Dhanbad Fuels Private Limited Vs. Union of India

Introduction: The case of  Dhanbad Fuels Private Limited Vs. Union of India & Anr., decided by the Hon’ble Supreme Court of India, raised critical questions surrounding the applicability and enforcement of Section 12A of the Commercial Courts Act, 2015, which mandates pre-institution mediation in commercial disputes where no urgent interim relief is sought. The matter drew significant attention as it juxtaposed statutory mandates with practical impediments concerning legal infrastructure and judicial discretion. The ruling serves as an authoritative interpretation of procedural law and sets a precedent on the prospective application of mandatory mediation requirements.

Detailed Factual Background: The Union of India filed Money Suit No. 28 of 2019 on 09.08.2019 before the Commercial Court, Alipore, against M/s Dhanbad Fuels Private Limited seeking recovery of Rs. 8,73,36,976 towards differential freight and penalty. Notably, the suit did not seek any urgent interim relief. The cause of action arose from allegations that the appellant had wrongfully claimed concessional freight rates under specific rate circulars.

Upon the institution of the suit, the appellant, as defendant, submitted its written statement on 20.12.2019. Subsequently, the appellant contended that the suit was instituted in violation of Section 12A of the Commercial Courts Act, 2015 and the Pre-Institution Mediation and Settlement Rules, 2018. It was argued that the mandatory requirement of attempting pre-litigation mediation had been bypassed, thus rendering the suit institutionally defective.

Detailed Procedural Background:On 30.09.2020, the appellant filed an application under Order VII Rule 11(d) of the Civil Procedure Code, 1908, read with Section 12A of the 2015 Act, seeking rejection of the plaint. The application was dismissed by the Commercial Court on 21.12.2020, holding that although Section 12A was mandatory, its enforcement in the given facts would delay justice and the suit was already in its early stages. The Commercial Court observed that due to the absence of an effective infrastructure for commercial mediation and lack of a notified standard operating procedure at the time of suit filing, strict enforcement of Section 12A would be inequitable. However, the court ordered the parties to proceed with post-institution mediation and appointed a mediator.

The appellant challenged this order before the Calcutta High Court. The High Court upheld the Commercial Court’s decision with slight modifications, including directing the parties to approach the District Legal Services Authority (DLSA) as per the SOP notified on 11.12.2020. The High Court directed that the suit be kept in abeyance for a period of seven months or until the receipt of the mediation report.

Aggrieved, the appellant preferred a civil appeal before the Hon’ble Supreme Court of India, challenging the legality of the High Court’s order, reiterating that the non-compliance with Section 12A of the Act should have resulted in outright rejection of the plaint.

Issues Involved in the Case: The principal issues that arose in this case were whether the suit filed by the Union of India was liable to be rejected under Order VII Rule 11(d) of the CPC for non-compliance with Section 12A of the Commercial Courts Act, 2015, and whether the prospective declaration of the mandatory nature of Section 12A in Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. [(2022) 10 SCC 1] applied to suits instituted prior to 20.08.2022.

Detailed Submissions of Parties: The appellant contended that the decision in Patil Automation conclusively declared Section 12A mandatory and that any suit instituted without prior mediation, where no urgent interim relief is sought, must be rejected under Order VII Rule 11(d) CPC. He argued that the legislative intent was clear and emphasized that the stage of litigation or infrastructural constraints could not override the statutory mandate. He further contended that even under the doctrine of prospective overruling, the declaration of law relates back to the date of the enactment. Hence, the suit being in a nascent stage should not be distinguished from a newly filed one and must be dismissed.

The Union of India contended that no error had been committed by the lower courts. She acknowledged the mandatory nature of Section 12A but emphasized that the doctrine of impossibility applied due to the absence of a mediation framework at the time of suit filing. She submitted that SOPs were notified only on 11.12.2020, long after the suit was instituted. Thus, the Union could not be expected to comply with mediation requirements in an environment devoid of supporting infrastructure. She invoked the equitable maxim lex non cogit ad impossibilia, supported by the Supreme Court decision in Raj Kumar Dey v. Tarapada Dey, (1987) 4 SCC 398.

Detailed Discussion on Judgments Cited by Parties and Their Context:

The pivotal judgment cited was Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd., (2022) 10 SCC 1, wherein the Supreme Court held that Section 12A is mandatory in nature and suits instituted without adhering to it must be rejected under Order VII Rule 11. However, the Court also granted prospective effect to this declaration from 20.08.2022 to safeguard pending matters and avoid unjust consequences. The Court clarified that rejection would not apply to suits instituted prior to the said date unless they met specific exceptions.

The appellant also cited I.C. Golaknath v. State of Punjab, AIR 1967 SC 1643, to argue that the court's declaration of law must be understood as discovering the correct law, hence retroactive in nature. The principle from Spectrum Plus Ltd., In re: (2005) 3 WLR 58 (House of Lords) was invoked to explain forms of prospective overruling and the implications of judicial declarations affecting past transactions.

The respondent relied on Raj Kumar Dey v. Tarapada Dey (1987) 4 SCC 398, to support the maxim lex non cogit ad impossibilia, asserting that law cannot compel performance where performance is not feasible due to infrastructural limitations.

Detailed Reasoning and Analysis of Judge:

The court reiterated that Section 12A is mandatory as per Patil Automation but emphasized that the declaration of mandatory compliance was given prospective effect. The Court emphasized that at the time the Union of India filed the suit in 2019, the required mediation infrastructure, including trained mediators and SOPs, was not in place in West Bengal. Hence, expecting compliance with Section 12A in such circumstances would amount to imposing an impossible requirement, violating equitable principles.

The Court rejected the appellant’s reliance on the retrospective application of judicial declarations, noting that Patil Automation clearly limited its applicability to post-20.08.2022 suits. The court distinguished between declaration of law and operational consequences, thereby reinforcing the importance of judicial discretion in applying procedural norms.

Justice Pardiwala also clarified the scope and intent of Section 12A, observing that it seeks to reduce the burden on courts and promote mediation as an efficient dispute resolution method. However, the Court affirmed that procedural mandates cannot override substantive justice, especially when external circumstances render compliance impracticable.

Final Decision: The Supreme Court dismissed the appeal filed by Dhanbad Fuels Pvt. Ltd. and upheld the High Court’s order to keep the suit in abeyance and proceed with pre-institution mediation through the DLSA. It confirmed that the plaint should not be rejected under Order VII Rule 11(d) as the institution of the suit predated the declaration in Patil Automation and fell outside its purview.

Law Settled in this Case:The Supreme Court reaffirmed that Section 12A of the Commercial Courts Act, 2015 is mandatory. However, it also established that its strict enforcement through rejection of plaints under Order VII Rule 11(d) CPC shall apply only prospectively from 20.08.2022, as held in Patil Automation. Additionally, where infrastructural mechanisms for pre-institution mediation were absent, courts must apply equitable considerations before penalizing litigants for non-compliance. The decision further reinforced that courts possess discretion to avoid procedural rigidity when it contradicts the principles of substantive justice.

Case Title: Dhanbad Fuels Private Limited Vs. Union of India 

Date of Order: 15.05.2025

Case No.: Civil Appeal No. 6846 of 2025 

Neutral Citation: 2025 INSC 696

Court: Supreme Court of India

Judge: Hon’ble Mr. Justice J.B. Pardiwala

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents

Introduction:This case revolves around a critical interpretation of the jurisdictional scope of Section 72 of the Copyright Act, 1957, as amended by the 2021 legislative changes. The dispute arose regarding whether the High Court of Jharkhand at Ranchi had jurisdiction to hear an appeal against the order of the Deputy Registrar of Copyrights, whose office is located in New Delhi. 

The matter delves into the territorial jurisdiction, the forum of appeal, and the applicable procedure, especially in light of the amended statutory framework post-2021. The ruling provides a reasoned approach to jurisdictional limitations and the legislative intent of decentralizing appellate forums for copyright-related disputes.

Detailed Factual Background: Samriddhi Rice Mill Private Limited, the appellant, is a company engaged in business within the state of Jharkhand. It filed an appeal under Section 72(2) of the Copyright Act, 1957, challenging the order passed by the Deputy Registrar of Copyrights situated in New Delhi. The impugned order adversely affected the copyright-related interests of the appellant, and thus, they approached the High Court of Jharkhand for redressal.

