Maintainability vs. Entertainability: Trademark Writ Petitions against Registrar's Errors
Case Title: Ashiana Ispat Limited v. Kamdhenu Limited & Ors.
Order Date: 03 September 2025
Case Number: LPA 407/2025
Neutral Citation: Not Explicitly Provided in Judgment
Name of Court: High Court of Delhi
Hon'ble Judges: Justice C. Hari Shankar and Justice Om Prakash Shukla
Facts
Ashiana Ispat Limited (Appellant) applied to register a trademark "AL KAMDHENU GOLD" for its products under the Trade Marks Act, 1999. Several applications were made, and some were accepted and advertised, while others received an examination report (FER) from the Registrar citing certain conflicting trademarks but not all. Kamdhenu Limited (Respondent) claimed that many of its own previously registered trademarks were not cited as similar marks in the Registrar’s process. Instead of opposing the trademark through the standard legal channel, Kamdhenu Limited challenged this process by filing writ petitions in court, alleging procedural lapses by the Registrar and omission in the examination of similar marks.
Dispute
Main Dispute: Whether the Registrar of Trade Marks properly followed the legal procedures for examining and advertising the trademark applications, given that all potentially conflicting registered trademarks (especially Kamdhenu’s) were not cited or considered in the examination report.
Legal Challenge: Kamdhenu Limited questioned the integrity of the Registrar’s trademark examination, particularly concerning the omission of 16 of its registered marks from the search report, and whether the acceptance/advertsisement of Ashiana Ispat’s trademark applications should be set aside for fresh examination.
Legal Reasoning
Trademark Registration Procedure
The judgment began by explaining the process for trademark registration under the Trade Marks Act and the Trade Marks Rules:
Application is filed under Section 18.
Registrar examines it, may accept or refuse it (Section 18(4)).
Registrar can withdraw acceptance before registration if mistakes are found (Section 19).
If accepted, Registrar advertises the application (Section 20).
Anyone can oppose within 4 months of advertisement (Section 21).
If opposition is decided in applicant’s favour or if no opposition is filed, registration proceeds (Section 23).
Rule 33 of the Trade Marks Rules outlines detailed examination steps, requiring a search of prior similar marks and issuing a First Examination Report (FER) highlighting objections and similar marks. If the applicant does not respond timely, the application may be treated as abandoned.
Writ Petition Maintainability
Maintainability vs. Entertainability: The court discussed that “maintainability” relates to whether the High Court has basic jurisdiction under Article 226 of the Constitution to hear the petition. “Entertainability” relates to whether the court should exercise this jurisdiction, especially when alternative remedies exist.
A writ petition is maintainable if it fits Article 226. Courts have the discretion whether to entertain it, and usually don’t if alternate remedies are available unless exceptional circumstances exist.
The court cited Supreme Court judgments, clarifying that alternate remedy is usually a policy or discretionary bar, not a legal bar, and in exceptional cases (like violation of natural justice, lack of jurisdiction, fundamental rights breach, etc.), a writ can be entertained even if another remedy exists.
Registrar’s Duty and Rights of Trademark Owners
The Registrar is duty-bound to cite all prior, confusingly similar marks in the FER and give the applicant a chance to respond.
Owners of existing registered marks have a right to see their marks cited in FERs and protect their intellectual property.
If Registrar omits similar marks from the examination, affected owners can challenge this, even via a writ petition (i.e., it is actionable if Registrar is negligent).
Court’s Approach to the Case
The Single Judge (previous hearing) had allowed Kamdhenu’s writ petitions and ordered the Registrar to conduct a fresh (de novo) examination of the trademark applications, without formally issuing notice or allowing Ashiana Ispat to file a counter-affidavit.
The appellate court disagreed with this on procedural fairness grounds, stating that Ashiana Ispat should have been allowed to file a counter-affidavit in response, as the Single Judge’s approach was overly summary.
The court clarified that while the writ petition was maintainable, whether it should be entertained (especially given available alternative remedies) required fuller consideration and an opportunity for all parties to make submissions.
The appellate court quashed the Single Judge’s order and directed a fresh hearing, returning the matter to the Single Judge so all parties could be properly heard.
Decision
The appellate court set aside (quashed) the Single Judge’s impugned order.
Affirmed that the writ petition was maintainable (not barred by the availability of alternative remedy).
Left open the question of entertainability – whether the writ petition should be pursued despite alternative remedies, for the Single Judge to decide after hearing both sides.
Directed that Ashiana Ispat (appellant) be given formal notice and time to file a counter-affidavit; Kamdhenu can file a rejoinder.
Restored writ petitions to Single Judge’s file for fresh decision.
Directed both parties to appear for re-hearing on a fixed date.
All other issues (including territorial jurisdiction and Kamdhenu’s right to file trademark oppositions) left open for the Single Judge to decide.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
