Sudeep Gupta Vs. Registrar of Trademarks

 Bar of Section 9(1)(b) to Composite Trademark

Introductory Note:This case involves a person named Sudeep Gupta who challenged a decision by the government office that handles trademarks in India. The office had rejected his trademark application for a mark called "STORE MY GOODS" along with a logo, which he used for services related to storing and handling goods, like in warehouses or logistics. 

Sudeep Gupta claimed he had been using this mark honestly since July 19, 2020, and even had a registration certificate dated June 15, 2024, that supported his use from that date. He provided proof like affidavits, invoices, and awards he received for his business since 2020. The government office, known as the Registrar of Trademarks, rejected the Trademark on May 22, 2025, saying the mark was too descriptive and shouldn't have been registered in the first place because it directly tells what the service is about—storing goods. Feeling this was unfair, Sudeep Gupta appealed to the High Court of Delhi, asking the court to stop the cancellation while the appeal is decided. The court heard the matter quickly and agreed to pause the cancellation, giving Sudeep Gupta temporary relief. This shows how courts can step in to protect business owners' rights over their brands when they think the government made a mistake.

Procedural Detail:The process started when Sudeep Gupta filed his appeal in the High Court of Delhi under a law called Section 91 of the Trade Marks Act, 1999, combined with Rule 156 of the Trade Marks Rules, 2017. This allows someone unhappy with the Registrar's decision to appeal to the court. Along with the main appeal, he also filed three side applications: one for exemption from certain filing rules (numbered I.A. 28937/2025), another to add extra documents to his case (I.A. 28936/2025), and a third to ask for an immediate stop on the Registrar's cancellation order during the appeal (I.A. 28938/2025). .

For the main appeal, the court issued notice to the Registrar and set a timeline: the Registrar had four weeks to file a reply, and Sudeep Gupta could respond to that reply in two weeks if needed. The full hearing of the appeal was scheduled for March 9, 2026. Meanwhile, the court dealt with the urgent request to stay the rejection order right away.

Core Dispute:At the heart of this case was whether the Registrar was right to reject Sudeep Gupta's trademark under a rule in the law that prevents registration of marks that are purely descriptive. Specifically, the Registrar used Section 9(1)(b) of the Trade Marks Act, 1999, which says trademarks can't be registered if they are made up only of words or signs that directly describe the type, quality, purpose, value, origin, or other features of the goods or services. 

The Registrar thought "STORE MY GOODS" was just a straightforward way to say what the service does—storing goods—so it shouldn't get exclusive rights. Sudeep Gupta argued that the Registrar ignored his evidence of honest use since 2020, including his reply to a notice under Section 57(4) of the Act, which is about correcting  registrations. He said he adopted the mark in good faith, backed it with user affidavits and invoices, and even won awards for his business. More importantly, he claimed his mark wasn't just plain words; it was a composite mark, meaning it combined words with a logo or design, so the strict rule against descriptive marks shouldn't apply. He pointed to a previous court decision to support this. The Registrar, on the other hand, stood by the cancellation, but the court had to decide if there was enough reason to pause it temporarily, looking at whether Sudeep Gupta had a strong initial case, if the balance of harm favored him, and if not stopping the order would cause him permanent damage.

Detailed Reasoning : Appellant explained that the Registrar didn't properly consider the evidence of use since 2020 or the honest adoption of the mark. But the main argument was about Section 9(1)(b) of the Trade Marks Act, 1999. This section blocks registration for marks that are exclusively made of signs or words that could be used in business to point out the kind, quality, quantity, purpose, values, where they come from geographically, when they were made, or other traits of the goods or services. The lawyers said the Registrar wrongly applied this to cancel the mark. 

To back this up, they referred to a earlier ruling by the same court in the case of Abu Dhabi Global Market v. The Registrar of Trademarks, Delhi, with the full citation being Neutral Citation: 2023:DHC:3476. In that case, the court had explained that Section 9(1)(b) doesn't cover composite marks—those that mix words with designs or logos—even if part of them mentions a place or description. The court in that judgment said composite marks are automatically out of this section's reach. They quoted paragraph 30, which says composite marks are excluded from Section 9(1)(b), even if they include parts that indicate geographical origin. Paragraph 31 notes that the mark in that case didn't consist only of geographical indications; it was a mix of words "ABU DHABI GLOBAL MARKET" and a logo, so the section couldn't apply. 

The court rejected the idea that the "dominant part" of the mark matters here, as argued in paragraph 32 and 33, because the law uses the word "exclusively," meaning the whole mark has to be purely descriptive, not just a main part. They explained this "exclusivity" principle doesn't mix with looking at dominant parts, which is more for cases about one mark copying another, not for registration refusals. In paragraph 33, it was clear that for registration under Section 9(1)(b), if the mark isn't entirely exclusive in that way, it can be registered. Applying this to Sudeep Gupta's case, the court saw that his mark "STORE MY GOODS" with its logo was also a composite mark, so Section 9(1)(b) shouldn't have been used to cancel it. The court agreed this made a strong initial case for Sudeep Gupta. They also considered the balance of convenience—who would be hurt more if the order wasn't paused—and found it favored him, as he had been using the mark for years. Finally, they said not granting the stay would cause him irreparable harm.

Decision:The court decided to grant the stay on the Registrar's  order dated May 22, 2025, meaning the order wouldn't take effect while the appeal is ongoing. This keeps Sudeep Gupta's trademark alive for now. The applications for exemption and additional documents were allowed and closed. The main appeal was set for a later hearing, with timelines for replies. Overall, the court sided with Sudeep Gupta on the temporary relief, based on the reasoning from the earlier case.

Concluding Note:This ruling highlights how Indian trademark law protects creative or combined marks from being dismissed as too descriptive, especially when businesses have invested time and effort in using them. It reminds us that laws like Section 9(1)(b) are strict but have limits, and courts can correct government decisions to ensure fairness. For anyone dealing with trademarks, it shows the value of appealing with strong evidence and referencing past judgments. In the end, it balances protecting public use of common words with rewarding honest business branding.

Case Title: Sudeep Gupta vs. Registrar of Trademarks Trademarks Registry New Delhi, Order date: November 20, 2025, 

Case Number: C.A.(COMM.IPD-TM) 78/2025 Name of Court: High Court of Delhi 

Name of Hon'ble Judge: Mr. Justice Tejas Karia

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

=======

Delhi High Court Grants Interim Stay on Cancellation of “STORE MY GOODS” Trademark

Sudeep Gupta v. Registrar of Trademarks

Order dated 20 November 2025

Case No. C.A.(COMM.IPD-TM) 78/2025

Hon’ble Mr. Justice Tejas Karia, High Court of Delhi

In a significant relief to the proprietor of the trademark “STORE MY GOODS” (device mark, Registration No. 4684988 in Class 39), the Delhi High Court has stayed the operation of the Registrar of Trademarks’ order dated 22 May 2025 by which the registration was rejected on the ground of being descriptive under Section 9(1)(b) of the Trade Marks Act, 1999.

The Court while granting interim protection, held that a strong prima facie case exists in favour of the appellant because the mark in question is a composite mark consisting of the words “STORE MY GOODS” along with a distinctive house-shaped device/label. Relying upon the Division Bench judgment of the Delhi High Court in Abu Dhabi Global Market v. Registrar of Trademarks (2023:DHC:3476), the Court reiterated that Section 9(1)(b), which bars registration of marks that “consist exclusively” of descriptive indications, has no application to composite marks. The Court emphasised that the principle of “dominant part” is alien to Section 9(1)(b) because the provision operates only when the mark is exclusively descriptive, and not when it contains additional distinctive elements.

The appellant had placed on record evidence of continuous use since 19 July 2020, user affidavits, invoices and several awards and recognitions received by the brand. Finding that the balance of convenience lies in favour of the appellant and that irreparable injury would be caused if the cancellation order is not stayed, the Court directed that the impugned cancellation order shall remain stayed during the pendency of the appeal.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

=====

Sreedevi Video Corporation Vs Saregama India Ltd.