The dispute took a jurisdictional turn when the respondent, particularly Respondent No. 6, raised objections asserting that only the Delhi High Court could entertain such appeals, as the office of the authority passing the order was located there. The appellant, on the other hand, contended that both parties, including Respondent No. 6, carried out business operations within Jharkhand, and thus the Jharkhand High Court had jurisdiction under the amended provisions of Section 72.

Detailed Procedural Background:The appeal was registered as Misc. Appeal No. 316 of 2024 before the High Court of Jharkhand. The matter came before Hon’ble Mr. Justice Sanjay Kumar Dwivedi for hearing on the issue of maintainability, as preliminary objections were raised by the respondents. Extensive arguments were presented concerning the interpretation of Section 72 of the Copyright Act as amended in 2021, particularly the omission of territorial restrictions seen in the earlier version of the law.

The respondents relied on prior judgments and statutory interpretations to assert that jurisdiction solely vests with the Delhi High Court, whereas the appellants referred to their business operations within Jharkhand as sufficient to establish territorial jurisdiction.

Issues Involved in the Case:The case involved two principal legal issues. First, whether the High Court of Jharkhand had the territorial jurisdiction to entertain an appeal under Section 72 of the Copyright Act, 1957, after its 2021 amendment! Second, whether such appeals are mandatorily required to be heard by a Division Bench or whether a Single Judge is competent to hear the matter at the initial stage? 

Detailed Submission of Parties:The  Respondent No. 6 submitted that as the order under challenge was passed by the Deputy Registrar of Copyrights whose office is situated at New Delhi, only the Delhi High Court possessed territorial jurisdiction. He relied upon the case of Ambica Industries Vs. Commissioner of Central Excise, (2007) 6 SCC 769, particularly paragraphs 13 and 38, to argue against forum shopping and the dangers of conflicting jurisdictional interpretations among different High Courts. He further contended that the amendment to Section 72 should not be interpreted to override the requirement of centralised jurisdiction where the authority resides.

Respondent No. 6 further argued that under Jharkhand High Court Rules, 2001, Rule 384 mandates that appeals under Section 72 of the Copyright Act should be heard by a Division Bench, and therefore, the appeal was not maintainable before a Single Judge.

The appellant  rebutted these submissions by asserting that post the 2021 amendment to the Copyright Act, Section 72 allows appeals to the "High Court" without restricting it to the jurisdiction of the Delhi High Court. He cited Sumitra Nandan Gupta v. Copyright Board, 1970 SCC OnLine Del 103, to argue that an appeal can be maintained where the appellant resides or conducts business. 

He also referred to Calcutta Gujarati Education Society v. Regional Provident Fund Commissioner, (2020) 19 SCC 380, to support the proposition that territorial jurisdiction can lie where the cause of action arises and where the affected party resides or operates.

On the issue of Single Judge vs. Division Bench, it was contended that under amended Section 72(2), an appeal is to be heard by a Single Judge, who may refer it to a Bench if deemed appropriate. He distinguished the Jharkhand High Court Rules, 2001, by noting that these rules predate the statutory amendment and therefore cannot override legislative provisions.

Detailed Discussion on Judgments Cited:

The key judgment relied upon by the respondent was Ambica Industries v. Commissioner of Central Excise, (2007) 6 SCC 769. In that case, the Supreme Court addressed the issue of forum shopping and stressed that jurisdiction cannot be extended arbitrarily to High Courts based merely on the location of tribunals or appellate authorities. The judgment emphasized consistency in judicial decisions and the risk of legal uncertainty if multiple High Courts entertain similar matters leading to divergent views.

The appellant countered this reliance by referring to Calcutta Gujarati Education Society v. Regional Provident Fund Commissioner, (2020) 19 SCC 380, where the Supreme Court distinguished Ambica Industries by affirming the territorial jurisdiction of the Calcutta High Court even though the tribunal was based elsewhere. It held that the place of original cause of action remains a relevant consideration for establishing jurisdiction under Articles 226 and 227.

In Sumitra Nandan Gupta v. Copyright Board, 1970 SCC OnLine Del 103, the Delhi High Court acknowledged that multiple High Courts can have jurisdiction based on the residence and business of the parties, and that the existence of jurisdiction in one court does not negate it in another, provided statutory conditions are met.

Detailed Reasoning and Analysis of Judge:Justice Sanjay Kumar Dwivedi began by analyzing both the unamended and amended texts of Section 72 of the Copyright Act. The earlier provision explicitly granted jurisdiction to the High Court within whose jurisdiction the appellant resided or carried on business. The 2021 amendment simplified this provision, stating that an appeal may lie to “the High Court,” without incorporating any restrictive territorial clause.

The judge observed that this change signaled a legislative intention to decentralize the appeal process, enabling High Courts to hear cases where parties reside or operate, thereby reducing dependency on the Delhi High Court. The Judge reasoned that if the legislature intended exclusive jurisdiction for the Delhi High Court, such language would have been expressly provided in the amended statute.

He further held that the presence of both parties in Jharkhand, along with their business operations within the State, clearly vested jurisdiction with the Jharkhand High Court. The judge emphasized that jurisdiction is determined not just by the location of the authority passing the order but also by where the cause of action arises and where the parties reside or carry on business.

Regarding the question of whether a Single Judge could hear the matter, the Court interpreted Section 72(2) to mean that the appeal is to be heard by a Single Judge unless he deems it appropriate to refer the matter to a Division Bench. The Judge clarified that the High Court Rules cannot override a statutory provision, and the discretion vested in the Single Judge under the proviso of Section 72(2) remains paramount.

The Court also cited Rajnish Kumar Rai v. Union of India, (2023) 14 SCC 782, to affirm that a High Court need not await decisions in pending references before other benches and must decide based on the law existing at the time of hearing.

Final Decision:The High Court of Jharkhand held that it has territorial jurisdiction to hear the appeal under Section 72 of the Copyright Act, 1957. The preliminary objection regarding jurisdiction raised by Respondent No. 6 was rejected. The appeal was held to be maintainable before the Single Judge, with the option of reference to Division Bench if the judge so decides during the course of hearing on merits.

Law Settled in this Case:This case establishes that post the 2021 amendment of Section 72 of the Copyright Act, High Courts other than Delhi can exercise jurisdiction over appeals, provided the parties conduct business or reside within their territorial limits. It also affirms that such appeals are maintainable before a Single Judge, who retains discretion to refer the matter to a Division Bench. The ruling further clarifies that procedural High Court Rules cannot override substantive statutory amendments and that the law in force at the time of hearing governs the court's adjudicatory authority.

Case Title: Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents

Date of Order: 30th April 2025

Case No.: Misc. Appeal No. 316 of 2024

Court: High Court of Jharkhand, Ranchi

Judge: Hon’ble Mr. Justice Sanjay Kumar Dwivedi

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Rieter AG and Others Vs. Kavassery Narayanaswamy

Case Title:Rieter AG and Others Vs. Kavassery Narayanaswamy Venkatasubramanian:Court:High Court of Delhi:Date of Order:13th May 2025:Case Number:2025:DHC:3937:CS(COMM) 729/2024:Hon'ble Mr. Justice Amit Bansal

Facts:

The plaintiffs, subsidiaries of Rieter Holding AG, filed this suit alleging infringement of their registered designs, trademarks, and patents. They claimed that their products were similar to those of the defendant, which was observed at the India International Textile Machinery Exhibition in Greater Noida in December 2022. An investigation was initiated, leading to communication with the defendant via email, and delivery of goods in Delhi. The plaintiffs contended that the defendant had engaged in commercial activities in Delhi by participating in exhibitions, placing orders, and delivering goods there.

Procedural Details:

The defendant filed an application under Order VII Rule 10 of CPC, contesting the court’s territorial jurisdiction, arguing that the suit should be dismissed for lack of jurisdiction. The court examined the pleadings, relevant documents, and judgments, including those distinguishing offline and internet-based transactions, to decide on the jurisdictional challenge.

Issue:

Whether the Delhi High Court has territorial jurisdiction to try the suit, given that the defendant’s activities, such as participating in exhibitions, placing and receiving orders in Delhi, and delivering goods there, suffice to establish a cause of action within the court’s territory?

Decision:

The Court held that a part of the cause of action had arisen in Delhi, supporting the court's jurisdiction. It noted that the defendant participated in exhibitions in Greater Noida and engaged in commercial transactions involving delivery of goods in Delhi. Consequently, the application challenging jurisdiction was dismissed, and the suit was maintained in Delhi.

