AMBA SHAKTI STEELS LIMITED v. FERRO PRIVATE LIMITED 

Case Name	Amba Shakti Steels Limited v. Sequence Ferro Private Limited
Citation	2024 DHC 6703- DB; 2024 100 PTC 13 (Del) 2024 SCC OnLine Del 6179
Court	High Court Delhi
Bench	J. Vibhu B and J. Tara Vitasta Ganju.
Decided On.	3rd September 2024
Plaintiff	Amba Shakti Steels
Defendants	Sequence Ferro Private Limited

INTRODUCTION 

The case concerns about the TM dispute involving allegations of infringement and passing off brough by Amba Shakti Steels Limited, a longstanding manufacturer in the steel industry against Sequence Ferro Private Limited, the plaintiff’s claims that the respondent’s use of the mark “AMMAJI” for TMT bars is deceptively similar to its registered “AMBA” and “AMBA SHAKTI” trademarks, likely to cause confusion among consumers and dilute its goodwill, the case centers on whether the respondents adoption of the “AMMAJI” mark constitutes trademark infringement and unfair competition in violation of Intellectual Property and addresses the grant of interim injunctive relief to prevent the continued use of the allegedly infringing mark pending final adjudication. 

IMPORTANT PROVISIONS 

• Trade Marks Act, 1999 Section 28: talks about the rights conferred by registration and exclusive rights to use the registered trademark and seek action for infringement.  
• Trade Marks Act, 1999 Section 29: talks about the infringement of registered trademarks and prohibits the use of deceptively similar marks for identical or similar goods, covering likelihood of confusion, dilution of goodwill, and unfair advantage. 
• Trade Marks Act, 1999 Section 135: states reliefs in suit for infringement or for passing off, including injunction and damages, account of profits. 
• Copyright Act, 1957: For copyright registration for its artistic label to be used as a part of the trademark. 
• Code of Civil Procedure, 1908, Order 1 & 2: provides a statutory basis for an interim injunction in civil litigations, allowing the court to restrain a party from specific actions pending the suit’s final adjudication. 

BRIEF FACTS – 

Founded in 1989 under the name K.P. Steel Products Pvt. Ltd., Amba Shakti Steels Ltd. is a well-known producer and distributor of metals, specializing in ferrous and non-ferrous alloys, such as TMT bars and other steel products. By growing its product line and extending its operations across the country, the company has established its market presence over time.

Amba Shakti Steels Ltd. has been using the trademarks “AMBA” and “AMBA SHAKTI” continuously since 1993. The company has registered both as word marks and artistic logos under the Trade Marks Act of 1999, and the business has the exclusive right to use these marks in connection with its operation, thanks to its numerous trademark registrations in Class 6 for iron and steel products, and additionally, copyright registration protects the trade labels.

Amba Shakti has established a strong reputation and recognition in the market over the course of several decades of business operations. For FY 2018-19 and FY 2022-2023, it reported a turnover of Rs. 386.51 crores and Rs. 358.58 crores, respectively. While the group maintains manufacturing facilities and distribution across multiple states, the brand’s strength is further strengthened by extensive advertising, promotional campaigns, and an interactive website.

Respondent Sequence Ferro Pvt. Ltd. first sold TMT bars under the “AMMAJI” brand in December 2022, the company then applied for trademark registration in Class 6, which covers steel products and over the course of six months in 2023, the respondent’s sales came to about Rs. 42 crores, further Amba Shakti claimed that the respondent’s use of the mark was intended to pass off its products as those of Amba Shakti in order to illegally profit from the appellant’s well-established reputation and goodwill, it further claimed that “AMMAJI” is confusingly similar to its own registered trademarks, both phonologically and aesthetically.

After learning that “AMMAJI” was being used, Amba Shakti, via its sister company, sent Sequence Ferro a cease-and-desist letter in May 2023 asking them to withdraw their application and stop using the mark, and Amba Shakti filed a trademark lawsuit in September 2023 after the respondent persisted in using “AMMAJI.” The lawsuit sought a permanent injunction to prevent the use of “AMMAJI” or any mark that was confusingly similar, as well as other ancillary reliefs. The Delhi High Court heard an appeal after the Commercial Court initially denied the application for an interim injunction.