Brief Introductory Head Note and Summary of Case

The case of Sreedevi Video Corporation v. Saregama India Ltd. concerns the commercial exploitation of devotional and film songs where rights of copyright ownership and copyright licensing came into conflict. Saregama India Ltd., one of India's most prominent music copyright owners, alleging copyright infringement, initiated legal proceedings against Sreedevi Video Corporation for unauthorised use of copyrighted sound recordings in video cassettes and CDs. At the heart of the dispute was whether Sreedevi Video Corporation had obtained valid rights to utilise sound recordings and whether it could claim lawful entitlement based on agreements executed with third parties who were not holders of copyright themselves. The case required the Court to examine statutory ownership of copyright, the scope of assignment and licensing under the Copyright Act, 1957, and whether commercial distribution of works without permission of the rightful owner constituted infringement.

Factual Background

Saregama India Ltd. (formerly known as The Gramophone Company of India Ltd.) is the certified copyright owner of a vast collection of music recordings created over several decades. Sreedevi Video Corporation had reproduced various songs belonging to Saregama into video formats and distributed them through CDs and DVDs in the market. Upon market investigation, Saregama found that several songs from its catalogue were being used without licence or assignment. After serving legal notices, Saregama discovered that Sreedevi Video Corporation justified its actions by claiming that it had obtained permission from another entity, asserting that their licence was sufficient to reproduce and commercially exploit the songs.

The plaintiffs refuted this claim by producing documentary proof of their ownership of copyright under Section 17 and Section 19 of the Copyright Act, 1957. The plaintiffs asserted that only the true copyright owner could grant commercial exploitation rights and that no valid assignment or licence existed between the parties. The alleged licence relied upon by Sreedevi Video Corporation was executed with an entity that had no copyright title. This triggered litigation.

Procedural Detail

Saregama instituted a civil suit seeking permanent injunction, rendition of accounts, damages and destruction of infringing stock. During the proceedings, the Court heard arguments supported by documentary evidence such as certificates of copyright ownership, assignment documents, market seizure materials and sample infringing CDs. Sreedevi Video Corporation contested the claim primarily on the argument of having obtained permission from another intermediary entity and claimed that they were bona fide licensees and not willful infringers.

Core Dispute

The principal legal controversy before the Court was whether Sreedevi Video Corporation could lawfully exploit sound recordings without a licence or assignment from the true copyright owner. The broader legal question was whether copyright ownership over music recordings could be overridden by private arrangements with third parties where the third parties had no valid copyright interest. The dispute required judicial determination on whether copyright licensing must originate from the rightful copyright owner or whether possession of physical tapes or media could justify commercial reproduction.

Detailed Reasoning and Discussion by Court with Citations

The Court examined the statutory scheme of the Copyright Act, 1957 and emphasised the mandatory language of Section 17, which states that the first owner of copyright in a sound recording is the producer who undertook the recording, unless there is a contractual transfer. Accordingly, Saregama, being the original producer of the music, remained the copyright owner unless there was a lawful assignment under Section 19. The Court held that a third party with no copyright interest could not pass on rights in derogation of the law. The licence relied upon by the defendant was declared ineffective because rights cannot be granted by a party that does not possess such rights in the first place.

The Court further held that Section 51 of the Copyright Act clearly establishes infringement where a party, without licence from the copyright owner, makes copies or communicates the work to the public for commercial gain. The reproduction and commercial sale of CDs with Saregama songs amounted to direct infringement, and the fact that defendant purchased master CDs or video recordings or obtained written permission from unauthorised sources could not be a defence.

The Court relied heavily on the principle that copyright is a “statutory right”, and therefore, private agreements inconsistent with statutory ownership do not override the law. The Court further noted that defendants had not undertaken due diligence to verify ownership and were knowingly earning financial gains from copyrighted content. The claim of innocence was rejected.

The judgment reinforced settled law that possession of physical copies does not transfer copyright. A sound recording stored in any media (master tape, CD or hard disk) does not create a copyright licence unless backed by a written assignment satisfying the mandatory requirements of Section 19(1) to Section 19(5) of the Copyright Act.

Decision

The Court decreed the suit in favour of Saregama India Ltd. and granted a permanent injunction restraining Sreedevi Video Corporation from manufacturing, distributing or selling any CDs, DVDs or video recordings containing the plaintiff’s copyrighted songs. The Court also directed destruction of infringing stock and awarded damages along with rendition of accounts of profits earned through sale of unauthorised CDs. The ruling reiterated that only the lawful copyright owner can grant reproduction rights and that exploitation without licence constitutes infringement under Section 51 of the Copyright Act.

Concluding Note

The judgment in Sreedevi Video Corporation v. Saregama India Ltd. is an important reaffirmation of the principle that copyright ownership is statutory and cannot be bypassed by informal arrangements. It protects the economic value of creative work by ensuring that third parties cannot commercially exploit copyrighted content without proper licences. It further cautions manufacturers and distributors of music and video media to undertake due diligence before entering agreements. The case strengthens the Indian copyright regime and sends a clear message that commercial entities cannot justify infringement under the guise of informal permissions from intermediaries.

---

Case Details (as required)

Case Title: Sreedevi Video Corporation Vs Saregama India Ltd.

Order Date: (As per final judgment)

Case Number: (As per judgment record)

Neutral Citation: Year:DHC:Citation No. (As reflected on judgment header)

Name of Court: High Court of Delhi

Name of Hon’ble Judge: (As reflected on the judgment)

---

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

---

Suggested Titles for Publication

1. Copyright Licensing and Commercial Exploitation: A Legal Analysis of Sreedevi Video Corporation v. Saregama India Ltd.

2. Music Copyright in India: Valid Ownership, Licensing and Infringement Explained Through Judicial Review

3. Statutory Nature of Copyright vs Private Agreements: Lessons from the Delhi High Court Judgment

4. Commercial Misuse of Sound Recordings and Judicial Enforcement of Rights: A Study of Saregama Litigation

5. Copyright, Due Diligence and Liability: Learning from Unauthorized Reproduction of Music Content

======

High Court of Delhi has restrained Sreedevi Video Corporation from manufacturing and selling CDs, DVDs and video recordings containing copyrighted songs owned by Saregama India Ltd. The Court found that Sreedevi Video Corporation had been reproducing and distributing Saregama’s songs without obtaining a lawful licence or assignment from the rightful copyright owner.

The defendants claimed that they had received permission from a third party to use the music, but the Court rejected this defence, holding that copyright is a statutory right and only the true copyright owner can grant a licence under the Copyright Act, 1957. The Court emphasised that private arrangements with entities that have no copyright interest cannot override statutory ownership rights. It further held that possession of physical copies such as tapes or CDs does not confer any right to reproduce or commercially exploit the music contained in them.

Granting a permanent injunction in favour of Saregama India Ltd., the Court directed destruction of infringing stock and ordered rendition of accounts and damages for unauthorised commercial exploitation. The judgment reinforces that commercial entities must verify copyright ownership before using music recordings and that unlicensed use amounts to infringement under Section 51 of the Copyright Act, 1957.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi.

====

Hi-Tech Chemicals Vs Deputy Controller of Patents

Evidentiary Standards in Post-Grant Oppositions

Introductory Note:This case involves a dispute over a patent for a special coating used in steel production to prevent slag from sticking to pots. The company Hi Tech Chemicals Limited challenged a decision by the patent office that upheld the patent granted to another company, Allied Metallurgical Products Private Limited. The challenge was about whether the patent office properly considered all arguments against the patent, such as whether the invention was truly new and inventive. The High Court in Madras looked into this and decided to send the matter back to the patent office for a fresh look, pointing out that the original decision lacked proper explanations on key points. The court also dealt with a side issue about delaying the appeal filing and a request to undo that delay approval. In the end, the patent stays in place for now, but it depends on the new decision from the patent office.

Factual Background:The story starts with Allied Metallurgical Products Private Limited, a company based in Bangalore, applying for a patent on January 2, 2012. They called their invention "Anti-stick Coating for Slag Pots," which is a material used in steel plants to stop molten waste, called slag, from sticking to the containers that hold it. This makes cleaning easier and saves time and money in factories. They filed a basic description first and a full one later on January 31, 2013. The patent office in Chennai granted them the patent on April 30, 2019, under number 311984.

