India: Extent of estoppel in an infringement suit against a cited mark
29 August 2023
On July 18, 2023, the matter of Zenith Dance Institute Pvt. Ltd. v. Zenith Dancing and Music was presented before a Single Judge Bench. The court opined that the plaintiff, Zenith Dance Institute Private Limited was entitled to interlocutory injunctive relief as the marks of the defendant, Zenith Dancing and Music, were infringing the plaintiff’s registered marks within the meaning of Section 29(2)(b) of the Trade Marks Act, 1999. The issue arose between the parties over the use of the mark “ZENITH” by the latter for its dancing institutes, which was the same business the plaintiff was in.
Previously on January 22, 2021, the court had passed an ex-parte ad interim order restraining the defendant from using the mark “ZENITH” or any such deceptively similar mark for its goods or services. Thereafter, the defendant filed for vacation of the said interlocutory order.
The plaintiff at the outset, laid out that the proprietor having a passion for dance, had opened a dance institute in 1997. Thereafter, the registration for marks 
and “ZENITH ARTS” were obtained on June 7, 2007, and April 25, 2004, both claiming use from April 1, 1997. Since then, the plaintiff had been engaged in providing education in relation to various forms of dance. However, in May 2014, the plaintiff came across the defendant’s registration for its mark 
in Class 41, in relation to music and dance institutes. Post the plaintiff applying to the Intellectual Property Appellate Board (IPAB) for rectification of the Register by removal of this mark under Section 57 of the Trade Marks Act, the defendant’s mark was removed from the Register. However, despite this, the defendant continued to run four dance studios in Delhi, under the variant marks 
and 
. Considering this, the plaintiff contended that since the prominent element of these marks remained to be “ZENITH” and as the 
logo from the removed mark was still being used in these iterations, the defendant was still infringing the plaintiff’s registered trademarks by running dance institutes under these marks.
In its defence, the defendant firstly argued that the plaintiff was ipso facto disentitled to any equitable injunctive relief, as it had come to the court with unclean hands, for it had not revealed how the defendant’s mark had been one of the cited marks in the first examination report (FER) issued against the plaintiff’s then-application for its mark ZENITH ARTS. It was also highlighted how the plaintiff had argued that its mark was different visually and identically from the cited marks. Therefore, the defendant contended that the plaintiff could not be allowed to take up the contradictory stance on the defendant’s mark being deceptively similar to its mark just for the sake of these infringement proceedings.
With regards to whether the plaintiff could be estopped from instituting an infringement suit basis the defendant’s marks being deceptively similar to its registered marks now, when it had taken a contradictory stance in its response against the FER issued against its mark ZENITH ARTS, the court held that the enunciation of law as laid out in the case Raman Kwatra v. K.E.I. Industries Ltd. would apply mutatis mutandis to the facts of the present case. The law laid therein was that “if the impugned mark of the defendant had been cited against the mark asserted in the plaint at the time when the plaintiff had applied for registration thereof, and the plaintiff, in order to obtain registration, had pleaded that the two marks were not so similar as to result in likelihood of confusion or deception, then the plaintiff could not, in infringement proceedings, seek to injunct the very same cited mark of the defendant by pleading that it was confusingly or deceptively similar to the plaintiff's mark”.
Furthermore, the court also relied on the principle of “approbate and reprobate”, as provided in the judgement Karam Kapahi v. Lal Chand Public Charitable Trust¸ which simply means that no party can accept and reject the same instrument. Therefore, the court rejected the plea of confusing or deceptive similarity between the defendant’s mark and the plaintiff’s mark “ZENITH ARTS”.
The court then assessed the extent to which the aforesaid estoppel would apply, opining that as per the principles enunciated in the Raman Kawatra case, the estoppel against the plaintiff would apply only to the extent of the right of the plaintiff to assert that the defendant’s mark was confusingly or deceptively similar, or infringed the plaintiff’s registered mark “ZENITH ARTS”, but not beyond that. For the two marks and of the defendant, the court held that the word “Zenith” was the distinctive feature of both the plaintiff’s and the defendant’s marks and both were being used to provide education in dance. This would confuse the mind of a customer of average intelligence and imperfect recollection. Furthermore, the court opined that since the defendant had continued to use the /ZD logo which was a prominent feature of the invalidated device mark in its two later marks, it had exposed its later device marks/logos to vulnerability on the ground of infringement.
Lastly, the court rejected the defendant’s plea that “Zenith” was publici juris, and a common English expression over which the plaintiff could not claim a monopoly. It was held that the word could not be regarded as publici juris or as descriptive of the particular services of dance education provided under it.
The court, therefore, ruled in favour of the plaintiff, as the defendant’s marks infringed the registered marks of the plaintiff within the meaning of Section 29(2)(b) of the Trade Marks Act. The ad interim injunction passed previously by this court was made absolute.
In this case, the court evidently considered the principle of estoppel in pais, or equitable estoppel i.e., a “rule of equity, by which a person may be precluded, by way of his actions, or conduct, or silence when he has to speak, from asserting a right which he would have otherwise had”. The court not only disallowed the plaintiff from executing a volte-face by bringing an infringement action against the very same mark of the defendant that it had priorly submitted not being deceptively similar with but also by emphasizing that the principle of estoppel must be restricted to its legitimate boundaries. Thus, the plaintiff could be estopped from claiming deceptive similarity with any other marks of the defendant.
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