Kamdhenu Ispat Ltd. v. Kamdhenu Industries Ltd
Overview
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 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, a former director and promoter of the plaintiff company and the brother of its current directors. 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, adopted the mark “Prime Gold” for steel bars (allegedly similar to “Kamdhenu Gold”), and used slogans such as “Desh Ki Shaan” and “Sampurna Suraksha Ki Guarantee.” Family settlements from 2007 were cited by the defendant to justify its use of the trademark, while the plaintiff denied their binding nature.
Procedural Background
The litigation comprises four suits before the Delhi High Court: CS(OS) Nos. 302/2008, 425/2008, 1882/2008, and 2616/2008. In CS(OS) No. 302/2008, Kamdhenu Ispat Ltd. sought a permanent injunction and other reliefs against Kamdhenu Industries Ltd. for unauthorized use of its trademarks and corporate name.
An ex-parte interim injunction was granted on February 18, 2008. A Local Commissioner appointed by the court found no infringing Kamdhenu-branded goods at the defendant’s premises. The defendant filed a written statement claiming rights under family settlements, which the plaintiff denied in its replication.
Legal Issue
The core legal issue was whether the defendant’s use of the “Kamdhenu” mark and corporate name constituted trademark infringement or passing off. Sub-issues included:
- Whether use of “Prime Gold” and the punchline infringed the plaintiff’s rights.
- Whether use of “Kamdhenu” in the corporate name violated Section 29(5) of the Trade Marks Act, 1999.
- Whether family settlements permitted the use of the trademark.
- Whether delay, acquiescence, or non-disclosure barred the plaintiff’s claims.
Discussion on Judgments
The plaintiff relied on several judgments including:
- Atlas Cycles v. Atlas Products – use of similar corporate names can mislead even with different branding.
- Mahendra & Mahendra Paper Mills v. Mahindra & Mahindra – injunction upheld to prevent confusion from similar names.
- Gujarat Bottling Co. v. Coca Cola Co. – principles on granting interim injunctions.
- Midas Hygienic Industries v. Sudhir Bhatia – delay doesn’t bar injunction in dishonest trademark use.
- Others: K.G. Khosla Compressors, British Bata, Montari Overseas, Ram Dev Foods, Rob Mathys India, Power Control Appliances.
The defendant relied on:
- Sahu Madho Das v. Mukand Ram and Maturi Pullaiah v. Narasimham – supporting family settlements.
- Jaininder Jain v. Arihant Jain – though overruled, cited for enforcement of family settlements.
Reasoning and Analysis of the Judge
The court acknowledged the plaintiff’s long-standing use and trademark registration. The license agreement explicitly prohibited post-termination use of the Kamdhenu mark. The court allowed “Prime Gold” to be used as it was not deceptively similar but restrained the use of the similar punchline.
Use of “Kamdhenu” in the corporate name was found likely to cause confusion under Section 29(5) of the Trade Marks Act, 1999. Delay was not fatal to the claim, as no limitation applied under the Trade Marks Act unlike the Companies Act.
The court accepted the prima facie validity of the family settlements based on signed documents, partial performance, and financial transactions. The court doubted the plaintiff’s claim of cancelling the settlement due to lack of supporting evidence. The balance of convenience favored the defendant regarding use in cement-related goods.
Final Decision
The court disposed of all interim applications:
- Restrained the defendant from using “Kamdhenu”, its logo and punchline for steel and allied products.
- Permitted use of “Prime Gold” and “Desh Ki Shaan” for steel, finding no deceptive similarity.
- Barred defendant from using “Kamdhenu” on web or ads involving both steel and cement.
- Allowed defendant to use “Kamdhenu” for cement-related products, subject to deposit of ₹1.4 crores with liberty for plaintiff to withdraw.
- Restrained plaintiff from using “Kamdhenu” for cement-related goods.
The case was listed for framing of issues on July 6, 2010.
Law Settled in This Case
- Use of registered trademark in corporate names for related goods is infringement under Section 29(5) of the Trade Marks Act, even if delayed.
- Family settlements, if documented and partially executed, can determine trademark rights.
- Full disclosure is vital in interim injunctions; non-disclosure may affect relief.
- Interim injunctions depend on prima facie case, balance of convenience, and irreparable harm.
- Distinct marks like “Prime Gold” can coexist if not deceptively similar.
Case Details
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)
Court: High Court of Delhi
Judge: Hon’ble Mr. Justice Manmohan Singh
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
Email: [email protected], Ph no: 9990389539
