Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents

Introduction: The case of Zeria Pharmaceutical Co. Ltd. v. The Controller of Patents is a pivotal judgment from the Delhi High Court that reinforces the interpretative approach toward patentability criteria under the Indian Patents Act, 1970, particularly concerning the tests laid out under Section 2(1)(ja) and Section 3(d). The Court’s analysis offers essential guidance on what constitutes an “inventive step” and how the “therapeutic efficacy” of pharmaceutical compounds must be substantiated to satisfy the stringent demands of patent law in India.

Factual Background: Zeria Pharmaceutical Co. Ltd., a Japanese pharmaceutical company, filed Indian Patent Application No. 3630/DELNP/2011 on May 13, 2011. This application was a divisional application from an earlier application numbered 1090/DELNP/2007 and claimed a novel intermediate compound described as 2-[(2-hydroxy-4,5-dimethoxybenzoyl) amino]-1,3-thiazole-4-carboxylic acid methyl ester. The company claimed the invention involved a methyl ester functional group on a thiazole ring system and was an essential intermediate for the synthesis of an active pharmaceutical ingredient. The compound was distinguished from the prior art primarily by the substitution of a methoxycarbonyl group instead of an ethoxycarbonyl group.

Procedural Background: The Indian Patent Office issued the First Examination Report (FER) on February 24, 2015, raising objections under Section 2(1)(ja) on lack of inventive step and Section 3(d) for being a mere derivative of a known compound without enhanced efficacy. Following a written response by the applicant and a hearing on June 12, 2016, the Assistant Controller of Patents refused the application via an order dated October 20, 2016. Aggrieved, Zeria Pharmaceutical appealed under Section 117A of the Patents Act before the Delhi High Court. The appeal was heard and reserved on April 23, 2025, and the judgment was pronounced on May 27, 2025.

Legal Issue: The central legal issue before the Court was whether the subject invention satisfied the dual statutory requirements of inventive step under Section 2(1)(ja) and non-attractiveness of Section 3(d) of the Patents Act, 1970? Specifically, the Court was called upon to decide whether the claimed compound, being a structural variation of a compound disclosed in prior art, constituted a patentable invention or fell within the exclusion of Section 3(d) for lacking therapeutic efficacy?

Discussion on Judgments: The appellant relied on the judgment of the Delhi High Court in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd., 2015 SCC OnLine Del 13619, to argue that an invention must be assessed on whether a person skilled in the art (PSITA) would be motivated to modify the teachings of prior art to arrive at the claimed invention. The appellant also cited Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940, to contend that the Controller must provide cogent reasoning on how the invention would be obvious to a PSITA, rather than relying on broad conclusions.

In response, the Controller relied on the landmark decision of the Supreme Court in Novartis AG v. Union of India, (2013) 6 SCC 1, where it was categorically held that the test of efficacy under Section 3(d) in the context of pharmaceutical products means “therapeutic efficacy.” The Court held that mere improvements in physical properties like solubility or stability, unless linked to therapeutic benefit, are not relevant under Section 3(d). The Controller also cited Novozymes v. Assistant Controller of Patents & Designs, T. CMA (PT) No. 33 of 2023 (Madras High Court), which clarified that Section 3(d) operates as a statutory exclusion and may independently bar patentability even if Section 2(1)(j) or (ja) is satisfied. Additionally, the decision in Astrazeneca AB and Another v. Torrent Pharmaceuticals Ltd., 2020 SCC OnLine Del 1446, was invoked to rebut the appellant’s “teaches away” argument, emphasizing that mere absence of direction toward an invention does not imply discouragement or negation by prior art.

Reasoning and Analysis of the Judge:  The Court observed that while the invention might satisfy the criteria for novelty, it failed to pass the filter of Section 3(d) due to lack of evidence demonstrating therapeutic efficacy. The claimed compound and the compound in the prior art differed only in the substitution of a methoxy group for an ethoxy group, which, in the Court’s view, was a minor and obvious variation for any person skilled in the art.

The Court critically examined the experimental data submitted by the appellant and noted that it failed to demonstrate any enhancement in therapeutic efficacy. Even the appellant had conceded in submissions that therapeutic efficacy could not be measured as the compound was merely an intermediate. The Court emphasized that the burden lay on the applicant to establish significant difference in efficacy, and this burden had not been discharged.

On the issue of inventive step under Section 2(1)(ja), the Court held that the invention was obvious in light of the teachings of prior art documents D1 (EP 0994108 A1) and D2 (US 5981557 A). Both prior arts disclosed compounds structurally similar to the claimed compound and described alkoxy substitutions including methoxy and ethoxy. The Court found the claimed invention to be a predictable variant within the realm of routine experimentation, not amounting to a technical advancement or economic significance.

Further, the Court rejected the appellant’s argument that prior art D1 “taught away” from the claimed invention. It held that the absence of specific guidance toward the invention does not imply discouragement, and thus does not negate obviousness if the path to invention is reasonably discernible to a skilled artisan.

Final Decision: The Delhi High Court upheld the decision of the Controller of Patents, dismissing the appeal filed by Zeria Pharmaceutical Co. Ltd. The Court concluded that the subject application failed both the inventive step requirement under Section 2(1)(ja) and the efficacy bar under Section 3(d) of the Patents Act. It found no merit in the applicant’s claim that the compound was patentable and accordingly affirmed the rejection of the patent application.

Law Settled in This Case: Firstly, Section 3(d) is an independent and absolute bar to patentability and may exclude a claim even if novelty or inventive step is satisfied under Section 2(1)(j) or (ja). Secondly, therapeutic efficacy under Section 3(d) must be demonstrated through specific data and cannot be presumed from structural variations or physico-chemical improvements. Thirdly, routine substitutions or modifications known to a skilled artisan cannot constitute inventive step unless they result in unexpected advantages or substantial technical advancements. Lastly, the Zeria Pharmaceutical, which was absent in the present case.

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents: May 27, 2025:C.A. (COMM.IPD-PAT) 452/2022: 2025:DHC:4431High Court of Delhi: Hon’ble Mr. Justice Saurabh Banerjee

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

Intercon Recyclopolis Pvt. Ltd. Vs. Bank of Baroda

Case Title:Intercon Recyclopolis Pvt. Ltd. & Anr. Vs. Bank of Baroda & Ors.: Date of Order::14th December, 2023: Case No.:W.P.(C) 4971/2015:2023:DHC:9121-DB: Hon'ble Mr. Justice Vibhu Bakhru

Hon'ble Mr. Justice Amit Mahajan

Facts:

The petitioners challenged the ex-parte final order dated 24.01.2013 passed by the Debts Recovery Tribunal-II (DRT), Delhi in O.A. No. 59/2012, by which a recovery certificate of ₹12,18,67,058/- was issued against them. They filed an application (M.A. No. 81/2013) before the DRT for recall of the ex-parte order, claiming they were not served with summons. This application was dismissed. Their subsequent appeal to the Debts Recovery Appellate Tribunal (DRAT) was also dismissed.

Procedural History:

20.09.2012 – Petitioners proceeded ex-parte in O.A. No. 59/2012 before DRT.

24.01.2013 – Ex-parte final order passed by DRT; recovery certificate issued.

14.10.2013 – DRT dismisses recall application (M.A. No. 81/2013).

27.03.2015 – DRAT dismisses appeal against the DRT’s dismissal.

14.12.2023 – Delhi High Court dismisses W.P.(C) 4971/2015.

Issues:

Whether the petitioners were properly served with notice in the original recovery proceedings, and if the ex-parte order and subsequent denial of recall by DRT and DRAT were justified.

Decision:

The High Court upheld the decisions of the DRT and DRAT. It held:

Petitioners were served via personal service (refused by them), publication in The Statesman, and through their counsel via service of reply in related proceedings.

The procedural requirement under Section 21 of the Recovery of Debts and Bankruptcy Act, 1993 to deposit 50% of the debt for appeal was not complied with.

The petition appeared to be an attempt to delay recovery proceedings.

Petition was dismissed as unmerited.

National Sewing Thread Co. Ltd. Vs. James Chadwick & Bros. Ltd.

Introduction:  Decided by the Supreme Court of India on May 7, 1953, this landmark judgment not only resolved a dispute over the registration of a trade mark but also clarified the scope of appellate jurisdiction under the Letters Patent of the Bombay High Court. At its heart, the case pitted an Indian company’s “Vulture Brand” against an English rival’s iconic “Eagle Mark,” raising questions of deception, confusion, and the finality of judicial decisions in trade mark disputes.

