Ashiana Ispat Limited vs Kamdhenu Limited & Ors.
- Court
- Delhi High Court
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on : 20.05.2026
Judgment delivered on : 01.07.2026
Judgment uploaded on : 02.07.2026
+ FAO(OS) (COMM) 120/2026 CM APPL. 27051/2026
ASHIANA ISPAT LIMITED .....Appellant
versus
KAMDHENU LIMITED & ORS. .....Respondents
Advocates who appeared in this case
For the Appellant : Mr. Aryama Sundaram and Mr. Chander
Mohan Lall, Senior Advs. with Mr
Achuthan Sreekumar, Mr. Ankur Sudan,
Ms. Anannya Mehan, Mr. Swastik Bisarya,
Ms. Vidhi Jain and Mr. Aryan Pathak, Advs.
For the Respondents : Mr. Mukul Rohatgi, Dr. Abhishek M.
Singhvi and Mr. Akhil Sibal, Senior Advs.
with Mr. Mohit Goel, Mr. Sidhant Goel, Mr.
Sudarshan Bansal, Mr. Abhishek Kotnala,
Ms. Soumya Khandelwal, Mr. Arpit Pundir,
Mr. Shashwat Mukherjee, Mr. Amit
Bhandari, Ms. Ridhie Bajaj and Ms.
Sugandh Shahi, Advs.
CORAM:
HON'BLE MR. JUSTICE V. KAMESWAR RAO
HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA
JUDGMENT
MANMEET PRITAM SINGH ARORA, J.
Signature Not Verified
Signed By:MOHIT
Signing
Date:02.07.2026 19:04
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1. The present appeal arises out of the judgement dated 10.04.2026
[‘impugned judgment’] passed by the learned Single Judge in consolidated
proceedings arising from cross suits between the rival parties, namely CS
(COMM) No. 130 of 2025 instituted by the Appellant/Ashiana Ispat Limited
[‘AIL’], and CS (COMM) No. 569 of 2025 instituted by the Respondent No.
1/Kamdhenu Limited [‘KL’]. By the impugned judgement, the Appellant’s
application for interim injunction, I.A. No. 3990/2025, filed in its suit
seeking, permanent injunction against passing off, in respect of the mark
‘AL KAMDHENU GOLD’ [‘impugned mark’], specific performance of the
agreement dated 26.12.2002 [‘2002 Agreement’], and other ancillary reliefs,
was dismissed; whereas the Respondent No. 1’s corresponding application,
I.A. No. 14115/2025, filed in its counter suit seeking injunction against
alleged infringement of the marks ‘KAMDHENU’ and ‘KAMDHENU
GOLD’ and other ancillary reliefs, was allowed.
FACTS
2. The facts narrated by the Appellant in the appeal are as follows:
2.1. It is stated that the Appellant operates an extensive nationwide
business of manufacturing integrated steel under the mark ‘AL
KAMDHENU GOLD’, with a turnover of around Rs. 185.69 crores for the
financial year 2025-2026, for the impugned mark.
2.2. It is stated that the rival parties were originally under joint
management of KL comprising of both the Jain family and the Aggarwal
family from 1996 till 2002; the trademark ‘KAMDHENU’ was conceived
and developed in or around 1994 through the joint efforts of both families.
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2.3. It is stated that in 1996, an application for registration of the word
1
mark ‘KAMDHENU’ in class 6 was filed by the joint management of KL
comprising of both the Jain and Aggarwal families, claiming user since
April 1991, and in 1997, a formal agreement dated 26.02.1997 [‘1997
Agreement’] was executed, permitting the Appellant to use the said mark for
a period of 3 years, reflecting the collaborative nature of the business.
2.4. It is stated that in the year 2002, upon division of the business
between the two families, a comprehensive agreement dated 26.12.2002
[‘2002 Agreement’] was executed between the parties with the express
objective of demarcating rights in the ‘KAMDHENU’ marks. It is stated that
under the said agreement, ownership of the mark ‘KAMDHENU’ vested
with Respondent No. 1/KL, whereas the Appellant was expressly conferred
the right to adopt, use and seek registration of the impugned mark ‘AL
KAMDHENU GOLD’ as its proprietor.
It is stated that the 2002 Agreement further recorded that upon
registration of the impugned mark ‘AL KAMDHENU GOLD’, the
Appellant would become the exclusive and absolute owner of the said mark
and that Respondent No. 1/KL would neither use the said mark nor interfere
with the Appellant’s rights vested within the said mark. It is stated that
under the said 2002 Agreement, Respondent No. 1/KL had also agreed to
withdraw its Trademark [‘TM’] application no. 842704 in Class 6 for the
mark ‘KAMDHENU GOLD’ to avoid conflict with the Appellant’s
impugned mark and the 2002 Agreement was made binding on both parties,
for a tenure of 99 years.
1
TM application no. 717214
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2.5. It is stated that pursuant thereto, the Appellant applied for registration
of the impugned mark ‘AL KAMDHENU GOLD’ vide application no.
1161758 on 27.12.2002; however, the said application was abandoned in
2008, which occurred due to malafide conduct of the Respondent No. 1/KL
and connivance involving the then Trademark Attorney common to both
parties. It is further stated that despite a clear undertaking to withdraw its
own application, as stated in the 2002 Agreement, Respondent No. 1/KL
pursued and allowed its application for ‘KAMDHENU GOLD’ bearing TM
application no. 842704 to proceed to registration, and also failed to disclose
or withdraw another application for ‘KAMDHENU GOLD TMT’ bearing
TM application no. 1009954, thereby acting in breach of the 2002
Agreement.
2.6. It is stated that a subsequent agreement dated 29.01.2021 [‘2021
agreement’] was executed between the parties, which merely governed the
licensor-licensee relationship in respect of the mark ‘KAMDHENU’ and
‘KAMDHENU NXT’ and recorded certain commercial arrangements
concerning updated products. It is stated that the said agreement does not
make any reference to the impugned mark ‘AL KAMDHENU GOLD’, nor
does it purport to alter, extinguish or novate the rights crystallized under the
2002 Agreement pertaining to the impugned mark ‘AL KAMDHENU
GOLD’,
2.7. It is stated that the dispute escalated when Respondent No. 1/KL
issued a termination notice dated 19.09.2024 [‘termination notice’]
purporting to terminate the 2021 Agreement on alleged grounds of non-
performance. It is stated that the Appellant duly responded to the said notice
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on 27.01.2025, disputing the allegations and contesting the purported
termination.
2.8. It is stated that the Appellant thereafter filed a fresh application on
05.12.2024 for registration of the mark ‘AL KAMDHENU GOLD’ vide
application no. 6742246 in Class 6, claiming user since 26.12.2002;
Respondent No. 1/KL not only opposed the said application but also, on
17.12.2024, filed an application bearing TM application no. 6759794, for the
identical mark ‘AL KAMDHENU GOLD’ claiming prior use since 2001.
2.9. On these premises, the Appellant instituted the underlying suit
CS(COMM) 130/2025 seeking protection of its rights in the impugned mark
and enforcement of the 2002 Agreement.
SUBMISSIONS BY THE APPELLANT
3. Mr. Aryama Sundaram and Mr. Chander Mohan Lal, learned senior
counsel appearing on behalf of the Appellant have assailed the impugned
judgment on the primary plea that the learned Single Judge has erred in
construing the 2002 Agreement as a mere license user arrangement for the
impugned mark ‘AL KAMDHENU GOLD’. They contend that the 2002
Agreement is not a mere license arrangement but is in the form of a
trademark assignment Agreement.
