Delhi High Court: An appeal was filed by the Amba Shakti Steels Limited (appellants) a company incorporated under the Companies Act, 1956 challenging an order dated 18-01-2024 rendered by the Commercial Court, whereby the appellant’s application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code (CPC) was dismissed. A division bench of Tara Vitasta Ganju and Vibhu Bakhru, JJ., allowed the appeal, sets aside the impugned order and restrained from using the trademark or any other marks which are deceptively similar to the appellant’s registered trademarks till the disposal of the suit.
The present case revolves around a trademark dispute between the appellant and the respondent over the use of the trademarks “AMBA” and “AMMAJI” for TMT bars (thermo-mechanically treated steel bars). Amba Shakti Udyog Limited, using the trademarks “AMBA” and “AMBA SHAKTI” since 1993, claims to have garnered substantial goodwill in the market. Meanwhile, Sequence Ferro Pvt. Ltd. applied for the trademark “AMMAJI” in December 2022, asserting that it had been using the mark since May 2023.
After discovering the respondent’s use of “AMMAJI,” Amba Shakti Udyog Ltd’s sister company issued a cease-and-desist notice on May 29, 2023, requesting that Sequence Ferro Pvt. Ltd. stop using “AMMAJI” and withdraw its registration application. Despite the notice, the respondent continued to use the mark, prompting the appellant to file an interim injunction in September 2023 to prevent the respondent from using “AMMAJI.”
Counsel for the appellant argued that the respondent’s trademark is confusingly similar to its own, leading to customer confusion and diluting its brand identity. The appellant argued that the trademarks “AMBA” and “AMMAJI” are phonetically similar and have identical meanings, as both “AMBA” and “AMMA” are synonyms, with “JI” simply being a respectful suffix that does not distinguish the marks. Since both companies produce identical goods (TMT bars), the appellant contended that a high degree of dissimilarity between trademarks is required to avoid confusion. The appellant also argued that the Commercial Court incorrectly focused on individual elements of the trademarks rather than the overall commercial impression.
Counsel for the respondent claimed that the appellant had not taken legal action against other companies using variations of the “AMBA” name, such as “AMBA GOLD,” “AMBATUR ROOFINGS,” and “AMBIKA.” The respondent suggested that the appellant selectively targeted it while allowing others to operate. Furthermore, the respondent emphasized that “AMMAJI” was chosen to honor the grandmother of one of the company’s directors, adding personal significance to the mark. The respondent also alleged that the appellant intentionally omitted disclosing the legal notice sent by its sister concern, implying a lack of transparency.
The Court emphasized that the commercial impression of a trademark must be assessed as a whole, rather than dissecting individual components. The Court found that the lower Court erred by focusing on individual elements instead of considering the overall similarity between “AMBA” and “AMMAJI.” It concluded that the trademarks were indeed similar, and the addition of “JI” did not sufficiently differentiate the two. Given that both companies sold the same product, the similarity increased the likelihood of customer confusion.
The Court also addressed the respondent’s argument about the appellant’s selective enforcement of its trademark rights. It noted that a trademark owner is not obligated to take action against every infringer and can choose to act selectively based on the severity of the infringement. The Court further observed that some of the companies mentioned by the respondent, such as “AMBAR GC SHEETS” and “AMBATUR ROOFINGS,” were not necessarily confusingly similar to the appellant’s trademark, and their products might not overlap with the appellant’s goods.
Thus, the Court ruled that the balance of convenience lay with the appellant, given its long-standing use of the “AMBA” mark, larger turnover, and established goodwill. The Court found that the Commercial Court had erred in its approach and that the similarity between “AMBA” and “AMMAJI” was significant enough to warrant an injunction. The Court granted interim relief, restraining the respondent from using the “AMMAJI” trademark for its TMT bars until the final resolution of the case.
[Amba Shakti Steels Limited v. Sequence Ferro Private Limited, 2024 SCC OnLine Del 6179, decided on 03-09-2024]
Advocates who appeared in this case :
For the Appellant: Mr. S.K. Bansal and Mr. Pankaj Kumar, Advocates.
For the Respondent: Mr Suhail Dutt, Senior Advocate with Mr. Prakhar Sharma, Ms. Sageeta Gulati and Mr. Swapnil Choudhary, Advocates.