Detailed Factual Background: The appellant, National Sewing Thread Co. Ltd., was an Indian entity incorporated under the Indian Companies Act, 1913, with its registered office in Chidambaram, South Arcot District, Madras. The respondent, James Chadwick & Bros. Ltd. (later assigned to J. & P. Coats Ltd.), was a British company based in Bolton, England. Since 1896, the respondents had marketed their sewing thread in India under the “Eagle Mark,” a trade mark featuring an eagle with outspread wings, widely recognized as “Eagley” or “Eagle” goods.

Around 1940, the appellants entered the market with their own sewing thread, adopting a trade mark depicting a bird with fully spread wings perched on a cotton cylinder, accompanied by the words “Eagle Brand.” The respondents objected, prompting the appellants to amend their mark by replacing “Eagle Brand” with “Vulture Brand” in 1942, though the bird’s design remained largely unchanged. The respondents, seeking to protect their market reputation, initiated a passing-off action against the appellants in the District Court of South Arcot. This action failed due to insufficient evidence that the appellants’ goods were likely to be mistaken for the respondents’, leaving the respondents’ grievances unaddressed. Undeterred, the appellants applied to the Registrar of Trade Marks, Bombay, in 1942 to register their “Vulture Brand” mark under Class 23 of the Trade Marks Act, 1940, claiming use since 1939. The respondents opposed this application, setting the stage for a protracted legal battle.

Detailed Procedural Background: The procedural odyssey began when the Registrar of Trade Marks, on September 2, 1949, upheld the respondents’ opposition and rejected the appellants’ application, finding that the “Vulture Brand” mark closely resembled the “Eagle Mark” and was likely to deceive or confuse the public. The appellants appealed this decision to the Bombay High Court under Section 76 of the Trade Marks Act, 1940. On August 28, 1950, exercising original jurisdiction, reversed the Registrar’s order, directing the registration of the appellants’ mark.

The respondents appealed this ruling to a Division Bench of the Bombay High Court under Clause 15 of the Letters Patent, which permits appeals from a single judge’s judgment. On March 19, 1951, the Division Bench overturned Bombay High Court Single Judge’s decision, restoring the Registrar’s refusal. The appellants then sought and obtained a certificate under Section 109(c) of the Civil Procedure Code, enabling an appeal to the Supreme Court of India.

Issues Involved in the Case: The case presented two pivotal issues. First, whether Single Judge’s judgment, rendered in an appeal under Section 76 of the Trade Marks Act, was appealable to a Division Bench under Clause 15 of the Bombay Letters Patent? Second, whether the Registrar’s discretion to refuse registration of the appellants’ trade mark—on grounds of likelihood of deception or confusion—was correctly exercised?

Detailed Submission of Parties: The appellants contended that Single Judge’s judgment was not appealable under Clause 15, as the Trade Marks Act, 1940, created a distinct appellate jurisdiction not governed by the Letters Patent or Section 108 of the Government of India Act, 1915. They relied on Indian Electric Works v. Registrar of Trade Marks (A.I.R. 1947 Cal. 49), where the Calcutta High Court held that appeals under the Trade Marks Act were outside the Letters Patent’s ambit. On merits, they asserted that their “Vulture Brand” mark, distinct in name and get-up from the respondents’ “Eagle Mark,” posed no risk of confusion. They further argued that the Madras High Court’s dismissal of the passing-off action conclusively established no likelihood of deception, binding the Registrar and subsequent courts.

The respondents maintained that Section 76 conferred appellate jurisdiction on the High Court, to be exercised per its established rules, including Clause 15 appeals, citing National Telephone Co. v. Postmaster General ([1913] A.C. 546) and Privy Council precedents like R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar (74 I.A. 264). On merits, they argued that the appellants’ mark, despite the “Vulture” label, visually mimicked an eagle, risking confusion with their well-known “Eagle Mark.” They emphasized that passing-off and registration proceedings involve distinct considerations, rendering the Madras ruling irrelevant.

Detailed Discussion on Judgments Cited by Parties and Their Context: The parties invoked several precedents, each shaping the court’s analysis:

1. National Telephone Co. v. Postmaster General, [1913] A.C. 546
   Cited by the respondents, this House of Lords decision held that when a statute directs an appeal to an established court without specifying procedure, the court’s ordinary rules—including appeal rights—apply. The respondents used this to argue that Section 76 appeals to the High Court carried Clause 15 appeal rights.
2. R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar, (1947) 74 I.A. 264
   A Privy Council ruling, also relied upon by the respondents, it affirmed that appeals to ordinary courts under special statutes follow the court’s procedural norms unless excluded. This bolstered their claim that Justice Shah’s judgment was appealable.
3. Secretary of State v. Chellikani Rama Rao, (1916) I.L.R. 39 Mad. 617
   Another Privy Council decision cited by the respondents, it held that appeals to district courts under the Madras Forest Act followed civil procedure rules, supporting the applicability of Clause 15 to Trade Marks Act appeals.
4. Indian Electric Works v. Registrar of Trade Marks, A.I.R. 1947 Cal. 49
   The appellants’ key authority, this Calcutta High Court ruling deemed Trade Marks Act appeals outside the Letters Patent’s scope, arguing that Section 108 of the Government of India Act, 1915, applied only to pre-existing jurisdiction. The respondents urged its overruling.
5. Secretary of State v. Mask & Co., (1940) 67 I.A. 222
   Cited by the appellants to distinguish their case, this Privy Council decision held that statutory remedies under the Sea Customs Act excluded civil court jurisdiction. The respondents clarified its irrelevance, as the Trade Marks Act designated the High Court as the appellate forum without finality clauses.
6. The Gurdwara Case, (1936) 63 I.A. 180
   Referenced by the appellants to contrast jurisdictions, this Privy Council ruling applied National Telephone principles to Gurdwara Tribunal appeals. The respondents leveraged it to align Trade Marks Act appeals with general appellate jurisdiction.

Detailed Reasoning and Analysis of Judge: The Supreme rejected the appellants’ contention that Single Judge’s decision was unappealable, affirming that Section 76 of the Trade Marks Act, by conferring appellate jurisdiction on the High Court without procedural specifics, imported the court’s ordinary rules, including Clause 15 of the Letters Patent. Drawing on National Telephone, Adaikappa Chettiar, and Chellikani Rama Rao, the Supreme Court held that Appellate courts exercise statutory appellate jurisdiction per their charters unless expressly excluded. The Supreme Court dismissed the appellants’ reliance on Indian Electric Works, overruling it as a “narrow and restricted” interpretation of Section 108, which the court deemed an enabling provision applicable to both existing and future jurisdictions, reinforced by Article 225 of the Constitution of India, 1950.

On merits the court upheld the Registrar’s discretion under Section 8 of the Trade Marks Act, which prohibits registration of marks likely to deceive or cause confusion. The Supreme Court emphasized that the appellants bore the burden of proving their mark’s distinctiveness, a test not met by mere comparison with the respondents’ mark but by assessing its impact on an average purchaser. He found the appellants’ bird—despite being labeled a “vulture”—visually akin to an eagle, risking confusion with the respondents’ “Eagle Mark,” a conclusion supported by the appellants’ prior “Eagle Brand” usage. He distinguished the Madras passing-off ruling, noting that passing-off focuses on actual deception in trade, whereas registration assesses potential confusion, rendering the earlier decision non-binding.

Final Decision: The Supreme Court dismissed the appeal on May 7, 1953, affirming the Division Bench’s restoration of the Registrar’s refusal to register the appellants’ “Vulture Brand” mark, with costs awarded to the respondents.

Law Settled in This Case: The judgment settled two key principles. First, appeals under Section 76 of the Trade Marks Act, 1940, to a High Court are governed by the court’s ordinary procedural rules, including Letters Patent appeals from a single judge to a Division Bench, unless the statute explicitly provides otherwise. Second, the likelihood of deception or confusion under Section 8 is an independent inquiry for trade mark registration, distinct from passing-off considerations, placing the onus on the applicant to prove distinctiveness based on public perception, not just comparison with existing marks.

Case Title: National Sewing Thread Co. Ltd. Vs. James Chadwick & Bros. Ltd.: Date of Order: May 7, 1953: Case No.: Civil Appeal No. 135 of 1952:  Citation: 1953 AIR 357, 1953 SCR 1028: Name of Court: Supreme Court of India: Name of Judge: Hon'ble Justice Mehr Chand Mahajan , Justices Vivian Bose and B. Jagannadhadas

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

Crompton Greaves Consumer Electricals Limited Vs. Bali Ram

Crompton Greaves Consumer Electricals Limited Vs. Bali Ram Trading : May 28, 2025: C.O.(COMM.IPD-TM) 243/2021 : 2025:DHC:4527: High Court of Delhi:Hon'ble Mr. Justice Saurabh Bannjee

Brief Facts: Crompton Greaves has been using the ‘CROMPTON GREAVES’ trademark since 1943, which is well-known. The respondent registered the mark ‘CROMPTON’ in 1986 in Class 21 while the petitioner’s mark was already registered. The petitioner alleged that the respondent's mark is identical, similar, and likely to cause confusion, encroaching upon the petitioner’s goodwill.

