Novo Nordisk Vs Dr.Reddy Laboratories Limited -DB

The Test of "Person in the Know" in case of Patent Infringement 

Introduction: In this case Imagine a drug company holding a patent on a blockbuster diabetes medicine that is due to expire in just two months. It rushes to court asking for an order to stop a generic competitor from selling the same drug. The lower court says no because the patent looks weak. The company appeals. The High Court listens, but then asks a blunt question: why should we spend court time on a case that will become pointless the moment the patent dies?  This is exactly what happened in the fight between Novo Nordisk and Dr. Reddy’s Laboratories over the patent for Semaglutide. 

The Division Bench of the Delhi High Court dismissed the appeal on 9 March 2026, agreeing that the patent was open to a strong challenge because the invention was obvious from an earlier patent. The story is not just about one drug; it tells how Indian courts balance patent protection, public interest and the limited life of every patent.

Factual Background:Novo Nordisk owns Indian Patent No. 262697 (IN’697), granted for “Acylated GLP-1 Analogs Comprising Non-Proteogenic Amino Acid Residue”. The patent claims Semaglutide as one of its specific compounds (Claim 23). The priority date is 18 March 2005. Semaglutide is a once-weekly injection or tablet used to treat type-2 diabetes and obesity. Novo sells it in India under the brand names Wegovy and Rybelsus. In December 2024 Novo learned that Dr. Reddy’s was importing and exporting Semaglutide. Novo believed this infringed its patent. It sent a cease-and-desist notice in May 2025. When Dr. Reddy’s did not stop, Novo filed a commercial suit in May 2025 asking the court to stop Dr. Reddy’s from making or selling the drug and also sought an immediate temporary order (interlocutory injunction) to protect its rights until the full trial.

Procedural Background:The single judge of the Intellectual Property Division heard the injunction application and rejected it on 2 December 2025 after a detailed order. She found that Dr. Reddy’s had raised a credible challenge to the validity of Novo’s patent. Novo filed an appeal before the Division Bench (FAO(OS)(COMM) 204/2025). By the time the appeal was argued and judgment reserved, only about two months remained before the patent would expire on 20 March 2026. The Division Bench reserved judgment on 19 January 2026 and delivered it on 9 March 2026.

Reasoning:The Division Bench began with some strong prefatory thoughts. The judges openly wondered whether they should even spend precious court time on a patent that was about to die. They noted that after 20 March 2026 anyone could make Semaglutide. There was no allegation that Dr. Reddy’s was selling sub-standard medicine. They asked what real harm Novo would suffer in the last two months. Still, because the matter had already been argued, the judges decided they must give a judgment. They made clear they would not re-try the entire case from scratch; they would only check whether the single judge had made any basic legal error (following the famous Wander Ltd principle).

The judges then explained the law in simple terms. 

A patent can be challenged on several grounds listed in Section 64 of the Patents Act. The most important for this case were prior claiming (Section 64(1)(a)), lack of novelty (Section 64(1)(e)) and obviousness (Section 64(1)(f)). At the stage of a temporary injunction the defendant does not have to prove the patent is definitely invalid; it only has to show a “credible challenge”. If such a challenge exists, the court usually refuses to stop the defendant until the full trial.

The court carefully compared Novo’s patent (IN’697) with an earlier patent owned by Novo itself – Indian Patent IN’964 (the “Genus Patent”). IN’964 covered a broad family of GLP-1 compounds and specifically described a compound called Example 61 (Ala Semaglutide). The only difference between that compound and the Semaglutide claimed in IN’697 was the replacement of one amino acid (Ala) with another (Aib) at position 8. 

The single judge had treated this as prior claiming under Section 64(1)(a). The Division Bench disagreed on that exact legal label. Section 64(1)(a) needs the claims to be identical; it is a strict claim-to-claim match. Here the claims were not exactly the same. However, the judges said the single judge’s detailed analysis actually proved something even stronger – that Semaglutide was obvious to a skilled person from the teachings of IN’964. That made the patent vulnerable under Section 64(1)(f).

The court added an important new point. Five inventors were common to both patents. In such cases earlier Division Bench decisions (AstraZeneca AB v Intas and F Hoffmann-La Roche v Natco) say the court should use the stricter “person in the know” test instead of the ordinary “person skilled in the art”. Because the inventors themselves knew the earlier patent inside out, it was even easier for them (or someone like them) to see that changing Ala to Aib would give Semaglutide. The Supreme Court had refused to interfere with those earlier rulings, so the test is now settled law. The judges found that even under this tougher test a credible challenge of obviousness existed.

The Division Bench also looked at the urgency issue again. It said that directing Dr. Reddy’s to keep accounts of sales for the last two months would have been enough protection. There was no need to stop sales completely when the patent was dying anyway.

Judgements with complete citation and their context discussed:The court relied on several key decisions and explained them in easy language. First came Wander Ltd v Antox (India) Pvt Ltd (1990 Supp SCC 727). This Supreme Court case says that in appeals against temporary injunction orders the higher court should not replace the lower court’s view with its own unless the lower court made a clear legal mistake. The Division Bench said it was bound by this rule and would only check for error of principle.

Next the court discussed the two Roche cases – F Hoffmann-La Roche Ltd v Cipla Ltd (Roche-I) (2009) 159 DLT 243 (DB) and the later Roche-II (2016) 65 PTC 1 (DB). These explain what a “credible challenge” means and lay down the five-step test for deciding obviousness. The Division Bench praised the single judge for following those steps but gently noted that at the injunction stage a full five-step mini-trial is not needed; the judge can simply put himself in the shoes of the skilled person and see whether the invention looks obvious.

The court also referred to Novartis AG v Union of India (2013) 6 SCC 1 (the famous Glivec case) while discussing genus versus species patents. It explained that when a broad patent already teaches a specific compound, a later narrow patent cannot claim the same thing again.

Importantly the judges cited their own earlier Division Bench rulings – AstraZeneca AB v Intas Pharmaceuticals Ltd (2021 SCC OnLine Del 3746) and F Hoffmann-La Roche AG v Natco Pharma Limited (2025 SCC OnLine Del 6390). These introduced the “person in the know” test when inventors overlap. Both judgments have been upheld by the Supreme Court (SLPs dismissed). The court said this test applies here because the same inventors filed both patents.

Finally the court mentioned Pernod Ricard v Karanveer Singh Chhabra (2025 SCC OnLine SC 1701) to repeat that appellate courts must be slow to interfere with discretionary injunction orders.

The Final Decision of Court: The Division Bench dismissed the appeal in its entirety. It held that the single judge’s order refusing the injunction was correct. The patent was prima facie vulnerable to revocation on the ground of obviousness under Section 64(1)(f) because of the earlier genus patent IN’964. The court made clear that everything said in the judgment was only a prima facie view and would not bind the single judge when the full trial takes place later.

Point of Law Settled in the Case:This judgment settles three important practical points for patent lawyers. First, it draws a clear line between prior claiming under Section 64(1)(a) (which needs identical claims) and obviousness under Section 64(1)(f) (which looks at what a skilled person would find obvious). Second, when the same inventors file a genus patent and a later species patent, courts must apply the stricter “person in the know” test rather than the ordinary skilled-person test. Third, even when a patent is about to expire, courts can still refuse an injunction if a credible challenge to validity is shown; keeping accounts may be enough protection in such short-life cases.

Case Title: Novo Nordisk Vs Dr.Reddy Laboratories Limited and another

Date of Order: 9 March 2026

Case Number: FAO(OS) (COMM) 204/2025

Neutral Citation: 2026:DHC:1911-DB

Name of Court: High Court of Delhi

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

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

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

Headnote of article:

Delhi High Court dismisses Novo Nordisk’s appeal against refusal of interim injunction in Semaglutide patent suit; holds that the patent (IN’697) is prima facie obvious under Section 64(1)(f) from earlier genus patent IN’964; clarifies distinction between prior claiming and obviousness; applies “person in the know” test due to common inventors; reiterates Wander standard and notes limited utility of injunction when patent expires in two months.

