BASE SE Vs. Deputy Controller of Patents and Designs

Partial Grant of Patent

Fact:The matter concerns the rejection of a patent application by the Deputy Controller and its subsequent appeal under the Patents Act, 1970.The case begin with a patent application filed on 26 February 2009 titled "Pesticidal Mixtures Comprising an Anthranilamide Compound." It contained originally 24 claims related to a chemical mixture used to protect plants from harmful fungi and pests. 

The application was subjected to the examination process under the provisions of the Patents Act, and a First Examination Report (FER) dated 13 October 2014 objected to the claims under sections 2(ij), 3(e), 3(h), and 3(i). The applicant then amended the claims, reducing them to 18 and modifying the invention's title.

Partial allowance of Claims:After successive hearings and further amendments, claims 1 to 9 and 17 were accepted and others (claims 10 to 16) were rejected under section 3(h) of the Act. The Deputy Controller directed the applicant to amend the rejected claims. 

The Appeal:The appellant challenged this decision on several grounds: that section 3(h) was wrongly applied, there was a violation of natural justice due to inadequate hearing opportunities, and partial grant of patent was warranted. The appellant supported their case by referencing several judgments, including Siemens Engineering Manufacturing Co. of India Ltd. vs. Union of India (1976) 2 SCC 981 and unreported decisions relevant to patent law.

On the other side, the respondent argued that the impugned order was passed under section 21 of the Patents Act and hence not appealable. They also held that no partial patent grant was permissible under the law, and the appellant's contentions had no merit.

Discussion:The Court meticulously examined the legal provisions relevant to the issues. Sections 3(h), 3(i), 3(j), 15, and 21 of the Patents Act, 1970, formed the backbone of the legal analysis. Section 3(h) excludes methods of agriculture or horticulture from patentability. Section 3(i) excludes plants and animals except micro-organisms and biological processes related to their propagation. Sections 15 and 21 govern the Controller's power to refuse and the time frames for compliance and abandonment.

Importantly, the Court emphasized that the exclusion under section 3(h) is policy-driven, aimed at preserving traditional agricultural practices from monopolization. The Court relied on recommendations of the Ayyangar Committee and judicial pronouncements such as Monsanto Technology LLC v. Nuziveedu Seeds Ltd., 2019 3 SCC 381 and the recent unreported decisions from the Delhi and Calcutta High Courts. It clarified that section 3(h) excludes pure agricultural methods but does not bar technical, scientific innovations at the interface of agriculture and chemistry.

The impugned order was criticized for failing to distinguish between a pure method of agriculture and human scientific inventions embodied in chemical mixtures. The Court found no reasoning in the order to support the application of section 3(h), holding that this represents a narrow exception to patentability that does not include inventions like the present one.

Partial Grant of Patent:Regarding the issue of partial patent grant, the Court categorically held that the legislative scheme does not allow splitting claims within a single application into granted and rejected parts. The applicant must put the entire application in order for grant. Partial grants would disrupt the unity of invention principle and encourage legal uncertainty. Instead, rejected claims could be pursued via separate divisional applications under section 16 of the Act.

Finally, the Court dealt with procedural challenges about appealability and natural justice. It distinguished the impugned order as a decision under section 15 rather than a deemed abandonment under section 21, allowing the appeal to proceed. It further held that the appellant had not abandoned the application and had responded to objections within prescribed timelines, negating any claim of procedural unfairness.

Decision:The Court allowed the appeal and set aside the impugned order. It directed the Controller of Patents and Designs to reconsider the application afresh, complying with statutory procedures and principles within three months. The Court emphasized proper hearing rights for the applicant and clarified that the Controller was not bound by this order's observations, maintaining judicial neutrality on merits pending re-examination.

This judgment significantly clarifies the interpretation of sections 3(h) and 3(i) of the Patents Act, reinforcing the limited scope of exclusions and safeguarding the patent rights of innovations that intersect with agriculture but involve human technical intervention. It also reaffirms procedural safeguards in patent prosecution and rejects any notion of partial patent grants, emphasizing statutory coherence and legal certainty.

Case Title: BASE SE Vs. Deputy Controller of Patents and Designs  

Order Date: 16 September 2025  

Case Number: IPDPTA 3 of 2023  

Name of Court: High Court at Calcutta

Name of Hon'ble Judge: Justice Ravi Krishan Kapur  

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

UPL Limited Vs. Union of India

The Intersection of Patent Procedure and Natural Justice

Facts: This case revolves around a patent application made by UPL Limited seeking rights over a specific fungicidal combination, which, according to the company, shows unexpected benefits such as a reduction in fungal diseases, delayed ageing in crops, and improved yield. The invention proposed the combination of various categories of fungicides—specifically a succinate dehydrogenase inhibitor (SDHI), a dithiocarbamate fungicide, and another fungicide from either the ergosterol biosynthesis inhibitor or quinone outside inhibitor family. UPL filed a provisional specification on 4 November 2016 and followed up with a complete specification and request for examination on 1 November 2017 under Patent Application No. 201631037704. The First Examination Report (FER) was issued by the authorities, after which UPL responded to the objections. However, a pre-grant opposition was filed by another party, and UPL had to submit replies and evidence.The core benefit claimed for the patent was the synergy created by combining different classes of fungicides, which, according to the applicant, resulted in superior technical performance on crops.

Procedural Details: The patent application went through several procedural stages. After UPL filed its original application and the subsequent complete specification, the Patent Office issued a First Examination Report in April 2019. UPL responded, clarifying and defending its claims. In July 2020, a pre-grant opposition was filed under Section 25(1) of the Patents Act, alleging lack of novelty, lack of inventive step, and that the invention was merely a non-patentable admixture. Both oral and written submissions were made by UPL and the opposing party. The hearing on the opposition was held in May 2023, and both sides subsequently filed written submissions.

On 3 November 2023, the Controller of Patents issued an order rejecting UPL’s patent application. UPL challenged this order in the High Court, arguing that the decision violated the principles of natural justice—primarily because the Controller neither considered expert evidence submitted by UPL nor afforded separate hearings for the application and the opposition as mandated by law. The challenge was filed as a writ petition under Article 226 of the Constitution rather than by way of statutory appeal.

Dispute

The main dispute in the case centers around the following issues:Whether the patent application was rejected validly on the ground that it lacked novelty and inventive step and constituted a mere admixture.Whether the procedure adopted during the hearing of the pre-grant opposition, including the consideration of evidence and the conduct of hearings, adhered to the principles of natural justice.Whether the writ petition before the High Court was maintainable, considering the existence of an alternative statutory remedy.