Decision: The court held that the petitioner is the prior adopter and registered proprietor of the ‘CROMPTON GREAVES’ mark and that the respondent's registration of ‘CROMPTON’ was contrary to the law. The court ordered the removal of the respondent’s ‘CROMPTON’ mark from the Trademark Register.

Law Settled: The court relied on Sections 11(1) and 11(2) of the Trade Marks Act, 1999, and concluded that the registration was improperly granted, supporting the petitioner’s case under Sections 57(2) and 47(1) of the Act, based on prior user, registration, and reputation of the mark.

ITC Limited Vs. The Controller of Patents

Case Title: ITC Limited Vs. The Controller of Patents, Designs, and Trademarks:Case No.: IPDPTA/13/2024 :Date of Order: 20 May 2025:Name of Court: High Court at Calcutta:Name of Judge: Hon’ble Justice Ravi Krishan Kapur

Fact of the Case:

ITC Limited filed an application for a patent titled “A Heater Assembly to Generate Aerosol,” designed for handheld aerosol-generating devices. The Patent Office (Controller) rejected ITC’s patent application under Section 3(b) of the Patents Act, 1970, on grounds that the invention allegedly caused serious prejudice to human life, health, public order, and morality. ITC challenged this rejection before the Calcutta High Court, asserting that the Controller's decision was legally flawed, lacked proper reasoning, and was based on extraneous and unshared documents.

Legal Issue

The core legal issues were:Whether the Controller's rejection of the patent application under Section 3(b) was justified, especially regarding the grounds of public health and morality? Whether the Controller adhered to principles of natural justice by providing proper reasons and opportunity to respond to new evidence.Whether the interpretation of Section 3(b), as well as reliance on constitutional provisions and ethical considerations, was appropriate under Indian patent law.

Reasoning

The Court observed that:

• The Controller’s order lacked detailed reasoning and appeared to rely heavily on subjective notions about public morality and health without citing scientific or technical evidence.
• The Controller relied on documents surfaced for the first time in the order; no prior opportunity was given to ITC to address these.
• The order interpreted Section 3(b) too broadly, conflating moral and ethical concerns with patentability criteria.
• The Court emphasized that the law does not permit the Controller to base rejection solely on perceived societal harm without scientific backing or specific legislative guidance.
• The Court also noted that invoking constitutional Articles (such as Article 47) and framing the matter as a moral issue was misplaced, as patent law is a statutory regime that should be interpreted within legal bounds, not on moral judgments.
• The Court remanded the matter for re-evaluation, emphasizing the need for proper explanation, adherence to natural justice, and law-based reasoning.  

Decision

The Court quashed the Controller's order, set aside the rejection, and remanded the case for a fresh hearing, as the original order lacked transparent reasoning and procedural fairness. The Court clarified that the interpretation of Section 3(b) should not be used arbitrarily to deny patents based on subjective moral or health concerns without scientific rationale.

Under Armour, Inc. Vs. Anish Agarwal

Introduction: The case of Under Armour, Inc. Vs. Anish Agarwal & Anr. represents a significant adjudication in the realm of trademark law in India, focusing on the principles of trademark infringement and passing off under the Trade Marks Act, 1999. This case involves a dispute between Under Armour, Inc., a globally recognized American sportswear company, and the respondents, Anish Agarwal and his company, who were using the mark "AERO ARMOUR" for apparel. The core contention was whether the respondents’ mark was deceptively similar to Under Armour’s registered trademark "UNDER ARMOUR," leading to potential consumer confusion. The appeal before the High Court of Delhi arose from a Single Judge’s order denying a complete interim injunction, prompting the appellate court to examine the doctrines of initial interest confusion, dishonest adoption, and the scope of trademark protection for well-known marks. 

Factual Background: Under Armour, Inc., a company incorporated in the United States in 1996, is a prominent manufacturer and distributor of sports apparel, casual apparel, footwear, and related products. The company, founded by Kevin Plank, entered the Indian market in 2017 through Amazon Fashion and opened its first retail store in New Delhi in 2019. Under Armour holds multiple trademark registrations in India and globally, including the word mark "UNDER ARMOUR" and various formative marks such as "GAMEDAY ARMOUR," "ARMOURVENT," and "UA." These marks are registered under various classes, including Class 9, 18, 25, 28, 35, 41, and 42, covering apparel, footwear, and related services. Notably, the standalone word "ARMOUR" is not registered in India but is registered in jurisdictions like the United States, European Union, and Canada. Under Armour’s trademarks are globally recognized, associated with significant goodwill due to extensive advertising, sponsorships, and their use in blockbuster movies.

The respondents, Anish Agarwal (a director and promoter) and his company, operate in India, manufacturing and selling clothing and footwear under the trademark "AERO ARMOUR." They also use a logo combining a shield, airplane, and stripes, reflecting military and aviation themes. Their products, primarily casual apparel, feature designs inspired by the Indian armed forces, with taglines like "WEAR YOUR VALOUR" and "WEAR YOUR PRIDE." The respondents applied for registration of "AERO ARMOUR" under Class 25 in India, which Under Armour opposed, alleging deceptive similarity with its trademarks. The respondents’ products are sold at a significantly lower price point (e.g., ₹799 for T-shirts) compared to Under Armour’s products (e.g., ₹2,000 for similar items), raising concerns about trademark dilution.

Procedural Background:Under Armour initiated a suit, CS(COMM) 843/2023, against the respondents in the High Court of Delhi, alleging trademark infringement, passing off, and copyright infringement. The company sought an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, to restrain the respondents from using "AERO ARMOUR" and "AERO ARMR" or any deceptively similar marks. The Single Judge, in an order dated May 29, 2024, disposed of the application by imposing limited restrictions on the respondents’ use of their marks but declined to grant a full injunction. The Single Judge reasoned that there was no likelihood of confusion due to differences in the products’ themes (sports apparel for Under Armour versus military-themed casual apparel for the respondents), distinct market channels, and the sophistication of modern consumers. The respondents undertook not to use "ARMR" or place "AERO ARMOUR" on sleeves in a manner similar to Under Armour’s branding.

Aggrieved by the partial relief, Under Armour filed an intra-court appeal under Section 13 of the Commercial Courts Act, 2015, read with Order XLIII Rule 1 of the Code of Civil Procedure, 1908, challenging the Single Judge’s order.  The appellant argued that the Single Judge misapplied the test of initial interest confusion and failed to recognize the deceptive similarity between "AERO ARMOUR" and "UNDER ARMOUR," particularly given the respondents’ alleged dishonest adoption of the mark.

Legal Issue: The primary legal issue in this case was whether the respondents’ use of the mark "AERO ARMOUR" constituted trademark infringement or passing off under the Trade Marks Act, 1999, particularly Section 29, by being deceptively similar to Under Armour’s registered trademark "UNDER ARMOUR." A related issue was whether the respondents’ adoption of the mark was dishonest, warranting an interim injunction. The court was tasked with determining whether the Single Judge erred in denying a full injunction, especially in light of the doctrine of initial interest confusion and the protection afforded to well-known trademarks.

Discussion on Judgments: The court referenced several judgments to analyze the issues of trademark infringement, initial interest confusion, and dishonest adoption. The appellant relied on Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd. (2023:DHC:2711), where a Single Judge of the Delhi High Court granted an injunction against the mark "STREET ARMOUR" for being deceptively similar to "UNDER ARMOUR." The court in that case emphasized initial interest confusion, holding that a customer of average intelligence and imperfect recollection could be confused by the defendant’s mark, even if the confusion was resolved before purchase. The Division Bench found this precedent relevant, noting the phonetic and structural similarity between "AERO ARMOUR" and "UNDER ARMOUR," particularly in the use of "ARMR" and sleeve placement.

The respondents’ defense was addressed through Institute Europeen D. Administration Des Affaires, Insead v. Fullstack Education Pvt. Ltd.* (2023 SCC OnLine Del 3016), where the Delhi High Court held that phonetic similarity between "INSEAD" and "INSAID" could cause initial interest confusion, even among sophisticated consumers like students. The court clarified that consumer sophistication does not preclude confusion, as modern business trends like licensing and mergers may lead consumers to assume an association between similar marks. This case supported the appellant’s argument that even brief confusion satisfies the infringement test under Section 29.