SemaglutidePatentLitigation, Section64PatentsAct , ObviousnessChallenge, PriorClaimingDistinction,PersonInTheKnowTest , WanderStandard, InterlocutoryInjunctionAppeal, GLP1Analogue, GenusSpeciesPatent, NovoNordiskDrReddys, DelhiHighCourtIPD, AstraZenecaIntasRatio, RocheCiplaTest, PatentExpiryUrgency,

Geron Corporation Vs. The Assistant Controller of Patents and Designs

Introduction: The case addresses a recurring tension in patent jurisprudence: the boundary between patentable technical innovations and non-patentable methods of medical treatment. In an era where personalized medicine and biomarker-driven therapies are gaining prominence, the Court’s ruling assumes critical importance in clarifying whether screening and selection methods for treatment fall within the statutory exclusion of “diagnostic” processes. The judgment provides a deeply reasoned analysis of statutory interpretation, international obligations under TRIPS, and evolving judicial precedents in India.

Factual Background: The appellant, Geron Corporation, a biopharmaceutical entity engaged in developing telomerase inhibitors, filed an Indian national phase patent application titled “Diagnostic Markers for Treating Cell Proliferative Disorders with Telomerase Inhibitors.” The invention related to an in vitro method for identifying cancer patients who would benefit from treatment with telomerase inhibitors based on the relative length of telomeres in cancer cells.

The patent application claimed a method involving the analysis of telomeric nucleic acids from biological samples of individuals diagnosed with or suspected of having cancer. Based on whether the telomere length fell within a specified percentile threshold, the method enabled selection of patients likely to benefit from specific therapeutic intervention. The invention thus operated at the intersection of biomarker detection and therapeutic decision-making.

The Patent Office, however, objected to the application on multiple grounds, including lack of novelty, inventive step, and most significantly, non-patentability under Section 3(i) of the Patents Act. The core objection was that the claimed invention constituted a diagnostic method and was therefore excluded from patentability.

Procedural Background: Following the filing of the application and issuance of the First Examination Report, the appellant submitted responses and amended claims to address objections raised by the Controller. A hearing was conducted, and further written submissions along with amended claims were filed by the appellant.

Despite these efforts, the Controller refused the application by order dated 31.12.2021, holding that the claims fell squarely within the ambit of Section 3(i) as a diagnostic method related to treatment of cancer. Aggrieved, the appellant preferred an appeal under Section 117-A of the Patents Act before the High Court of Delhi.

Reasoning: The Court undertook an exhaustive examination of the statutory framework, particularly Section 3(i), which excludes from patentability any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic, or other treatment of human beings. The central question before the Court was whether the claimed “in vitro screening method” constituted a diagnostic method for treatment.

The Court rejected the appellant’s attempt to distinguish “screening” from “diagnosis” by holding that nomenclature is not determinative. What is crucial is the functional role of the claimed process. If a method contributes to or forms the basis of a treatment decision, it may fall within the scope of “diagnostic” under Section 3(i).

In interpreting the scope of “diagnostic,” the Court relied heavily on prior judicial precedents and Patent Office Guidelines. It emphasized that diagnosis need not be definitive; even a process that aids or influences treatment decisions qualifies as diagnostic. The Court also clarified that the statutory exclusion does not distinguish between in vivo and in vitro methods, thereby rejecting the appellant’s contention that laboratory-based techniques should be patentable.

A key aspect of the reasoning was the application of the “treatment nexus” test. The Court examined whether the claimed method inherently enabled a medical practitioner to make a treatment decision. It found that the method, by determining telomere length and applying a threshold, directly guided the selection of patients for telomerase inhibitor therapy. This, in substance, constituted a diagnostic process integral to treatment.

The Court further observed that granting patent protection to such methods would result in monopolisation of clinical decision-making processes, which is precisely what Section 3(i) seeks to prevent. The legislative intent behind the provision, reinforced by TRIPS, is to ensure that medical practitioners are not constrained by patent rights in performing diagnostic and therapeutic functions.

Judgments with Complete Citations Discussed: The Court engaged in a detailed analysis of prior judicial decisions to articulate the scope of Section 3(i). It relied extensively on Chinese University of Hong Kong v. Assistant Controller of Patents & Designs, 2023 SCC OnLine Mad 6372, wherein the Madras High Court held that diagnostic processes must be understood in the context of treatment and include processes capable of identifying pathology for therapeutic purposes.

Further reliance was placed on Chinese University of Hong Kong v. Controller of Patents & Designs, 2023 SCC OnLine Mad 8616, which clarified that diagnostic methods are not confined to in vivo procedures and must be interpreted in light of their role in treatment.

The Court also referred to Natera Inc. & Anr. v. Assistant Controller of Patents and Designs, 2025:DHC:8937, where it was held that processes employed by medical practitioners for diagnosis are excluded from patentability, irrespective of whether they are performed in vivo or in vitro.

Additionally, Sequenom Inc. & Anr. v. The Controller of Patents, 2025:DHC:8926, was cited to reinforce the principle that even non-definitive diagnostic processes, which influence treatment decisions, fall within the exclusion under Section 3(i).

Collectively, these precedents were harmonised to establish that any process contributing to diagnosis for treatment—whether labelled as screening, monitoring, or otherwise—is not patentable.

Decision of the Court: The Court upheld the order of the Controller and dismissed the appeal. It held that the claimed invention, though framed as an in vitro screening method, was in substance a diagnostic method forming the basis of treatment decisions for cancer patients. Consequently, it fell squarely within the exclusion under Section 3(i) of the Patents Act.

The Court further rejected the argument that grant of patents in foreign jurisdictions such as the United States or Europe should influence the Indian position, reiterating that patentability must be assessed strictly in accordance with Indian law.

Point of Law Settled: The judgment conclusively establishes that any method—whether termed as screening, monitoring, or selection—that contributes to or enables a medical practitioner to make a treatment decision qualifies as a “diagnostic method” under Section 3(i) and is therefore not patentable. It further settles that the exclusion applies equally to in vitro processes and that the determinative test is the functional role of the claimed invention in the treatment pathway, not its form or drafting.

Case Title: Geron Corporation Vs. The Assistant Controller of Patents and Designs

Date of Order: 17 March 2026

Case Number: C.A.(COMM.IPD-PAT) 244/2022

Neutral Citation: 2026:DHC:2206

Court: High Court of Delhi

Judge: Hon'ble Justice Manmeet Pritam Singh Arora

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

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

Suggested Titles

“Screening or Diagnosis? Delhi High Court Clarifies the Scope of Section 3(i) in Biotechnology Patents”

“Patentability of Diagnostic Methods in India: A Critical Analysis of Geron Corporation Case”

“Biomarkers and the Law: Limits of Patent Protection under Section 3(i) of the Patents Act”

Suggested Tags

Patent Law India, Section 3(i) Patents Act, Diagnostic Methods, Biotechnology Patents, Delhi High Court, Geron Corporation Case, Patent Eligibility, Medical Treatment Exclusion, TRIPS Compliance, Intellectual Property Law

Headnote

The Delhi High Court in Geron Corporation v. Assistant Controller of Patents held that an in vitro screening method for selecting cancer patients based on telomere length for administering telomerase inhibitor therapy constitutes a diagnostic method under Section 3(i) of the Patents Act, 1970. The Court ruled that the functional role of the process in influencing treatment decisions is determinative, and not the manner of drafting or labeling of claims. It further clarified that diagnostic methods include both in vivo and in vitro processes and extend to non-definitive tests that guide therapeutic intervention. Consequently, such methods are excluded from patentability

Coromandel Indag Products India Limited Vs Suimoto Chemical Co Ltd

Introduction: The Delhi High Court, in a significant ruling delivered on 18 March 2026, has reaffirmed the narrow and limited scope of Order VII Rule 11(a) of the Code of Civil Procedure, 1908, in the context of intellectual property disputes involving trademarks, copyright, and passing off. The Division Bench  allowed the appeal filed by Coromandel Indag Products India Ltd. against the order of a learned Single Judge who had rejected the plaint under Order VII Rule 11(a) on the ground that it disclosed no cause of action and that the alleged cause of action was purely illusory. The judgment meticulously dissects the distinction between a plaint that fails to disclose any cause of action and one that merely raises triable issues or may ultimately fail on merits. By restoring the suit and directing its trial on merits, the Court has sent a strong message that threshold rejection of plaints in complex IP matters must not become a substitute for a mini-trial or an evaluation of evidence that is the exclusive domain of a full-fledged hearing. The decision underscores the principle that at the stage of Order VII Rule 11(a), the Court is bound to proceed on a demurrer, presuming every averment in the plaint to be true, and cannot import documents filed by the defendant or adjudicate disputed questions of fact or law.