UPL argued that the Controller ignored material evidence, especially expert affidavits demonstrating technical advancement and synergy of the combination. UPL further contended that the Controller, in the final order, relied on his own technical analysis and data that were not shared with the parties, violating the right to a fair hearing. Additionally, UPL claimed that the legal requirement of holding separate hearings for the application (under Sections 14 and 15) and the opposition (under Section 25(1)) was disregarded, further infringing procedural rights.

The respondents (Union of India and opposing party) maintained that mere non-acceptance of expert evidence did not vitiate the order and argued that the High Court should not intervene since a statutory appeal remedy was available. They also defended the Controller’s findings regarding the lack of novelty and inventive step, asserting the invention did not demonstrate any real synergy beyond what was expected from the mixture of known fungicides.

Detailed Reasoning and Legal Discussion: The High Court, presided by Justice Ravi Krishan Kapur, began by addressing the maintainability issue. The respondents argued that the writ petition should be dismissed since UPL had an alternative statutory remedy—namely, an appeal under the Patents Act. However, the Court noted established principles from key judgments—Whirlpool Corporation vs. Registrar of Trade Marks (1998) 8 SCC 1, Harbanslal Sahnia vs. Indian Oil Corporation Ltd. (2003) 2 SCC 107, and Radha Krishan Industries vs. State of H.P (2021) 6 SCC 771—that although alternative remedies exist, writ jurisdiction under Article 226 can still be invoked in cases where there is a violation of natural justice, lack of jurisdiction, or where fundamental rights are affected.

Referring to these precedents, the Court explained that the principle of “alternative remedy” is not absolute and serves more as a rule of prudence and convenience. The Court is empowered to intervene where procedural or substantive natural justice is denied, or when statutory procedures are ignored.

The Court then proceeded to examine the substantive legality of the proceedings before the Controller. A key legal issue was the proper application of Section 25(1) of the Patents Act (pre-grant opposition), Sections 14 and 15 (examination of applications), and Rule 55(5) of the Patent Rules. The Court highlighted that under law, pre-grant opposition and the application review are two separate processes. Legal precedent requires them to be conducted distinctly so that the applicant receives fair opportunity to respond to objections regarding their patent application as well as specific oppositions raised by opponents.

Justice Kapur observed that, in the present case, the expert affidavit and technical evidence submitted by UPL were not addressed or even recognized in the impugned order. Instead, the Controller conducted an independent technical analysis and drew conclusions without disclosing the basis to UPL or inviting submissions in response. This, in the Court’s view, violated the core principles of natural justice, especially the right to a fair hearing and to respond to the evidence against one’s case. The authorities also failed to grant UPL separate hearings as required under the Act and Rules.

The Court further pointed out that, as elaborated in the Supreme Court’s judgment in Oyster Point Pharma Inc v. Controller of Patents and Designs, 2023 SCC Online Cal 1214 and AstraZeneca v. Intas Pharmaceutical Ltd., 2020 SCC Online Del 2765, the law recognizes the possibility to submit additional evidence to demonstrate technical advancement, even after the initial application. Therefore, the argument that expert evidence could not be considered was found unsustainable.

On the merits, the Court declined to express any views on the substantive patentability or validity of UPL’s invention. Instead, it restricted its analysis to procedural fairness. The Court noted that since technical material evidence had been disregarded and the required procedural safeguards not followed, the order under challenge was unsustainable.

Decision: The High Court set aside the order of the Controller dated 3 November 2023. The matter was remanded for fresh consideration by a different Hearing Officer who must hold separate hearings under Sections 14 and 25, consider all evidence (including the expert affidavit), and pass reasoned orders on both the application and pre-grant opposition as required by law. The Court expressly clarified that there had been no adjudication on the merits—every issue was left open for fresh consideration and decision.

Case Title: UPL Limited Vs. Union of India & Ors.

Order Date: 16 September 2025

Case Number: WPA-IPD No.3 of 2024

Neutral Citation: 2025:CHC-AS:1812

Name of Court: High Court at Calcutta

Name of Hon’ble Judge: Justice Ravi Krishan Kapur

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

Novartis AG Vs. Controller of Patents -Manmeet Pritam Singh

Timing and Waiver of Cross-Examination Rights in Patent Opposition

Fact: Novartis AG is the holder of Indian Patent No. 414518, which was granted after dismissal of several pre-grant oppositions. Post-grant, various pharmaceutical parties filed oppositions challenging the validity of the patent on the grounds of lack of inventive step and violation of Section 3(d) of the Patents Act, 1970. The patent grant was followed by procedural battles—opponents submitted further expert evidence through affidavits and Novartis responded with requests to file rebuttal evidence. This procedural exchange continued until a timeline was set by a prior High Court order to ensure expeditious proceedings in the post-grant opposition process.

Procedural Detail: Novartis filed its patent application in 2007 and received grant in December 2022. Following this, opponents filed post-grant oppositions under Section 25(2) of the Patents Act. Opponents submitted expert affidavits under Rule 60 of the Patent Rules, and Novartis objected, but the Controller admitted the evidence. Novartis sought an opportunity to file rebuttal evidence, which was initially rejected by the Controller. Novartis challenged this by filing writ petitions contesting the denial and the procedure followed. The High Court set aside earlier orders and allowed Novartis to file rebuttal evidence, ordered a new Controller for the matter and demanded that the process move forward under strict timelines. The parties complied with the directions—Novartis filed rebuttal evidence, the Opposition Board issued a fresh recommendation, and hearings were scheduled by the Controller. However, Novartis sought cross-examination of the opponents’ expert witnesses after having already filed rebuttal evidence and after the timeline for such applications had passed, leading to the present dispute over whether this belated request was maintainable.

Dispute: At the heart of the case is whether Novartis retained a right to seek cross-examination of expert witnesses after initially omitting to request it and electing instead to file rebuttal evidence. Novartis argued that the right to cross-examine arises as a matter of natural justice and does not get extinguished by not seeking it at the earliest stage. Respondents, including various pharmaceutical companies, opposed this position stating Novartis had multiple opportunities to make such a request and by not doing so had waived the right or was barred on grounds of delay and procedural abuse. They asserted that permitting the request at this stage would undermine the Court’s order for expeditious conclusion and render the previous proceedings futile.