The court also cited Midas Hygiene Industries (P.) Ltd. v. Sudhir Bhatia & Ors. ((2004) 3 SCC 90), where the Supreme Court held that dishonest adoption of a mark warrants an injunction, even if there is a delay in bringing the action. This precedent was pivotal in the court’s finding that the respondents’ adoption of "AERO ARMOUR," given its similarity to "UNDER ARMOUR" and Under Armour’s global reputation, was prima facie dishonest.

Additional cases referenced included Baker Hughes ((1998) 74 DLT 745), which discussed the irrelevance of consumer sophistication in preventing initial confusion, and Mobil Oil Corp. Vs. Pegasus Petroleum Corp., where the U.S. court recognized that initial confusion could harm the trademark owner by attracting customers to a competitor’s product. Similarly, Lois Sportswear, USA Inc. v. Levi Strauss & Co. and Wincharger Corporation v. Rinco, Inc. (297 F.2d 261 (1962)) were cited to underscore that sophisticated consumers are not immune to confusion, especially when marks are highly similar. The court distinguished John Hayter Motor Undertaking Agencies Ltd. v. RBHS Agencies Limited ([1977] 2 Lloyd’s Rep. 105), rejecting its view that sophisticated consumers are unlikely to be confused, as it conflicted with the principle of initial interest confusion.

Reasoning and Analysis of the Judge:The Division Bench conducted a thorough analysis of the Single Judge’s order and the principles of trademark law. The court found that the Single Judge erred in concluding that there was no likelihood of confusion, particularly by misapplying the doctrine of initial interest confusion. The Bench emphasized that Section 29 of the Trade Marks Act does not require prolonged confusion; even transient confusion or "wonderment" at the initial stage is sufficient to establish infringement. The Single Judge had acknowledged that customers might experience transient wonderment upon encountering "AERO ARMOUR" but assumed that informed consumers would resolve this confusion through further inquiry. The Division Bench rejected this reasoning, holding that the mere occurrence of initial confusion, even if brief, satisfies the infringement criteria under Section 29(2).

The court further analyzed the similarity between the marks, noting that "AERO ARMOUR" and "UNDER ARMOUR" share phonetic and visual similarities, particularly due to the dominant word "ARMOUR" and the respondents’ use of "ARMR," which mirrored Under Armour’s branding. The placement of "AERO ARMOUR" on the sleeves of T-shirts, similar to Under Armour’s practice, reinforced the likelihood of confusion. The Bench disagreed with the Single Judge’s reliance on the anti-dissection rule, which prohibits analyzing parts of a trademark in isolation, as the overall commercial impression of the marks was deceptively similar.

On the issue of dishonest adoption, the court found prima facie evidence that the respondents knowingly adopted a mark similar to "UNDER ARMOUR," given the appellant’s global reputation and the respondents’ operation in the apparel industry. The respondents’ claim that "AERO ARMOUR" was inspired by aeronautics and military themes was deemed insufficient to negate the inference of dishonest intent, especially since they used the mark in a manner mimicking Under Armour’s branding. The court relied on Midas Hygiene to assert that dishonest adoption warrants an injunction.

The Bench also addressed the Single Judge’s distinction between sports apparel (Under Armour) and casual apparel (respondents), finding it unpersuasive. Both parties operated in the apparel market, used similar trade channels, and targeted overlapping consumer bases, increasing the likelihood of confusion. The significant price difference (₹2,000 vs. ₹799 for T-shirts) was seen as potentially diluting Under Armour’s brand, further supporting the need for an injunction.

Final Decision: The Division Bench allowed the appeal, setting aside the Single Judge’s order dated May 29, 2024. The court granted an interim injunction, restraining the respondents from using the marks "AERO ARMOUR," "AERO ARMR," or any other mark deceptively similar to "UNDER ARMOUR" until the disposal of the suit. All pending applications were disposed of, and the court directed that the issues would be finally adjudicated at trial.

Law Settled in This Case: The case clarified several key principles of trademark law in India. First, it established that initial interest confusion, even if transient, constitutes trademark infringement under Section 29 of the Trade Marks Act, 1999. The duration of confusion is irrelevant; the mere likelihood of a customer associating the impugned mark with the registered mark, even briefly, satisfies the infringement test. Second, the court affirmed that dishonest adoption of a mark, particularly one that mimics a well-known trademark’s phonetic, visual, or structural elements, warrants an interim injunction, as per Midas Hygiene Industries (P.) Ltd. v. Sudhir Bhatia & Ors. Third, the strength of a trademark determines the degree of protection, requiring new entrants to maintain a greater distance from well-known marks to avoid infringement. Fourth, consumer sophistication does not preclude infringement, as even informed consumers may experience initial confusion due to modern business practices like licensing or mergers. Finally, the court emphasized that the global appreciation test, when applied correctly, considers the overall commercial impression of marks, including their use in similar trade channels, to assess the likelihood of confusion.

Case Detail: Under Armour, Inc. Vs . Anish Agarwal: May 23, 2025:FAO(OS) (COMM) 174/2024: 2025:DHC:4243:High Court of Delhi: Hon'ble Mr. Justice Vibhu Bakhru and Hon'ble Mr. Justice Sachin Datta

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

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

SML Limited Vs. Mohan & Company & Anr.

Case Title: SML Limited Vs. Mohan & Company & Anr.:Date of Order: 6 June 2025:Case Number: OMP No. 320 of 2023 in COMS No. 6 of 2023:Neutral Citation: 2025:HHC:18160:Name of Court: High Court of Himachal Pradesh, Shimla:Name of Judge: Hon’ble Mr. Justice Sandeep Sharma

Very Brief Facts:SML Limited, the plaintiff, is the assignee and holder of Indian Patent No. 282092 titled “Agricultural Composition.” It launched a patented fertilizer product under the brand name “Techno Z.” The defendants allegedly infringed this patent by manufacturing and marketing a similar product under the brand name “Aladdin,” which SML claimed fell within the scope of its patent claims, particularly Claims 11 and 12.

Dispute:The primary dispute was whether the defendants’ product “Aladdin” infringed the plaintiff’s patent and whether the plaintiff was entitled to interim relief by way of injunction under Order XXXIX Rules 1 and 2 of CPC. The defendants challenged the validity of the patent, raised jurisdictional objections, and argued that their product complied with government-mandated fertilizer standards under the Fertilizer Control Order (FCO), not covered by the patent.

Discussion by Judge:The Court carefully examined whether the defendants’ product prima facie fell within the patented claims, relying on expert analysis, claim construction, and comparisons of composition and particle sizes. The judge considered the presumption of patent validity for long-standing patents, the credibility of the defendant’s challenge under Sections 3(d), 2(1)(ja), and 64 of the Patents Act, and public interest arguments under the Essential Commodities Act.

The Court found that the plaintiff demonstrated a prima facie case of infringement and that the defendants failed to raise a sufficiently credible challenge to the patent’s validity at the interim stage. It held that regulatory compliance under FCO could not override proprietary rights under the Patents Act and that balance of convenience favored the patentee.

Decision:The Court granted an interim injunction restraining the defendants from manufacturing, selling, offering for sale, importing, or exporting the allegedly infringing product “Aladdin” or any other product covered under Patent No. 282092. The injunction was to continue until further orders.

Procter & Gamble Hygiene and Health Care Ltd. & Anr. Vs. State of Himachal Pradesh

Case Title: Procter & Gamble Hygiene and Health Care Ltd. & Anr. Vs. State of Himachal Pradesh & Ors.:Date of Order: 28 May 2025: Case Number: Cr. MMO No. 266 of 2024: Neutral Citation: 2025:HHC:16349:Name of Court: High Court of Himachal Pradesh, Shimla:Name of Judge: Hon’ble Mr. Justice Rakesh Kainthla

Very Brief Facts:The informant claimed to have developed and patented a method of dyeing textiles using herbal extracts like neem and holy basil. He submitted his technology to Procter & Gamble (P&G) through their Connect + Develop program. Later, P&G launched a sanitary napkin product allegedly using the submitted herbal formulation. The informant filed a criminal complaint alleging misuse of his patented technology.

Dispute:The central issue was whether the FIR, registered pursuant to a Magistrate's direction under Section 156(3) CrPC, should be quashed. P&G argued that the allegations were purely civil in nature (related to patent infringement), no criminal intent was present, and that no confidentiality or contractual relationship existed between the parties. The complaint, they contended, was an abuse of the criminal justice process.

Discussion by Judge:The Court considered whether the ingredients of cheating and criminal breach of trust under Sections 415, 420, and 405 IPC were made out. It concluded that both offences could not co-exist as they require distinct intent, and neither was satisfied here. The Judge emphasized that patent infringement is a civil issue, and the FIR lacked sufficient basis to constitute a criminal offence. The criminal complaint was seen as an attempt to harass and pressurize the petitioners in a civil dispute.

