Ashiana Ispat Limited v. Kamdhenu Limited & Ors.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 11(4)Section 27(2)Section 28(3)Section 29Section 48(2)

Provisions considered: Sections 11(4), 27(2), 28(3), 29 and 48(2) of the Trade Marks Act, 1999.

Brief facts

Ashiana Ispat and Kamdhenu Limited were originally one joint family business that split in 2002. In 1997 Kamdhenu Limited let Ashiana use the KAMDHENU mark as a licensee, and Ashiana could adopt and use a new mark, AL KAMDHENU GOLD. Ashiana applied to register AL KAMDHENU GOLD in 2002 but let the application go abandoned in 2008, for sixteen years. Meanwhile Kamdhenu Limited never withdrew its own application and obtained registrations for KAMDHENU GOLD and KAMDHENU GOLD TMT in 2003 and 2005. In 2021 the parties signed a new agreement about the KAMDHENU and KAMDHENU NXT marks. In 2024 Kamdhenu Limited terminated the previous agreement, alleging non-performance. Ashiana then filed a fresh application for AL KAMDHENU GOLD in December 2024 and started actually using the mark on goods only from 2025. Both parties sued each other, each seeking an injunction; the single bench dismissed Ashiana's injunction request and granted Kamdhenu Limited's.

Issues before the Court

1. Whether the 2002 Agreement gave Ashiana proprietary or ownership rights in AL KAMDHENU GOLD, or only a conditional licence.
2. Whether the 2002 Agreement was novated by the 2021 Agreement.
3. Whether Ashiana acquired any statutory or common-law rights in AL KAMDHENU GOLD through use between 2002 and 2024.
4. Whether Kamdhenu Limited's registrations of KAMDHENU GOLD and KAMDHENU GOLD TMT, obtained in breach of its 2002 promise to withdraw, should still be protected by injunction.

Court's findings

Ownership under the 2002 Agreement was conditional on registration; mere permission to adopt and use was not the same as an assignment of ownership. Ashiana never got the mark registered, letting its 2002 application lapse in 2008, and showed no evidence of actual use of AL KAMDHENU GOLD on goods from 2002 to 2024, only mentions in corporate and statutory filings, which do not count as trade mark use to build goodwill. Ashiana began actually selling goods under the mark only in 2025, right after the relationship broke down, undermining its claim of long-standing rights. Kamdhenu Limited breached its own promise and never withdrew the mark, but this breach was overlooked by Ashiana, which later signed the 2021 Agreement referencing that registration without objection. Following Wander Ltd. v. Antox India, appellate courts should not interfere with a trial court's discretionary injunction order unless it was arbitrary, capricious or against settled legal principles.

Decision

The Division Bench largely upheld the position that Ashiana never registered AL KAMDHENU GOLD and never used the mark for decades, so it has no rights over it. The injunction against Ashiana stands based on Kamdhenu Limited's registered marks. Because Kamdhenu Limited had itself not used KAMDHENU GOLD until 2025, the Court also restrained Kamdhenu Limited while the case was pending. Ashiana can still sell steel under its own name ASHIANA. All conclusions are interim and will not affect the final trial decision; the appeal was dismissed.

Cases cited

• Wander Ltd. v. Antox India (P) Ltd.

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Assignment Discretionary Order Interlocutory Injunction Licence Non-use Novation of Contract