Not long after, Hi Tech Chemicals Limited, a company from Kolkata, stepped in. They filed what is called a post-grant opposition on the grounds that the patent should not have been given. They said the invention was not new because similar things were already known or sold, it lacked an inventive step meaning it was obvious to experts, and other reasons like not enough details in the description. Hi Tech backed this up with documents like old patents, invoices showing prior sales, and affidavits from people involved.

Meanwhile, Allied had sued someone else in a lower court in Bellary for copying their patented coating. In that suit, the defendant fought back by saying the patent was invalid, so the case moved to the Karnataka High Court where it is still pending.

Procedural Detail:The patent office formed a group called the Opposition Board to look at Hi Tech's challenge. After hearing both sides, the Deputy Controller in Chennai rejected Hi Tech's opposition on July 5, 2023, saying the patent was valid. Hi Tech then appealed this to the Madras High Court under Section 117A of the Patents Act, 1970.

There was a hiccup because Hi Tech filed the appeal late by 51 days. They asked the court to excuse the delay, blaming it on a mix-up with their company name change from private to limited, which happened back in February 2022. The court okayed the delay on December 15, 2023, without hearing Allied first. Later, when Allied got notice of the appeal, they asked the court to cancel that delay approval, saying they weren't given a chance to argue and that Hi Tech had lied about the reason for the delay.

The High Court heard arguments from both sides. Hi Tech's  explained their points with emails showing the name error caused the hold-up. Allied  said it was a fake excuse and pointed to inconsistencies in the emails. The court looked at everything, including affidavits confirming the emails were real, and decided not to cancel the delay approval.

The main appeal and the request to cancel the delay were heard together, with the court reserving judgment on August 19, 2025, and giving the final order on November 18, 2025.

Core Dispute:At the heart of this case was whether the patent office's rejection of Hi Tech's challenge was fair and well-explained. Hi Tech said the Controller ignored important evidence, like a letter from a customer suggesting Allied sold the product before the patent application date, and didn't properly check if the invention was inventive compared to older ideas (called prior arts D6 to D10). They also said additional documents they filed late, like invoices and court papers from the related suit, should have been considered to prove the patent was not new.

Another big point was whether the patent office should have waited for the Karnataka High Court to decide on the patent's validity in the other case. Hi Tech wanted a pause, but the Controller went ahead.

Allied defended the patent office's decision, saying the late documents didn't count under the rules, the prior sale claim wasn't proven, and the other court case didn't involve Hi Tech directly, so no need to wait.

There was also the side fight over the delay in appealing, where Allied accused Hi Tech of misleading the court.

Detailed Reasoning: The court started by handling the request to cancel the delay approval. Allied said they weren't notified before the delay was excused, which was true, so the court let them argue it now even though their request came late. Allied claimed Hi Tech lied about the name change causing the delay, since the change happened in 2022 but the appeal was filed in 2023. They also questioned email authenticity due to different signatures and fonts.

Hi Tech showed emails from September and October 2023 proving the appeal papers were first made with the old name "Private Limited" and corrected to "Limited" later, causing the delay. An affidavit from their lawyer's partner explained the signature differences as normal office variations. Another from the firm's IT person confirmed the emails came from their server.

The court examined these and said while Hi Tech's initial delay excuse lacked details, there was no deliberate lie. The explanation was good enough as "sufficient cause" for the short 51-day delay. So, the request to cancel was rejected.

Moving to the main appeal, the court looked at Hi Tech's plea to pause the patent office case until the Karnataka High Court decided. Hi Tech cited Aloys Wobben and another v. Yogesh Mehra and others, (2014) 15 SCC 360, where the Supreme Court said one person can't challenge the same patent in multiple places at once, like both in the patent office and court. The court discussed this judgment, noting paragraphs 24 and 25 say an opponent must pick one path: either post-grant opposition or revocation in court. 

But here, the Karnataka case was started by someone else, not Hi Tech. The patent office has a duty under the Patents Act, 1970, Sections 25(2) and related rules to decide oppositions. Without a stay order, the Controller had to proceed. The court said extending Aloys Wobben to stop the Controller would go too far. Hi Tech also cited State of H.P and others v. Surinder Singh Banolta, (2006) 12 SCC 484, paragraph 18, for avoiding inconsistent decisions, but the court said it didn't apply directly since the challengers were different.

Next, on whether the patent lacked novelty due to prior sale. Hi Tech pointed to a January 23, 2015 letter from JSW Steel saying Allied supplied "SLAG KOTE" for four years, meaning sales from January 2011, before the February 1, 2012 priority date. The court said this letter alone doesn't prove it was the exact patented product; more proof like orders or specs was needed. But the Controller didn't give any finding on this, which was a mistake. Affidavits from Hi Tech's director and an inventor also weren't mentioned in the decision. This needed rechecking.

On inventive step, Hi Tech cited prior arts D6 to D10, like old patents on similar anti-slag coatings. The Controller dismissed them briefly, saying D6 was for "anti-adherent slag pigment" and different, D7 for a flame-resistant material, and D8-D10 "entirely different." The court said this was too vague; no reasons why they didn't make the invention obvious. This core issue needed better analysis.

About late documents: "Further evidence A" (invoices, notes, permits, tests) and "B" (court papers). The Controller rejected them under Patents Rules, 2003, Rules 55-62, which limit evidence after certain stages. Rule 60 allows more with permission before hearing; Rule 62(4) lets "publications" with five days' notice. Citing Pharmacyclics LLC v. Union of India, order dated 20.11.2019 in W.P.(C) 12105 of 2019, the Controller said they weren't publications.

The court discussed "publication." It's not defined in the Patents Act, but in Copyright Act, 1957, Section 3, it means making available to the public. In context, Rules 57-60 stop new evidence late, so Rule 62(4) is for public-access docs like journals, not private ones like invoices (seller to buyer) or permits (to one person). For court papers, Section 74 of Indian Evidence Act, 1872, makes them public, but not freely accessible without court leave. Citing Briston-Myers Company's Application, (1969 R.P.C.146), Hi Tech said anything given without secrecy is published, but the court said invoices etc. aren't public in that sense; allowing them would bypass evidence rules. Still, since remand, the Controller should rethink under Rule 60.

On Section 3(e) of Patents Act, which bars patents for mere mixtures without synergy (combined effect better than parts), the Controller said the coating works well, but no basis shown. This needed relook.

Decision:The court set aside the July 5, 2023 order and sent the opposition back to a different Controller for fresh decision within four months, after hearing both sides. The patent stays valid till then. 

Concluding Note:This judgment shows how courts ensure patent decisions are thorough and fair, protecting innovation while allowing challenges. It clarifies rules on evidence in patent fights and when proceedings can run together. For businesses, it highlights documenting inventions clearly and challenging patents promptly with strong proof. It balances quick resolution with careful review, helping the patent system work better for everyone.

Case Title:  Hi Tech Chemicals Limited Vs Deputy Controller of Patents and Designs & Anr.

Order Date: 18.11.2025

Case Number: C.M.A.(PT) No.43 of 2023

Neutral Citation: 2025:MHC:2643

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: The Honourable Mr. Justice Senthilkumar Ramamoorthy

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

=====

Madras High Court Remands Patent Opposition in “Anti-stick Coating for Slag Pots” Case for Fresh Consideration

Chennai, 18 November 2025: In a significant patent litigation development, the Hon’ble Mr. Justice Senthilkumar Ramamoorthy of the High Court of Judicature at Madras delivered judgment on 18.11.2025 (reserved on 19.08.2025) in C.M.A.(PT) No. 43 of 2023 & CMP No. 17701 of 2025, titled M/s. Hi Tech Chemicals Limited v. Deputy Controller of Patents & Designs & Anr.

The appeal was directed against the order dated 05.07.2023 passed by the Deputy Controller of Patents, Chennai, rejecting the post-grant opposition filed by Hi Tech Chemicals Limited against Indian Patent No. 311984 (Application No. 382/CHE/2012) granted to M/s. Allied Metallurgical Products Private Limited for an invention titled “Anti-stick Coating for Slag Pots”.

The Single Judge set aside the Controller’s order and remanded the post-grant opposition for de novo consideration by a different Controller, primarily on the following grounds:

The impugned order failed to record reasoned findings on critical issues raised by the opponent, particularly on alleged prior commercial sale (lack of novelty), inventive step (prior arts D6–D10), and absence of evidence of synergistic effect to overcome Section 3(e) objection.

