The case of Amba Shakti Steels Ltd. v. Sequence Ferro Private Limited revolves around a trademark dispute concerning the similarity between the trademarks “AMBA” and “AMMAJI.” The appellant, Amba Shakti Steels Ltd., alleged that Sequence Ferro Private Limited had adopted a deceptively similar trademark, leading to confusion among consumers. The case primarily focuses on trademark infringement, copyright infringement, and passing off claims.

Factual Background:

• Amba Shakti Steels Ltd., originally incorporated as K.P. Steel Products Private Limited in 1989, is a manufacturer of steel bars, billets, angles, channels, and sponge iron.
• The company has been using the trademarks "AMBA" and "AMBA SHAKTI" since 1993 and has obtained multiple trademark registrations under the Trade Marks Act, 1999.
• The appellant holds copyright protection for its trade label and has consistently invested in branding and advertising.
• The company claims substantial goodwill, with a turnover of ₹358.58 crores for the financial year 2022-23.
• The respondent, Sequence Ferro Private Limited, adopted the trademark "AMMAJI" in December 2022 and applied for its registration in Class 06 for TMT bars and related products.
• The respondent claimed sales of ₹42.43 crores within six months.
• The appellant contended that the adoption of "AMMAJI" was dishonest and aimed at leveraging its established goodwill.

Procedural Background:

• Amba Shakti Steels Ltd. filed a suit (CS Comm 738/2023) seeking a permanent injunction against the respondent for using the mark “AMMAJI.”
• The appellant also filed an application under Order XXXIX Rules 1 and 2 of the CPC for an interim injunction.
• The Commercial Court dismissed the interim injunction application on January 18, 2024, citing the visual distinctiveness of the trademarks and the appellant's inaction against other third parties using “AMBA.”
• Aggrieved by this order, the appellant preferred an appeal before the Delhi High Court.

Issues Involved:

• Whether the trademark “AMMAJI” is deceptively similar to “AMBA” and causes confusion in the market?
• Whether the respondent’s adoption of the trademark was dishonest and an attempt to pass off its goods as those of the appellant?
• Whether the appellant’s failure to take action against other third parties using “AMBA” affected its claim against the respondent?

Submissions of the Parties:

Appellant’s Arguments:

• The word “AMBA” is phonetically and visually similar to “AMMAJI.”
• Both marks are used for the same category of products (TMT bars), increasing the likelihood of confusion.
• The respondent’s mark closely resembled the appellant’s in color scheme, structure, and placement of words, indicating an intent to deceive consumers.
• The appellant had been using the trademarks for over two decades, whereas the respondent adopted “AMMAJI” only recently.
• The failure to take action against other third parties should not disqualify it from enforcing rights against the respondent.

Respondent’s Arguments:

• “AMBA” and “AMMAJI” are conceptually different—“AMBA” refers to a Hindu Goddess, while “AMMAJI” is a respectful term for mothers and grandmothers.
• The trademarks have distinct visual elements, including different artistic devices and typography.
• TMT bars are high-value products, and customers exercise caution while purchasing, reducing the likelihood of confusion.
• The appellant suppressed an earlier legal notice issued by its sister concern (M/s Amba Shakti Udyog Limited), indicating a lack of clean hands.

Discussion on Judgments Cited:

• Re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) – Factors for determining confusion, such as similarity in appearance, sound, meaning, and trade channels.
• Estate of P.D. Beckwith v. Commissioner of Patents, 64 L.Ed. 705 – Emphasized that a trademark should be assessed based on overall commercial impression rather than individual elements.
• McCarthy on Trademarks and Unfair Competition (5th ed., 2023) – When goods are identical, even a slight similarity in trademarks can cause confusion.
• Hindustan Pencil Private Ltd. v. India Stationary Products Co., 1989 SCC OnLine Del 34 – Protection of consumer interest outweighs any delay by the trademark proprietor in taking legal action.
• Nutrica Pusti Healthcare Pvt. Ltd. v. Morepen Laboratories Ltd., 2021 SCC OnLine Del 2631 – A trademark owner’s inaction against some infringers does not bar them from taking action against others.

Reasoning and Analysis by the Judge:

• “AMBA” and “AMMAJI” had phonetic similarities and conveyed similar meanings.
• The placement of words, color schemes, and design elements created an overall commercial impression that was deceptively similar.
• The appellant had been using “AMBA” for two decades, whereas the respondent adopted “AMMAJI” in 2022.
• The respondent’s turnover was significantly smaller, making the appellant’s loss more substantial if an injunction was denied.
• Trademark laws aim to protect consumers from deceptive practices.
• Since both parties dealt in identical products (TMT bars), the likelihood of confusion among consumers was high.
• A trademark owner is not required to sue every infringer and can take action based on commercial significance.

Final Decision:

• The Delhi High Court set aside the Commercial Court’s order.
• An interim injunction was granted, restraining the respondent from using the mark “AMMAJI” or any other deceptively similar mark until the disposal of the suit.

Law Settled in this Case:

• Overall commercial impression is key in determining trademark similarity, rather than a detailed comparison of individual elements.
• When the goods are identical, even a slight similarity in trademarks can cause confusion.
• Failure to take action against other infringers does not prevent a trademark owner from seeking relief against a particular infringer.
• Balance of convenience favors the long-term user of a trademark when the rival is a recent entrant.
• Public interest in preventing consumer confusion is paramount in trademark disputes.

Case Title: Amba Shakti Steels Ltd. Vs. Sequence Ferro Private Limited
Date of Order: September 3, 2024
Case No.: FAO (COMM) 41/2024
Neutral Citation:2024:DHC:6703-DB
Court: High Court of Delhi
Judges: Hon’ble Mr. Justice Vibhu Bakhru & Hon’ble Ms. Justice Tara Vitasta Ganju

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: ajayamitabhsuman@gmail.com, Ph no: 9990389539