3.1. The Appellant contends that Clause 22 of the said Agreement
evidences Respondent No. 1’s acknowledgement of Appellant’s independent
proprietary rights akin to ownership in the impugned mark ‘AL
KAMDHENU GOLD’. The Appellant contends that the contractual
arrangement of 2002, recorded from Clause 22 onwards, pertaining to the
use of the impugned mark ‘AL KAMDHENU GOLD’, was distinct and
separate from the arrangement pertaining to the use of the mark
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‘KAMDHENU’, which was governed by Clauses 1 to 21 of the 2002
Agreement. The Appellant contends that the proprietary rights of the
Appellant in the impugned mark recognized under Clauses 22 to 25 and
onwards have been wrongly held by the learned Single Judge to be a license-
user arrangement.
3.2. The Appellant further contends that, the 2021 Agreement was only
confined to the use of the Respondent No. 1’s marks
‘KAMDHENU/KAMDHENU NXT’ for updated products, and the said
Agreement was absolutely silent as to the use and ownership of the
impugned mark ‘AL KAMDHENU GOLD’.
3.3. The Appellant contends that, thus, there was no novation of the 2002
Agreement recorded between the parties qua the Appellant’s proprietary
rights in the impugned mark ‘AL KAMDHENU GOLD’, by execution of
the 2021 Agreement. It contends that novation cannot be inferred from mere
modification or subsequent arrangements unless there is a clear intention to
substitute the earlier contract. In this regard, Appellant has placed reliance
upon the judgment of the Supreme Court in Balaji Steel Trade v. Fludor
2
Benin S.A. , and Lata Construction v. Dr Rameshchandra Ramniklal
3
Shah and upon the judgment of the High Court of Calcutta in Juggilal
4
Kamlapat v. N.V. Internationale .
3.4. The Appellant contends that Clause 34 of the 2002 Agreement, makes
it clear that the 2002 Agreement is capable of operating in distinct and
severable parts, therefore, even assuming that there was any subsequent
modification or arrangement in respect of the use of the trademark
2
2025 INSC 1342
3
AIR 2000 SC 380
4
AIR1955 Cal 65
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‘KAMDHENU’, the same could not, by itself, affect or extinguish
Appellant’s independent proprietary rights in the impugned mark ‘AL
KAMDHENU GOLD’.
3.5. The Appellant challenges the finding of the learned Single Judge to
the effect that the Appellant’s use of the impugned mark ‘AL KAMDHENU
GOLD’ was as a permitted user and that the goodwill generated by the use
of the said impugned mark since 2002 enures in favour of the Respondent
No. 1. It contends that Section 48(2) of the Trademarks Act, 1999 [‘Act of
1999’] only applies when the permitted user uses a registered mark and in
the present case, since the impugned mark ‘AL KAMDHENU GOLD’ was
not a registered mark, at the time of execution of the 2002 Agreement, the
said statutory provision has no application; therefore, the goodwill in the
said mark vests with the Appellant alone.
3.6. The Appellant contends that the Respondent No. 1/KL is estopped
from asserting any proprietary rights in the impugned mark ‘AL
KAMDHENU GOLD’, in view of the Respondent No. 1’s
acknowledgement of Appellant’s proprietary rights in the 2002 Agreement,
followed by the letter dated 02.01.2003, addressed by the Respondent No.
1/KL, to the Registrar of Trademarks [‘Registrar’] seeking to withdraw
trademark application no. 842704 for the mark ‘KAMDHENU GOLD’. The
Appellant contends that, in fact, the Respondent No. 1/KL has never used
the marks ‘KAMDHENU GOLD’ or ‘KAMDHENU GOLD TMT’ at any
time before the institution of the suit.
3.7. The Appellant further relies upon Clause 22 of the 2002 Agreement to
contend that the Respondent No. 1/KL is barred from using the mark
‘KAMDHENU GOLD’ and the registrations obtained by it vide TM
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application no. 842704 and TM application no. 1009954 are fraudulent. It
contends that, thus, ‘AL KAMDHENU GOLD’ is distinct from
‘KAMDHENU’ and ‘KAMDHENU NXT’; therefore, the Appellant can be
allowed to use the said impugned mark during the pendency of the suit.
3.8. The Appellant contends that the Respondent No. 1’s trademark
application no. 6759794 dated 17.12.2024 for the impugned mark ‘AL
KAMDHENU GOLD’ falsely claims user since 2001, whereas the
impugned mark was only coined, for the first time, while executing the 2002
Agreement. It contends that the mark ‘AL KAMDHENU GOLD’ was
coined as a distinctive mark with ‘AL’ standing for the acronym of the
Appellant’s corporate name, Ashiana Limited and ‘GOLD’ was also added
to suitably distinguish the impugned mark ‘AL KAMDHENU GOLD’ from
the Respondent No. 1’s mark ‘KAMDHENU’ and therefore, the learned
Single Judge fell into error in accepting the Respondent No. 1’s false claim
of use over the true and continuous use of the Appellant.
3.9. The Appellant contends that in view of its prima facie rights in the
impugned mark ‘AL KAMDHENU GOLD’ being evidenced by the 2002
Agreement and the continuous use of the said mark since 2002-03 by the
Appellant, the balance of convenience is in favour of the Appellant and it
could not have been injuncted from using the impugned mark contending
that the irreparable injury to the Appellant would be irreversible.
SUBMISSIONS BY RESPONDENT NO.1/KL
4. In reply, Mr. Mukul Rohatgi, Dr. Abhishek M. Singhvi and Mr. Akhil
Sibal, learned senior counsel for the Respondents have contended that the
2002 Agreement was one composite agreement, whereby the Appellant was
permitted to use the trademark ‘KAMDHENU’ and was also granted
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permission to adopt and use the impugned mark ‘AL KAMDHENU GOLD’.
They contend that the 2002 Agreement evidences that the Respondent No.
1/KL has exclusive rights to the mark ‘KAMDHENU’ and ‘KAMDHENU’
formative marks.
4.1. The Respondent No. 1/KL contends that though the 2002 Agreement
granted a limited license arrangement for use of the impugned mark ‘AL
KAMDHENU GOLD’ and acknowledged possible transfer of the
ownership, the same was contingent only upon the 2002 Agreement
remaining in force. The 2002 Agreement stood novated by the 2021
Agreement, and upon the Appellant’s failure to pursue trademark
application no. 1161758 dated 27.12.2002, which was recorded as
abandoned by the Registrar vide order dated 07.01.2008, no proprietary
rights ever accrued in favour of the Appellant in respect of the impugned
mark ‘AL KAMDHENU GOLD’. The Respondent No. 1/KL also denies
any misconduct by the Trademark Attorney in the abandonment of
Appellant’s TM application no. 1161758 in the year 2008.
4.2. The Respondent No. 1/KL contends that it is the prior adopter,
registered proprietor and long-standing user of the marks ‘KAMDHENU’,
KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’. It further
contends the fact that trademark application no. 842704 for ‘KAMDHENU
GOLD’, as well as trademark application no. 1009954 for ‘KAMDHENU
GOLD TMT’ was pursued by the Respondent No. 1/KL and registered in
the year 2003 and 2005 respectively, without any protest from the Appellant,
also prove novation of the 2002 Agreement qua the entire Agreement. The
Respondent No. 1/KL contends that 2021 Agreement novated and
substituted the 2002 Agreement as it materially altered the products,
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licensed marks, territory, consideration, term, and quality-control framework
and changed the substantive terms of licensed use of the trademark
‘KAMDHENU’ and ‘KAMDHENU NXT’ by the Appellant and brought an
end to the 2002 Agreement.