Decision:The High Court quashed the FIR and all consequential proceedings, holding that the allegations did not disclose any cognizable offence. It ruled the proceedings amounted to an abuse of process and interfered under Section 482 CrPC.

ITC Limited Vs. The Controller of Patents Designs and Trademark

Case Title: ITC Limited Vs. The Controller of Patents Designs and Trademark:Date of Order: 20 May 2025:Case Number: IPDPTA/13/2024

Name of Court: High Court at Calcutta, Original Side (Intellectual Property Rights Division):Name of Judge: Hon’ble Justice Ravi Krishan Kapur

Very Brief Facts:ITC Limited filed an appeal against the order of the Patent Controller dated 21 August 2024, which rejected their patent application for “A Heater Assembly to Generate Aerosol.” The invention was designed to provide uniform heat distribution for aerosol-generating devices and was not necessarily limited to tobacco-based substrates.

Dispute:The Controller rejected the patent under Section 3(b) of the Patents Act, 1970, claiming the invention was contrary to public order and morality and caused serious prejudice to human health. ITC argued that the Controller misconstrued the invention, wrongly presumed it was limited to tobacco use, and relied on documents not disclosed during proceedings, thereby violating principles of natural justice.

Discussion by Judge:The Court found the Controller's approach flawed, emphasizing that the invention was not necessarily tobacco-based and its use could vary. The impugned order lacked proper reasoning, misapplied Section 3(b), and inappropriately invoked Article 47 of the Constitution and other moral grounds without scientific evidence. The Judge clarified that patent rights are exclusionary—not a license to commercialize. Citing both national and international precedents, the Court underscored that denial of a patent must be based on objective, legal, and technical grounds, not moral or speculative assumptions. Additionally, the Controller erred in using external documents without providing the applicant a chance to respond.

Decision:The High Court set aside the impugned order and remanded the matter to the Controller for fresh consideration within three months. All issues were kept open for decision afresh in accordance with law, with no expression on the merits by the Court.

Inbrew Beverages Pvt. Ltd. Vs. Mount Distilleries Ltd

Case Title: Inbrew Beverages Pvt. Ltd. Vs. Mount Distilleries Ltd.:Date of Order: 3rd June 2025:Case Number: WP(C) No. 31 of 2024: Neutral Citation: 2025 SCC OnLine Sikk 48:Name of Court: High Court of Sikkim, Gangtok (Civil Extraordinary Jurisdiction): Name of Judge: Hon’ble Mrs. Justice Meenakshi Madan Rai

Very Brief Facts:Inbrew Beverages Pvt. Ltd., having taken over United Spirits Ltd. (USL), filed a suit for trademark infringement and related reliefs concerning their brand “Honey Bee.” During the final stages of trial, they sought permission to place on record certified copies of certain trademark registrations, a design registration, a usership agreement, and a CA certificate—documents previously submitted only as photocopies.

Dispute:The dispute arose over whether the petitioner could be permitted to file certified copies of documents at a very late stage—after conclusion of evidence and commencement of final arguments—under Order XI Rule 1(5) of the Civil Procedure Code, 1908 as applicable in commercial suits. The Commercial Court had rejected the petitioner’s application, prompting the writ petition under Article 227 of the Constitution.

Discussion by Judge:Court examined the statutory bar under Section 8 of the Commercial Courts Act, 2015 against petitions challenging interlocutory orders but clarified that Article 227 jurisdiction remains unaffected. The Court agreed that the documents in question were not "additional documents" as they had been initially filed as photocopies and were clearly within the petitioner's possession from the outset. The Court held that Order XI Rule 1(5) CPC does not apply when documents were already known and not subsequently discovered. Allowing their certified versions now would unfairly prejudice the respondent by permitting rectification of evidentiary gaps after conclusion of trial.

Decision:

The writ petition was dismissed. The High Court declined to interfere with the Commercial Court’s refusal to accept the documents, stating that no procedural irregularity or grave injustice had occurred warranting intervention under Article 227.

Dunlop International Limited Vs. Glorious Investment Limited

Dunlop International Limited Vs. Glorious Investment Limited: 11 June 2025: IPDTMA/14/2024 (heard along with IPDTMA/15–21/2024):High Court at Calcutta,

Hon'ble Justice Ravi Krishan Kapur

Very Brief Facts:

Dunlop International Ltd. opposed the registration of the mark “DUNLOP” by Glorious Investment Ltd. in eight different trademark classes. The Registrar of Trademarks rejected Dunlop's oppositions and allowed Glorious Investment’s applications. Dunlop challenged these orders, alleging fraudulent assignment of trademarks, procedural irregularities, and that the orders were passed without a fair hearing, particularly while the predecessor company (Dunlop India Ltd.) was under liquidation.

Issues:

Whether the Registrar violated principles of natural justice by refusing adjournment and proceeding without a proper hearing.

Whether the assignments to Glorious Investment Ltd. were valid in light of Dunlop India Ltd.'s liquidation. Whether the Registrar's orders were legally sustainable, given their lack of reasoning and failure to consider material facts and applicable law.

Discussion by Judge:

The Court held that the Registrar violated the principles of natural justice by refusing a fair hearing and proceeding arbitrarily. The orders lacked proper reasoning and failed to address serious allegations regarding fraudulent assignments, misuse of procedural forms, and the legal effect of liquidation. The Court criticized the superficial findings on distinctiveness and the well-known status of the mark "DUNLOP." The Judge emphasized that procedural rules are meant to aid justice, not frustrate it.

Decision:All the impugned orders were set aside. The matters were remanded to the Registrar for fresh consideration, after giving a proper opportunity of hearing to all parties. The Registrar was directed to conclude the proceedings within three months from the communication of the Court's order. All legal and factual issues were kept open for decision afresh in accordance with law.

K. Mangayarkarasi Vs N. J. Sundaresan

K. Mangayarkarasi Vs N. J. Sundaresan: January 9, 2025: Special Leave Petition (CIVIL) No. 13012 of 2025:2025 INSC 687:Supreme Court of India:Hon'ble Justice J.B. Pardiwala

Facts:

The petitioners, K. Mangayarkarasi and others, are proprietors of the trademark "SRI ANGANNAN BIRIYANI HOTEL." The respondent, N. J. Sundaresan, filed a suit in the Commercial Court at Coimbatore seeking a permanent injunction to restrain the petitioners from using the trademark and claiming damages for unauthorized use. The respondent also filed an application under Section 8 of the Arbitration and Conciliation Act, 1996, seeking to refer the dispute to arbitration, citing an arbitration clause in a Deed of Assignment of Trade Marks.

Procedural History:

The Commercial Court allowed the arbitration reference.The petitioners challenged this order before the Madras High Court.The High Court dismissed the revision petition, upholding the arbitration clause and the lower court's decision.The petitioners then filed a Special Leave Petition (SLP) before the Supreme Court.

Issues:

Whether disputes relating to the trademark can be referred to arbitration under the contract.Whether the matter falls within the jurisdiction of the courts or arbitration.The scope of the referral court’s powers under Section 11 and Section 8 of the Arbitration Act.

Decision:

The Supreme Court upheld the arbitration clause in the Deed of Assignment and confirmed that disputes concerning rights and obligations related to the trademark are arbitrable. Thus, it dismissed the SLP, affirming the high court's order to refer the dispute to arbitration.

Om Prakash Gupta Vs. Parveen Kumar

Introduction: In the intricate world of intellectual property law, the case of Om Prakash Gupta v. Parveen Kumar and Anr., decided by the High Court of Delhi on May 19, 2000, emerges as a compelling narrative of trademark rights, misrepresentation, and the consequences of abandonment. This dispute revolves around the trademark "SURAJ CHHAP," a label tied to the tobacco trade, and pits Om Prakash Gupta, claiming registered proprietorship, against Parveen Kumar and another, who challenge the plaintiff’s assertions with a tale of prior use and alleged deceit. The High Court’s ruling not only vacates an interim injunction but dismisses the suit entirely, spotlighting the sanctity of judicial processes and the fragility of trademark rights in the face of non-use and fraud.

Detailed Factual Background: Om Prakash Gupta, the plaintiff, asserts ownership of the trademark "SURAJ CHHAP," registered under number 287631 on April 24, 1973, in Class 34 for scented chewing tobacco. Initially, Gupta operated as part of a partnership firm, M/s. Prakash Sugandh Bhandar, alongside Sumer Chand and Promod Kumar, starting in 1973. Over time, one partner retired, another passed away, and Gupta became the sole proprietor. He claims extensive use of "SURAJ CHHAP" across states like Delhi, Rajasthan, Uttar Pradesh, Gujarat, and Madhya Pradesh since 1973, building a robust reputation. Gupta also asserts copyright in the artistic design of his product labels and pouches, characterized by a distinctive trade dress and color scheme, and invokes common law rights against passing off due to long-term use. However, he admits to a period of non-use—without specifying its duration—before resuming business in 1999.