Al Hamd Tradenation Vs. Phonographic Performance Limited

Introduction

The case of Al Hamd Tradenation v. Phonographic Performance Limited is a significant copyright dispute adjudicated by the High Court of Delhi, addressing the issue of compulsory licensing under Section 31 of the Copyright Act, 1957. The petitioner, Al Hamd Tradenation, sought a compulsory license to use the respondent’s sound recordings for a corporate event, alleging that the respondent, Phonographic Performance Limited (PPL), demanded unreasonable and prohibitive license fees, effectively amounting to a refusal to license. The case delves into the balance between the copyright owner’s rights and the public’s interest in accessing copyrighted works, raising critical questions about the applicability of compulsory licensing provisions, the reasonableness of tariff structures, and the legal status of PPL as a licensing entity. The judgment, delivered on May 13, 2025, by Justice Mini Pushkarna, underscores the court’s authority to intervene when copyright owners impose arbitrary fees, reinforcing the statutory objective of ensuring equitable access to copyrighted works.

Detailed Factual Background

Al Hamd Tradenation, a Delhi-based event organizer, planned a corporate event for 50 persons on July 14, 2024, at Hotel Lutyens in Delhi. During the booking process, the hotel informed the petitioner that a license from PPL was required to play music at the event, with a quoted license fee of ₹49,500 for events hosting 1–150 persons. Upon checking PPL’s website, the petitioner noted that the fee had increased to ₹55,440, effective April 29, 2024. Deeming the fee excessive for a 50-person event, the petitioner, on July 2, 2024, offered PPL ₹16,500 (one-third of the original ₹49,500 fee), arguing that the reduced amount was proportionate to the event’s scale. PPL rejected this offer on the same day, prompting the petitioner to reiterate its proposal on July 3, 2024. Meanwhile, on July 9, 2024, PPL filed a copyright infringement suit (CS(COMM) 564/2024) against the petitioner, alleging unauthorized use of its sound recordings. Aggrieved by PPL’s high fees, which the petitioner deemed unreasonable, Al Hamd Tradenation filed the present petition seeking a compulsory license and determination of fair license rates.

PPL, a company claiming ownership of public performance rights in its repertoire of sound recordings through assignments, maintained that its tariff was reasonable and publicly available, applied uniformly to over 9,100 entities that had obtained 32,000 licenses since April 2023. The petitioner argued that PPL’s fee structure, which charged the same amount for 1–150 attendees and did not account for the number of songs or event duration, was arbitrary and constituted a de facto refusal to license, justifying a compulsory license under the Copyright Act.

Detailed Procedural Background

The petitioner filed the petition (C.O.(COMM.IPD-CR) 8/2024) under Section 31 of the Copyright Act, 1957, read with Rule 6 of the Copyright Rules, 2013, before the Delhi High Court, accompanied by applications I.A. 33181/2024 and I.A. 33182/2024. The petition sought a compulsory license to use PPL’s sound recordings and a court-determined reasonable license fee. The matter was heard by Justice Mini Pushkarna, with arguments presented by Mr. Aditya Ganju for the petitioner and Mr. Chander M. Lall, Senior Advocate, for the respondent. During the proceedings, the court noted a related legal development: PPL’s licensing authority had been challenged in Phonographic Performance Limited v. Azure Hospitality Private Limited (CS(COMM) 714/2022). In that case, a Single Judge had upheld PPL’s right to issue licenses on March 3, 2025, but the Division Bench, in Azure Hospitality Private Limited v. Phonographic Performance Limited (FAO(OS) (COMM) 41/2025, decided April 15, 2025), ruled that PPL, not being a registered copyright society, could not issue licenses independently and must operate through Recorded Music Performance Limited (RMPL), a registered copyright society. This ruling was stayed by the Supreme Court on April 21, 2025, in Phonographic Performance Limited v. Azure Hospitality Private Limited (SLP(C) No. 10977/2025), pending a hearing on July 21, 2025. The court clarified that its judgment would be subject to the Supreme Court’s final decision. The judgment was reserved and pronounced on May 13, 2025, directing the parties to file affidavits to determine compensation and listing the matter for further directions on May 29, 2025.

Issues Involved in the Case

The case raises several pivotal issues:Whether PPL’s license fee of ₹55,440 for a 50-person event constitutes an unreasonable demand, amounting to a refusal to license under Section 31(1)(a) of the Copyright Act?Whether the petitioner is entitled to a compulsory license for public performance of PPL’s sound recordings under Section 31(1)(a), given that it is not a broadcasting organization?

Petitioner’s Submissions (Al Hamd Tradenation): The petitioner argued that PPL’s license fee was unreasonable and prohibitive, effectively withholding its sound recordings from the public. The petitioner contended that even if PPL owned the copyright, it could not charge arbitrary fees, as this would undermine public access to copyrighted works. The fee of ₹55,440 for 1–150 persons was deemed excessive for a 50-person event, prompting the petitioner’s offer of ₹16,500, which PPL rejected. This rejection, the petitioner argued, constituted a refusal under Section 31(1)(a), as unreasonable terms equate to withholding the work, per the Supreme Court’s ruling in Entertainment Network (India) Limited v. Super Cassette Industries Limited. The petitioner highlighted PPL’s tariff structure, which charged the same fee regardless of audience size or event specifics, contrasting it with RMPL’s more flexible tariff, which accounted for venue type and event duration. The petitioner asserted that PPL’s market dominance allowed it to impose an arbitrary licensing regime, necessitating court intervention to grant a compulsory license on fair terms.

Respondent’s Submissions (PPL): PPL defended its tariff as reasonable and uniformly applied, noting that over 9,100 entities had obtained licenses since April 2023. PPL argued that it had not withheld its repertoire, which was freely licensed to various establishments, and that the petitioner’s refusal to pay the published tariff did not justify a compulsory license. PPL contended that Section 31(1)(a) applies only when a work is withheld, not when a licensee disputes the fee. As the petitioner was not a broadcaster, PPL argued that Section 31(1)(b), which addresses unreasonable terms for broadcasts, was inapplicable, and the court’s role under Section 31(1)(a) was limited to addressing outright refusal, not assessing fee reasonableness. PPL further asserted that the right to perform in public under Section 31(1)(a) applies to literary, dramatic, and musical works, not sound recordings, which are limited to broadcasting under Section 31(1)(b). Citing Pune Video Theaters Association v. Cinemaster, PPL argued that its repertoire was publicly available, negating the petitioner’s claim. Finally, PPL maintained that its status as a copyright owner through assignments entitled it to set its own rates, subject to market acceptance.

Detailed Discussion on Judgments Cited by Parties

Entertainment Network (India) Limited v. Super Cassette Industries Limited, (2008) 13 SCC 30: Cited by the petitioner, this Supreme Court judgment elaborates on compulsory licensing under Section 31. The court emphasized balancing the copyright owner’s rights with public access, holding that unreasonable terms or arbitrary demands by the owner amount to a refusal to license, triggering compulsory licensing provisions. The judgment clarified that monopoly practices are discouraged, and copyrighted works, once public, must be available on reasonable terms. In the present case, the petitioner relied on this to argue that PPL’s high fees constituted a de facto refusal, justifying a compulsory license.

Anand Bhushan and Others v. Union of India, 2018 SCC OnLine Del 9316: Cited by the court, this Delhi High Court Division Bench decision addressed tariff reasonableness under Section 33A. The court held that the Commercial Court, when reviewing a tariff scheme, can consider prevailing royalty standards for similar commercial exploitations. The petitioner indirectly benefited from this precedent, as the court used it to justify examining PPL’s tariff against RMPL’s standards, finding PPL’s structure unreasonable.

Pune Video Theaters Association v. Cinemaster, 2001 SCC OnLine CB 1: Cited by PPL, this Copyright Board decision involved video parlors exhibiting films. The Board found no withholding, as the films were publicly available, and the petitioner failed to identify withheld works. PPL argued that its repertoire was similarly accessible, negating the need for a compulsory license. The court distinguished this case, noting that the Supreme Court’s ruling in Entertainment Network established that unreasonable terms constitute refusal, rendering Pune Video inapplicable.

