In a fresh setback for Kirloskar Brothers Ltd (KBL), the Bengaluru Commercial Court removed the company from a trademark infringement suit over the ‘Kirloskar’ brand, and instead allowed Kirloskar Proprietary Ltd (KPL) to join the case as a plaintiff.

The dispute centres on who holds the original ownership and usage rights of the ‘Kirloskar’ trademark. Kirloskar Brothers argued that the trademark was originally its and later assigned to KPL through a family settlement, with an understanding that KBL could continue using it. KPL, however, maintained it can revoke the agreements, alleging that KBL has breached its terms.

KBL is likely to challenge the order before the Supreme Court, said a person aware of the matter.

Legally, Kirloskar Proprietary is the owner of the ‘Kirloskar’ brand while KBL is a registered user. KPL filed a petition seeking to transpose itself as a petitioner in the matter instead of KBL.

The case began in March when KBL filed a suit against Solid State Systems Pvt. Ltd alleging trademark infringement and obtained an ex-parte injunction. However, KBL had filed the case without KPL’s knowledge or consent.

Upon discovering the suit, KPL moved for transposition as the rightful plaintiff. Soon after, KBL attempted to withdraw the case, relying on an affidavit from Solid State Systems denying any infringing activities.

The Bengaluru court held that KPL, as the registered proprietor of the ‘Kirloskar’ trademark, had superior legal rights to it over KBL.

“KPL has every right to oppose the withdrawal and transpose as plaintiff and continue the suit against defendant No.1 (Solid State Systems),” the court said in its 60-page order. “Being registered owner (KPL) has got a strong case to agitate and a bona fide and genuine interest in protecting the trademark ‘Kirloskar’,” it added.

Forum shopping

“It is also contended that in a complete misuse of the machinery of the courts, the plaintiff (KBL) has indulged in ‘blatant forum shopping’ and is repeatedly trying to usurp the ownership of KPL by unilaterally and without the right and authority filing the third party infringement actions and create a false record and impression of ownership of plaintiff over the Kirloskar marks,” the court said in its order.

Forum-shopping refers to the practice of deliberately filing a lawsuit in a court or jurisdiction that is expected to provide a more favourable outcome, often by exploiting differences in laws or judicial procedures between available courts.

The Bengaluru court said: “There is some fishy in the affidavit filed by the defendant No.1 and in the memo for withdrawal filed by the plaintiff (Kirloskar Brothers). There are double standards on the part of KBL in contesting the proceedings. Accepting KBL’s contention that no infringement occurred would mean KBL had filed a false suit on oath.”

The court’s ruling marks the second judicial pronouncement against KBL this year, after the Calcutta High Court earlier this year took a similar view in a parallel dispute involving the same parties.

A KPL spokesperson said “the order underscores how repeated litigation of this nature driven by Kirloskar Brothers without regard to the established ownership rights not only lacks legal merit but risks draining shareholder resources in pursuit of other mala fide disputes”.

Recently, the Bombay High Court upheld KPL’s trademark rights and said it was entitled to grant licences to its member companies in accordance with the company’s articles of association.

The Pune District Court had initially granted KBL interim relief, preventing KPL from terminating trademark agreements and using the ‘Kirloskar’ brand. However, this was later temporarily stayed by the Bombay High Court.

On Friday, shares of Kirloskar Brothers fell 2.13% to end at ₹1,944.80 apiece on NSE, while the benchmark Nifty 50 index lost 0.85%.