The defendants, Parveen Kumar and another, counter that they have been in the tobacco trade since 1956, initially using trademarks "PATANGA" and "HARIBIHARI." They claim to have adopted "SURAJ CHHAP" for unmanufactured raw tobacco in 1993 (later contested as 1995 due to excise licensing), with significant sales figures: ₹10,62,257.50 in 1993-94 escalating to ₹17,66,250 in 1998-99. They assert a copyright registration for "SUN BRAND" Hukka Tobacco since May 10, 1976, and argue that their pouches differ from Gupta’s. The defendants allege that Gupta’s tobacco business faltered by 1979, leading to abandonment of "SURAJ CHHAP," and that his 1999 resumption was a belated attempt to capitalize on their established market presence. They further contend that Gupta’s trademark registration carries a disclaimer excluding exclusive rights to "SURAJ" and the "Sun" device, a fact he allegedly concealed.

Detailed Procedural Background: Gupta filed Suit No. 1744/99 in the High Court of Delhi, seeking a permanent injunction against the defendants for trademark infringement, copyright infringement, and passing off, alongside ancillary reliefs. Concurrently, he moved I.A. No. 7665/99 under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), for a temporary injunction. On August 12, 1999, the court granted an ex parte interim injunction, restraining the defendants from using "SURAJ CHHAP" or similar labels, based on Gupta’s claims of registered trademark rights, as recorded on August 10 and 12, 1999.

The defendants responded with I.A. No. 8739/99 under Order 39 Rule 4, CPC, seeking to vacate the injunction, alleging misrepresentation and prior use. They did not file a written statement but presented detailed facts in their application. Both parties submitted extensive documentation and written arguments, supplemented by lengthy oral submissions. Justice J.B. Goel adjudicated the applications together, delivering a comprehensive judgment on May 19, 2000, which not only addressed the injunction but also disposed of the suit itself.

Issues Involved in the Case: The case hinges on several key issues: whether Gupta’s suit for trademark infringement is maintainable given the disclaimer on "SURAJ" and the "Sun" device; whether his concealment of this disclaimer constitutes fraud sufficient to warrant dismissal; whether prolonged non-use of "SURAJ CHHAP" amounts to abandonment, extinguishing his rights; whether the defendants’ prior use since 1993 (or 1995) establishes superior rights; and whether Gupta’s passing off claim survives despite the disclaimer and non-use?

Detailed Submission of Parties: Gupta’s counsel argued that he is the registered proprietor of "SURAJ CHHAP" under registration No. 287631, renewed and valid as of 1994, entitling him to sue for infringement under Section 28 of the Trade and Merchandise Marks Act, 1958. He emphasized extensive use since 1973, claiming goodwill and reputation, and asserted copyright in his pouch designs. On non-use, he attributed the hiatus to a partner’s death, insisting it did not erode his rights, and cited precedents to argue that registration persists despite temporary disuse. For passing off, he contended that the disclaimer under Section 17’s proviso preserves common law remedies, unaffected by registration limitations.

The defendants’ counsel challenged Gupta’s claims, asserting that the registration certificate (No. 287631) includes a disclaimer excluding "SURAJ" and the "Sun" device, rendering his infringement claim baseless. They accused Gupta of suppressing this fact, obtaining the injunction fraudulently, and argued that such misrepresentation justifies dismissal. They claimed prior use of "SURAJ CHHAP" since 1993, supported by sales data, and argued that Gupta abandoned the mark by 1979, losing all rights after 20 years of non-use. They denied similarity in pouch designs and asserted their established market reputation, urging the court to vacate the injunction and dismiss the suit.

Detailed Discussion on Judgments Cited by Parties and Their Context:The parties and court relied on several precedents, each illuminating distinct facets of the dispute:

• Chandra Shashi v. Anil Kumar Verma, (1995) 1 SCC 421: Cited by the defendants and court, this Supreme Court case involved contempt proceedings against a respondent who fabricated a document in a matrimonial dispute. The court emphasized the need to punish fraud to preserve judicial integrity, sentencing the respondent to imprisonment. Justice Goel applied this to Gupta’s concealment, underscoring its severity as a fraud on the court.
• Indian Bank v. Satyam Fibres (India) Pvt. Ltd., (1996) 5 SCC 550: The defendants referenced this Supreme Court ruling, where a forged letter led to the recall of a National Consumer Disputes Redressal Commission judgment. The court affirmed inherent powers under Section 151, CPC, to set aside orders obtained by fraud. Justice Goel used this to justify vacating the injunction and dismissing the suit.
• S.P. Chengalvaraya Naidu (Dead) by LRs v. Jagannath (Dead) by LRs, (1994) 1 SCC 1: Another Supreme Court case cited by the defendants, it declared judgments obtained by fraud as nullities, stressing clean hands in litigation. The court linked non-disclosure of material documents to fraud, a principle Justice Goel applied to Gupta’s omission of the disclaimer certificate.
• Registrar of Trade Marks v. Ashok Chandra Rakhit, AIR 1955 SC 558: Both parties cited this Supreme Court decision, which explained disclaimers under the Trade Marks Act, 1940 (predecessor to Section 17 of the 1958 Act). It clarified that disclaimed elements lack statutory protection but retain common law rights. Gupta used it to support his passing off claim, while the court interpreted it to limit his infringement claim.
• Wander Ltd. v. Antox India P. Ltd., 1990 (Supp) SCC 727: The court referenced this Supreme Court case to distinguish infringement (statutory) from passing off (common law) remedies, noting Gupta’s infringement claim failed due to the disclaimer, though passing off remained theoretically viable.
• Polson Ltd. v. Polson Dairy Ltd., 1996 (16) PTC 709 (Delhi): Gupta relied on this Delhi High Court ruling, where non-use due to government policy did not constitute abandonment. The court distinguished it, finding Gupta’s non-use lacked such justification.
• Avis International Ltd. v. Avi Footwear Industries, AIR 1991 Del 22: Cited by Gupta, this Delhi High Court case placed the burden on defendants to prove non-use leading to abandonment, which they disputed. Justice Goel found sufficient evidence of Gupta’s non-use.
• Garden Perfume (P) Ltd. v. Anand Soaps and Detergents, : Gupta referenced this case to argue non-abandonment, but the court found it factually inapplicable due to Gupta’s unexplained hiatus.
• Godfrey Philips India Ltd. v. Girnar Food & Beverages Pvt. Ltd., : Cited by the court, this case likely elaborated on trademark use and recognition, supporting the defendants’ prior use claim.
• Ruston and Hornby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649: Implicitly referenced via Polson, this Supreme Court case upheld registered trademark rights, but Justice Goel noted its irrelevance given the disclaimer.

Detailed Reasoning and Analysis of Judge: Justice J.B. Goel’s analysis is a dual-pronged examination of fraud and trademark rights. He first tackled Gupta’s misrepresentation, noting that the plaint and court submissions claimed "SURAJ CHHAP" as a registered trademark under No. 287631, yet the certificate—produced by both parties—revealed a disclaimer excluding "SURAJ" and the "Sun" device. Gupta’s failure to disclose this, coupled with reliance on a non-legal certificate, constituted a material suppression and misrepresentation. Drawing from Chandra Shashi, Indian Bank, and Chengalvaraya Naidu, the judge held that such fraud vitiates judicial proceedings, justifying not only the injunction’s recall but the suit’s dismissal under inherent powers (Section 151, CPC).

On trademark merits, Justice Goel interpreted Section 17, citing Ashok Chandra Rakhit, to confirm that disclaimed elements lack statutory protection under Section 28, restricting Gupta’s registered rights to "Zafrani Patti." The infringement claim thus collapsed. For passing off, the judge assessed non-use, finding Gupta’s business ceased in 1979, with a 20-year gap until 1999. His explanation—death of a partner in 1985—failed to account for prior cessation, and excise license lapses post-1982 reinforced abandonment. Contrasting cases like Polson (justified non-use) and Avis (disputed non-use), Goel inferred an intent to abandon from the prolonged, unexplained hiatus, per Narayana’s treatise on trademark law.The defendants’ use since 1993 (or 1995) predated Gupta’s 1999 resumption, establishing prior rights. Their pouch design, adopted earlier, negated copyright infringement claims. Balancing equities, the judge found no prima facie case, irreparable harm, or convenience favoring Gupta, especially given his deceitful conduct.

Final Decision: On May 19, 2000, the High Court allowed the defendants’ I.A. No. 8739/99, vacating the August 12, 1999, interim injunction, and dismissed Gupta’s I.A. No. 7665/99 and Suit No. 1744/99 with costs of ₹20,000, citing fraud and abandonment.

