SC-Indian Performing Rights Society Ltd. Vs Sanjay Dalia

Indian Performing Rights Society Ltd. Vs Sanjay Dalia Case:  Territorial Jurisdiction Under Section 62 of Copyright Act and Section 134 of Trade Marks Act

Introduction

The question of where a plaintiff can sue for infringement of copyright or trademark has always carried immense practical significance for litigants across India. Parliament, recognising the hardship faced by authors and trademark owners who had to travel long distances to vindicate their rights, inserted special provisions in the Copyright Act and the Trade Marks Act allowing suits to be filed at the place where the plaintiff resides or carries on business. However, this beneficial provision came to be misused by large corporations who, despite having their principal place of business and the cause of action arising at one location, chose to file suits at distant places merely because they maintained a branch office there. This judgment of the Supreme Court addresses this precise mischief and lays down an important interpretative principle balancing the convenience of the plaintiff with the need to avoid undue hardship to the defendant.

Factual and Procedural Background

The case arose out of a batch of appeals dealing with a common question of law relating to the interpretation of Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999, particularly with regard to the place where a suit for infringement can be instituted.

In the lead matter, the plaintiff had filed a suit seeking to restrain the defendant from infringing its rights without obtaining a licence. The defendant owned cinema halls in Maharashtra and Mumbai, and the entire cause of action, as pleaded, had arisen in Mumbai. Despite this, the suit was filed in the High Court of Delhi on the ground that the plaintiff had a branch office in Delhi and carried on business there. It was not disputed that the plaintiff's head office was situated in Mumbai. The defendant objected to the territorial jurisdiction of the Delhi court, and this objection was upheld both by the Single Judge and later by the Division Bench of the Delhi High Court, which held that the suit ought to have been filed at Mumbai. This order was challenged before the Supreme Court.

In a connected matter, a suit had been filed concerning infringement of a trademark relating to a well known magazine. The registered office of the concerned entity was in Mumbai, where the magazine was also processed and published. The plaintiff sought to invoke the jurisdiction of the Delhi court on the ground that it had a branch office in Delhi, and later sought amendment of the plaint to strengthen this plea. The amendment application was rejected by the Single Judge, but the Division Bench allowed the amendment, giving rise to a further appeal before the Supreme Court.

Given the recurring nature of this jurisdictional controversy and the divergent approaches taken by different High Courts over the years, the Supreme Court took up the appeals together to settle the correct interpretation of the relevant statutory provisions.

Dispute Before the Court

The core question before the Court was whether Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act, both of which permit a plaintiff to file a suit at the place where he resides or carries on business, could be read to allow a plaintiff to choose a distant forum such as a branch office location, even when the cause of action had wholly or partly arisen at the plaintiff's principal place of business or ordinary residence.

The appellants argued that these provisions, being non obstante clauses beginning with the words notwithstanding anything contained in the Code of Civil Procedure, created an unqualified additional right in favour of the plaintiff to sue at any place where it resided or carried on business, regardless of where the cause of action arose. According to this view, the restrictions found in Section 20 of the Civil Procedure Code, 1908 had no application once the special provisions of the Copyright Act and Trade Marks Act were invoked.

The respondents, on the other hand, contended that such an interpretation would open the door to abuse, particularly by large corporations and multinational entities having offices in multiple cities, who could drag defendants to inconvenient and unconnected places merely by citing a branch office, even though neither the cause of action nor the principal business had any connection with that place. They argued that the provisions were intended to remove hardship for the plaintiff, not to create a tool for harassing defendants.

In simple terms, the dispute was about whether a company having its head office and the entire cause of action in one city could nevertheless drag the defendant to litigate in a completely different city merely because it maintained a subordinate office there.

Reasoning and Analysis of the Court

The Court began by examining the scheme of Section 20 of the Civil Procedure Code, which ordinarily governs territorial jurisdiction. Under clauses (a) to (c) of Section 20, a suit can be filed where the defendant resides or carries on business, or where the cause of action wholly or in part arises. The Explanation to Section 20 clarifies that a corporation is deemed to carry on business at its principal office, or in respect of any cause of action arising at a place where it has a subordinate office, at such place as well. The Court explained that this Explanation was intended to prevent a corporation having a subordinate office at the place where the cause of action arises from escaping suit there, but it was never meant to allow a plaintiff to drag a defendant to a place having no connection with the cause of action.

