LG Corporation Vs Intermarket Electroplasters (P) Ltd.

Under Section 20(c) CPC, the sale of allegedly infringing goods within a court’s territory constitutes a part of the cause of action

Introduction:In the intricate world of trademark litigation, the case of LG Corporation and Anr. Vs. Intermarket Electroplasters (P) Ltd. stands as a testament to the complexities of territorial jurisdiction in India. Decided on February 13, 2006, by the Delhi High Court, this dispute pits a global electronics giant against an Indian company, revolving around the pivotal question of where a legal battle over trademark infringement should be fought. With allegations of passing off and a skirmish over the court’s right to hear the case, this judgment illuminates the interplay between statutory provisions, judicial precedents, and the practical realities of commerce, offering a nuanced exploration of jurisdiction in civil suits.

Detailed Factual Background:LG Corporation, a renowned South Korean multinational, along with its co-plaintiff, initiated a lawsuit against Intermarket Electroplasters (P) Ltd., an Indian company, and other defendants. The crux of LG’s grievance was that Intermarket was allegedly passing off its goods as those of LG by using a deceptively similar trademark. 

LG asserted that this infringement violated its intellectual property rights, prompting a suit for relief in the Delhi High Court.LG’s plaint rested on three jurisdictional anchors: The filing and advertisement of its trademark registration application at the Trade Mark Registry in Delhi, The applicability of Section 134 of the Trade Marks Act, 1999, and the sale of Intermarket’s allegedly infringing goods within Delhi. Specifically, LG pointed to invoices  evidencing sales of these goods to parties in Delhi, asserting that this commercial activity within the city triggered a cause of action sufficient to vest jurisdiction in the Delhi High Court. Intermarket, a company incorporated under the Indian Companies Act with no branch office or agent in Delhi, contested the court’s jurisdiction. It argued that its operations were not based in Delhi, and thus, it neither resided nor carried on business there, challenging LG’s claim to anchor the suit in the capital.

Detailed Procedural Background:The legal proceedings commenced when LG filed its suit in the Delhi High Court, invoking the court’s jurisdiction based on the aforementioned grounds. Intermarket responded by filing an application (IA No. 258/06) under Order 7, Rule 11 of the Code of Civil Procedure (CPC), effectively seeking the return or rejection of the plaint under Order 7, Rule 10, arguing that the court lacked territorial jurisdiction. This application, also invoking the court’s inherent powers under Section 151 CPC, set the stage for a preliminary skirmish over venue.

Issues Involved in the Case:The central issue was whether the Delhi High Court possessed territorial jurisdiction to entertain LG’s suit? This hinged on interpreting Section 20 of the CPC, specifically whether the sale of allegedly infringing goods in Delhi constituted a part of the cause of action sufficient to anchor Jurisdiction under Section 20(c), given Intermarket’s lack of physical presence in the city.

Detailed Submission of Parties:LG’s counsel argued that the court’s jurisdiction was secured by the sale of Intermarket’s infringing goods in Delhi, as averred in paragraph 30 of the plaint: "the impugned goods of the defendants are also selling in Delhi, though without issuance of supporting invoices." They bolstered this with Intermarket’s own documents—invoices showing sales to Delhi parties—asserting that this commercial activity gave rise to a cause of action within the court’s territorial ambit. LG emphasized that jurisdiction under Section 20(c) CPC extends to where any part of the cause of action arises, and the sale of goods directly tied to the passing-off claim satisfied this criterion.

Intermarket’s counsel countered that the company, lacking a branch office or agent in Delhi, neither resided nor carried on business there, as required under Section 20(a) CPC. They relied on the Supreme Court’s ruling in Kusum Ingots & Alloys Ltd. vs. Union of India to argue that mere sales did not equate to carrying on business, drawing parallels to Section 20(c)’s interpretation in writ jurisdiction. They further contended that even if a cause of action arose, the court could discretionarily decline jurisdiction under the doctrine of forum conveniens, urging the suit’s dismissal or transfer.

Detailed Discussion on Judgments :Cited by Parties and Their ContextThe parties leaned on key judicial precedents to fortify their positions: 

Dhodha House vs. S.K. Maingi, (2006) 9 SCC 41: Cited by both sides, this Supreme Court ruling was pivotal. LG conceded it negated jurisdiction based on the Trade Mark Registry’s location and Section 134(2) of the Trade Marks Act, 1999, which provides an additional forum only where the plaintiff resides or works for gain. Intermarket used it to argue that statutory jurisdiction must be explicitly conferred, reinforcing their stance that Delhi lacked a basis absent their business presence. The court clarified that Section 20 CPC governs trademark suits unless overridden by specific provisions, setting the stage for a cause-of-action analysis.

Kusum Ingots & Alloys Ltd. vs. Union of India, (2004) 6 SCC 254: Intermarket relied on this Supreme Court decision, which interpreted jurisdiction under Article 226 of the Constitution by reference to Section 20(c) CPC. The court held that a small part of the cause of action within a High Court’s territory does not compel adjudication, allowing discretionary refusal under forum conveniens. Intermarket argued this principle applied to suits, suggesting Delhi could decline jurisdiction despite sales.

Morgan Stanley Mutual Fund vs. Kartick Das, (1994) 4 SCC 225: Supreme Court case established that a corporation’s residence is typically its registered office, supporting Intermarket’s claim of non-residence in Delhi absent a local office.

Pfizer Products, Inc. vs. Rajesh Chopra and Ors., CS (OS) No. 311/2005 (Delhi High Court, decided February 8, 2006): LG’s counsel noted this recent Delhi High Court ruling which diverged from Dhodha House by suggesting that a trademark application in Delhi could confer jurisdiction. Though LG conceded this point, the citation highlighted evolving judicial thought, though not decisive here.

Detailed Reasoning and Analysis of Judge:

The court affirmed that Section 20 CPC governs territorial jurisdiction in trademark suits, absent overriding statutory provisions. Under Section 20(a), the agreed with Intermarket that it neither resided nor carried on business in Delhi, as it lacked a local office or agent, aligning with Morgan Stanley and Dhodha House. The explanation to Section 20 deems a corporation’s business location as its principal or subordinate office, neither of which Intermarket had in Delhi.

Turning to Section 20(c), the court focused on whether part of the cause of action arose in Delhi due to the sale of infringing goods. The court upheld LG’s averment in the plaint, supported by invoices, as sufficient at the preliminary stage, noting that jurisdiction hinges on pleadings, not their truth, per established law. The sale, he reasoned, was not incidental but central to the passing-off claim, giving LG a legal right to sue in Delhi. This nexus distinguished the case from mere peripheral activity, grounding jurisdiction firmly in the city.Addressing Intermarket’s reliance on Kusum Ingots, the court distinguished writ jurisdiction’s discretionary nature under Article 226 from a suit’s mandatory adjudication under CPC. In suits, he held, jurisdiction is not discretionary once a cause of action is established—there’s no room for forum conveniens to override a plaintiff’s choice of a competent court. The court dismissed the discretionary refusal argument as inapplicable, reinforcing that sales in Delhi sufficed. The court also acknowledged the Pfizer ruling but sidestepped it, given LG’s concession on registry-based jurisdiction, focusing solely on the sales ground. 

Final Decision:The Delhi High Court rejected Intermarket’s application under Order 7, Rule 11 CPC, affirming its territorial jurisdiction to hear the suit. 

Law Settled in This Case:The judgment clarified that: (1) Under Section 20(c) CPC, the sale of allegedly infringing goods within a court’s territory constitutes a part of the cause of action, conferring jurisdiction in trademark passing-off suits, irrespective of the defendant’s residence or business presence; (2) Unlike writ jurisdiction, courts in civil suits cannot discretionarily refuse jurisdiction based on forum conveniens when a cause of action is established; (3) Post-Dhodha House, trademark registry location or Section 134(2) does not automatically grant jurisdiction unless the plaintiff resides or works there.

Case Title: LG Corporation Vs Intermarket Electroplasters (P) Ltd.