Factual Background: Coromandel Indag Products India Ltd., an Indian agro-chemical company incorporated in 1983 and the parent entity of the Coromandel Group, instituted a suit seeking permanent injunction, damages, and other reliefs against Sumitomo Chemical Company Ltd. and its Indian subsidiary on the grounds of copyright infringement, passing off, and dilution of goodwill in respect of the trademark “PADAN” and its packaging. The plaintiff asserted that it had been using the mark “PADAN” continuously since 1988 in relation to insecticides containing Cartap Hydrochloride. It pleaded that under an Agreement dated 06.12.2004, its subsidiary Coromandel Agrico Pvt. Ltd. (CAPL) was granted a royalty-based license to use the plaintiff’s marks including “PADAN 4G” and “PADAN 50SP”. The plaintiff further claimed that it had independently designed the artistic packaging in 2006, which was protected under the Copyright Act, 1957, and that through extensive sales and promotion it had acquired secondary meaning and exclusive goodwill in the mark. The suit was triggered when, in May-June 2023, the plaintiff discovered that the second defendant had launched an identical product under the same compound with deceptively similar packaging. The plaintiff also pleaded non-use of the mark by the defendants despite their registrations and sought cancellation of those registrations under Section 47 of the Trade Marks Act, 1999. The defendants, on the other hand, relied upon their registered proprietorship, a Distribution Agreement dated 26.12.2005 executed with CAPL, and alleged that the plaintiff had no independent rights and had suppressed material documents.

Procedural Background: The defendants moved an application under Order VII Rule 11(a) CPC praying for rejection of the plaint on the ground that it disclosed no cause of action. The learned Single Judge allowed the application vide judgment dated 03.07.2025, holding that the plaintiff could not maintain the suit on behalf of CAPL (a distinct legal entity under liquidation), that the Distribution Agreement had been deliberately withheld and when examined showed that CAPL was merely a non-exclusive licensee of the first defendant, that use by the licensee would inure to the registered proprietor, that the copyright assignment had expired after five years under Section 19(5) of the Copyright Act, and that the plaintiff had failed to establish its own goodwill or sales figures. The Single Judge further opined that the Agreement dated 06.12.2004 appeared fabricated and that the entire suit was vexatious and malicious, rendering the cause of action purely illusory. Aggrieved, the plaintiff preferred RFA(OS)(COMM) 22/2025 along with an application under Order XLI Rule 27 CPC for additional evidence. After hearing Senior Counsel Mr. J. Sai Deepak for the appellant and Mr. Rajshekhar Rao for the respondents, the Division Bench reserved judgment on 22.01.2026 and pronounced it on 18.03.2026.

Reasoning:The Division Bench commenced its analysis by reiterating the well-settled jurisprudence on the meaning and scope of “cause of action” as expounded in ABC Laminart (P) Ltd. v. A.P. Agencies, Mayar (H.K.) Ltd. v. Owners & Parties, Vessel M.V. Fortune Express, Om Prakash Srivastava v. Union of India, and T. Arivandandam v. T.V. Satyapal. The Court emphasised that cause of action is a bundle of material facts which, if traversed, the plaintiff must prove to obtain relief, and that at the Order VII Rule 11(a) stage the plaint must be read holistically, every averment presumed true, and no inquiry into the merits or defence is permissible. The Bench categorically held that the learned Single Judge had transgressed these parameters by (i) examining the Distribution Agreement filed by the defendants although it was neither sued upon nor formed the foundation of the plaintiff’s claim, (ii) conducting a mini-trial on the validity of the 06.12.2004 Agreement and the copyright assignment, (iii) adjudicating whether sales and promotional expenses of sister concerns inured to the plaintiff, and (iv) prematurely concluding that the cause of action was illusory. The Court clarified that the principle of incorporation by reference laid down in Church of Christ Charitable Trust and Education Charitable Society v. Ponniamman Educational Trust applies only to documents relied upon by the plaintiff as the basis of its claim and cannot be stretched to permit the defendant to defeat the plaint at the threshold by producing contrary documents. The Bench further observed that questions such as whether the plaintiff as parent company could claim benefit of use by its licensee CAPL, whether the license had become naked, whether the packaging constituted original artistic work, and whether the defendants’ registration could be challenged for non-use, were all triable issues requiring evidence and cross-examination. The Court also rejected the argument that the plaintiff lacked locus standi merely because CAPL was under liquidation, holding that the royalty-based license agreement pleaded in the plaint, if taken as true, conferred independent rights on the plaintiff. Similarly, the finding that the copyright had expired was held premature because the scope of the assignment deed, its annexures, and the precise works involved were disputed and required trial. On passing off, the Bench held that the plaint sufficiently pleaded goodwill, misrepresentation through deceptively similar packaging, and likelihood of confusion, which was all that was required at the pleading stage. The Division Bench categorically ruled that the standard for “illusory” cause of action cannot be equated with the summary judgment standard under Order XIII-A Rule 3 CPC, as the former is limited to the face of the plaint while the latter involves deeper scrutiny after pleadings are complete.

Point of Law Settled in the Case: The judgment settles several important points of law. First, at the stage of Order VII Rule 11(a) CPC, the Court cannot look into documents filed by the defendant unless they are expressly sued upon and form the foundation of the plaintiff’s claim; the principle of incorporation by reference cannot be invoked to defeat the plaint by extraneous material. Second, the enquiry is strictly limited to whether the plaint, read as a whole and presuming its averments true, discloses material facts that, if proved, would entitle the plaintiff to relief; the Court cannot evaluate the probability of success, the veracity of documents, or adjudicate triable issues of fact or law. Third, in IP suits involving trademarks, copyright, and passing off, pleadings of license agreements, continuous use, goodwill, independent creation of artistic works, and deceptive similarity are sufficient to disclose a cause of action; questions of naked licensing, inurement of use by licensees or group companies, expiry of assignments, and prior use by registered proprietors are matters for evidence and cannot justify threshold rejection. Fourth, the concept of an “illusory” cause of action cannot be used as a surrogate for summary judgment; it applies only when the plaint is cleverly drafted to create a mere semblance of a right without pleading the necessary material facts. Fifth, corporate distinction between parent and subsidiary or the insolvency of a licensee does not automatically bar the parent company from suing in its own right when it pleads independent license and goodwill. The ruling thus strengthens the protection of IP rights holders by ensuring that meritorious suits are not prematurely throttled at the pleading stage.

