretation of the doctrine of estoppel while applying it to trade mark infringement suits. For instance, even in cases where the plaintiff has not made any submissions as regards the defendant’s marks, the plaintiff’s arguments in relation to identical/similar marks have also been deemed to constitute estoppel. It is imperative, therefore, that while drafting pleadings, be it responses to Examination Reports, Notices of Opposition, Replications, etc., careful and considered arguments have to made, keeping in mind the long-term implications of the stances taken and not just short-term results. Overall, the active use of this doctrine in trade mark infringement proceedings has laid a path to conscious and well-thought out filings at the prosecution level. The doctrine not only holds a person accountable for any frivolous claims or false representations made by them, but also ensures that relevant documents are placed on record in every proceeding. This will, in the long run, help reduce frivolous filings both at the Registry and in courts.

[1] Section 115, Indian Evidence Act, 1872, accessible at [2] FAO(OS) 531/2014 & CM Nos. 20873/2014, 4500/2015 & 14112/2015. [3] FAO(OS)(COMM) 172/2022 [4] CS(COMM) 56/2022

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