Date of Order: February 13, 2006

Case No.:CS (OS) 1359 of 2004

Name of Court: Delhi High Court

Name of Judge: Hon'ble Justice Shri A.K. Sikri

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

Mocemsa Care Vs. The Registrar of Trade Marks

Factual Background: Mocemsa Care filed a trademark application (No. 4852344) on February 6, 2021, for a device mark under Class 3, covering beauty, skincare, and home fragrance products. The applicant claimed use since November 20, 2020, and submitted a supporting invoice. The Registrar of Trademarks refused registration under Section 9(1)(a) of the Trade Marks Act, 1999, citing a lack of distinctiveness.

Procedural Background:The applicant replied to the examination report and attended a hearing on December 27, 2023. Despite these efforts, the Registrar refused registration on January 1, 2024, stating that the mark was composed of common words and lacked distinctiveness. Aggrieved, the applicant appealed under Section 91 of the Trade Marks Act, 1999.

Reasoning of the Court:The court found that the Registrar erred in treating the mark as a mere combination of common words while ignoring its stylized composite form.The court held that distinctiveness should be judged holistically rather than by dissecting the mark into its components.The Registrar's rejection based on the applicant submitting only one invoice was deemed unfair, as the claimed prior use was only for a short period (one month), limiting the number of invoices available.

Decision:

The court set aside the impugned order, directed the Trade Marks Registry to advertise the application within three months, and allowed the application to proceed to opposition. Any objections would be decided on their own merits.

Case Title: Mocemsa Care Vs. The Registrar of Trade Marks

Date of Order: March 26, 2025

Case Number: C.A. (COMM.IPD-TM) 20/2024

Neutral Citation: 2025:DHC:2199

Court: Delhi High Court

Hon’ble Judge:Hon'ble Justice Amit Bansal

Bardhaman Agro Products Private Limited Vs. Kiran Mallik

Factual Background:

Bardhaman Agro Products I Private Limited (Petitioner), a rice manufacturer since 2001, holds the registered trademark "ROSE" with a rose device (Class 30, registered 2005). In March 2024, it discovered Kiran Mallik (Respondent) using "MAMU ROSE" with a similar rose device for rice, registered in 2019 with a claimed use since 2016. The Petitioner alleges infringement and passing off, citing deceptive similarity and intent to exploit its goodwill.

Procedural Background:

The suit (IP-COM/20/2024) was filed in the High Court at Calcutta, with two applications: GA-COM/1/2024 for interim relief and GA-COM/2/2024 for plaint rejection. Both were heard together by consent, with judgment delivered on March 28, 2025.

Reasoning of Court:

The court found the Petitioner’s "ROSE" mark, used since 2001 and registered in 2005, visually, phonetically, and structurally similar to the Respondent’s "MAMU ROSE" (registered 2019). The rose device imitation infringed the Petitioner’s copyright and trademark, risking consumer confusion in identical trade channels. The Respondent’s adoption was deemed dishonest, lacking justification, and aimed at exploiting the Petitioner’s goodwill. Prior use trumped registration, and jurisdiction was upheld based on sales within Calcutta. A prima facie case, balance of convenience, and irreparable harm favored the Petitioner.

Decision:

GA-COM/1/2024 was allowed, granting an injunction against the Respondent’s use of "MAMU ROSE." GA-COM/2/2024 was dismissed, upholding the suit’s maintainability.

Case Title:Bardhaman Agro Products Private Limited Vs. Kiran Mallik

Date of Order: March 28, 2025

Case Number: IP-COM/20/2024 

Name of Court High Court at Calcutta 

-Name of Hon’ble Judge: Justice Ravi Krishan Kapur

Psychotropic India Limited Vs. Meridian Medicare Ltd.

Factual Background:

Psychotropic India Limited (Petitioner) and Meridian Medicare Ltd. (Respondent No. 1) are pharmaceutical companies clashing over the trademark "TROMA." The Petitioner, using "TROMANIL" since 1997 and variants like "TROMA PLUS" and "TROMAZIN" later, sought cancellation of Respondent No. 1’s "TROMA" trademark (Registration No. 1383114, Class 05), alleging prior use and deceptive similarity. Respondent No. 1 claimed use since 2003-2004, asserting its mark’s validity and market acceptance.

Procedural Background:

Filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999, the petition (C.O. (COMM.IPD-TM) 370/2021) was heard by the High Court of Delhi. Advocates for both sides presented arguments, supported by invoices and trademark records. The court issued its order on March 6, 2025, with corrections released on March 31, 2025.

Reasoning of Court:

The court found the Petitioner to be the prior user of "TROMA"-based marks since 1997, supported by invoices and sales data showing extensive goodwill. Respondent No. 1’s "TROMA" was deemed deceptively similar, copying the dominant element of Petitioner’s marks, likely causing consumer confusion. The court rejected Respondent No. 1’s claim of use since 2004, citing forged invoices (e.g., mentioning "GST" pre-2017 and a 2011-registered website). Citing precedents, the court emphasized prior use, phonetic similarity, and the dishonesty of adoption, concluding Respondent No. 1’s registration violated the Trade Marks Act.

Decision:

The petition was allowed, canceling Respondent No. 1’s trademark "TROMA" (No. 1383114, Class 05). The Registrar of Trade Marks was directed to remove it from the Register, with the order emailed for compliance.

Case Title: Psychotropic India Limited Vs. Meridian Medicare Ltd. 

Date of Order: March 6, 2025 

Case Number: C.O. (COMM.IPD-TM) 370/2021

Neutral Citation: 2025:DHC:2161

-Name of Court: High Court of Delhi 

Name of Hon’ble Judge: Ms. Justice Mini Pushkarna

Manas Life Style Vs Viraj Harjai

Factual Background:

The petitioner, Manash Lifestyle Private Limited, is the proprietor of the well-known trademark "PURPLLE", which has been in use since 2011 for cosmetics and skincare products. The respondent, Doyita Dreams, sought to register and use the trademark "PURPLLE TREE", which incorporates the petitioner’s mark. The petitioner contended that the respondent's mark was deceptively similar, leading to confusion among consumers.

Procedural Background:

The petitioner filed an opposition before the Trade Marks Registry against the respondent’s application, citing prior use and reputation. The petitioner also secured ex-parte ad-interim injunctions in previous cases involving similar marks (e.g., CS (COMM) 704/2024 and CS (COMM) 143/2024). Despite service of notice, the respondent failed to appear in court, leading to an ex-parte hearing.

Reasoning of the Court:The court noted that the entire "PURPLLE" mark was adopted by the respondent, with only the addition of "TREE," which was not a distinguishing factor. Given the petitioner’s long-standing reputation, the court concluded that the respondent's adoption could not be considered bona fide.The court emphasized that mere registration in a different class does not validate dishonest adoption.

Decision:

The court held that:  The respondent's "PURPLLE TREE" mark was confusingly and deceptively similar to the petitioner’s "PURPLLE" mark. The adoption of the mark was dishonest and likely to mislead consumers. The respondent’s registration was ordered to be rectified and removed from the Trademark Register.

Case Title: Manas Life Style Vs Viraj Harjai

Date of Order: 10.03.2025

Case Number: C.O. (COMM.IPD-TM) 212/2024

Neutral Citation: 2025:DHC:2158

Court: Delhi High Court

Hon'ble Judge:Hon'ble Justice Mini Pushkarna,H.J.

Rajani Products Vs. Bhagwan Das Harwani

Factual Background

Rajani Products, a Kota-based company, has held the registered trademark "Swastik" with its associated label since 1983 for edible oils. The company alleged that respondents Bhagwan Das Harwani (Parwati Oil Mill) and Karishma Trading Corporation infringed this trademark by using a deceptively similar mark, "Shree Parwati Swastik," causing business losses.

Procedural Background

Rajani Products filed a civil suit (No. 76/2019) under the Trade Marks Act, 1999, before the Additional District Judge No. 3, Kota, seeking an injunction. Their application for temporary relief under Order 39 Rules 1 and 2 CPC was rejected on 06.02.2020. Aggrieved, they appealed to the Rajasthan High Court (Jaipur Bench) via S.B. Civil Miscellaneous Appeal No. 2198/2020.

