Delhi High Court
Ashiana Ispat Limited vs Kamdhenu Limited on 10 April, 2026
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 10.04.2026
+ CS(COMM) 130/2025
ASHIANA ISPAT LIMITED .....Plaintiff
versus
KAMDHENU LIMITED ....Defendant
+ CS(COMM) 569/2025
M/S KAMDHENU LIMITED .....Plaintiff
Versus
M/S ASHIANA ISPAT LIMITED & ORS. ....Defendants
Advocates who appeared in these cases
Mr. Chander M. Lall, Senior Advocate along with Mr. Achuttan
Sreekumar, Mr. Ankur Sudan, Mr. Swastik Bisarya, Ms. Vidhi Jain
and Ms. Annanya Mehan, Advocates for Plaintiff in CS(COMM)
130/2025 and for Defendants in CS(COMM) 569/2025.
Mr. Akhil Sibal, Senior Advocate along with Mr. Sudarshan Kr.
Bansal, Mr. Mohit Goel, Mr. Sidhant Goel, Mr. Abhishek Kotnala,
Ms. Ridhie Bajaj, Mr. Shivang Bansal, Ms. Sugandha Shahi, Mr.
Amit Chanchal Jha, Ms. Somya Khandelwal, Mr. Devansh Mishra &
Ms. Nishtha Kapoor, Advocates for Defendant in CS(COMM)
130/2025 and for Plaintiff in CS(COMM) 569/2025.
CORAM
HON'BLE MR. JUSTICE TEJAS KARIA
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 1 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
JUDGMENT
TEJAS KARIA, J
IA No.3990/2025 in CS(COMM) No.130/2025
IA No.14115/2025 in CS(COMM) No.569/2025
INTRODUCTION:
1. Ashiana Ispat Limited (“AIL”) has filed the Suit being CS (COMM)
130 of 2025 (“AIL Suit”) against Kamdhenu Limited (“KL”) inter alia
alleging passing off of AIL’s products bearing the Mark ‘AL KAMDHENU
GOLD’ (“Impugned Mark”) as that of KL’s.
2. Kamdhenu Limited (“KL”) has filed the Suit being CS (COMM) 569
of 2025 (“KL Suit”) inter alia for alleged infringement of trade mark and
copyright, passing off, delivery up, damages etc. against AIL and other
Defendants having entered into service agreements with AIL for
manufacturing TMT steel bars under the Impugned Mark being allegedly
deceptively similar to KL’s registered Trade Marks including inter alia
‘KAMDHENU’, ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’.
3. Since the Impugned Mark in dispute in both AIL Suit and KL Suit is
the same, by way of this Judgment I.A. No. 3990/2025 filed in the AIL Suit
and I.A. No. 14115/2025 filed in KL Suit, both filed under Order XXXIX
Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908
(“CPC“) are being considered and disposed of together.
SUBMISSIONS ON BEHALF OF AIL:
4. The learned Senior Counsel for AIL made the following submissions:
4.1. AIL, established in the year 1992, is in the business of
manufacturing integrated steel under the Impugned Mark andSignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 2 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
various permutations combinations thereof. AIL was initially
incorporated by one Mr. Prem Chand Gupta and his family and
was subsequently listed on stock exchanges, including the
Bombay Stock Exchange (“BSE”).
4.2. With the widespread network of dealers and distributors, AIL
ensures availability of quality steel in majority of districts of
India. The e-network of satisfied consumers as well as
customers across country proves the worth and mettle of AIL.
4.3. AIL has a fully functional primary website parked at the
domain name www.ashianaispat.in. Additionally, AIL on
23.11.2024 registered a domain name,
www.alkamdhenugold.com and if any person keys-in the said
domain, they will be redirected to the aforementioned primary
website of AIL. AIL also has an active presence on social media
and operates official pages under the name ‘AL KAMDHENU
GOLD’ on various platforms, including Facebook and
Instagram.
4.4. AIL in order to expand its business and to create a new entity
with a brand name ‘AL KAMDHENU GOLD’, has also
checked with the Ministry of Corporate Affairs for the
availability of the company name ‘AL KAMDHENU GOLD
PVT LTD’ and the Ministry of Corporate Affairs has issued a
letter dated 08.02.2025 approving the availability of the name
‘AL KAMDHENU GOLD PRIVATE LIMITED’ for
registration.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
4.5. AIL is also working towards expanding its business outside
India and in this regard, AIL applied for and on 24.01.2025 was
granted a business license by the Government of Dubai, UAE
to conduct its business under the company name AL
KAMDHENU GOLD L.L.C-FZ through its office located in
Dubai, UAE.
4.6. In the year 1996, AIL was taken over by the joint management
of the KL, formerly known as Kamdhenu Ispat Limited. KL’s
management was jointly run by two families namely the
Agarwal Family i.e., the family that currently owns and
controls KL and the Jain Family i.e., the family that currently
owns and controls AIL. While the Agarwal family comprised of
the brothers, namely Mr. Pradeep Agarwal and Mr. Satish
Agarwal, the Jain family comprised of the brothers-in-law Mr.
Neeraj Jain and Mr. Naresh Chand alias Naresh Jain, who are
now part of AIL’s management. The commitment of both AIL
and KL played a pivotal role in establishing ‘KAMDHENU’ as
a well-known and reputable brand in the steel industry.
4.7. Once AIL was taken over by the joint management comprising
of the Jain and Agarwal families, both AIL and KL were run,
operated and managed by the Agarwal Family and the Jain
Family up till the year 2002. The Annual Reports for the years
1995-2001 of AIL shows that AIL was under the joint
management of Agarwal and Jain Families, primarily
comprising of Mr. Pradeep Agarwal, Mr. Satish Agarwal and
Mr. Naresh Chand alias Naresh Jain.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
4.8. On 05.06.1996, the joint management of KL, comprising of
both Jain and Agarwal families, applied for the registration of
the Word Mark ‘KAMDEHNU’ vide TM application No.
717214 in Class 6 with the user claim of 01.04.1991 and
subsequently obtained registration of the same. In the same
year, AIL was taken over by the joint management, i.e., the Jain
family and Agarwal family by virtue of an open offer made
under SEBI (SAST) Regulation, 1994.
4.9. The brand and Mark ‘KAMDHENU’ were conceived / adopted
in the year 1994 and further developed by the joint efforts and
collective contribution of both the Jain and Agarwal families.
Both the Agarwal family and the Jain family were working
together and were the beneficiaries of the profits made from the
sale of various steel products bearing the Mark ‘KAMDHENU’
and permutations / combinations thereof.
4.10. Subsequently, in the year 1997, KL executed an Agreement
dated 26.02.1997 with AIL (“1997 Agreement”) and formally
allowed AIL to use the Mark ‘KAMDHENU’ for a period of
three years. The 1997 Agreement was signed by Mr. Pradeep
Kumar Agarwal as the Director of KL and Mr. Satish Kumar
Agarwal as the Director of AIL. This further shows that AIL
and KL were working in harmony to develop the KAMDHENU
brand and to make full commercial use of the Mark
‘KAMDHENU’.
4.11. In the year 2002, due to differences amongst the families /
management, both the Jain and the Agarwal families decided to
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
divide the business amicably, pursuant to which the Agarwal
family transferred its shareholding in AIL to the Jain family,
and the Jain family transferred its shareholding in KL to the
Aggarwal family.
4.12. In furtherance thereto, AIL and KL entered into an agreement
dated 26.12.2002 (“2002 Agreement”) with the intention of
demarcating their respective rights over the Mark
‘KAMDHENU’ and permutations / combinations thereof. The
relevant clauses of the 2002 Agreement, wherein AIL is
referred as Licensee and KL as Licensor, are reproduced below:
“22. That during the subsistence of the said permitted user
agreement, the Licensee shall be entitled to adopt and use
the trademark AL KAMDHENU GOLD in relation to steel
bars and other cognate and related goods. The expression
AL KAMDHENU GOLD will be used in juxtapose and the
words AL, KAMDHENU and GOLD will always be used in
similar size, lettering style and colour scheme. The
Licensee will be entitled to file application for its
registration under the provisions of Trade and Merchandise
Marks Act 1958 as its Proprietors thereof. The Licensor has
also filed application for registration of trademark
KAMDHENU GOLD in the Trade Mark office under
application No.842704 in Class 6 in relation to Steel Bars.
The Licensor agrees to withdraw the said application
without prejudice to his rights and contentions in the
trademark KAMDHENU. The Licensor will have no
objection to its adoption, user and registration of the said
trade mart AL KAMDHENU GOLD.
24. That upon final registration of trademark AL
KAMDHENU GOLD, the Licensee will become exclusive
and absolute owner for the said trade mark. After the
registration of the trademark AL KAMDHENU GOLD with
the Licensee, the Licensee shall immediately thereafter
cease in all manner the use of the trademark KAMDHENU
and shall thereafter only use the Registered trade mark AL
KAMDHENU GOLD in the manner provided hereinabove.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
The Licensor immediately thereafter i.e. after the grant of
registration shall not use the trademark AL KAMDHENU
GOLD.
26. ….(b) This agreement shall automatically terminate on
the grant of registration of the trade mark AL KAMDHENU
GOLD to the licensee. However, it shall thereafter continue
to exist in respect of the stipulations set out herein above as
agreed upon by the parties herein above to be followed by
them after the grant of registration including that of the
joint marketing and common market channels to be
followed by both the parties.
27. The Licensor agrees that it cannot during the term of
this agreement a right to terminate this agreement except in
the event of default on part of the Licensee to perform its
obligations hereunder, provided such default is not
remedied by the Licensee within 60 days from the date of
receipt of a notice in writing given by the Licensor
specifying such alleged default and calling upon the
Licensee to rectify the same.”
A perusal of the 2002 Agreement evidences the following:
(a) KL will be the absolute owner of the Mark ‘KAMDHENU’;
and
(b) AIL will be the absolute owner of the Impugned Mark.
4.13. Clauses 22 to 27 of the 2002 Agreement show the intention of
AIL and KL, which was to divide the rights over the Mark
‘KAMDHENU’ and permutation / combination thereof in such
a way, that KL continues to use the Mark ‘KAMDHENU’
(word per se), and AIL will be the absolute owner of the
Impugned Mark, subject to its registration. The said
understanding was only achieved because KL was well aware
that AIL has put in equal efforts in conceiving, advertising and
promoting the brand KAMDHENU and, therefore, KL
acknowledged AIL’s right over the Impugned Mark, where AL
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
is the acronym of Ashiana (Ispat) Limited. The Impugned Mark
can only be associated with AIL, as it directly reflects the
identity of AIL and its longstanding use, reputation, and
goodwill in the market, which is also admitted and
acknowledged by KL.
4.14. By virtue of the 2002 Agreement, AIL started using the
Impugned Mark for selling and marketing its steel products,
while also using the Mark ‘KAMDHENU’ for manufacturing /
selling steel products for KL. AIL is the prior user of the
Impugned Mark to the knowledge of KL and KL has
categorically acknowledged AIL to be the absolute owner of the
Impugned Mark.
4.15. The 2002 Agreement shows KL’s intention to give up all their
rights in the Impugned Mark, which is further strengthened by
the fact that KL themselves undertook to withdraw its TM
application No. 842704 for the Mark ‘KAMDHENU GOLD’,
to give AIL, the complete rights over the Impugned Mark and
various permutations and combinations thereof. Despite the
said understanding, KL did not withdraw the said TM
application No. 842704 and obtained the registration for
‘KAMDHENU GOLD’.
4.16. KL had also filed another TM application No. 1009954 dated
17.05.2001 for the Mark ‘KAMDHENU GOLD TMT’. In
terms of the 2002 Agreement, KL ought to have withdrawn the
said application as well. However, instead of withdrawing the
same, KL mala fidely ensured registration of the said mark.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
4.17. By virtue of the 2002 Agreement, KL appointed AIL as the
Licensee of the Mark ‘KAMDHENU’ for a period of 99 years
for a nominal License Fee of Rs. 1000 per annum. This
arrangement unequivocally reaffirmed AIL’s long-term and
uninterrupted right to use the Mark ‘KAMDHENU’ lawfully as
per the agreed terms.
4.18. The 2002 Agreement was structured as a Trade Mark
Assignment Agreement, whereby KL has unequivocally
relinquished its rights over the Impugned Mark and has
recognised AIL as the exclusive user of the Impugned Mark.
Although the 2002 Agreement stipulates that AIL will become
the absolute owner of the Impugned Mark upon its registration,
KL’s agreement to withdraw its trademark application for the
Mark, ‘KAMDHENU’ GOLD’ clearly demonstrates KL’s
acknowledgement of AIL’s ownership of the Impugned Mark.