Law Settled in This Case: The judgment reinforces that concealment of material facts, such as a trademark disclaimer, constitutes fraud on the court, warranting dismissal under inherent powers. It clarifies that disclaimed elements of a registered trademark lack statutory protection under Section 28, limiting infringement claims, though passing off remains viable under Section 17’s proviso. Prolonged, unjustified non-use can infer abandonment, extinguishing common law rights, especially against prior users.

Case Title: Om Prakash Gupta Vs. Parveen Kumar and Anr.:Date of Order: May 19, 2000:Case No.: Suit No. 1744/99: Neutral Citation: 86 (2000) DLT 181:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice J.B. Goel

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

Principal Commissioner of Customs Vs. Loreal SA

Introduction: The case of Principal Commissioner of Customs & Anr. v. L’Oréal S.A. came before the Delhi High Court under Article 227 of the Constitution of India, raising significant questions concerning jurisdictional overreach, the concept of a court becoming functus officio, and the limits of post-decree judicial proceedings. The matter pertained to intellectual property enforcement at the border and a broader conflict between administrative procedure and judicial process in post-decree scenarios.

Factual Background: L’Oréal S.A., a multinational cosmetic brand, filed a commercial suit for permanent injunction against M/s Oneness Enterprises (defendant no.1), as well as customs authorities—namely the Principal Commissioner of Customs (defendant no.2) and Commissioner of Customs (RI&I) (defendant no.3). The core of the suit revolved around the alleged import of counterfeit goods bearing the plaintiff’s registered trademarks “L’OREAL” and “MAYBELLINE” under Bill of Entry No. 9605576 dated 08.05.2017.L’Oréal sought extensive reliefs, including a decree for permanent injunction, confiscation and destruction of the impugned goods, rendition of accounts, disclosure of the entire chain of importation, and a restraint on asset disposal by the importer to secure any potential monetary relief.

Procedural Background:The trial was conducted before the District Judge (Commercial Court)-02, Patiala House Courts, New Delhi. The suit—CS(COMM) 128/2023—culminated in a judgment dated 19.10.2024, whereby a decree was passed in favour of L’Oréal. The decree directed that the suit was decreed with costs against the defendants. On the same date, however, the Trial Court passed a separate order whereby it continued post-decree proceedings and called for comments from customs counsel, issued show cause notices, and directed filing of an Action Taken Report (ATR).

This led to a new case being registered—MISC DJ/3623/2024. The proceedings in this miscellaneous case continued after the decree, with further orders being passed on 24.10.2024, 11.11.2024, and finally on 17.01.2025, the latter being the specific order challenged in the present petition under Article 227.

Issues Involved in the Case:The pivotal issue before the Delhi High Court was whether the Trial Court, after having passed a final judgment and decree, retained jurisdiction to continue post-decree proceedings by opening a new file (MISC DJ/3623/2024), issuing show cause notices, and calling for ATRs, despite no execution proceedings having been filed.The ancillary issue was whether a Court, once having become functus officio, could suo motu assume jurisdiction to monitor or pursue procedural compliance outside the statutory framework.

Submissions of Parties:The petitioners—the customs authorities—were represented by Mr. Aditya Singla, Standing Counsel for the CBIC. He submitted that once the suit had been decreed on 19.10.2024 and the file consigned to the record room, the Trial Court became functus officio and could not have opened a new file or passed subsequent orders. The reliefs sought in the original suit, particularly against customs authorities, had been adjudicated upon, and in the absence of an execution petition, the Trial Court lacked jurisdiction to initiate further proceedings.He emphasized that the initiation of proceedings in MISC DJ/3623/2024 amounted to judicial overreach and a violation of the principle that jurisdiction cannot be assumed by consent, waiver, or acquiescence.To support his contentions, he cited the following judgments:

1. Harshad Chiman Lal Modi v. DLF Universal Ltd., (2005) 7 SCC 791

The Supreme Court held that a Court lacking jurisdiction over the subject matter cannot assume it by consent or acquiescence. Any order passed by such a Court is a nullity and unenforceable.

2. Dr. Jagmittar Sain Bhagat v. Director, Health Services, (2013) 10 SCC 136

It was held that jurisdiction can only be conferred by statute and not assumed by a court suo motu. Even participation by a party does not validate proceedings held without jurisdiction.

Judgment and Authorities Cited – Contextual Discussion

In Harshad Chiman Lal Modi, the Apex Court emphasized the distinction between territorial/pecuniary jurisdiction and subject-matter jurisdiction. The case laid down that even if parties participated without objection, lack of subject-matter jurisdiction renders the judgment null. This principle was directly applicable in the present case, as the Trial Court, after passing the final decree, no longer retained jurisdiction over the matter.

Dr. Jagmittar Sain Bhagat further reinforced the principle that jurisdiction is a matter of legislative conferment, not procedural assumption. The judgment warned against the dangers of allowing judicial or administrative authorities to extend their reach beyond the scope of statutory empowerment.

Both judgments collectively clarified that the Trial Court, having decided the lis in CS(COMM) 128/2023 and having consigned the file to the record room, could not reopen proceedings under a miscellaneous head unless properly invoked through a fresh petition or execution proceeding.

Judicial Reasoning and Analysis: Delhi High Court, hearing the petition under Article 227, meticulously dissected the procedural irregularities. The Court observed that the Trial Court, having passed a decree and declared the suit closed, could not suo motu create and entertain MISC DJ/3623/2024. There existed no statutory provision enabling such an act absent a fresh proceeding.

The High Court reiterated the principle that jurisdiction must emanate from statute, not be fabricated by judicial initiative. Even though the customs authorities had participated in the proceedings before the Trial Court post-decree, that participation could not bestow legality upon inherently void proceedings.

Justice Banerjee strongly criticized the Trial Court’s conduct, labeling its actions as “patent perversity” and an “apparent error on the face of the record.” He further held that in such extraordinary circumstances, the High Court must exercise its supervisory jurisdiction under Article 227 to ensure adherence to law and prevent miscarriage of justice.

Final Decision:The Delhi High Court set aside the impugned order dated 17.01.2025 passed by the Trial Court in MISC DJ/3623/2024. Consequently, the entire proceedings initiated under that file, including all intermediate orders passed on 24.10.2024 and 11.11.2024, were also quashed. The High Court reaffirmed the principle that once a court becomes functus officio post-decree, it cannot continue to exercise jurisdiction unless statutorily enabled.

Law Settled in this Case:The judgment settles the law on two key points:First, once a civil court passes a final judgment and decree, it becomes functus officio and lacks the authority to entertain or continue any further proceedings in the same matter except through statutorily recognized post-decree mechanisms like execution petitions.Second, jurisdiction cannot be assumed or conferred by consent or participation. Any order passed by a court lacking jurisdiction over the subject matter, particularly after final adjudication, is null and void.This judgment reinforces judicial discipline and statutory fidelity, acting as a caution against judicial overreach and unwarranted continuation of proceedings outside the bounds of jurisdiction.

Case Title: Principal Commissioner of Customs & Anr. v. L’Oréal S.A.:Date of Order: May 15, 2025

Case No.: CM(M)-IPD 19/2025:Neutral Citation: 2025:DHC:3925:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Khadi and Village Industries Vs. Girdhar Industries

Introduction: In the intricate tapestry of intellectual property law, few cases weave together tradition, commerce, and legal nuance as vividly as the dispute between the Khadi and Village Industries Commission (KVIC) and Girdhar Industries. This case, adjudicated by the High Court of Delhi, delves into the contentious realm of trademark rights, pitting a statutory body tasked with preserving the legacy of "Khadi" against a private entity wielding a registered composite mark. At its core, this legal battle questions the boundaries of trademark exclusivity, the validity of registrations, and the equitable principles governing interim relief.

Detailed Factual Background: The plaintiff, Khadi and Village Industries Commission (KVIC), is a statutory entity established under the Khadi and Village Industries Commission Act, 1956, with its inception tracing back to 1957. KVIC’s mandate is to promote and develop Khadi and village industries, particularly in rural India, as part of a broader socio-economic upliftment agenda. It adopted the trademark "KHADI" on September 25, 1956, integrating it into its corporate identity and using it across a wide range of goods and services. KVIC holds multiple trademark registrations for "KHADI" and associated device marks under the Trade Marks Act, 1999, spanning various classes of the NICE classification, with claimed usage dating back to 1956 for most categories. The plaintiff operates an extensive network of over 8,050 sales outlets, hosts websites like www.kviconline.gov.in, and manages a mobile application, "Khadi India," reinforcing its claim that "KHADI" is synonymous with its identity and products.

