Switched Up and Suiting Up: The Kirloskar Trademark Dispute

The Hon’ble High Court of Calcutta in the case of Kirloskar Brothers Ltd. v. Mitra Trading [1] and Ors. has granted an injunction in favor of the Petitioner, safeguarding the well-known 'Kirloskar' trademark from deceptive use by unauthorized entities.

Background

The Petitioner, a leading manufacturer of engineering and fluid management solutions for large infrastructure projects, has been using the 'Kirloskar' mark since 1920. The mark has garnered immense goodwill and reputation in both domestic and international markets. The Respondent No. 5, a part of the Kirloskar Group, is the registered owner of the 'Kirloskar' trademark.

The dispute arose when the Petitioner discovered that Respondent Nos. 1 to 4 were selling borewell and submersible pump sets under the mark 'Kiloskar Gold Pumps' and 'Kiloskar Gold', which were deceptively similar to 'Kirloskar'. The Respondents failed to take any remedial measures despite receiving a cease-and-desist notice. This prompted the Petitioner to seek interim relief to prevent unauthorized use of the mark.

Court’s Findings:

• The Court addressed the transposition of parties during the proceedings. Kirloskar Proprietary Limited (originally Respondent No. 5) sought to be transposed from Respondent to Petitioner status. The original Petitioner, Kirloskar Brothers Ltd., had initiated the suit as a registered user of the trademark, arguing that it had taken action due to the inaction of Respondent No. 5. The Court allowed the transposition, recognizing that both parties shared a common interest in protecting the 'Kirloskar' mark. The Court further noted that as the registered proprietor, Kirloskar Proprietary Limited held superior rights compared to the Petitioner’s status as a registered user. The transposition did not alter the fundamental nature of the suit or prejudice any party’s rights.

  
  

• The Court held that the marks 'Kiloskar', 'Kirlosker', and 'Kiloskar Gold' were phonetically and visually similar to 'Kirloskar'. Such similarity was likely to cause confusion among consumers and dilute the distinctiveness of the well-established brand.

  
  

• Special Officers appointed by the Court conducted an inventory at the premises of Respondent Nos. 1 to 3, revealing a substantial quantity of impugned goods bearing the infringing marks. The fraudulent intent was further evidenced by the lack of proper packaging details on the infringing products.

  
  

• Respondent No. 1 argued that it was an authorized dealer and had been in business since 2006. However, the Court found no merit in this contention, as the sale of infringing products was evident from the seized invoices and stock inventory.

  
  

Court’s Directions:

• The Court granted an injunction restraining Respondent Nos. 1 to 4 from using the marks 'Kiloskar Gold Pumps', 'Kiloskar Gold', or any deceptively similar variations of 'Kirloskar'.

  
  

• The ad-interim injunction dated 26 April 2024 was confirmed, preventing further infringement.

  
  

• The Court reaffirmed the Petitioner's exclusive rights over the well-known 'Kirloskar' mark and prevented the Respondents from unfairly capitalizing on its reputation.

  
  

Conclusion

This case highlights the significance of trademark protection, particularly for well-known marks with longstanding goodwill. The judgment reinforces that deceptive similarity and fraudulent use will not be tolerated by courts, ensuring fair market practices and safeguarding consumer interests. Furthermore, the transposition of parties underscores the importance of procedural clarity in litigation, ensuring that the rightful trademark proprietor is positioned to enforce its rights effectively.

Reference:

1.  IP-COM/8/2024