Phonographic Performance Limited v. Azure Hospitality Private Limited, CS(COMM) 714/2022, decided March 3, 2025: Referenced by the court, this Single Judge decision upheld PPL’s right to issue licenses based on assigned public performance rights. However, it was overturned by the Division Bench in Azure Hospitality Private Limited v. Phonographic Performance Limited, FAO(OS) (COMM) 41/2025, 2025 SCC OnLine Del 2407, which held that PPL, not being a registered copyright society, could not issue licenses independently and must align with RMPL’s tariff. The Supreme Court’s stay in Phonographic Performance Limited v. Azure Hospitality Private Limited, SLP(C) No. 10977/2025, order dated April 21, 2025, suspended the Division Bench’s directions, leaving PPL’s licensing authority unresolved. The court noted this context but proceeded, subject to the Supreme Court’s final ruling.

Copinger and Skone James on Copyright (19th Edition, 2025, Para 32-02, Pg. 1147, Vol. II): Cited by the court, this treatise explains compulsory licenses as mechanisms allowing use of copyrighted works without owner consent, subject to payment. It distinguishes compulsory licenses, where rates are negotiated, from statutory licenses with fixed rates. The court used this to underscore that compulsory licenses ensure public access while compensating owners, supporting its authority to intervene in PPL’s tariff.

Detailed Reasoning and Analysis of Judge

Justice Mini Pushkarna’s reasoning focused on the statutory framework of the Copyright Act, the balance between copyright owners and public interest, and the specific circumstances of PPL’s tariff. The court began by addressing PPL’s licensing authority, noting the Division Bench’s ruling in Azure Hospitality that PPL, as a non-registered copyright society, must operate through RMPL. However, the Supreme Court’s stay of that ruling allowed the court to proceed, with a caveat that its directions were subject to the Supreme Court’s final decision.

On the merits, the court analyzed Section 31(1)(a), which allows compulsory licenses when a copyright owner refuses to republish or allow public performance, withholding the work from the public. The court rejected PPL’s contention that Section 31(1)(a) excludes sound recordings or limits the court’s role to outright refusal. Citing Entertainment Network, the court held that unreasonable terms constitute a refusal, as they effectively withhold the work. The court found PPL’s tariff unreasonable, as it charged ₹55,440 uniformly for 1–150 attendees, regardless of event specifics, contrasting this with RMPL’s nuanced tariff, which varied by venue and duration. The court noted that PPL’s structure did not account for the petitioner’s 50-person event, rendering the fee disproportionate.

The court clarified that “work” under Section 2(y) includes sound recordings, and “publication” under Section 3 encompasses public communication, including performance (Section 2(ff)). Thus, public performance of sound recordings falls under Section 31(1)(a), contrary to PPL’s argument that it is limited to literary, dramatic, and musical works. The court dismissed Pune Video Theaters as inapplicable, given the Supreme Court’s broader interpretation of refusal. The court also invoked Section 33A and Anand Bhushan to justify examining tariff reasonableness against prevailing standards, finding PPL’s fees arbitrary and monopolistic.

The court emphasized that the Copyright Act discourages monopolies and ensures public access on fair terms. Rule 8 of the Copyright Rules allowed the court to determine compensation based on prevailing royalty standards, reinforcing its authority to grant a compulsory license. The court concluded that PPL’s market dominance could not justify an arbitrary licensing regime, and the petitioner’s request for a compulsory license was meritorious.

Final Decision

The court held that the petitioner was entitled to a compulsory license due to PPL’s unreasonable tariff. To determine compensation, terms, and conditions, the court directed both parties to file affidavits of evidence within eight weeks. The matter was listed for further directions before the Roster Bench on May 29, 2025, with the judgment subject to the Supreme Court’s ruling in Phonographic Performance Limited v. Azure Hospitality Private Limited.

Law Settled in This Case

The judgment reinforces several principles under the Copyright Act:Unreasonable license fees by a copyright owner constitute a refusal to license under Section 31(1)(a), triggering compulsory licensing provisions. The court can assess the reasonableness of license terms in Section 31(1)(a) cases, including for public performance of sound recordings, which are covered as “works” under the Act.

Al Hamd Tradenation Vs. Phonographic Performance Limited: May 13, 2025: C.O.(COMM.IPD-CR) 8/2024: 2025:DHC:3695:High Court of Delhi:Hon’ble Ms. Justice Mini Pushkarna

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Dhanbad Fuels Private Limited Vs. Union of India & Anr.

Case Title:Dhanbad Fuels Private Limited Vs. Union of India & Anr.

Date of Order: 2025

Case No.: Civil Appeal No. 6846 of 2025 (@SLP (C) No. 4980 of 2021)

Neutral Citation: 2025 INSC 696

Court: Supreme Court of India

Judge: Hon’ble Mr. Justice J.B. Pardiwala

Facts:

The Union of India filed a Money Suit No. 28 of 2019 in the Commercial Court, Alipore, against Dhanbad Fuels Pvt. Ltd. to recover approximately Rs. 8.73 crores. The suit was filed without initiating pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The defendant challenged the maintainability of the suit on the ground of non-compliance with Section 12A, seeking rejection of the plaint under Order VII Rule 11(d) CPC.

Procedural History:

The Commercial Court rejected the application to dismiss the suit and referred the parties to post-institution mediation.

The Calcutta High Court upheld the trial court's order, directing that the suit be kept in abeyance while the plaintiff approached the District Legal Services Authority for mediation.

The matter reached the Supreme Court through a civil appeal.

Issues:

1. Whether the suit should be dismissed for non-compliance with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015? 

2. Whether the decision in Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. (2022) should be applied retrospectively to invalidate the suit.

Decision:

The Supreme Court dismissed the appeal, holding:

Section 12A is mandatory, but its enforcement was declared to be prospective from 20.08.2022 by the decision in Patil Automation.

Since the suit was filed in 2019, before the cutoff date, it was protected by the prospective ruling.

Infrastructure for mediation (rules, SOP, mediators) was not in place at the time of suit filing, making compliance impractical.

The equitable maxim "lex non cogit ad impossibilia" (the law does not compel the impossible) applied.

Hence, the High Court was right in directing that the suit be kept in abeyance and mediation be attempted.

Kamdhenu Limited Vs. Union of India.

Case Title: Kamdhenu Limited Vs. Union of India.

Date of Order: 09 May 2025

Case No.: W.P.(C)-IPD 29/2025, 

Court: High Court of Delhi, New Delhi

Judge: Hon’ble Mr. Justice Saurabh Banerjee

Facts:

The petitioner, M/s Kamdhenu Limited, challenged the Examination Report cum Acceptance Order dated 24.04.2025 issued by the Registrar of Trademarks regarding trademark application No. 6890699 in Class 6. Although the Examination Report cited two of the petitioner’s registered trademarks, it omitted 16 other valid and subsisting registrations of the petitioner. These omissions raised concerns about the completeness and reliability of the trademark examination process.

Procedural Details:

The writ petition was filed under Articles 226 and 227 of the Constitution seeking a writ of certiorari to quash the impugned Examination Report and a mandamus directing the Registrar to duly consider all existing registrations of the petitioner during examination of similar marks. The matter was listed along with similar petitions (W.P.(C)-IPD 30-33/2025). Despite repeated court queries, the Respondents failed to respond satisfactorily due to lack of instructions.

Issues:

Whether the Registrar of Trademarks failed to consider all relevant prior registered marks of the petitioner during examination.

Whether such omissions affect the legality and validity of the Examination Report.

Decision:

The Court found prima facie irregularities and considered the situation “not in order.”

Directed either of the Examination Officers (Mr. Nehul Kumar or Mr. Rahul Kumar) to appear physically with a device to demonstrate the software used for the Search Report.

Directed the Registrar of Trademarks to join virtually on 15.05.2025 to assist in clarifying the matter.

Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents

Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents, Designs and Trade Marks & Others:Misc. Appeal No. 316 of 2024:Date of Order: 30th April 2025:High Court of Jharkhand, Ranchi: Hon’ble Mr. Justice Sanjay Kumar Dwivedi

Facts:

The appellant, Samriddhi Rice Mill Pvt. Ltd., filed an appeal under Section 72(2) of the Copyright Act, 1957, challenging the order passed by the Deputy Registrar of Copyrights, who is based in New Delhi. Both the appellant and Respondent No. 6 conduct business and have offices in the state of Jharkhand.

Procedural History:

Respondent No. 6 objected to the maintainability of the appeal in the Jharkhand High Court, arguing that such appeals must be filed only in the Delhi High Court, where the Registrar of Copyrights is based. He also contended that the appeal should be heard by a Division Bench and not a Single Judge.