Detailed Reasoning Including Judgements: Justice Manmeet Pritam Singh Arora systematically examined the sequence of events and arguments by both sides. The judgment discussed key procedural stages, including evidentiary filings, objections, hearings, and previous High Court interventions that set guidelines for timely and fair conduct. The Court considered if principles of natural justice demanded allowance of cross-examination at any stage, referencing several judgements such as Onyx Therapeutics v. Union of India (2019 SCC OnLine Del 7259, 11881) and Natco Pharma Ltd. v. Union of India (2019 SCC OnLine Cal 1609), which asserted cross-examination as a substantive right under Section 79 of the Patents Act. The Court, however, clarified that such a right must be exercised promptly, preferably at the time the expert evidence is admitted, to avoid unwarranted delay and disruption of proceedings.

The Court differentiated the facts of Onyx Therapeutics, where the patentee made immediate requests for cross-examination, from Novartis’s situation, where the request came much later after the right of rebuttal was specifically claimed and allowed, thereby satisfying natural justice. It is reasoned that failure to timely exercise the right, especially after a conscious election to file rebuttal evidence, not only constituted waiver but also operated as estoppel. The Court declared that the stage for seeking cross-examination ended when the Controller decided on the admissibility of evidence. Delay or tactical withholding of request cannot be used to reset the process or frustrate the timeline set by earlier judicial orders.

The Court addressed whether denial of cross-examination at a late stage constituted breach of natural justice and held it did not, as adequate opportunity for rebuttal was allowed and utilized. Judicial directions for expeditious disposal, and the procedural structure of patent oppositions—where evidence is first submitted and reviewed by an Opposition Board—were emphasized as safeguards for fairness and efficiency. The Court found that Novartis’s conduct in abstaining from hearings further reinforced procedural abandonment, and disallowed late assertions of rights which had already been considered and exhausted through the judicial process.

Decision: Justice Arora dismissed the writ petitions, upholding the Controller’s refusal to entertain the belated cross-examination request. The Court found that Novartis had waived its procedural right to cross-examination by electing to file rebuttal evidence and not seeking cross-examination at the time evidence was admitted. No procedural or substantive violation of natural justice had taken place. The efforts and timelines set by the Opposition Board and the earlier orders of the Court were protected against disruption through dilatory tactics. All pending applications were disposed of, confirming that parties must exercise their procedural rights in a timely and diligent manner, respecting guidelines laid down by judicial proceedings and statutory rules.

Case Title: Novartis AG Vs. Controller of Patents and Designs & Ors.

Order Date: 16th September 2025

Case Number: W.P.(C)-IPD 50/2025

Neutral Citation: 2025:DHC:8211

Name of Court: High Court of Delhi

Name of 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

Nupur Mehta Vs Bennett Coleman

Court Fee and Jurisdiction

Facts: The plaintiff, Nupur Mehta, filed a suit seeking permanent and mandatory injunctions as well as compensation for violation of her image rights and defamation caused by the defendants, which included Bennett Coleman and Company Ltd. The suit was filed in the High Court of Delhi and valued at a total of Rs. 10 crores for the purposes of pecuniary jurisdiction. The suit included various prayer clauses, such as injunctions restraining the defendants from disseminating defamatory content, removal of the defamatory video from social media, compensation for slander and defamation, and a prayer for rendition of accounts for illegal use of the plaintiff’s image rights.

The plaintiff’s original pleadings valued the suit at Rs. 10 crores but sought to pay only a fixed court fee of Rs. 200 on certain reliefs, notably on the prayer for rendition of accounts, contending that it was a nominal sum for court fee purposes but maintaining a high valuation for jurisdictional purposes. This led to a legal question on whether the plaintiff was liable to pay court fees ad valorem on the full valuation of Rs. 10 crores or the nominal amount of Rs. 200 stated for certain reliefs.

Procedural Details: The suit was initially listed before the High Court on 29 May 2025, where the court directed the plaintiff to pay court fees on the full valuation of Rs. 10 crores within four weeks, warning that the suit would be rejected otherwise. The plaintiff sought to amend the plaint to clarify the valuation and to pay court fees as per the re-assessed value. Subsequently, an application for amendment was allowed on 8 August 2025, allowing the plaintiff to introduce a prayer for rendition of accounts.

The amended plaint maintained a valuation of Rs. 10 crores for jurisdiction but insisted on paying nominal court fees of Rs. 200 for rendition of accounts while pleading to pay ad valorem fees on ascertainment of damages. This dichotomy invited judicial scrutiny into the compatibility of such valuation with court fee statutes and the appropriate fee liability on rendition of accounts as relief.

Dispute: The central dispute before the court was whether a plaintiff seeking rendition of accounts and valuing the same for jurisdiction at Rs. 10 crores could be legally entitled to pay only a nominal court fee (Rs. 200) under Section 7(iv) of the Court Fees Act, 1870, or whether such relief warranted payment of court fee ad valorem based on the high valuation assigned for pecuniary jurisdiction.

The plaintiff relied on precedents including the Supreme Court judgment in *Commercial Aviation and Travel Co. v. Vimla Pannalal* (1988) 3 SCC 423 and a Full Bench judgment of the Delhi High Court in *Sheila Devi and Others v. Kishan Lal Kalra and Others* to argue that the court could not interfere with their valuation for the purpose of court fees. The plaintiff submitted that the valuation for rendition of accounts should follow the nominal fee pattern given the nature of the relief which is inherently unascertainable at the outset.

The court was tasked with reconciling the provisions of the Court Fees Act, 1870, the Suit Valuation Act, 1887, and relevant judicial precedents while addressing the potential tentativeness or alleged arbitrary nature of the plaintiff’s valuation and related court fee payment.

Detailed Reasoning and Legal Discussion:  The court examined the interplay between two key statutory acts: the Court Fees Act, 1870, and the Suit Valuation Act, 1887. The Court Fees Act, in particular Section 7(iv), provides for a fixed court fee for suits where the valuation of relief sought cannot be easily ascertained—such as in suits for rendition of accounts. This fixed fee was historically introduced to recognize the uncertainty in assessing exact damages at suit filing.

However, the Suit Valuation Act, 1887, governs pecuniary jurisdiction and requires the plaintiff to affix the value of the suit for determining appropriate jurisdiction of courts. The court emphasized that the value for court fees and for jurisdiction should align as per Section 8 of the Suit Valuation Act to ensure legislative coherence and practical administration of justice.