4.3. The Respondent No. 1/KL disputes the fact that Appellant used the
impugned mark ‘AL KAMDHENU GOLD’ for its goods between the years
2002 to 2024. It asserts that Appellant’s claim of continuous use is
unsupported by the record as the invoices relied upon mention the mark
‘KAMDHENU’ and not ‘AL KAMDHENU GOLD’; no segregated sales
figures have been produced and Appellant commenced use of the impugned
mark for its goods only in the year 2025, that is post termination, as is
evident from the documents placed on record.
4.4. Appellant’s manufacturing unit has been shut down and by May,
rd
2025, it entered into multiple service agreements (at least 16) with 3 parties
for the manufacture of TMT bars under the impugned mark ‘AL
KAMDHENU GOLD’, in a short period of three [3] months. Appellant has
since sold its manufacturing facility to repay its debts and that its listing on
the Stock Exchange has been suspended on account of statutory non-
compliances.
4.5. Relying on these facts, the Respondent No. 1/KL contends that the
Appellant is seeking to traffic in the impugned mark ‘AL KAMDHENU
GOLD’ by entering into licensing and service agreements (16 in number)
with third parties and flooding the market with goods on which the
Respondent No. 1/KL has no supervisory control.
4.6. The Respondent No. 1/KL contends that the relationship between the
rival parties under the 1997 Agreement, 2002 Agreement and 2021
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Agreement was undoubtedly of a licensor and licensee, as duly recorded in
the said Agreements, and all goodwill generated from the use of the mark
‘KAMDHENU’ accrued exclusively to the Respondent No. 1/KL. It
contends that the novation of the 2002 Agreement includes within its ambit
the understanding pertaining to the use and adoption of impugned mark ‘AL
KAMDHENU GOLD’ as well. It contends that when Appellant engaged in
acts prejudicial to the mark ‘KAMDHENU’, the Respondent No. 1/KL
terminated the 2021 Agreement vide letter dated 19.09.2024, along with all
other MoUs and Agreements with Appellant, which could have been
subsisting on the date of termination.
ANALYSIS & FINDINGS
5. This Court has heard the learned counsel for the parties and perused
the record.
6. We may note at the outset, that while the impugned judgment grants
the interlocutory injunction prayed for in I.A. No. 14115/2025 in
CS(COMM) 569/2025 filed by the Respondent No. 1/KL, it dismisses I.A.
No. 3990/2025 in CS(COMM) 130/2025 filed by the Appellant. The
Appellant, by law, is required to file separate appeals against the grant of an
interlocutory injunction in CS(COMM) 569/2025 and the rejection of the
interlocutory injunction in CS(COMM) 130/2025. We, however, take note
that the learned Single Judge vide order dated 14.07.2025 passed in
CS(COMM) 569/2025 has allowed consolidation of both the suits. In
addition, Respondents have not raised any objection with respect to the non-
maintainability of one appeal against the impugned judgment. We have also
perused the written submissions [at paragraph 20 therein] filed on behalf of
the Appellant on 20.05.2025, stating that the Appellant does not intend to
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use the Respondent No. 1’s trademark ‘KAMDHENU’ and is only seeking
relief so as to be entitled to use the impugned mark ‘AL KAMDHENU
GOLD’. In these facts, we are entertaining this single appeal to the
impugned judgment passed in two suits.
7. At the outset, we note that the Appellant is not asserting any right to
use the Respondent No. 1’s trademark ‘KAMDHENU’ on standalone basis
and to this extent the injunction granted by the impugned judgment is not in
challenge. The Appellant asserts proprietary rights only in the impugned
mark ‘AL KAMDHENU GOLD’ and seeks to restrain the Respondent No.
1/KL from using the marks ‘KAMDHENU GOLD’ and ‘KAMDHENU
GOLD TMT’, as they are deceptively similar to the impugned mark ‘AL
KAMDHENU GOLD’.
8. We note that the sole basis of the Appellant for asserting its
proprietary rights in the impugned mark ‘AL KAMDHENU GOLD’ is the
understanding recorded between the parties in the 2002 Agreement under
Clause 22 onwards. The same understanding is also the basis of the
Appellant for seeking to restrain the Respondent No. 1/KL from using the
marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’. We
therefore deem it appropriate to reproduce herein the relevant clauses of the
2002 Agreement, relied upon by the Appellant and examine the steps taken
by the Appellant to act upon the said understanding to secure its proprietary
rights in the impugned mark ‘AL KAMDHENU GOLD’:-
“22. That during the subsistence of the said permitted user agreement,
the Licensee shall be entitled to adopt and use the trade mark AL
KAMDHENU GOLD in relation to steel bars and other cognate and
related goods. The expression AL KAMDHENU GOLD will be used
in Juxtapose and the words AL, KAMDHENU and GOLD will always
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be used in similar size, lettering style and colour scheme. The
Licensee will be entitled to file application for its registration under
the provisions of Trade and Merchandise Marks Act 1958 as its
Proprietors thereof. The Licensor has also filed application for
registration of trade mark KAMDHENU GOLD in the Trade Mark
office under application No. 842704 in Class 6 in relation to Steel
Bars. The Licensor agrees to withdraw the said application without
prejudice to his rights and contentions in the trade mark
KAMDHENU. The Licensor will have no objection to its adoption,
user and registration of the said trade mark AL KAMDHENU GOLD.
23. That up to the time of registration of trade mark AL KAMDHENU
GOLD, the Licensor will also be entitled to use the said trade mark in
relation to Steel Bars and other cognate and related goods.
24. That upon final registration of trade mark AL KAMDHENU
GOLD, the Licensee will become exclusive and absolute owner for
the said trade mark. After the registration of the trade mark AL
KAMDHENU GOLD with the Licensee, the Licensee shall
immediately thereafter cease in all manner the use of the trade mark
KAMDHENU and shall thereafter only use the Registered trade mark
AL KAMDHENU GOLD in the manner provided hereinabove. The
Licensor immediately thereafter i.e., after the grant of registration
shall not use the trade mark AL KAMDHENU GOLD. However, the
respective goods of the Licensee and the Licensor even after the grant
of the aforesaid registration of the trade mark AL KAMDHENU
GOLD be yet continued to be jointly marketed by them through
common market channels.
25. The Licensee shall have no right to assign or transfer its said
registration of AL KAMDHENU GOLD to any party whatsoever or
create any third party rights therein and shall assign and transfer the
said trade mark only to Shri Naresh Jain and/or Shri Neeraj Jain
and/or Shri Satish Kumar Aggarwal and/or Pradeep Kumar Aggarwal
or to their legal heirs and successors.
26. This Agreement shall automatically terminate upon the happening
of any one of the following events:
(a) Termination of a period of ninety-nine years from the date of
commencement of this Agreement; or
(b) This agreement shall automatically terminate on the
grant of registration of the trade mark AL KAMDHENU
GOLD to the Licensee . However, it shall thereafter continue to
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exist in respect of the stipulations set out hereinabove and as
agreed upon by the parties hereinabove to be followed by them
after the grant of registration including that of the joint marketing
and common market channels to be followed by both the parties.
….
28. The Licensor and the Licensee agree that
(a) this agreement shall be binding on both the parties, that is the
term and condition shall be binding and application upon both the
parties; and
(b) all rights granted to the Licensee under this agreement shall
not be disturbed in any manner whatsoever;
Until the final disposal (including the termination of objects,
appeal etc.) of the said claims, dispute and controversy.