Case Title: Coromandel Indag Products India Limited Vs Suimoto Chemical Co Ltd.and another

Date of Order: 18.03.2026

Case Number: RFA(OS)(COMM) 22/2025 

Neutral Citation: 2026:DHC:2260-DB

Name of Court: High Court of Delhi

Name of Hon'ble Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla 

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

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

Suitable Titles for this Article:

1. Delhi High Court Restores IP Suit: Landmark Ruling on Limits of Plaint Rejection under Order VII Rule 11(a) CPC in Trademark & Copyright Disputes
2. “No Mini-Trial at Threshold”: Delhi HC Sets Aside Plaint Rejection in Coromandel v. Sumitomo PADAN Trademark Battle
3. Cause of Action Not Illusory: Division Bench Reinstates Agro-Chemical Passing Off & Copyright Suit

Suitable Tags: #DelhiHighCourt #Order7Rule11CPC #TrademarkInfringement #CopyrightInfringement #PassingOff #PlaintRejection #IntellectualPropertyLaw #CauseOfAction #IPLitigation #CoromandelVsSumitomo #AgroChemicalTrademark #NakedLicense #LicenseeRights #DivisionBenchRuling

Headnote of Article

In a detailed and erudite judgment, the Delhi High Court Division Bench has set aside the rejection of a plaint in a composite suit for trademark passing off, copyright infringement, and dilution, holding that the learned Single Judge impermissibly conducted a mini-trial and relied upon defendant-filed documents at the Order VII Rule 11(a) stage. The Court restored the suit, reiterating that plaints in IP matters must be read holistically with every averment presumed true, and triable issues of license, goodwill, and deceptive similarity cannot justify threshold rejection. The ruling settles that “illusory cause of action” cannot substitute for summary judgment and firmly protects the right of IP owners to a full trial on merits.

Mahindra and Mahindra Limited Vs Diksha Sharma

Introduction: This decision grapples with the tension between the need for effective enforcement against ever-evolving online infringement and the strict procedural boundaries imposed by the Code of Civil Procedure, 1908. While granting a permanent injunction and directing blocking of infringing domain names, the Court emphatically refused to incorporate a “dynamic injunction” mechanism that would allow post-decree impleadment of mirror or alphanumeric variant websites through the Joint Registrar. This stance creates a deliberate divergence from earlier coordinate bench precedents such as UTV Software Communication Ltd. v. 1337X.To and Universal City Studios LLC v. Mixdrop Co., thereby reopening the debate on the scope of inherent powers under Section 151 CPC once a civil suit reaches finality. The judgment also contains an urgent legislative appeal to the Central Government and Parliament to amend the CPC and the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, highlighting the growing frustration of successful IP litigants who obtain decrees yet face repeated evasion through technological mimicry.

Factual Background: Mahindra & Mahindra Limited, the flagship company of the Mahindra Group founded in 1945, and its subsidiary Mahindra Logistics Limited (collectively the plaintiffs) have built an enormous reputation around the word mark “MAHINDRA”. The mark is registered in Classes 12, 35 and 39 since the 1970s, with multiple device and word mark registrations spanning decades. The Supreme Court itself recognised “MAHINDRA” as a well-known trademark in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147. The plaintiffs operate in automobiles, tractors, logistics and mobility solutions.

Defendant No. 1, Diksha Sharma, trading as “Mahidnra Packers Movers” (deliberate misspelling noted in the plaint), along with other contesting defendants, adopted the identical mark “MAHINDRA” in device and word form for packing and moving services. They registered multiple domain names — www.mahindrapackers.com, www.mahindrapackers.in, www.mahindrapackersmovers.com, www.mahindrapackersandmovers.com and www.mahindrapackersandmovers.in — and operated listings on Google. Defendants 5 to 8 were intermediaries (GoDaddy, Google LLC, etc.) while Defendant 9 was the Department of Telecommunications. Later, mirror websites operated by Defendants 10–12 were impleaded. The plaintiffs alleged classic infringement, passing off, dilution and consumer deception, given the identical nature of the services and the fame of the “MAHINDRA” brand.

Procedural Background: On 12 April 2023 the Court granted an ex-parte ad-interim injunction restraining use of “MAHINDRA” or any deceptively similar mark, directed blocking of the five domains by Defendants 5, 7 and 8, issued directions to DoT for ISP-level blocking, and ordered Google to de-index the domains and disable associated Gmail accounts. The order was modified on 2 May 2024 to permit impleadment of mirror/alphanumeric variants by way of application under Order I Rule 10 CPC, with the Joint Registrar empowered to extend the injunction. Defendants 10–12 were thereafter impleaded on 2 August 2024 and 9 September 2024, and the interim order extended to them. All official defendants filed affidavits of compliance; GoDaddy disclosed registrant details, Google confirmed de-indexing and DoT issued blocking instructions to ISPs. By the time of final hearing, the original infringing domains stood blocked and no oral evidence was required under Rule 7(viii) of the Delhi High Court Intellectual Property Rights Division Rules, 2022. The plaintiffs, while seeking decree in terms of the original prayers, additionally pressed for a “dynamic + injunction” clause allowing them to file fresh applications before the Joint Registrar even after decree to implead future mirror sites and extend the injunction automatically.

Reasoning: The Court first acknowledged that the core reliefs of permanent injunction, domain blocking and delisting stood satisfied through compliance. It then turned to the novel prayer for post-decree dynamic relief. The plaintiffs relied on Order VII Rule 7 CPC and the prayer clause seeking relief against “any other domain name” containing “MAHINDRA”. They invoked UTV Software and Universal City Studios to argue that the Court could, under Section 151 CPC, empower the Joint Registrar to entertain future impleadment applications even after the suit was disposed of.

Justice Gedela meticulously dissected this contention. He held that once a judgment is pronounced and signed under Order XX CPC, the Court becomes functus officio. The interim injunction merges into the final decree and ceases to have independent existence. Neither Section 151 nor any other provision of the CPC confers jurisdiction on the Court — much less on its Principal Officer, the Joint Registrar — to entertain fresh impleadment applications or extend injunctions after the decree is drawn up. The only permissible post-decree interventions are correction of clerical/arithmetical errors under Section 152 CPC or review under Order XLVII. Delegating to the Joint Registrar what the Court itself cannot do would amount to indirect circumvention of the doctrine of functus officio. The judgment further emphasised that what cannot be achieved directly cannot be achieved indirectly, citing the Andhra Pradesh High Court precedent on delegation. The Court respectfully declined to follow the dynamic injunction framework in UTV and Universal City Studios insofar as it permitted post-pronouncement action by the Joint Registrar, noting that those decisions did not have the benefit of the binding Supreme Court authorities on functus officio.

The judgment also contains a powerful obiter appeal to the Legislature and Central Government to urgently amend the CPC and IT Rules so that execution of decrees in internet-era IP cases does not remain illusory. It recognised the practical reality of rapid mirror-site proliferation yet refused to stretch inherent powers beyond statutory limits.

Judgements with complete citation discussed and decision of court: The Court discussed and applied a formidable line of Supreme Court and High Court authorities. In Dwaraka Das v. State of M.P., (1999) 3 SCC 500, the Supreme Court held that after pronouncement and signing of judgment the court becomes functus officio and cannot pass effective judicial orders; Section 152 is confined to accidental slips or omissions and does not permit variation of the decree on merits. State Bank of India v. S.N. Goyal, (2008) 8 SCC 92, clarified that a judge becomes functus officio the moment the judgment is pronounced, signed and dated, subject only to Section 152 and review. Orissa Administrative Tribunal Bar Assn. v. Union of India, (2023) 18 SCC 1, reiterated that the doctrine of functus officio gives effect to finality and prevents endless revisitation except through appeal or statutorily conferred review. Rajendra Tiwary v. Basudeo Prasad, (2002) 1 SCC 90, was cited on Order VII Rule 7 but ultimately held not to support post-decree impleadment liberty.

