Court upholds prior user rights over subsequent trademark registration, restrains defendant from using KIEHBERG mark, and decrees summary judgment due to defendant's non-appearance.
In a landmark decision dated October 13, 2026, the Delhi High Court, presided over by Justice Purushaindra Kumar Kaurav, delivered a decisive judgment in the commercial trademark dispute between Kiehberg GmbH and Capital Airgun Manufacturers Private Limited. The suit involved allegations of passing off under the Trade Marks Act, 1999, with the plaintiffs asserting prior use and goodwill in the trademark "KIEHBERG" related to shooting equipment and accessories.
The plaintiffs, Kiehberg GmbH (a German company) and its Indian associate, initiated the suit seeking a permanent injunction restraining the defendant from manufacturing, selling, or advertising products under the identical trademark "KIEHBERG" or any deceptively similar mark. The plaintiffs claimed continuous and uninterrupted use of the mark in India since March 21, 2012, supported by substantial sales turnover of approximately INR 5.45 billion and significant promotional investments.
The defendant had obtained registration of the mark "KIEHBERG" in Class 13 on a proposed-to-be-used basis on September 11, 2023, but had not yet launched products under this mark. The plaintiffs contended that this registration was made in bad faith, intending to pass off their goods as those of the plaintiffs. Further, the defendant failed to appear or file a written statement despite summons and injunction orders, leading the Court to proceed ex parte.
The Court thoroughly examined the evidence, including the plaintiffs' prior use, goodwill, promotional efforts, and the defendant's registration timeline. Relying on Supreme Court precedents such as S. Syed Mohideen v. P. Sulochana Bai and N.R. Dongre v. Whirlpool Corporation, the Court reiterated that the rights of prior users prevail over subsequent registrations under Sections 27(2), 34, and 57 of the Trade Marks Act, 1999. The Court emphasized that registration does not bar an action for passing off and that a quia timet (anticipatory) injunction is maintainable where there is a real and imminent threat of infringement.
The Court also invoked the summary judgment provisions under Order XIII-A of the Civil Procedure Code, 1908, applicable to commercial disputes, concluding that the defendant had no real prospect of defense due to non-appearance and lack of rebuttal evidence. The Court granted a permanent injunction restraining the defendant from using the "KIEHBERG" mark or any deceptively similar mark and ordered the delivery up of infringing materials for destruction. Notably, the Court also cancelled the defendant's trademark registration in a separate order, removing any statutory right the defendant might have claimed.
The judgment highlights the judiciary's firm stance on protecting established trademarks and commercial goodwill, ensuring that malicious registration attempts do not undermine lawful prior use. The ruling also underscores the effectiveness of summary judgment mechanisms in expeditiously resolving commercial disputes where defendants fail to engage in the process.
Bottom Line:
Trade Marks Act, 1999 - Passing off - Prior user rights prevail over subsequent registration - Quia timet action maintainable where defendant obtained registration of identical mark on proposed-to-be-used basis and material showed real and imminent threat of launch of identical goods - Suit in commercial dispute can be summarily decreed under Order XIII-A CPC where defendant, despite service, failed to file written statement and had no real prospect of defence.
Statutory provision(s):
Trade Marks Act, 1999 Sections 27(2), 34, 57; Civil Procedure Code, 1908 Order XIII-A Rules 3 and 6(1)(a), Order VIII Rule 10; Commercial Courts Act, 2015
Kiehberg GmbH v. Capital Airgun Manufacturers Private Limited, (Delhi) : Law Finder Doc Id # 2999491