4.19. Pursuant to the 2002 Agreement, AIL on 27.12.2002 vide TM
application No. 1161758 applied for the registration of the
Impugned Mark in Class 6 (“TMA 1161758”). However, due to
the various settlement discussions and internal restricting that
were taking place between both the Parties, AIL could not
thoroughly pursue TMA 1161758 and due to inadvertence and
oversight TMA 1161758 got abandoned in the year 2007.
Further, AIL has reasons to believe that the TMA 1161758 was
opposed by some parties at the behest / instructions of KL.
4.20. AIL continued to manufacture products under the
KAMDHENU brand for KL, devoting significant time, energy,
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
and resources to fulfilling its obligations under the 2002
Agreement with KL. As a result, AIL’s attention to the
manufacture and sale of products under the Impugned Mark
was diluted. Nevertheless, AIL consistently maintained its
rights and ongoing use of the Impugned Mark on its products
and promotional materials, albeit without optimal utilization
due to existing manufacturing commitments with KL.
Furthermore, KL explicitly acknowledged AIL’s rights to the
Impugned Mark, eliminating concerns regarding potential loss
of these rights. Consequently, AIL prioritized compliance with
manufacturing and other contractual obligations. Ultimately,
AIL’s objective was to secure registration of the Impugned
Mark in accordance with the provisions of the 2002 Agreement.
4.21. Due to AIL’s admitted prior longstanding and continuous use,
coupled with investments in marketing and the resultant
turnover, the Impugned Mark has acquired goodwill and
reputation in the industry. Subsequent to the 2002 Agreement,
AIL in all good faith has been continuously and extensively
using the Impugned Mark in the course of AIL’s business, while
not interfering with KL’s use of the Marks ‘KAMDHENU’.
4.22. In any event, KL has admitted and acknowledged AIL to be the
absolute owners of the Impugned Mark in the 2002 Agreement.
AIL’s products under the Impugned Mark are known for their
quality, and the Impugned Mark itself has come to represent
AIL’s business identity.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
4.23. On 29.01.2021, AIL and KL entered into a subsequent
agreement (“2021 Agreement”) for the Marks ‘KAMDHENU’
/ ‘KAMDHENU NXT’ which modified the terms of the pre-
existing arrangement and imposed a royalty fee of Rs. 100 per
ton for the use of the Marks ‘KAMDHENU’ / ‘KAMDHENU
NXT’ by AIL. 2021 Agreement was KL’s attempt to
significantly increase the financial burden on AIL for usage of
the Marks ‘KAMDHENU’ / ‘KAMDHENU NXT’ and
compelling compliance under the threat of revocation of brand
usage rights.
4.24. Between 2019 and 2024, KL, utilising its position, engaged in
monopolistic practices by issuing controlled and limited orders
to AIL, and subsequently withholding orders for products
bearing the Marks ‘KAMDHENU’ / ‘KAMDHENU NXT’,
which eventually resulted in the closure of AIL’s manufacturing
unit. Furthermore, KL placed orders following the shutdown,
despite full knowledge that the unit was incapable of fulfilling
them.
4.25. On 19.09.2024, KL issued a letter entitled ‘Termination of
License User Agreement dated 29 January 2021’, stating
grounds for termination such as failure to fulfil orders and
delayed royalty payments. The communication dated
19.09.2024 does not reference the 2002 Agreement, under
which rights to the Impugned Mark were granted to AIL, but
instead expressly declares that KL unequivocally, irrevocably,
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
completely, and permanently terminates all MoUs, agreements,
and the 2021 Agreement.
4.26. KL also published a caution notice in a newspaper on
06.11.2024 stating that all business relationship with AIL has
been severed as regards the Marks ‘KAMDHENU’ /
‘KAMDHENU NXT’ and clandestinely not mentioning the
Impugned Mark knowing and acknowledging that AIL is the
absolute owner of the Impugned Mark. AIL vide letter dated
27.01.2025 duly replied to KL’s termination letter denying all
false and frivolous allegations made against AIL by KL.
4.27. On 05.12.2024, AIL filed a fresh application for registration of
the Impugned Mark vide TM application No. 6742246 in Class
6 claiming user since 26.12.2002. KL, even after categorically
agreeing through the 2002 Agreement that AIL is entitled to
registration of the Impugned Mark, with utmost mala fide and
dishonesty filed its objection to AIL’s application No. 6742246
vide letter dated 17.12.2024 falsely pleading in its objection
that the 2002 Agreement between AIL and KL stands cancelled.
4.28. On 17.12.2024, KL filed TM application No. 6759794 for the
Impugned Mark, asserting usage since 2001. This act is
contrary to the terms of the 2002 Agreement, under which KL
explicitly relinquished all rights to the Impugned Mark and
acknowledged AIL’s exclusive entitlement to its use and
registration. KL’s subsequent attempt to claim rights over the
Impugned Mark, despite having contractually disclaimed such
rights, lacks legal foundation and suggests questionable intent.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
4.29. As soon as AIL was made aware about KL’s TM application
No. 6759794 for the Impugned Mark, AIL filed a pre-
opposition letter dated 28.01.2025 to the said application of
KL. Subsequently, both AIL’s and KL’s applications for the
Impugned Mark were accepted by the Trade Mark Registry.
4.30. On 17.01.2025, AIL, in good faith and based on KL’s
acknowledgment of AIL as the absolute owner of the Impugned
Mark, assigned the Impugned Mark subject of TM application
No. 6742246 to Naresh Chand alias Naresh Jain (a director of
AIL) with retrospective effect from 09.12.2024, without
waiting for registration of the mark. Subsequently, on
18.01.2025, Naresh Chand alias Naresh Jain assigned the
Impugned Mark to Kamdhenu Steel and Alloys Limited
(“KSAL”), with retrospective effect from 16.12.2024. These
changes in ownership, executed through the Assignment Deeds
dated 17.01.2025 and 18.01.2025 (“Assignment Deeds”),
represent an internal restructuring within AIL’s management
intended to facilitate business operations in light of the
challenges faced and industry developments. Throughout this
process, the Jain Family, who manages AIL, ensured that all
rights in the Impugned Mark remained within the family and its
affiliated companies, preventing any transfer to KL, the
Agarwal Family, or unrelated third parties. The Assignment
Deeds formed part of a legitimate business strategy aimed at
further developing the ‘AL KAMDHENU GOLD’ brand.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
4.31. KL mala fidely filed a Civil Suit being CS (COMM.) No. 53 /
2025 (“Saket Suit”) before the District and Sessions Court,
Saket District, New Delhi (“Saket Court”) against M/s
Yashoda Nandan Ispat Private Limited (“Yashoda”) and KSAL
and obtained an injunction vide order dated 29.01.2025 against
the said entities restraining them from using the Marks
‘KAMDHENU’ / ‘AL KAMDHENU GOLD’, by playing fraud
on the Saket Court by not providing the complete picture and
by suppressing vital information and documents.
4.32. A perusal of the plaint, pleadings and documents of the Saket
Suit show that KL is claiming rights over the Impugned Mark
and Marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD
TMT’ and have all the intention to sell products bearing the
Impugned Mark and Marks ‘KAMDHENU GOLD’ and
‘KAMDHENU GOLD TMT’. Moreover, in the proceedings
before the Trade Marks Registry pertaining to KL’s trade mark
registration Nos. 842704 and 1009954 for the Marks
‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’,
respectively, KL has made categorical statements that KL is
using the Impugned Mark and Marks ‘KAMDHENU GOLD’
and ‘KAMDHENU GOLD TMT’. However, AIL has not come
across any product of KL bearing the Impugned Mark and
Marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD
TMT’.
4.33. This act of KL shows that KL is unauthorizedly asserting rights
over the Impugned Mark, which KL itself has assigned to AIL
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MAYEE SAHU
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21:29:05
by virtue of 2002 Agreement. Having allowed and facilitated
AIL’s extensive use of the Impugned Mark over the years, KL
cannot now, in a complete reversal of its prior commitments,
seek to dispute or encroach upon AIL’s rights. Such dishonest
and mala fide conduct of KL amounts to an unjust attempt to
undermine AIL’s rights vested in the Impugned Mark and
disrupts the long-standing arrangement established between the
Parties under the 2002 Agreement. KL’s actions amount to an
attempt to interfere with AIL’s established rights over the
Impugned Mark and amount to passing off.
4.34. KL’s unlawful use and attempted registration of the Impugned
Mark is intended to deceive the public and divert business from
AIL. KL is trying to unjustly benefit from the goodwill and
reputation that AIL has built over the years for the Impugned
Mark amounting to an act of unfair competition, wherein KL
seeks to exploit AIL’s brand value and market presence for KL’s
own wrongful gains.
4.35. The act of passing off by KL is further evident from the fact
that AIL has rights over the Impugned Mark by virtue of the
2002 Agreement which cannot be disputed, and any attempt by
KL to use or claim rights over the Impugned Mark is an
unlawful attempt to mislead consumers and disrupt AIL’s
business.
4.36. The damage that has already been caused and the damage that
is continuing to be caused to AIL and to AIL’s reputation and
goodwill is insurmountable and not capable of being accurately
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MAYEE SAHU
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assessed in monetary terms and therefore, KL should be
injuncted from asserting any right over the Impugned Mark and
Marks ‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD
TMT’ and from using the Impugned Mark or any other
deceptively similar mark thereto in any manner whatsoever.
4.37. Thus, balance of convenience tilts in favor of AIL and against
KL and grave prejudice, irreparable harm and injury will be
caused to AIL if I.A. No. 3990 of 2025 in the AIL Suit is not
allowed. However, no prejudice whatsoever will be caused to
KL in case I.A. No. 3990 of 2025 in the AIL Suit is allowed.
4.38. Reliance was placed on S. Syed Mohideen v. P. Sulochana
Bai, (2016) 2 SCC 683 to highlight the rights of prior user.
4.39. Reliance was further placed on Midas Hygiene Industries v.
Sudhir Bhatia, (2004) 3 SCC 90 to submit that the grant of
injunction also becomes necessary if prima facie it appears that
the adoption of the mark was itself dishonest.
4.40. Reliance was placed on following judgments to submit that the
rights once waived cannot be subsequently asserted:
i. AMPA Cycles Private Limited vs Jagmohan Ratra 2021
SCC OnLine Del 3626
ii. Ramdev Food Products (P) Ltd. vs Arvindbhai
Rambhai Patel and Others (2006) 8 Supreme Court
Cases 726
iii. Lindsay Petroleum Co. v Hurd (1874) LR 5 PC 221
4.41. Reliance was placed on following judgments to submit that
single actual use also amounts to use:
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MAYEE SAHU
Signing Date:11.04.2026
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i. Century Traders vs. Roshan Lal Duggar & Co. 1977
SCC OnLine Del 50
ii. Kent Cables (P) Ltd. v. Kent Ro Systems Ltd. 2023 SCC
OnLine Del 3288
4.42. Reliance was placed on Ajay Narain vs Arti Singh and Ors.
MANU/DE/8545/2024 to submit that there cannot be unilateral
termination of contract.
4.43. Reliance was placed on Kores (India) Limited vs M/s. Khoday
Eshwarsa & Son and another 1984 SCC OnLine Bom 65 for
submissions on the aspect of honest concurrent user.
4.44. Reliance was placed on following judgments to submit that
family arrangement acts as estoppel:
i. Thayyullathil Kunhikannan & Ors. vs. Thayullathil
Kalliani & others 1989 SCC OnLine Ker 267
ii. Shri Ram Education Trust vs SRF Foundation & Anr.
2016 SCC OnLine Del 472
iii. Darshan Lal Dhooper vs. Motia Rani & Ors. 2002 SCC
OnLine Del 958
4.45. Reliance was placed on following judgments to submit that
positive encouragement amounts to acquiescence:
i. M/s Power Control Appliances And Others vs. Sumeet
Machines Pvt. Ltd. (1994) 2 Supreme Court Cases 448
ii. Habib Bank Limited v Habib Bank A. G. Zurich (1981)
1 WLR 1265
iii. Rowland vs Michell 1896 13 RPC 457Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 17 of 69
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MAYEE SAHU
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iv. Lupin Laboratories Ltd. vs Jain Products 1998 SCC
OnLine Bom 107
v. M/s. Hidesign vs. M/s. Hi-Design Creations 1991 SCC
OnLine Del 10SUBMISSIONS ON BEHALF OF KL:
5. The learned Senior Counsel for KL made the following submissions:
5.1. KL in the year 1994 bona fide and honestly adopted the Mark
‘KAMDHENU’ and its trade name bearing the Word / Mark
‘KAMDHENU’ and since then and over a period of time has been
creating KAMDHENU stylized, artistic, formative, labels and
variant trade marks; art works / labels bearing the Word / Mark
‘KAMDHENU’; domain bearing the Word / Mark ‘KAMDHENU’
(“KAMDHENU Mark”) and KL is the proprietor and owner
thereof. KL since the year 1994 is engaged in the business of
manufacture and trade of steel bars and with the passage of time
forayed into the business of manufacture and trade of construction
material such as structural steel, plywood, PVC pipes, Plaster of
Paris, water proofing compounds, wall putty, paint and various
other goods and business falling in various classes and offering
services in connection therewith under the KAMDHENU Marks.