Provisions of Law Referred and Their Context

• Order 43 Rule 1(r) CPC: Governs appeals against orders rejecting temporary injunctions, forming the basis of this appeal.
• Order 39 Rules 1 and 2 CPC: Provides for interim injunctions to prevent irreparable harm, invoked by the appellant to restrain the respondents.
• Trade Marks Act, 1999: Protects registered trademarks from infringement, central to the appellant’s claim of exclusive rights over "Swastik."

Judgments Referred with Complete Citation and Context

• S.B. Civil Misc. Appeal No. 2925/2022, Rajasthan High Court, Order dated 06.11.2024: In a parallel case involving Shanker Oil Mill, the same trademark dispute led to an injunction granted by Additional District Judge No. 2, Kota (30.08.2022), upheld by the High Court. This precedent was cited to highlight inconsistent rulings on identical issues.

Reasoning of Court

The Court found the respondents’ trademark "Shree Parwati Swastik" visually, phonetically, and structurally similar to the appellant’s registered "Swastik" mark. It noted the appellant’s long-standing use since 1983 and the respondents’ failure to appear despite notice. Referencing the Shanker Oil Mill case, the Court emphasized judicial consistency, concluding that a prima facie case of trademark infringement existed, warranting interim relief to prevent irreparable harm and protect public interest.

Decision

The High Court granted an ad-interim injunction, restraining the respondents from using the "Swastik" trademark and label until the suit’s final disposal, overturning the lower court’s rejection.

Case Details

• Case Title: Rajani Products Vs. Bhagwan Das Harwani & Anr.
• Date of Order: 19 March 2025
• Case Number: S.B. Civil Miscellaneous Appeal No. 2198/2020
• Neutral Citation: [2025:RJ-JP:12399]
• Name of Court: High Court of Judicature for Rajasthan, Jaipur Bench
• Name of Hon’ble Judge: Justice Anoop Kumar Dhand

Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs

Features with identical functionality may negate novelty if fully anticipated by prior art.

Introduction:

This case involves a legal challenge to a patent refusal by the Assistant Controller of Patent and Designs under the Patents Act, 1970, adjudicated by the Bombay High Court in its Commercial Division. The petitioners, Vishal Prafulsingh Solanke and another, sought to quash an order dated 14th June 2023 that rejected their patent application (No. 879/MUM/2015) for an invention titled "Thread Type Tamper Evident Security Seal." The refusal was based on pre-grant opposition under Section 25(1)(b) (lack of novelty) and Section 25(1)(e) (lack of inventive step) of the Act. The judgment, delivered on 27th March 2025, explores critical issues of patent law, including the standards for novelty, inventive step, and the role of prior art and common general knowledge in patent adjudication.

Detailed Factual Background:

The petitioners filed a patent application on 17th March 2015 for a tamper-evident security seal designed to prevent tampering in applications such as electricity boards and rickshaw meters. The invention featured a thread-type seal made of polycarbonate material with an embedded wire for enhanced tamper evidence. The application was published in the Patents Journal, triggering a pre-grant opposition by Respondent No. 3 on 16th January 2018. The Assistant Controller of Patent and Designs issued a First Examination Report (FER) on 30th April 2020, to which the petitioners responded on 24th December 2020, addressing both the FER and the opposition.

The invention was intended to address practical issues in prior art seals, such as wastage due to inadvertent rotation and ease of tampering. Unlike prior seals, the petitioners’ design allowed correction of accidental rotations and reuse after a 180-degree rotation, enhancing user-friendliness and cost efficiency. However, the Assistant Controller, after a hearing on 2nd May 2023 and subsequent written submissions, refused the application on 14th June 2023, citing lack of novelty and inventive step based on prior art documents, including US5419599 and US6390519.

Detailed Procedural Background:

The petitioners filed Patent Application No. 879/MUM/2015 on 17th March 2015. The application was published in the Patents Journal. Respondent No. 3 filed a pre-grant opposition on 16th January 2018 under Section 25(1) of the Patents Act. The Assistant Controller issued a First Examination Report (FER) on 30th April 2020. The petitioners’ agent filed replies on 24th December 2020 to both the FER and the opposition. A pre-grant opposition hearing occurred on 2nd May 2023, where amendments were suggested. The petitioners submitted amended specifications post-hearing. On 9th May 2023, the Assistant Controller issued an interim order directing written submissions. The petitioners filed their submissions on 16th May 2023, and Respondent No. 3 filed theirs on 31st May 2023. On 14th June 2023, the Assistant Controller refused the patent under Sections 25(1)(b) and 25(1)(e). The petitioners filed a Commercial Miscellaneous Petition (L) No. 25369 of 2023 on 11th September 2023 under Section 117A of the Patents Act before the Bombay High Court. The judgment was reserved on 28th November 2024 and pronounced on 27th March 2025.

Issues Involved in the Case:

whether the petitioners’ invention lacked novelty under Section 25(1)(b) in light of prior art US5419599? whether it lacked an inventive step under Section 25(1)(e) when compared to prior art and common general knowledge? whether the Assistant Controller’s findings on novelty and inventive step were legally inconsistent or unsupported by prior art analysis? whether the impugned order adequately addressed the petitioners’ submissions and adhered to principles of natural justice? and whether the refusal order provided sufficient reasoning, particularly regarding technical advancement and economic effect?

Petitioners’ Submissions:

The petitioners argued that their invention prevents tampering in critical applications, featuring a unique thread-type seal with a wire moulded inside, distinguishing it from prior art (D1: WO2006000370A1 and D2: US6390519B1). They contended that the impugned order misapplied Sections 25(1)(b) and 25(1)(e), ignoring differences highlighted in diagrams and submissions. Citing Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023), they asserted that novelty requires prior art to disclose the entire invention, noting that the order itself acknowledged a novel feature (threads in cavity and insert) yet contradicted this by refusing the patent. On inventive step, they relied on Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022), arguing that the invention showed technical advancement (e.g., reusability) not obvious to a skilled person. They challenged the order’s lack of detailed analysis on obviousness or common general knowledge sources, referencing Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court). They sought to quash the impugned order and requested a reasoned reconsideration within 12 weeks.

Respondents’ Submissions:

Respondent Nos. 1 and 2, defended the refusal, asserting that a fair hearing was conducted with no procedural lapses. He argued that US5419599 anticipates all features of the invention, with its snap-fit mechanism equivalent to the threaded lock (paragraphs 18-19 of the impugned order). He contended that no surprising effect or economic advantage was demonstrated, citing Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court), which requires more than workshop improvements for patentability. He justified the use of US1911060A (background of US5419599) as common general knowledge, upheld in Agfa NV (supra). He emphasized that the pre-grant opposition (US5419599) and Sections 14-15 analysis (D1, D2) were distinct, and a single valid ground suffices for refusal, per Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court). He concluded that the impugned order was reasoned and warranted no interference.

Detailed Discussion on Judgments Cited by Parties:

Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023) was cited by the petitioners to argue that novelty and inventive step objections cannot stem from the same prior art. The court rejected this, finding that different prior arts (US5419599 for pre-grant, D1/D2 for Sections 14-15) were used, rendering the citation misplaced.

Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022) was relied upon by the petitioners to claim that technical advancement (reusability) satisfied the inventive step. The court found no such advancement, as the threaded lock was equivalent to US5419599’s features, negating the petitioners’ reliance.

Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court) was invoked by the petitioners to challenge the lack of detailed obviousness analysis, while the respondents justified citing prior art as common knowledge. The court upheld the use of US1911060A as common knowledge, finding no prohibition in citing prior art literature.

Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court) was cited by the respondents to argue that the invention was a mere workshop improvement. The court applied this to hold that the threaded lock lacked inventive step beyond known art.

Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court) was referenced by the respondents to assert that a single valid ground suffices for refusal. The court agreed, upholding the refusal under Section 25(1)(b) alone.