…..
34. The invalidity or unenforceability of any provisions of this
Agreement shall not affect the validity, legality or enforceability of
the reminder of this Agreement, it being intended that all the rights
and obligations of the parties hereunder shall be enforceable to the
fullest extent permitted by law.”
[Emphasis supplied]
9. The aforesaid clauses of the 2002 Agreement show that the
Respondent No. 1/KL acknowledged that during the subsistence of the said
Agreement, the Appellant was entitled to adopt and use the impugned mark
‘AL KAMDHENU GOLD’, and to apply, to the Registrar, for registration of
the said impugned mark as the proprietor. Respondent No. 1/KL also agreed
that upon registration, the Appellant shall become the exclusive and absolute
owner of the impugned mark. The right of the Appellant to further transfer
the proprietary rights in the said impugned mark was also restricted under
Clause 25 of the 2002 Agreement. However, until the registration was
complete, the Respondent No. 1/KL was also entitled to use the impugned
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mark, as provided under Clause 23 of the 2002 Agreement. As a part of this
understanding, the Respondent No. 1/KL undertook to withdraw its
trademark application no. 842704 for the mark ‘KAMDHENU GOLD’.
5
10. As per the record of the suits, Appellant took following steps to act
upon the said understanding, qua asserting proprietary rights in the
impugned mark ‘AL KAMDHENU GOLD’:
i. It applied for registration of the impugned mark ‘AL
KAMDHENU GOLD’ vide trademark application no. 1161758
dated 27.12.2002.
ii. In the statutory advertisements issued illustratively for
complying with Clause 41 of the listing Agreements with the
Stock Exchange pertaining to holding of meetings of its Board
of Directors, etc. the notice refers to the trademarks
‘KAMDHENU’, ASHIANA, as well as ‘AL KAMDHENU
GOLD’. The dates of the advertisements are noted by the
learned Single Judge at paragraph 40 of the impugned
judgment, and they appear in the years 2004, 2005, 2011, 2014
and thereafter, from 19.01.2025 onwards.
iii. In the unaudited financial results of the Appellant published,
the impugned mark appears in the notice under the corporate
name along with the trademark ‘KAMDHENU’ and
‘ASHIANA’.
This is the limited use of the impugned mark by Appellant between
2002 to 2024 evident on record.
5
The convenience volume provided by the Respondent No. 1 on 16.05.2026
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11. Appellant, inexplicably, failed to pursue trademark application no.
1161758 dated 27.12.2002, and the application was recorded as abandoned
by the Registrar vide order dated 07.01.2008. No steps were taken by the
Appellant to exercise its right to secure proprietary rights in the impugned
mark after 2008 by registration or actual use of goods, until the issuance of
the termination notice dated 19.09.2024.
12. The Appellant has been unable to show any prima facie use of the
impugned mark on goods manufactured by it during 2002 to 2024, and the
first use of the impugned mark by the Appellant for its goods is evidenced
from an invoice dated 03.06.2025. The certificate of the Chartered
Accountant [‘CA’] dated 11.02.2025 relied upon by the Appellant for its
sales during the period 2001-02 till 2023-24 does not specify any sales of
goods under the impugned mark ‘AL KAMDHENU GOLD’. The CA
certificate dated 25.07.2025 certifies turnover from the impugned mark ‘AL
KAMDHENU GOLD’ for the financial year 2025-26. This distinction in the
contents of the affidavit issued by the same Chartered Accountant [i.e., Mr.
Ayush Jain] prima facie shows that there has been no use of the impugned
mark on goods by Appellant during the period 2001-02 till 2023-24. It is
thus prima facie evident that the Appellant also failed to acquire any
common law rights in the impugned mark in 2002-2024 due to non-use of
the impugned mark for its goods.
13. Respondent No.1/KL has relied upon the extracts of annual reports of
the Appellant for the years 1996 to 2022. It has contended that in these
annual reports there is no reference to the mark ‘AL KAMDHENU GOLD’.
The said contention has not been disputed by the Appellant. We have
perused the cover pages of the reports filed in convenience volume dated
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6
16.05.2026 . In fact, in the cover page of the Appellant’s annual reports for
the period 2016-17 to 2021-22 (five financial years) Appellant only refers to
itself as the manufacturer of KAMDHENU-TMT bars. There is no reference
to the impugned mark ‘AL KAMDHENU GOLD’ on the said cover pages.
This fact also substantiates the prima facie opinion that the Appellant has
not used the impugned mark for its goods and further, justifies the opinion
of the learned Single Judge that there is no goodwill or reputation attached
to the impugned mark.
14. The Appellant, however, admittedly continued to use the Respondent
No. 1’s registered mark ‘KAMDHENU’ as a licensee for its goods during
the subsistence of the 2002 Agreement and thereafter, under 2021
Agreement.
15. The Respondent No. 1/KL admittedly terminated the Appellant’s
license to use the marks ‘ KAMDHENU’ and ‘KAMDHENU NXT’ vide
termination notice dated 19.09.2024, whereby 2021 Agreement, all the
MoU’s and the Agreements between the parties were also revoked. Relying
upon the said termination notice, the Respondent No. 1/KL contends that
any consent for adoption and use of the impugned mark ‘AL KAMDHENU
GOLD’ granted under the 2002 Agreement also stood terminated. It
principally contends that the 2002 Agreement stood novated by the 2021
Agreement.
16. A perusal of the record shows that the Appellant, post the said
termination notice dated 19.09.2024, applied for registration of the
impugned mark ‘AL KAMDHENU GOLD’ vide TM application no.
6
At Tab D
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6742246 dated 05.12.2024, which is pending adjudication and commenced
production of goods with the impugned mark in the year 2025.
17. Learned Single Judge has dealt with the Appellant’s contentions qua
its alleged proprietary rights in the impugned mark ‘AL KAMDHENU
GOLD’ as derived from the 2002 Agreement, and concluded that in the
absence of securing any registration of the impugned mark ‘ AL
KAMDHENU GOLD’ in favour of the Appellant, it only had a license for
use of the impugned mark in its favour under the 2002 Agreement and the
same stood novated upon the execution of the 2021 Agreement. The relevant
paragraphs of the impugned judgment are as follows: -
“26. A review of the Agreements indicates that the relationship
between the Parties is clearly defined as licensor and licensee. The
Agreements consistently state that no right, title, or interest in the
KAMDHENU Mark is conveyed to AIL, and all goodwill generated
from the use of the KAMDHENU Mark accrued exclusively to KL. In
this context, reference may be made to Clause 5 of the 2002
Agreement:
“ 5. The licensee expressly acknowledges, agrees and admits that
1) The said trade mark is the exclusive proprietary rights of
Licensor;
2) By use of the said trade mark, the Licensee does not and shall
not, nor shall it deemed to have acquired any right, title or interest
whatsoever (other than the bare license and right to continue and
use them hereunder granted) in, to or over the said trade mark at
any time hereafter;
3) Any right, title, interest or goodwill whatsoever which may arise
out of the use of the any of the trademarks;
i. Vests with Licensor, who is the exclusive proprietary of the same;
and
ii. Shall be deemed to be held by the Licensee for the absolute
benefit of licensor.”
[Emphasis Supplied]
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27. Clause 22 of 2002 Agreement provides that AIL shall be entitled to
adopt and use the Impugned Mark in relation to steel bars and other
cognate and related goods, however, also dictates AIL as to the form and
manner of such usage of the Impugned Mark. Clauses 23 and 24 of 2002
Agreement further provide that up to the time of registration of the
Impugned Mark as envisaged under Clause 24 of 2002 Agreement, KL
will be entitled to use the Impugned Mark in relation to Steel Bars and
other cognate and related goods.