Coordinate bench decisions relied upon by plaintiffs were analysed in detail. UTV Software Communication Ltd. v. 1337X.To, (2019) SCC OnLine Del 10975 permitted plaintiffs to implead mirror sites via Order I Rule 10 applications before the Joint Registrar even after decree. Universal City Studios LLC v. Mixdrop Co., (2023) SCC OnLine Del 3395 followed the same mechanism. The Court expressly stated it was “unable to subscribe” to these views to the extent they allow post-pronouncement action by the Joint Registrar, observing that the earlier benches did not have the benefit of the Supreme Court functus officio jurisprudence.

The decision of the Court was clear and categorical: the suit is decreed in terms of prayers (a) to (h) of the plaint — permanent injunction restraining use of “MAHINDRA” or any deceptively similar mark, mandatory injunction for blocking the listed domains and any other containing “MAHINDRA”, directions to DoT and Google, damages claim left for execution if quantified later, rendition of accounts and costs. However, the specific relief for liberty to file post-decree applications under Order I Rule 10 CPC before the Joint Registrar for impleadment of mirror sites and extension of injunction under Section 151 CPC is rejected. The decree sheet was directed to be drawn up accordingly and the suit disposed of.

Point of law settled in the case: This judgment settles an important procedural point in intellectual property litigation involving online infringement: once a final judgment is pronounced and the decree is drawn under Order XX CPC, the trial court becomes functus officio and cannot retain jurisdiction to entertain applications for impleadment of mirror/redirect/alphanumeric variant websites or to extend injunctions through the Joint Registrar under Section 151 CPC. The interim order merges in the final decree and cannot be independently enforced or expanded post-decree by any officer of the Court. Any such mechanism would require legislative amendment to the CPC or the IT Rules; judicial innovation cannot travel beyond the statutory framework. The ruling reinforces the doctrine of finality while simultaneously flagging the urgent need for statutory reform to address the practical helplessness of IP owners against rapidly mutating online infringers.

Case Title: Mahindra and Mahindra Limited & Anr Vs Diksha Sharma , Proprietor of Mahindra Packers Movers & Ors

Date of Order: 16 March 2026

Case Number: CS(COMM) 209/2023

Neutral Citation: 2026:DHC:2154

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Tushar Rao Gedela, J.

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

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

Suitable Titles for the Article

1. Delhi High Court Rejects Post-Decree Dynamic Injunction: Functus Officio Doctrine Prevails Over Mirror-Site Proliferation in Mahindra Trademark Suit
2. “MAHINDRA” Trademark Secured but Dynamic Injunction Denied: Delhi High Court Diverges from UTV Precedent in Landmark IP Ruling
3. Functus Officio Meets Internet Piracy: Delhi High Court Declines to Empower Joint Registrar After Decree in Packers-Movers Infringement Case

Suitable Tags

Trademark Infringement, Dynamic Injunction, Functus Officio, Mirror Websites, Mahindra Brand Protection, Delhi High Court IP Judgment, Section 151 CPC, UTV Software Precedent, Well-Known Trademark, Legislative Reform in IP Execution, Domain Name Blocking, Packers and Movers Infringement

Headnote of Article

Delhi High Court grants permanent injunction protecting the well-known “MAHINDRA” trademark against unauthorised use by a packing-and-moving entity but refuses to incorporate a post-decree dynamic injunction mechanism empowering the Joint Registrar to implead mirror sites under Section 151 CPC, holding the Court functus officio after pronouncement of judgment; the ruling diverges from earlier coordinate bench decisions and urges urgent legislative amendment to CPC and IT Rules to address online infringement evasion.

Rynox Gears Vs. Steelite India

Introduction:The Bombay High Court has once again demonstrated its zero-tolerance approach towards litigants who approach the court with unclean hands while simultaneously underscoring the limited scope of passing off actions when parties operate in non-overlapping segments of the same broad industry. Bombay High Court dismissed the interim injunction application filed by Rynox Gears against Steelite India, holding that no case of trademark infringement arises against a registered proprietor and that the passing off claim fails on multiple counts including suppression of material facts, absence of goodwill in the relevant segment, and insufficient similarity between the composite marks. The ruling serves as a stark reminder that false pleadings about product lines and service of notices can result in outright dismissal at the threshold stage, even before merits are fully examined, and that common field of activity remains a relevant but not decisive factor in passing off jurisprudence.

Factual Background:Rynox Gears, a Mumbai-based partnership firm established in 2012, has been marketing motorcycle protective accessories such as jackets, gloves, pants, and luggage systems under the trademark “RYNOX”. The word mark was applied for on 31 August 2016 with a user claim since 16 February 2012 and published in the Trade Marks Journal on 23 January 2017. A device mark incorporating the word “RYNOX” was applied for in 2019. The plaintiff maintains an e-commerce website at https://rynoxgear.com and has secured approximately 23 registrations across classes. Substantial promotional expenses and sales turnover (Rs. 42 crores in 2022-2023) are pleaded to establish goodwill.

Steelite India, a Delhi-based partnership constituted in 2016, adopted the mark “RHYNOX” (with a distinctive rhinoceros device and stylised “X”) as a homage to the state animal of Assam. The defendant claims use since December 2016 for safety helmets, applied for registration in Class 9 on 2 January 2017, and secured registration without opposition on 28 November 2020. The defendant also registered the domain www.rhynoxhelmets.co.in in 2019 and has been continuously marketing helmets since 2017, supported by a Chartered Accountant’s certificate of turnover. The defendant asserts honest adoption after a trademark search that did not reveal the plaintiff’s then-unpublished application.

Procedural Background:The plaintiff instituted Commercial IP Suit (Lodging) No.35513 of 2024 seeking injunction for infringement and passing off. Along with the suit, Interim Application (Lodging) No.897 of 2025 was moved under Order XXXIX Rules 1 and 2 CPC. The defendant filed a limited affidavit-in-reply raising suppression of facts, denial of jurisdiction, and asserting prior adoption and registration. The plaintiff filed a rejoinder attempting to establish cognate goods and explaining the cease-and-desist notice dated 25 October 2023. Both sides advanced detailed oral submissions. The matter was reserved on 25 February 2026 and pronounced on 17 March 2026.

Reasoning: Court addressed the infringement claim and held that Section 28(3) and Section 30(2)(e) of the Trade Marks Act, 1999 expressly protect co-existing registered proprietors from infringement actions against each other. Relying on the Full Bench decision in Lupin Ltd. v. Johnson & Johnson, the court noted that it can go beyond registration only in cases of ex facie illegality or fraud shocking the conscience of the court. Here, the defendant’s registration preceded the plaintiff’s publication and was granted without opposition; no pleadings or arguments assailed its validity on fraud grounds. Thus, no prima facie case for infringement existed.

Turning to passing off, the court found the plaintiff guilty of making false statements on oath. The plaint repeatedly claimed the plaintiff manufactured and marketed helmets since 2012, a fact contradicted by the defendant and not supported by evidence; the rejoinder shifted to a new plea of “cognate” or “allied” goods only after the defence was raised. Similarly, the plaint asserted receipt of the cease-and-desist notice and consequent takedown of the defendant’s website, yet the rectification application filed by the plaintiff itself admitted the notice was returned undelivered. The rejoinder compounded the falsehood by claiming misplaced proof of delivery. Citing Ramjas Foundation & Anr. v. Union of India & Ors., the court held that a litigant approaching with unclean hands is not entitled to be heard on merits and the application deserved dismissal at the threshold.

Even on merits, the court found no case for passing off. The plaintiff failed to demonstrate goodwill in the helmet segment as on the date of the defendant’s adoption in 2016; sales figures were for riding gear, not helmets. The composite marks were dissimilar—the defendant’s rhinoceros device and exaggerated “X” provided sufficient added matter to distinguish, as held in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories. A solitary e-commerce instance on Meesho was insufficient to prove misrepresentation or likelihood of deception. Common field of activity, though relevant per Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., was absent; helmets and riding apparel target different consumer expectations and trade channels. Balance of convenience favoured the defendant, who had built a running business since 2017.