Inadequate analysis of inventive step in respect of cited prior arts D6–D10.

No findings on affidavits filed by the opponent’s director and the alleged inventor.

The Controller is directed to reconsider admissibility of additional documents filed by the opponent on 30.01.2023 (invoices, consignment notes, court pleadings, etc.) by treating the request as one for leave under Rule 60 of the Patents Rules, 2003.

The Court clarified that “publication” under Rule 62(4) is confined to documents made freely accessible to the public and does not extend to private commercial documents or court records requiring permission/certified copies.

The Court refused to stay the opposition proceedings pending the counter-claim for revocation before the Karnataka High Court, holding that the principle in Aloys Wobben (2014) 15 SCC 360 does not bar the Controller from discharging statutory duties when the revocation petitioner is a different entity.

The patent remains valid and in force pending the outcome of the remanded proceedings, which the Controller (other than the earlier officer) is directed to complete with a speaking order within four months after giving both parties a reasonable opportunity of hearing.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi.

=====

Ferrero Spa & Ors. Vs . Abhimanyu Prakash

Supply Chain Liability in Counterfeit Markets:

Introductory Note:This case concerns the global confectionery brand Ferrero Spa, the manufacturer and trademark owner of the iconic hazelnut cocoa spread sold under the well-known brand NUTELLA, and its legal action against entities engaged in manufacturing and distributing empty glass jars deceptively similar to the original Nutella jars. The dispute arose when Ferrero discovered that the defendants were selling look-alike Nutella jars, thereby facilitating counterfeiting and causing damage to the brand’s trademark, goodwill, and market reputation. The Delhi High Court examined not only the aspect of trademark infringement but also whether the circumstances warranted awarding damages and legal costs in addition to a permanent injunction.

Factual Background:Ferrero Spa and its associated plaintiffs are part of the world-renowned Ferrero Group, established in 1946, and they launched the NUTELLA brand in 1964 along with the exclusive configuration of the Nutella glass jar consisting of a unique shape, logo and trade dress. The plaintiffs have maintained uninterrupted usage of these trademarks internationally and in India for over five decades, and hold multiple registrations including registration of the shape of the Nutella jar itself.

The plaintiffs discovered in October 2022 that defendants 1 to 3, based in Firozabad, were manufacturing and selling empty glass jars identical to Nutella jars on online platforms, including IndiaMart and the website of defendant no. 4. The jars were marketed using the product description "Nutella glass jars", and carried embossing identical to those recovered in earlier cases concerning counterfeit Nutella products. The plaintiffs contended that the defendants were knowingly aiding the counterfeit market by supplying these jars.

Procedural History:The suit was instituted as CS(COMM) 65/2023, and ex-parte ad-interim injunctions were granted on 06.02.2023 and 08.02.2023 restraining defendants from dealing in Nutella glass jars. Local Commissioners were appointed and seized 3,05,916 infringing jars from the premises of defendants 1 to 3.

Defendants first opposed the claims and filed written statements; however, in August 2025 they conceded to the plaintiffs’ proprietary rights and did not contest the grant of permanent injunction. Mediation was attempted but failed. Plaintiffs thereafter filed an application seeking summary judgment under Order XIII-A CPC. Damages and legal costs were pressed only against defendants 1 to 3 and not against defendant 4.

Core Dispute:The core dispute before the Court was not whether the defendants were infringing the plaintiff’s trademarks, because the defendants ultimately did not contest this point. The question before the Court was whether the plaintiffs were entitled to monetary damages and litigation costs in addition to permanent injunction, and whether defendants could seek protection as “first-time innocent infringers”. The Court had to evaluate whether the facts attracted compensatory or punitive remedies under intellectual property jurisprudence.

Detailed Reasoning: The Court began by confirming that the plaintiffs possess registered proprietary rights in the Nutella trademarks and the registered shape mark of the Nutella jar. The defendants were found to have sold empty glass jars in sizes identical to those of the plaintiffs and marketed them online as “Nutella glass jars”. The Local Commissioners found over three lakh such jars, which defendants did not dispute.

When defendants later chose not to contest the injunction, the scope of dispute was narrowed to damages and legal costs. The Court examined whether the circumstances justified relief under Order XIII-A CPC, which empowers commercial courts to decide disputes summarily where the defendant has no real prospect of defending the case. The Delhi High Court relied on the earlier judgment in Su-Kam Power Systems Ltd. v. Kunwer Sachdev to reiterate that trials are not mandatory where evidence and pleadings provide sufficient material to adjudicate.

To determine damages, the Court considered Rule 20 of the Delhi High Court IPR Division Rules 2022, which allows the Court to award compensatory, exemplary, or punitive damages in intellectual property cases based on the nature of infringement. The plaintiffs calculated the defendants’ turnover of empty jars at more than ₹18 crore and the market value of counterfeit finished products at ₹533 crore to justify damages of ₹53 crore. However, the Court noted that these calculations were not pleaded earlier and there was no direct evidence linking the defendants to sale of counterfeit Nutella products, even though the embossing on jars created suspicion.

The Court rejected the defendants' plea of being “first-time innocent infringers”. The Court reasoned that the manufacturing process, the email containing jar specifications labelled “Nutella cocoa jar”, online product descriptions, and the large scale of production showed that defendants knowingly infringed, thereby distinguishing this case from Koninlijke Philips v. Amazestore and Aero Club v. Sahara Belts, where defendants demonstrated bona-fide conduct.

However, the absence of proof that defendants were involved in selling counterfeit finished products prevented the Court from accepting the ₹53 crore damages claim. To balance deterrence with fairness, the Court decided not to undertake a detailed turnover estimation. Instead, it adopted an equitable principle: awarding partial legal costs and depriving defendants of the large stock of infringing inventory seized from their premises. This approach both punishes deliberate infringers and prevents unjust enrichment.

Decision:The Delhi High Court decreed the suit in favour of the plaintiffs and granted permanent injunction restraining all defendants from manufacturing, offering for sale or selling Nutella glass jars or any similar product. Defendants 1 to 3 were directed to deliver all seized jars to the plaintiffs within two weeks, allowing plaintiffs to dispose of them as desired, including charitable use under CSR. All remaining infringing packaging was ordered to be destroyed under supervision.

Defendants 1 to 3 were directed to pay ₹10 lakh towards legal costs within four weeks, failing which interest at 12% per annum would apply. Damages for counterfeiting finished products were not granted due to lack of supporting evidence. Relief regarding declaration of Nutella as a “well-known mark” was reserved for separate proceedings.

Concluding Note:This judgment demonstrates the evolving approach of Indian commercial courts toward intellectual property disputes. The decision reflects a balanced path: strict protection of proprietary rights with remedies tailored to the degree and nature of infringement. While the Court did not award astronomical damages without concrete evidence, it still ensured deterrence by granting permanent injunction, substantial legal costs, and forfeiture of infringing inventory worth more than ₹62 lakh. The judgment reinforces that ignorance cannot be claimed where infringement is knowing and deliberate. It emphasises that intermediaries supporting counterfeit supply chains, even indirectly, cannot escape legal responsibility.

Case Title: Ferrero Spa & Ors. Vs. Abhimanyu Prakash & Ors.

Case Number: CS(COMM) 65/2023

Order Date: 19 November 2025

Neutral Citation: 2025:DHC:10308

Court: High Court of Delhi at New Delhi

Hon’ble Judge: Justice Manmeet Pritam Singh Arora

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

=====

Ferrero Spa & Ors. Vs . Abhimanyu Prakash & Ors., CS(COMM) 65/2023, Decided on 19 November 2025, by Hon'ble Justice Manmeet Pritam Singh Arora, High Court of Delhi

In a significant move strengthening trademark and trade dress protection in India, the Delhi High Court has permanently restrained the defendants from manufacturing and selling empty glass jars deceptively similar to the iconic Nutella jar owned by Ferrero Spa. The Court held that the defendants were knowingly producing and marketing look-alike “Nutella glass jars” without authorization and offering them for sale online, resulting in clear infringement of Ferrero’s registered trademarks.

