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 suit.

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 registered".

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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