INTRODUCTION
The principle of prosecution history estoppel, initially used to determine patent infringement, has also found relevance in trademark infringement cases. In the context of trademarks, this doctrine prevents applicants from exploiting the amendment process to alter their infringement claims based on their previous submissions to the Trademark Registry during application or examination. This doctrine, a powerful tool in legal arguments, operates on the notion that parties should not contradict their earlier statements concerning the same trademarks in subsequent proceedings. Therefore, understanding how courts have applied this doctrine is crucial to protect trademark rights from being undermined by insubstantial arguments.
PRACTICAL IMPLICATION OF THE DOCTRINE OF TRADEMARK HISTORY ESTOPPEL
When applying for a trademark that includes a generic or descriptive term, the applicant cannot later claim in infringement proceedings that the defendant's use of the term is generic or descriptive. This principle also applies to the classification of goods and services. If, during the prosecution stage, the applicant asserts differences in goods or services compared to another mark, it could lead to misclassification. Moreover, if the applicant acknowledges a difference in goods or services among competing companies, it could undermine their infringement claims later on. This doctrine has been applied by Indian courts in trademark infringement cases, on instances where prosecution history has been explicitly referenced in judgments. The Delhi High Court in Lightbook & Anr. v. Pravin Shriram Kadam & Ors. CS (COMM) 56 of 2022 underscored that plaintiffs cannot escape the repercussions of their earlier submissions at the prima facie stage and further disqualified claim of the plaintiff regarding interim relief. Therefore, when drafting examination responses, it is advisable to consider the long-term business implications and the context of cited marks. For prior users, whether domestic or international, focusing on usage claims and evidence rather than emphasizing differences with cited marks can provide a robust defense, safeguarding your business's reputation against any attempts to damage its goodwill.
THE DOCTRINE OF PROSECUTION HISTORY ESTOPPEL IN TRADEMARK INFRINGEMENT: A LEGAL PERSPECTIVE
The recent judicial pronouncements by Indian courts have shed light on the application of the doctrine of prosecution history estoppel in trademark infringement cases. In the case of SK Sachdeva & Anr. v. Shri Educare Limited & Anr., the plaintiffs filed a lawsuit alleging that the defendants had infringed on their earlier trademark, SHRI RAM. The defendants appealed against the interim injunction granted by a single judge of the Delhi High Court. It was contended that the plaintiffs should be estopped from enforcing their rights to the SHRI RAM mark because of prior submissions made to the Trade Marks Registry in response to an Examination Report regarding their trademark application for SHRI RAM EDUCARE, which cited several SHRI RAM marks, the plaintiffs had asserted that SHRI RAM, being the name of a Hindu deity, could not be monopolized by a single entity and was common in trade. However, the plaintiffs later withdrew this reply before filing the current suit and failed to disclose these critical details to the court. Considering the plaintiffs' earlier statements to the Registry and their subsequent withdrawal and concealment of these facts, the Division Bench of the Delhi High Court ruled that the plaintiffs were estopped from taking a contrary position. Consequently, the injunction was vacated.
In the case of Keller Williams Realty, Inc. v. Dingle Buildcons Pvt. Ltd. & Ors.( 2020 SCC OnLine Del 539), the Delhi High Court ruled against the claimant's request for an ex-parte injunction against the defendants for using the 'KW' mark. The court partially based its decision on the prosecution history defence presented by the defendants. The court after hearing both the parties, concluded that the plaintiff, on May 20, 2013, stated in a response to the Trade Mark Registry that the business areas as advertising, business management, business administration, and office functions of the defendant were distinct from the plaintiff's business franchising/technical assistance in real estate brokerage. The defendants have not entered the plaintiff's business domain. Given this, and the plaintiff's previous lack of objection to the defendants using the "KW" mark for different business activities, the court found no grounds for the plaintiff to restrain the defendants now. The plaintiff must provide evidence of confusion and deception caused by the defendants using the "KW" mark in real estate development and construction to claim any relief for passing off.
In the case of Raman Kwatra & Anr. v. M/s KEI Industries Ltd. FAO(OS)(COMM) 172/2022, the Division Bench of the Delhi High Court overturned an injunction. The plaintiff/respondent had previously claimed in its response to an Examination Report regarding its KEI Device mark that it was dissimilar to the defendant/appellant's KEI mark, which was cited as a pre-existing mark. Consequently, the court concluded that the plaintiff/respondent could not obtain an interim injunction against the owner of the cited mark on the contradictory basis that the marks were deceptively similar. The Division Bench stated that "statements made 'without prejudice' to reserve rights to seek legal remedies before the Trade Marks Registry do not permit a party to assert the opposite in court.
In the recent dispute between Relaxo and HRX, the Delhi High Court, in the case of Relaxo Footwears Limited v. XS Brands Consultancy Private Limited & Ors. (2019 SCC OnLine Del 7515), refused to grant an injunction to the plaintiff. The court applied the doctrine of prosecution history estoppel regarding the use of the 'X' mark and has retaliated that "A perusal of the mark cited in examination of the plaintiff's registration show that there were a number of 'X' marks which were available on the Trade Marks Register including device marks. With regard to one of these device marks being used by Soccer International Pvt. Ltd., the plaintiff did enter into a settlement and agreed to co-exist. Even though the plaintiff's assertion is that they were not big players, it goes to show that the plaintiff had accepted the presence of other 'X' device marks in the market. This would dilute the plaintiff's unqualified stand that they were entitled to monopolise on the device mark 'X' with the stylization that it had adopted. There was no palpable difference between the plaintiff's 'X' mark and that used by Soccer International." The court agreed with Defendants and rules that since the Plaintiff has acknowledged the presence on of other "X" device marks in the market, it is now estopped from taking a contradictory stand.
The broader review of this jurisprudence indicates that, in resolving disputes between two or more trademarks, the court takes into account submissions made by the trademark holder during the prosecution and examination stages. This underscores the importance of crafting careful and deliberate arguments in pleadings, whether in response to Examination Reports, Notices of Opposition, or Replications. Arguments should be made with consideration of their long-term implications rather than focusing solely on short-term outcomes. Statements made during the prosecution stage should be backed by robust judicial precedents and evidence, providing the applicant with a solid legal foundation to defend and protect their mark against infringement.
CONCLUSION
The doctrine of prosecution history estoppel is a crucial legal principle in trademark infringement cases, ensuring consistency and integrity in the trademark registration process. By preventing applicants from altering their claims based on prior submissions to the Trademark Registry, this doctrine upholds the credibility of the trademark prosecution process and fosters fair competition. For trademark holders, it is vital to recognize the long-term implications of their submissions during prosecution. Pleadings should be well-considered, supported by substantial evidence and judicial precedents, to build a robust legal foundation for defending their marks against future infringement claims. The practical application of this doctrine in recent judicial pronouncements underscores its importance in maintaining the integrity of trademark law and ensuring that legal arguments remain consistent and credible throughout the prosecution and enforcement stages.
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