Prior use and imminent threat sustain a quia timet passing-off injunction despite later registration.

Plaintiff No. 1, a German company, and Plaintiff No. 2, its Indian business partner, claimed continuous use of the KIEHBERG mark in India since 21 March 2012 for shooting equipment and accessories.

The defendant applied to register the identical mark in Class 13 on a “proposed to be used” basis in September 2023; the mark was registered in May 2024.

The plaintiffs alleged that the defendant sold similar goods through its website and intended to launch them under KIEHBERG.

They brought a quia timet passing-off action.

The defendant was served, but did not appear or file a written statement; its right to file one was closed and it was proceeded ex parte.

The plaintiffs sought summary judgment and did not press their claims for accounts and damages.

1. Whether the plaintiffs were prior users of KIEHBERG with goodwill sufficient to sustain a passing-off claim, notwithstanding the defendant’s registration of the mark.

2. Whether the material established a real and imminent threat of use of the mark sufficient to justify a quia timet injunction.

3. Whether the claim could be summarily decreed when the defendant had no real prospect of successfully defending it and no compelling reason existed for a trial.

Under Order XIII-A Rules 3 and 6(1)(a) CPC, applicable to commercial disputes, the Court may grant summary judgment where the defendant has no real prospect of successfully defending the claim and there is no compelling reason for oral evidence; the procedure is not automatic merely because the defendant has defaulted.

Order VIII Rule 10 CPC is permissive, and the Court must still be satisfied that the plaintiff has established its case, as stated in Balraj Taneja v. Sunil Madan and Asma Lateef v. Shabbir Ahmad.

Sections 27(2) and 34 of the Trade Marks Act, 1999 preserve passing-off rights and protect prior users against interference by a later registered proprietor; S. Syed Mohideen v. P. Sulochana Bai and N.R. Dongre v. Whirlpool Corporation recognise the priority of prior-user rights.

A quia timet action requires material indicating an intention to use the impugned mark beyond the mere filing of an application; a likelihood of confusion and damage may suffice without proof of actual damage.

The plaintiffs’ invoices, sales certificate, website records and other documents supported continuous use from 2012 and established goodwill, while the defendant’s application was made in 2023 on a proposed-to-be-used basis.

Its later registration did not defeat the plaintiffs’ prior-user and passing-off rights.

The Court found the threat more substantial than a bare registration application: the defendant dealt in the same categories of goods, had registered the identical mark, and circumstances indicated awareness of the plaintiffs’ mark.

The identity of the marks, goods and consumer group established likely confusion and damage, making the apprehended launch a real and imminent threat.

The unrebutted record showed no real prospect of a successful defence and no compelling reason to require a trial.

It permanently restrained the defendant and those acting in concert with it from dealing in products under KIEHBERG or a deceptively similar mark so as to pass off its goods as the plaintiffs’ goods, and ordered delivery up of materials bearing the mark for destruction or erasure.

The claims for rendition of accounts and damages were dismissed as not pressed.

The suit and pending applications were disposed of.