Analysing the Doctrine of “Approbate & Reprobate” in Indian Trade Mark Law

The doctrine of approbate and reprobate traces its roots to Scottish law. It stems from the principles of equity and estoppel, and may be understood as a species of estoppel. In common parlance, estoppel means that one cannot recant one’s word and deny something accepted earlier. The doctrine of approbate and reprobate applies in a situation when a person has to choose between two rights, stands or positions. After asserting or acknowledging one right, stand or position, the person in question cannot later choose the other one to gain benefit from both. This doctrine originates from the Latin maxim “quod approbo non reprobo”, which translates to “that which I approve, I cannot disapprove”. Therefore, in totality, it means that one can either accept something completely or deny it. If a person makes contradictory statements, it is often practised and said that he/she must not be heard.

This rule especially applies when a party takes two contradictory stands in the same case or proceeding. It is also closely related to the doctrine of election to the effect that when, on the same facts, a person has the right to claim one of two reliefs and with full knowledge elects one and obtains it, they are not able to then go back on that election and claim the alternative relief to obtain its benefit as well. This doctrine has been used time and again by the courts in India, even in trade mark litigation, especially while analysing and assessing a party’s stand regarding similarity and conflict between competing trade marks or pertaining to the mark’s distinctiveness or generic nature.

In Neon Laboratories Ltd. v Themis Medicare Ltd. [(2014) 60 PTC 621(Bom)], it was held that there is a form of estoppel by conduct that applies to a party who takes a plea of a mark or a prominent feature thereof being common to the trade when it has itself applied for its registration. The second action defeats the first argument. A person may not “approbate” and “reprobate”; they may take inconsistent stands, but not mutually destructive ones. The courts in this sense have time and again mentioned that an action at law is not a game of chess. The court generally relies on the person who takes consistent stands, while the person who takes inconsistent stands is understood not to be reliable.

The doctrine of approbate and reprobate was also recently applied by the Hon'ble Delhi High Court in Raman Kwatra & Anr. v M/s. KEI Industries Limited [FAO (OS)(COMM) 172/2022 & CM APPL. 30278/2022 -2023/DHC/000083], which held and observed that if a party had already taken a stand differentiating its mark from a mark cited in its examination report, it could not later change its stand and challenge the cited mark based on similarity or conflict between the marks. In other words, the Court observed that if a party had obtained the registration of its trade mark by alleging that its mark was distinct from a cited mark, such party could not obtain an interim injunction against the cited mark’s owner on the contention that the marks were deceptively similar. It was further observed that a party who had obtained trade mark registration based on specific representations and declarations made before the Trade Marks Registry was ineligible for any equitable relief by pleading to the contrary.

In the case of Under Armour Inc. v Aditya Birla Fashion & Retail Ltd. [CS(COMM) 41/2023, I.A. 1349/2023 & I.A. 4142/2023], it was later held that the decision in Raman Kwatra (Supra) would only be relevant where the defendant’s mark was particularly cited in the examination report of the mark asserted by the plaintiff; only then would the stand taken by the plaintiff in its reply to the examination report – to establish that its mark was different from the cited mark of the defendant – be hit by the doctrine of approbate and reprobate.

The principle of approbate and reprobate otherwise had no application where the defendant’s mark was never put up as a similar mark in the examination report of the mark asserted by the plaintiff. It was also observed that, in other such cases, after the grant of registration of the plaintiff’s mark, neither the examination report nor the reply thereto was relevant, as there could be no estoppel against the statute. This decision currently sets the tone for the applicability of the doctrine of approbate and reprobate in the world of trade marks.

The courts have generally always valued the person who is consistent on their stand to claim a particular set of reliefs. A person who acts greedily to claim all benefits and advantages by taking inconsistent stands is generally not considered to be reliable. Although the last decision mentioned above reaffirms the position that there is no estoppel against the statute, right holders must be cautious while replying to examination reports of their trade mark applications to avoid any future complications associated with the doctrine of approbate and reprobate.