The court addressed the balance between trademark rights and corporate group practices regarding licenses and assignments, ruling to stay the modified injunction pending appeal review.

JUDGMENT

Date : 17-10-2025 This matter was called on for hearing today.

CORAM :

HON'BLE MR. JUSTICE MANOJ MISRA HON'BLE MR. JUSTICE UJJAL BHUYAN For Petitioner(s) :Mr. Mukul Rohatgi, Sr. Adv.

Mr. Balbir Singh, Sr. Adv.

Mr. Tushar Ajinkya, Adv.

Ms. Pratiksha Sharma, AOR Ms. Sukanya Sehgal, Adv.

Ms. Misha Matlani, Adv.

Ms. Ritu Choudhary, Adv.

Mr. Mukesh Kumar, Adv.

For Respondent(s) :Dr. A M Singhvi, Sr. Adv.

Mr. Hiren Kamod, Adv.

Mr. Nishad Nadkarni, Adv.

Mr. Nirupam Lodha, Adv. Mr. Ashif Navodia, Adv.

Mr. Kshitij Parashar, Adv.

Mr. Gautam Wadhwa, Adv. Ms. Jaanvi Chopra, Adv.

Mr. Yash Johri, Adv.

M/S. Khaitan & Co., AOR Signa ture No t Ve rifi ed Mr. C. Aryama Sundaram, Sr. Adv.

Digita lly s ign ed b y Mr. Abhishek Gupta, Adv.

KAVITA PAHUJA Date: 2025.10.18

12:40: 02 IST Mr. Ankit Acharya, AOR Reason:

Mr. Ayush Jain, Adv.

UPON hearing the counsel the Court made the following

O R D E R

1. Heard learned counsel for the parties.

2. The first respondent instituted a suit wherein he had prayed for temporary injunction, inter alia, in the following terms:

“(F) During the pendency of the present suit, this Hon’ble Court by way of temporary injunction may kindly be pleased to restrain the Defendant from creating any third-party interest whatsoever including granting license/user of the Trademarks covered under the Agreements detailed and listed in para 16 and 42(N) of the Plaint and/or making any assignment thereof in favour of any third party.’

3. The aforesaid prayer was accepted by order of the trial court dated 9^th January 2025 against which appeal was preferred before the High Court by the petitioner herein, which is pending. By order dated 25^th July 2025, the High Court stayed the order of the Trial Court dated 9^th January 2025 insofar as it allowed the interim injunction application (Ex.128) in terms of prayer (F). However, it was provided that though appellant may create license in respect of Kirloskar mark in accordance with Articles of Association in favour of its member companies, but it shall not assign the mark to other Kirloskar group of companies for use in respect of similar/overlapping business of Kirloskar Brothers.

4. The aforesaid order dated 25^th July 2025 was corrected/modified by order dated 10^th October 2025 whereby in addition to assignment even licensing to group companies was injuncted.

5. The submission on behalf of the petitioner is that the order passed by the High Court dated 25^th July 2025 is inconsistent inasmuch as on the one hand the order notices that there was non-exclusive license in favour of the plaintiff, and there existed no dispute as regards ownership of Kirloskar trade mark with the petitioner, yet it retrained the proprietor of the trade mark (i.e., the petitioner) from assigning it. It has also been argued that the term assignment may imply transfer of rights whereas licensing is limited to creating a privilege. In that sense, the order dated 25^th July 2025 was not so harsh on the petitioner as is the modified order (i.e., order dated 25^th July 2025 read with order dated 10^th October

2025).

6. Based on the aforesaid submissions, it has been prayed that for now the order dated 25^th July 2025 as modified by order dated 10^th October 2025 must be stayed to the extent it restrains the petitioner from licensing the Kirloskar mark to other Kirloskar Group Companies for use in respect of similar/

overlapping business of Kirloskar Brothers.

7. Per contra, the learned senior counsel for the respondent (plaintiff) submitted that the appeal of the petitioner is pending before the High Court and, therefore, expression of opinion on merits of the case may not be appropriate at this stage. It has also been submitted t