Accountability Of Trademark Registry In It’s Examination Process: Ashiana Ispat Limited Vs Kamdhenu Limited And Ors

Introduction

Trademark Registry plays a crucial and forefront role in India’s expanding Intellectual Property environment. The Trademark registry shall ensure that no deceptively similar marks are granted registration and similar marks doesn’t coexist. The recent decision of the Hon’ble Delhi High Court in Ashiana Ispat Ltd v. Kamdhenu Ltd. 2025 DHC 7801-DB has gave clarity on the long-term concern of the transparency, accuracy and accountability of the Trademark Registry in its examination process. Decided on 3^rd September 2025 by the Delhi High Court Division bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla.

The case has raised important questions on the efficiency and fairness with which the Trademark Registry discharges its duties and function as laid down under Trade Marks Act, 1999 and the Trade Marks Rules, 2017. This judgement emphasizes on the longstanding requirement if reforming the Registry’s internal systems.

Background of the case

Kamdhenu Ltd. is a renowned steel company and is proprietor of several registered trademark under the name “KAMDHENU”. Ashiana Ispat Limited had made five applications to the registry to register the mark “AL KAMDHENU GOLD” in different classes. The Trademark Registry published three applications in the trademark journal and released examination reports for two others, but did not cite or refer to earlier similar registered marks of Kamdhenu Ltd.

Aggrieved by this alleged misconduct by the Registry, Kamdhenu filed a writ petition in the Hon’ble Delhi High Court contending that the Registry’s has lapsed in identifying the already registered marks of Kamdhenu and this has compromised the integrity of the trademark system. The Single Judge bench sent all applications back for re-consideration after the registry acknowledged that error has occurred in its part, retracted one acceptance order and initiated disciplinary actions against the examiners.

Aggrieved by the single bench decision, Ashiana Ispat Ltd. appealed before the Division Bech of the Delhi High Court arguing that its right to file a counter-affidavit were compromised and was not granted.

The appeal was not mainly related to the similar mark, but was related to the efficiency of the Trademark Registry and its operational standards.

Issues before the Court

1. Whether writ petition under Article 226 of the Indian constitution is maintainable while there exists alternate remedy of filing opposition under Section 21 of the Trade Marks Act, 1999.
2. Even if the writ was maintainable, should the learned Single bench have opted to entertain the petition?
3. Whether the learned Single Judge was at wrong by sending the trademark application back to the registrar for re-examination without giving the appellant to present on record its counter affidavit?
4. How much can courts intervene in the Registry’s internal procedure before the opposition stage during the stage of advertisement or First Examination Report (FER)?

Court’s Observation

• Regarding the maintainability of the writ petitions, the court referred to Godrej Sara lee Ltd. v. Excise & Taxation Officer and State for Himachal Pradesh v. Gujarat Ambuja Cement to put emphasize on the established distinction between maintainability and entertainability. The court held that a writ petition is maintainable if it aligns with the definition of Article 26 of the Indian Constitution. It held that courts have the discretion to entertain the petition even if alternate remedies exist.
• Regarding whether the Single Judge was right to exercise writ jurisdiction despite there exist an alternate remedy of opposition proceedings. The court did not resolve this question open as Ashiana Ispat was not given chance present on record its counter-affidavit. The division bench criticized this action of the single bench.
• Regarding the obligation and duty of the Trademark Registry, the court held that it is the duty and obligation of the trademark registry to cite similar marks in the First Examination Report (FER), that the evidence from the Trademark Registry revealed shortcomings, leading to disciplinary measures against examiners.

Courts Observation on the Registries Role

The court observed that the duty of the Trademark Registry is not just a clerical one but is a quasi-judicial responsibility to search and cite similar marks in the FER. This helps maintain the integrity of the IPR landscape in India. The court held that:

• The Trademark Registry is obligated to cite all earlier registered, similarly confusing marks in the First Examination Report and provide the applicant with the opportunity to reply.
• The owners of the registered trademark has the right to have their marks cited in the first Examination Reports and safeguard their intellectual property.
• The owners of the registered trademark has the right to approach the court through writ petition if the registry fails to cite its mark in the Examination report.

Search Obligation in other Jurisdictions

In some mature IP jurisdictions, trademark offices  are legally required to conduct extsnsive conflict searches prior to publication:

• EUIPO (European Union Intellectual Property Office):

EUIPO carries out comprehensives searches and informs both applicant and registered right holder prior to publication to allow conflict resolution.

• USPTO (United States Patent and Trademark Office)

The USPTO uses advanced search algorithms to find conflicting marks before the application is proceeded further.

• UKIPO (United Kingdom Intellectual property Office)

Owner of previous marks is duly informed if similarity is found in searches, this ensure that previous mark owners are given opportunity to oppose the registration.

Conclusion

The Ashiana Ispat Ltd. v. Kamdhenu Ltd. decision demonstrates the need for transparency and accountability of the Trademark Registry’s examination procedure. The Delhi High Court once again established that the Registry’s function is not entirely administrative, but quasi-judicial, with the responsibility to ensure correctness and safeguard existing rights. This ruling reveals systemic failures that could erode public trust in the IP system and highlights the necessity for greater internal checks, IT enhancements, and examiner training. Comparing practices of EUIPO, USPTO, and UKIPO makes it clear that India needs to implement world best practices in conflict search and applicant communication. Finally, this case reminds us that the integrity of India’s IP framework hangs in the balance in the hands of its institutions’ fairness. It appeals for a more transparent and accountable Trademark Registry both urgent and necessary.

Author:–Abdul Kalam Kabeer,  in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.