The court referred extensively to the Division Bench judgment in *M/s Maiden Pharmaceuticals Ltd. v. M/s Wockhardt Ltd.* (2008 SCC OnLine Del 804) which held that in suits for rendition of accounts, the valuation for jurisdiction dictates the court fee liability, and such valuation cannot be arbitrarily dissociated from court fees. This decision drew on the Supreme Court ruling in *Commercial Aviation and Travel Co.* which warned against whimsical and arbitrary valuation to evade payment of appropriate court fees, citing that a plaintiff must not “whimsically choose a ridiculous figure” for suit valuation when objective standards and positive materials exist in the plaint.

The court highlighted the rationale that while fixed court fees are a relief mechanism where suit valuation is uncertain, a plaintiff cannot exercise absolute discretion to assign a high jurisdictional value solely to secure filing in a higher court and then pay meagre court fees, defeating statutory intent under Section 15 of the Code of Civil Procedure which mandates filing in the lowest competent court.

This dual valuation approach was found to be a misuse of jurisdictional criteria and court fees regulations. The court underscored the legislative mandate that court fees must correspond to the valuation affixed by the plaintiff for exercising pecuniary jurisdiction, thereby ensuring fairness and deterrence against vexatious litigation strategies.

The court also engaged prior judicial opinions specifying that the court may interfere in wrongful valuations not supported by positive records or objective standards and that plaintiffs having fixed arbitrary valuations must face consequences including potential dismissal or cost penalties.

The court pointed out that the plaintiff here afforded no coherent basis for valuing rendition of accounts relief at Rs. 10 crores but paying nominal fee, especially since such value was aimed at invoking jurisdictional threshold of the High Court.

The judgment further explained that rendition of accounts is a relief where exact damages are ascertainable only at a later stage, allowing the plaintiff some flexibility in nominal fee payment; yet this does not justify gross underpayment or decoupling from valuation set for jurisdiction. It affirmed consistency with procedural rules laid down by the High Court under its rule-making powers.

Based on these principles, the court ruled that the plaintiff was liable to pay substantive ad valorem court fees on the valuation of Rs. 10 crores affixed for rendition of accounts relief and ruled against the appropriateness of merely nominal fee payment.

Decision: The court concluded that the plaintiff’s approach of valuing rendition of accounts for jurisdiction at Rs. 10 crores while paying fixed nominal court fees of Rs. 200 was legally impermissible. The plaintiff was held liable to pay ad valorem court fees consistent with the valuation for jurisdiction as per the Court Fees Act, 1870 and the Suit Valuation Act, 1887.

The court granted the plaintiff four weeks' time to pay the requisite ad valorem court fees; failing which the suit would stand rejected under Order 7 Rule 11(b) of the Code of Civil Procedure. The court also reserved the right for deterrent costs against litigants engaging in arbitrary valuation tactics.

The court rejected the plaintiff’s submissions affirming binding precedents but clarified that valuations must not be whimsical or designed to circumvent statutory requirements on court fees.

Case Title:Nupur Mehta Vs Bennett Coleman and Company Ltd. and Others  

Order Date: 11 September 2025  

Case Number: CS(OS) 376/2025   

Court: High Court of Delhi  

Hon'ble Judge: Hon'ble 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

Burberry Ltd Vs Megastar Shipping Pte Ltd

Trade Mark Infringement and Goods in Transit

Facts:The case involved Burberry Ltd and Louis Vuitton Malletier, two luxury brand owners who brought trade mark infringement actions against Megastar Shipping Pte Ltd, a freight forwarder company in Singapore. The dispute arose because Megastar Shipping handled the transhipment of counterfeit goods infringing the appellants’ registered trade marks. These counterfeit goods were shipped from China to Singapore in sealed containers with the final destination being Batam, Indonesia. The goods were never intended for the Singapore market, never placed on sale in Singapore, and were never physically handled or inspected by the freight forwarder except when customs intervened.

The respondent, Megastar Shipping, received documents showing the goods as household items but did not have knowledge of the counterfeit nature of the cargo. The freight forwarder's role was limited to arranging transhipment through the Port of Singapore, a common practice given the geographic constraints of smaller ports. The counterfeit goods were seized by Singapore Customs upon arrival, and the appellants commenced infringement proceedings against Megastar Shipping.

Procedural Details:The case initially came before the High Court, which dismissed the appellants’ claims against Megastar Shipping on the ground that the freight forwarder was not the importer or exporter of the goods for the purposes of the Trade Marks Act (Cap 332, 2005 Rev Ed) ("the TMA"). The issue at hand was whether Megastar Shipping’s role amounted to "use" of the trade marks under section 27 of the TMA, specifically whether receiving and forwarding the goods for transhipment amounted to importing or exporting goods "under the sign," thereby constituting trade mark infringement.

The appellants appealed to the Court of Appeal challenging the High Court's interpretation of import, export, and liability under section 27(4)(c) of the TMA.

Dispute: The key legal issues concerned whether goods in transit through Singapore were to be treated as imported or exported under the TMA and whether the freight forwarder, which handled the sealed containers without knowledge of counterfeit marks, was liable for infringement. The debate revolved around the interpretation of the statutory provisions governing trade mark infringement, particularly what constitutes "use" of a trade mark, the scope of "import" and "export" under the TMA, and the mental element required for liability.

The appellants argued that Megastar Shipping was liable as the importer and potential exporter, given its control over the goods in Singapore and would have completed forwarding the goods but for customs intervention. They contended that liability should extend to local consignees and freight forwarders to effectively combat trade mark infringement by counterfeiters.

Megastar Shipping asserted that mere transhipment without knowledge of the infringing signs does not amount to trade mark use or infringement. They maintained they acted as an agent for the actual shipper, had no ownership or beneficial interest in the goods, and no involvement in decisions about the cargo. Liability for trade mark infringement, they argued, required knowledge or at least reason to believe that infringing signs were present on the goods.

Detailed Reasoning and Legal Discussion: The Court of Appeal began by affirming the requirement of "use" for trade mark infringement under section 27(1) of the TMA. The court confirmed that "use" does not merely mean physical handling but involves use of a sign that identifies the trade origin of goods and happens "in the course of trade." The presence of a sign identical to a registered trade mark on the goods, combined with trade use, constitutes infringement.

The Court agreed with the High Court that the definitions of "import" and "export" in the TMA are aligned with the ordinary meanings in the Interpretation Act, which extends to goods brought into or taken out of Singapore by any means, including transit or transhipment. This was distinguished from EU cases where goods in transit are not considered imported for infringement purposes, reflecting different policy considerations including free movement of goods within the European Union. The Singapore Court emphasized Singapore’s role as an entrepot and indicated that goods brought physically into the country, even for transhipment, may be considered imported under the TMA.