28. Clause 24 of 2002 Agreement also, in clear terms, provides that AIL
‘ will become exclusive and absolute owner ’ only upon final registration
of the Impugned Mark. The vesting of ownership is thus expressly
contingent, and no proprietary rights accrue unless and until such
registration is obtained by AIL. Clause 26(b) of 2002 Agreement further
provides for automatic termination of 2002 Agreement upon such
registration, indicating that the parties to the 2002 Agreement envisaged
a transition from a license regime to an ownership regime only upon final
registration of the Impugned Mark by AIL.
29. Accordingly, Clauses 22 to 26 of 2002 Agreement, when read
conjointly, do not provide for any present transfer of proprietary rights,
but merely contemplate a future and contingent possibility of such
transfer upon registration of the Impugned Mark in favour of AIL. The
pervasive control retained by KL over the manner, scope and
continuance of use of the Impugned Mark by AIL including termination
rights indicate that there was no assignment of Impugned Mark. The
2002 Agreement, therefore, in substance and effect, constitutes a license
user arrangement even in respect of the Impugned Mark, and cannot be
construed as being in the nature of an assignment thereof.
…
…
33. In the present case, Recital E of 2021 Agreement expressly takes note
of the 2002 Agreement and records the shift in the nature of products
from the erstwhile CTD/Tor Steel bars to the next-generation TMT bars,
i.e., KAMDHENU NXT, and records that, ‘ in view of the current
requirement of reinforcement steel bars’ KL has developed the next
generation TMT bar known as KAMDHENU NXT, and that AIL is ‘now
interested to continue the current arrangement between the Parties to
manufacture latest and modern version of steel bars’.
34. The language of Recital E also assumes significance inasmuch as it
characterizes the very subject matter of 2002 Agreement, CTD/Tor Steel
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bars as having become ‘ obsolete ’ reflecting a discontinuity with the
earlier regime as under 2002 Agreement. The foundation of 2002
Agreement having ceased to exist, the Parties, by mutual consent,
entered into 2021 Agreement to govern their rights and obligations in
respect of a new and distinct product. In such circumstances, intention to
substitute the earlier agreement is discernible from the terms of the
subsequent agreement read in light of the surrounding commercial
context.
35. In this conspectus and having regard to the principle that novation
under Section 62 is founded on the mutual intention of the parties to
substitute a new contract in place of the old, prima facie 2021 Agreement
constitutes a novation of the 2002 Agreement.
……
49. If AIL would have obtained registration of the Impugned Mark in
terms of 2002 Agreement, AIL could have asserted right over the
Impugned Mark. Although AIL initially filed the application for
registration of Impugned Mark in December 2002, subsequently the
same was abandoned in January 2008. This clearly reflects lack of
proactiveness on part of AIL to protect its rights. Although AIL attributes
this lapse to its counsel, it remains evident that no substantive efforts
were made by AIL to assert rights in the Impugned Mark until nearly
sixteen years later, when a new application under TM Application No.
6742246 in Class 6 was submitted on 05.12.2024 after purported
termination of 2002 Agreement.
50. Ordinarily, an entity seeking proprietary rights in a mark is expected
to exercise due diligence in safeguarding such interests. The delayed
filing, particularly following disputes between the Parties, including the
receipt of the termination letter dated 19.09.2024 and caution notices
issued on 06.11.2024 supports KL’s argument that AIL’s claim of
exclusive rights over the Impugned Mark is potentially untenable.”
[Emphasis supplied]
18. Having considered the submissions of the parties, as well as upon a
thorough review of the 2002 Agreement and 2021 Agreement as well as the
documents of the Appellant filed for proving its use of the impugned mark
‘AL KAMDHENU GOLD’ during the period 2002-2024, we find that
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though the Appellant adopted the mark ‘ AL KAMDHENU GOLD’ in the
year 2002, it failed to take necessary steps for acquiring statutory rights in
the said impugned mark and also use the said mark on its goods during
2002-2024. The consent of the Respondent No. 1/KL recorded at Clause 22
of the 2002 Agreement qua the adoption of the impugned mark was a
relevant fact, which would have assisted the Appellant to obtain registration
of the impugned mark as contemplated in Section 11(4) of the Act of 1999
and to obviate any objection from the Registrar as to the similarity of the
impugned mark with the Respondent No. 1’s earlier mark ‘KAMDHENU’.
The Appellant’s conduct of filing trademark application no. 1161758
dated 27.12.2002 for the mark ‘ AL KAMDHENU GOLD’ and then
permitting it to be abandoned (in the year 2008), at this prima facie stage
evidences Appellant’s lack of intention to acquire proprietary rights in the
said impugned mark. The submission of the Appellant that the Trademark
Attorney who filed the application in 2002, failed to protect the interest of
the Appellant in the year 2008, cannot be a legal defence to the Appellant’s
own acts and omissions. It was the obligation of the Appellant to remain
vigilant and take appropriate steps to secure the registration so as to acquire
statutory proprietary rights. This circumstance is not isolated and has to be
seen in the background that the Appellant significantly did not use this mark
from 2002 to 2024 for the goods manufactured by it, which further evinces
lack of intent to secure its proprietary rights in the impugned mark.
The consequence of the Appellant failing to obtain registration is its
failure to acquire proprietary rights as contemplated in Clause 24 of the
2002 Agreement. Since the Appellant relies upon Clause 22 of the 2002
Agreement to claim proprietary rights in impugned mark ‘AL KAMDHENU
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GOLD’, it is also equally bound by Clause 24 of the said 2002 Agreement,
which outlines the terms of acquisition of the said proprietary rights.
19. In addition, the Appellant has also, at this prima facie stage, failed to
explain its acceptance of the Respondent No. 1’s action of pursuing
trademark application no. 842704 dated 24.02.1999 for the mark
‘KAMDHENU GOLD’ and obtaining registration in 2003. The parties at
Clause 22 of the 2002 Agreement had agreed that the Respondent No. 1/KL
would withdraw the said application, and yet inexplicably, the Respondent
No. 1/KL pursued the said application and obtained registration on
17.11.2003. This registration also finds a specific mention at Recital A of
the 2021 Agreement, which has been duly signed by both the parties,
including the Appellant and acted upon. The Appellant has not provided any
explanation of this fact in its pleadings. However, during arguments, it was
submitted by the learned senior counsel for the Appellant that the
mentioning of TM No. 842704 in Recital A of the 2021 Agreement was not
done mindfully and appears to have been slipped in by the Respondent No.
1/KL, as it otherwise has no relevance to the contents of the 2021
Agreement, which only pertains to the mark ‘ KAMDHENU’ and
‘KAMDHENU NXT’. We are unable to accept this oral submission of the
Appellant at this interlocutory stage, which is not pleaded.
20. The Appellant is bound by the contents of the 2021 Agreement, which
is an admitted document. The presumption in fact and law is that Appellant
signed the 2021 Agreement after verifying its contents and was therefore
aware of TM No. 842704 pertaining to the mark ‘KAMDHENU GOLD’
having been registered in 2003, and yet raised no objection to this action of
Respondent No. 1/KL. This circumstance also shows that Appellant has
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failed to pursue and secure its proprietary rights on the impugned mark
under Clause 22 of the 2002 Agreement.
