Introduction: The case of Kamdhenu Ispat Ltd. v. Kamdhenu Industries Ltd. and related suits represents a complex trademark dispute involving multiple parties, all centered around the use of the "Kamdhenu" trademark and associated intellectual property. The litigation revolves around allegations of trademark infringement, passing off, and the validity of family settlements that purportedly govern the rights to use the trademark for different goods. The plaintiff, Kamdhenu Ispat Ltd., sought to protect its registered trademarks and restrain the defendants from using similar marks and corporate names that could cause confusion in the market. The defendants, including Kamdhenu Industries Ltd. and Kamdhenu Cement Ltd., countered by asserting their rights based on family arrangements and denying infringement. The case raises critical issues of trademark law, corporate identity, and the enforceability of family settlements in a commercial context.
Factual Background: Kamdhenu Ispat Ltd., the plaintiff, was incorporated in 1994 and engaged in manufacturing steel bars and other allied products under trademarks such as Kamdhenu, Kamdhenu Gold, Kamdhenu Saria, and Kamdhenu TMT Gal. These marks were registered since 1996 across various classes, and the plaintiff claimed significant goodwill due to 14 years of uninterrupted use, supported by substantial advertising and sales figures.
The defendant, Kamdhenu Industries Ltd., was led by Pradeep Kumar Agarwal, who was a former director and promoter of the plaintiff company and the brother of its current directors, Satish Kumar Agarwal and Sunil Kumar Agarwal. A license agreement dated October 8, 2005, allowed the defendant to use the plaintiff’s trademarks for stainless steel pipes and fittings under Class 6 for two years.
After the agreement expired, the defendant allegedly continued using the Kamdhenu mark and logo, including on its website, and adopted the mark "Prime Gold" for steel bars, which the plaintiff argued was deceptively similar to its "Kamdhenu Gold" mark and punchline "Sampurna Suraksha Ki Guarantee." The defendant also used the plaintiff’s slogan "Desh Ki Shaan" and claimed affiliation with the Kamdhenu Group, leading to allegations of misrepresentation. Family settlements dated February 11, 2007, February 23, 2007, and May 26, 2007, were cited by the defendant, claiming these agreements permitted the use of the Kamdhenu mark for cement and allied products, while the plaintiff denied their binding nature, asserting they were preliminary discussions.
Procedural Background: The litigation comprises four suits filed before the Delhi High Court: CS(OS) No. 302/2008, CS(OS) No. 425/2008, CS(OS) No. 1882/2008, and CS(OS) No. 2616/2008. In CS(OS) No. 302/2008, filed on February 14, 2008, Kamdhenu Ispat Ltd. sought a permanent injunction, passing off, rendition of accounts, and delivery up against Kamdhenu Industries Ltd., alleging unauthorized use of its trademarks and corporate name. Interim applications (I.A. Nos. 3845/2008, 6564/2008, and 8055/2008) were filed for injunctive relief and to vacate an ex-parte injunction granted on February 18, 2008, and modified on February 25, 2008.
Similar applications were filed in the other suits, involving Kamdhenu Cement Ltd. as plaintiff and defendant. On February 18, 2008, the court issued an ex-parte interim injunction restraining the defendant from using the plaintiff’s trademarks and appointed a Local Commissioner, whose report on April 7, 2008, found no infringing Kamdhenu-branded goods at the defendant’s premises, only "Prime Gold" and "Diamond" brands. The defendant filed a written statement claiming rights under family settlements and denying infringement, while the plaintiff denied the settlements’ validity in its replication.