Issues:

1. Whether the Jharkhand High Court has territorial jurisdiction to entertain the appeal under Section 72 of the Copyright Act, 1957?

2. Whether the appeal should be heard by a Single Judge or a Division Bench?

Decision:

The Court held that the Jharkhand High Court has jurisdiction to entertain the appeal as both parties conduct business in Jharkhand and the statute (post-2021 amendment) does not restrict jurisdiction to the Delhi High Court alone.

The Court clarified that under Section 72(2) of the Copyright Act (amended), the appeal is to be heard by a Single Judge, with discretion to refer it to a Division Bench if needed.

The Court also noted that statutory provisions override High Court rules, and the current legal framework does not mandate Division Bench hearing unless specifically ordered.

Outcome:

The preliminary objection regarding maintainability was rejected. The Court held that the appeal is maintainable before the Jharkhand High Court and will be heard on merits in due course.

Raj Vardhan Patodia (HUF) Vs. Registrar of Trade Marks

Raj Vardhan Patodia (HUF) Vs. Registrar of Trade Marks & Anr.:21st April 2025:Case Number: C.A.(COMM.IPD-TM) 13/2024 :2025:DHC:3153:High Court of Delhi:Hon'ble Mr. Justice Amit Bansal

Facts:

Respondent No. 2 filed a trademark application on 6th December 2016, which was opposed by the appellant on 20th February 2020. A counter-statement was served to the appellant on 13th February 2023. The appellant claims to have sent the Evidence in Support of Opposition (EISO) on 30th March 2023 within the statutory time, albeit in photocopy form. The Trade Marks Registry, however, returned the documents requesting the original. The appellant subsequently filed the original EISO on 28th June 2023, which was uploaded to the Registry’s portal on 3rd July 2023. Despite this, the Registrar deemed the opposition abandoned for not filing the EISO in original within time.

Procedural History:Opposition filed: 20 February 2020,Counter-statement served: 13 February 2023,Photocopy EISO sent: 30 March 2023,Original EISO filed: 28 June 2023,Registrar’s order (impugned): 3 November 2023, treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, 2017,Appeal filed under Section 91 of the Trade Marks Act, 1999

Issues:

Whether the Registrar of Trade Marks erred in treating the opposition as abandoned under Rule 45(2) due to non-filing of original EISO within the prescribed timeline? 

Decision:

The Delhi High Court held that:The appellant had demonstrated intent to contest by timely sending a photocopy of the EISO.Upon notification of the error, the original EISO was promptly submitted and accepted on the e-portal.The Registrar's insistence on original copies without prior intimation or flexibility contradicted the intent and procedural fairness.The impugned abandonment order was arbitrary.

Final Order:

The Court set aside the impugned order and directed the Registrar to take the EISO on record and proceed with the opposition proceedings. The registration granted to Respondent No. 2 was also cancelled.

Khilender Gupta Trading Bobby Vs Hind Food Product

Khilender Gupta Trading Bobby Vs Hind Food Product:25 April 2025:FAO (Comm) 100/2025:2025:DHC:2987-DB:High Court of Delhi:Honble Judges:C. Hari Shankar, Ajay Digpaul

Facts: 

Khilender Gupta, operating as Bobby Enterprises, filed a suit against Hind Food Product for alleged infringement of the registered trademark "BOOM BOOM" and unauthorized use that could mislead consumers. Gupta claimed that the respondents were passing off their products under names similar to those associated with his trademark.

Procedural Details:

Gupta sought an ex parte ad interim injunction under Order XXXIX Rules 1 and 2 and an appointment of a Local Commissioner under Order XXVI Rule 9 of the Civil Procedure Code (CPC). The Commercial Court initially dismissed these applications, citing the pending intervention application from Rakesh Kumar, who also claimed rights related to the trademark.

Issue:

The central issue was whether the Commercial Court properly declined to grant the ex parte relief sought by Gupta based on the assertion that an intervention application by Rakesh Kumar was pending, and whether the court adequately considered the merits of Gupta's claims.

Decision:

The High Court of Delhi set aside the impugned order from the Commercial Court and remanded the applications for a new decision. The court emphasized that the Commercial Court was obligated to consider the merits of the case for the requested relief without deferring to the pendency of Rakesh Kumar's application. The court confirmed that Gupta retained the right to assert proprietorial claims over the trademark in question.

Hamdard Laboratories India Vs Unani Drugs Manufacturer Association

Introduction

In the annals of Indian commercial litigation, the dispute between Hamdard Laboratories India (Medicine Division) and Unani Drugs Manufacturer Association (UDMA) emerges as a fascinating exploration of trademark rights, family settlements, and jurisdictional boundaries. Decided by the High Court of Delhi on April 2, 2025, this case encapsulates two appeals—FAO 328/2024 and FAO 347/2024—challenging a trial court’s dismissal of interim relief and contempt applications. At its heart lies the iconic "HAMDARD" trademark, a legacy dating back to 1906, and a modern-day tussle over its use in the Unani medicine market. This case study unravels the intricate factual tapestry, procedural maneuvers, legal arguments, and judicial reasoning that led to a pivotal ruling on the domain of commercial courts in intellectual property disputes.

Detailed Factual Background

Hamdard Laboratories India, originating from the Hamdard Group founded in 1906 by Hakeem Hafiz Abdul Majeed, has long been synonymous with Unani and Ayurvedic medicines. The appellant, Hamdard Laboratories India (Medicine Division), operates under an exclusive license from its sister entity, Hamdard National Foundation, via a 1975 agreement. Internal family disputes among the founder’s successors were resolved through a Supreme Court-mediated Family Settlement Deed dated October 22, 2019. This settlement bifurcated the Hamdard business into two divisions: the Medicine Division, led by Abdul Majeed and Asad Mueed, and the Food Division, headed by Hammad Ahmed and his sons, Hamid and Sajid Ahmed. Clause 11 of the settlement prohibited the Medicine Division from entering food-related trademark classes (29, 30, 32, 33, 34) and the Food Division from engaging in medicinal classes (3, 5, 10), barring mutual agreement. The respondent, UDMA, formed in 2017 under the Societies Registration Act, 1860, represents Unani drug manufacturers and claims over 70 members, constituting 95% of the Unani industry by volume and value, as stated on its website (www.udmaindia.com). The appellant, holding over 60% of the Unani medicine market and not a UDMA member, alleged that UDMA’s claims misrepresented its market share by including the appellant’s products and falsely portrayed Food Division products like Rooh Afza and Hamdard Honey as medicinal, breaching the family settlement.

Detailed Procedural Background

The dispute crystallized in CS No. 449/2022, filed by the appellant against UDMA before the Additional District Judge, Shahdara District, Karkardooma Courts, Delhi. The appellant sought an injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), to restrain UDMA from using the "HAMDARD" name and to compel a disclaimer of the appellant’s non-membership, alongside Rs. 5,00,000 in damages. A separate application under Order XXXIX Rule 2A alleged UDMA’s contempt of court directions. On August 29, 2024, the trial court dismissed both applications, prompting the appellant to file two First Appeals under Order XLIII Rule 1 CPC: FAO 328/2024 against the injunction dismissal and FAO 347/2024 against the contempt dismissal. The High Court reserved judgment on March 4, 2025, and pronounced its common verdict on April 2, 2025, addressing both appeals.

Issues Involved in the Case

The primary issue was whether the trial court erred in dismissing the appellant’s applications for interim relief and contempt. This hinged on two sub-issues: Did the dispute, involving the "HAMDARD" trademark and UDMA’s alleged misrepresentation, fall within the commercial courts’ jurisdiction under the Commercial Courts Act, 2015, rather than a regular civil court? Was the suit maintainable without joining the Hamdard Food Division (HFI) as a necessary party, given its alleged role in the misuse of the trademark?

Detailed Submission of Parties

Senior Advocate Sanjeev Sindhwani, representing the appellant, argued that UDMA’s website claims were defamatory and misleading, inflating its market share by including the appellant’s non-member contributions and misrepresenting Food Division products as Unani medicines, contrary to the 2019 settlement. He contended that the suit was not a commercial dispute, as no contract existed between the appellant and UDMA, and the grievance was reputational, not trade-related. Sindhwani asserted that HFI’s involvement was peripheral, and the suit targeted UDMA’s actions alone, negating the need to join HFI. He urged that the trial court’s failure to apply the "trinity test" (prima facie case, balance of convenience, irreparable injury) warranted reversal. Conversely, Advocate N.K. Jha for UDMA defended the trial court’s rulings, arguing that the dispute was inherently commercial, involving trademark use and intellectual property rights, thus falling under the Commercial Courts Act. He posited that HFI’s role was central, as the appellant’s claims implicated HFI’s products, rendering the suit defective for non-joinder. Jha maintained that no contempt occurred, as UDMA did not willfully disobey any court order, and the trial court lacked jurisdiction to enforce contempt in a misfiled suit.