The Court then traced the legislative history behind the insertion of Section 62(2) in the Copyright Act. Reference was made to the report of the Joint Committee of the Houses, which had noted that many authors were deterred from instituting infringement proceedings because the court having jurisdiction was often located far away from their ordinary residence. This impediment was sought to be removed by allowing suits to be filed at the place where the author or copyright owner ordinarily resided or carried on business. The Court also referred to relevant portions of the Parliamentary debates on the Copyright Act, where it was clarified that the purpose of the provision was to spare the injured party the burden of travelling to distant courts, and not to enable the plaintiff to drag the infringer to an inconvenient forum having no connection with the dispute.

Applying this legislative purpose, the Court held that the words notwithstanding anything contained in the Code of Civil Procedure did not oust the applicability of Section 20 CPC altogether. Rather, these provisions provided an additional forum to the plaintiff, over and above what was already available under Section 20 CPC. Where the cause of action, wholly or in part, arises at the place where the plaintiff resides or carries on business, the suit has to be filed at that place. The plaintiff cannot ignore the fact that the cause of action has arisen at its principal place of business and instead choose to file the suit at a subordinate or branch office located elsewhere, merely because such a branch office exists.

The Court extensively invoked the mischief rule laid down in Heydon's case, (1584) 3 Co Rep 7a, which requires courts to consider four aspects while interpreting a statute, namely, what was the law before the enactment, what was the defect or mischief for which the previous law did not provide, what remedy the legislature has resolved to cure the defect, and the true reason for the remedy. Applying this framework, the Court held that the mischief which Section 62 of the Copyright Act and Section 134 of the Trade Marks Act sought to remedy was the hardship caused to authors and trademark owners who had to travel to distant places to file suits despite residing or carrying on business elsewhere. The remedy provided was to allow them to sue at their own place of residence or business. However, if this remedy were interpreted so widely as to permit the plaintiff to choose any place where it merely had a branch office, even when unconnected with the cause of action, it would create a fresh mischief of its own, namely enabling harassment of defendants by dragging them to inconvenient and unconnected forums. The Court therefore emphasised the need to avoid such counter mischief while interpreting these provisions purposively.

Several precedents were considered in detail. In Patel Roadways Ltd. v. Prasad Trading Co., (1991) 4 SCC 270, the Court had earlier interpreted the Explanation to Section 20 CPC and held that where a corporation has a subordinate office at the place where the cause of action arises, it cannot escape being sued there merely because its principal office is located elsewhere, and further clarified that the sole or principal office continues to be the relevant place for filing suit unless a cause of action arises at the place of a subordinate office. This decision was relied upon to explain the true scope of the term corporation and principal place of business. Similarly, in New Moga Transport Co. v. United India Insurance Co. Ltd., (2004) 4 SCC 677, the Court reiterated that the Explanation to Section 20 CPC applies to prevent a corporation from claiming that it cannot be sued where its subordinate office is located, if the cause of action arose there.

The Court also examined its earlier decision in Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, where it had been held that the word include in Section 62 of the Copyright Act shows that the jurisdiction under this provision is wider than that prescribed under the Code of Civil Procedure. The present judgment clarified that this earlier decision did not oust the applicability of Section 20 CPC, but merely recognised that Section 62 provided an additional ground for jurisdiction, and that the decision in Exphar Sa in fact supported rather than contradicted the interpretation now being adopted.

Reference was made to Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, where the Court had considered the maintainability of a composite suit combining causes of action under the Copyright Act and the erstwhile Trade and Merchandise Marks Act, 1958, and had held that the additional forum under Section 62(2) was intended to enable an author to file a suit at a place where he might not otherwise be in a position to sue. The Court in the present case clarified that the specific question involved in the present appeals had not arisen for consideration in Dhodha House, and that a decision is not to be construed like a statute; it cannot be assumed that a previous decision has also decided a question which was never raised before it. The Court also referred to its decision in Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595, which had held that a composite suit combining different causes of action cannot confer jurisdiction on a court which does not otherwise possess territorial jurisdiction in respect of one of the causes of action.