Mahesh Gupta v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 328 of 2022, Delhi High Court) supported the respondents’ inventive step analysis with common knowledge. It reinforced the court’s acceptance of US1911060A as a valid source.

Detailed Reasoning and Analysis of Judge :

The Court bifurcated the impugned order into two parts: paragraphs 12-23 (pre-grant opposition) and 24-31 (Sections 14-15), treating them as independent. On novelty under Section 25(1)(b), he found that US5419599 anticipated all features, with its snap-fit mechanism mechanically equivalent to the threaded lock. US1911060A’s disclosure further supported this as common knowledge, justifying refusal. For inventive step under Section 25(1)(e), even if novelty were contested, the threaded lock showed no technical advancement or economic effect, being obvious to a skilled person per US5419599 and US1911060A. The petitioners’ reliance on a novelty finding in Sections 14-15 (against D1/D2) did not override the pre-grant refusal (against US5419599), as the analyses were distinct. Legal precedents like Biswanath Prasad confirmed the need for more than workshop improvements, while Opentv Inc. validated that one ground suffices for refusal. The judge found no violation of natural justice, with the order addressing all contentions and substantiated by reasons. He concluded that the petitioners failed to demonstrate error in the refusal, warranting dismissal.

Final Decision:

The Commercial Miscellaneous Petition was dismissed on 27th March 2025, with no order as to costs, upholding the Assistant Controller’s refusal of Patent Application No. 879/MUM/2015.

Law Settled in This Case:

The case clarified that a patent refusal can stand on a single valid ground (e.g., lack of novelty), irrespective of other findings. It affirmed that disclosures in prior art backgrounds (e.g., US1911060A in US5419599) can constitute common general knowledge for inventive step analysis. It also established that Features with identical functionality (e.g., snap-fit vs. threaded lock) may negate novelty if fully anticipated by prior art.

Case Title: Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs 

Date of Order: 27th March 2025

Case No.: Commercial Miscellaneous Petition (L) No. 25369 of 2023

Neutral Citation: 2025:BHC-OS:4952

Name of Court: High Court Bombay

Name of Judge: Hon'ble Justice Shri R.I. Chagla J.

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

Madhu Food Products Vs. Surya Processed Food Pvt. Ltd.

Minor variations in trade dress or font size do not absolve a party from infringement if the overall commercial impression is deceptive

Introduction:

The case of Madhu Food Products v. Surya Processed Food Pvt. Ltd. revolves around trademark infringement and passing off concerning confectionery products. The dispute involves the respondent, Surya Processed Food Pvt. Ltd., which markets its products under the trademark HUNK, and the appellant, Madhu Food Products, which sells similar products under the mark HUNT. The core issue was whether the appellant’s use of the mark HUNT and its packaging was deceptively similar to the respondent’s trademark HUNK and trade dress, thereby misleading consumers and passing off its products as that of the respondent.

The Respondent’s Case:

Surya Processed Food Pvt. Ltd. (the respondent) is a company incorporated under the Companies Act, 1956, engaged in the manufacturing and marketing of food items such as biscuits, wafers, chocolates, cookies, and cakes. The respondent claims to have coined the trademark HUNK in 2007 and applied for its registration on December 28, 2007, in Class 30 under a "proposed to be used" basis.The respondent commenced commercial usage of the mark HUNK in 2018 and claims continuous use since then.The respondent invested significantly in advertising, amounting to ₹74.71 crores over five years, and achieved a turnover of ₹55.76 crores during the financial year 2022-23.The respondent alleged that the appellant was marketing its chocolate and caramel-coated wafer bars under the deceptively similar mark HUNT with a packaging that closely resembled the trade dress of HUNK.

The Appellant’s Case:Madhu Food Products (the appellant), a registered partnership firm, claimed to be engaged in producing world-class confectionery.The appellant stated that it adopted the mark CHOCO HUNT in 2018 for chocolates, confectionaries, and wafers.The mark CHOCO HUNT was registered under Class 30 with a proposed-to-be-used claim filed on October 27, 2018.The appellant argued that it used its mark honestly and denied copying the respondent’s packaging or trade dress.It claimed that its house brand was NEO, while the respondent used the brand PRIYA GOLD, thus making the products distinguishable.

Procedural Background:

The respondent filed CS(COMM) 195/2023 against the appellant in the Commercial Court, alleging trademark infringement, copyright infringement, and passing off.The respondent also filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking an interim injunction to restrain the appellant from using the trademark HUNT or any deceptively similar mark.The Commercial Court passed an interim order in favor of the respondent, granting the injunction and appointing a Local Commissioner to seize and prepare an inventory of the infringing goods.The appellant, aggrieved by the decision, filed an appeal (FAO (COMM) 157/2024) before the Delhi High Court, challenging the Commercial Court's order dated June 5, 2024.

Issues Involved:

Whether the appellant’s use of the mark HUNT was deceptively similar to the respondent’s mark HUNK and likely to cause confusion among consumers?

Appellant’s Submissions:

The appellant argued that it was the legitimate owner of the registered trademark CHOCO HUNT and that its mark was visually and phonetically different from HUNK.It contended that the Commercial Court erred in not considering that the respondent had suppressed material facts, such as the existence of the registered mark CHOCO HUNT.The appellant claimed that the similarity in packaging was merely due to the use of the color brown, which was common in the confectionery industry and could not be monopolized.It further argued that its use of the word CHOCO in small font was irrelevant and did not amount to infringement.

Respondent’s Submissions:

The respondent contended that it was the prior user of the mark HUNK and had extensively advertised and promoted the same.It argued that the appellant intentionally reduced the visibility of the word CHOCO in CHOCO HUNT, making HUNT the prominent mark, which created a likelihood of confusion.The respondent presented material, including advertisements featuring celebrities, to demonstrate the goodwill associated with HUNK.The respondent also submitted physical samples of both products, highlighting the similarity in packaging, trade dress, and overall commercial impression.

Discussion on Judgments Cited:

Wander Ltd. & Anr. v. Antox India (P) Ltd.: 1990 Supp SCC 727:The High Court referred to the principles laid down in this case to assess whether the interim injunction should be interfered with.The Supreme Court in Wander Ltd. held that appellate courts should not lightly interfere with discretionary orders passed by lower courts unless they are perverse or arbitrary.Applying this principle, the Delhi High Court held that the Commercial Court had correctly applied the law, and there was no reason to interfere with its discretion.

Reasoning and Analysis of the Judges:

Prima Facie Similarity:The Delhi High Court observed that the competing products' packaging, trade dress, and color scheme were strikingly similar.The word CHOCO in the appellant’s mark was displayed in an insignificant font, while HUNT was prominently featured, creating an overall impression of similarity with the respondent’s HUNK.Prior User Advantage:The court noted that the respondent was the prior user of the mark HUNK since July 2018, supported by invoices, while the appellant filed for its mark CHOCO HUNT in October 2018, indicating subsequent use.Misleading Trade Dress:The court held that the similarity in trade dress, including packaging color and design, created a likelihood of confusion, strengthening the case of passing off.No Suppression of Facts:The court rejected the appellant’s claim of suppression of facts, stating that the respondent's failure to search for CHOCO HUNT was not misleading or fraudulent. The court found no reason to disbelieve the respondent’s claim of conducting a trademark search.

Final Decision:The Delhi High Court dismissed the appellant's appeal, upholding the Commercial Court's injunction order. The appellant was ordered to pay ₹50,000 in costs.

Law Settled in the Case: The judgment reinforces the principle that prior use of a trademark holds significant weight in determining infringement disputes.It clarifies that minor variations in trade dress or font size do not absolve a party from infringement if the overall commercial impression is deceptive.It reiterates that appellate courts should not interfere with the discretion of lower courts unless the orders are arbitrary or capricious.

Case Title: Madhu Food Products Vs. Surya Processed Food Pvt. Ltd.

