The Delhi High Court has recently dealt with the captioned issue, in a judgment rendered on 6th November, 2019 in Vivek Kochher & Anr. vs. KYK Corporation, Japan and Ors. Our firm, Adwitya Legal LLP acted for the Defendants, M/s KYK Corporation, Japan in the matter.

In this case, the Plaintiffs Vivek Kochar & Vineet Kochar were using the mark “KYK” in India, and had sued KYK Corporation, Japan, Metro Bearing Company, New Delhi and Capital Machinery Company Delhi, from infringing mark ‘KYK’. The suit was defended by KYK Corporation, Japan alone, who had also filed a counterclaim seeking to restrain the Plaintiffs from using the mark “KYK”.

We acted for the Defendants in the matter, and it was our case, that the Defendant was a prior user marketing its goods in USA as early as in 1953. The registration of the mark was granted to the Defendant in Japan in 1969 itself, and had also applied for registration of mark “KYK” in India, the advertisement having been published on 1st August, 2008 and no opposition filed till date of filing Written Statement (14.09.2009).

A Key contention which we had was, that the Defendant no. 1 had applied to the IPAB for cancellation of registrations in favour of the Plaintiffs and the IPAB had cancelled two registrations by the Plaintiffs on 10.02.2012. Even the Writ Petition filed by the Plaintiffs against this order of the IPAB dated 10.02.2012 has been dismissed vide judgment dated 3.11.2017, in view of which the IPAB’s order had attained finality. 

Both the IPAB as well as the High Court, under the Writ Petition had observed, that the Plaintiffs had failed to show use prior to 2005.

The primary contention of the Plaintiffs on this issue was that IPAB is not a trial court and no evidence is led before the IPAB. The High Court, in the present suit, is capable of taking its own decision on findings of fact, irrespective of findings of IPAB as that is a mere summary procedure.

After considering the rival submissions of both parties on various issues, The Ld. Single Judge observed as below:

“Once IPAB has been constituted as a specialized fora to determine the same aspect as has arisen for adjudication in this suit and it is not the case of the plaintiff that the IPAB was not empowered to determine the said question, in my view, the factual finding of the IPAB, as also upheld by this Court, even though not in a suit, cannot be ignored in the decision of this suit. Significantly, the plaintiffs before the writ Court also did not seek any clarification that the dismissal of the writ petition upholding the factual findings of the IPAB should not come in the way of the determination underway in this suit. 

Further, after relying on various case laws, the Ld. Single Judge also observed, that it has been,

“held that the final order in the rectification proceedings would bind the parties and the Civil Court has to dispose of the suit in conformity with such final order. Once the outcome of IPAB, affirmed by this court, on the issue of validity of registration is binding on this court, so would the reasoning on the basis of which the said outcome flowed would be binding. Thus it is not open to the plaintiffs to, in this suit, seek a finding on its claim for use of the trademark of which registration was sought and granted, inconsistent with the finding of the IPAB, affirmed by this court.”

Even with regard to the issue of Trans-Border reputation, IPAB’s finding was said to bind the High Court.

In view thereof, it was observed that the Plaintiffs were not entitled to any of the reliefs claimed, and the Defendant no. 1 was automatically entitled to its counterclaim.

Bench: Justice Rajiv Sahai Endlaw


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