While maintaining interim protection in favour of Kamdhenu against Ashiana’s use of “AL KAMDHENU GOLD”, the Delhi High Court has held that Ashiana, having failed to obtain statutory or common law rights and being faced with revocation of consent after termination, could not be permitted to use the impugned mark at the interlocutory stage. The Court also noted that Ashiana remained free to continue its steel business under its own house mark “ASHIANA.”
However, the Court issued protective directions against Kamdhenu as well. It directed that any use by Kamdhenu of “KAMDHENU GOLD” and “KAMDHENU GOLD TMT” would remain subject to the final outcome of the suit, and Kamdhenu would not claim equities on the basis of such use during the pendency of the proceedings. The Court also restrained Kamdhenu from using “AL KAMDHENU GOLD” during the pendency of the suits, observing that its application for that mark was prima facie not bona fide.
The High Court asserted that a party claiming proprietary rights in a mark on the strength of a contractual arrangement must satisfy the conditions on which those rights were to arise. Here, under the 2002 agreement, Ashiana’s exclusive ownership in “AL KAMDHENU GOLD” was to arise only upon final registration, and Ashiana failed to secure that registration and also failed to prove continuous use generating goodwill. In these circumstances, the Court held that Ashiana had not acquired either statutory proprietary rights or common law rights in the impugned mark.
The Court further held that because Kamdhenu remained the registered proprietor of “KAMDHENU,” “KAMDHENU GOLD,” and “KAMDHENU GOLD TMT,” Ashiana’s use of “AL KAMDHENU GOLD” prima facie amounted to infringement. The Court made it clear that the injunction in favour of Kamdhenu could be sustained on the basis of infringement alone, irrespective of the controversy over prior use and passing off.
The Division Bench comprising Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora observed that the 2002 agreement did recognize that Ashiana could adopt and use “AL KAMDHENU GOLD” and apply for registration as proprietor, and that upon registration it would become the exclusive and absolute owner. But the Bench also emphasized that this ownership was expressly made contingent upon final registration, and until then Kamdhenu too was entitled to use the mark under Clause 23. The Bench therefore found that Ashiana’s claim to proprietary rights could not be divorced from Clause 24, because the agreement itself made registration the condition for ownership.
A central reason for refusing relief to Ashiana was its own conduct. The Bench said Ashiana failed to pursue its 2002 trademark application, allowed it to be abandoned in 2008, and then did not take meaningful steps for registration or establish actual use of the mark on goods for nearly sixteen years. The Bench said this prima facie showed a lack of intention to acquire proprietary rights. It also found that Ashiana had failed to acquire any common law rights because there was no material showing goodwill in “AL KAMDHENU GOLD” through use of the mark on goods from 2002 to 2024. The limited appearance of the mark in corporate or statutory notices did not, in the Court’s view, amount to use sufficient to generate goodwill.
The Bench also said that even if Ashiana’s argument against novation had some merit because the 2021 agreement did not expressly deal with “AL KAMDHENU GOLD,” that would still not help Ashiana at the interim stage. According to the Bench, since Ashiana had neither secured registration nor built common law rights through use, Kamdhenu’s termination notice dated 19.09.2024 prima facie had the effect of revoking the earlier consent given under the 2002 agreement to adopt and use “AL KAMDHENU GOLD.” So, even assuming no novation, the consent itself could no longer be relied upon by Ashiana after termination.
At the same time, the Bench was critical of Kamdhenu’s conduct as well. It recorded that Kamdhenu had undertaken in Clause 22 of the 2002 agreement to withdraw its application for “KAMDHENU GOLD,” but still pursued that application and obtained registration, and similarly pursued “KAMDHENU GOLD TMT.” The Bench said this conduct was prima facie contrary to the 2002 agreement, and even observed that the bad faith in pursuing those applications was “writ large.” It further noted that Kamdhenu had not shown independent use of “KAMDHENU GOLD” and “KAMDHENU GOLD TMT” prior to 2025, and that its later application for “AL KAMDHENU GOLD” was also prima facie not in good faith.
Briefly, Ashiana claimed rights over the mark “AL KAMDHENU GOLD” on the basis of a Dec 26, 2002 agreement, under which it said Kamdhenu had permitted it to adopt, use and seek registration of that mark, and had agreed to withdraw its own application for “KAMDHENU GOLD.” Ashiana argued that once the mark was registered, it was to become the exclusive and absolute owner of “AL KAMDHENU GOLD.” It also said the later 2021 agreement only dealt with “KAMDHENU” and “KAMDHENU NXT” and did not extinguish its rights in “AL KAMDHENU GOLD.” After Kamdhenu terminated the 2021 arrangement on Sep 19, 2024, Ashiana applied afresh on Dec 05, 2024 to register “AL KAMDHENU GOLD,” while Kamdhenu itself applied on Dec 17, 2024 for the same mark. The Single Judge had refused Ashiana’s injunction and granted Kamdhenu an injunction against Ashiana’s use of the mark.
Ashiana had indeed filed an earlier trademark application for “AL KAMDHENU GOLD” on Dec 27, 2002, but that application was treated as abandoned on Jan 07, 2008. Apart from limited references in statutory advertisements and financial result notices, Ashiana could not show prima facie use of “AL KAMDHENU GOLD” on goods between 2002 and 2024. The first evidenced use of the impugned mark on goods was an invoice dated June 03, 2025, and even the Chartered Accountant material did not establish turnover under that mark for the earlier years. Kamdhenu, on the other hand, relied on its registrations for “KAMDHENU,” “KAMDHENU GOLD,” and “KAMDHENU GOLD TMT.”