The Court noted that over 3,05,000 infringing empty glass jars were seized from the defendants during court-appointed raids. The defendants, after initial resistance to the suit, later conceded to the permanent injunction. While Ferrero sought substantial damages, including loss based on counterfeit finished products, the Court found no direct evidence linking the defendants to the sale of counterfeit Nutella goods. However, the Court held that the defendants could not be treated as “innocent first-time infringers” given their deliberate imitation and commercialization of the Nutella jar design.

Consequently, the Court not only made the injunction absolute but also imposed partial legal costs of ₹10 lakhs upon defendants 1 to 3 and directed them to hand over the entire stock of seized infringing jars to Ferrero within two weeks, warning that failure to pay costs within four weeks would attract 12% interest per annum.

The ruling is notable for applying the summary judgment mechanism under Order XIII-A CPC along with Rule 20 of the Delhi High Court IPD Rules, 2022, to grant timely relief without a full trial, reinforcing judicial intolerance toward deliberate trade dress imitation and its role in facilitating counterfeit markets.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi.

Madras Bar Association versus Union of India

Constitutional Supremacy Over Parliamentary Persistence

Inroductory Note:This is the latest chapter in the long-running legal battle between the Madras Bar Association and the Government of India over how tribunals should be set up and run in our country. Tribunals are special courts created by laws to decide specific kinds of disputes quickly – like tax cases, company matters, labour disputes, consumer complaints, intellectual property issues, and many others – so that regular courts are not overloaded. Over the last forty years the Supreme Court has repeatedly told the government that these tribunals must be truly independent, free from government control in appointments, salary, tenure, and day-to-day working, because they perform judicial functions almost like courts. 

 Factual Background:  The government brought the Tribunals Reforms Act, 2021, which fixed a minimum age of fifty years for appointment, gave only four years tenure instead of five, allowed the government to choose from a panel of two names instead of one, tied house rent allowance to ordinary government officers’ rates, and used strong “notwithstanding any judgment” clauses to override earlier Supreme Court orders. The Madras Bar Association challenged this law saying it was almost exactly the same as the 2021 Ordinance that the Supreme Court had already struck down just a few months earlier. They argued that Parliament cannot simply re-enact something the Court has declared unconstitutional without removing the defects. A Constitution Bench of the Supreme Court heard the matter and on 19 November 2025 delivered a powerful judgment upholding the independence of tribunals and striking down the most objectionable parts of the 2021 Act.

Procedural Detail:The lead case was Writ Petition (Civil) No. 1018 of 2021 filed by the Madras Bar Association directly in the Supreme Court under Article 32. Another connected petition was Writ Petition (Civil No. 626 of 2021.  During the hearing the Attorney General requested that the matter be referred to a larger bench saying the earlier judgments needed reconsideration. The Court rejected that request because the issues had already been settled by larger benches earlier. 

Core Dispute:The heart of the dispute was very simple – can Parliament ignore repeated Supreme Court directions about how tribunals should be run and pass a law that directly goes against those directions? The Court had said again and again – in 2010, 2014, 2015, 2020, 2021, and 2022 – that tribunal members must get at least five years tenure, advocates with ten years practice must be eligible, there must be no minimum age of fifty years, house rent allowance must be generous so that members do not feel financially insecure, the selection committee must be judiciary-dominated, and only one name should be recommended for each post so that the government cannot pick and choose. The 2021 Act brought back the very same provisions that had been struck down earlier – four-year tenure, fifty years minimum age, panel of two names, ordinary government-scale house rent allowance, and even added clauses saying “notwithstanding any judgment of any court”. The petitioners said this was nothing but an attempt to overrule the Supreme Court by legislation, which is not allowed in our Constitution. The government replied that Parliament has full power to make laws on tribunals and the Court cannot dictate the content of the law.

Detailed Reasoning : The Court began with a beautiful quote from Dr B R Ambedkar in the Constituent Assembly that every organ of the State – legislature, executive and judiciary – must respect its own limits and obey the Constitution and the decisions of the authority created to settle disputes between them, which is the Supreme Court. The Court said India does not have parliamentary sovereignty like England we have constitutional supremacy meaning no one, not even Parliament, is above the Constitution.

The Court then carefully examined the entire history of tribunal cases. It discussed S P Sampath Kumar v Union of India (1987) 1 SCC 124 where the Court first allowed tribunals but said they must be equal to High Courts in independence. Then R K Jain v Union of India (1993) 4 SCC 119 which said tribunals must have judicial outlook. The landmark L Chandra Kumar v Union of India (1997) 3 SCC 261 declared that judicial review by tribunals cannot take away the power of judicial review of High Courts and Supreme Court and that judicial review is part of the basic structure of the Constitution. 

Then came Union of India v R Gandhi President Madras Bar Association (2010) 11 SCC 1 popularly called Madras Bar-I where the Court laid down detailed conditions for company law tribunals – five-year tenure, judicial dominance in selection, no government officers on deputation, etc. Madras Bar Association v Union of India (2014) 10 SCC 1 called Madras Bar-II struck down the National Tax Tribunal Act completely because it gave too much power to the executive. Madras Bar Association v Union of India (2015) 8 SCC 583 Madras Bar-III corrected defects in the Companies Act tribunals. Rojer Mathew v South Indian Bank Ltd (2020) 6 SCC 1 struck down the Tribunal Rules of 2017 because the executive had majority in selection committees and suggested a National Tribunals Commission. 

Then came the most important recent judgments – Madras Bar Association v Union of India (2021) 7 SCC 369 called Madras Bar-IV where a five-judge bench struck down the Tribunal Reforms Ordinance 2021 provisions of four-year tenure and fifty years age and directed five-year tenure, generous house rent allowance, single name recommendation, etc. Just a year later in Madras Bar Association v Union of India (2022) 12 SCC 455 the Court again struck down attempts to reintroduce the same provisions.

The Court pointed out that despite all these clear judgments the government brought the Tribunals Reforms Act 2021 with almost identical provisions. The Court said this is not just non-compliance it is a direct attempt to legislatively overrule binding judicial decisions which is not permissible. 

The Court relied on several important cases to say that once the Supreme Court declares the law under Article 141 or issues directions under Article 142 or Article 32 the legislature cannot nullify them by ordinary legislation without removing the basis of the judgment. 

Important cases cited were Property Owners Association v State of Maharashtra (2000) where legislation trying to overcome a judgment was struck down NHPC Ltd v State of Himachal Pradesh 2023 INSC 810 Dr Jaya Thakur v Union of India 2023 SCC OnLine SC 813 and many others. 

The Court said when Parliament re-enacts a struck-down provision without curing the constitutional defects it shows a form of “constitutional disobedience”.

On the minimum age of fifty years the Court said it is completely arbitrary. A brilliant advocate of forty-four years with twenty years experience becomes ineligible but a fifty-year-old bureaucrat with no court experience becomes eligible. There is no rational reason for this cut-off. It violates Article 14 equality. 

On four-year tenure the Court said short tenure makes members insecure and dependent on the government for reappointment which destroys independence. Five years is the minimum needed for attracting good talent. 

On the panel of two names the Court said it gives the government a chance to pick their favourite and reject the other which again affects independence. On house rent allowance the Court said tribunal members must get proper accommodation or high HRA so they do not feel financially insecure compared to judges. Tying it to ordinary government rates defeats that purpose.

The Court rejected the Attorney General’s plea to send the case to a larger bench saying all issues have already been settled by earlier larger benches and there is no new substantial question of law.

Decision:The Supreme Court struck down the following provisions of the Tribunals Reforms Act 2021 the minimum age requirement of fifty years the four-year tenure provision the requirement of sending a panel of two names instead of one and the provisions tying house rent allowance to ordinary government scales. 

The Court upheld only the transitional provision that allowed members appointed between 2017 and 2021 to get up to five years if their original appointment letter said so. The Court directed the government to immediately set up a National Tribunals Commission as an independent body to handle all tribunal appointments and administration. Till then a separate Tribunals Wing should be created in the Ministry of Law not Finance. 

The Court also restored all the directions given in the 2021 Madras Bar judgment – five-year tenure, eligibility of advocates with ten years practice, high house rent allowance of ₹1.5 lakh and ₹1.25 lakh per month, judiciary-dominated selection committee, single name recommendation, etc. All appointments made under the old rules were protected. 