Legal Issue:The primary legal issue was whether the defendant’s use of the "Kamdhenu" mark and corporate name constituted trademark infringement or passing off, particularly in light of the expired license agreement and alleged family settlements.? Sub-issues included whether the defendant’s use of "Prime Gold" and the punchline "Hum Dete Hain Sampurn Suraksha Ki Guarantee" infringed the plaintiff’s trademarks, whether the use of "Kamdhenu" in the defendant’s corporate name violated Section 29(5) of the Trade Marks Act, 1999, and whether the family settlements were binding to permit the defendant’s use of the Kamdhenu mark for cement and allied products. The court also considered whether the plaintiff’s non-disclosure of the family settlements warranted vacating the interim injunction and whether delay or acquiescence barred the plaintiff’s claims.
Discussion on Judgments: The parties cited several judgments to support their arguments, which the court considered in its analysis. The plaintiff relied on Atlas Cycles (Haryana) Ltd. v. Atlas Products Pvt. Ltd., 146 (2008) DLT 274, to argue that using "Kamdhenu" in the defendant’s corporate name could cause market confusion, even if the products were sold under "Prime Gold." In this case, the court restrained the defendant from using "Atlas" in its corporate name for bicycles, despite the products being branded differently, due to potential deception. Similarly, Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., AIR 2002 SC 117, was cited to support restraining the use of a similar corporate name to prevent confusion, where the Supreme Court upheld an injunction against the defendant’s use of "Mahindra" in its name. The plaintiff also referenced Gujarat Bottling Company Ltd. v. Coca Cola Company, (1995) 5 SCC 545, to emphasize the principles for granting interim injunctions, focusing on the need to protect the plaintiff’s rights against irreparable harm. Midas Hygienic Industries Pvt. Ltd. v. Sudhir Bhatia, 93 (2001) DLT 667, was cited to argue that even with some delay, an injunction should issue in cases of trademark infringement, especially if the adoption is dishonest. Other cases included K.G. Khosla Compressors Ltd. v. M/s. Khosla Extraktions Ltd., AIR 1986 Del 181, and British Bata Shoe Company Ltd. v. Czechoslovak Bata Company Ltd., 64 Reports of Patent, Design & Trademark Cases No. 4, to reinforce the principle that corporate names causing confusion should be restrained. Montari Overseas Ltd. v. Montari Industries Ltd., ILR 1997 Del 64, and Ram Dev Food Products (P) Ltd. v. Arvind Bhai Ram Bhai Patel, (2006) 8 SCC 726, were cited to support the plaintiff’s claim that the defendant’s use of "Kamdhenu" was deceptive. Rob Mathys India Pvt. Ltd. v. Synthes AG Chur, (1998) 1 RAJ 396 (Del.), and M/s. Power Control Appliances v. Sumit Machines Pvt. Ltd., (1994) 2 SCC 448, were referenced to underscore the protection of registered trademarks and the prevention of passing off. The plaintiff also cited Arunima Baruah v. Union of India, (2007) 6 SCC 120, Ganpat Bhai Mahijibahi Solanki v. State of Gujarat, (2008) 12 SCC 353, and S.J.S. Business Enterprises (P) Ltd. v. State of Bihar, (2004) 4 SCC 176, to argue that non-disclosure of the family settlements was irrelevant as the suit focused on statutory trademark rights.
The defendant relied on Sahu Madho Das v. Pandit Mukand Ram and Maturi Pullaiah v. Maturi Narasimham to argue that family settlements are favored by courts to promote harmony and should be upheld, even without formal legal claims. The defendant also cited Jaininder Jain v. Arihant Jain, 136 (2007) DLT 418, though the court noted that this decision was overruled by a Division Bench in 2009 (41) PTC 492 (Del.), which supported the enforceability of family settlements.
Reasoning and Analysis of the Judge: The court acknowledged the plaintiff’s long-standing use of the Kamdhenu mark since 1996 and its registration across multiple classes, establishing significant goodwill. The expired license agreement of October 8, 2005, explicitly prohibited the defendant from using the Kamdhenu mark for steel products after its termination, supporting the plaintiff’s claim of infringement for stainless steel pipes and related goods. However, the court found the defendant’s use of "Prime Gold" for steel bars to be prima facie distinct from "Kamdhenu Gold," as it was not deceptively similar, and allowed its continued use.