The Court also examined international jurisprudence, such as *Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd* and *Waterford Wedgwood Plc v David Nagli Ltd*, which supported infringement findings in cases of transhipment.

Importantly, the Court highlighted that the mere physical import or export is insufficient to impose liability. Instead, knowledge or reason to believe that infringing signs are present on the goods is a necessary condition for liability. This mental element is consistent with principles of fairness and commercial reality, especially considering the many persons involved in international shipping.

The Court held that strict liability in trade mark infringement means fault or knowledge of infringement is not required once presence of infringing signs and use in trade are established. However, this strict liability does not extend to persons genuinely unaware of the signs' presence on the goods, especially in the context of freight forwarders who have no access or knowledge of the cargo’s contents. Cases like *Gillette UK Limited v Edenwest Limited* and Singapore decisions including *Creative Technology Ltd v Cosmos Trade-Nology Pte Ltd* reiterated that knowledge of presence of signs is vital for liability, even if knowledge of infringement specifically is absent.

Applying these principles to the facts, the Court found that Megastar Shipping did not know or have reason to suspect counterfeit goods were in the containers, as documents described the goods generically and no suspicious circumstances existed. The freight forwarder’s role was administrative and facilitative without actual possession or proprietary interest in the goods. Physical handling was minimal, and no evidence indicated complicity in infringement.

On the question of export liability, the Court agreed that a mere intention to export is insufficient to constitute infringement. There must be clear actions or evidence that goods would definitely be exported under the sign. Here, although Megastar Shipping would have forwarded the goods to Batam if not stopped, this point was rendered moot as the goods were seized and destroyed before export.

The Court also affirmed the limits of liability for freight forwarders, emphasizing their duty to disclose information if they become aware of counterfeit goods under recent legislative amendments providing border enforcement measures.

The Court ultimately dismissed the appeals, holding that while the goods were imported into Singapore, Megastar Shipping did not "use" the infringing signs for purposes of the TMA because it lacked knowledge or reason to believe the goods bore the infringing marks.

Decision: The Court of Appeal dismissed the trade mark proprietors’ appeals with costs, holding that Megastar Shipping was not liable for trade mark infringement under section 27 of the TMA as it did not knowingly import or export goods under the infringing signs. The Court emphasized the importance of the knowledge requirement for imposing liability, balancing trade mark enforcement with the practicalities of international shipping and fairness to freight forwarders.

Case Title:Burberry Ltd Vs Megastar Shipping Pte Ltd  

Order Date: 5 September 2018  

Case Number: Civil Appeal Nos 237 and 238 of 2017  

Neutral Citation:  [2019] SGCA 1

Court: Court of Appeal of the Republic of Singapore  

Hon’ble Judges: Justice Andrew Phang Boon Leong JA, Justice Judith Prakash JA, Justice Tay Yong Kwang JA  

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

Exotic Mile Vs. Imagine Marketing Pvt Ltd

Role of Pleading and Prayers in Trademark Injunctions

Facts: The present legal dispute revolves around Imagine Marketing Pvt Ltd (IMPL) and Exotic Mile (EM). IMPL is a well-established company known primarily for its electronic gadgets such as earphones, headphones, speakers, soundbars, and travel chargers marketed under its flagship brand "boAt," launched in 2014. IMPL has registration of several trademarks and claims exclusive ownership of original logos and taglines including the trademark "boAt" and the tagline "PLUG INTO NIRVANA."

Exotic Mile, on the other hand, is engaged in selling audio gadgets and coined the mark "BOULT" and "BOULT AUDIO" starting in 2017. EM registered its device mark in 2017 and has been advertising and selling products under this brand. IMPL alleged that EM's mark "BOULT," along with its logos and the tagline "UNPLUG YOURSELF," was deceptively similar to IMPL’s marks, causing confusion among consumers and amounting to trademark infringement and passing off.

IMPL contended that EM’s use of the mark "BOULT," logo, and tagline was an intentional attempt to ride on IMPL's goodwill, thereby misleading customers. IMPL received complaints alleging customers bought EM’s products mistaking them for IMPL's because of the similarity in the marks and trade dress.

EM denied these claims, arguing that "BOULT" is an arbitrary word derived from "BOLT," and their logos and taglines are independently created without any intention to deceive. EM contended that their products cater to a different educated consumer segment unlikely to be confused by the similar-sounding mark. EM also stated that "BOULT" products have been used since 2017, advertising expenditure was significant, and the marks were registered, hence no infringement occurred.

Procedural Details: IMPL filed a civil suit  in the High Court of Delhi seeking a permanent injunction against Exotic Mile preventing them from using "BOULT" and related logos and taglines. IMPL also filed an application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code for an interim injunction during the pendency of the suit.

The learned Single Judge initially granted an ex parte interim injunction, restraining EM from using the alleged infringing marks pending the suit. EM then filed an application to vacate this injunction, which was dismissed. EM appealed this order through FAO(OS) (COMM) 20/2020 seeking to set aside the injunction.

Dispute:The core dispute in the case centered upon whether the use of the mark "BOULT" by EM amounts to infringement or passing off the registered "boAt" mark of IMPL. Issues included determination of deceptive similarity of the marks and logos, the likelihood of confusion amongst consumers, the legitimacy of injunctive relief against EM, and whether injunction could be extended to EM’s tagline "UNPLUG YOURSELF" and the newly proposed mark "GOBOULT."

EM challenged the injunction granted against the use of the tagline "UNPLUG YOURSELF," which IMPL had not specifically prayed for. EM also sought to use "GOBOULT," contending the impugned order did not restrain that use.

Detailed Reasoning and Legal Discussion:The court first addressed the injunction concerning the tagline "UNPLUG YOURSELF." It was noted that the plaintiff IMPL never sought an injunction against this tagline. The Court held, based on established legal principles, that relief can only be granted on the basis of the prayers made in the plaint or application. Granting the injunction against a tagline not formally challenged was held to be legally unsustainable as per the Supreme Court rulings such as in *State of Uttarakhand v Mandir Sri Laxman Sidh Maharaj*, (2017) 9 SCC 579, *Mahabir Prasad Jain v Ganga Singh*, (1999) 8 SCC 274, and other authorities emphasizing that courts cannot grant reliefs beyond pleadings.