Detailed Discussion on Judgments Cited by Parties and Their Context

The appellant implicitly relied on the trinity test framework from injunction jurisprudence, though no specific cases were cited in the judgment text. The respondent’s jurisdictional argument aligned with the Commercial Courts Act, 2015, particularly Sections 2(1)(c)(ix) (distribution and licensing agreements) and (xvii) (intellectual property rights), though not explicitly tied to precedents by UDMA’s counsel. The court independently referenced Namita Gupta v. Suraj Holdings Limited (2024 SCC OnLine Del 143), where the Delhi High Court directed the return of a plaint under Order VII Rule 10 CPC for filing before a competent court when jurisdiction was lacking. In Namita Gupta, the issue involved a commercial dispute misfiled in a regular civil court, akin to the present case, guiding the court’s directive to transfer the suit.

Detailed Reasoning and Analysis of Judge

Justice Dharmesh Sharma’s analysis was a meticulous blend of statutory interpretation and practical jurisprudence. He first dissected the appellant’s grievance: UDMA’s website claims suggested a market dominance that included the appellant’s output, despite its non-membership, and misrepresented HFI’s food products as medicinal, breaching the family settlement. Sharma noted that the appellant’s prayers—restraining UDMA from using "HAMDARD" and mandating a disclaimer—exceeded the suit’s scope, which also sought damages, indicating a broader commercial intent. He rejected the appellant’s claim that the dispute was non-commercial, observing that it centered on the "HAMDARD" trademark’s use in Unani medicine promotion, implicating intellectual property rights under Section 2(1)(c)(xvii) of the Commercial Courts Act. The involvement of HFI, whose products UDMA allegedly mischaracterized, was deemed central, rendering HFI a necessary party under CPC principles, as its absence prejudiced a complete adjudication. Sharma highlighted Clause 11 of the 2019 settlement, barring HFI from medicinal classes, and UDMA’s Memorandum of Association, aimed at Unani drug development, to underscore the commercial nexus. He reasoned that the trial court’s failure to apply the trinity test was moot, as it lacked subject-matter jurisdiction, a foundational flaw. For the contempt appeal, Sharma found no evidence of willful disobedience, and the jurisdictional defect precluded enforcement. Citing Namita Gupta, he mandated the plaint’s return for refiling before a commercial court, emphasizing the Act’s objective of expeditious commercial dispute resolution.

Final Decision

Both appeals, FAO 328/2024 and FAO 347/2024, were dismissed on April 2, 2025. The trial court’s order of August 29, 2024, was upheld, with the plaint ordered returned under Order VII Rule 10 CPC for presentation to a competent Commercial Court. All pending applications were disposed of accordingly.

Law Settled in This Case

The ruling clarified that disputes involving trademark use and intellectual property misrepresentation, even absent a direct contractual nexus, constitute commercial disputes under the Commercial Courts Act, 2015, requiring adjudication by specialized commercial courts. It reinforced the necessity of joining all relevant parties in suits implicating family settlements and trademark rights, and underscored that jurisdictional propriety trumps procedural merits like the trinity test when the forum is incorrect.

Case Title: Hamdard Laboratories India (Medicine Division) v. Unani Drugs Manufacturer Association (UDMA)

Date of Order: April 2, 2025

Case No.: FAO 328/2024 

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Dharmesh Sharma

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Pernod Ricard India Private Limited Vs A B Sugars Limited

Introduction

The case of Pernod Ricard India Private Limited vs A B Sugars Limited & Another, decided on 31st October 2023 by the High Court of Delhi, is a critical precedent in the domain of trademark protection and the doctrine of deceptive similarity in the context of the alcoholic beverage industry. This case revolves around a claim of infringement and passing off, brought by Pernod Ricard India Private Limited, a well-established player in the spirits market, in relation to their whisky brand "Imperial Blue." The plaintiff alleged that the defendants had introduced a product named “Imperial Gold” with packaging and branding designed to mimic and exploit the goodwill of “Imperial Blue.” The court’s decision on the plaintiff’s application for interim injunction highlights the principles surrounding protectable elements of trade dress, phonetic similarity, and the concept of deceptive resemblance.

Factual Background

Pernod Ricard India Pvt. Ltd. is the registered proprietor of the trademark “Imperial Blue,” launched in 1997, and has since built considerable goodwill and recognition in the Indian market. The brand is one of the top-selling whiskies in India, enjoying substantial market penetration and extensive advertisement outreach. The mark is registered under Class 33 of the Trade Marks Act, 1999, covering alcoholic beverages. In 2023, the plaintiff discovered that A B Sugars Limited, in collaboration with a marketing company, had launched a competing whisky product titled “Imperial Gold.” The plaintiff alleged that the use of the word “Imperial,” coupled with a similar color scheme, typography, and bottle shape, amounted to both infringement and passing off. They claimed that the defendants’ product was intentionally designed to confuse consumers and misappropriate the brand equity of “Imperial Blue.”

The plaintiff pointed out specific similarities in the label layout, combination of gold and blue colors, the placement and design of product descriptors, as well as the shape and appearance of the bottle itself. They contended that these similarities were not coincidental but indicative of a deliberate attempt to ride upon the reputation of “Imperial Blue.”

Procedural Background

A commercial civil suit bearing number CS(COMM) 789/2023 was filed by the plaintiff before the Delhi High Court. The plaintiff sought a permanent injunction to restrain the defendants from manufacturing, selling, marketing, or dealing in any product using the term “Imperial Gold,” or any other mark deceptively similar to “Imperial Blue.” The present order was passed on the plaintiff’s application for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The court had to assess whether the plaintiff had established a prima facie case for interim protection, the balance of convenience, and the likelihood of irreparable harm.

Issues Involved

The primary issue was whether the use of “Imperial Gold” by the defendants amounted to trademark infringement and passing off by being deceptively similar to the plaintiff’s registered trademark “Imperial Blue.” A related issue was whether the word “Imperial” was inherently distinctive or had acquired secondary meaning sufficient to warrant exclusive proprietary rights. The court also had to determine whether the similarities in packaging, color combination, bottle design, and overall trade dress justified an interim injunction in favor of the plaintiff.

Submissions of the Parties

The plaintiff contended that “Imperial Blue” was a well-known mark and that the word “Imperial” had, over the years, become the dominant identifier of its brand. They emphasized that the defendants’ product, “Imperial Gold,” copied this dominant portion of the mark, and used similar packaging and branding elements to cause confusion. The plaintiff argued that the consumers, particularly in the alcoholic beverage market, would likely be misled by the similarities, thereby causing irreparable damage to the brand’s goodwill. They relied on several judicial precedents to support their argument, especially emphasizing that even partial adoption of a well-known mark constitutes infringement and that trade dress and packaging also enjoy protection under trademark law.

In contrast, the defendants submitted that the word “Imperial” is a dictionary word, commonly used and not distinctive by itself. They argued that the plaintiff could not claim monopoly over a generic or laudatory term and that the suffixes “Blue” and “Gold” created a sufficiently distinct identity. Further, they contended that the packaging was not deceptively similar, and their brand was independently created without any intention of misleading consumers or exploiting the plaintiff’s reputation.

Discussion on Judgments and Contextual References

The plaintiff relied heavily on the Supreme Court’s decision in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, where the court held that in cases involving health and safety, a stricter standard must be applied to determine deceptive similarity. Though whisky is not a medicinal product, the court considered this principle relevant because it underscored the need to assess consumer confusion from a public interest perspective. The judgment laid out various factors to be considered when evaluating similarity, such as the nature of marks, similarity in appearance and sound, nature of goods, class of purchasers, and the manner of purchasing.

Another significant citation was Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449. In this case, the court held that phonetic similarity could be sufficient to establish infringement or passing off, particularly where the overall impression conveyed by the marks is similar. This was particularly relevant in the present case because the court had to evaluate the phonetic identity of “Imperial Blue” and “Imperial Gold.”