Date of Order: August 8, 2024

Case No.: FAO (COMM) 157/2024

Neutral Citation: 2024:DHC:6118-DB

Court: Delhi High Court

Judges: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Sachin Datta

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

OFB Tech Private Limited & Ors. v. Slowform Media Pvt. Ltd. & Ors.

Hyperlinked Harm: Navigating Defamation in the Digital Age"

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Factual Background

The plaintiffs, comprising individuals and companies (OFB Tech Private Limited and Oxyzo Financial Services Ltd.), filed a defamation suit against Slowform Media Pvt. Ltd. and its associates over an article published on 17.05.2023 titled "the work culture of OfBusiness does not like to talk about." This article, alleging a toxic work culture at OFB, was hyperlinked in subsequent articles, including one on 07.10.2024. The plaintiffs sought its removal, claiming reputational damage, while the defendants defended it as truthful journalism.

Procedural Background

The suit (CS(OS) 944/2024) was filed after an earlier suit (CS(OS) 825/2024) addressed the 07.10.2024 article, which was injuncted on 15.10.2024. In the present case, summons were issued on 29.11.2024, followed by applications: I.A. 2506/2025 (Order VII Rule 11 CPC) by defendants to reject the plaint, and I.A. 46557/2024 (Order XXXIX Rule 1 & 2 CPC) by plaintiffs for an injunction. Judgment was reserved on 20.02.2025 and pronounced on 24.03.2025.

Provisions of Law Referred and Their Context

• Order VII Rule 11 CPC: Defendants sought plaint rejection, arguing the suit was barred by limitation (filed beyond one year from 17.05.2023) and Order II Rule 2 (failure to raise in earlier suit).
• Order XXXIX Rule 1 & 2 CPC: Plaintiffs sought an interim injunction to restrain publication, citing irreparable harm.
• Order II Rule 2 CPC: Examined whether the current suit was barred due to overlap with the earlier suit.
• Article 19, Constitution of India: Defendants invoked freedom of speech to protect source anonymity and journalistic rights.

Judgments Referred with Complete Citation and Context

1. Dalip Singh v. Mehar Singh Rathee, (2004) 7 SCC 650: Cited by plaintiffs to argue distinct causes of action in separate suits.
2. K.A. Paul v. K. Natwar Singh & Ors., 2009 SCC OnLine Del 2382: Supported plaintiffs’ claim against misjoinder of causes.
3. Rathnavathi v. Kavita Ganashamdas, (2015) 5 SCC 223: Reinforced plaintiffs’ stance on separate remedies.
4. Pramod Kumar v. Zalak Singh, (2019) 6 SCC 621: Upheld plaintiffs’ right to file multiple suits.
5. Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co., (1997) 1 SCC 99: Plaintiffs argued continuing cause of action via hyperlinking.
6. Dahiben v. Arvindbhai Kalyanji Bhanusali, (2020) 7 SCC 366: Defined grounds for plaint rejection under Order VII Rule 11.
7. Sopan Sukhdeo Sable v. Asstt. Charity Commr., (2004) 3 SCC 137: Emphasized curbing frivolous litigation.
8. Hardesh Ores (P) Ltd. v. Hede & Co., (2007) 5 SCC 614: Stressed holistic plaint reading.
9. Azhar Hussain v. Rajiv Gandhi, 1986 Supp SCC 315: Highlighted preventing abortive litigation.
10. Saleem Bhai v. State of Maharashtra, (2003) 1 SCC 557: Allowed Order VII Rule 11 exercise at any stage.
11. Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., 2022 SCC OnLine SC 1068: Affirmed suo moto power under Order VII Rule 11.
12. Bloomberg Television v. Zee Entertainment, 2024 SCC OnLine SC 426: Cautioned against pre-trial injunctions in defamation.
13. Bonnard v. Perryman, [1891] 2 Ch 269: Established high threshold for defamation injunctions.
14. Tata Sons Ltd. v. Greenpeace International, 2011 SCC OnLine Del 466: Rejected injunction absent clear falsity.
15. Hazrat Surat Shah Urdu Education Society v. Abdul Saheb, JT 1988 (4) SC 232: Set three-part test for injunctions.
16. Dalpat Kumar v. Prahlad Singh, (1992) 1 SCC 719: Clarified discretionary nature of injunctions.
17. Dr. Rashmi Saluja v. Religare Enterprises, 2025: DHC: 701: Stressed promptness for injunctions.
18. Coulson v. Coulson, 93 E.R. 1074: Highlighted delicacy of defamation injunctions.
19. Church of Scientology v. Readers Digest, [1980] 1 NSWLR 344: Advocated caution in public interest cases.
20. Lodha Developers Ltd. v. Krishnaraj Rao, 2019 SCC OnLine Bom 13120: Emphasized tolerating online opinions.
21. Khushwant Singh v. Maneka Gandhi, 2001 SCC OnLine Del 1030: Upheld press freedom over preemptive restraint.

Reasoning of Court

• Order VII Rule 11 Application: The Court rejected the defendants’ plea, finding the suit not barred by Order II Rule 2 due to distinct causes of action and a fresh cause via hyperlinking on 07.10.2024, within the one-year limitation period.
• Hyperlinking as Republication: The Court held hyperlinking could constitute republication, giving a fresh cause of action, aligning with evolving digital jurisprudence.
• Order XXXIX Rule 1 & 2 Application: The Court denied the injunction, finding the defendants’ defences of truth and fair comment plausible, supported by evidence (e.g., WhatsApp chats, LinkedIn posts). The plaintiffs’ delay (over a year) undermined urgency, and monetary damages were deemed sufficient, balancing free speech and reputation.

Decision

• I.A. 2506/2025 (Order VII Rule 11) dismissed; plaint upheld.
• I.A. 46557/2024 (Order XXXIX Rule 1 & 2) rejected; no injunction granted.
• Case listed for further proceedings on 07.05.2025.

Case Details

• Case Title: OFB Tech Private Limited & Ors. v. Slowform Media Pvt. Ltd. & Ors.
• Date of Order: 24 March 2025
• Case Number: CS(OS) 944/2024
• Name of Court: High Court of Delhi
• Name of Hon’ble Judge: Justice Purushaindra Kumar Kaurav

Bridgestone Corporation Vs. Merlin Rubber

• The plaintiff, Bridgestone Corporation, sought a permanent injunction against M/S. Merlin Rubber for trademark infringement, passing off, and related reliefs.
• The plaintiff's trademark, 'BRIDGESTONE', is registered for rubber tires and tubes in India and over 130 countries.
• The defendant was found to be selling butyl tubes under the mark 'BRIMESTONE', which is deceptively similar to the plaintiff's mark.

Case Set Up by the Plaintiff

• The plaintiff, established in 1931, is a global manufacturer and seller of tires and rubber products under the 'BRIDGESTONE' trademark.
• The plaintiff operates websites providing information about its business and products.
• The 'BRIDGESTONE' trademark is derived from the founder’s surname and has been registered in India and worldwide.

Proceedings in the Suit

• The Court issued an ex parte ad interim injunction against the defendant and appointed a Local Commissioner for search and seizure.
• Mediation between the parties was unsuccessful.
• The defendant's right to file a written statement was closed, and the defendant was proceeded against ex-parte after failing to appear.

Analysis and Findings

• The plaintiff proved ownership of the 'BRIDGESTONE' trademark, and the defendant was found to be using the infringing mark 'BRIMESTONE' for similar goods.
• The defendant’s mark 'BRIMESTONE' is visually and phonetically similar to the plaintiff’s 'BRIDGESTONE'.
• The defendant has taken unfair advantage of the reputation and goodwill of the plaintiff's trademark.

Relief

• A decree of permanent injunction was passed against the defendant.
• A decree of damages of Rs. 34,41,240/- was passed in favor of the plaintiff.
• The plaintiff shall appear before the Taxation Officer to determine the actual costs incurred in the litigation.