Concluding Note:This judgment is a landmark reaffirmation that in India the Constitution is supreme not Parliament and not even the Supreme Court. No organ of the State can behave as if it is above the Constitution. The repeated attempts by the government to bring back struck-down provisions have been firmly rebuffed. By striking down the age and tenure restrictions and ordering a National Tribunals Commission the Court has tried to finally settle a forty-year-old problem. Whether the government will now comply in letter and spirit or come back with new legislation remains to be seen but this judgment has sent the strongest possible message that judicial independence cannot be compromised.

Case Title: Madras Bar Association versus Union of India and Another

Order Date: 19 November 2025

Case Number: Writ Petition (C) No. 1018 of 2021 (with Writ Petition (C) No. 626 of 2021)

Neutral Citation: 2025 INSC 1330

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Hon'ble Mr. Chief Justice B.R. Gavai and Shri K. Vinod Chandran

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

MTS Papers India Limited v. Spento Papers India LLP

Amendment of Plaint Versus Lack of Territorial Jurisdiction

Brief Introductory Head Note:The case MTS Papers India Limited v. Spento Papers India LLP, FAO (COMM) 214/2025, decided on 17 November 2025 by the High Court of Delhi, dealt with the question whether a civil commercial court in Delhi could entertain a recovery suit when the plaint did not disclose any facts demonstrating territorial jurisdiction. The High Court examined whether a plaint that is silent on jurisdictional facts can be cured through pleadings like replication or by amendment, especially when an application under Order VII Rule 10 CPC is pending. Subsequent to filing of application of application under Order 7 Rule 10 CPC, the plaintiff filed application under Order 6 Rule 17 CPC. Trial Court rejected the Plaint. High Court upheld dismissal order.

Factual Background: MTS Papers India Limited, the appellant, is a trader of various paperboard products. It facilitated a supply arrangement between Spento Papers India LLP and a third-party customer in Vietnam. As per the understanding between the parties, MTS acted as an intermediary by negotiating price, raising orders, obtaining proforma invoices and handling commercial communication on behalf of the overseas customer. The commission payable to MTS was allegedly agreed upon by both sides.

Supply of paperboard was executed by Spento Papers to the Vietnamese customer. However, commission was not paid to MTS, despite repeated email reminders and a legal notice. MTS then initiated pre-institution mediation under Section 12A of the Commercial Courts Act, but the respondent did not appear. Consequently, MTS filed a recovery suit in Delhi seeking an amount of ₹44,88,961 together with interest.

Procedural Detail: The suit was filed before the Commercial Court in Rohini, Delhi as CS (COMM) 519/2022. Spento Papers filed a written statement and also moved an application under Order VII Rule 10 CPC seeking return of the plaint on the ground that no territorial jurisdiction existed. The trial court noted that the plaint did not contain material particulars showing how Delhi courts had territorial jurisdiction. An attempt was later made by MTS to amend the plaint under Order VI Rule 17 CPC, claiming that part of the cause of action arose in Delhi. The trial court dismissed the amendment application and thereafter allowed the defendant’s application under Order VII Rule 10, returning the plaint through an order dated 22 March 2025. MTS then filed an appeal before the Delhi High Court under Section 13(1A) of the Commercial Courts Act.

Core Dispute: The central controversy before the High Court was whether the plaint, as originally filed, disclosed territorial jurisdiction under Section 20 CPC. If it did not, could the court consider the replication or allow amendment to insert jurisdictional pleadings, while an application under Order VII Rule 10 CPC was pending? The dispute involved the interplay between the statutory requirement for jurisdiction, the scope of pleadings, and the powers of the court when jurisdictional defects exist.

Detailed Reasoning Including Judicial Citations: The High Court reiterated that the objection under Order VII Rule 10 is decided on demurrer, meaning that the facts stated in the plaint must be presumed to be true, and the question is whether, even if all facts stated are correct, the court has jurisdiction to entertain the suit. It relied on the Supreme Court ruling in Exphar SA v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, which emphasised that when territorial jurisdiction is challenged, only the plaint can be looked at and not the defence.

The Court examined the plaint and found that paragraph 23 was the only averment regarding jurisdiction, which merely stated that the plaintiff “works for profit in Delhi”. There was no pleading that any part of the cause of action arose in Delhi, no statement that the agreement was executed in Delhi, that payment was due in Delhi, or that commission invoices were payable in Delhi. Therefore, the plaint was silent on jurisdictional facts.

The High Court analysed several authorities, including: M/s RSPL Ltd. v. Mukesh Sharma, 2016:DHC:5482-DB HSIL Limited v. Imperial Ceramic, 2018 SCC OnLine Del 7185 Archie Comic Publications Inc. v. Purple Creation Pvt. Ltd., 172 (2010) DLT 234 (DB)

From these decisions, the High Court derived the settled legal position that if a plaint discloses some jurisdictional facts, even if incomplete, amendment may be allowed. However, if the plaint discloses no jurisdictional facts at all, then the court has no authority to retain the matter and cannot entertain an amendment to cure that defect. The Court emphasised that permitting such amendment would amount to conferring jurisdiction where none existed, which is legally impermissible.

The Court clarified that jurisdiction must be determined only on the basis of the plaint as originally filed. While MTS argued that replication contained jurisdictional pleadings and should have been considered, the High Court noted that replication cannot substitute or supplement the plaint for determining jurisdiction under Order VII Rule 10.

It relied on Harshad Chimanlal Modi v. DLF Universal Ltd., (2005) 7 SCC 791, which held that where a court inherently lacks jurisdiction due to statutory limitation, no amount of consent, waiver or amendment can confer jurisdiction.

The reiterated that an amendment to the plaint cannot be permitted where the averments in the plaint, as originally filed, do not disclose any facts conferring territorial jurisdiction upon the Court. High Court affirmed that the plaint did not show how Delhi courts had territorial jurisdiction; therefore, the trial court was right in returning the plaint under Order VII Rule 10 CPC.

Decision: The Delhi High Court dismissed the appeal and upheld the order of the Commercial Court. It was held that since the plaint, as presented originally, contained no facts to support territorial jurisdiction, the trial court was correct in not considering the replication and in rejecting the amendment application. As a result, the plaint stood returned to the plaintiff for presentation before the appropriate court having jurisdiction.

Concluding Note: This judgment strengthens the principle that litigants cannot choose any forum at convenience merely because they carry on business there. Jurisdiction flows from the statute and from the cause of action pleaded in the plaint. If the plaint does not disclose jurisdictional facts, the court has no authority even to allow an amendment to correct the omission. The ruling serves as a caution that recovery suits and commercial suits must plead territorial jurisdiction with precision, as defects of jurisdiction cannot be cured later.

Case Title: MTS Papers India Limited v. Spento Papers India LLP

Order Date: 17 November 2025

Case Number: FAO (COMM) 214/2025

Neutral Citation: 2025:DHC:10095-DB

Court: High Court of Delhi

Hon’ble Judges: Justice Nitin Wasudeo Sambre and Justice Anish Dayal

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

Aqualite Industries Private Limited Vs Relaxo Footwears Limited

Design Infringement and prior publication

Brief Introductory Head Note: The case Aqualite Industries Private Limited v. Relaxo Footwears Limited, FAO(OS)(IPD) 1/2022, decided on 18 November 2025 by the High Court of Delhi, involved an important dispute under the Designs Act, 2000. The court examined whether Aqualite’s sale of Hawai slippers amounted to infringement of Relaxo’s registered product designs. The decision clarified how novelty, prior publication and prior art should be assessed at the interlocutory stage while determining design piracy. The ruling is significant for commercial design protection in India because it demonstrates how courts balance interim injunction principles with the statutory protection offered to registered design holders.

Factual Background:  Relaxo Footwears Limited manufactures popular Hawai slippers, including models BHG 136 and BHG 137. These models incorporate distinctive vertical side ridges along the body of the slippers. Relaxo secured design registrations for both models under the Designs Act, vide Registration Nos. 325071 and 325074, dated 27 December 2019. The certificate of registration explicitly recognised novelty in the shape, configuration and surface pattern of the footwear, and in particular the side ridges.