The Court further discussed various High Court decisions cited by the parties, including Smithkline Beecham Plc. v. Sunil Singh, Caterpillar Inc. v. Kailash Nichani, Intas Pharmaceuticals Ltd. v. Allergan Inc., Ford Motor Co. v. C.R. Borman, Sap Aktiengesellschaft v. Varehouse Infotech, Wipro Ltd. v. Oushadha Chandrika Ayurvedic India (P) Ltd., Hindustan Unilever Ltd. v. Ashique Chemicals, and Ultra Tech Cement Ltd. v. Shree Balaji Cement Industries, and explained that the facts and precise questions involved in the present appeals had not arisen for determination in any of these decisions, and that observations in these cases, to the extent inconsistent with the present ruling, could not be treated as binding.

On the question of Section 134 of the Trade Marks Act, the Court clarified that sub-section (2) of Section 134 applies only to clauses (a) and (b) of Section 134(1), which deal with infringement of a registered trademark and any right relating thereto. It does not extend to clause (c), which deals with actions for passing off. Consequently, the procedure for instituting a suit in respect of passing off continues to be governed exclusively by Section 20 of the Civil Procedure Code, and the additional forum under Section 134(2) is not available for such actions. The Court also held that the provisions of Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act are in pari materia with each other, meaning they deal with the same subject matter and are to be interpreted consistently.

The Court also addressed and rejected the argument that since litigation relating to intellectual property is predominantly filed in Delhi, and lawyers practising there have developed particular expertise in such matters, this convenience should be a relevant factor while deciding territorial jurisdiction. The Court held firmly that the convenience or expertise of lawyers at a particular place is wholly irrelevant for determining territorial jurisdiction, and jurisdiction cannot be founded on such considerations.

Throughout its reasoning, the Court relied upon well established principles of statutory interpretation, including the need to avoid constructions leading to hardship, inconvenience, injustice, absurdity or anomaly, drawing upon the writings of Justice G.P. Singh in Interpretation of Statutes and Bennion on Statutory Interpretation, as well as a long line of English and Indian precedents dealing with purposive construction, including Bengal Immunity Co. Ltd. v. State of Bihar, AIR 1955 SC 661, and Sonic Surgical v. National Insurance Co. Ltd., (2010) 1 SCC 135, the latter having interpreted a similarly worded provision in the Consumer Protection Act, 1986 to restrict the meaning of branch office to the branch office where the cause of action actually arose, in order to avoid absurd consequences.

Final Decision of the Court

Having examined the language, legislative history, and object of the provisions in question, the Court concluded that where the cause of action has wholly or partly arisen at the place where the plaintiff resides or carries on business or personally works for gain, and where the plaintiff also has its principal office at that very place, the suit has to be instituted at that place alone, and not at any other place merely because the plaintiff happens to have a subordinate or branch office there. The plaintiff cannot invoke the additional forum created by these special provisions to bypass the place where its principal business and the cause of action are both located, in favour of a distant subordinate office.

Applying this principle to the facts before it, the Court found that the principal place of business of the appellant was admittedly in Mumbai, and the cause of action had also arisen in Mumbai. The provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act could not, therefore, be interpreted so as to confer jurisdiction on the Delhi court merely because the appellant maintained a branch office there. The Delhi court accordingly had no territorial jurisdiction to entertain the suit.

The Court declined the request to transfer the suit to Delhi, holding that no such transfer could be ordered in the present proceedings, and that if the parties so desired, they were free to file an appropriate application, but the suit would first have to be presented before the court of competent jurisdiction. The submission that the matter should be referred to a larger Bench, on the ground that the earlier decision in Dhodha House held the field, was also rejected, since the Court found that the specific question involved in the present appeals had not been considered in that earlier decision. Ultimately, all the appeals were dismissed, and the orders passed by the High Court were upheld, with no order as to costs.

Point of Law Settled

This judgment settles the important principle that the additional forum created under Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act is not an unqualified or absolute right allowing a plaintiff to sue anywhere it maintains an office. Where the plaintiff's principal place of business or ordinary residence coincides with the place where the cause of action has wholly or partly arisen, the suit must be filed at that place, and the plaintiff cannot invoke a distant subordinate or branch office to confer jurisdiction elsewhere. The provisions are meant to spare the plaintiff the hardship of travelling to a distant forum, not to create a tool for dragging the defendant to an inconvenient and unconnected place. This ruling has significantly shaped subsequent trademark and copyright litigation strategy across India, particularly curbing the earlier practice of large corporations routinely filing infringement suits in Delhi merely on the strength of a branch office, regardless of where their principal business and the actual cause of action were located.