21. The Appellant has contended that oppositions filed by third parties
against its trademark application no. 1161758 dated 27.12.2002 were
orchestrated by the Respondent No. 1/KL with the assistance of its
Trademark Attorney and were therefore in bad faith, as it was contrary to the
understanding recorded in Clauses 22 onwards of the 2002 Agreement. The
Appellant has, in its written submissions dated 20.05.2025, averred these
facts and relied upon certain documents, however, these documents were not
filed before the learned Single Judge, and therefore, we refrain from
examining the same in this appeal. The Appellant will be at liberty to raise
these issues at trial, and the effect of this will be considered by the Court at
the stage of final disposal of the suits. However, these submissions by the
Appellant fail to explain why it did not pursue the said TM application no.
1161758 and permitted the application to be abandoned in the year 2008.
22. Therefore, in these admitted facts, where the Appellant failed to take
appropriate steps to acquire statutory proprietary rights in the impugned
mark ‘AL KAMDHENU GOLD’ under Clause 22 of the 2002 Agreement,
or acquire common law rights by use of the impugned mark, even assuming
that Clauses 22 onwards of the 2002 Agreement were not novated with the
2021 Agreement, the issuance of the termination notice dated 19.09.2024
prima facie had the effect of revoking the consent of the Respondent No.
1/KL, earlier granted to the Appellant under the 2002 Agreement, for
adopting and using the impugned mark. The reliance placed by the
Appellant on Clause 34 of the 2002 Agreement to continue to rely on the
understanding recorded at Clauses 22 onwards is misplaced as the
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understanding in the said clauses prima facie do not survive the effect of the
termination notice dated 19.09.2024, which termination notice prima facie
has the effect to revoke the entire arrangement contemplated in the 2002
Agreement.
23. The prima facie findings of the learned Single Judge with respect to
novation of the 2002 Agreement with respect to understanding recorded at
Clauses 1 to 21, with regards to the mark ‘KAMDHENU’ was not contested
by the Appellant. The Appellant also admitted that it is not using the
trademark ‘KAMDHENU’ for the goods specified in the 2002 Agreement as
the same have become obsolete. It has, however, contested the finding of
novation qua the understanding for use of the impugned mark ‘AL
KAMDHENU GOLD’ recorded in Clause 22 onwards of the 2002
Agreement. There may be some merit in this submission of the Appellant as
the 2021 Agreement only deals with new products and the mark
‘KAMDHENU’ and ‘KAMDHENU NXT’. The 2021 Agreement makes no
reference to the consent granted by the Respondent No. 1/KL at Clause 22
for the impugned mark ‘AL KAMDHENU GOLD’. It was for this reason
that we examined the conduct of the Appellant in securing proprietary rights
for the impugned mark ‘AL KAMDHENU GOLD’ during the period 2002-
21 and 2021-24; and, in neither period has the Appellant taken requisite
steps to acquire proprietary rights. In fact, post 2015, there is no evidence on
record, at all, of any use of the impugned mark by the Appellant. Thus, even
assuming that there was no novation of the understanding recorded between
the parties at Clauses 22 onwards of the 2002 Agreement, however, as held
above, Respondent No. 1’s consent in the 2002 Agreement to adopt and use
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the impugned mark ‘AL KAMDHENU GOLD’ prima facie stood revoked
with the issuance of the termination notice dated 19.09.2024.
24. The Appellant has relied upon certain judgements on the issue of
novation of the 2002 Agreement with the 2021 Agreement, however, based
on our findings with respect to non-use of the impugned mark and effect of
termination notice returned hereinabove, we do not find it apposite, at this
prima facie stage, to deal with the said judgements.
7
25. The Appellant itself in its pleadings has submitted the effect of
Clause 22 onwards of the 2002 Agreement is that of a trademark assignment
of the impugned mark ‘AL KAMDHENU GOLD’. As per this pleading,
therefore, Appellant acknowledges that the Respondent No. 1/KL is the
proprietor of the impugned mark ‘AL KAMDHENU GOLD’ and
Respondent No. 1/KL has consented to assign the said mark to the
Appellant. However, Clauses 22 and 24 of the 2002 Agreement required the
Appellant to have the impugned mark registered for acquiring exclusive
proprietary rights. But, in the given facts where the Appellant failed to
acquire the registration of the impugned mark as per Clause 24 as well as
failed to use the impugned mark for its goods from 2002-2024, and the
Respondent No. 1/KL, with the termination notice dated 19.09.2024, has
sought to revoke all Agreements to mean and include the 2002 Agreement,
at this interim stage, the prima facie opinion of the learned Single Judge that
the Appellant having failed to secure statutory rights as contemplated in
Clause 22 and 24 and is not the proprietor of the impugned mark ‘AL
KAMDHENU GOLD’ is a plausible view and does not require any
interference in this appeal.
7
Paragraph 47 of I.A. No. 3990/2025
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26. Appellant’s submissions that the impugned mark ‘AL KAMDHENU
GOLD’ is a mark coined by the parties specially for the use of Appellant is
persuasive. However, the fact remains that the Appellant has been unable to
show, from the documents filed on record, any goodwill earned by the
Appellant in the said mark and/or any use of the said mark for its goods
prior to the issuance of the termination notice. The limited use of the
impugned mark shown by the Appellant prior to the termination notice is by
way of statutory notices, which, in our opinion, do not qualify as
advertisements of its goods for proving use of the mark so as to acquire
goodwill in the said mark for acquiring common law rights.
27. Learned Single Judge has also examined the claim of the Appellant on
the threshold of passing off and concluded that Appellant has been unable to
show any goodwill for the impugned mark ‘AL KAMDHENU GOLD’. The
deliberations of the learned Single Judge are set out at paragraph nos. 38 to
44 for the impugned judgment.
We are unable to take a contrary view, as no material has indeed been
brought on record by the Appellant to prove it earned any goodwill in the
impugned mark through advertisements from the years 2002 to 2024.
28. The Appellant has contended that Section 48(2) of the Act of 1999
has been wrongly relied upon by the learned Single Judge, as the said
section can have no applicability to the impugned mark ‘AL KAMDHENU
GOLD’, as the said mark is not registered and the use of the said mark by
the Appellant is therefore not governed by Section 48(2) of the Act of 1999
and would not enure to the benefit of Respondent No. 1/KL. We are not
adjudicating on this contention, in view of our findings on the Appellant’s
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failure to prove use of the mark and secure proprietary rights in the
impugned mark.
We however observe that, as a matter of fact, the Respondent No.
1/KL has not shown any independent use of the impugned mark ‘AL
KAMDHENU GOLD’ for its goods in these proceedings. The effect of this
has been considered by us later in this judgement.
29. Learned Single Judge after concluding that the Appellant has no
proprietary rights in the impugned mark ‘AL KAMDHENU GOLD’, and
has failed to prove any independent goodwill in the said mark, declined to
grant the injunction prayed for by the Appellant in its I.A. No. 3990/2025 in
CS(COMM) 130/2025. It thereafter, proceeded to consider the injunction
application I.A. No. 14115/2025 filed by the Respondent No. 1/KL in
CS(COMM) 569/2025. The discussion of the learned Single Judge is at
paragraph nos. 47 to 54 and 56 of the impugned judgement, which reads as
under: -
“47. KL has placed reliance on its registrations for Marks
incorporating ‘KAMDHENU GOLD’ and related formative marks.