In February 2021, Relaxo discovered that Aqualite Industries Private Limited had launched slippers that were visually similar and carried the same characteristic side ridges. Relaxo alleged that Aqualite had replicated the registered designs and sold replicas of BHG 136 and BHG 137 in the market. The alleged replication was supported with picture-to-picture comparison between Relaxo’s slippers and Aqualite’s products, showing substantial similarity in the placement and configuration of ridges.

Procedural Detail: Relaxo filed a commercial suit before the Intellectual Property Division of the Delhi High Court for permanent injunction against Aqualite on the basis of design infringement. Along with the suit, an application for interim injunction under Order XXXIX Rules 1 and 2 CPC was filed. On 8 October 2021, the learned Single Judge granted an interim injunction restraining Aqualite from manufacturing or selling footwear infringing Relaxo’s designs.

Aqualite challenged the injunction through an appeal before the Division Bench. Interestingly, before the Single Judge, summons in the suit had been issued only on the date when orders were reserved in the injunction application. Therefore, Aqualite had no opportunity to file a written statement, although it did file a reply to the injunction application and placed several documents on record, including photographs of footwear alleged to constitute prior art.

Core Dispute:  The core legal controversy revolved around two issues. First, whether Aqualite had infringed Relaxo’s registered designs by using identical side ridges on slippers. Second, whether Aqualite could avoid injunction by arguing that the registered designs lacked novelty and were liable to be cancelled, invoking Section 22(3) of the Designs Act.

Relaxo’s case relied on Section 22(1) of the Designs Act which protects a registered design from piracy during the term of copyright in the design. Relaxo submitted that replication of the registered side ridges amounted to piracy.

Aqualite did not deny the similarity between the products, but defended itself under Section 22(3), claiming that the registered designs lacked novelty because prior art already contained similar ridge-patterned slippers. Aqualite also contended that the designs were not visually appealing and were liable to cancellation under Section 19(1)(b) and (c).

Detailed Reasoning: The Court examined the design registrations and product comparisons and found that the side ridges formed the central novel feature highlighted in the certificates. The Court reiterated that the comparison must occur between the registered designs and the defendant’s articles, rather than between the finished products sold in the market, as held consistently under the Designs Act.

The Court noted that Aqualite admitted the existence of identical side ridges in its slippers. Multiple pictures in the record showed that the ridges were replicated either for the full length or in the frontal arch area exactly as in Relaxo’s registered models. The Court concluded that design piracy under Section 22(1) had clearly occurred.

With respect to Aqualite’s defence under Section 22(3), the Court explained that although the Designs Act permits raising grounds of cancellation as a defence, such defences must be supported by adequate pleadings and evidence. Aqualite had indeed filed images of alleged prior art, but there were no pleadings supporting those images, nor was there proof regarding their dates of publication or market availability. The Division Bench observed that two alleged prior arts lacked any evidence regarding date of publication, which made them unreliable for establishing lack of novelty. Reliance was placed on Reckitt Benckiser v. Wyeth Ltd and Bharat Glass Tube Ltd v. Gopal Glass Works Ltd to explain the legal threshold of “prior publication” that is required to defeat novelty.

Since the defendant had not filed a written statement or comprehensive pleadings, the Court found that the prior-art argument rested on weak foundations at the interlocutory stage. Consequently, the defence did not neutralise Relaxo’s statutory rights arising from the registered designs.  The Court also clarified that colour similarity of slippers had no effect on piracy because the design certificates protected only the shape, configuration and surface pattern, not colour combinations.  The Court emphasised that when piracy is prima facie established, interim injunction becomes necessary because the very purpose of design registration would become futile if replicas are permitted to circulate in the market while litigation continues.

Decision:  The High Court dismissed the appeal, upheld the order of the learned Single Judge and restored the injunction. Aqualite was restrained from manufacturing, selling or dealing in slippers that infringed Relaxo’s registered designs 325071 and 325074. The ruling reinforced that design owners must be protected from replicas during litigation where replication is admitted, especially when defences suggesting invalidity are unsubstantiated at the interim stage.

Concluding Note: This decision reiterates that design registration offers statutory protection which must be given practical effect through injunctions when piracy is prima facie established. Defendants cannot rely on speculative or weak allegations of prior art to escape liability at the interlocutory phase. The ruling emphasises that replication of visually distinctive structural elements of a registered design is sufficient to secure injunction, and courts will focus on comparing the registered design itself with the impugned article. The case strengthens design jurisprudence in India by reinforcing that novelty must be challenged through cogent evidence and that mere allegations of similarity with older products do not dilute the enforceability of a valid registered design.

Case Title: Aqualite Industries Private Limited Vs Relaxo Footwears Limited

Order Date: 18 November 2025

Case Number: FAO(OS)(IPD) 1/2022

Neutral Citation: 2025:DHC:10128-DB

Court: High Court of Delhi

Hon’ble Judges: Justice C. Hari Shankar and Justice Om Prakash Shukla

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

Rajeev K.P. Vs Unais K.K.

Rectification Proceedings Do Not Freeze Trademark Rights

Brief Introductory Head Note Summary of the Case:  This case concerns a trade mark infringement dispute relating to the compost bin product known as “BOKASHI BUCKET”. The plaintiff, Rajeev K.P., who owns the registered trademark for the term BOKASHI BUCKET, approached the court seeking a temporary injunction preventing the defendant, Unais K.K., from selling an identical product using the same trademark. The trial court rejected the application for temporary injunction, but the Kerala High Court reversed that decision and granted injunction in favour of the plaintiff.

Factual Background: The plaintiff is the proprietor of Global Pharmaceuticals, and claims to have introduced an innovative composting product under the registered trademark BOKASHI BUCKET, which is scientifically designed to convert biodegradable waste into manure. The plaintiff asserts that due to extensive usage, promotional activities and presence in the market, the product enjoys wide reputation, especially with repeated procurement by Suchitwa Mission and local government authorities.

According to the plaintiff, distributors discovered that an identical compost bin was being sold by the defendant. It was alleged that the defendant copied the overall appearance, design, configuration and features of the plaintiff’s product and further used the words “BOKASHI BUCKET”, thereby infringing the plaintiff’s registered trademark and passing off his goods as those of the plaintiff.

Procedural Detail:  The plaintiff filed a suit in the Additional District Court, Manjeri, along with an application for interim injunction. Initially, an ad-interim injunction was granted; however, after the defendant appeared and filed objections, the trial court vacated the injunction through its order dated 23.08.2025, holding that there was no prima facie case, and that balance of convenience and irreparable injury did not favour the plaintiff.  Aggrieved, the plaintiff filed FAO No.118 of 2025 before the Kerala High Court under appellate jurisdiction.

Core Dispute:  The pivotal legal issue before the High Court was whether the plaintiff, as the registered proprietor of the trade mark BOKASHI BUCKET, was entitled to a temporary injunction on the ground of trademark infringement, especially when the defendant was also using the term “BOKASHI BUCKET” to market identical goods.

A side issue argued by the defendant was that a rectification petition was already filed before the Trade Marks Registry against the plaintiff’s registration. Hence, according to the defendant, failure of the plaintiff to file counter statement meant that the registration had become ineffective, extinguishing the plaintiff’s statutory rights.

Detailed Reasoning Including Judgment with Citations:  The High Court first clarified that since the plaintiff confined the appeal only to the ground of trademark infringement, aspects of design registration, patent claims and prior user were not germane for consideration.

It was undisputed that:

1. The plaintiff held valid trademark registration for “BOKASHI BUCKET”.

2. The defendant was using the same term (“BOKASHI BUCKET”), and

3. Both parties were selling identical goods – compost bins.

This combination brought the case squarely within Section 29(2)(c) of the Trade Marks Act, which states that infringement occurs when there is identity of both trademark and goods, resulting in deemed likelihood of confusion. Section 29(3) mandates that in such situations the Court shall presume confusion.

The High Court relied heavily on the Supreme Court’s landmark decision in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Others, (2022) 5 SCC 1, which clarified that in an infringement action, once identity of the marks and goods is established, no further inquiry into confusion or deception is necessary. The Supreme Court had reiterated earlier positions laid down in:

Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980

Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727

The Court highlighted that in an infringement matter, arguments regarding get-up, packaging and price difference are irrelevant if the essential features of the registered trademark are adopted by the defendant.