Title of the Case: Indian Performing Rights Society Ltd. v. Sanjay Dalia and Another

Date of Judgment: July 1, 2015

Case Number: Civil Appeals Nos. 10643-44 of 2010 with Civil Appeal arising out of SLP (C) No. 8253 of 2013 (with Civil Appeal No. 4912 of 2015)

Neutral Citation: (2015) 10 Supreme Court Cases 161

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Jagdish Singh Khehar and Arun Mishra, JJ.

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

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

Headnote of the Judgment

In Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161, the Supreme Court examined the territorial jurisdiction for suits under Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999. The plaintiff's principal office and the cause of action were both in Mumbai, yet suits were filed in Delhi citing a branch office there. Dismissing the appeals, the Court held that where the plaintiff's principal place of business and the cause of action coincide at one place, the suit must be filed there, and cannot be shifted to a distant subordinate office. The additional forum under these provisions supplements, but does not oust, Section 20 CPC, and must be construed purposively to prevent counter mischief to defendants.

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Dr. Ashok M. Bhat Vs Harichand Nagpal

Bombay High Court Holds Defendants Guilty of Willful Contempt under Order 39 Rule 2A for Violating Trademark and Copyright Injunction

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​Dr. Ashok M. Bhat Vs. Harichand Nagpal: 13-07-2026: Interim Application (L) No. 9324 of 2025 in Commercial IP Suit No. 378 of 2021:BOMBHC: Hon'ble Judge: Arif S. Doctor, J.

​Factual and Procedural Background

The plaintiff, a registered proprietor of the trademark NOVA and its associated artistic label for brilliantine hair cream, filed a commercial suit for infringement and passing off in 2007 against the defendants after discovering counterfeit products. In November 2010, the court granted an interim injunction restraining the defendants from using the NOVA mark or any deceptively similar mark, as well as the plaintiff's original artistic carton and label. 

Later, the plaintiff discovered that the defendants were selling brilliantine hair cream under the mark NONI using a green color scheme and geometric layout virtually identical to the plaintiff's protected artistic work. The plaintiff filed contempt applications under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908, alleging willful disobedience of the 2010 injunction order.

​Dispute before Court

The primary issue was whether the defendants committed willful disobedience of the injunction order by utilizing the mark NOVA MINI and the NONI label. The defendants argued that the injunction was restricted strictly to the word mark NOVA, that the NONI mark was a distinct registered trademark protected under the Trade Marks Act, and that the plaintiff had consciously excluded the NONI mark from the original plaint.

​Reasoning of Judge

The court observed that in contempt proceedings under Order XXXIX Rule 2A, the court's inquiry is strictly confined to verifying whether a breach of the operational order occurred, rather than re-evaluating the merits or legality of the underlying order. 

The comparison of the labels clearly demonstrated that the defendants adopted a green color scheme and geometric layout on the NONI label that was virtually identical to the plaintiff's registered artistic work. Furthermore, the defendants were fully conscious that the injunction covered the artistic work across labels, as evidenced by their failed attempt to seek a clarification from the Division Bench to exempt the NONI mark. 

The court also invoked the safe distance rule, clarifying that an enjoined party must stay far away from the margins of the plaintiff's intellectual property to avoid confusion. The defense that an employee mistakenly utilized old labels for the NOVA MINI mark was rejected as untenable.

​Decision

The court allowed the interim application, holding the defendants guilty of willful breach of the injunction order. Due to the advanced age of the first defendant, the court abstained from ordering civil imprisonment but imposed hefty financial penalties. The first defendant was directed to pay the plaintiff actual legal costs of Rs. 32,42,868 and additional exemplary costs of Rs. 50,00,000 within four weeks. The defendants were also ordered to disclose their complete sales accounts on oath, failing which their defense in the main suit would be struck off.

​One Important legal principle held in the case

In an application under Order XXXIX Rule 2A of the Code of Civil Procedure, the inquiry is strictly confined to whether a willful breach of the injunction order has occurred, and a party cannot plead the correctness or merits of the original order as a defense to justify its disobedience.