The defendants, Girdhar Industries (Defendant 1) and another entity (Defendant 2), operate under the registered trademark "GIRDHAR KHADI." This mark was registered in Class 3 (covering soaps and detergents) effective from March 4, 2005, with claimed use since April 1, 2001, and in Classes 29 and 30 since July 18, 2007, with claimed use from April 1, 2004. Girdhar Industries markets products like soaps and detergents under "GIRDHAR KHADI," achieving significant sales figures, including over ₹32 crore in 2020-2021. KVIC alleges that the defendants’ use of "KHADI" infringes its registered trademarks and constitutes passing off, arguing that the prominence of "KHADI" in the defendants’ branding misleads consumers into associating their products with KVIC’s heritage.

The dispute escalated when KVIC discovered the defendants’ Class 3 registration in December 2020 and filed a rectification petition to cancel it, followed by this suit in 2022. The defendants counter that their mark is a composite one, distinct from KVIC’s "KHADI," and that they have prior use and registration rights, bolstered by substantial market presence.

Detailed Procedural Background: The case, registered as CS(COMM) 130/2022, was filed by KVIC in the High Court of Delhi, seeking permanent injunctions against Girdhar Industries for trademark infringement and passing off. Alongside the suit, KVIC moved IA 3114/2022 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, requesting interim injunctive relief to restrain the defendants from using "GIRDHAR KHADI" and "BR KHADI" pending the suit’s disposal.

KVIC’s legal journey included prior oppositions to the defendants’ trademark applications in 2017, notably against "GIRDHAR KHADI" (Application No. 3409591) in Class 29 and "BR KHADI" in Class 3, with counter-statements filed by the defendants on December 26, 2017. These interactions informed the court’s scrutiny of KVIC’s delay and disclosure claims. Meanwhile, KVIC’s rectification petition against the defendants’ Class 3 registration, filed in December 2020, remains pending, adding a layer of complexity to the interim relief analysis.

Issues Involved in the Case

The case hinges on several pivotal issues: whether KVIC established a prima facie case of trademark infringement under Section 29 of the Trade Marks Act, 1999, against the defendants’ registered "GIRDHAR KHADI" mark; whether the defendants’ use of "KHADI" amounts to passing off by leveraging KVIC’s goodwill; whether the defendants’ registration is invalid due to bad faith or lack of user evidence, thus overcoming the statutory presumption of validity under Section 31(1); whether KVIC’s delay and alleged suppression of facts disentitle it to equitable relief; and whether the balance of convenience and irreparable loss favor granting an interim injunction.

Detailed Submission of Parties: KVIC argued that "KHADI" is a well-known mark indelibly linked to its identity, supported by extensive registrations and continuous use since 1956. She highlighted the defendants’ invoices and packaging, which emphasize "KHADI" over "GIRDHAR," suggesting an intent to capitalize on KVIC’s reputation. Majumder cited prior judicial recognition of "KHADI" as a well-known mark in Khadi & Village Industries Commission v. Raman Gupta (2022 SCC OnLine Del 2264) and invoked N.R. Dongre v. Whirlpool Corporation ((1996) 5 SCC 714) to assert that passing off can proceed against a registered mark. She contested the validity of the defendants’ registration, alleging bad faith under Section 11(10)(ii) and lack of user proof, referencing National Bell Co. v. Metal Goods Manufacturing Co. Pvt Ltd ((1970) 3 SCC 665) to rebut the presumption of validity.

The defendants, emphasized their prior adoption of "GIRDHAR KHADI" in 2001 and registration in 2005, predating KVIC’s active Class 3 registrations, which lapsed or were proposed-to-be-used. He argued that KVIC failed to prove prior use in soaps, pointing to the absence of pre-2001 evidence and the 2015 registration of KVIC’s domain name. Bansal underscored the defendants’ substantial market presence, with sales exceeding ₹40 crore, and invoked Section 34 to protect their vested rights. He accused KVIC of suppression, noting its awareness of the defendants’ registration since 2017, and cited Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia ((2004) 3 SCC 90) to argue that delay alone does not negate relief but must be weighed with equities.

Detailed Discussion on Judgments Cited by Parties: The parties relied on a rich array of precedents, each contextualized within their arguments:

• Khadi & Village Industries Commission v. Raman Gupta (2022 SCC OnLine Del 2264): KVIC cited this Delhi High Court ruling to assert "KHADI"’s status as a well-known mark, bolstering its infringement and passing off claims.
• N.R. Dongre v. Whirlpool Corporation ((1996) 5 SCC 714): Majumder relied on paragraphs 10 and 18 to argue that passing off is actionable against a registered mark, emphasizing goodwill over registration primacy.
• National Bell Co. v. Metal Goods Manufacturing Co. Pvt Ltd ((1970) 3 SCC 665): KVIC used this Supreme Court decision to challenge the presumption of validity under Section 31(1), arguing it is rebuttable with evidence of distinctiveness.
• Automatic Electric Ltd. v. R.K. Dhawan ((1999) 77 DLT 292): Paragraph 16 was cited to counter the defendants’ claim that "KHADI" is generic, given their own registration of "GIRDHAR KHADI."
• Ahmed Oomerbhoy v. Gautam Tank (146 (2008) DLT 774): Majumder referenced paragraph 26 to argue that "KHADI" is arbitrary for soaps, not generic, enhancing its protectability.
• Bloomberg Finance LP v. Prafull Saklecha (207 (2014) DLT 35): KVIC leaned on this to invoke Sections 29(4) and (5), alleging the defendants’ use harms its mark’s reputation.
• Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia ((2004) 3 SCC 90): Both parties cited this; KVIC to argue delay does not bar relief if infringement exists, and the defendants to weigh it against equities.
• Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd ((2018) 2 SCC 1): Bansal cited paragraphs 4 and 17 to highlight the high threshold for injuncting a registered mark.
• Raman Kwatra v. KEI Industries Ltd (judgment not fully cited): Paragraphs 28-30 were used by Bansal to argue KVIC’s lack of evidence on reputation under Section 29(4).
• Vijay Kumar Ahuja v. Lalita Ahuja (2001 SCC OnLine Del 1215): Bansal referenced paragraph 14 to assert that misstatement of cause of action undermines relief.
• Corn Products Refining Co. v. Shangrila Food Products Ltd ((1960) 1 SCR 968): Paragraphs 11 and 15 supported the defendants’ claim of distinctiveness in composite marks.

Detailed Reasoning and Analysis of Judge: Court’s analysis is a meticulous balancing act, rooted in statutory interpretation and equitable principles. Court first examined infringement under Section 28, noting that a registered mark cannot typically be restrained unless its registration is invalid, per Section 31(1)’s presumption of validity. KVIC’s challenge to "GIRDHAR KHADI"’s validity rested on bad faith (Section 11(10)(ii)) and lack of user proof. The judge found KVIC’s assertions insufficiently compelling: the assumption of Defendant 1’s awareness of KVIC’s mark in 2005 lacked evidence of dishonesty, and the defendants’ affidavit of use from 2004 satisfied registration requirements prima facie. The pending rectification petition precluded a definitive invalidity finding, leaving Section 28’s protection intact.

On passing off, the judge assessed KVIC’s goodwill claims but found scant pre-2001 evidence for soaps, contrasting with the defendants’ established use since 2001 and registration since 2005. The composite nature of "GIRDHAR KHADI" and its market reputation further weakened KVIC’s case. Suppression of facts emerged as a critical blow: KVIC’s claim of discovering the registration in 2020 was belied by its 2017 opposition and the defendants’ counter-statement, undisclosed in the plaint. This concealment, unaddressed in replication, disentitled KVIC to equitable relief, reinforcing the denial of injunction.

Balance of convenience tilted toward the defendants, given their 17-year use and ₹32 crore sales in 2020-2021, against KVIC’s delayed action from 2017 to 2022. Irreparable loss favored maintaining the status quo, with a directive for the defendants to file periodic accounts ensuring transparency.

Final Decision: The court declined KVIC’s prayer for an interim injunction against the use of "GIRDHAR KHADI" and "BR KHADI," dismissing IA 3114/2022.

Law Settled in This Case: This judgment reaffirms that a registered trademark enjoys robust protection under Section 28, rebuttable only by a high threshold of invalidity evidence. It clarifies that bad faith under Section 11(10)(ii) requires more than mere awareness of a prior mark—dishonesty must be demonstrable. Suppression of material facts in equitable proceedings can fatally undermine interim relief, and delay, while not solely dispositive, weighs heavily in convenience and loss assessments when coupled with a defendant’s established market presence.

Case Title: Khadi and Village Industries Commission Vs. Girdhar Industries and Anr.:Date of Order: December 28, 2023 :Case No.: CS(COMM) 130/2022:Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

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