Delhi High Court Dismisses Quantum Hi-Tech’s Injunction Appeal Against LG Over ‘Quantum’ Trademark For Failure To Disclose Material Facts
Isabella Mariam
The High Court of Delhi, Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla declined to grant interim relief to Quantum Hi-Tech Merchandising Pvt. Ltd. in its trademark dispute with LG Electronics India, holding that the company’s effort to prevent LG’s use of the “Quantum” mark was vitiated by non-disclosure of material information. Upholding a 2021 order of the Commercial Court that had set aside an earlier injunction in Quantum Hi-Tech’s favour, the Bench observed that suppression of facts disqualifies a litigant from seeking equitable protection. While acknowledging that Quantum had a conceivable claim of infringement based on its device mark, the Court ultimately dismissed the appeal, thereby allowing LG Electronics to continue using the contested marks.
The appellant, Quantum Hi-Tech Merchandising Pvt. Ltd., filed a suit before the Commercial Court alleging infringement and passing off by LG Electronics India Pvt. Ltd., its parent company in Korea, and its Delhi Brand Store. The appellant asserted rights over the trademarks “QUANTUM” and its device mark, claiming adoption since 1992 and registration under Class 9. It sought a permanent injunction restraining the respondents from using marks including QUANTUM, QUANTUM DISPLAY, QUANTUM PLUS, IPS QUANTUM, RGB QUANTUM, SMART QUANTUM, and G QUANTUM for electronic goods.
The Commercial Court initially granted an ad interim injunction restraining LG from using the impugned marks. LG filed an application under Order XXXIX Rule 4 CPC to vacate the injunction. On 15 December 2021, the Commercial Court vacated the injunction, holding that (i) LG had registered multiple “QUANTUM”-formative marks, (ii) the appellant was not registered for goods identical or allied to LG’s goods, (iii) no passing-off case was made out due to absence of proof of commercial use of QUANTUM/QUANTUM DISPLAY by LG in India, and (iv) the appellant had concealed material facts relating to its earlier affidavit filed in opposition proceedings.
Quantum Hi-Tech appealed before the Division Bench under FAO (COMM) 22/2022. The appellant contended that the Commercial Court erred in rejecting evidence of use admitted by LG Korea in an affidavit filed before the Trademark Registry and incorrectly held that the appellant lacked a valid infringement claim. LG argued that the word-mark registration “QUANTUM” obtained by the appellant was invalid as the underlying application was for a device mark and no amendment (Form TM-16) existed. LG further contended that the appellant had deliberately concealed its prior stand before the Registry, where it had admitted that many entities worldwide used QUANTUM and that its own mark was a composite device mark.
The statutory provisions primarily invoked before the Court included Sections 17, 28, 29, 30 and 31 of the Trade Marks Act, 1999, and Order XXXIX Rules 1, 2, and 4 CPC.
The Court recorded that the appellant “was guilty of deliberate and wilful concealment of facts” and stated that this conduct “disentitled the appellant from any relief under Order XXXIX Rules 1 and 2.” It observed that the underlying application for registration, Form TM-1, was for a device mark and noted that “for reasons which we are unaware of, the Trade Marks Registry granted… a word mark registration for QUANTUM,” which the Court considered “obviously invalid.” The Court added that the appellant “successfully concealed this fact from the learned Commercial Court” and also withheld its affidavit filed in opposition proceedings, where it had admitted seeking registration of a composite mark.
The Bench stated that the appellant “ought to have apprised the Trade Marks Registry that it had been granted registration for a word mark for which it had never applied.” The Court described the concealment as “extremely serious” and found that “any presumption that the omission may be inadvertent is belied” by multiple omissions, including the absence of any TM-16 form.
Regarding infringement, the Court stated that “in the absence of any valid registration for the word mark QUANTUM, the appellant could not have maintained an infringement action.” It added that Section 31(1) could not assist because the expression “trade mark registered under this Act” could not apply where “the trade mark which is registered is not the one for which the registrant had applied.” However, the Court recorded that “had it not been for the deliberate concealment of facts, the appellant has a good case on merits… based on its device mark,” since QUANTUM was the dominant portion of the device mark.
The Bench referred to the affidavit of the Vice President of LG Korea and noted that it “clearly acknowledged that the respondents had been using and promoting the marks QUANTUM and QUANTUM DISPLAY since April 2015,” which amounted to an admission of commercial use. Nonetheless, the Court held that it “cannot allow the respondents to resile from this stand” but stated that concealment barred equitable relief.
On passing off, the Court observed that “no case of passing off could lie against the respondents,” as there was “no evidence of sale of goods… bearing the allegedly infringing marks.” It stated that “the basis of a passing off tort is an attempt to pass off one’s goods as those of another,” and without evidence of the manner of sale, no such finding could be made.
The Court recorded that “we uphold the finding of the learned Commercial Court that the appellant has resorted to deliberate concealment of facts and, on that ground, decline to interfere in the present appeal, which is, accordingly, dismissed with no orders as to costs.”
Advocates Representing the Parties
For the Appellant: Mr. Anirudh Bakhru, Mr. Vikas Khera, Ms. Sneha Sethia, and Mr. Yash Sharma, Advocates.
For the Respondents: Mr. Hemant Singh, Ms. Mamta Jha, Mr. Sambhav Jain, Mr. Sidhant Oberoi, and Ms. Sanya Srivastava, Advocates.
Case Title: Quantum Hi-Tech Merchandising Pvt. Ltd. v. LG Electronics India Pvt. Ltd. & Ors.
Neutral Citation: 2025: DHC:9630-DB
Case Number: FAO (COMM) 22/2022
Bench: Justice C. Hari Shankar and Justice Om Prakash Shukla