​[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Safe Distance Rule in Contempt Petition

​Introduction

​Adherence to judicial orders forms the foundational bedrock of the administration of justice. In commercial disputes, particularly those involving intellectual property rights like trademarks and copyrights, interim injunctions are critical tools deployed to preserve the status and distinctiveness of proprietary marks pending final disposal. When a party attempts to circumvent such injunctions through deceptive modifications or alternative branding that mimics the protected trade dress, the legal framework provides robust mechanisms to penalize the contumacious behavior. The judgment delivered by the High Court of Bombay in the case of Dr. Ashok M. Bhat v. Harichand Nagpal addresses the precise limits of contempt jurisdiction under the Code of Civil Procedure, 1908, reinforcing that technological or typographical variations cannot shield an infringer who willfully breaches a court order.

​Factual and Procedural Background

​The litigation traces back to the year 2007 when the plaintiff, a registered proprietor of the trademark NOVA and its accompanying distinct artistic label used for manufacturing and selling brilliantine hair cream, discovered that the proprietor of Ravi Industries was distributing counterfeit products. These counterfeit goods copied both the name and the visual identity of the plaintiff's products. Seeking immediate legal recourse, the plaintiff filed a commercial suit for trademark infringement, copyright infringement, and passing off. The court considered the request for interlocutory relief and, by a detailed order dated November 24, 2010, granted an interim injunction. This order explicitly restrained the defendants from manufacturing, marketing, or selling cosmetic goods using the counterfeit mark NOVA or any deceptively similar mark, and specifically prohibited the unauthorized replication of the plaintiff's registered artistic carton and labels under the Copyright Act, 1957.

​Subsequent to this injunction, the plaintiff discovered in December 2013 that the defendants were actively commercializing a brilliantine hair cream under the brand name NONI. Upon inspection, the label affixed to the NONI products mirrored the exact green color get-up, diamond geometric patterns, and visual styling of the plaintiff's original registered artistic work. This discovery prompted the filing of the first contempt application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908. While this application remained pending, a court receiver executing an order in a separate matter in February 2025 discovered extensive stocks of products bearing the mark NOVA MINI alongside the controversial NONI labels at the business premises of the defendants. Crucially, the son of the first defendant was found running the day-to-day operations and asserted proprietary authority over the business. This led to the institution of a second contempt application, bringing both applications before the court for a consolidated determination.

​Dispute Before the Court

​The primary legal dispute centered on whether the defendants' commercial use of the mark NOVA MINI and the structurally identical NONI label constituted a willful and deliberate breach of the operating 2010 injunction. The plaintiff argued that the visual presentation of the NONI label was an identical imitation of the registered artistic work that the defendants were expressly barred from utilizing. The plaintiff further contended that the introduction of the mark NOVA MINI was a blatant violation of the word mark injunction.

​Conversely, the defendants set up a multi-layered defense. They argued that the suit and the resulting injunction were structurally confined to the word mark NOVA and did not cover the label NONI. They emphasized that the mark NONI was independently registered under the Trade Marks Act, 1999, dating back to an application from 1966 with claimed user since 1958. They asserted that under statutory provisions, one registered proprietor cannot maintain an infringement action against another registered proprietor. Furthermore, they pointed out that the Intellectual Property Appellate Board had previously dismissed a rectification application filed by the plaintiff against the NONI registration, which they claimed acted as an estoppel against the current contempt proceedings. For the NOVA MINI marks, the defendants claimed it was a bona fide error committed by a newly appointed employee who mistakenly unpacked and utilized old discarded labels without the management's knowledge.

​Reasoning and Analysis of the Court

​The court entered into an exhaustive analysis of the statutory boundaries governing contempt jurisdiction under Order XXXIX Rule 2A of the Code of Civil Procedure. It clarified that the primary scope of an inquiry in such applications is singularly focused on whether an order has been violated. The court held that arguments questioning the legality, correctness, or fairness of the underlying injunction are entirely irrelevant in contempt proceedings. So long as a judicial order remains operational and has not been stayed, modified, or vacated by a competent higher forum, it commands absolute obedience from the parties bound by it.

