Introduction:
The Delhi High Court in the case of KRB Enterprises & Ors. v. M/S. KRBL Limited (FAO (COMM) 69/2024) clarified important aspects regarding the use and protection of trademarks under the Trademarks Act, 1999. The dispute arose between KRB Enterprises, a partnership firm engaged in the manufacturing of rice and related products, and KRBL Limited, the owner of the famous ‘India Gate’ rice brand and the registered trademark ‘KRBL’, accompanied by a device of paddy. KRBL Limited asserted its rights over the trademark, claiming continuous use since the year 2000. Conversely, KRB Enterprises contended that ‘KRBL’ was merely the corporate name of the Respondent and that the Respondent had not used the trademark on goods, an essential requirement under trademark law for protection. KRB further argued that the Respondent’s application for withdrawal or cancellation of the trademark constituted abandonment, thus invalidating any rights in the mark. The Appellants maintained that trademark protection is contingent on “actual use” of the mark on goods in physical form and alleged that the Respondent’s withdrawal application was a clear indication of their intention to abandon the mark.
Arguments:
The arguments of the parties reflected differing interpretations of trademark use and the conditions for maintaining protection under the law. The Appellants relied heavily on the requirement of “actual use” physically on goods to deny protection, while the Respondent argued for a broader interpretation under Section 2(2)(c) that protects marks used in any relation whatsoever to goods, including advertising and branding efforts. On abandonment, the Appellants contended that the withdrawal of the trademark application amounted to relinquishing rights, whereas the Respondent demonstrated prompt corrective action, evidencing non-abandonment. The Court sided with the Respondent on both counts, emphasising the importance of protecting trademark rights even when use is not physical on the goods and requiring clear evidence of intent to abandon before stripping protection.
Judgement:
The Court examined Section 2(2)(c) of the Trademarks Act, which defines “use of a mark” about goods, emphasising that such use need not be confined to physical application on the goods themselves but may extend to “any other relation whatsoever” to the goods. The bench of Justices Navin Chawla and Shalinder Kaur held that the use of a trademark can include advertising and other related forms, thereby broadening the scope beyond traditional physical use. The Court accepted KRBL Limited’s contention that the mark ‘KRBL’ with the device paddy had been in continuous use since 2000 and was protected as a registered trademark. The Respondent produced substantial documentary evidence demonstrating its use of the trademark on goods and in advertising campaigns, reinforcing its claim of continuous usage.
Regarding the issue of abandonment, the Court observed that mere filing of an application for withdrawal or cancellation of a trademark is not conclusive proof of abandonment. It underscored the principle that an intention to abandon must be active and unequivocal. In this case, the Respondent’s withdrawal of its trademark application was due to poor legal advice, and it immediately filed a fresh application for registration the following day. This prompt action was taken as clear evidence of the intent not to abandon the trademark, leading the Court to dismiss the Appellant’s claim of abandonment. Further, the Court rejected the Appellant’s argument that the trademark was just a corporate name without any use on goods. The Respondent’s documentation and evidence of advertisement and marketing efforts related to the mark established the requisite “use” in connection with goods under the Trademarks Act.
On the similarity issue, the Court observed that the Appellants’ mark ‘KRB’ bore a close resemblance to the Respondent’s registered mark ‘KRBL,’ which could cause confusion among consumers and potentially dilute the distinctiveness of the Respondent’s mark. This was a key factor in upholding the injunction against the Appellants. The Court thus affirmed the decision of the Commercial Court, which had earlier restrained the partnership firm from infringing the Respondent’s trademark rights.
The Delhi High Court’s judgment in this case reinforces the principle that trademarks can enjoy protection even if not physically used on goods, so long as they are used in connection with the goods in some other manner. It also clarifies that abandonment requires clear and active intent, not mere procedural withdrawals or administrative actions. The decision upholds the importance of protecting well-established trademarks against infringement and confusingly similar marks, recognising the role of advertising and branding as legitimate use. This judgment serves as a significant precedent in trademark jurisprudence, especially concerning the evolving forms of commercial use in modern marketing and product identification strategies.