Regarding the disputed mark "BOULT," the Court applied principles of passing off rather than infringement since EM’s mark was registered. Passing off requires establishment of (i) goodwill in the plaintiff’s mark, (ii) misrepresentation by the defendant, and (iii) resultant damage to the plaintiff. The Court recognized IMPL as the prior user with established goodwill in "boAt" and related logos and taglines and extensive promotion and advertising investments. 

The Court found that EM was aware of IMPL’s mark and market presence, including the involvement of Varun Gupta, EM’s promoter, who had previously been associated with IMPL as a distributor or consultant. The phonetic similarity—boAt and BOULT—was held significant because they share the same beginning and ending consonants “B” and “T,” a factor supported by precedents such as *K.R. Chinna Krishna Chettiar v Shri Ambal & Co and *Encore Electricals Ltd v Anchor Electronics. The Court emphasized the perception of a consumer with "imperfect recollection" who might be misled.

Visually, the logos of both parties were triangular in shape and bore resemblance, reinforcing the likelihood of confusion. The similarity extended to trade dress, including packaging and colour schemes. The Court ruled that such similarities cumulatively increased the risk of consumers mistaking EM’s products for IMPL’s.

The use of the tagline "UNPLUG YOURSELF," incorporating the word "PLUG," was found prima facie inspired by IMPL’s "PLUG INTO NIRVANA," further contributing to potential confusion. The Court also considered confusion between product names “Boult Bass Buds” and “boAt Bass Heads,” finding them deceptively similar.

EM’s argument that the primarily online nature of sales reduces confusion was rejected, as the Court pointed out that the goods are also sold in physical stores and the average consumer does not have perfect recall when purchasing.

The Court clarified that though EM’s mark was registered, no statutory infringement claim lay, but the common law tort of passing off was satisfied due to goodwill, misrepresentation and likelihood of damage to IMPL. The Court followed the principles as stated in *Wander Ltd v Antox India Pvt Ltd*,  and *Satyam Infoway Ltd v Siffynet Solutions (P) Ltd*  explaining the elements and tests for passing off.

Regarding the mark "GOBOULT," the Court noted that this was not under challenge before the learned Single Judge and no injunction was passed against its use. The Court observed that any challenge to "GOBOULT" by IMPL would have to be pursued separately. Therefore, as of the date of the order, EM was free to use the mark "GOBOULT."

Decision:The Court partially upheld the interim injunction. The injunction restraining Exotic Mile from using the marks "BOULT" and related logos was affirmed, as was the injunction against the use of taglines confusingly similar in combination with those marks. The injunction against the tagline "UNPLUG YOURSELF" alone was set aside since it was not specifically prayed for.

The Court clarified that EM could use the mark "GOBOULT" as this was not covered by the injunction and IMPL was free to initiate separate proceedings if it believed this mark is deceptively similar.

Case Title:Exotic Mile Vs. Imagine Marketing Pvt Ltd  

Order Date: 15 September 2025  

Case Number: FAO(OS) (COMM) 20/2020  

Neutral Citation: 2025:DHC:8075

Court: High Court of Delhi  

Hon’ble Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul  

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

Aishwarya Rai Bachchan Vs Aishwaryaworld.com

Case Title: Aishwarya Rai Bachchan Vs Aishwaryaworld.com & Ors.

Order Date: 09 September 2025

Case Number: CS(COMM) 956/2025

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Tejas Karia

Aishwarya Rai Bachchan, one of India’s most celebrated actresses and a global cultural icon, approached the Delhi High Court claiming violation of her personality rights. She alleged that various websites, e-commerce platforms, apps, YouTube channels, and even AI-based tools were using her name, image, and persona without permission. 

Some platforms falsely portrayed themselves as her official site, others sold merchandise like T-shirts and mugs with her image, while certain AI chatbots and YouTube channels created fake and even sexually explicit content using her likeness. She argued that these activities misled the public into believing she endorsed them, harmed her reputation, and commercially exploited her persona without authorization.

The dispute centered on whether defendants could exploit Aishwarya Rai Bachchan’s identity for commercial or other purposes without her consent. The plaintiff maintained that such unauthorized use amounted to infringement of her publicity and personality rights, copyright, performer’s rights, and also constituted passing off and unfair competition.

The Court explained that personality rights include the right to control and protect one’s name, image, likeness, and other unique attributes. Their unauthorized use can not only cause financial loss but also harm an individual’s dignity and privacy, thus undermining their right to live with respect. The Court relied on earlier cases such as Anil Kapoor v. Simply Life India (2023), Amitabh Bachchan v. Rajat Nagi (2022), and Jaikishan Kakubhai Saraf v. Peppy Store (2024), where protection was given against similar misuse. 

It clarified that while free speech permits information, news, satire, or parody, it cannot extend to unauthorized commercial gain or obscene content that tarnishes reputation. The Court observed that the plaintiff had built immense goodwill and that misuse of her identity in merchandise or AI-generated explicit content caused confusion, diluted her reputation, and violated her contractual brand endorsements. Thus, the plaintiff had made out a strong prima facie case, balance of convenience was in her favour, and denial of protection would cause irreparable harm.

The Court granted an ex-parte ad-interim injunction. Defendants were restrained from using Aishwarya Rai Bachchan’s name, image, likeness, or any element of her persona, including through AI, deepfakes, or morphing, without her consent. They were also directed to remove and block infringing URLs and products within 72 hours. Google (YouTube) was ordered to disable deepfake and misleading videos and provide subscriber details of offending channels. Government authorities were directed to block and disable listed infringing URLs. 

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 Del

Abhishek Bachchan Vs The Bollywood Tee Shop

Case Title: Abhishek Bachchan Vs The Bollywood Tee Shop & Ors.

Order Date: 10 September 2025

Case Number: CS(COMM) 960/2025

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Tejas Karia

Abhishek Bachchan, a well-known actor, producer, and entrepreneur, claimed that his personality rights—his name, image, likeness, signature, voice, and other aspects of his identity—were being misused without permission. Several online sellers and platforms were offering merchandise such as T-shirts, mugs, posters, wallpapers, and stickers using his photographs and name. 

In addition, multiple YouTube channels created AI-generated content using his image and likeness, including inappropriate and explicit videos. Bachchan argued that such misuse damaged his reputation, caused confusion in the public mind, and amounted to infringement of his personality rights and passing off.