​In assessing the facts, the court compared the physical layout of the plaintiff's registered artistic work against the defendants' impugned NONI label. The visual matrix revealed that the defendants had meticulously replicated the identical green color palette, the specific circular and diamond geometric enclosures, and the general trade dress. The court rejected the argument that the independent registration of the mark NONI allowed the defendants to bypass the injunction. It noted that the injunction explicitly protected the plaintiff's copyright in the original artistic work. Therefore, using that exact artistic layout under a slightly altered brand name still constituted a direct breach of the text and spirit of the 2010 order.

​The court exposed the dishonesty in the defendants' argument by referencing past appellate records. The defendants had previously filed an appeal before a Division Bench explicitly seeking a clarification to exclude the NONI mark from the scope of the injunction, openly admitting that without such a modification, they could face contempt consequences. The Division Bench had explicitly refused to grant that clarification, leaving the decision to the single judge handling the contempt application. This established beyond doubt that the defendants were fully aware that their conduct fell within the prohibitive scope of the injunction.

​Furthermore, the court invoked the established safe distance rule in intellectual property litigation. Under this principle, once a business is caught infringing a trademark or copyright and is placed under an injunction, it is legally obligated to stay completely clear of the margins of the plaintiff's property. The infringer cannot make minor, trivial adjustments to its mark or packaging and claim compliance. The court noted that the defendants failed to maintain this safe distance. The court also discarded the defense concerning the employee's mistake regarding the NOVA MINI labels, calling it an untenable and fabricated explanation, especially given the extensive commercial volume discovered.

​Final Decision of the Court

​The court found the defendants guilty of deliberate, calculated, and willful contempt of the injunction order dated November 24, 2010. In determining the appropriate penalties, the court took note of the advanced age of the first defendant and decided not to order civil imprisonment. However, the court determined that the contumacious commercial exploitation of the plaintiff's intellectual property required strict economic penalties to uphold the dignity of judicial orders.

​The court allowed the interim application in terms of the prayers seeking a declaration of guilt, implementation of enforcement measures, and disclosure of assets. The first defendant was directed to pay the plaintiff actual legal costs amounting to Rs. 32,42,868 within four weeks, subject to detailed verification on affidavit. Additionally, exercising its discretion under Section 35 of the Code of Civil Procedure as amended by the Commercial Courts Act, 2015, read with the inherent powers under Section 151, the court levied exemplary and punitive costs of Rs. 50,00,000 against the first defendant due to their dishonest conduct and false statements on oath. The defendants were ordered to submit a comprehensive statement of accounts detailing all sales under the counterfeit labels, the NONI label, and the NOVA MINI mark since inception. The court explicitly directed that if the defendants failed to pay the costs or provide the mandatory sales disclosures within the stipulated four weeks, their entire legal defense in the main commercial suit would be struck off automatically. A subsequent request by the defendants to stay the operation of this order was summarily rejected.

​Point of Law Settled

​This judgment reaffirms and solidifies two vital legal propositions. First, it clarifies that a subsisting statutory trademark registration cannot be used as a defense or a shield to excuse the willful violation of a separate copyright injunction protecting an artistic work layout. When an injunction restrains the use of a specific trade dress or artistic work, the introduction of a registered word mark over that identical visual trade dress amounts to contempt. Second, the ruling underscores that in commercial litigations, the safe distance rule applies strictly to post-injunction modifications. An enjoined party must actively alter its branding to avoid any deceptive proximity to the protected mark, and any failure to do so will be viewed as a willful, punishable breach rather than an innocent commercial overlap.

​Title of the Case: Dr. Ashok M. Bhat Vs Harichand Nagpal & Ors.

Date of Judgment: 13-07-2026

Case Number: Interim Application (L) No. 9324 of 2025 in Commercial IP Suit No. 378 of 2021

Name of Court: High Court of Judicature at Bombay (Commercial Division)

Name of Hon'ble Judge: Arif S. Doctor, J.

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

​Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

​Headnote of the Judgment:

In a commercial intellectual property suit, the plaintiff secured an interim injunction in November 2010 restraining the defendants from using the trademark NOVA and the plaintiff's registered green geometric artistic labels. The plaintiff later discovered the defendants selling brilliantine cream under the mark NONI using the identical green artistic trade dress, alongside products marked NOVA MINI. The plaintiff moved contempt applications under Order XXXIX Rule 2A of the Civil Procedure Code. The High Court of Bombay held that the correctness of an injunction cannot be re-argued in contempt proceedings. Comparing the labels, the court found the defendants fully aware of the restriction, having previously been denied an appellate clarification. Applying the safe distance rule, the court found the breach willful and deliberate. The court allowed the application, imposing Rs. 32,42,868 as legal costs and Rs. 50,00,000 as exemplary costs, ordering complete sales disclosures on pain of striking out the defense.