Judgements with complete citation discussed and decision of court:The court placed central reliance on Lupin Ltd. v. Johnson & Johnson ((2014) SCC OnLine Bom 4596) to hold that infringement relief is unavailable against a registered proprietor unless registration is ex facie illegal or fraudulent. Ramjas Foundation & Anr. v. Union of India & Ors. ((2010) 14 SCC 38) was cited for the principle that unclean hands disentitle a party from equitable relief at the interim stage. Kirloskar Diesel Recon Pvt. Ltd. & Anr. v. Kirloskar Proprietary Ltd. & Ors. (1995 SCC OnLine Bom 312) was invoked to emphasise that while common field is not the sole criterion, it remains a relevant factor and misrepresentation must be shown from the perspective of the public’s state of mind. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories (1964 SCC OnLine SC 40) was applied to hold that added matter in a composite mark can sufficiently distinguish goods.

The defendant’s submissions on co-existence and bona fide adoption were accepted in light of the sequence of registration dates. In the result, the Interim Application was dismissed in its entirety with no order as to costs. The suit was directed to proceed to trial on remaining issues.

Point of law settled in the case:The judgment settles that false statements regarding product lines, service of notices, and suppression of material facts in pleadings constitute unclean hands sufficient to dismiss an interim injunction application at the threshold without examining the merits of passing off. In co-existence of registered trademarks, infringement relief is statutorily barred unless registration is challenged and shown to be ex facie illegal or fraudulent. For passing off, goodwill must be demonstrated in the specific segment in which the defendant trades as on the date of the defendant’s adoption; mere association with a broader industry is insufficient. Composite marks with distinctive devices and stylised elements provide added matter that can negate misrepresentation even if word elements are phonetically similar. A solitary instance of confusion on an e-commerce platform is inadequate to prove likelihood of deception.

Case Title: Rynox Gears Vs. Steelite India

Date of Order: 17.03.2026

Case Number: Interim Application (Lodging) No.897 of 2025 in Commercial IP Suit (Lodging) No.35513 of 2024

Neutral Citation: 2026:BHC-OS:8734

Name of court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction in its Commercial Division)

Name of Hon'ble Judge: Sharmila U. Deshmukh, J.

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

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

Suggested Titles for the Article:

1. Bombay High Court Dismisses “RYNOX” Injunction Bid: Unclean Hands and Distinct Segments Seal Fate of Passing Off Claim
2. Unclean Hands Doctrine in Action: Bombay HC Refuses Interim Relief in Motorcycle Gear vs Helmet Trademark Battle
3. No Infringement Against Registered Proprietor: Detailed Analysis of Rynox Gears v. Steelite India Ruling

Suitable Tags: Trademark Infringement, Passing Off, Unclean Hands, Common Field of Activity, Registered Marks Co-existence, Motorcycle Accessories, Helmets, Bombay High Court, Suppression of Facts, Interim Injunction

Headnote of Article

In Rynox Gears v. Steelite India (2026:BHC-OS:8734), the Bombay High Court dismissed the plaintiff’s interim injunction application holding that no infringement lies against a registered proprietor and passing off fails due to the plaintiff’s unclean hands through false pleadings on helmets and notice service, absence of goodwill in the helmet segment, dissimilar composite marks with added rhinoceros device, and insufficient evidence of misrepresentation. The ruling reinforces that suppression and falsehoods disentitle equitable relief at the threshold and that common field remains a relevant but not decisive factor in passing off actions.

Dr. Bawaskar Technology (Agro) Pvt. Ltd. Vs. Anannya Agro Products & Anr.

Introduction:The Division Bench, Bombay High Court sets aside a trial court order that had refused temporary injunction to a long-standing Pune-based manufacturer against alleged imitators. The case revolves around the mark “GERMINATOR” – a word coined and used since 1981 for a germination-enhancing formulation – and its distinctive trade dress. The appellate court meticulously examined the cardinal classifications of trademarks (generic, descriptive, suggestive, arbitrary/fanciful) while emphasising that courts cannot travel beyond pleadings, that descriptive claims require concrete evidence, and that unilateral post-suit amendments to infringing labels cannot sanitise dishonest adoption. This decision not only grants interim protection pending trial but also settles important propositions on the interplay between passing off actions, trade dress protection, and the doctrine against forum-shopping through belated trade dress modifications.

Factual Background:Dr. Bawaskar Technology (Agro) Pvt. Ltd., the appellant and original plaintiff, traces its roots to predecessors who conceptualised and commercially launched the “GERMINATOR” formulation in 1981. The mark gained widespread recognition among agriculturists across India through continuous, extensive use. The company was formally incorporated on 24 April 2009. Another flagship product, “HARMONY”, has been in use since 2010 and enjoys registered trademark status (No. 4201889 dated 10 June 2019). The appellant’s initial trademark application for “GERMINATOR” (No. 3505073 filed 4 March 2017 claiming user since 1981) was erroneously declared abandoned in 2023; a review remains pending. A fresh application (No. 6750663 filed 11 December 2024) has been accepted and advertised. Internationally, the mark stands registered in the United Kingdom since 20 March 2017.

The respondents – Anannya Agro Products and Avishkar Agro Chem – began marketing an identical formulation under the same mark “GERMINATOR” with an almost identical bottle trade dress. A customer alert in February 2025 triggered the discovery. The respondents also planned to launch a product under the appellant’s registered mark “HARMONY”. Investigation revealed systematic imitation aimed at riding upon the appellant’s established goodwill. The appellant’s evidence included audited sales turnover from 2010-11 to 2023-24, awards to founder Dr. Vinayak Bawaskar, invoices dating back to 1997, promotional materials, newspaper articles, and e-commerce listings – all demonstrating decades of uninterrupted reputation.

Procedural Background:The appellant instituted Commercial Suit No.9 of 2025 before the District Judge-2, Pune, seeking reliefs for trademark infringement, passing off, and copyright infringement in the artistic label. An interim application under Order 39 Rules 1 and 2 CPC was filed. On 2 April 2025 the trial court granted ex-parte ad-interim injunction and allowed joinder of causes of action. The respondents continued sales, prompting a contempt application under Order 39 Rule 2A CPC and, conversely, their application under Order 39 Rule 4 CPC for vacation of injunction. On 2 July 2025 the respondents undertook to change trade dress for “GERMINATOR” and not launch “HARMONY”; they tendered a revised label photograph.

The trial court, by impugned order dated 4 October 2025 rejected the injunction prayer, holding “GERMINATOR” to be generic and, alternatively, descriptive without secondary meaning. The order was kept in abeyance till 4 November 2025. The appellant approached the High Court in Commercial Appeal From Order No.28 of 2025 with Interim Application No.12806 of 2025. The High Court stayed the impugned order on 4 November 2025. Affidavits, rejoinders, and voluminous written submissions were exchanged. The appeal was reserved on 6 February 2026 and pronounced on 16 March 2026.

Reasoning: The Division Bench opened its analysis by observing that the impugned order suffered from foundational infirmities that rendered it vulnerable to appellate interference. The trial court had labelled “GERMINATOR” a “generic” word – a finding completely dehors the pleadings, as the respondents never pleaded genericity. Relying on the Supreme Court’s dictum in Trojan & Co. v. Nagappa Chettiar, the Bench held that decisions cannot rest on grounds outside the pleadings; the case pleaded alone must be decided. Even the respondents’ counsel conceded the trial court’s use of “generic” was loose terminology for “descriptive”, yet the appellate court found no evidentiary basis for even the descriptive classification. The respondents produced no material showing third-party descriptive use of “GERMINATOR” in relation to germination aids; undated photographs from e-commerce (Exh.48) were insufficient.