KL has been commercially using the KAMDHENU Mark in the
course of trade, upon, on and in relation to KL’s goods / business,
continuously and uninterruptedly. As a result, KL has built
substantial goodwill and reputation under the KAMDHENU Mark.
The KAMDHENU Mark have already become distinctive and
associated with the KL’s goods / businesses.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.2. KL is the prior adopter and user of the KAMDHENU Mark since
1994 in respect of Class 6 goods such as steel bars, TMT bars,
sarias etc. KL is the registered proprietor of KAMDHENU Mark
since 1996 and other KAMDHENU formative marks such as
‘KAMDHENU GOLD’ and ‘KAMDHENU GOLD TMT’. The
Word / Mark ‘KAMDHENU’ forms an essential, distinguishing,
memorable, key, vital and dominant feature of the KAMDHENU
Mark.
5.3. KL has taken efforts to create consumer awareness for KL’s goods
/ business under the KAMDHENU Mark. As of March 2024, KL
along with its franchisees have spent over Rs. 870 crores in
promotion of the KAMDHENU Mark during the financial year
1995 to 2024.
5.4. KL has already built up a valuable trade under the KAMDHENU
Mark and conducted handsome business thereunder. The revenue
from operations and overall brand turnover in respect of the KL’s
goods / businesses for the financial years 1995 to 2024 are Rs.
13680 crores and Rs. 1,48,000 crores respectively.
5.5. The purchasing public and the trade industry at large identify and
distinguish KL’s goods / businesses with KL and from KL’s source
and origin alone. The KAMDHENU Mark to this effect, has
acquired secondary significance with KL’s goods / businesses and
public at large associates the KAMDHENU Mark with KL’s goods
/ businesses. KL through its dedicated research and development
keep on improving efficiency, efficacy, and dependability of KL’s
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
goods / businesses under the KAMDHENU Mark. KL maintains
highest standard of quality in relation to KL’s goods / businesses.
5.6. In order to secure the statutory rights in the KAMDHENU Marks,
KL has also applied for and obtained various trade mark
registrations pertaining to the KAMDHENU Marks, inter alia, in
Classes 6, 16, 19, 35 and 39 under the Trade Marks Act, 1999,
(“Trade Marks Act“) which are all legal, valid, subsisting and in
full force.
5.7. Representations of some of the KAMDHENU Mark are as under:
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.8. The art works involved in KL’s labels are original artistic works
and KL is the owner and proprietor of the copyright therein within
the meaning of the Copyright Act, 1957. KL has also filed for
copyright registration. Some of the artworks, wherein word mark
KAMDHENU forms essential part, are duly registered in favour of
KL under Nos. A-58058/2000 and A-58100/2000 under the
provisions of Copyright Act, 1957.
5.9. In the background of its reputation and goodwill in the
KAMDHENU Mark, KL diversified its business and granted itsSignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 21 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
licenses / permissions to several parties i.e., individuals, firms and
companies to use KAMDHENU Mark in relation to various goods
/ services like structural steel, Plaster of Paris, Wire Bond, Paints,
Ply Wood, Milk, PVC Pipes, Construction Chemicals, Packaged
Drinking Water etc. As per law, use of the mark by KL’s licensees /
franchisee / distributors / dealers shall be deemed to be KL’s use
thereof. In view of KL’s formidable rights and established
reputation in its KAMDHENU brand, AIL approached KL seeking
permission and / or a license to use KL’s established and
proprietary KAMDHENU Mark.
5.10. 1997 Agreement expressly recognised KL as the proprietor of the
KAMDHENU Mark and further permitted AIL to use
KAMDHENU Mark in respect of steel bars as a permitted user for
a period of three years. It was further, inter alia, stipulated in the
1997 Agreement that the KAMDHENU Mark could be used by
AIL only so long as the steel bars were manufactured by AIL in
accordance with the specifications and directions supplied by KL.
5.11. 2002 Agreement, inter alia, provided that (i) the parties are
unrelated and are distinct and separate entities; (ii) KL is the
proprietor of the KAMDHENU Mark both under statutory and
common law along with all accompanying goodwill in relation to
steel bars and allied / cognate goods; (iii) all use under 2002
Agreement was to inure to the benefit of KL; (iv) the rights of KL
to use the KAMDHENU Mark during or after the termination of
2002 Agreement as proprietor thereof was preserved; (v) AIL
expressly acknowledged that KL enjoys exclusive proprietarySignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 22 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
rights over KAMDHENU Mark; (vi) use by AIL would not confer
any right, title or interest whatsoever in favour of AIL; (vii) AIL
was permitted to sublicense the Impugned Mark only to one other
company provided one of its directors was common to both; (viii)
AIL was required to manufacture steel bars in accordance with IS
1786:1985 of Bureau of Indian Standards (“BIS”); (ix) during the
subsistence of 2002 Agreement, AIL would be entitled to adopt
and use the Impugned Mark in relation to steel bars and other
cognate and related goods and AIL was additionally permitted to
file an application for its registration of Impugned Mark under the
Trade Marks Act as a proprietor thereof; and (x) KL’s application
for registration of the Mark ‘KAMDHENU GOLD’ in the Trade
Marks Office under TM application No. 842704 in Class 6 in
relation to steel bars was agreed to be withdrawn, without in any
manner affecting its rights qua the KAMDHENU Mark.
5.12. As per 2002 Agreement, up to the time of registration of Impugned
Mark in favour of AIL, KL was also entitled to use the Impugned
Mark. Only upon final registration of the Impugned Mark, AIL
was to become the exclusive and absolute owner of the Impugned
Mark, and AIL was further obliged to thereafter immediately seize
in all manner the use of KAMDHENU Mark and only use the
Impugned Mark in the manner as stipulated under the 2002
Agreement. Further, KL was also, upon registration of Impugned
Mark in favour of AIL, to refrain from using the Impugned Mark.
5.13. Significantly, unlike for the KAMDHENU Mark, where AIL was
permitted only one sub-license to another company, no power toSignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 23 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
sub-license was provided in respect of the Impugned Mark. A
restricted power to assign or transfer Impugned Mark was given to
AIL after its registration in favour of the persons specifically
named in the 2002 Agreement or their legal heirs / successors.
Apart therefrom, the 2002 Agreement specifically prohibited any
assignment or creation of any third-party rights whatsoever by AIL
in respect of Impugned Mark.
5.14. 2002 Agreement was to terminate after a period of 99 years or
upon grant of registration of the Impugned Mark in favour of AIL,
subject to continuing obligations and stipulations as provided in
the 2002 Agreement, or by KL in the event of default by AIL to
perform its obligations. Post termination, a reasonable period of
time was to be given to AIL to dispose of any unsold stock
pertaining to goods sold under the licensed Impugned Mark.
5.15. 2021 Agreement provided for permitted use of the Marks
‘KAMDHENU’ / ‘KAMDHENU NXT’ by AIL in relation to TMT
Steel bars, acknowledging KL’s proprietary and exclusive rights in
the Marks ‘KAMDHENU’ / ‘KAMDHENU NXT’, as well as in
the Mark ‘KAMDHENU GOLD’ registered under No. 842704.
AIL explicitly acknowledged in 2021 Agreement that 2002
Agreement was executed pertaining to the specific product being
Cold Twisted Bars (CDT bars) / Tor Steel, which were now
obsolete, hence AIL sought license from KL to manufacture TMT
steel bars under the Marks ‘KAMDHENU’ / ‘KAMDHENU
NXT’. Thus, the 2021 Agreement novated / superseded /
terminated the previous 2002 Agreement.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.16. There is fundamental difference and consequent improvement in
the steel bars manufactured under BIS norms being IS:1786- 1985
and those under IS: 1786-2008. Such differences and
improvements are in the chemical compositions, physical
properties, total elongation and maximum force percent min;
mandrel diameter for bend test; mandrel diameter for re-bend test
and these are enumerated in the BIS Standard itself. The goods
covered by 2002 Agreement were under BIS norms being IS:1786-
1985, which is specifically mentioned in Clause 12 thereof and
that has become obsolete.
5.17. Under 2021 Agreement, AIL was granted a ‘bare license’ to use the
Marks ‘KAMDHENU’ / ‘KAMDHENU NXT’, explicitly
providing that any right, title, interest or goodwill whatsoever,
which may arise out of the use of the Marks ‘KAMDHENU’ /
‘KAMDHENU NXT’ shall be for the absolute benefit of KL. 2021
Agreement was executed for a period of 80 years, however the
same was terminable in the event of failure on part of AIL to
remedy its default or in case AIL was found to be defaming /
misusing and / or not adhering to the quality standards set forth by
KL for the products sold under the Marks ‘KAMDHENU’ /
‘KAMDHENU NXT’.
5.18. Further, 2021 Agreement prohibited AIL from carrying on business
of manufacture and sale of the products under the Marks
‘KAMDHENU’ / ‘KAMDHENU NXT’ after termination of the
2021 Agreement. Significantly, 2021 Agreement made no mention
of any subsisting rights of AIL in the Impugned Mark.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.19. Owing to the numerous defaults by AIL, as well as instances of
misuse and defamation of KAMDHENU Mark, KL vide the notice
of termination dated 19.09.2024 terminated the 2021 Agreement as
well as all other MoUs and agreements with AIL. All subsisting
agreements with AIL thereby stood terminated and extinguished.
5.20. The MoU dated 27.02.2012 entered between KL and KSAL
(“MoU”) also expressly recognised KL as the proprietor and
beneficial owner of KAMDHENU Mark including specifically the
Mark ‘KAMDHENU GOLD’ registered vide TM No. 8427042.
KSAL further undertook to never use KAMDHENU Mark in
connection with any goods / services related to KL and to never
claim or seek to acquire any rights in KAMDHENU Mark or
deceptively similar marks.
5.21. Subject to such unequivocal undertakings, KSAL was allowed to
use the KAMDHENU Mark for the limited purpose of using the
KAMDHENU Mark as part of its corporate name on the specific
representation that it was merely a land holding and cross-holding
company with no independent business related to that of KL, and
would in due course also change its name.
5.22. On 25.01.2025, KL upon discovering TMT bars being
manufactured and sold under the Impugned Mark, filed the Saket
Suit against the manufacturer and marketer of the same, viz.
Yashoda and KSAL asserting its statutory and common law rights
in the Marks ‘KAMDHENU’ and ‘KAMDHENU GOLD’
formative marks. The Saket Court vide order dated 29.01.2025
granted an ex parte ad interim injunction which was later made
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
absolute on 09.06.2025 restraining Yashoda and KSAL from
infringing KL’s rights in the KAMDHENU Mark.
5.23. Subsequently, AIL filed TM application No. 6742246 on
05.12.2024 for the Impugned Mark in Class 6 falsely claiming user
since 26.12.2002 and wrongly adverting to the superseded /
novated / terminated 2002 Agreement as the basis for the rights in
the Impugned Mark.
5.24. AIL also filed TM applications vide Nos. 6845025 on 07.02.2025,
6845771 on 07.02.2025, 6890699 on 05.03.2025, 6890704 on
05.03.2025 in Class 6 for the Impugned Mark. These Trade Mark
Applications had been advertised in the TM Journal without
undergoing the requisite statutory scrutiny, especially in regard to
the prior registered marks of KL.
5.25. Immediately after instituting the AIL Suit on 13.02.2025, AIL in
connivance with its director Mr. Naresh Jain, and KSAL,
purportedly cancelled the Assignment Deeds by a written
communication purportedly dated 15.02.2025 addressed only to
Mr. Naresh Jain and not KSAL. It is a settled law that once title
has been transferred by way of an instrument, as AIL claims to
have done, the same cannot be cancelled simpliciter, it has to be
assigned back to the original assignor. Thus, the purported
cancellation of the Assignment Deeds is invalid.