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Parveen Kumar Jain Vs. Rajan Seth-CHUR CHUR NAN

The Street Delicacies of Delhi and the Battle Over "Chur Chur Naan": A Legal Analysis

Can You Register a Common Food Name as a Trademark

Introduction

The bustling streets of Delhi are globally celebrated for their culinary heritage, where iconic eateries draw both gourmands and everyday consumers. However, when popular street food terminologies transition from local menus to the trademark registry, they often spark intense legal battles over brand monopoly. The High Court of Delhi addressed this intersection of culinary culture and intellectual property law in a significant trademark dispute involving the famous street food delicacy, "Chur Chur Naan". The ruling carefully defines the boundaries of trademark enforcement by addressing whether common conversational descriptors of food can be monopolized by a single registered proprietor.

Factual and Procedural Background

The Plaintiff, Parveen Kumar Jain, operates a food outlet in the Paharganj area of Delhi, specializing in traditional Indian flatbreads. The Plaintiff secured statutory trademark registrations for the marks "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" under the Trade Marks Act, 1999. Additionally, the Plaintiff claimed proprietary rights over the expression "PAHARGANJ KE MASHOOR AMRITSARI NAAN". Seeking to enforce these registered rights, the Plaintiff filed a commercial suit in the High Court of Delhi seeking a permanent injunction, copyright protection, damages for passing off, and a rendition of accounts against the Defendants, Rajan Seth and others, who operated a competing outlet in the same locality.

The Defendants utilized the expressions "PAHARGANJ KE CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" for their culinary business. The Plaintiff moved an interlocutory application under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an ad-interim temporary injunction to restrain the Defendants from using these names. At the initial stage of the proceedings, on April 25, 2019, the Court appointed a Local Commissioner to investigate and submit a report regarding the market usage of the disputed terms by the Defendants as well as other third-party food vendors. The Defendants actively opposed the application, seeking rectification of the Plaintiff's registrations on the ground that the terms lacked basic distinctiveness.

Dispute Before the Court

The core legal and factual question before the Court was whether the Plaintiff, by virtue of holding statutory trademark registrations, could claim an exclusive monopoly over the terms "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" and restrain competing local food outlets from using them.

The Plaintiff contended that because his trademarks were registered, he enjoyed an absolute, exclusive statutory right to use and protect them under Sections 28 and 29 of the Trade Marks Act, 1999. The Plaintiff further argued that the Defendants were legally estopped from claiming that the term "CHUR CHUR NAAN" was generic or descriptive because the Defendants themselves had applied to register a device mark containing the phrase "PAHARGANJ KE MASHOOR CHUR CHUR NAAN". To support this plea of estoppel, the Plaintiff relied on established judicial precedents, arguing that once a party applies for the registration of a mark, they cannot claim that the same mark is generic or incapable of protection.

The Defendants countered that the terms in question were completely generic and descriptive of the food product itself. They pointed out that there were dozens of outlets across Delhi using the term "CHUR CHUR NAAN" on various public food-delivery and listing platforms such as Zomato, Justdial, and EatTreat. The Defendants argued that "Chur Chur" simply translates to "crushed," and "Chur Chur Naan" merely describes a crushed flatbread. They maintained that such terms are common to the food trade and are completely incapable of acquiring secondary trademark significance, meaning no single business should be granted a commercial monopoly over them.

Reasoning and Analysis of the Court

The Court began its analysis by balancing the statutory rights of a registered trademark holder against the legislative limitations built into the Trade Marks Act, 1999. While Section 28 of the Act vests exclusive rights in a registered proprietor, these rights are explicitly subject to other provisions of the Act. Specifically, the Court invoked Section 35 of the Act, which acts as a statutory saving clause. Under Section 35, a registered trademark holder cannot interfere with any third party's bona fide use of a term that describes the character or quality of their goods or services.