Regarding the defendant’s argument that failure to file counter-statement in rectification proceedings resulted in extinguishment of trademark rights, the High Court interpreted Rule 98 of the Trade Marks Rules, 2017, and held that:

Non-filing of counter-statement only allows the rectification applicant to proceed with evidence.There is no statutory consequence of deeming the registration as void or inoperative due to this delay.Therefore, the Court held that so long as the trademark remains on the register, the statutory protections under Sections 28 and 29 remain fully enforceable.

Decision: The High Court concluded that:The plaintiff had a strong prima facie case.Balance of convenience favoured the plaintiff because permitting the defendant to continue use of the registered trade mark would dilute statutory rights.Irreparable injury would occur if infringement continued during the pendency of the suit.Accordingly, the order of the trial court was set aside, and a temporary injunction was granted restraining the defendant from manufacturing, selling, or promoting compost bins under the name “BOKASHI BUCKET”, until disposal of the suit.

Concluding Note: This judgment reinforces the principle that once a trademark is validly registered, the statutory right of exclusivity under Sections 28 and 29 of the Trade Marks Act becomes absolute in infringement matters. Even ongoing rectification proceedings do not dilute trademark protection unless the registration is removed through a final order. The case further underscores that infringement analysis is distinct from passing off, and where identity of mark and goods is established, injunction becomes a legal consequence rather than a discretionary relief.

Case Title: Rajeev K.P. Vs Unais K.K.

Order Date: 18 November 2025

Case Number: FAO No.118 of 2025

Neutral Citation: 2025:KER:87639

Court: High Court of Kerala at Ernakulam

Hon’ble Judge: Justice S. Manu

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

Fontaine Limited Versus Berkeley Beauty Brands Private Limited

Unauthorized Stock Dump and Trademark Infringement

Facts:The case centers on a trademark dispute in the luxury perfume industry between Fontaine Limited, the owner of the world-famous CREED brand, and several related Indian companies and their directors known as the defendants. CREED, started in 1760, is a high-end perfume house famous for its unique scents for men and women, built on years of use, ads, and strict quality checks that have created huge trust among buyers. Fontaine took over the CREED business in India in 2020 through deals that gave it full rights to the brand's trademarks, including the CREED device mark registered in India under Class 3 for perfumes and protected under Classes 3, 4, and 35 via the Madrid Protocol since early 2022.

Before Fontaine's takeover, a company called Erol International had a deal with Defendant No. 2 from 2017 to bring in, sell, and spread CREED products in India as the only allowed seller, with rights to use ads and promo stuff. Defendant No. 1, linked to Defendant No. 2, ran a CREED store in Delhi's Chanakya Mall. After Fontaine bought the business, it kept supplying products to Defendants 1 and 2. But starting in June 2021, Defendant No. 2 delayed payments on bills, paying late only in February 2022 after reminders. Because of these repeats and no responses, Fontaine let the deal end on 9 August 2022 and asked for a smooth close-up. Under the deal's rules, after it ended, Defendants 1 and 2 lost rights to buy, sell, or use CREED marks.

Even after warnings, Defendants 1, 3, and 4— all part of the same group—kept selling CREED items through wrong channels like side shops and WhatsApp under names like 'CREED the Chanakya' to fool buyers into thinking they were still official. Defendants 5 to 7 were the bosses running daily work for these companies. Fontaine sent stop notices on 30 August 2022 and 7 July 2023, offering to buy back good stock at cost price and destroy bad stuff under watch, but Defendants ignored them and kept going, hurting Fontaine's name and sales.

Procedural Detail:Fontaine filed the suit in August 2023 for a full stop order against the misuse, plus orders to hand over and destroy wrong items, plus money for losses and costs. Right away, on 18 August 2023, the court gave a quick one-sided stop order against using CREED marks or selling through wrong ways, and sent a checker to look at Defendants' spots. The checker went on 29 August 2023 and found empty boxes, bags, booklets, signs, and a screen with CREED marks at Defendant No. 1's place, plus a list of leftover stock that matched Fontaine's info.

Defendant No. 1 answered on 28 December 2023 but skipped admitting or denying many papers, and admitted running the store till 29 April 2023 even after the deal ended. Defendants 2 to 7 got papers but didn't show up, so on 21 February 2024, the court shut their chance to answer. On 1 May 2024, the quick stop became lasting. Fontaine then asked on 20 September 2024 for a fast win under Order 13-A CPC and IP rules. Defendant No. 1 added a late paper answer on 8 April 2025. Hearings happened, and the full 24-page order came on 14 November 2025.

Dispute:The main fight was over whether Defendants could keep selling leftover CREED stock after their deal ended on 9 August 2022 without permission, using the CREED name on the store and WhatsApp to trick buyers. Fontaine said this broke the deal's end rules, hurt its good name, and cheated customers by pretending to be official sellers, asking for a forever stop, stock handover, and money for lost sales and costs around Rs. 45 lakhs. Defendant No. 1 agreed to the stop but fought the money part, saying no proof of sales after end date and that all stock was tossed by late 2023. Others didn't fight at all. The key was if Fontaine proved the wrong sales with papers like checker reports, buy tests, and chats, and if a fast win fit without full trial since no real fight back.

Detailed Reasoning:The court used the easy three-step check for quick wins in business cases: if the claim looks strong on first look, if waiting for full proof would waste time without real doubt, and if no strong reason needs a full hearing. Here, since Defendant No. 1 agreed to the stop and others skipped court, there was no real fight, making trial needless.

The court first explained CREED's fame and Fontaine's full rights via 2020 deals, noting registrations and how Defendants got short-term okay under the 2017 deal that ended naturally. It stressed deal rules required giving back good stock at cost and stopping all use, but Defendants kept the store open till April 2023 and sold via WhatsApp in mid-2023, fooling buyers. The court saw this as clear misuse under the Trademarks Act, 1999, hurting trust and sales.

For the fast win, the court leaned on Su-Kam Power Systems Ltd. v. Kunwer Sachdev (2019 SCC OnLine Del 10764), where a same-level bench said business suits aim for quick ends, and trials aren't always needed if no real chance to win for the other side—'real' means solid, not just dreams. Here, no real doubt since Defendant No. 1 admitted the store ran post-end and didn't deny key papers like notices and checker finds, and others admitted everything by not showing up.

On money, the court matched it to Rule 20 of Delhi High Court IP Rules 2021, which helps figure losses from wrong use. It used the checker list of leftover stock (undisputed) and test buys (with bills showing Defendant links) to back Fontaine's math in Document 1: Rs. 37.43 lakhs profit grab from Rs. 2.1 crore sales. No counter proof like tax returns from Defendants sealed it. The court cited Aero Club v. M/s Sahara Belts (2023 SCC OnLine Del 7466) for using seized stock lists for damage math, and Hindustan Lever Ltd. v. Satish Kumar (2012 SCC OnLine Del 1378) and Ebay Inc. v. Mohd. Waseem (2022 SCC OnLine Del 3879) saying skippers can't dodge money claims—they admit faults.

For how bad the wrong was, the court used Koninlijke Philips v. Amazestore (2019 SCC OnLine Del 8198), listing bad acts like repeat wrongs (Defendants hit before in Yves Saint Laurent v. Brompton Lifestyle, CS(COMM) 789/2022 order 4 January 2024) as high-level bad, needing strong stops and money to scare off future cheats. This fit since Defendants are group-linked bosses who hid sales via side firms. The court said money covers lost chances, name harm, and unfair gains, plus costs (Rs. 7.97 lakhs for fees, checker, court) to make Fontaine whole.

All defendants shared blame jointly since linked, and must hand over seized stuff in 4 weeks or pay 12% interest. The quick stop from 18 August 2023 merged into the full order.

Decision

Decision:The application I.A. 40224/2024 allowed. Restraint order against using CREED marks or selling products wrong, handover/destroy of seized items, Rs. 37,42,737 damages, Rs. 7,97,000 costs, all joint on Defendants 1-7, payable in 4 weeks or with 12% interest. Suit decreed; no more dates.

Case Title: Fontaine Limited Versus Berkeley Beauty Brands Private Limited & Ors.

Order Date: 14 November 2025 

Case Number: CS(COMM) 564/2023 

Court: High Court of Delhi 

Hon'ble Judge: Ms. Justice Manmeet Pritam Singh Arora

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