5.26. AIL could not have entered into any assignment for a trade mark
as listed company and could have not executed the Assignment
Deeds without the approvals of the shareholders and Board of
Directors and intimation to the Stock Exchange, in which it had no
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 27 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
rights in the first place. AIL has usurped the property of the public
listed company by way of the alleged assignment of 17.01.2025, in
as much as the consideration for the Assignment Deeds has been
only Rs. 11,000/- while AIL alleges to have made expenses of over
Rs. 32 Crore on the advertisement and on sale promotion for the
Impugned Mark. Even the Assignment Deeds had been made to an
individual director of AIL amounting to a diversion of public
funds, which further brings out mala fide of AIL.
5.27. The alleged applications filed by AIL for registration of the
Impugned Mark are all without the leave, license or approval of
KL and are in violation of KL’s rights. The alleged applications are
neither maintainable in law and nor on facts and have been filed
mala fide and on false grounds and claims as AIL is not the
proprietor of the Impugned Mark covered by the alleged
applications and is not entitled to their registration.
5.28. AIL has failed to establish the sine qua non of a passing off action,
i.e. prior goodwill in the Impugned Mark attributable to AIL,
misrepresentation by KL and damage to AIL. AIL has not filed a
single credible document establishing any use of the Impugned
Mark in the course of trade. The purported user documents filed by
AIL do not establish prior use of the Impugned Mark by AIL as the
earliest invoice filed by AIL for the Impugned Mark is dated
03.06.2025; the quarterly financial results from 2004-2006, 2009-
2014 in newspapers are a mere assertion of the rights of AIL as a
licensee, and do not constitute any actual use of the Impugned
Mark by AIL as a trade mark for steel bars. The quarterly financial
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
results from 2021-2024 i.e., after termination / supersession /
novation of the 2002 Agreement, do not refer to the Impugned
Mark; The newspaper advertisements filed by AIL are also only
recent, i.e. 05.01.2025 onwards; the Chartered Accountant (“CA”)
certificate dated 11.02.2025 for the years 2001-2024 showing
AIL’s purported annual turnover, etc. does not specify that the
figures pertaining to sales made by AIL under the Impugned Mark.
The invoices filed by AIL make no reference to the Impugned
Mark. The product images allegedly under the Impugned Mark
filed by AIL are not AIL’s.
5.29. On 15.05.2025, KL became aware that in the month of April 2025-
May 2025 AIL has entered into six service agreements with
Defendant Nos. 2 to 7 in the KL Suit for manufacture of TMT bars
under the Impugned Mark. Thus, it was in the month of April 2025
only that AIL for the first time commenced / intended to
commence any use of the Impugned Mark.
5.30. Since the institution of the KL Suit, AIL has entered into 10
additional service agreements and is flooding the market by selling
products bearing the Impugned Mark, which are of poor quality
and over which KL has no control thereby diluting and tarnishing
KAMDHENU Mark and KAMDHENU GOLD formative Marks
including the Impugned Mark. KL is suffering huge losses and will
continue to do so as AIL has entered into and flooded the market
despite being aware of KL’s prior use and rights in KAMDHENU
Mark and KAMDHENU GOLD formative Marks including the
Impugned Mark.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 29 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.31. At the time of the verification carried out by KL, no stocks of
‘KAMDHENU NXT TMT BARS’ were found with AIL at its
plant. However, AIL had valued the stocks at Rs. 34 Crores in their
published results for 30.09.2024. The only products under the
Impugned Mark found in the market were of Yashoda and KSAL
against whom KL has already instituted the Saket Suit.
5.32. However, the intention of AIL to use the Impugned Mark in the
course of trade on, upon and in relation to AIL’s goods / business is
no longer speculative but is imminent. AIL is likely to commence
the actual use of the Impugned Mark in the course of trade in the
market and KL’s apprehensions to that effect are credible and well
founded. The user, if any, by AIL of the Impugned Mark would be
extremely recent and that too extremely slight, sporadic and
intermittent.
5.33. The Impugned Mark is identical with and deceptively similar to
the KAMDHENU Mark in each and every manner including
phonetically, visually, structurally, conceptually and in its essential
features. Even the AIL’s goods / business in relation to which AIL
is using the Impugned Mark is of the same / similar / allied /
cognate nature and description to KL’s goods / business and more
so as covered by KL’s trade mark registrations in Class 06, 16, 19,
35 and 39. Even the market and trade which includes the
consumers and public at large of KL and AIL are the same /
similar.
5.34. The Impugned Mark is a variant and extension of KL’s prior,
senior, and registered KAMDHENU Mark and KAMDHENU
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
GOLD formative Marks of which KL is the lawful proprietor. The
prefix ‘AL’ has been adopted by KL for two reasons: firstly, to
signify KL’s intention to enter Middle Eastern markets where ‘AL’
is a commonly used article meaning ‘the’ and is often adopted in
trade marks and business names in that region; secondly, because
‘Al’ also denotes aluminium, a key component in the chemical
composition of KL’s goods, symbolizing strength and durability.
5.35. By AIL’s use of the Impugned Mark on, upon and in relation to
AIL’s goods / business, consumer, market, trade, public, market
and trade, confusion and deception is ensuing or likely to ensue
and the market and trade would be confused and deceived into
purchasing and doing business with AIL under the impression that
they are dealing with KL or that AIL’s goods / business are
sponsored, affiliated, associated with KL or is licensed thereto or is
an extension of KL or are from KL’s source and origin viz KL,
KL’s goods / business and KL’s KAMDHENU Mark. By AIL’s
impugned acts loss and injury is being caused to KL as well as to
the market and trade.
5.36. AIL is / was fully aware of KL’s rights in the KAMDHENU Mark
including its standing, goodwill, use, reputation, distinctiveness,
registrations and all benefits at the time of the alleged adoption and
use of the Impugned Mark which it mala fide and in bad faith
adopted and so using inspired therefrom and to derive unjust
benefits thereupon. The very adoption of the Impugned Mark by
AIL is tainted at inception. The alleged adoption and use by AIL
are acts of deceit and misrepresentation. AIL by the Impugned
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
Mark and goods is disparaging, diluting, diminishing and
discrediting the KAMDHENU Mark including strength, goodwill
and reputation. This is more so as KL and AIL are in the same /
similar line of business.
5.37. AIL voluntarily and consciously withdrew and / or let abandoned
its TMA 1161758 in Class 6 for the Impugned Mark filed on
27.12.2002 on a ‘proposed to be used’ basis. AIL had done so
under orders dated 07.01.2008 passed by the Registrar of Trade
Marks, which was thirteen years prior to the execution of 2021
Agreement. Vide order dated 07.01.2008 even costs had been
imposed upon AIL.
5.38. TM application No. 1009954 for registration of the Mark
‘KAMDHENU GOLD TMT’ in Class 6 was duly pending at the
time of execution of 2002 Agreement and was put on the Register
on 13.06.2005 to the due knowledge, admission and
acknowledgement of AIL.
5.39. Under both 2002 Agreement and 2021 Agreement, AIL could not
have any proprietary or ownership rights in the KAMDHENU
Mark in any manner whatsoever and nor could AIL acquire such
rights in light of clause 16 of 2002 Agreement and clause 7 (b) and
clause 8 of 2021 Agreement.
5.40. KL has terminated all MoUs and agreements with AIL vide written
notice dated 19.09.2024 served upon AIL and by caution notices
published in various newspapers dated 06.11.2024 wherein KL
notified the public at large which included AIL of its terminating
all MOUs and license user agreements with AIL and of AIL to
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
have no authority to use the Marks ‘KAMDHENU’ /
‘KAMDHENU NXT’ word per se or its formatives, trade name,
labels, logos and copyrights bearing the same and of any such use
to be in violation of KL’s rights. Even though 2002 Agreement had
already been terminated, annulled, novated and superseded even
prior thereto, nevertheless, without prejudice to the aforesaid, all
MoUs / agreements, including 2002 Agreement, if subsisting, also
stood terminated.
5.41. Even 2021 Agreement between KL and AIL stands duly terminated
/ cancelled / annulled / rescinded. AIL to its own knowledge and
acknowledgement has never challenged the said terminations
before any competent forum or Court of Law and has accepted the
same.
5.42. All the licence agreements namely 1997 Agreement, 2002
Agreement and 2021 Agreement were on a contractual and
commercial basis and in the capacity of Licensor i.e., KL and
Licensee i.e., AIL and in all these agreements it has been
recognized and admitted that AIL and KL being respectively
Licensee and Licensor thereto are distinct and separate legal
entities and it was on this basis that the 1997 Agreement, 2002
Agreement and 2021 Agreement had been entered into.
5.43. KL prior and after the 1997 Agreement, 2002 Agreement and 2021
Agreement continued to create, use and file for registration of its
various KAMDHENU and KAMDHENU formative and variant
marks created over a period of time for its goods and businesses
including for those KL forayed into.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.44. AIL’s claims and alleged rights are barred under the doctrine of
‘licensee estoppel’ and as such AIL is estopped from challenging
KL’s rights in the KAMDHENU and KAMDHENU formative and
variant marks including the Marks ‘KAMDHENU GOLD’,
‘KAMDHENU GOLD TMT’ and the Impugned Mark and AIL is
further estopped from setting up any rights of its own therein and
as also from disputing the separate and distinct stature of AIL and
KL and of the agreements between the Parties to be contractual
and commercial.
5.45. Under 2002 Agreement AIL could have got rights, if at all, in the
Impugned Mark only on AIL being granted trade mark registration
thereto. Thus, such a right, if at all, was contingent on the grant of
the trade mark registration to it. No trade mark registration was
ever granted to AIL and AIL itself let its TMA 1161758 to be
withdrawn and / or let abandoned to its own knowledge, admission
and acknowledgement. AIL Suit is not maintainable inasmuch as
2002 Agreement and 2021 Agreement in the very nature were
determinable and were not in perpetuity.
5.46. AIL has been already out of business with its plant closed and AIL
had defaulted in not supplying twenty eight trucks of TMT Bars to
the dealer networks. AIL has been heavily in debt, has defaulted in
the market and in dire financial crises, suffering low and adverse
acceptance in the market and is facing NCLT and SARFAESI
proceedings and in order to gain acceptability in the market and
business community has now ‘cooked up’ the story of its alleged
rights in the Impugned Mark to encash upon the standing and
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
reputation in the KAMDHENU Mark to usurp the same to revive
itself. AIL has also repeatedly defaulted in paying royalty to KL.
5.47. The application for registration of the Impugned Mark under TM
application No. 6742246 in Class 6 was filed by AIL mala fide and
without the leave, license or approval of KL and to raise a false
defence and is in violation of KL’s rights. The user claim of
26.12.2002 in TM application No. 6742246 is a false claim by
AIL. TM application No. 6742246 was also filed after the
termination letter dated 19.09.2024 and caution notices dated
06.11.2024 and even after 2021 Agreement. AIL’s subsequent
attempt to file for and obtain registration for the Impugned Mark in
the year 2024 and 2025 under TM application Nos. 6742246,
6845771 and 6845025 and after the termination of all agreements
and MoUs with AIL and after the withdrawal and / or
abandonment of TMA 1161758 is legally untenable and also
indicative of its mala fide intent inasmuch as AIL wrongfully seeks
rights in a trade mark which does not belong to AIL being a
licensee, now ex-licensee, and seeks to usurp the very same trade
mark to which AIL was licensed to by KL.
5.48. KL has its own independent corporate identity and structure
irrespective of its director or the families to which they may
belong. AIL’s reliance and pleadings on the families involved is,
therefore, a concocted story raised to draw unjust advantage and
set-up a false case. It is to AIL’s own knowledge that all rights and
properties including the intellectual property rights in the trade
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 35 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
marks and trade name and the goodwill involved vest with KL and
not with any individual director(s).
5.49. There was never ever a division of the business and AIL and KL
were always separate legal entities having their own business and
management structure and model and the relationship inter se
between AIL and KL were always commercial and contractual, as
a Licensor and Licensee. The transfer of shareholdings was all in
individual capacities as per their individual choices and did not
affect the corporate identity of AIL or KL. AIL at the time of its
acquisition was a public listed company with the BSE and as such
even otherwise individual shareholdings or of directorship was of
no consequence.
5.50. AIL Suit has been filed mala fide and out of trade and business
jealousy and is not maintainable due to AIL’s long delay, latches
and acquiescence to KL’s rights and usage and further barred by
the principles of estoppel.
