In Kamdhenu Ispat Limited v.
Kamdhenu Pickles & Spices Ind. Pvt. Ltd. & Anr,
aggrieved by Kamdhenu Pickles & Spice's (Defendant)
unauthorized use of the word "KAMADHENU", the Plaintiff
(Kamdhenu Ispat) filed a suit seeking a decree for permanent
injunction, alleging infringement and passing off.
The Defendants' argument rested
on the premise that it had been using the "KAMADHENU"
mark with respect to dissimilar goods i.e. pickles and other such
processed packaged foods , since 1969. It was further argued that
in respect of the goods it sold, i.e. pickles, jellies, etc, it was
the prior user and was as such entitled to legitimately use the
mark, also it was submitted that the Plaintiff could neither
maintain a suit in respect of a trademark which it did not use, nor
was it's mark so distinctive so as to sustain a dilution
It was noted by the Court, that,
although the Plaintiff's claim of their mark having acquired
secondary significance was correct, the important question however
was, whether such distinctiveness was sufficient to entitle the
Plaintiff to the injunction they sought.
The Court then went on to highlight
Section 29 (5) of the Trademark Act,1999 which has enacted the
standard for a new species of infringement, i.e. trade-name
infringement. The said Section provides :
"A registered trademark is
infringed by a person if he uses such registered trademark, as his
trade name or part of his business concern dealing in goods or
services in respect of which the trade-mark is
The Court opined that unlike in the
case of trademark infringement in relation to similar goods, where
the marks are similar or identical, where the Parliament has
mandated a presumption (of infringement), no such presumption
exists in the case of trade name similarity. In the present case,
the Court noted that the Plaintiff's had not placed on record
anything to show that they were also engaged in the same business
as the Defendant i.e. manufacturing or trading of spices, pickles
or condiments. On the other hand, the documents of the Defendant
revealed that they had been using the mark "KAMADHENU" as
their corporate or trading name, since 1969. It was therefore clear
to the Court that the mark used by the Defendant was with respect
to goods and services which the Plaintiffs were not selling,
offering for sale or marketing.
After referring to a host of
judicial precedents, the High Court of Delhi, finally opined that
the use of "KAMADHENU" as corporate name by the
Defendant, notwithstanding the Plaintiff's registration of the
word mark, could not ipso facto confer exclusivity. Granting relief
to the Plaintiff would only be justified, if they used the impugned
mark in relation to specific goods such as pickles and condiments,
etc like the Defendant. Trademark law, does not imply formalistic
or ritualistic application of abstract principles, its rationale is
to protect businesses built up to match certain standards. A trader
or manufacturer is undoubtedly entitled to protection, if he uses
words that acquire some distinctiveness, at least in respect of
similar marks , in respect of the goods he deals in. However, he
will not become an exclusive owner, by merely acquiring
registration of a mark. In this case it was evident that the
Plaintiff did not deal in goods or even allied goods sold by the
Defendant, who, on the other hand had shown that they were using
the mark for almost two decades.
Based on all the materials on record
and the reasons stated above, the Court was satisfied that there
was no linkage between the Defendant's mark and the
Plaintiff's products , so as to cause detriment to the latter
and undue advantage to the former. Thus, the Plaintiff's
application was duly rejected.
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