Calcutta high court allows Kirloskar Proprietary to become plaintiff in trademark case | Company Business News

Mumbai: The Calcutta high court has allowed Kirloskar Proprietary Ltd (KPL) to become the plaintiff in the trademark infringement case involving the Kirloskar brand. 

KPL was a defendant in the case which was originally filed by Kirloskar Brothers Ltd (KBL) to protect four registered trademarks under the ‘Kirloskar’ name.

The high court’s 27 January ruling now places KPL at the forefront of the case, allowing the company to assert its rights more effectively.

Following the high court’s ruling, KBL has filed a special leave petition before the Supreme Court, challenging the transposition order.

KBL had claimed that KPL, the registered proprietor of the trademarks, failed to take adequate legal action against third-party infringements. As a result, KBL, in its capacity as the registered user of these marks, filed the lawsuit.

KBL said it has a stronger right than a non-exclusive user and sought to assert common law rights over the “Kirloskar” mark. It also argued there is no legal provision to transpose it as a defendant and move KPL to the plaintiff side.

KPL countered that while the lawsuit is about protecting the “Kirloskar” mark, it could misrepresent KBL’s actual rights. KPL also denied the accusation that it did nothing to stop the infringements.

Court’s rationale for transposition

Justice Ravi Krishan Kapur highlighted the importance of ensuring fair adjudication of the central dispute: the protection of the “Kirloskar” marks.

According to the order, both KBL and KPL have a shared interest in protecting the trademarks from third-party infringers. The court emphasized that transposing KPL from the defendant category to the plaintiff category would not alter the nature of the suit or cause prejudice to any of the parties involved.

“Admittedly, both parties seek to protect the mark ‘Kirloskar’. This is the real and only object of the suit. Both parties are projecting the same claim against the remaining defendants. The success of one is the success of the other,” the court said.

“Undoubtedly, KPL has a superior right of ownership and legal standing than that of KBL as registered user. KPL also has a genuine interest in this dispute,” justice Kapur noted in the order.

The court further noted that the transposition ensures the suit would not serve any collateral purposes or oblique intent to prejudice KPL’s rights. In light of this ruling, the court rejected KBL’s request for a stay on the order, paving the way for KPL’s transposition as the plaintiff in the case.

Implications

This trademark infringement case is not the only legal battle between KBL and KPL over the use of the “Kirloskar” mark. The parties are also involved in litigation in the Pune civil court and the Bombay high court, where KBL asserts its right to use the “Kirloskar” mark under various user agreements.

Legal experts have weighed in on the decision, suggesting that the transposition will allow KPL, as the rightful registered proprietor of the trademarks, to take the lead in defending the “Kirloskar” brand. Raheel Patel, a partner at Gandhi Law Associates, noted that the ruling places the trademark dispute in the hands of the party with the strongest claim.

“This order ensures that KPL, as the rightful owner, now has the standing to actively protect its trademarks and take legal action against infringing parties. The court’s decision also prevents KBL from using the lawsuit to advance its own interests, ensuring that the case remains focused on protecting KPL’s legitimate trademark rights,” Patel explained.

Patel further emphasized that KPL now has a clearer path to pursue injunctive relief and other legal remedies, allowing it to directly address unauthorized use of its trademarks.

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Next steps

The Supreme Court is expected to consider the petition on 7 February for admission and possible interim relief.

Meanwhile, the case will proceed with KPL now acting as the plaintiff, with the high court granting liberty to KPL to seek costs if necessary.

Ketan Mukhija, senior partner at Burgeon Law said this order strengthened KPL’s legal standing. “It enhances the enforceability of relief, ensuring more effective protection of the ‘Kirloskar’ brand from infringement while avoiding internal conflicts that could weaken the case.”

Queries sent to KBL and KPL for comment on the ruling went unanswered at the time of publication.

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