The expression ‘KAMDHENU GOLD’, which forms dominant part of
the Impugned Mark is admittedly coined by KL and when taken as a
whole, constitutes a combination of two words being arbitrary and not
descriptive of the goods in question. The Impugned Mark wholly
incorporates KL’s registered Mark ‘KAMDHENU GOLD’, with the
addition of the prefix ‘AL’, which, prima facie, does not alter the
essential character of the Mark ‘KAMDHENU GOLD’. The dominant
and distinctive element of the Mark ‘KAMDHENU GOLD’ thus
stands appropriated in its entirety.
48. Admittedly, since the execution of 2002 Agreement, AIL’s
business activities are largely in relation to the manufacture of goods
under KAMDHENU Mark for KL, pointing to a market association of
the KAMDHENU Mark including the Mark ‘KAMDHENU GOLD’
with KL, instead of AIL. Given the identity of the goods, structural,
phonetic and conceptual similarity and the prominence of the element
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‘KAMDHENU GOLD’ in the Impugned Mark, any concurrent use of
the Impugned Mark by AIL is likely to cause confusion leading to
association of AIL’s use of the Impugned Mark with KAMDHENU
Mark and result in diversion of trade.
49. If AIL would have obtained registration of the Impugned Mark in
terms of 2002 Agreement, AIL could have asserted right over the
Impugned Mark. Although AIL initially filed the application for
registration of Impugned Mark in December 2002, subsequently the
same was abandoned in January 2008. This clearly reflects lack of
proactiveness on part of AIL to protect its rights. Although AIL
attributes this lapse to its counsel, it remains evident that no
substantive efforts were made by AIL to assert rights in the Impugned
Mark until nearly sixteen years later, when a new application under
TM Application No. 6742246 in Class 6 was submitted on 05.12.2024
after purported termination of 2002 Agreement.
50. Ordinarily, an entity seeking proprietary rights in a mark is
expected to exercise due diligence in safeguarding such interests. The
delayed filing, particularly following disputes between the Parties,
including the receipt of the termination letter dated 19.09.2024 and
caution notices issued on 06.11.2024 supports KL’s argument that
AIL’s claim of exclusive rights over the Impugned Mark is potentially
untenable.
51. The Annual Reports submitted by AIL do not indicate that the
marketability of AIL’s products is dependent on the use of the
Impugned Mark. Furthermore, AIL has not provided evidence to
demonstrate that its sales are significantly influenced by the use of the
Impugned Mark. The records also show that KL has substantial sales
figures and advertising expenditures, which support the conclusion
that the marks ‘KAMDHENU’/‘KAMDHENU GOLD’ serve as the
primary and established identifiers for KL’s goods and business. This
increases the likelihood that consumers may associate AIL’s products
or business with those of KL.
52. Undisputedly, AIL’s adoption of the Impugned Mark stems solely
from 2002 Agreement and does not originate independently. Given
these circumstances, pending a conclusive determination regarding the
Parties’ rights under the Agreements and the ongoing Applications for
registration of the Impugned Mark by both AIL and KL, AIL does not
have any right to use the Impugned Mark independently.
53. Any use of the Impugned Mark by AIL is likely to adversely affect
KL, potentially causing irreparable harm to KL’s asserted rights.
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Accordingly, the balance of convenience favors KL, as KL is the
registered proprietor of ‘KAMDHENU’, ‘KAMDHENU GOLD’, and
‘KAMDHENU GOLD TMT’.
54. KL has also provided evidence of use, goodwill, and reputation
associated with the KAMDHENU Mark, ‘KAMDHENU GOLD’ and
‘KAMDHENU GOLD TMT’. This establishes KL’s entitlement to
protection against any actions that might diminish the goodwill
attached to the KAMDHENU Mark in the marketplace.
…. …… ……
56. Given that the products at issue are reinforcement steel bars
utilized in transportation and infrastructure projects, where safety and
structural integrity are critical, any defect or deficiency associated
with goods bearing the Impugned Mark may reasonably be associated
with KL, thereby impacting KL’s reputation and goodwill. The nature
of these products makes monetary compensation insufficient for such
injury. Therefore, permitting AIL to continue use of the Impugned
Mark is likely to cause irreparable harm to KL. Accordingly, KL has
established prima facie case for infringement and passing off,
warranting the grant of an interim injunction in favour of KL and
against the Defendants in the KL Suit.”
[Emphasis Supplied]
30. Appellant has contended that the Respondent No. 1/KL never used
‘KAMDHENU GOLD’ or ‘KAMDHENU GOLD TMT’ at any time prior to
2024. It contends that the use of the Respondent No. 1/KL for the said mark
is only from 2025 onwards. It contends that the findings of the learned
Single Judge with respect to reputation and goodwill in the said marks in
favour of the Respondent No.1/KL are unsupported by the record.
We have considered the aforesaid submissions of the Appellant. The
said submissions of the Appellant would have been relevant if the
interlocutory injunction had been granted only on the threshold of passing
off qua the marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD
TMT’. However, the learned Single Judge has granted the interlocutory
injunction against the Appellant on the basis of prima facie finding of
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infringement as the Respondent No. 1/KL are admittedly the registered
proprietor of the mark ‘KAMDHENU GOLD’ bearing TM no. 842704,
mark ‘KAMDHENU GOLD TMT’ bearing TM no. 1009954 and the mark
‘KAMDHENU’ bearing TM no. 717214.
31. In view of the TM registration nos. 1009954 and 717214, we are,
therefore, of the considered opinion that the finding of the learned Single
Judge that Appellant’s use of the impugned mark infringes the said
registered marks is correct and does not merit any interference, and the
injunction is liable to be maintained on the findings of infringement alone.
32. On the aspect of the balance of convenience, considering the fact that
the Appellant’s own manufacturing unit has been shut down, and the relief
sought by it is only to enable third parties (appointed post issuance of
termination notice) to manufacture goods under the impugned mark, we find
no ground of interference with the findings of the learned Single Judge.
Similarly, the reasons recorded by the learned Single Judge on the aspect of
irreparable injury also require no interference.
33. The Appellant admittedly sells its goods under its house mark
ASHIANA, and is therefore free to continue its steel business under the said
mark.
34. We, however, have reservations as regards to the findings returned by
the learned Single Judge on the issue of prior use by the Respondent No.
1/KL of the impugned mark ‘KAMDHENU GOLD’ and ‘KAMDHENU
GOLD TMT’ at paragraph 54 of the impugned judgment, as the material on
record does not indicate any independent use by the Respondent No. 1/KL
of the marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’ for
its goods prior to the institution of the suits in the year 2025.
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35. In addition, undoubtedly, as per Clause 22 of the 2002 Agreement,
Respondent No. 1/KL had undertaken to withdraw its trademark application
no. 842704 dated 24.02.1999 for the trademark ‘KAMDHENU GOLD’. The
Respondent No. 1’s action of pursuing the said application, during the
subsistence of the 2002 Agreement and issuance of the registration
certificate on 17.11.2003, has not been sufficiently explained by the
Respondent No. 1/KL.
The Appellant has placed on record a letter dated 02.01.2003, stated
to have been issued by the Respondent No. 1/KL, addressed to the Registrar
of Trademarks for the withdrawal of the said application no. 842704. The
said registration has prima facie been obtained in contravention of the 2002
Agreement. However, this TM registration for the mark ‘KAMDHENU
GOLD’ finds mention in the subsequent 2021 Agreement, and the said
Agreement has been signed by the Appellant, which prima facie shows that
the Appellant either condoned or overlooked this breach of the Respondent
No. 1/KL. Similarly, the Respondent No. 1’s action of pursuing trademark
application no. 1009954 dated 17.05.2001 for trademark ‘KAMDHENU
GOLD TMT’, which was registered on 13.06.2005, is also contrary to the
understanding between the parties as recorded in the 2002 Agreement.
