Ashiana Ispat Limited vs Kamdhenu Limited & Ors

Recently, in an appeal from a batch of writ petitions challenging the wrongful acceptance of trade mark applications by the Trade Marks Registry (“Registry”), a Division Bench (“DB”) of the Delhi High Court discussed the difference between the maintainability and entertainability of writ petitions. Though ruling in favour of maintainability, the DB allowed the appeal and held that it was incumbent upon the Single Judge to grant an opportunity to the applicant of the impugned applications to file a reply/counter affidavit to the writ petitions.

The petitions were filed by Kamdhenu Ltd. (“Kamdhenu”), challenging the acceptance of Ashiana Ispat Ltd.’s (“Ashiana”) trademark applications for the mark AL KAMDHENU GOLD. Kamdhenu contended that it owned several prior trade mark registrations for marks similar to Ashiana’s proposed mark AL KAMDHENU GOLD, and that these prior registrations had wrongly not been cited in the Examination Reports (“ER”) issued by the Registry in respect of Ashiana’s applications.

The Single Judge allowed Kamdhenu’s writs without issuing a formal notice to Ashiana and remanded the impugned applications back to the Registry for de novo consideration. The Single Judge found the Registry’s manner of examining trade mark applications to be questionable. Interestingly, the Single Judge also observed that the peculiar facts of the matter warranted suo motu exercise of the court’s inherent extraordinary jurisdiction under Article 226 and deemed the impugned applications to have been wrongly accepted. Ashiana challenged this order before the Division Bench in appeal.

The Division Bench brushed aside Ashiana’s objections to the maintainability of the writ petitions. Relying on the Supreme Court decision in Godrej Sara Lee (AIR 2023 SC 781), the Court observed that mere non-availment of an alternate remedy, i.e., of filing an opposition against the advertised applications, could not bar Kamdhenu from challenging the Registry’s failure to cite its prior registrations in objection to Ashiana’s subsequent applications for deceptively similar marks under Article 226.

That said, the DB allowed the appeal on the ground that Ashiana ought to have been given an opportunity to place its stand before the court by way of a reply/counter affidavit. The court also questioned the purported exercise of suo motu jurisdiction by the Single Judge and observed that since the order was passed while deciding writ petitions filed by Kamdhenu, the Single Judge cannot be said to have acted suo motu. The court also noted that the Single Judge could not have allowed the writs in the absence of any finding that Ashiana’s impugned marks were similar to Kamdhenu’s earlier marks.

Concludingly, the DB set aside the order allowing the writ petitions and remanded the matter back to the Single Judge for fresh consideration. The DB also kept the issue of whether it was a fit case for the Single Judge to entertain the writ petition under Article 226, open.

Click here to read the judgement copy.