5.51. AIL’s allegations of manufacture of ‘integrated steel’ is also wrong
to its own knowledge as ‘integrated steel’ is referred to
manufacturing steel from iron ore to finish products which AIL
admittedly has never done so. AIL’s alleged domain
www.alkamdhenugold.com is in violation of KL’s rights and use in
the KAMDHENU Marks including Marks ‘KAMDHENU
GOLD’, ‘KAMDHENU GOLD TMT’ and the Impugned Mark.
The registration of the AIL’s alleged domain
www.alkamdhenugold.com by AIL is mala fide and in bad faith
and is without the leave, license or approval of KL.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 36 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.52. The term ‘Turbo TMT’ is also a misnomer and no such term exists
in the industry. AIL, if at all, was only using the dealer and
distribution network of KL in the designated areas of Delhi / NCR
only. AIL only used the technology, know-how and Marks of KL.
5.53. AIL’s alleged interaction with the Ministry of Corporate Affairs,
Government of India and seeking incorporation of a company
under the name of AL KAMDHENU GOLD PVT. LTD is a sham,
fraudulent and mala fide operations conducted by it to derive
unjust benefits to the detriment of KL. KL has already filed its
objections with the Registrar of Companies against the
incorporation of the company under the name of AL KAMDHENU
GOLD PVT. LTD.
5.54. AIL’s alleged application and grant of business license by the
Government of Dubai to conduct its business under the company
name AL KAMDHENU GOLD LLC – FZ through its alleged
office at Dubai, U.A.E. is all without the leave, license or approval
of KL and is in violation of KL’s rights. Such overseas dealings are
in violation of KL’s rights amounting to infringement and passing
off.
5.55. KL’s TM application No. 6759794 has been lawfully accepted by
the Registrar of Trade Marks and so published in the Official Trade
Mark Journal. AIL obtained the acceptance order to its application
under Nos. 6742246, 6845771 and 6845025 by concealments and
manipulations and by playing a fraud upon the Registrar of Trade
Marks.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 37 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.56. By the Impugned Mark and by its alleged usage and filings AIL is
seeking to pass off AIL’s goods and business as that of KL and to
infringe KAMDHENU Mark. AIL is doing so mala fide and to
reap illegal profits and gains by trading upon KL’s well-established
rights, usage, goodwill and reputation in the KAMDHENU Mark.
KL has a prima facie case for injunction in its favour and balance
of convenience also lies in favour of KL. Irreparable harm and
injury would be caused to KL which cannot be compensated in
monetary terms, if AIL continues to use the Impugned Mark of
which ‘KAMDHENU’ / ‘KAMDHENU GOLD’ forms an essential
and prominent feature and thereby infringe KAMDHENU Mark
and KAMDHENU GOLD formative Marks and pass off AIL’s
goods / business as that of KL.
5.57. Reliance has been placed on the following judgments to highlight
the difference between an assignment and a license:
i. Classic Equipments (P) Ltd. vs. Johnson Enterprises and Others,
2009 SCC OnLine Del 4387
ii. Sun Pharmaceuticals Industries Limited Vs. Cipla Limited, 2008
SCC OnLine Del 1135
5.58. Reliance has further been placed on Latif Estate Line India Ltd. v.
Hadeeja Ammal, 2011 SCC OnLine Mad 215 to submit that,
transfer of title cannot cancel simpliciter, it has to be assigned /
transferred back to the original assignor.
5.59. Reliance has been placed on the following judgments to submit
that, license once revoked any use by licensee would amount to
infringement:
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 38 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
i. IMS Learning Resources Private Limited Versus Young
Achievers, CS (COMM) 602/2018
ii. Morgardshammar India Limited & Others Versus
Morgardshammar AB, 2012 SCC OnLine Del 4945
iii. Velcro Industries B.V. v. Velcro India Ltd., 1993 (1) Arb.LR
465
iv. Baker Hughes Limited v. Hiroo Khushalani, 1998 PTC (18)
580
5.60. Reliance has further been placed on J.K. Jain and Ors. v. Ziff-
Davies Inc., 2000 PTC 244 (DB) to submit that, an ex-licensee is
estopped from resisting injunction by licensor after termination of
agreement.
5.61. Reliance has been placed on Power Control Appliances v. Sumeet
Machines Pvt. Ltd., MANU/SC/0646/1994 to submit that, there
can be only one mark, one source and one proprietor.
5.62. Reliance has further been placed on the following judgments to
submit that, in a passing-off suit the Plaintiff has to show goodwill
and reputation of the business:
i. Gora Mal Hari Ram Vs. Bharat Soap and Oil Industries,
MANU/DE/0431/1983
ii. American Home Products Corporation Vs. Mac Laboratories
Pvt. Ltd. and Ors., MANU/SC/0204/1985
iii. Laxmikant V. Patel Vs. Chetanbhat Shah and Ors.,
MANU/SC/0763/2001Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 39 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
5.63. Reliance has been placed on the following judgments to submit
that, ‘KAMDHENU’ is the dominant / essential feature of the
plaintiff’s family of marks:
i. Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, (2022) 5
SCC 1
ii. Ruston & Hornsby Ltd. v. Zamindara Eng. Co., (1969) 2 SCC
727
iii. KRBL Limited v. Praveen Kumar Buyyani & Ors., 316 (2025)
DLT 783
iv. Under Armour Inc v. Anish Agarwal & Ors. 2025: DHC
:4243-DB
v. Amba Shakti Steel s Ltd. v. Sequence Ferro Private Limited
Neutral Citation: 2024: DHC:6703-DB
vi. Jaquar & Co. (P) Ltd. v. Ashirvad Pipes (P) Ltd., 2024 SCC
OnLine Del 2281
vii. M/S. South India Beverages Pvt. Ltd. Vs. General Mills
Marketing Inc. & Anr., FAO (OS) 289/2014, Delhi High Court
viii. Living Media India Limited and Ors. Vs. Aabtak
Channel.Com (John Does) and Ors., CS(COMM) 193/2022
Delhi High Court
REJOINDER SUBMISSIONS ON BEHALF OF AIL:
6. The learned Senior Counsel for AIL made the following submissions:
6.1. The defences raised by KL are vague and evasive and do not
pertain to the Impugned Mark. KL has attempted to create a
false narrative regarding the business relationship between AIL
and KL and various agreements entered between the Parties.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 40 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
KL’s interpretation and understanding of the various
agreements between the parties including 2002 Agreement is
flawed and contrary to their stand taken at the time of execution
of the said agreements.
6.2. KL is trying to mislead this Court by stating that under 2002
Agreement, AIL was entitled to adopt and use the Impugned
Mark only during the subsistence of the 2002 Agreement.
However, a mere perusal of 2002 Agreement would evidence
that it was agreed between the Parties that KL will be the
absolute owner of the Mark ‘KAMDHENU’ and AIL will be
the absolute owner of the Impugned Mark.
6.3. KL’s argument that the goods for which 2002 Agreement has
been stipulated had become obsolete is irrelevant as the present
dispute does not concern the nature of goods dealt in 2002
Agreement.
6.4. AIL in 2021 Agreement did not explicitly and unequivocally
recognize and acknowledge KL’s right in the Mark
‘KAMDHENU GOLD’ registered under TM application No.
842704. While entering into 2021 Agreement, which pertained
solely to the Marks ‘KAMDHENU’ and ‘KAMDHENU NXT’,
KL with mala fide and fraudulent intent inserted a reference to
TM application No. 842704, which pertains to the Mark
‘KAMDHENU GOLD’ within the recitals of the 2021
Agreement. AIL, having placed trust in KL, did not verify each
and every TM application Number mentioned in 2021
Agreement. Since 2021 Agreement concerned only the Marks
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
‘KAMDHENU’ and ‘KAMDHENU NXT’, AIL had no reason
to anticipate that KL would clandestinely include TM
application No. 842704 which pertains to the Mark
‘KAMDHENU GOLD’.
6.5. It is a settled principle of law that when two parties enter into
an agreement to perform certain acts, and due to oversight or
mistake, certain terms or expressions are inaccurately used in
the written document, it is the true intention of the parties that
must be considered to determine the purpose and effect of the
agreement. In the present case both Naresh Chand and KSAL
acknowledges AIL to be the absolute owner of the Impugned
Mark and neither of them is claiming any right over the
Impugned Mark.
6.6. KL’s contention that AIL has deliberately concealed and
suppressed the MoU is frivolous. KSAL is not a party to the
present dispute and the MoU does not concern with the facts of
the present dispute. The MoU only came into the knowledge of
AIL when KL filed the Saket Suit. KL has filed the Saket Suit
on the basis of the MoU and in the Saket Suit, KSAL has
denied the authenticity and enforceability of the MoU, taking
the following stand with respect to the MOU:
i. The MoU is alleged to be signed by Mr. Neeraj Kumar
Jain on behalf of KSAL. However, as per the records and
knowledge of Mr. Neeraj Kumar Jain, Defendant No. 2 in
the AIL Suit had no authority to sign the MoU in the first
place, no board resolution has been issued by KSAL inSignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 42 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
favour of Mr. Neeraj Kumar Jain, as is required in case of
a company and therefore the MoU is null and void ab
initio.
ii. Further, no reference to a Board Resolution in favour of
Mr. Neeraj Kumar Jain exists in the Minutes Book
maintained by KSAL, for the period since its incorporation
to the alleged signing of the MoU. KSAL could never have
entered into the MoU as the same seriously prejudices the
rights, entitlements and objectives of KSAL, as per the
Articles of Memorandum and Association; but also goes
against the commercial sense of business.
iii. The MoU is also against the fundamental right of freedom
of trade and commerce of KSAL and amounts to
oppression and mismanagement.
iv. The MoU is an afterthought, and internal arrangement
among individuals who were closely related to each other,
and no third party, including KSAL, was ever made aware
of its existence. Mr. Neeraj Kumar Jain is the founding
shareholder and promoter of KL in equal proportion to Mr.
Satish Kumar Agarwal, as also the father-in-law of the
niece of Mr. Satish Kumar Agarwal, who has signed the
MoU on behalf of AIL. Mr. Neeraj Kumar Jain and Mr.
Satish Kumar Agarwal, who signed the MoU on behalf of
Defendant No. 2 in the AIL Suit and AIL, respectively, are
closely related. Even the two witnesses who signed the
MoU i.e., Vivek Maheswari and Sangeeta Kalra were alsoSignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 43 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
in fact closely related to KL and while Vivek Maheshwari
has been the AGM in KL, Sangeeta Kalra has been a
shareholder in KL.
v. The MoU bears a physical stamp, despite the fact that at
the time of the execution of the MoU, e-stamping had
already been introduced and prevalent across New Delhi,
which further raises serious doubts regarding the
authenticity and genuineness of the MoU.
6.7. Further, the AIL Suit does not suffer from delay, latches and
acquiescence as the AIL Suit was filed as soon as AIL became
aware that KL is trying to unauthorizedly claim rights over the
Impugned Mark despite categorically giving up the same vide
2002 Agreement. With respect to the 2002 Agreement, it is
AIL’s case that 2002 Agreement is still valid and AIL seeks
directions against KL for the specific performance of 2002
Agreement.
6.8. On 27.12.2002, vide TMA 1161758, AIL through the common
lawyer with KL applied for the registration of the Impugned
Mark in Class 6. However, TMA 1161758 was inadvertently
abandoned in 2008 and the lawyer never informed AIL.
Nonetheless AIL commenced and has since 2002 been bona
fidely using the Impugned Mark. Concurrently, AIL also
continued to manufacture products under the brand
‘KAMDHENU’ for KL in compliance with 2002 Agreement,
with the ultimate objective of getting the registration of the
Impugned Mark.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 44 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
6.9. KL’s claim of irreparable injury is illusory, especially when AIL
has used the Impugned Mark openly, continuously and
uninterruptedly since 2002 and KL has knowingly acquiesced
to this use for over two decades and has never made use of the
Impugned Mark.
6.10. Admittedly, TMA 1161758 was filed immediately after the
execution of the 2002 Agreement by the lawyer who is now
representing KL and against AIL in the present proceedings.
The Trade Marks Registry has issued orders dated 07.01.2008
deeming AIL’s TMA 1161758 as abandoned and a copy of the
same was served on the said lawyer. The said lawyer did not
inform AIL of the abandonment and it resulted in AIL losing its
statutory rights over the Impugned Mark. Thereafter, the same
lawyer applied for the same Impugned Mark on behalf of KL
under TM application No. 6759794 in Class 6 for steel bars and
other related products and also challenged AIL’s rights over the
Impugned Mark through various proceedings before this Court
and before the Trade Marks Registry. AIL has also addressed a
legal notice to the lawyer in this regard.