ISSUES INVOLVED – 

1. Whether the use of the mark “AMMAJI” by Sequence Ferro Private Ltd. amounts to infringement of Amba Shakti Steels Ltd’s registered trademark “AMBA” and “AMBA SHAKTI” under the Trade Marks Act, 1999, given the phonetic, visual, and conceptual similarities. 
2. Whether the adoption and use of “AMMAJI” by the respondent constitutes passing off by misleading and confusing consumers into believing there is an association with the appellants’ established brand, goodwill, and reputation in the steel industry.
3. Whether the failure of Amba Shakti Ltd. to take legal action against other parties using similar or related marks precludes or weakens its rights to seek injunctive relief against Sequence Ferro Private Ltd in this matter. 

ARGUMENTS ADVANCED BY APPELLANTS – 

• According to the counsels representing the appellants, it has a significant amount of market goodwill in the steel industry and has been using the trademarks “AMBA” and “AMBA SHAKTI” since 1993. With the help of large expenditures in advertising and promotion, its trademarks have gained uniqueness, a devoted following, and broad recognition over the years. The appellant argued that since the “AMBA” brand is only connected to its goods, any unauthorized use by third parties would violate its well-earned reputation.
• The appellant contended that “AMBA” and the respondent’s mark “AMMAJI” are conceptually, phonologically, and aesthetically similar and the suffix “JI” is a frequently used honorific that does not differentiate the mark, and both marks have the same literal meaning (“mother” in Hindi) since both marks have similar structures, blue and red color schemes, numeral placement, and overall impressions and given that both parties deal with TMT bars, a high-value, identical product, there is a much greater chance of consumer confusion, particularly for the typical consumer with poor memory. 
• The appellant claimed that the Commercial Court understated the true risk of confusion by analyzing the marks separately rather than taking into account their overall commercial impression.
• According to the appellant, the respondent’s use of the “AMMAJI” mark was not legitimate and, rather, it was a deliberate attempt to capitalize on Amba Shakti’s reputation and goodwill, which amounted to unfair competition and passing off. Given the intentional labeling similarities, the respondent’s justification for choosing “AMMAJI” as a tribute to a family member was deemed unpersuasive. 
• This further implied intent to deceive and profit from the appellant’s branding efforts, as did the timing of the respondent’s market entry and trademark adoption.
• In contrast to the respondent, the appellant emphasized its established market position and significantly higher turnover and it claimed that any further use of the “AMMAJI” mark would result in irreversible harm and a dilution of the company’s reputation and brand value, for which damages would not be sufficient and on the other hand, since the contested mark was recently adopted, restricting the respondent would not interfere with its legitimate interests, therefore, safeguarding the appellant’s rights was the only practical option.
• The appellant asked the court to take into account the interests of the public and consumers, who might be duped by the two marks’ similarity, the appellant contended that an interim injunction was required not only to protect its business but also to protect the public from deception and ensure fair competition in the market for TMT bars because consumer confusion is at the core of trademark law.

ARGUMENTS ADVANCED BY RESPONDENTS – 

• The counsels for the respondents argued that any Sequence Ferro Private Ltd., the respondent, argued that “AMBA” and “AMMAJI” were conceptually and aesthetically different trademarks. They contended that “AMMAJI” is a culturally accepted and deferential term for mothers or grandmothers, whereas “AMBA” alludes to a Hindu goddess and has religious overtones. 
• They argued that any chance of confusion is eliminated by this distinction in etymology and context, and in order to support the argument for dissimilarity and prevent the possibility of market confusion, the respondent further highlighted how the trade artwork, font styles, and graphical elements used on their goods differed from those of the appellant.
• The respondent emphasized that “AMBA” and other comparable names are used as trademarks or business names by a number of third parties in the industry; they contended that the appellant was therefore unable to assert a monopolistic or absolute claim to the term “AMBA.” It was claimed that the existence of numerous other companies in the steel industry and associated sectors using identical marks diluted any exclusive claim and, by itself, amounted to consent on the part of the appellant, who had not taken consistent action against all users.
• The respondent claimed that the appellant had not come to the court in good standing, citing Amba Shakti’s suppression or failure to reveal that the respondent had already received a cease-and-desist notice from its sister company. 
• They claimed that the appellant’s assertion that they only recently became aware of the respondent’s trademark use was false because they were aware of the mark for months before the lawsuit was filed. The respondent argues that the appellant should not be able to obtain equitable interim relief because of the purported suppression of material facts.
• It was further argued that since TMT bars are high-value items that are usually bought by savvy and watchful consumers (like contractors, developers, and big institutional customers) who carefully research products and brands, the possibility of confusion was low or nonexistent and any allegation of possible confusion or passing off was further undermined by the likelihood that such customers would be duped by flimsy mark similarities.
• By pointing out that the appellant’s sister companies, which also use and assert rights in the “AMBA” trademarks, had not been added as parties to the case, the respondent contested the suit’s maintainability and since several group companies were claiming rights at the same time, this created problems with nonjoinder and conflicting claims, implying that the appellant company did not have the sole right to relief unless all parties involved in the dispute were appropriately included.

