The Delhi High Court in Ashiana Ispat Ltd. v. Kamdhenu Ltd. (2025) placed the functioning of the Indian Trade Marks Registry under sharp scrutiny. The Division Bench questioned how the Registry conducts its search for earlier similar/identical marks before issuing examination reports or advertising applications and reaffirmed the mandatory duty under Rule 33 of Trademark Rules, and clarified the law on writ maintainability despite statutory opposition remedies.
The High Court Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, on 3 September 2025, delivered a significant ruling in Ashiana Ispat Limited v. Kamdhenu Limited & Ors., LPA 407/2025. At its heart, the case was not merely a dispute between two steel manufacturers over the mark “AL KAMDHENU GOLD”, but a direct judicial spotlight on how the Indian Trade Marks Registry performs its statutory duty of searching and citing rival marks. Perhaps the first time in recent memory, the Controller General of Patents, Designs and Trade Marks and Registry officials were asked to explain and demonstrate how the Registry identifies deceptively similar marks before accepting or advertising an application.
Question arose on the internal mechanics of the Registry’s search process, forcing senior officers to file affidavits and even conduct live demonstrations of the search used to screen new applications. It underscores that advertising a mark is not a mechanical act, the Registrar must apply his mind under Section 20 of the Trade Marks Act and Rule 33 of the Rules to identify conflicting earlier marks.
The decision affirms that when the Registry fails in this duty, affected proprietors need not wait for the lengthy opposition process; they can approach the High Court under Article 226. This makes the case a precedent on Registry accountability and raises the bar for procedural rigor in trademark examination.
Facts of the case:
Ashiana Ispat filed five applications for the mark “AL KAMDHENU GOLD.” The Trade Marks Registry advertised three applications and issued examination report in two others , but failed to cite several of Kamdhenu’s earlier registered marks.
Kamdhenu filed writ petitions before Delhi High Court, arguing that the Registry’s omissions undermined the integrity of the trademark system. The Single Judge remanded all applications for de novo consideration after the Registry admitted lapses, withdrew one acceptance order, and initiated administrative action against examiners.
Aggrieved, Ashiana preferred appeal ( LPAs before the Division Bench), contending it was not allowed to file a counter-affidavit before its rights were prejudiced.
Main Issues before the division bench:
Maintainability of the writ petitions: Whether writ petitions under Article 226 of the Constitution were maintainable in light of the alternative statutory remedy of opposition under Section 21 of the Trade Marks Act, 1999.
Entertainability of the writ petitions: Even if maintainable, should the Single Judge have exercised discretion to entertain them, given that opposition proceedings were available?
Procedural fairness to the appellant (Ashiana): Whether the Single Judge erred in remanding the trademark applications to the Registrar without allowing Ashiana (the applicant of the impugned marks) to file a counter-affidavit and place its version on record.
Scope of the Registry’s duty under Rule 33 and Section 20: Whether the Trade Marks Registry failed in its statutory duty to search and cite earlier marks when issuing FERs or advertising Ashiana’s applications, and whether such lapses justified judicial intervention.
Extent of judicial review at the advertisement/FER stage: To what degree can courts interfere with or supervise the Registry’s internal process of examination, acceptance, and advertisement of trademark applications at a pre-opposition stage?
Division Bench Observations and Ruling:
On Maintainability of the writ petitions, the Bench stressed the settled distinction between maintainability and entertainability. Relying on Godrej Sara Lee Ltd. v. Excise & Taxation Officer and State of Himachal Pradesh v. Gujarat Ambuja Cement, it held that the existence of an alternative remedy (opposition under Section 21 of the TMA) is not an absolute bar to filing a writ petition. Maintainability relates to jurisdiction; entertainability relates to discretion. The Court ruled in favour of writ petitions in such cases being maintainable in law.
On question whether the Single Judge was justified in exercising writ jurisdiction despite the availability of opposition proceedings, The Court left this question open, because the appellant (Ashiana) was not given a chance to file its counter-affidavit. The Division Bench criticised the Single Judge’s approach, with the reasoning that hearing the appellant’s counsel orally is not a substitute for giving an opportunity to file a counter-affidavit. An affected party has a right to put its case on affidavit before any adverse order is passed. Single Judge’s order of 28 May 2025 was quashed and set aside Ashiana granted time to file a counter-affidavit.
On question of Scope of Registry’s duty under Rule 33 / Section 20, the court held that the Registrar is under a mandatory duty to search for and cite earlier marks that are identical or deceptively similar sicnce advertising a mark is not a mechanical act, it requires application of mind. The Trademark Registry’s affidavit and demonstration showed lapses, and even disciplinary action was taken against examiners. The Bench referred to coordinate bench rulings (Jai Bhagwan Gupta v. Registrar of Trade Marks; Kaira District Coop. Milk Producers Union) emphasising tthat examination report must disclose reasons and cannot omit rival marks.
On another vital question of Extent of judicial review at advertisement/examination stage, the Court held that Judicial review is available where there is procedural dereliction or non-application of mind by the Registry. However, the Division Bench clarified that no final finding was recorded on whether Ashiana’s mark was deceptively similar to Kamdhenu’s, that question is still to be considered.
Key Takeaway:
The decision highlights that the Trade Marks Registry cannot treat acceptance or advertisement of marks as a clerical step. The search process must be transparent, thorough, and defensible in court. For trademark owners, the judgment shows that Registry lapses can be challenged directly under Article 226. For the Registry, it is a reminder that its officers’ actions will not escape judicial scrutiny especially when they involve public-facing functions that determine the fate of brands and market identities.
By compelling the Registry to demonstrate its search methodology and holding it accountable for omissions, the judgment signals a shift towards greater transparency and higher standards in trademark examination. Going forward, both applicants and opponents can expect the courts to insist that the Registry discharge its statutory obligations diligently making this a landmark moment in Indian trademark jurisprudence.
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