The plaintiff also cited F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062. In that case, the court observed that ordinary consumers are not expected to have a perfect recollection of trademarks and that decisions must consider the overall impression formed in the mind of the average purchaser. This supported the plaintiff’s argument that even subtle similarities could lead to deception, especially when products are marketed to the same consumer base and sold through identical channels.

Each of these cases helped the court affirm that trademark protection is not limited to exact replicas and extends to cases where there is a likelihood of confusion or association due to visual, structural, or phonetic similarity.

Reasoning and Analysis by the Court

Justice C. Hari Shankar noted that the plaintiff was the registered proprietor of the mark “Imperial Blue” and had extensively used the mark over a long period, thus establishing both statutory and common law rights. The court held that the plaintiff had established a strong prima facie case that the word “Imperial” had become a distinctive identifier of its brand. Even if “Imperial” was a dictionary word, the long-standing and exclusive association with “Imperial Blue” had imbued it with a secondary meaning.

Upon examining the packaging of “Imperial Gold,” the court found striking visual and structural similarities with “Imperial Blue.” These included the use of blue and gold colors, identical font styles, label layout, and overall trade dress. The judge held that the defendants’ adoption of such elements could not be considered accidental or bona fide. The visual similarity, combined with phonetic overlap, created a high probability of confusion in the minds of consumers.

The court observed that trademark infringement does not require proof of actual confusion; a likelihood of confusion is sufficient. Moreover, in passing off cases, even without registration, goodwill and reputation must be protected from misappropriation. The balance of convenience favored the plaintiff as the brand was well-established, whereas the defendants’ product had been recently launched. The potential for irreparable harm to the plaintiff’s goodwill outweighed the commercial loss to the defendants. The court emphasized that where a mark has acquired distinctiveness and is associated with a particular source, it deserves strong protection, particularly against competitors attempting to trade upon its goodwill.

Final Decision

The Delhi High Court allowed the plaintiff’s application for interim injunction and restrained the defendants from manufacturing, selling, or advertising any whisky product under the name “Imperial Gold” or any other name that was deceptively similar to “Imperial Blue.” The injunction extended to the trade dress and packaging elements that resembled those of the plaintiff’s product. The order will remain in effect until the final adjudication of the suit.

Law Settled in This Case

This case reaffirmed that:A common or dictionary word can become distinctive and monopolizable if it acquires secondary meaning through prolonged and exclusive use. Trademark protection extends not only to the name but also to the visual elements such as color schemes, bottle shapes, and trade dress. In assessing deceptive similarity, the court considers phonetic, visual, and structural resemblance, along with the overall commercial impression. Even in interim stages, courts can restrain infringing use where the mark enjoys goodwill and a strong prima facie case is made out. The law favors preventing confusion rather than remedying it post facto.

Case Title: Pernod Ricard India Private Limited Vs A B Sugars Limited & Another

Date of Order: 31st October 2023

Case Number: CS(COMM) 789/2023

Neutral Citation: 2023:DHC:7749

Court: High Court of Delhi

Presiding Judge: Hon’ble Mr. Justice C. Hari Shankar

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Torrent Pharmaceuticals Ltd. vs. Indorbit Pharmaceuticals P. Ltd.

Case Title: Torrent Pharmaceuticals Ltd. vs. Indorbit Pharmaceuticals P. Ltd.:Case No.: CS(COMM) 912/2024: 2025:DHC:3758:Date of Order: May 14, 2025:Court: High Court of Delhi:Judge: Hon'ble Mr. Justice Saurabh Banerjee

Facts: Torrent Pharmaceuticals claimed that Indorbit Pharmaceuticals adopted a trade dress for its product ORBITCAL-500 that was deceptively similar to Torrent's SHELCAL-500 label and packaging used for calcium and vitamin D3 supplements. Torrent asserted that it had acquired rights to its trade dress through an assignment and had applied for trademark registration. The defendant’s packaging was noticed in the market in September 2024, leading Torrent to file a suit for infringement and passing off, seeking a permanent injunction.

Procedural Details: Torrent filed the suit and obtained an ex parte ad interim injunction. The defendants neither appeared nor filed a written statement despite service, leading to their rights being closed and the defendants being proceeded against ex parte. Torrent then moved for a decree under Order VIII Rule 10 CPC, based on the defendants’ failure to contest the case and the similarity of packaging.

Issue: The primary issue was whether the court could pass a decree under Order VIII Rule 10 CPC in favor of Torrent, primarily based on the allegedly similar trade dress, without full trial evidence, considering the provisions and limitations under the CPC, especially given the disputed questions of fact regarding the adoption and usage of the trade dress.

Decision: The court rejected Torrent's application for a decree under Order VIII Rule 10 CPC at this stage. It observed that Torrent failed to establish with sufficient evidence that it was the prior adopter and user of the new trade dress before the defendant. The court emphasized that the threshold for granting such a decree was high and required that Torrent prove its case through evidence, not merely on the basis of pleadings or the absence of defense. Since the case involved disputed facts and the defendants had not entered appearance, the court held that trial was necessary for a proper adjudication.

The Foundry Visionmongers Limited vs. Singarajan VFX Private Limited

Case Title: The Foundry Visionmongers Limited vs. Singarajan VFX Private Limited & Anr. Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal Case No.: CS(COMM) 461/2022 Date of Order: 05 May 2025 Neutral Citation:2025:DHC:3758

Fact:

The plaintiff, The Foundry Visionmongers Limited, a UK-based company specializing in VFX and image processing software, owns the copyright of its flagship software, NUKE. The software is widely used globally and in India, authorized for sale by its exclusive distributor, Ark Infosolutions. The defendants, Singarajan VFX Private Limited and its director, allegedly used unauthorized cracked or pirated versions of NUKE in their computer systems. Evidence showed infringements across multiple computers, including files and usage reports, despite the defendants' approach to buy licenses and subsequent default.

Procedural History:

The plaintiff filed a suit for permanent injunction and damages in July 2022. An ex-parte interim injunction was granted and later made absolute. The defendants did not participate in the proceedings despite service and an interim injunction, leading to proceedings ex-parte. Evidence was led by the plaintiff, including reports from a Local Commissioner confirming unauthorized use of the plaintiff’s software.

Issue:

Whether the defendants infringed the plaintiff’s copyright by using unauthorized versions of NUKE software and whether the plaintiff is entitled to damages and injunction.

Decision:

The Court found that the defendants infringed the plaintiff’s copyright in the NUKE software. They used unauthorized versions on multiple computers, gaining unlawful benefits, which resulted in copyright infringement. Consequently, the Court ordered a decree for damages of Rs. 22,60,895, and awarded costs of approximately Rs. 6,55,108. Additionally, costs in the sum of Rs. 5,00,000 were awarded to the plaintiff. The Court also granted a permanent injunction against the defendants.

Sun India Pharmacy Pvt. Ltd. vs. Hyeto Herbals Private Limited

Case Title: Sun India Pharmacy Pvt. Ltd. vs. Hyeto Herbals Private Limited Case No.: CS(COMM) 381/2020 Date of Order: 7th May 2025 Neutral Citation: [2025:DHC:3623] Name of Court: High Court of Delhi Name of Judge: Hon'ble Mr. Justice Amit Bansal

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Facts:

Sun India Pharmacy (plaintiff), a well-established manufacturer and seller of Ayurvedic and pharmaceutical products under the mark “Sun India,” alleges that Hyeto Herbals (defendant) has copied its trademark, packaging, and trade dress, leading to consumer confusion and trademark infringement. The plaintiff claims long-standing use since 2002-2004, extensive sales, and goodwill in India. The defendant was found to have used deceptively similar packaging and applied for a similar trademark after promising not to do so.

Procedural Details:

• The suit was filed seeking permanent injunction against infringement of trademarks and copyright, damages, and costs.
• An ex-parte ad interim stay/order was granted on 16th September 2020.
• Multiple attempts at mediation were made but were unsuccessful.
• The court heard the matter on 21st February 2025, with evidence recorded.
• The defendant initially stopped manufacturing but later resumed using similar branding, prompting the suit.
• On 3rd May 2023, the court made the interim injunction absolute.
• The case was finally decided on 7th May 2025.

Issue:

The key legal issues were whether the defendant's use of similar marks and trade dress constituted infringement of registered trademarks, passing off, and copyright violations, and whether damages and costs should be awarded due to the defendant's dishonest conduct.