JUDGEMENT – 

Commercial Court’s judgment

• The Court by pointing out that the appellant’s sister companies, which also use and assert rights in the “AMBA” trademarks, had not been added as parties to the case, the respondent contested the suit’s maintainability and since several group companies were claiming rights at the same time, this created problems with nonjoinder and conflicting claims, implying that the appellant company did not have the sole right to relief unless all parties involved in the dispute were appropriately included.
• In order to demonstrate compliance, the Court emphasized that the appellant had not filed any lawsuits against other parties that were using the “AMBA” formative marks or names that were similar in the marketplace and the appellant’s claim to exclusivity and the strength of its case for an injunction were undermined by the existence of multiple companies using similar designations and one of the main reasons the Court refused to grant temporary relief was the mark’s inconsistent enforcement.

High Court’s Judgment

• The Commercial Court’s strategy of breaking down the marks into their constituent parts for comparison was criticized by the High Court, and it underlined that, rather than focusing only on a close analysis of design elements, trademark infringement and confusion must be evaluated in light of the overall commercial impression the marks make on the average consumer with imperfect memory.
• The Court determined that “AMBA” and “AMMAJI” had similar phonemes and meant “mother” in Hindi. It was believed that the honorific “JI” suffix did not sufficiently distinguish itself since visual similarity was increased by the use of a similar color scheme (blue for product designations and red for the main word), similar word placement, and similarly positioned numerals in both marks. Crucially, both marks are applied to identical products, such as TMT bars, where even a slight resemblance is important for trademark purposes.
• The Hon’ble court reiterated that a legally technical or overly detailed comparison is not appropriate, and instead, the perception of the average consumer encountering the mark in everyday market conditions is decisive. 
• The High Court dismissed the argument that the appellant’s claim was barred by the existence of other users of the “AMBA” mark and it stated that a trademark owner may choose to pursue enforcement of their rights against specific infringers and is not required to do so against all of them and additionally, it noted that selective enforcement does not equate to waiver or abandonment and made a distinction between different degrees of similarity among other third-party marks.
• In contrast to the respondent, who only recently entered the market and had relatively few sales, the appellant’s mark had a higher turnover and extensive prior use, the Court found. Convenience weighed in favor of the appellant, especially considering the public interest in avoiding consumer confusion.
• Given the striking similarities and the timing of adoption, the Court did not believe the respondent’s explanation that the mark “AMMAJI” was adopted as a tribute to a family member, this led to an inference of intentional violation and an attempt to take advantage of the appellant’s goodwill.
• The Delhi High Court set aside the commercial court’s impugned order, and the court granted a prima facie injunction restraining the respondent from using “AMMAJI” or any deceptively similar marks until the final disposal of the suit. 
• And the commercial court was directed to proceed with the final hearing without being influenced by the observations made during this interim order determination. 

CONCLUSION – 

The Delhi High Court overturned the Commercial Court’s ruling and issued a temporary injunction prohibiting the respondent from using the “AMMAJI” mark or any other confusingly similar marks on TMT bars until the case is settled. Unaffected by the interim findings, the case was sent back to the Commercial Court for a full trial.

This analysis highlights that trademark rights are not constrained by subtle artistic differences or a proprietor’s selective enforcement decisions, highlighting the courts’ reliance on fundamental trademark doctrines like overall impression, consumer protection, and balancing of equities.

*This article has been written by Mayur Shrestha (Presidency University Bengaluru School of Law).