The doctrine of prosecution history estoppel, a concept both subtle and significant in patent litigation, operates on the principle that a trademark owner cannot assert rights or claims that are at odds with assertions made during the trademark registration process (prosecution). During the registration process, trademark applicants may make specific statements, disclaimers, or amendments regarding their mark and the goods or services it covers. In essence, prosecution history estoppel prevents a party from deviating from the claims and representations made by it when seeking protection for their mark. This can have far reaching implications for both trademark owners in terms of enforcing their rights and avoiding excessive claims, as well as opponents in terms of providing a significant means to challenge assertions that may exceed the agreed-upon scope of protection.
Prosecution history estoppel, which essentially provides that the scope of trademark protection should be limited to what was originally claimed and approved, is not explicitly mentioned in the Trade Marks Act, 1999 (Act), India's central legislation for registration and protection of trademarks. This is, however, reflected in various procedural and substantive provisions. During registration, an applicant seeking registration of a mark is required to provide clear and accurate description of the marks and the goods or services it intends to protect. Under the provisions of the Act, registration of a mark may be opposed by the examiner/third parties on the absolute grounds under Section 9 and relative grounds under Section 11, wherein registration can be refused to ensure that the trademark application does not conflict with existing marks. These grounds can be countered by the applicant and are crucial in deciding the scope of the trademark.
Disclosure of these statements is also required by the Courts during infringement disputes, a practice rooted in the doctrine of clean hands, which refuses relief to a party that has approached the Court with 'unclean hands' – fraud, misrepresentation, or incomplete information – thereby ensuring that parties cannot benefit from their own misleading or dishonest conduct. In Raman Kwatra & Anr v. KEI Industries Ltd 2023 SCC OnLine Del 381, the Delhi High Court overturned an interim injunction granted to the plaintiff after finding that the plaintiff had previously asserted, in response to the examination report (during prosecution proceedings), that its KEI device mark was distinct from the defendant's pre-existing KEI mark, only to later claim deceptive similarity to secure the injunction. The Court ruled that such assertions before the Trade Marks Registry, although made 'without prejudice to its rights and contentions', would not allow the plaintiff the right to make a contrary assertion, thereby precluding the plaintiff from seeking contradictory relief in Court, leading to the injunction being set aside.
Similarly, in Bata India Ltd v. Chawla Boot House 2019 SCC OnLine Del 81472, the Delhi High Court meticulously scrutinised the prosecution histories of both parties, uncovering significant contradictions in the defendants' claims. Leveraging these inconsistencies, the Court ruled in favour of the plaintiffs, underscoring its commitment to rejecting purported claims made during trademark prosecution if they are proven not to be genuine. In Mankind Pharma Ltd v. Chandra Mani Tiwari 2018 SCC OnLine Del 96783, the Delhi High Court injuncted the defendants from using the mark 'MERCYKIND'. The Court relied on Mankind Pharma's statements in its response to the examination report (during prosecution proceedings), which provided substantial evidence of their well-established family of trademarks featuring the suffix 'KIND', which had become distinctively associated with their company.
The application of the prosecution history estoppel is particularly significant when prosecution has been opposed on the following two grounds:
- Generic or descriptive terms: Trademarks containing generic or descriptive terms are barred from registration under Section 9(1)(a) & (b). However, when a user seeking to register a mark containing a generic or descriptive term defends the term to not be generic or descriptive, such user would be estopped in later asserting that a similar term used by another party is generic or descriptive. This principle, established in the landmark case of Automatic Electric Ltd v. RK Dhawan 1999 SCC OnLine Del 274, continues to be reinforced in modern cases.
- Classification of goods and services: During prosecution, an applicant may assert dissimilarity in goods/services from those covered by similar marks to overcome objections. However, this would limit the claimant's ability to assert similarity in goods/services against another rival mark.
There are two primary approaches to address this issue. One approach, adopted in Insecticides (India) Ltd v. Parijat Industries (India) (P) Ltd, 2018 SCC OnLine Del 97485, suggests that if the claimant's subsequent claim of infringement succeeds, the prior prosecution statements should simply be disregarded and the mark is deemed to have been misclassified. Alternatively, under the second approach, endorsed in Keller Williams Realty v. Dingle Buildcons Pvt Ltd 2020 SCC OnLine Del 5396, the claimant can be held to the statements asserted during prosecution (limiting the scope of the goods and services covered) in subsequent infringement proceedings. While the first approach enables statements made during prosecution, on the basis of which the mark was registered, to be simply disregarded as not binding, the second approach adopts the claimant's previous assertions as a defence against its infringement claims, binding him to his statements, thereby upholding the doctrine in the true sense.
While the principle fosters consistency in trademark disputes by preventing parties from deviating from their earlier statements, it introduces strategic complexities. Challenging every cited mark through opposition is often impractical due to the significant costs and time involved, particularly when swift remedies such as injunctions are sought in infringement cases. Additionally, the delay in processing applications can result in substantial market changes that affect enforcement.
Given the lack of statutory recognition of prosecution history
estoppel in India's trademark laws, recent cases in the country
have seen the Courts adopt either a thorough, investigative
approach akin to patent litigation, or a limited, statute-focused
approach without delving into the minutiae of prosecution history.
As judicial interpretations of prosecution history estoppel
continue to evolve, understanding the inherent nuances will be
crucial for achieving successful and sustainable outcomes in
trademark disputes.
Footnotes
1 2023 SCC OnLine Del 38
2 2019 SCC OnLine Del 8147
3 2018 SCC OnLine Del 9678
4 1999 SCC OnLine Del 27
5 2018 SCC OnLine Del 9748
6 2020 SCC OnLine Del 539
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