Case Title:Bridgestone Corporation Vs. Merlin Rubber

Date of Order: 25th March 2025

Case Number: CS(COMM) 254/2023

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Applause Entertainment Private Limited Vs. WWW.9XMOVIES.COM.TW

Case Overview

• Applause Entertainment Private Limited filed a suit against several websites and ISPs for copyright infringement related to their web series 'UNDEKHI'.
• The plaintiff sought a permanent injunction to restrain the defendants from infringing their copyright.
• The court is considering a summary judgment application by the plaintiff.

Plaintiff's Case

• Applause Entertainment is a producer of audio-visual content, including the web series 'UNDEKHI'.
• They hold the copyright to 'UNDEKHI,' particularly the third season released on SonyLIV.
• The plaintiff granted an exclusive license to SonyLIV to exploit the series.

Defendants

• Defendants 1, 2, and 14-19 are websites/URLs involved in unauthorized broadcasting of copyrighted content.
• Defendants 3-11 are ISPs impleaded to block access to the infringing websites.
• Defendants 12 and 13 are government bodies (DoT and MEITY) impleaded to issue blocking notices to the ISPs.

Proceedings

• The plaintiff discovered unauthorized distribution of 'UNDEKHI' shortly after its release.
• An ex-parte ad interim injunction was previously granted, directing ISPs to block the infringing websites.
• Some defendants were proceeded against ex parte due to non-appearance.

Analysis and Findings

• The court found that the defendants' websites are rogue websites engaged in copyright infringement.
• The defendants are making the plaintiff's series available without authorization.
• The court referenced previous judgments and the concept of 'Dynamic Injunction' to address the emergence of new infringing websites.

Relief

• The suit was decreed in favor of the plaintiff against defendants 1, 2, and 14-19, granting the injunction sought.
• The plaintiff is permitted to implead mirror/redirect websites, subject to the same decree.
• Defendants 12 and 13 (DoT and MEITY) are directed to issue notifications to ISPs to block access to the infringing websites.



Case Title: Applause Entertainment Private Limited Vs. WWW.9XMOVIES.COM.TW 
Date of Order: 19th March 2025
Case Number: CS(COMM) 418/2024
Neutral Citation: 2025:DHC:1994
Name of Court: High Court of Delhi 
Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Apnatime Tech Private Limited Vs. Anik Dev Nath

Factual Background

Apnatime Tech Private Limited and its parent company, Apna Time Inc., operate "Apna Job Search," a platform launched in 2019 to connect blue and grey collar job seekers with employers in India. With over 10 million downloads and widespread recognition under the "APNA" marks, the plaintiffs discovered in 2022 that websites under the domains www.apnajobs.in and www.apnajobs.org, operated by defendants Anik Dev Nath and Santosh Kumar, mirrored their site. These sites allegedly deceived users by promising jobs for a nominal fee of Rs. 49, only to extract exorbitant sums, damaging the plaintiffs’ reputation and defrauding the public.

Procedural Background

The plaintiffs filed a suit in the Delhi High Court on November 25, 2022, seeking injunctions against copyright infringement and passing off. Summons were issued, and an ex-parte interim injunction was granted against defendant no. 1 (Anik Dev Nath). Despite service, neither defendant appeared or filed defenses. An amended memo added Santosh Kumar as defendant no. 16 after identifying him as the registrant of www.apnajobs.in. On November 14, 2024, the plaintiffs sought a summary judgment under Order XIII-A of the CPC, which went uncontested, leading to the court's decision on March 18, 2025.

Provisions of Law Referred and Their Context

The court relied on Order XIII-A of the Code of Civil Procedure, 1908 (CPC), which allows summary judgments in commercial disputes when defendants have no realistic defense and no trial is warranted. Section 2(c) of the Copyright Act, 1957, was invoked to establish the plaintiffs’ copyright over their website’s layout and interface as an original artistic work. The Delhi High Court (Original Side) Rules, 2018, Rule 3, deemed the plaintiffs’ documents admitted due to the defendants’ failure to respond.

Judgments Referred with Complete Citation and Context

The court cited Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, emphasizing that Order XIII-A aims to expedite commercial disputes by avoiding trials when defendants lack a viable defense. The judgment clarified that “real prospect of success” distinguishes realistic from fanciful defenses, aligning with the summary judgment mechanism to ensure swift justice in clear-cut cases like this.

Reasoning of Court

The court found the plaintiffs had established extensive goodwill under the "APNA" marks through continuous use since 2019, supported by significant promotion and commercial success. The defendants’ websites were blatant copies of the plaintiffs’ platform, infringing their copyright and passing off their services. The identical marks and fraudulent operations showed mala fide intent to exploit the plaintiffs’ reputation. With no defense from the defendants despite service, the court deemed their non-response an admission of the plaintiffs’ claims, justifying a summary judgment without trial.

Decision

On March 18, 2025, the court decreed the suit in favor of the plaintiffs, granting permanent injunctions against defendants no. 1 and 16 for copyright infringement and passing off, as per prayer clauses 45(a), (b), and (c) of the plaint. Other reliefs were not pressed, and the decree sheet was ordered to be drawn up, disposing of all pending applications.

Case Details

• Case Title: Apnatime Tech Private Limited and Anr. v. Anik Dev Nath and Others
• Date of Order: March 18, 2025
• Case Number: CS(COMM) 818/2022
• Neutral Citation: Not provided in the document
• Name of Court: High Court of Delhi at New Delhi
• Name of Hon’ble Judge: Hon’ble Mr. Justice Amit Bansal

American Furnishing House Vs. Udal Ram Bhurji

Maintainability of a suit filed in the name of a firm that had already been dissolved before the date of institution

Introduction:

The case of American Furnishing House vs. Udal Ram Bhurji presents an important legal question regarding the maintainability of a suit filed in the name of a firm that had already been dissolved before the date of institution. The ruling of the Delhi High Court provided clarity on the scope of Order 30 of the Code of Civil Procedure, 1908 (CPC), particularly in relation to whether a firm, despite its dissolution, can continue to enforce legal claims that accrued before its dissolution.

Factual Background:

The plaintiff in the case was American Furnishing House, a firm that had entered into a financial agreement with the defendant, Udal Ram Bhurji, on April 1, 1955, under which the defendant was liable to pay an amount of Rs. 791/8/3. The firm was dissolved on June 1, 1955. However, the amount remained unpaid, and the plaintiffs—comprising both the dissolved firm and one of its former partners, Hari Das—initiated a suit for recovery in the Small Cause Court on March 28, 1958.One of the primary objections raised by the defendant was that a dissolved firm could not initiate a legal proceeding in its name. The defense was based on the assertion that the legal identity of a firm ceases to exist post-dissolution, and any claim should have been pursued in the names of individual partners rather than in the name of the firm. The defendant further relied on an earlier decision in Governor General in Council v. Shri Bharath Tirath Yatra Transport, Lucknow, AIR 1945 Oudh 284, to substantiate the argument that a dissolved firm could not be a legal entity for the purpose of litigation.

Procedural Background:

The trial court, Additional Small Cause Court Judge, Delhi, dismissed the suit on April 11, 1959, accepting the defense argument that the dissolved firm lacked the legal standing to sue. However, the trial court also recorded a finding that the agreement in question was indeed executed by the defendant and that the firm was entitled to receive the claimed amount.

The plaintiffs then filed a revision petition before the Delhi High Court (Civil Revision Petition No. 380-D/1959). Initially, Chief Justice Falshaw, by an ex parte order dated February 26, 1965, allowed the revision. However, on the application of the respondent-defendant, this ex parte order was set aside on February 14, 1966, and the case was restored for a full hearing. The revision was subsequently heard and adjudicated upon by Justice M.K.M. Ismail on March 31, 1967.

Issues Involved

The core legal issue before the High Court was whether a dissolved firm, through its former partners, could institute a suit in its own name for a cause of action that accrued prior to its dissolution. Another issue was whether the dismissal of the suit by the trial court was justified despite a finding in favor of the plaintiffs regarding the defendant’s liability.