6.11. KL has never used the Impugned Mark in any capacity, nor has
filed a single shred of evidence to support its fraudulent claims
of use. KL’s application dated 17.12.2024 has falsely claimed
user since 2001 in a deliberate attempt to mislead the Trade
Marks Registry and this Court. Hence, KL’s assertion of rights
and use of the Marks ‘KAMDHENU GOLD’, ‘KAMDHENU
GOLD TMT’, and the Impugned Mark are inconsistent. TM
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 45 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
application No. 842704 for the Mark ‘KAMDHENU GOLD’
filed on 24.02.1999 has been filed on ‘proposed to be used’
basis, TM application No. 1009954 for the Mark
‘KAMDHENU GOLD TMT’ filed on 17.05.2001 has been
filed claiming user since 01.04.1997, while TM application No.
6759794 for the Impugned Mark filed on 17.12.2024 has been
filed claiming user since 17.05.2001 which is the filing date of
the said application for the Mark ‘KAMDHENU GOLD TMT’.
Such mischievous conduct, laced with material suppression and
falsehood renders all of KL’s assertions legally untenable.
6.12. KL has further filed various proceedings before this Court
being W. P. (C) – IPD Nos. 29 to 33 of 2025 challenging AIL’s
TM application Nos. 6890699, 6845025, 6890704 and 6742246
for the Impugned Mark, 6845771 for the Mark
‘ ‘, in contravention to 2002 Agreement.
6.13. AIL in the AIL Suit has disclosed that AIL has expanded its
business outside India and has set up a company namely AL
KAMDHENUGOLD L.L.C-FZ in Dubai, U.A.E. Now, KL
with utmost mala fide has applied for the registration of
Impugned Mark in Dubai, in an attempt to disturb the
legitimate commercial rights of AIL which is in direct breach of
the 2002 Agreement. It is a settled position in law that when
mala fide is writ large then injunction must follow.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 46 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
6.14. A perusal of the subject line of the termination letter dated
19.09.2024 reveals that it pertains exclusively to 2021
Agreement and contains no reference whatsoever to 2002
Agreement. Without prejudice to the foregoing, AIL duly
responded to the termination letter dated 19.09.2024 vide its
reply dated 27.01.2025, categorically denying all baseless and
false allegations levelled by KL and has further prayed for
specific performance of the 2002 Agreement in the AIL Suit.
Furthermore, KL has no unilateral right to terminate 2002
Agreement, as none of its clauses confer upon KL any such
power of revocation or termination.
6.15. Furthermore, KL has falsely pleaded before this Court that
2021 Agreement superseded 2002 Agreement, however, 2021
Agreement merely modifies the terms of the license granted to
AIL in respect of the Marks ‘KAMDHENU’ / ‘KAMDHENU
NXT’ and has no bearing whatsoever on the assignment of the
Impugned Mark to AIL as contemplated in 2002 Agreement.
2021 Agreement neither alters nor overrides any of the rights
assigned to AIL under the 2002 Agreement, particularly with
regard to AIL’s exclusive and absolute ownership of the
Impugned Mark.
6.16. KL is also trying to portray a misleading picture before this
Court that AIL has not used the Impugned Mark. However, KL
itself has never used the Impugned Mark, nor has it placed on
record any material or document to establish its use of the
Impugned Mark and has an inconsistent user claim throughout
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 47 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
its applications for the use of the Mark ‘KAMDHENU GOLD’
/ ‘KAMDHENU GOLD TMT’ / Impugned Mark. Such conduct
on the part of KL reflects a clear abuse of its position and is
indicative of a willful and arbitrary assertion of rights it does
not possess. AIL has placed sufficient documentary evidence on
record to show that AIL has been using the Impugned Mark
continuously since the year 2002. AIL has placed enough
material on record to show that AIL has been using the
Impugned Mark and that the Impugned Mark has acquired
goodwill and reputation. Moreover, it is a settled position in
law that to claim proprietorship over a mark, it is not necessary
that the mark should have been in use for considerable length of
time and even a single actual use with intent to continue use
confers a right to such mark as a trademark.
6.17. 2002 Agreement categorically assigned the exclusive and
absolute proprietary rights in the Impugned Mark to AIL. This
was a conscious, deliberate, and informed transfer made by KL
with full knowledge of the consequences. Having divested itself
of all rights in the Impugned Mark and allowed AIL to use the
Impugned Mark for over two decades, KL is estopped in law
and equity from now turning around to challenge the very
rights it relinquished. This belated attempt to claw back
contractually alienated rights is not only barred by the doctrine
of estoppel but also amounts to fraud upon the court.
6.18. Owing to AIL’s admitted prior longstanding and continued use,
coupled with investments in marketing and the resultant
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 48 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
turnover, the Impugned Mark acquired significant goodwill and
reputation in the industry since 2002, allowing AIL to create a
niche for itself immediately when AIL started focusing on the
Impugned Mark. Further, the consumer / buyer of the Impugned
Mark is not the buyer of KAMDHENU Mark and AIL has in
fact tapped into the nonexistent markets of KL and established
a distinct and self-sustaining market, separate from KL.
6.19. In conclusion, AIL is the owner of the Impugned Mark and KL
is the owner of the KAMDHENU Mark. Both Parties have
categorically admitted the rights of one another in the said
Marks through 2002 Agreement. Having allowed AIL to use the
Impugned Mark and having agreed to withdraw trade mark
application for the Mark ‘KAMDHENU GOLD’ to enable AIL
to have the Impugned Mark registered, KL cannot under any
stretch of imagination be allowed to go against 2002
Agreement, which has not been challenged till date and is valid
and subsisting.
ANALYSIS AND FINDINGS:.
7. It is well established that when interim relief is sought in a suit and
the opposing party raises concerns regarding the maintainability of the suit
or alleges that it is barred by law and further argues on this basis that interim
relief should not be granted, the Court must first form and record at least a
prima facie determination that the suit is maintainable and not barred by law
before granting any such interim relief. Accordingly, prior to evaluating the
substantive merits of the present Applications, it is essential to address the
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 49 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
preliminary objection raised by the learned Senior Counsel for KL
concerning the maintainability of the AIL Suit.
8. KL has questioned the maintainability of the AIL Suit primarily on
two grounds. Firstly, it is asserted that the rights in the Impugned Mark were
assigned by AIL to Naresh Chand alias Naresh Jain, and thereafter by
Naresh Chand alias Naresh Jain to KSAL, by way of Assignment Deeds. It
was submitted on behalf of KL that following the institution of the AIL Suit
on 13.02.2025, AIL, in conjunction with its director Naresh Chand alias
Naresh Jain and KSAL, sought to cancel the Assignment Deeds through a
written communication addressed solely to Naresh Chand alias Naresh Jain,
and not to KSAL. KL contends that once title has been transferred by an
instrument, such as AIL claims to have done, it cannot be unilaterally
cancelled as a reassignment to the original assignor is required. On this
basis, it is argued on behalf of KL that the purported cancellation of the
Assignment Deeds is invalid, and AIL, therefore, lacks locus to sustain the
Suit.
9. In the present matter, it is AIL’s own admission that, without awaiting
registration of the Impugned Mark in its favour, AIL assigned the Impugned
Mark, first to Naresh Chand alias Naresh Jain and thereafter to KSAL. It is
also not in dispute that AIL’s applications in respect of the Impugned Mark
have not yet proceeded to registration. In this backdrop, where the rights
claimed by AIL in the Impugned Mark had not attained finality, the scope of
what could have been conveyed under the Assignment Deeds, even prior to
registration, and whether the same operates to denude AIL of its ability to
maintain the AIL Suit in its own name, are matters which fall for
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
consideration on merits intrinsic to the dispute between the Parties, and
certainly do not warrant non-suiting AIL at this interlocutory stage.
10. Secondly, it was contended on behalf of KL that in the absence of
declaratory relief challenging the termination letter dated 19.09.2024, the
AIL Suit, filed for mandatory injunction and specific performance of 2002
Agreement, must fail and in this regard reliance was placed on I.S. Sikandar
v. K. Subramani, (2013) 15 SCC 27 wherein the Supreme Court was dealing
with an agreement for sale that provided for stipulated sale within a
stipulated time frame and on failure of the plaintiff therein to respond to the
notice seeking execution of sale, the agreement was terminated. In that
context, the Supreme Court in I.S. Sikandar (supra) observed that:
“36. Since the plaintiff did not perform his part of contract within
the extended period in the legal notice referred to supra, the
agreement of sale was terminated as per notice dated 28-3-1985 and
thus, there is termination of the agreement of sale between the
plaintiff and defendants 1-4 w.e.f. 10-4-1985
37. As could be seen from the prayers sought for in the original suit,
the plaintiff has not sought for declaratory relief to declare the
termination of agreement of sale as bad in law. In the absence of
such prayer by the plaintiff the original suit filed by him before the
trial court for grant of decree for specific performance in respect of
the suit scheduled property on the basis of agreement of sale and
consequential relief of decree for permanent injunction is not
maintainable in law.
38. Therefore, we have to hold that the relief sought for by the
plaintiff for the grant of decree for specific performance of execution
of sale deed in respect of the suit scheduled property in his favor on
the basis of non-existing agreement of sale is wholly unsustainable
in law.”
[Emphasis Supplied]
11. In the AIL Suit, AIL seeks specific performance of 2002 Agreement,
asserting that 2002 Agreement remains in effect and has not been
superseded by the 2021 Agreement. AIL further contends that the
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 51 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
termination dated 19.09.2024 pertains solely to the 2021 Agreement and
does not impact the validity or enforceability of the 2002 Agreement.
Conversely, KL argues that the 2021 Agreement novated the 2002
Agreement such that, upon termination of the 2021 Agreement, no rights
remain under the 2002 Agreement, rendering the AIL Suit unsustainable
without seeking a declaratory relief.
12. The necessity for declaratory relief would arise if, based on a prima
facie assessment, the termination introduces a clear legal obstacle to
enforcing the contract. In the preset case, AIL disputes both the alleged
novation effected by the 2021 Agreement and the application of the
termination letter dated 19.09.2024 to the 2002 Agreement. Requiring AIL
to challenge the termination letter as a condition for seeking specific
performance of the 2002 Agreement would essentially compel AIL to
accept, contrary to its stated position, that the 2002 Agreement was indeed
novated by the 2021 Agreement and that the termination affects its rights.
13. Since AIL maintains that the 2002 Agreement remains operative, it is
entitled to proceed accordingly and treat the termination letter dated
19.09.2024 as having no legal effect upon its rights under the 2002
Agreement. Declaratory relief is warranted when there is genuine
uncertainty regarding the plaintiff’s rights, with the grant of relief depending
on the resolution of such uncertainty. However, where a contract is
terminated unilaterally, such action may constitute a repudiatory breach,
thereby entitling the aggrieved party to treat the contract as continuing and
to seek specific performance without first obtaining declaratory relief
concerning the validity of the termination.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 52 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
14. The decision in I.S. Sikandar (supra) is also factually distinguishable,
as in that case, the termination of the agreement was not disputed, and the
plaintiff sought enforcement of a contract which, by its own account, had
already ceased to exist. In contrast, the present case involves a dispute
regarding both the applicability of the termination and the plea of novation.
Under these circumstances, the objections to the maintainability of the AIL
Suit cannot be decided at this preliminary stage and is kept open.
15. In view of the above, the submissions made for respective
Applications filed by AIL and KL under Order XXXIX Rules 1 and 2 read
with Section 151 of the CPC, seeking interim injunctions are considered
hereinbelow.
16. AIL contends that the alleged joint management of KL is pertinent to
the rights of the Parties. Specifically, AIL asserts that in 1996 it was brought
under the joint direction of KL, which itself was managed collaboratively by
the Agarwal family and the Jain family. AIL further submits that the Brand
and Mark ‘KAMDHENU,’ first established in 1994, was developed through
the joint efforts and contributions of both families, each benefiting from
profits generated by the sale of steel products bearing KAMDHENU Mark
and its various permutations and combinations. Accordingly, to evaluate
AIL’s claims, it is necessary to examine relevant provisions of the 1997
Agreement, 2002 Agreement, and 2021 Agreement (“Agreements”) that are
central to the dispute.
17. In this regard, the 1997 Agreement states that:
“…The second party is not related to the first party and therefore
both the entities are separate and the first party has no control over
the second party.”
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
The 2002 Agreement states that:
“WHEREAS, the Licensor and Licensee are totally unrelated parties
and both the entities are separate and distinct; and…”
The 2021 Agreement further states that:
“G. The relationship between the First Party and the Second Party
hereto is purely commercial and contractual and they are separate
legal entities and are not related to each other.”