The central dispute was whether the defendants could commercially exploit Abhishek Bachchan’s persona without his consent. This included selling merchandise, running e-commerce listings, and generating AI-based or deepfake content using his name and image. The plaintiff argued that such unauthorized exploitation not only violated his rights but also caused irreparable harm to his goodwill and reputation.

The Court noted that personality rights are legally recognized and linked with an individual’s dignity, livelihood, and privacy. Unauthorized commercial exploitation of a celebrity’s persona directly impacts their economic interests and reputation. The Court referred to precedents such as Anil Kapoor v. Simply Life India (2023), Amitabh Bachchan v. Rajat Nagi (2022), Jaikishan Saraf v. Peppy Store (2024), and Aishwarya Rai Bachchan v. Aishwaryaworld.com (2025), which affirmed protection of personality rights against misuse, particularly in the age of technology and artificial intelligence.

The Court emphasized that while free speech allows information, satire, parody, and fair criticism, it does not extend to unauthorized commercial gain or creation of explicit/derogatory AI content that tarnishes an individual’s reputation. Misuse of Bachchan’s persona risked misleading the public into believing endorsement or association, thereby diluting his goodwill and breaching his contractual obligations with brands.

It was held that the plaintiff established a strong prima facie case, the balance of convenience lay in his favour, and denial of relief would cause irreparable harm not only financially but also to his dignity.

The Court granted an ex-parte ad-interim injunction. Defendants 1–14 and unknown “John Doe” parties were restrained from using Bachchan’s name, voice, image, likeness, or any other attribute of his persona without authorization, including through AI, deepfakes, and morphing. 

Specific directions were given to take down infringing URLs, disable listings of merchandise, and remove explicit or misleading AI content from YouTube and e-commerce platforms. Google (YouTube) and government authorities (MeitY and DoT) were also directed to assist in compliance. 

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

Tractors and Farm Equipment Ltd. Vs. Standard Corporation India Ltd

Copyright Protection for Functional Drawings

Fact:​The plaintiff, Tractors and Farm Equipment Limited, was established in 1961 to manufacture and sell tractors and other farm equipment in India. They were authorized by AGCO Corporation, USA, to use the trademarks and designs of Massey Ferguson. The plaintiff has been producing popular tractor models like MF 245 DI and MF 1035 DI since the early 1980s. The plaintiff claims to own the copyright to the drawings for the parts of these tractors. 

They state that their employees created these drawings with precise specifications and dimensions during their employment. The plaintiff asserts that they have the right to prevent others from reproducing these drawings in two or three dimensions, as the three-dimensional tractor parts are made from these two-dimensional drawings. The plaintiff alleges that the defendant, Standard Corporation India Limited, manufactured their tractor model Standard 348 by copying the plaintiff's drawings or by using a method called reverse engineering to create three-dimensional parts. Based on these claims, the plaintiff filed a lawsuit for copyright infringement and passing off.

​Procedural Detail:​The plaintiff filed an amended complaint under Order IV Rule 1 of the Original Side Rules and Order VII Rule 1 of the Civil Procedure Code, along with Sections 51, 55, and 62 of the Copyrights Act, 1957. The lawsuit sought a permanent injunction to prevent the defendant from infringing the plaintiff's copyright in the drawings by manufacturing and selling the Standard 348 tractor. It also sought a permanent injunction to prevent the defendant from "passing off" their tractors as those of the plaintiff.

The defendant argued that the suit should be dismissed based on Section 15(1) and (2) of the Copyright Act, claiming that the copyright in a design, which is capable of being registered but is not, ceases to exist after the article to which the design is applied has been reproduced more than fifty times by an industrial process.

​Based on the pleadings, the court framed 15 issues for consideration on October 24, 2016, covering aspects like passing off, copyright infringement, and the applicability of Section 15 of the Copyright Act. The plaintiff later abandoned their claims related to "passing off". 

​The core of the dispute revolves around two main points:

First, the plaintiff's claim of copyright infringement. The plaintiff alleges that the defendant's Standard 348 tractor is a copy of their MF 245 DI tractor and that the defendant reproduced the plaintiff's copyrighted two-dimensional drawings to create their three-dimensional tractor parts.

​Second, the defendant's counter-argument, which states that the plaintiff's case is barred by Section 15 of the Copyright Act. This legal provision says that if a design is capable of being registered under the Designs Act but is not, the copyright for it ceases once the article to which the design is applied is reproduced more than 50 times through an industrial process. 

The defendant argued that the plaintiff's tractor parts fall under this category and therefore no copyright exists to be infringed. The defendant also challenged the originality of the plaintiff's drawings, stating they were based on drawings from Massey Ferguson, and argued that the plaintiff had no cause of action in this court as their tractors were sold outside India.

​Reasoning of court:​The court began by addressing the issue of its own jurisdiction. It concluded that since the plaintiff carried on business within the court's jurisdiction at the time of filing the suit and continues to do so, and the remedies pursued related to copyright infringement, the court did have jurisdiction.

​The central part of the court's reasoning focused on the application of Section 15 of the Copyright Act. The court cited a previous judgment in A. Rudramurthy and another v. Mr. Moorthy and another, 2025 MHC 1338, which explained the meaning of Section 15. The court's analysis highlighted the difference between an "artistic work" under the Copyright Act and a "design" under the Designs Act, 2000.

​According to the court's analysis, a "design" is defined in Section 2(d) of the Designs Act as something applied to an article which "appeal[s] to and are judged solely by the eye". This definition specifically excludes an "artistic work" as defined in the Copyright Act. The court noted that the definition of an "artistic work" in Section 2(c) of the Copyright Act includes a "drawing," and it does not explicitly exclude a "design" from its scope.

​The court reasoned that the plaintiff's industrial drawings, exhibited as Exs. P59 to P79, fall under the category of an "artistic work" as per Section 2(c) of the Copyright Act. Crucially, the court found that these drawings would not be considered a "design" under the Designs Act because the copyright claim was for the drawings themselves, not for features that appeal "solely by the eye". The drawings were for the creation of functional components, and no claim was made regarding non-functional, visually appealing features.

​The court referred to judgments from other high courts to support the plaintiff's case:

​Mody Pumps Inc. & others v. Sovereign Pumping Solutions Pvt. Ltd. & others, 2022 (91) PTC 142 (Bom): This case was cited by the plaintiff's counsel to argue that industrial drawings are not capable of being registered as designs under the Designs Act.

​Microfibres Inc. v. Girdhar & Co. and another, 2009 SCC OnLine Del 1647: The plaintiff's counsel also relied on this Delhi High Court judgment.