Decision:

The court held in favor of the plaintiff, reiterating that the defendant's use of deceptively similar packaging and marks was dishonest and violated the plaintiff’s rights. The court awarded damages of Rs. 5,00,000, granted a permanent injunction restraining the defendant from infringing upon the plaintiff’s trademarks, and imposed costs and aggravated damages due to the defendant's misconduct.

Ramway Foods Limited Vs. Rajendra Sharma

Case Title:M/S Ramway Foods Limited vs. Rajendra Sharma & Anr.: Date of Order:7th May 2025: Case Number:CS(COMM) 182/2023:Neutral Citation: 2025:DHC:3624:Name of Court:High Court of Delhi: Name of Judge:2025:DHC:3624: Hon'ble Mr. Justice Amit Bansal

Facts:

Ramway Foods Limited, engaged in manufacturing and trading in various food items under the 'DOUBLE TAALA' mark since 2011, alleged that the defendants adopted and used deceptively similar marks and trade dress, causing confusion and damage to Ramway's reputation and goodwill. The defendants allegedly copied distinctive elements of Ramway’s label, including words like "ALIGARH," "7 Levers," and the initials "RF."

Procedural Details:

The suit was filed seeking, among other reliefs, permanent injunction, damages, and costs.An ex-parte ad interim injunction was granted on 11th April 2023.The defendants did not file a timely written statement; their application for condonation of delay was dismissed.The defendants' written statement was eventually taken off record, and they were proceeded against ex-parte.The court referred the case for mediation, but the efforts failed. The defendants did not participate further after service.

Issue:

Whether the defendants’ use of marks and labels was deceptive, infringing Ramway’s trademarks and copyright, thereby constituting passing off and infringement under the law.

Decision:

The court held that the defendants had dishonestly adopted and used deceptively similar marks, causing confusion and infringing Ramway’s rights. The court found the defendants liable for trademark infringement, passing off, and copyright infringement, and awarded damages of Rs. 5,00,000 along with costs. The court also granted a permanent injunction restraining the defendants from infringing Ramway's trademarks and copyright.

Romil Gupta Vs. Registrar of Trade Mark

Case Title:Romil Gupta Trading as Sohan Lal Gupta vs. Registrar of Trade Marks & Ors.: Court:High Court of Delhi: Date of Order: May 14, 2025:Case Number:C.A.(COMM.IPD-TM) 1/2023:Neutral Citation: 2025:DHC:3679: Name of Judge:Hon’ble Mr. Justice Amit Bansal

Facts:

The appellant, Romil Gupta, engaged in manufacturing and trading self-tapping metal screws, filed a trademark application in Class 6 on October 30, 2018, claiming user since February 27, 2013. Due to a clerical error, the applied mark was different from the intended subject mark, but the appellant sought to correct this error by amending the application. The respondent (Registrar of Trade Marks) initiated proceedings, alleging “substantial alteration” of the mark, and issued a notice under Section 57(4) of the Trade Marks Act, 1999, without providing the mandated minimum one-month notice. Subsequently, an order was passed canceling the registration of the trade mark.

Procedural Details:

• The respondent issued a notice on October 31, 2022, invoking Section 57(4), but without adhering to the prescribed notice period as mandated by Rule 100 of the Trade Marks Rules, 2017.

• The appellant attended a hearing scheduled on November 17, 2022.

• The Registrar passed the impugned order on December 15, 2022, canceling the trademark registration.

• The appellant challenged this order in the present appeal filed under Section 91.

• The Court stayed the impugned order on January 25, 2023.
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Issues:

• Whether the Registrar of Trade Marks rightly invoked Section 57(4) based on a complaint, or if procedural violations (not adhering to the notice period) nullify the proceedings.

• Whether the amendment sought by the appellant constituted a “substantial alteration” in the mark, justifying proceedings under Section 57.

• Whether the notice issued was compliant with statutory requirements under Rule 100 and Section 57(4).

• If procedural irregularities invalidated the cancellation order.

Decision:

The Court found that:

• The notice issued under Section 57(4) did not comply with the mandatory minimum notice period of one month, violating the principles of natural justice.

• The proceedings were initiated based on a complaint and not sua motu, but the procedural rules were not properly followed.

• The order of cancellation was therefore unsustainable and was set aside.

• The Court emphasized adherence to statutory procedures and upheld the appellant’s right to proper notice.

Consequently, the cancellation order was quashed, and the appeal was allowed.

Vishal Gupta & Ors. Vs. Rahul Bansal

Case Title: Vishal Gupta & Ors. v. Rahul Bansal Date of Order: 8th May 2025 Case Number: FAO (COMM) 103/2025 Neutral Citation: 2025:DHC:3685-DB Court Name: High Court of Delhi Presiding Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

Fact

The case concerns a dispute over the use of trademarks and labels related to edible oils by the parties. The respondent-plaintiff (Rahul Bansal) filed a suit against the appellants (Vishal Gupta & Ors.) alleging infringement of unregistered trademarks and copyright labels used on edible oils. The respondent claimed prior use of the name "OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI" and sought an injunction against the appellants for using similar marks/trademarks.

Procedural Details

The Commercial Court issued an order restraining the appellants from dealing with edible oils under the names "OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI," based on the perceived similarity to the respondent’s unregistered trademark "MATA AMAR SHAKTI" and the copyright of the label. The appellants appealed that order. The High Court is now reviewing the legality of the injunction, remanding the matter for a de novo review of the application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code.

Issue

The core issue is whether the injunction restraining the appellants from using or dealing in edible oils under the similar marks was legally justified, especially considering the respondent’s unregistered trademark and copyright, and whether the law applicable to trademark infringement or passing off was correctly applied.

Decision

The Court noted a fundamental error in the Commercial Court’s order, particularly that the injunction was granted based on unregistered trademarks. The High Court quashed and set aside the impugned order concerning the application under Order XXXIX Rules 1 and 2 of the CPC, remanding it for a fresh, lawful consideration. The court clarified that the law of passing off and the principles of trade mark law require careful evaluation of prior user, goodwill, and the nature of misrepresentation, especially when trademarks are unregistered.

Mankind Pharma Limited vs. Zhejiang Yige Enterprise

Case Title: Mankind Pharma Limited vs. Zhejiang Yige Enterprise Management Group Co. Ltd. Case No.: C.A.(COMM.IPD-TM) 2/2024 Date of Order: May 14, 2025 Court: High Court of Delhi Judge: Hon’ble Justice Saurabh Banerjee Neutral Citation:2025:DHC:3706

Facts:

Mankind Pharma Limited, an established pharmaceutical company, has been using the trademark "FLORA" in India since 1995, and obtained registration for it in 2007 for pharmaceutical preparations. Zhejiang Yige Enterprise Management Group Co. Ltd. applied for registration of the mark "FLORASIS" in Class 5 in India in August 2019, for sanitary and health-related products, on a "proposed to be used" basis. Mankind Pharma opposed this registration, alleging similarities to the well-known "FLORA" trademark, which could cause confusion among consumers.

Procedural Details:

• Mankind Pharma filed an opposition to the registration of "FLORASIS."
• The Deputy Registrar of Trade Marks dismissed the opposition, allowing the registration.
• Feeling aggrieved, Mankind Pharma filed an appeal before the High Court under Section 91 of the Trade Marks Act, 1999.
• The appellant argued that the registration was erroneously granted, citing prior use, similarity of marks, and likelihood of consumer confusion.
• Zhejiang Yige did not participate in the proceedings; the order was ex-parte against the respondent.

Issue:

Whether the registration of the mark "FLORASIS" by Zhejiang Yige, which is similar to the registered "FLORA" owned by Mankind Pharma, infringes prior rights and is likely to cause consumer confusion, thereby warranting its refusal under the Trade Marks Act.

Decision:

The High Court allowed the appeal, set aside the impugned order dated 29.05.2023, and directed the Registrar of Trade Marks to remove the registration of "FLORASIS" from the Register. The Court held that:

• The marks "FLORA" and "FLORASIS" are visually, phonetically, and structurally similar.
• The registration of "FLORASIS", despite some differences, was likely to create confusion and deceive the public.
• The prior use and reputation of "FLORA" favored the appellant's claim.
• Registration in other countries does not automatically entitle the respondent to register the same or similar marks in India.

The Court emphasized caution in the registration of marks, especially within the pharmaceutical industry, to avoid public confusion and protect consumer welfare.