18. An analysis of the relevant clauses of the Agreements confirms that
the Agreements were executed with the explicit understanding that the
Parties are unaffiliated and operate independently. The relationship between
the Parties has consistently involved distinct entities conducting business
solely within a commercial and contractual context. Within this
arrangement, all rights pertaining to trademarks, trade names, and associated
goodwill reside with corporate entities rather than any individual directors.
Consequently, any claims based on purported family arrangements or
collaborative development of KAMDHENU Mark do not impact the legal
rights of the Parties.
19. Reliance placed by AIL on Thayyullathil Kunhikannan (supra), Shri
Ram Education Trust (supra) is not helpful as these decisions pertain to
issues of succession and inheritance rights, and not to contractual
arrangements between admittedly unrelated Parties acting in their
commercial capacity as in the present case. Likewise, Darshan Lal Dhooper
(supra), does not advance AIL’s case as the same having arisen in an
uncontested petition on a wholly distinct set of facts.
20. AIL has further asserted, with considerable emphasis, that 2002
Agreement constituted a trademark assignment agreement and KL had
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 54 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
unambiguously relinquished any rights to the Impugned Mark and has
recognized AIL as its exclusive user.
21. For addressing this issue, the legal framework governing the
assignment and licensing of trademarks is discussed below:
22. This Court in Classic Equipments (P) Ltd. (supra) observed as under:
“26. Assignment has been defined in Section 2(a) of the Trade and
Merchandise Marks Act, 1958 corresponding to Section 2(b) of the
Trade Marks Act, 1999 as under: 2(a) “assignment” means an
assignment in writing by act of the parties concerned.
27. The expression “assignment” has been considered by the
Supreme Court in Nand Kishore Prasad v. State of Bihar, AIR 1978
SC 1277, wherein at para 10 it was observed “Assignment”, it has
been stated in Black’s Law Dictionary. Special Deluxe Ed., p. 106,
“is a transfer or making over to another of the whole of any
property, real or personal, in possession or in action, or of any
estate or right therein”. It has further been stated as “The transfer by
a party of all its rights to some kind of property, usually intangible
property such as rights in lease, mortgage, arrangement of sale or
partnership”.
28. The distinction between a license and assignment has been
stated in Chapter 20 of Law of Trade Marks by passing off by P.
Narayana Sixth Edition. The relevant portions of the paragraph
20.02 are extracted hereunder:
20.02 Distinction between licensing and assignment Property
in a trade mark consists in the exclusive right to use the mark
in relation to some goods, subject of course to the right of
honest concurrent user by others Assignment is a permanent
transfer of this right to use, while licence is a temporary
transfer of this right, either exclusively or non-
exclusively”……….. licence could be revoked, whereas an
assignment is irrevocable.”
29. Once an Assignment Deed has been executed, the assignor
ceases to have any right, title or interest in the property assigned. It
is not open to the assignor to cancel the assignment by means of a
communication. The Deed of assignment can only be cancelled
under the provisions of Specific Relief Act…”
[Emphasis Supplied]
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
23. Assignment of trade mark is taken to be a transfer of the trade mark
by the owner or proprietor thereof to a third party. By assignment, the
original owner or proprietor of trade mark is divested of his right, title or
interest therein. Whereas licence to use a trade mark is distinct and different
from assignment. A licence signifies a permitted use of a trade mark,
without any transfer of ownership, with the proprietary rights and goodwill
continuing to vest in the licensor.
24. Therefore, it is important to consider how the relevant provisions of
the Trade Marks Act govern the aspects of permitted use of a trade mark:
Section 2(1)(r) of the Trade Marks Act defines ‘Permitted use’ as under:
“Permitted use”, in relation to a registered trademark, means the
use of trademark-
(i) by a registered user of the trademark in relation to goods or
services-
(a) with which he is connected in the course of trade; and
(b) in respect of which the trademark remains registered for the
time being; and
(c) for which he is registered as registered user; and
(d) which complies with any conditions or limitations to which the
registration of registered user is subject; or
(ii) by a person other than the registered proprietor and registered
user in relation to goods or services-
(a) with which he is connected in the course of trade; and
(b) in respect of which the trademark remains registered for the
time being; and
(c) by consent of such registered proprietor in a written
agreement; and
(d) which complies with any conditions or limitations to which
such user is subject and to which the registration of the trademark
is subject;”
Whereas Section 48 (2) of the Trade Marks Act provides that:
“The permitted use of a trade mark shall be deemed to be used by
the proprietor thereof, and shall be deemed not to be used by a
person other than the proprietor, for the purposes of section 47 orSignature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 56 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
for any other purpose for which such use is material under this Act
or any other law.”
25. According to Section 48(2) of the Trade Marks Act, use of a trade
mark by a licensee is legally considered as use by the proprietor for all
purposes under the Trade Marks Act or any other relevant law.
26. A review of the Agreements indicates that the relationship between
the Parties is clearly defined as licensor and licensee. The Agreements
consistently state that no right, title, or interest in the KAMDHENU Mark is
conveyed to AIL, and all goodwill generated from the use of the
KAMDHENU Mark accrued exclusively to KL. In this context, reference
may be made to Clause 5 of the 2002 Agreement:
“5. The licensee expressly acknowledges, agrees and admits that
1) The said trade mark is the exclusive proprietary rights of Licensor;
2) By use of the said trade mark, the Licensee does not and shall not, nor
shall it deemed to have acquired any right, title or interest whatsoever
(other than the bare license and right to continue and use them
hereunder granted) in, to or over the said trade mark at any time
hereafter;
3) Any right, title, interest or goodwill whatsoever which may arise out of
the use of the any of the trademarks;
i. Vests with Licensor, who is the exclusive proprietary of the same;
and
ii. Shall be deemed to be held by the Licensee for the absolute
benefit of licensor.”
[Emphasis Supplied]
27. Clause 22 of 2002 Agreement provides that AIL shall be entitled to
adopt and use the Impugned Mark in relation to steel bars and other cognate
and related goods, however, also dictates AIL as to the form and manner of
such usage of the Impugned Mark. Clauses 23 and 24 of 2002 Agreement
further provide that up to the time of registration of the Impugned Mark as
envisaged under Clause 24 of 2002 Agreement, KL will be entitled to use
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
the Impugned Mark in relation to Steel Bars and other cognate and related
goods.
28. Clause 24 of 2002 Agreement also, in clear terms, provides that AIL
‘will become exclusive and absolute owner’ only upon final registration of
the Impugned Mark. The vesting of ownership is thus expressly contingent,
and no proprietary rights accrue unless and until such registration is obtained
by AIL. Clause 26(b) of 2002 Agreement further provides for automatic
termination of 2002 Agreement upon such registration, indicating that the
parties to the 2002 Agreement envisaged a transition from a license regime
to an ownership regime only upon final registration of the Impugned Mark
by AIL.
29. Accordingly, Clauses 22 to 26 of 2002 Agreement, when read
conjointly, do not provide for any present transfer of proprietary rights, but
merely contemplate a future and contingent possibility of such transfer upon
registration of the Impugned Mark in favour of AIL. The pervasive control
retained by KL over the manner, scope and continuance of use of the
Impugned Mark by AIL including termination rights indicate that there was
no assignment of Impugned Mark. The 2002 Agreement, therefore, in
substance and effect, constitutes a license user arrangement even in respect
of the Impugned Mark, and cannot be construed as being in the nature of an
assignment thereof.
30. On the aspect of novation of 2002 Agreement by 2021 Agreement,
Recital E of 2021 Agreement reads as under:
“E. The First Party executed an Agreement dated 26th December,
2002 with Ashiana Ispat Limited for manufacturing and sale of Steel
Bars under the Trade Mark KAMDHENU for a period of 99 years.
The said Agreement was executed pertaining to the product steel
bars which were Cold Twisted Bars (CTD bars)/Tor Steel. However,Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 58 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
over a period of time, the said products have become obsolete and
new products have been introduced. Now, in view of the current
requirement of reinforcement steel bars to fulfill the requirement of
high rise buildings scaling upto great heights, metro rails and big
infrastructure projects, the First Party after extensive research has
developed the next generation TMT Bar known as KAMDHENU
NXT. That since the old form of steel bars, CTD bars/tor steel have
already been obsolete, the Second Party is now interested to
continue the current arrangement between the Parties to
manufacture latest and modern version of steel bars, KAMDHNEU
NXT to fulfill the requirements of the industry.”
31. ‘Novation’ implies a fresh contract directly or by implication in place
of the original contract. Black’s Law Dictionary 6th Edition at Page No. 1064
defines ‘Novation’ as:
“Novation. A type of substituted contract that has the effect of
adding a party, either as obligor or obligee, who was not a party to
the original duty. Subsitution of a new contract, debt, or obligation
for an existing one, between the same or different parties. The
substitution by mutual agreement of one debtor for another or of one
creditor for another, whereby the old debt is extinguished. A
novation substitutes a new party and discharges one of the original
parties to a contract by agreement of all parties. See Restatement of
Contracts, Sectond, $ 280. The requisites of a novation are a
previous valid obligation, an agreement of all the parties to a new
contract, the extinguishment of the old obligation, and the validity of
the new one. Blyther v. Pentagon Federal Credit Union, D.C. Mun.
App., 182 A.2d 892, 894.
In the civil law, there are three kinds of novation: where the debtor
and creditor remain the same, but a new debt takes the place of the
old one; where the debt remains the same, but a new debtor is
substituted; where the debt and debtor remain, but a new creditor is
substituted. Wheeler v. EWardell 173 Va 168, 2 S.E.2d 377, 388.”
32. Section 62 of the Contract Act, 1872 (“Contract Act“) allows
novation, rescission, modification and alteration of an earlier contract with a
new agreement or even alteration of an earlier agreement. It gives rights to
parties to put a contract to an end or terminate it. Under the new agreement
or upon amendment of an earlier contract, prior rights of the parties are
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
extinguished and new rights and obligations come into existence. Original
contract is discharged or modified and substituted by the new obligations
under the new contract or as a result of amendment. Unless the new contract
is void or unenforceable or the amended terms are unenforceable, a party
cannot revert back to the original contract. Section 62 of the Contract Act is
based upon the principle that a contract is the outcome of a mutual
agreement and it is equally open to the parties to mutually agree to bring the
said contract to an end, enter into a new contract or modify the earlier
contract. Contractual obligations can be modified by mutual consent. Parties
can vary the terms of the contract and absolve a party from the original
obligations. Once Section 62 of the Contract Act applies, parties are bound
by the terms and conditions mentioned in the second contract or the
amended terms and not by the first contract. The question is of intention of
the parties, when they enter into second contract or modify earlier terms.
Section 62 of the Contract Act does not require additional or new
consideration or possibility thereof by any party, to be a valid and
enforceable contract. Discharge of the original contract is regarded as
consideration in the new contract. Release from the past consideration is a
good consideration to enter into a new contract. No further consideration is
required.
33. In the present case, Recital E of 2021 Agreement expressly takes note
of the 2002 Agreement and records the shift in the nature of products from
the erstwhile CTD / Tor Steel bars to the next-generation TMT bars, i.e.,
KAMDHENU NXT, and records that, ‘in view of the current requirement of
reinforcement steel bars’ KL has developed the next generation TMT bar
known as KAMDHENU NXT, and that AIL is ‘now interested to continue
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 60 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
the current arrangement between the Parties to manufacture latest and
modern version of steel bars’.
34. The language of Recital E also assumes significance inasmuch as it
characterizes the very subject matter of 2002 Agreement, CTD / Tor Steel
bars as having become ‘obsolete’ reflecting a discontinuity with the earlier
regime as under 2002 Agreement. The foundation of 2002 Agreement
having ceased to exist, the Parties, by mutual consent, entered into 2021
Agreement to govern their rights and obligations in respect of a new and
distinct product. In such circumstances, intention to substitute the earlier
agreement is discernible from the terms of the subsequent agreement read in
light of the surrounding commercial context.
35. In this conspectus and having regard to the principle that novation
under Section 62 is founded on the mutual intention of the parties to
substitute a new contract in place of the old, prima facie 2021 Agreement
constitutes a novation of the 2002 Agreement.
36. In the present Applications, the reliefs sought by AIL arise from a
claim of passing off, whereas the reliefs sought by KL arise from a claim of
infringement and passing off.
37. Salmond & Heuston in Law of Torts, 20th edition at Page No. 395 on
the remedy of passing off states that the legal and economic basis of passing
off is to provide protection for the right of property, which exists not in a
particular name, mark or style but in an established business, commercial or
professional reputation or goodwill. The law on the remedy of passing off is
designed to protect traders against that form of unfair competition which
consists in acquiring for oneself, by means of false or misleading devices,
the benefit of the reputation already achieved by rival traders.