​Indiana Gratings Private Limited and Others v. Anand Udyog Fabricators Private Limited and others, 2009 (39) PTC 609 (Bom): This judgment was cited to support the contention that the plaintiff is entitled to protect the industrial drawings of the tractor parts under the Copyright Act.

​In the context of indirect copying, the court also cited the following international judgments referred to by the plaintiff's counsel to show that copying an artistic work can be done by copying an object made from it:

​Canon Kabushiki Kaisha v. Green Cartridge Co. (Hong Kong Ltd.), 3 WLR 13

​British Leyland Motor Corp & others v. Armstrong Patents Company Ltd. & others, MANU/UKHL/0017/1986

​The court found that the defendant's defense based on Section 15(2) of the Copyright Act was not applicable because the plaintiff's drawings were artistic works, not designs.

​Decision

​The court concluded that its jurisdiction was valid. It rejected the defendant's defense under Section 15(2) of the Copyright Act, reasoning that the plaintiff’s industrial drawings are "artistic works" and not "designs" under the relevant statutes. 

The court stated that the plaintiff’s drawings for functional components are not meant to appeal solely to the eye, a key requirement for a "design" under the Designs Act. Therefore, the bar on copyright protection under Section 15 of the Copyright Act did not apply. The court found that the plaintiff's lawsuit, which centered on copyright infringement of these drawings, was legally valid.

Case Title: Tractors and Farm Equipment Ltd. Vs. Standard Corporation India Ltd.

Case Number: C.S No. 602 of 2007

Neutral Citation: 2025:MHC:2145

Name of Court: High Court of Judicature at Madras

Order Date: September 3, 2025

Name of Honourable 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

New Bharat Overseas Vs Bhagwati Lacto Vegetarian Exports Pvt. Ltd

Rule 70(9) of Copyright Rules and the Duty of prior Notice to party interested

Facts:The petitioner, New Bharat Overseas, has been engaged in the business of processing, selling, and exporting rice since 1978. It holds long-standing trademark registrations for the mark “TAJ MAHAL,” including one registered in 1981 under No. 338004 and another in 1989 under No. 387177, both in Class 30. Alongside trademark rights, the petitioner also secured copyright registration of its artistic label featuring the “TAJ MAHAL” device, registered under No. A-50558/1990.

The grievance of the petitioner arose when it discovered that the respondent, Bhagwati Lacto Vegetarian Exports Pvt. Ltd., obtained copyright registration No. A-130837/2019 dated 06.09.2019 for an artistic work titled “GARIMAA GOLD,” which also prominently depicted the Taj Mahal and was used on packaging of rice. The petitioner alleged that this registration was obtained surreptitiously and directly conflicted with its own earlier registered rights. It further argued that the respondent had been earlier accused of infringing activities, leading to FIRs in 2017 and 2019, in which seizure of goods had already taken place.

Procedural Detail:The petitioner filed a rectification petition under Section 50 of the Copyright Act, 1957, challenging the copyright registration granted to respondent no. 1. The petitioner contended that respondent no. 1 obtained registration without complying with Rule 70(9) of the Copyright Rules, 2013, which mandates that notice of the application must be given to any person who claims an interest or disputes rights in the subject matter of the copyright. According to the petitioner, since FIRs and criminal proceedings were pending at the time of the application, there was clear knowledge of dispute. However, no notice was served to it.

Dispute:The core legal dispute was whether the registration of copyright granted in favour of respondent no. 1 for the artistic work “GARIMAA GOLD” was valid when the statutory requirement of notice under Rule 70(9) of the Copyright Rules, 2013, had not been complied with. A secondary question raised by the respondent was whether the petitioner could claim exclusivity over the depiction of the Taj Mahal, which is a public monument and generally free for all to use under Section 52 of the Copyright Act, 1957.

Detailed Reasoning:The petitioner argued that the registration of the impugned artistic work was procedurally unsustainable, as Rule 70(9) requires the applicant for registration to give notice of its application to every person who claims or has any interest in the subject matter of the copyright. Since disputes were pending between the parties, and FIRs and charge sheets existed against the respondent, the petitioner clearly qualified as an “interested person.” It was also highlighted that in Form XIV, where the applicant must disclose whether there is any dispute over ownership, respondent no. 1 had suppressed material facts by failing to mention the ongoing disputes.

The respondent countered by arguing that no exclusivity could be claimed over the Taj Mahal, a national monument, which is free for use under Section 52(s) and (t) of the Copyright Act. They also contended that FIRs against a party do not automatically make the petitioner an “interested person” entitled to notice.

The Court noted that this case was not about deciding who owns the depiction of the Taj Mahal or whether it is common to trade. Instead, it focused on whether there was compliance with Rule 70(9). It was undisputed that no notice had been given to the petitioner despite the existence of ongoing criminal and civil disputes over the same artistic work. The Court emphasized that the statutory mandate under Rule 70(9) is clear: any person claiming or disputing rights in the subject matter must be notified. Since the petitioner had active disputes against the respondent, evidenced by FIRs and chargesheets, the respondent could not have ignored this requirement.

The Court found that non-compliance with Rule 70(9) rendered the registration procedurally flawed. The act of obtaining registration without serving notice undermined the integrity of the process and deprived the petitioner of the opportunity to oppose the registration. The Court rejected the contention that FIRs did not make the petitioner an “interested person.” On the contrary, the disputes and legal proceedings established that the petitioner had a genuine and active interest in the subject matter.

At the same time, the Court clarified that it was not making any finding on the merits of whether the Taj Mahal could be exclusively appropriated as part of an artistic work. Those issues were left open for the Registrar of Copyrights to decide afresh when reconsidering the application.

Decision:The High Court of Delhi held that the registration granted in favour of respondent no. 1 under Copyright No. A-130837/2019 was procedurally invalid due to non-compliance with Rule 70(9) of the Copyright Rules, 2013. The Court revoked and cancelled the impugned registration. It directed that the application of respondent no. 1 would be treated as revived, and the petitioner was permitted to file objections within four weeks. The Registrar of Copyrights was instructed to adjudicate the application afresh in accordance with law, without being influenced by any observations in the Court’s order. 

Case Title: New Bharat Overseas Vs Bhagwati Lacto Vegetarian Exports Pvt. Ltd. & Ors.

Case Number: C.O.(COMM.IPD-CR) 843/2022

Court: High Court of Delhi at New Delhi

Date of Order: 08 September 2025

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