Prior user of a trademark for specific goods prevails over a subsequent user for the same goods despite the latter's reputation in other product categories.

The Appellants (Kent RO) adopted the mark ‘KENT’ for oil meters in 1988

Appellants expanded into water purifiers in 1999.

The Respondents (Kent Cables) adopted ‘KENT’ for electrical wires and cables in 1984, obtaining registration in 1986.

In 1998, Respondents applied for ‘KENT’ in Class 11 for fans.

Appellants opposed this in 2007 and issued a cease-and-desist notice in 2011 but took no further legal action until 2022.

Both parties filed cross-suits (CS(COMM) 596/2022 and 613/2022) seeking to restrain the other from using ‘KENT’ for fans.

The Single Judge restrained the Appellants from manufacturing fans and refused to injunct the Respondents.

The court applied Section 29 of the Trade Marks Act, 1999, which defines infringement through identity/similarity of marks and goods.

It relied on Section 34 of the Act, which protects the vested rights of prior users against registered proprietors.

The court invoked the principle from Vishnudas v. Vazir Sultan Tobacco Co. Ltd., establishing that registration in a specific class does not grant a monopoly over all goods within that class.

Furthermore, it followed the appellate standard in Wander Ltd. v. Antox India (P) Ltd., which restricts interference with discretionary interlocutory orders unless they are perverse or contrary to law.

The Court found that while the Appellants possess registrations in Class 11, these are specifically for water purifiers and do not automatically encompass fans.

The Respondents were identified as the prior adopters of ‘KENT’ (1984) and successfully demonstrated prima facie use of the mark for fans since 2009 through utility approvals and invoices.

The Court reasoned that moving from cables to fans constitutes a "natural progression" of business.

Crucially, the Appellants' knowledge of the Respondents' use since 2007/2011, followed by a decade of silence, amounted to acquiescence, disentitling them to discretionary relief.

The Court noted that since the Appellants had not yet commercially launched fans, the balance of convenience favoured the Respondents.

It held that the Respondents, as prior users of the mark for fans, are protected under Section 34.

The Appellants failed to establish a prima facie case for infringement or passing off due to the lack of registration for fans and their prior acquiescence.

Consequently, the Appellants remain restrained from manufacturing or selling fans under the 'KENT' mark pendente lite.