The Bench accepted the appellant’s documented prior use since 1981 (well before the respondents’ December 2024 entry and their licensor Seema Jain’s 2014 registration). Sales figures, invoices, awards, and promotional evidence established tremendous goodwill and reputation. The appellant’s trade dress – distinctive bottle design with prominent “Dr. Bawaskar” branding – had acquired secondary meaning. Agriculturists, being persons of imperfect recollection, would associate the mark and dress exclusively with the appellant’s product.

Crucially, the court rejected the respondents’ reliance on their post-suit revised trade dress. Citing the “Safe Distance Rule” from Marico Limited v. K.L.F. Nirmal Industries Pvt. Ltd. and the principle that courts cannot approve revised marks (R.R. Oomerbhoy Private Limited v. Court Receiver), the Bench held that legality must be tested on the infringing label that prompted the suit. Allowing unilateral amendments would encourage endless litigation and reward dishonesty. The respondents’ adoption of identical dress, coupled with their earlier undertaking not to use “HARMONY” and their late offer to modify only after sensing defeat, demonstrated clear intent to pass off.

The Bench further noted inconsistencies in the respondents’ stand: they secured a permissive licence from Seema Jain (implying the mark is protectable) yet later withdrew it, blowing hot and cold. Suppression of earlier dismissed suits by the appellant was not material, as those suits involved different marks or parties and did not operate as estoppel in passing off. The doctrines of acquiescence and prosecution history estoppel were inapplicable on facts. Ultimately, the trifecta of prima facie case, balance of convenience, and irreparable injury was overwhelmingly in the appellant’s favour. The trial court’s failure to apply settled tests warranted reversal.

Judgements with complete citation discussed and decision of court:The Bench discussed and distinguished several authorities placed by both sides. For the appellant, reliance was placed on R.R. Oomerbhoy Private Limited Vs. Court Receiver, High Court, Bombay & Ors. (2003 (5) Mh.L.J. 372) to hold that defendants cannot seek judicial approval for revised trade marks; K.L.F. Nirmal Industries Pvt. Ltd. (Marico Limited Vs. K.L.F. Nirmal Industries Pvt. Ltd., 2023 SCC OnLine Bom 2734) for the Safe Distance Rule that de minimis fixes do not cure confusion once sown; Hem Corporation Pvt. Ltd. Vs. ITC Ltd. (2012 SCC Online Bom 551) that descriptive intent is irrelevant if public perceives use as trademark; Pidilite Industries Ltd. Vs. Jubilant Agri & Consumer Products Ltd. (2014 SCC OnLine Bom 50) that licence agreements reveal the mark’s distinctiveness; Rasiklal Manikchand Dhariwal and Anr. Vs. M.S.S. Food Products ((2012) 2 SCC 196) on correction of illegal discretionary orders; and Medley Laboratories (P) Ltd. Vs. Alkem Laboratories Ltd. (2002 SCC OnLine Bom 444) on appellate interference when correct tests are not applied.

For the respondents, the court considered but distinguished Skyline Education Institute (India) Pvt. Ltd. vs. S.L. Vaswani & Anr. (2010 2 SCC 142), Garware Polyester Ltd. v. 3M Company and Ors. (MANU/MH/1150/2016), S.P. Chengalvaraya Naidu (dead) by Lrs. Vs. Jagannath (dead) by Lrs. And Ors. (AIR 1994 SC 853), and others on suppression and acquiescence, holding them either factually inapplicable or limited to infringement rather than passing off of long-used marks.

In the result, the court allowed the appeal, quashed and set aside the impugned order dated 4 October 2025, and granted a temporary injunction restraining the respondents from passing off “GERMINATOR” or any deceptively similar mark or trade dress pending final disposal of the suit. The interim application did not survive. No order as to costs. Status quo was directed for four weeks on the respondents’ oral request for stay.

Point of law settled in the case:The judgment settles that a trial court cannot characterise a mark as generic when the defence never pleaded it; descriptive claims require positive evidentiary material from the defendant showing common descriptive use in the trade; prior continuous user since 1981 coupled with sales, promotion, and awards can confer secondary meaning and protectability even for dictionary-derived words in niche agricultural markets; unilateral post-suit amendments to trade dress cannot be relied upon at the interim stage to defeat a prima facie case of passing off; and appellate courts must interfere when the trial court fails to apply the settled trifecta test or travels beyond pleadings. The decision reinforces that passing off protection for trade dress and goodwill operates independently of registration status and survives earlier unrelated dismissals or abandoned applications.

Case Title: Dr. Bawaskar Technology (Agro) Pvt. Ltd. Vs. Anannya Agro Products & Anr.

Date of Order: 16th March 2026

Case Number: Commercial Appeal From Order No.28 of 2025

Neutral Citation: 2026:BHC-AS:12950-DB

Name of court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Coram: R.I. Chagla and Advait M. Sethna, JJ.

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

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

NEC Corporation Vs The Controller of Patents and Designs

1. Calcutta High Court Landmark Ruling: Graphic User Interfaces Qualify as Registrable Designs under the Designs Act, 2000 – A Purposive Interpretation for the Digital Age
2. GUI Designs No Longer Excluded: In-Depth Analysis of Justice Ravi Krishan Kapur’s Judgment Overturning Controller’s Narrow View on Industrial Design Protection
3. From Software Codes to Protectable Designs – Calcutta HC Clarifies Registrability of GUIs in Consolidated Appeals

Suitable Tags: #CalcuttaHighCourt #DesignsAct2000 #GUIRegistration #GraphicUserInterface #IndustrialDesigns #IntellectualPropertyIndia #LocarnoClassification #CryogasEquipment #UpdatingConstruction #IPLaw #DigitalInnovation #ControllerOfPatents #DualProtection #TRIPSCompliance

Introduction

In a landmark pronouncement that bridges traditional industrial design jurisprudence with contemporary digital innovation, the High Court at Calcutta delivered a comprehensive judgment on 9 March 2026 that decisively settles the question of whether Graphic User Interfaces can be registered as designs under the Designs Act, 2000. Justice Ravi Krishan Kapur, presiding over five consolidated statutory appeals, meticulously examined the statutory definitions of “article” and “design”, rejected the Controller’s unduly restrictive interpretation, and held that GUIs are not per se ineligible for protection. The ruling underscores that a GUI, comprising iconography, layout, colour schemes, composition of lines and ornamentation, inherently satisfies the visual features contemplated by Section 2(d) when applied to an article such as a display screen or finished electronic device through an industrial process broadly understood to include digital rendering. By invoking principles of updating construction to accommodate technological evolution and drawing persuasive value from both Indian and foreign precedents, the court has not only set aside multiple rejection orders but has also aligned Indian design law with international practices prevalent in 92 per cent of jurisdictions as per WIPO surveys. This decision heralds greater legal certainty for technology companies, reduces potential litigation, and ensures that India remains competitive in protecting digital assets under the Hague Agreement and the Riyadh Design Law Treaty.

Factual Background

The appeals stemmed from a series of design applications filed by leading global and Indian entities seeking protection for innovative GUIs displayed on electronic screens. NEC Corporation’s application No. 285453 claimed novelty residing in the shape and pattern of a display screen hosting a GUI, which the Controller rejected on the ground that the GUI itself does not constitute an article under Section 2(a) and is merely software codes lacking permanence. ERBE Elektromedizin GMBH’s application No. 277243, initially titled “A Display Unit for a High Frequency Generator” and later amended to “Display Screen for an Electrosurgical High Frequency Generator”, was turned down because the GUI was visible only when the device was switched on and connected to a computing system, rendering it purely functional without consistent eye appeal. Abiomed Inc. faced rejection of applications Nos. 397600-001 and 397600-002 for “Display Panel or Portion thereof with Graphical User Interface” intended for vehicle dashboards, the Controller holding that the pictogram displayed on the screen could not be registered. TVS Motor Company Limited’s application No. 393339-001 for a GUI design was refused on the additional ground that it lacked reasons in the order, amounting to violation of natural justice, and that a GUI cannot be judged solely by the eye or possess a sense of touch. In each instance the Controller proceeded on the premise that the 2021 amendment to the Design Rules incorporating GUI under Locarno Class 14-04 was merely administrative and could not override the unamended definitions in the parent Act, that GUIs are not applied by industrial means, cannot be sold or manufactured separately, and are already protected under copyright as artistic works, precluding dual protection.