The bad faith of the Respondent No. 1/KL in pursuing the said
applications contrary to Clause 22 of the 2002 Agreement is writ large and
also evident from the fact that it has not shown any use of the said marks
prior to the year 2025. These marks i.e., ‘KAMDHENU GOLD’ and
‘KAMDHENU GOLD TMT’ have been used by the Respondent No. 1/KL
only post termination notice dated 19.09.2024 to checkmate the Appellant.
However, since the Appellant itself frittered away its rights under the 2002
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Agreement, this Court finds no ground to restrain Respondent No. 1/KL
from using the said registered marks at this interim stage pending final
disposal.
36. It is however, directed that, any use by the Respondent No. 1/KL of
the aforesaid marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD
TMT’ on its goods shall be subject to the final decision in CS(COMM)
130/2019, and the Respondent No. 1/KL will not be entitled to claim any
equities on account of its use of the said mark during the pendency of the
suit.
37. The Appellant has explained that the impugned mark ‘AL
KAMDHENU GOLD’ was coined keeping in view its corporate name,
Ashiana Limited. A perusal of Clauses 22 and 23 of the 2002 Agreement
indeed shows that the Respondent No. 1/KL acknowledged the superior
rights of the Appellant to adopt ‘AL KAMDHENU GOLD’ subject to the
condition stipulated in Clause 24 of the 2002 Agreement. The Appellant
indeed adopted the said mark in the year 2002 and used it in its corporate
filings, even though its use on goods has not been established. In these facts,
the Respondent No.1’s recent action of applying for registration of the
impugned mark ‘AL KAMDHENU GOLD’ vide trademark application no.
6759794 dated 17.12.2024 is prima facie not in good faith and only intended
to exclude the Appellant from getting the registration.
Respondent No. 1/KL has never used the said impugned mark, and it
is therefore hereby restrained from now using the said mark for its goods
during the pendency of these suits. The balance of convenience in this
regard is in favour of the Appellant so as to protect its rights during the
pendency of the suits.
Signature Not Verified
Signed By:MOHIT
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38. The scope of interference, while hearing appeal against the order
passed by a Commercial Court, in Intellectual Property matters, under Order
XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908 [‘CPC’] stands
settled by the judgment of the Supreme Court in Wander Ltd. v. Antox
8
India (P) Ltd. . The relevant paragraph reads as under: -
“13. On a consideration of the matter, we are afraid, the appellate
bench fell into error on two important propositions. The first is a
misdirection in regard to the very scope and nature of the appeals
before it and the limitations on the powers of the appellate court to
substitute its own discretion in an appeal preferred against a
discretionary order. The second pertains to the infirmities in the
ratiocination as to the quality of Antox's alleged user of the trademark
on which the passing-off action is founded. We shall deal with these
two separately.
14.The appeals before the Division Bench were against the exercise of
discretion by the Single Judge. In such appeals, the appellate court
will not interfere with the exercise of discretion of the court of first
instance and substitute its own discretion except where the discretion
has been shown to have been exercised arbitrarily, or capriciously or
perversely or where the court had ignored the settled principles of law
regulating grant or refusal of interlocutory injunctions. An appeal
against exercise of discretion is said to be an appeal on principle.
Appellate court will not reassess the material and seek to reach a
conclusion different from the one reached by the court below if the
one reached by that court was reasonably possible on the material. The
appellate court would normally not be justified in interfering with the
exercise of discretion under appeal solely on the ground that if it had
considered the matter at the trial stage it would have come to a
contrary conclusion. If the discretion has been exercised by the trial
court reasonably and in a judicial manner the fact that the appellate
court would have taken a different view may not justify interference
with the trial court's exercise of discretion. After referring to these
principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v.
9
Pothan Joseph
8
1990 Supp SCC 727
9
AIR 1960 SC 1156
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“... These principles are well established, but as has been observed by
10
Viscount Simon in Charles Osenton & Co. v. Jhanaton ‘...the
law as to the reversal by a court of appeal of an order made by a
judge below in the exercise of his discretion is well established,
and any difficulty that arises is due only to the application of well
settled principles in an individual case’.
The appellate judgment does not seem to defer to this principle. ….”
[Emphasis supplied]
39. In its recent decision in Pernod Ricard India (P) Ltd. v. Karanveer
11
Singh Chhabra , the Supreme Court has reiterated the aforesaid principles
at paragraph 19.8 which reads as under: -
“19.8. In Wander Ltd ., this Court elaborated the principles governing
the grant or refusal of interim injunctions in trademark infringement
and passing off actions. It was underscored that appellate courts ought
to be circumspect in interfering with the discretionary orders of lower
courts in such matters. Interference is warranted only where the
discretion has been exercised arbitrarily, capriciously, perversely, or
in disregard of settled legal principles.
[Emphasis supplied]
40. Thus, as summarized by the coordinate Bench in Sanjay Gupta and
Vinay Gupta v. Vineet Jain, Proprietor of Vijay pal Vineet Kumar and
12
Co . an appeal against an interlocutory order passed by the Commercial
Court, the Appellate Court would not substitute its subjective view for the
view adopted by the Commercial Court. It is only if the Commercial Court
errs on principle that the Appellate Court would interfere; otherwise, factual
and discretionary evidence and findings of the Commercial Court are
ordinarily immune from interference in an appeal.
41. We have examined the Appellant’s submissions keeping these settled
principles in mind.
10
1942 AC 130
11
2025 SCC OnLine SC 1701
12
2026: DHC:1248-DB
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42. In view of the aforesaid findings, we are of the considered opinion
that the learned Single Judge has rightly observed that the Appellant, having
failed to obtain statutory and common law rights in the impugned mark
which is deceptively similar to the Respondent No. 1’s registered marks
‘KAMDHENU’, ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’
cannot be permitted to use the impugned mark post the termination of the
license agreements as well as revocation of the consent for the adoption of
the impugned mark ‘AL KAMDHENU GOLD’, at this interlocutory stage.
The said directions are necessary for preserving the rights of the Respondent
No. 1/KL in its suit CS(COMM) 569/2025, pending final determination.
43. We have, however, issued directions qua the Respondent No. 1’s use
of the mark ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’ at
paragraph ‘36’ and restraint qua the Respondent No. 1’s use of the
impugned mark ‘AL KAMDHENU GOLD’ at paragraph ‘37’ of this Order.
These directions and restraints are necessary for preserving the rights of the
Appellant in its suit CS(COMM) 130/2025, pending final determination.
44. The Appellant has contended that the findings returned by the learned
Single Judge on the rights of the parties under the license agreements in the
impugned judgment on novation, etc. are final in nature and would prejudice
the final determination of the suit. In our considered opinion, the said
apprehension of the Appellant is misplaced as it is settled law that the
findings returned in the orders passed for deciding interim injunction
application are prima facie in nature and do not bind the Court while
deciding the suit finally. We, however, clarify for the benefit of the parties
that any observation made by the learned Single Judge and this Court for
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deciding the interlocutory application and this appeal are prima facie and
will not bind the Court which shall finally decide the suits.
45. With the aforesaid directions, the present appeal stands dismissed.
Pending applications, if any, stands disposed of.
46. No order as to costs.
MANMEET PRITAM SINGH ARORA, J
V. KAMESWAR RAO, J
JULY 01, 2026/IB/AJ
Signature Not Verified
Signed By:MOHIT
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