Submissions of the Parties:

The plaintiffs contended that under Order 30, Rule 2(3) of CPC, a firm’s name could continue to be used in legal proceedings even after dissolution, provided that the cause of action arose while the firm was in existence. They cited Cooverji Varjang v. Coverbai Nagsey, AIR 1940 Bom 330, where the Bombay High Court held that the partners of a firm that existed at the time of the cause of action could sue under the firm’s name even after dissolution. Further reliance was placed on Agarwal Jorawarmal v. Kasam, MANU/NA/0223/1936, where the Nagpur High Court observed that dissolution does not render a firm legally non-existent for the purpose of winding up transactions.

The defendant relied on Governor General in Council v. Shri Bharath Tirath Yatra Transport, Lucknow, AIR 1945 Oudh 284, where it was held that a dissolved firm could not sue in its own name since it ceased to be a legal entity. It was argued that if the suit had been brought in the names of individual partners rather than in the firm's name, it could have been maintainable, but the firm itself lacked locus standi post-dissolution.

Discussion on Judgments Cited:

The court distinguished the decision in Governor General in Council Vs. Shri Bharath Tirath Yatra Transport, Lucknow: Air 1945 Oudh 284 by pointing out that in that case, the firm had been found to be still in existence at the time of filing the suit, which meant the issue of whether a dissolved firm could sue did not directly arise. Additionally, the Delhi High Court noted that the judgment did not analyze Order 30, Rule 2 CPC in depth.

On the other hand, the judgments in Cooverji Varjang v. Coverbai Nagsey;  AIR1940Bom330   were found to be directly applicable. The Bombay and Nagpur High Courts had both recognized that a dissolved firm retains the ability to sue under its firm name for claims that originated before dissolution, as part of the winding-up process. These decisions were based on a purposive interpretation of Order 30, CPC, which allows partners to continue a firm’s legal affairs post-dissolution.

Reasoning and Analysis of the Judge

The Hon'ble Court reasoned that Order 30, Rule 2(3) provides a complete answer to the issue at hand. When a suit is instituted in the firm’s name and the defendant demands disclosure of the partners’ identities, once such disclosure is made, the suit is deemed to have been instituted by the partners themselves. Consequently, the technical objection that a dissolved firm lacks standing is rendered irrelevant.Additionally, the court observed that commercial realities necessitate allowing dissolved firms to pursue legal claims that originated before dissolution, as otherwise, business transactions would be significantly disrupted. This aligns with the principles of partnership law, where dissolution does not immediately terminate a firm’s legal obligations but merely initiates the process of winding up its affairs.

Final Decision:

The Delhi High Court set aside the decision of the trial court and allowed the revision petition. The plaintiffs were awarded a decree for Rs. 922/8/3, comprising Rs. 791/8/3 as the principal amount and Rs. 131/- as interest. Additionally, the plaintiffs were granted interest at 6% per annum from the date of the suit until realization. The petitioners were also awarded costs for both the trial and revision proceedings.

Law Settled in this Case:

The case reaffirmed the principle that a dissolved firm can sue in its own name for claims arising before dissolution, provided the identities of the partners are disclosed in compliance with Order 30, Rule 2 CPC. This judgment aligns with the broader principle that dissolution does not immediately extinguish a firm’s legal rights and obligations but allows for their enforcement during the winding-up process.

Case Title: American Furnishing House Vs. Udal Ram Bhurji

Date of Order: March 31, 1967

Case No.: Civil Revn. Petn. No. 380-D/1959

Citation: AIR 1968 Delhi 163

Court: High Court of Delhi

Judge: Hon'ble Justice M.K.M. Ismail

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

VST Industries Limited Vs. ASD Tobacco Private Limited

The deliberate imitation of the distinctive elements  indicated bad faith adoption of the impugned mark 

Introduction:

The case of VST Industries Limited vs. ASD Tobacco Private Limited & Anr., decided on March 6, 2025, in the Delhi High Court, is a crucial trademark dispute concerning the rectification of the trademark register under Section 57 of the Trade Marks Act, 1999. The petitioner, VST Industries Limited, sought the removal of the mark "CHUMS," registered by respondent no. 1, ASD Tobacco Private Limited, on the grounds that it was deceptively similar to its well-established trademark "CHARMS."

Factual Background:

VST Industries Limited, incorporated on November 10, 1930, is a well-established company engaged in the manufacturing and distribution of cigarettes. It is listed on the Bombay Stock Exchange (BSE) and National Stock Exchange (NSE). The company owns several well-known cigarette brands, including TOTAL, CHARMS, GOLD, MOMENTS, and EDITIONS. Since 1982, the "CHARMS" mark has been used by VST Industries for its cigarettes, achieving significant market recognition. The distinctive packaging of "CHARMS" includes gold and red colors, a stylized ‘woosh’ separator, and a specific font style, elements that reinforce brand identity.

In May 2019, VST Industries discovered that ASD Tobacco Private Limited had registered the trademark "CHUMS" under Registration No. 3960579 in Class 34, with a claimed user date of August 20, 2018. VST Industries argued that "CHUMS" was phonetically, visually, and structurally similar to "CHARMS," creating consumer confusion and diluting the established brand identity.

Procedural Background:

The petition was filed under Section 57 of the Trade Marks Act, 1999, seeking rectification of the register by canceling the trademark "CHUMS." Despite several notices, respondent no. 1 did not appear before the court. The matter proceeded ex-parte against ASD Tobacco Private Limited. Respondent no. 2, the Registrar of Trade Marks, appeared and raised no objection to the cancellation of the impugned trademark.

Issues Involved in the Case:

The primary issues in this case included whether "CHUMS" is deceptively similar to "CHARMS," leading to confusion among consumers, whether the petitioner’s prior and continuous use of "CHARMS" grants it exclusive rights over the mark, whether the registration of "CHUMS" was obtained in bad faith with an intent to exploit the goodwill of "CHARMS," and whether the similarity in packaging between the two brands further supports the likelihood of deception?

Submissions of the Parties:

The petitioner, VST Industries Limited, argued that "CHARMS" had been in continuous and exclusive use since 1982, generating goodwill and consumer recognition. The petitioner provided sales records and financial data indicating a substantial market presence, with a sales turnover of approximately ₹228 crores in 2018-19 and a cumulative turnover of ₹4,344.01 crores from 2002-03 to 2018-19. It was further demonstrated that "CHUMS" was visually and phonetically similar to "CHARMS," with a similar color scheme and font style. Case law was cited to support that phonetic and visual similarities, along with identical product classification (Class 34), justify rectification of the register.Respondent no. 1, ASD Tobacco Private Limited, did not appear despite multiple notices, leading to an ex-parte ruling. Respondent no. 2, the Registrar of Trade Marks, submitted that if the court found deceptive similarity, they would comply with directions to rectify the register.

Judgment and Case Law Cited:

The court, in its detailed judgment, examined landmark cases on trademark similarity, including Opella Healthcare Group vs. Vaibhav Vohra & Anr. (2024 SCC OnLine Del 8214), where the Delhi High Court ruled in favor of the plaintiff when a similar packaging style and phonetic similarity were found. The "likelihood of confusion" was a decisive factor in granting an injunction.In VST Industries Limited vs. ASD Tobacco Private Limited (Panchkula District Court, 2022), a permanent injunction was granted against ASD Tobacco for using "CHUMS," reinforcing that the mark was deceptively similar. The court emphasized consumer perception, stating that minor phonetic and visual differences do not negate the likelihood of confusion, particularly when both marks are used for identical goods.

Reasoning and Analysis by the Judge:

The court recognized that VST Industries Limited had been using "CHARMS" for over 36 years before ASD Tobacco's registration of "CHUMS." The distinct brand identity, significant sales, and market penetration demonstrated substantial goodwill. The comparison of the two marks revealed substantial similarity in appearance, pronunciation, and trade dress. The slight difference in spelling (CHARMS vs. CHUMS) was insufficient to prevent confusion.The court noted that cigarette consumers do not always inspect packaging minutely and may rely on phonetic recall. Given the similar color schemes, font styles, and product category, the likelihood of deception was high. The deliberate imitation of the distinctive elements of "CHARMS" indicated bad faith adoption of the mark "CHUMS." The non-appearance of ASD Tobacco in court further suggested a lack of legitimate defense.