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
38. In a passing-off action the plaintiff will have to prove that his mark
has by user acquired such goodwill / reputation as to become distinctive of
the plaintiff’s goods so that if it is used in relation to any goods of the kind
dealt with by the plaintiff, it will be understood by the trade and public as
meaning that the goods are the plaintiff’s goods. In this backdrop, the
submission advanced on behalf of AIL that AIL is the prior user of the
Impugned Mark and has actively used the Impugned Mark in the course of
trade and has thereby built considerable goodwill requires examination.
39. It is an admitted position of AIL that as AIL continued to manufacture
products under KAMDHENU Mark for KL most of AIL’s time, energy and
resources were spent on focusing on the manufacturing of the products
under KAMDHENU Mark and that the manufacture and sale of products
under the Impugned Mark got lessor attention. Invoices dated 26.12.1997,
30.07.1997, 28.07.1999, 30.09.2000, 27.09.2000, 11.10.2003, 29.10.2003,
30.09.2004 and even up to 29.08.2024, placed on record by AIL, do not bear
the Impugned Mark, but instead bear the Marks ‘ ‘ /
‘ ‘/’ ‘ or carry the words ‘Manufacturers of
KAMDHENU® BRAND HSD BAR’. Therefore, prima facie, the invoices
filed by AIL from 1997 to 2024 do not show any use of the Impugned Mark
by AIL.
40. The advertisements dated 30.10.2004, 03.10.2005, 15.02.2011,
15.12.2014, 19.01.2025, 05.01.2025 and 09.02.2025, placed on record by
AIL, bear the Impugned Mark. The advertisement dated 03.10.2005
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Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
mentions the Impugned Mark along with the disclaimer ‘for 99 years as per
agreement’.
41. There is no cavil with the proposition that even advertisement of trade
mark without existence of goods in the market is also to be considered as
use of the trade mark. However, considering the facts and circumstances in
the present case, the evidentiary value of such use must be assessed in the
context in which it is made.
42. It is already observed above that a plain reading of 2002 Agreement
indicates that the Parties operated within a licensor-licensee framework and
2002 Agreement in substance and effect constituted a permissive user
arrangement even in respect of the Impugned Mark and consequently, any
use of the Impugned Mark by AIL during the subsistence of 2002
Agreement, and prior to the grant of registration of the same in favour of
AIL would not confer any independent goodwill upon AIL and any goodwill
so generated would enure to the benefit of KL, especially when AIL itself
has put disclaimer that it does not have any independent right over the
Impugned Mark in the advertisement relied upon by AIL.
43. In the present case, some of the advertisements relied upon by AIL
were published during the subsistence of 2002 Agreement necessarily falling
within a permitted user of the Impugned Mark. Any such use, or goodwill
including by way of advertisements, would therefore, enure to the benefit of
KL, being the licensor, in view of Section 48 (2) of the Trade Marks Act and
cannot be appropriated by AIL to independently establish prior user and
goodwill.
44. In view of the above, AIL has not been able to establish prima facie
case by establishing prior use or goodwill in its favour.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 63 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
45. As regards the claim of infringement and passing off on behalf of KL,
it is settled law, that in an application for interim injunction, the burden is on
the plaintiff to prima facie establish that there is right in favour of the
plaintiff and there has been infraction of the enjoyment of the said right as a
condition precedent for the grant of interim injunction. The Court then has to
be satisfied that non-interference by the court would result in irreparable
injury to the party seeking relief and that there is no other remedy available
to the party except one to grant injunction and he needs protection from the
consequences of apprehended injury, one that cannot be adequately
compensated by way of damages. The third condition also is that the balance
of convenience must be in favour of granting injunction.
46. The Court while granting or refusing to grant injunction should
exercise sound judicial discretion to find the amount of substantial mischief
or injury which is likely to be caused to the parties, if the injunction is
refused and compare it with that which is likely to be caused to the other
side if the injunction is granted.
47. KL has placed reliance on its registrations for Marks incorporating
‘KAMDHENU GOLD’ and related formative marks. The expression
‘KAMDHENU GOLD’, which forms dominant part of the Impugned Mark
is admittedly coined by KL and when taken as a whole, constitutes a
combination of two words being arbitrary and not descriptive of the goods in
question. The Impugned Mark wholly incorporates KL’s registered Mark
‘KAMDHENU GOLD’, with the addition of the prefix ‘AL’, which, prima
facie, does not alter the essential character of the Mark ‘KAMDHENU
GOLD’. The dominant and distinctive element of the Mark ‘KAMDHENU
GOLD’ thus stands appropriated in its entirety.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 64 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
48. Admittedly, since the execution of 2002 Agreement, AIL’s business
activities are largely in relation to the manufacture of goods under
KAMDHENU Mark for KL, pointing to a market association of the
KAMDHENU Mark including the Mark ‘KAMDHENU GOLD’ with KL,
instead of AIL. Given the identity of the goods, structural, phonetic and
conceptual similarity and the prominence of the element ‘KAMDHENU
GOLD’ in the Impugned Mark, any concurrent use of the Impugned Mark
by AIL is likely to cause confusion leading to association of AIL’s use of the
Impugned Mark with KAMDHENU Mark and result in diversion of trade.
49. If AIL would have obtained registration of the Impugned Mark in
terms of 2002 Agreement, AIL could have asserted right over the Impugned
Mark. Although AIL initially filed the application for registration of
Impugned Mark in December 2002, subsequently the same was abandoned
in January 2008. This clearly reflects lack of proactiveness on part of AIL to
protect its rights. Although AIL attributes this lapse to its counsel, it remains
evident that no substantive efforts were made by AIL to assert rights in the
Impugned Mark until nearly sixteen years later, when a new application
under TM Application No. 6742246 in Class 6 was submitted on 05.12.2024
after purported termination of 2002 Agreement.
50. Ordinarily, an entity seeking proprietary rights in a mark is expected
to exercise due diligence in safeguarding such interests. The delayed filing,
particularly following disputes between the Parties, including the receipt of
the termination letter dated 19.09.2024 and caution notices issued on
06.11.2024 supports KL’s argument that AIL’s claim of exclusive rights
over the Impugned Mark is potentially untenable.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 65 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
51. The Annual Reports submitted by AIL do not indicate that the
marketability of AIL’s products is dependent on the use of the Impugned
Mark. Furthermore, AIL has not provided evidence to demonstrate that its
sales are significantly influenced by the use of the Impugned Mark. The
records also show that KL has substantial sales figures and advertising
expenditures, which support the conclusion that the marks ‘KAMDHENU’ /
‘KAMDHENU GOLD’ serve as the primary and established identifiers for
KL’s goods and business. This increases the likelihood that consumers may
associate AIL’s products or business with those of KL.
52. Undisputedly, AIL’s adoption of the Impugned Mark stems solely
from 2002 Agreement and does not originate independently. Given these
circumstances, pending a conclusive determination regarding the Parties’
rights under the Agreements and the ongoing Applications for registration of
the Impugned Mark by both AIL and KL, AIL does not have any right to use
the Impugned Mark independently.
53. Any use of the Impugned Mark by AIL is likely to adversely affect
KL, potentially causing irreparable harm to KL’s asserted rights.
Accordingly, the balance of convenience favors KL, as KL is the registered
proprietor of ‘KAMDHENU’, ‘KAMDHENU GOLD’, and ‘KAMDHENU
GOLD TMT’.
54. KL has also provided evidence of use, goodwill, and reputation
associated with the KAMDHENU Mark, ‘KAMDHENU GOLD’ and
‘KAMDHENU GOLD TMT’. This establishes KL’s entitlement to
protection against any actions that might diminish the goodwill attached to
the KAMDHENU Mark in the marketplace.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 66 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
55. The Supreme Court in Pernod Ricard India (P) Ltd. v. Karanveer
Singh Chhabra, 2025 SCC OnLine SC 1701 has observed that:
“36.2. The grant of injunction – whether for infringement or passing
off – is ultimately governed by equitable principles and is subject to
the general framework applicable to proprietary rights. Where
actual infringement is established, that alone may justify injunctive
relief; a plaintiff is not expected to wait for further acts of defiance.
As judicially observed, “the life of a trademark depends upon the
promptitude with which it is vindicated.”
36.3. The principles laid down in American Cyanamid Co. v. Ethicon
Ltd.30 continue to guide the Courts while determining interim
injunction applications in trademark cases. The following criteria
are generally applied:
(i) Serious question to be tried/triable issue: The plaintiff must show
a genuine and substantial question fit for trial. It is not necessary to
establish a likelihood of success at this stage, but the claim must be
more than frivolous, vexatious or speculative.
(ii) Likelihood of confusion/deception: Although a detailed analysis
of merits is not warranted at the interlocutory stage, courts may
assess the prima facie strength of the case and the probability of
consumer confusion or deception. Where the likelihood of confusion
is weak or speculative, interim relief may be declined at the
threshold.
(iii) Balance of convenience: The court must weigh the
inconvenience or harm that may result to either party from the grant
or refusal of injunction. If the refusal would likely result in
irreparable harm to the plaintiff’s goodwill or mislead consumers,
the balance of convenience may favor granting the injunction.
(iv) Irreparable harm: Where the use of the impugned mark by the
defendant may lead to dilution of the plaintiff’s brand identity, loss
of consumer goodwill, or deception of the public – harms which are
inherently difficult to quantify – the remedy of damages may be
inadequate. In such cases, irreparable harm is presumed.
(v) Public interest: In matters involving public health, safety, or
widely consumed goods, courts may consider whether the public
interest warrants injunctive relief to prevent confusion or deception
in the marketplace.
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 67 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
36.4. In conclusion, the grant of an interim injunction in trademark
matters requires the court to consider multiple interrelated factors:
prima facie case, likelihood of confusion, relative merits of the
parties’ claims, balance of convenience, risk of irreparable harm,
and the public interest. These considerations operate cumulatively,
and the absence of any one of these may be sufficient to decline
interim relief.”
[Emphasis Supplied]
56. Given that the products at issue are reinforcement steel bars utilized in
transportation and infrastructure projects, where safety and structural
integrity are critical, any defect or deficiency associated with goods bearing
the Impugned Mark may reasonably be associated with KL, thereby
impacting KL’s reputation and goodwill. The nature of these products makes
monetary compensation insufficient for such injury. Therefore, permitting
AIL to continue use of the Impugned Mark is likely to cause irreparable
harm to KL. Accordingly, KL has established prima facie case for
infringement and passing off, warranting the grant of an interim injunction
in favour of KL and against the Defendants in the KL Suit.
CONCLUSION:
57. In view of the above, Defendants in KL Suit, jointly and severally,
their directors, principal officers, proprietors, partners, dealers, distributors
assigns and all others acting on their behalf are restrained from
manufacturing, marketing, distributing, trading, wholesaling, soliciting,
advertising, promoting, selling, using or dealing by any modes or means
including in the physical markets or through the internet including
ecommerce platforms, their own website or through social media platforms
and directed to disable / remove / take down / block the listings of the
products using the Impugned Mark ‘AL KAMDHENU GOLD’ in any
manner or mode by itself or any other trade name / mark bearing the Word /Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 68 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
Mark ‘KAMDHENU’ as its essential feature, or identical with or
deceptively similar thereto including the Marks ‘KAMDHENU GOLD’ and
‘KAMDHENU GOLD TMT’ as a trade mark or as a part of a domain name
upon or in relation to AIL’s goods / business including steel products, TMT
bars, steel bars, MS pipes, bright steel bars, steel pipes, metal pipes, and
other allied / cognate products thereto or supplying services in connection
therewith amounting to infringement and passing off of the Marks / Labels
‘KAMDHENU’ / ‘KAMDHENU GOLD’ / ‘KAMDHENU GOLD TMT’.
58. As a consequence, the interim relief sought by AIL in AIL Suit cannot
be granted.
59. Accordingly, I.A. No. 14115/2025, filed in CS (COMM) 569/2025
filed by Kamdhenu Limited is allowed in above terms and, consequently,
I.A. No. 3990/2025 filed in CS (COMM) 130/2025 filed by Ashiana Ispat
Limited seeking interim injunction is dismissed. Both Applications stand
disposed of.
TEJAS KARIA, J
APRIL 10, 2026
HK
Signature Not Verified CS(COMM) 130/2025 and CS(COMM) 569/2025 Page 69 of 69
Signed By:SWATI
MAYEE SAHU
Signing Date:11.04.2026
21:29:05