The punchline "Hum Dete Hain Sampurn Suraksha Ki Guarantee" was deemed too similar to the plaintiff’s "Sampurna Suraksha Ki Guarantee," justifying an injunction against its use. The use of "Kamdhenu" in the defendant’s corporate name and website was analyzed under Section 29(5) of the Trade Marks Act, 1999, which deems such use as infringement if it pertains to goods for which the mark is registered. The court found a likelihood of confusion, supported by precedents like Atlas Cycles and Mahendra & Mahendra, but noted the defendant’s argument of delay, as Kamdhenu Industries Ltd. was incorporated in 1998 without prior objection. The court held that delay alone does not bar injunctive relief under Section 29(5), as no limitation period is prescribed, unlike Section 22 of the Companies Act, 1956, which imposes a five-year limit for rectification.
Regarding the family settlements, the court found prima facie evidence of their existence, supported by signed documents and partial performance, such as the transfer of Rs. 20 lakhs and resignations from related companies. The court rejected the plaintiff’s claim that these were mere discussions, noting their formal documentation and partial execution, including a resolution dated May 14, 2007, for the assignment of the Kamdhenu mark for cement for Rs. 1.4 crores. The court expressed skepticism about the plaintiff’s alleged cancellation letter of November 6, 2007, due to its absence in initial pleadings and lack of prior communication, suggesting possible fabrication. Applying the principles for interim injunctions from Gujarat Bottling, the court found that the defendant had a stronger prima facie case for using the Kamdhenu mark for cement, given its established use since May 2007 and the plaintiff’s lack of commercial activity in that sector. The balance of convenience favored the defendant to avoid irreparable harm, subject to depositing the remaining Rs. 1.2 crores.
Final Decision: The court disposed of all interim applications with a balanced order. The defendant was restrained from using the Kamdhenu trademark, logo, and punchline "Sampurna Suraksha Ki Guarantee" for steel bars, stainless steel pipes, and allied goods in Class 6, as these were registered by the plaintiff.
However, the defendant was permitted to use "Prime Gold" for steel products and "Desh Ki Shaan," as these were not deceptively similar. The defendant was also barred from using "Kamdhenu" in its web pages, domain names, or advertisements combining steel and cement businesses to prevent deception. Conversely, the defendant was allowed to use the Kamdhenu mark for cement, PoP, wall putty, and waterproofing compounds, subject to depositing Rs. 1.4 crores with the court, with the plaintiff granted liberty to withdraw this amount without prejudice.
The plaintiff was restrained from using the Kamdhenu mark for these cement-related goods. The court scheduled the suits for framing issues on July 6, 2010, leaving the validity of the family settlements and related disputes for trial.
Law Settled in This Case:The case clarified several principles under Indian trademark law. It reaffirmed that using a registered trademark as part of a corporate name for related goods constitutes infringement under Section 29(5) of the Trade Marks Act, 1999, irrespective of delay, as no limitation period applies, distinguishing it from the five-year limit under Section 22 of the Companies Act, 1956. The court emphasized that family settlements, if prima facie valid and properly executed, can govern trademark usage rights, even for corporate entities, provided they are documented and acted upon. The decision also highlighted the importance of full disclosure in interim injunction applications, noting that non-disclosure of material facts, such as family settlements, could impact the grant of relief, though not fatally in this case. Finally, the court underscored the principles for granting interim injunctions, requiring a prima facie case, balance of convenience, and irreparable harm, as established in Gujarat Bottling, while allowing distinct marks like "Prime Gold" to coexist if not deceptively similar.
Case Title: Kamdhenu Ispat Ltd. v. Kamdhenu Industries Ltd.: Date of Order: May 19, 2010:Case Number: CS(OS) No. 302/2008 :Neutral Citation: 2010 SCC OnLine Del 2021 : (2010) 43 PTC 533 (Del):Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Manmohan Singh
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