Final Decision:

The court ruled in favor of VST Industries Limited, ordering the cancellation of the trademark "CHUMS" (Reg. No. 3960579 in Class 34). The Registrar of Trade Marks was directed to rectify the register accordingly. The judgment reaffirmed the principle that prior use, coupled with deceptive similarity, warrants cancellation of a registered trademark.

Law Settled in This Case"

The court reaffirmed that prior user rights supersede subsequent registrations, especially when the prior mark has acquired substantial goodwill. Phonetic and visual similarity is sufficient to establish a likelihood of confusion, even if minor differences exist. Bad faith adoption and similar trade dress contribute to the determination of trademark infringement. Non-appearance of a party does not absolve them of liability, and ex-parte orders can be passed when evidence supports the claims.

Case Title: VST Industries Limited vs. ASD Tobacco Private Limited & Anr.

Date of Order: March 6, 2025

Case Number: C.O. (COMM.IPD-TM) 128/2021

Neutral Citation: 2025:DHC:1562

Court: Delhi High Court

Judge: 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

Kewal Krishan Kumar Vs. Rudi Roller Flour Mills (P) Ltd

Descriptive words cannot be monopolized in trademarks unless they acquire distinctiveness.

Introduction:

The case of Kewal Krishan Kumar vs. Rudi Roller Flour Mills (P) Ltd. & Anr. is a significant decision in trademark law, dealing with the question of whether two similar-sounding trademarks can co-exist in the market without causing consumer confusion. The dispute arose between Kewal Krishan Kumar, the owner of the trademark “Shakti Bhog,” and Rudi Roller Flour Mills (P) Ltd., which sought registration for the mark “Shiv Shakti” along with the device of ‘Trishul’ and ‘Damru.’ The plaintiff challenged the registration, alleging deceptive similarity, while the defendants argued that their mark was distinct in both phonetic and visual aspects. The Delhi High Court, through a division bench of Chief Justice Mukundakam Sharma and Justice Sanjiv Khanna, adjudicated the matter and upheld the decision of the Assistant Registrar of Trademarks in favor of the defendants.

Factual Background:

The appellant, Kewal Krishan Kumar, was engaged in trading wheat flour (atta) under the registered trademark “Shakti Bhog.” The trademark was registered in his name effective from June 16, 1982. He objected to the registration of the trademark “Shiv Shakti,” applied for by Rudi Roller Flour Mills (P) Ltd. in Class 30 for atta, maida, and suji. The defendant had claimed usage of this mark since March 6, 1990.

The Assistant Registrar of Trademarks examined the opposition and found that the sales of the defendant's products ran into crores of rupees per month. The registrar also observed that the defendant had used the mark consistently and extensively without any instances of confusion being reported. It was further held that the addition of the words "Shiv" and the associated religious symbols (Trishul and Damru) created a distinct impression, differentiating it from "Shakti Bhog." The Assistant Registrar ruled in favor of Rudi Roller Flour Mills (P) Ltd., allowing the registration of the trademark “Shiv Shakti.”

Aggrieved by this decision, the appellant filed a Civil Miscellaneous (Main) petition before the High Court, which was dismissed by a single judge on November 21, 2002, leading to the present appeal before the division bench.

Procedural Background:

The case began with an application for trademark registration filed by Rudi Roller Flour Mills (P) Ltd. for "Shiv Shakti" in 1990. The appellant filed an opposition, arguing that "Shakti" was an essential feature of "Shakti Bhog," and the defendant's mark was deceptively similar. The Assistant Registrar ruled in favor of the defendant.

The appellant then challenged this order before the learned Single Judge of the Delhi High Court, who upheld the Assistant Registrar’s decision and dismissed the petition. The appellant subsequently filed the present appeal before a division bench of the Delhi High Court.

Issues Involved:

Whether the trademarks “Shakti Bhog” and “Shiv Shakti” were deceptively similar?Whether the use of religious symbols (Trishul and Damru) alongside the word “Shakti” created sufficient distinction?

Appellant’s Arguments:

The appellant contended that the word “Shakti” was an essential and distinctive part of their trademark “Shakti Bhog.” By adopting the term “Shakti” in their mark, the defendant was attempting to copy the essential feature of the appellant’s brand, leading to consumer confusion.

It was argued that even if the term “Shakti” was considered descriptive, it could not be separated from the registered trademark “Shakti Bhog” for comparison with “Shiv Shakti.” The addition of a prefix or suffix would not absolve the respondent from liability if the essential feature of the mark was imitated.

The appellant also relied on the principle that where the essential features of a trademark are copied, the overall get-up, packaging, or additional words would not negate the deceptive similarity.

Defendant’s Arguments:

The defendant countered that “Shakti” was a common descriptive word meaning “strength” or “power” and could not be monopolized. They argued that their trademark “Shiv Shakti,” along with the religious symbols, had an entirely different meaning and visual representation compared to “Shakti Bhog.”

It was pointed out that their trademark included the prefix “Shiv” and the device of “Trishul” and “Damru,” which were associated with Hindu deity Lord Shiva. This religious connection distinguished it from “Shakti Bhog,” which had no such connotations.

The defendant also highlighted the phonetic and visual differences between the two marks. It was argued that their consistent use of “Shiv Shakti” for over 17 years without consumer complaints demonstrated that there was no likelihood of confusion.

Discussion on Judgments and Legal Precedents:

The court examined several precedents on deceptive similarity and the importance of phonetic and visual differences in trademark disputes.In American Home Products Corporation v. Mac Laboratories Pvt. Ltd., the Supreme Court held that trademarks should be considered in their entirety, and the addition of distinct elements could differentiate two otherwise similar marks.In Fox & Co. (1920) 37 RPC 37, the court ruled that the trademarks "Motrate" and "Filtrate" were not similar despite a common suffix.The Privy Council in Coca Cola Company of Canada Ltd. v. Pepsi Cola Company of Canada Ltd. (AIR 1942 PC 40) held that "Pepsi Cola" was not deceptively similar to "Coca Cola" since the distinctive feature was in the prefixes "Pepsi" and "Coca."Applying these principles, the court determined that “Shakti Bhog” and “Shiv Shakti” were distinct due to their prefixes and accompanying visual elements.

Reasoning and Analysis of the Judges:

The court noted that the word “Shakti” was a descriptive term and could not be monopolized by a single party. The essential features of the two trademarks were distinct. The word "Shiv" in the defendant’s mark had religious significance and was combined with distinct visual elements that prevented consumer confusion.The court also held that phonetic similarity alone was insufficient to prove deceptive similarity. The additional words “Bhog” and “Shiv,” combined with the religious imagery, created a clear distinction between the two brands.Given the defendant’s long-standing use of the mark, the absence of consumer complaints, and the significant phonetic and visual distinctions, the court concluded that the trademarks were not deceptively similar.

Final Decision:

The court dismissed the appeal, holding that “Shiv Shakti” and “Shakti Bhog” were not deceptively similar. It upheld the registration of “Shiv Shakti” in favor of Rudi Roller Flour Mills (P) Ltd.

Law Settled in This Case:

This case reaffirmed that descriptive words cannot be monopolized in trademarks unless they acquire distinctiveness.Phonetic similarity alone does not constitute deceptive similarity if the overall impression of the mark is distinct.The presence of religious symbols and prefixes can contribute to differentiating a trademark from another similar-sounding mark.Long-term, uninterrupted use of a trademark without consumer confusion strengthens the case for its distinctiveness and registration.

Case Title: Kewal Krishan Kumar Vs. Rudi Roller Flour Mills (P) Ltd. & Anr.

Date of Order: September 27, 2007

Neutral Citation: 2007(35) PTC 848(DEL), 

Court: Delhi High Court

Judges: Justice Mukundakam Sharma and Justice Sanjiv Khanna

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