The Court drew a parallel between "Chur Chur Naan" and other regional food terms used in everyday language across India, such as "Amritsari Kulcha," "Malabar Parantha," "Hyderabadi Biryani," "Kashmiri Dum Aloo," "Chettinad Chicken," "Murthal ke Paranthe," and "Mangalore idli". The Court observed that the term "Chur Chur" literally translates to "crushed" in normal conversational language. Therefore, "Chur Chur Naan" is simply a "crushed naan" and nothing more, serving as a direct description of the physical state and character of the bread. The Court ruled that such generic descriptive terms are entirely incapable of acquiring distinctiveness or trademark significance.

The Court distinguished the precedents of Automatic Electric Limited v. R.K. Dhawan & Anr. and The Indian Hotels Company Ltd and Ors. v. Jiva Institute of Vedic Science and Culture, which the Plaintiff had cited to support his plea of estoppel. The Court observed that the Defendants had not applied for a registration of the word mark "CHUR CHUR NAAN" itself, but rather for a composite device logo featuring a circular design of a chef. In such composite device registrations, generic phrases are merely descriptive elements of a larger logo and are eventually subject to disclaimers.

Crucially, the Court emphasized that even if the trademark registry mistakenly grants registrations for entirely generic or descriptive words, a court of law cannot ignore the public interest. The judiciary must prevent the creation of monopolies over common linguistic terms, as doing so would unfairly restrict fair market competition.

To prevent consumer confusion and passing off in the same locality, the Court observed that most food vendors naturally distinguish themselves by adding distinctive prefixes, such as "Sanjay Chur Chur Naan" or "Vijay Chur Chur Naan". Thus, while the Defendants had every right to sell crushed naans, they were required to adopt a name that clearly distinguished their business from the Plaintiff's business to avoid any initial customer deception.

Final Decision of the Court

The Court disposed of the interim injunction application with practical, balancing directions. It declined to grant the Plaintiff an absolute injunction against the words "CHUR CHUR NAAN" or "AMRITSARI CHUR CHUR NAAN". Instead, to prevent local business confusion, the Court accepted a mutual arrangement where the Defendants agreed to modify their trade names to "PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN" and "PAHARGANJ SETH KE MASHOOR AMRITSARI NAAN".

The Court directed that the revised name must be displayed in a uniform font, color, and style, ensuring that the generic phrases "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" are not given any undue visual prominence. The Defendants were granted a period of thirty days to execute this transition. Additionally, the online food-delivery platform Swiggy (Defendant Number 4) was directed to file an affidavit listing the names of all outlets using similar "Chur Chur Naan" terms on its platform, after which it would be removed from the lawsuit.

Point of Law Settled

This judgment establishes that entirely generic or descriptive expressions used in common language to describe the physical characteristics or preparation of food are legally incapable of acquiring exclusive trademark status. The ruling confirms that even if a party successfully registers such a generic term, Section 35 of the Trade Marks Act, 1999, protects competitors who use the term in a bona fide, descriptive manner. Furthermore, the decision clarifies that the principle of estoppel (from Automatic Electric) does not apply where a party has merely applied for a composite device mark containing generic descriptive text, and it empowers courts to ignore wrongful or overbroad registrations in the interest of maintaining a free and competitive market.

Case Details

Title of the Case: Parveen Kumar Jain Vs. Rajan Seth & Ors.

Date of Judgment: May 8, 2019

Case Number: CS(COMM) 213/2019

Neutral Citation: 2019:DHC:2540

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Prathiba M. Singh

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

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In Parveen Kumar Jain v. Rajan Seth & Ors. [CS(COMM) 213/2019], the Delhi High Court resolved an interim injunction application in a trademark dispute concerning the terms "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" for local food outlets in Paharganj. The Plaintiff sought to restrain the Defendants based on registered trademarks, while the Defendants argued the terms were entirely generic. The Court held that "Chur Chur" (meaning crushed) is a common, conversational descriptor of the food's physical character and is legally incapable of acquiring exclusive trademark distinctiveness. Protecting the bona fide descriptive rights of traders under Section 35 of the Trade Marks Act, 1999, the Court refused an absolute injunction but directed the Defendants to add a distinguishing prefix, renaming their outlets to "PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN" to prevent local consumer confusion.

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