Reasoning

The court commenced its analysis by setting out the positive and negative limbs of Section 2(d) of the Designs Act, 2000, emphasising that the definition is not confined to physical tangibility but extends to any features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article by any industrial process, whether manual, mechanical or chemical, separate or combined, and judged solely by the eye. It clarified that the design and the article are distinct; the relevant article for a GUI may be the display unit itself or the finished consumer product such as a smartphone, tablet or automobile dashboard. The expression “article of manufacture” received a liberal interpretation, drawing upon the United States Supreme Court’s observation in Samsung Electronics Co. Ltd. vs. Apple Inc. that it covers “a thing made by hand or machine”, and the subsequent recognition in Microsoft Corp. v. Corel Corp. that even software qualifies. The court rejected the fallacy that every article must possess physical embodiment, noting that such a narrow approach would permanently exclude digital and virtual designs.

Turning to the phrase “applied to an article by any industrial process”, the judgment highlighted that the word “any” preceding “industrial process” is deliberately expansive and not limited to the illustrative manual, mechanical or chemical methods. The process of displaying a GUI involves systematic manipulation of electronic signals and precise rendering by advanced hardware, fitting squarely within modern industrial enterprise. The court applied the doctrine of updating construction, citing Bennion on Statutory Interpretation and State of Punjab vs. Amritsar Beverages Ltd., to interpret the Act in light of technological advancements, and found persuasive analogy in the Federal Court of Australia’s decision in Aristocrat Technologies Australia Pty. Ltd. vs. Commissioner of Patents.

The impugned orders’ insistence on permanence was found to have no statutory foundation; Section 2(d) nowhere requires the design to be permanently visible or affixed. The court relied on In re: Hruby, where the ornamental display of a fountain was protected despite dependence on external water flow, and K.K. Suwa Seikosha’s Design Application, where a watch display visible only when activated was held registrable. The test of noticeability recognised in the Manual of Designs Practice and Procedure further confirmed that features visible only during normal use satisfy the “judged solely by the eye” criterion. The finished-article requirement was satisfied because the GUI forms part of the complete product received by the consumer.

Locarno Class 14-04 explicitly listing Screen Displays and Icons, including Graphical User Interfaces, was acknowledged as indicative of legislative intent following India’s accession to the Locarno Agreement and the 2021 Rules amendment, though classification remains administrative and registration is ultimately subject to Sections 2(a) and 2(d). Dual protection concerns were dispelled through a harmonious reading with the Copyright Act, 1957; a GUI is a visual configuration distinct from both computer programmes (literary works) and pure artistic works. The Supreme Court’s recent pronouncement in Cryogas Equipment Private Limited vs Inox India Ltd. provided the definitive two-pronged test: first ascertaining whether the work is purely artistic or a design derived from it through industrial application, and second applying functional utility where copyright does not apply. The UST Global (Singapore) order was held to be based on a misconstruction of the Act and was accordingly distinguished. Foreign decisions were accorded persuasive value, consistent with Supreme Court jurisprudence in Forasol v. ONGC and the Cryogas case itself.

The court further noted the inconsistent practice within the Designs Office, where several GUIs had already been registered (e.g., Siemens Nos. 274917, 2749178; Kneevoice No. 284680; LG No. 276736), underscoring the absence of any per se exclusion. It emphasised that registration would bring legal certainty, reduce litigation, and encourage innovation without encroaching upon copyright or patent domains.

Judgements with complete citation discussed and decision of court, point of law settled in the case

The judgment extensively discussed and applied several authorities. The Supreme Court in Cryogas Equipment Private Limited vs Inox India Ltd 2025 SCC Online SC 780 exhaustively analysed the overlap between the Copyright Act, 1957 and the Designs Act, 2000, formulating a two-pronged test under Section 15(2) of the Copyright Act to distinguish pure artistic works from industrially applied designs and mandating a functional utility inquiry where necessary; the Calcutta High Court adopted this framework to clarify that once GUI features are industrially applied they cease to remain mere artistic works. In Samsung Electronics Co. Ltd. vs. Apple Inc 137 S.Ct.429 the United States Supreme Court broadly construed “article” to include any thing made by hand or machine, which the court found directly applicable to display screens hosting GUIs. Microsoft Corporation vs. Corel Corporation 5:15-cv-05836-EJD further reinforced that software itself can constitute an article of manufacture. English authorities K.K.Suwa Seikosha's Design Application [1982] R.P.C. 166 and the decision in In re: Hruby 54 C.C.P.A. 1196 were relied upon to establish that designs visible only upon activation or during intended use remain registrable, with permanence being a function of the materials employed rather than a statutory prerequisite. The Federal Court of Australia’s ruling in Aristocrat Technologies Australia Pty. Ltd. vs. Commissioner of Patents [2025] FCAFC 131 supplied the principle of updating construction for technology-driven legislation. The Controller’s reliance on its own order dated 6 July 2023 in UST Global (Singapore) vs. Controller of Patents and Designs was expressly disapproved as resting on an erroneous limitation of industrial process and an artificial requirement of integrality.

The decision of the court was unanimous in allowing all appeals. The impugned orders dated 1 October 2019 (IPDAID/21/2024), 20 September 2019 (IPDAID/22/2024), 17 February 2025 (IPDAID/1/2025 and IPDAID/2/2025) and 31 May 2024 (IPDAID/3/2025) were set aside in their entirety. All applications were remanded to the Controller for fresh consideration after affording full opportunity of hearing to the respective appellants, directing the authorities to apply the correct legal tests articulated in the judgment.

The point of law settled in the case is that Graphic User Interfaces satisfy the criteria of a “design” under Section 2(d) of the Designs Act, 2000 read with Section 2(a) and are eligible for registration on a case-to-case basis when the visual features are applied to an identifiable article by an industrial process (broadly understood to encompass digital rendering) and are judged solely by the eye, with no statutory requirement of permanence, separate saleability, or exclusion on the ground of dual protection with copyright; the inclusion of GUIs in Locarno Class 14-04 further evidences legislative intent to protect digital designs, subject only to the fulfilment of the statutory ingredients.

Case Title: NEC Corporation Vs The Controller of Patents and Designs and another

Date of Order: 09.03.2026

Case Number: IPDAID/21/2024, IPDAID/22/2024, IPDAID/1/2025, IPDAID/2/2025 & IPDAID/3/2025

Neutral Citation: 2026:CHC-OS:71

Name of court: High Court at Calcutta, Original Side (Intellectual Property Rights Division)

Name of Hon'ble Judge: Justice Ravi Krishan Kapur

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

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

Headnote of Article: Calcutta High Court holds that Graphic User Interfaces are registrable as industrial designs under the Designs Act, 2000 when applied to an article by any industrial process and judged solely by the eye; the court sets aside Controller’s rejection orders, applies updating construction to digital technologies, distinguishes copyright overlap via Cryogas test, and remands applications for fresh adjudication, thereby settling that there is no per se exclusion for GUIs and aligning Indian law with global digital design protection norms.

NEC Corporation Vs The Controller of Patents and Designs and another

Suitable Titles for the Article:

1. Calcutta High Court Landmark Ruling: Graphic User Interfaces Qualify as Registrable Designs under the Designs Act, 2000 – A Purposive Interpretation for the Digital Age
2. GUI Designs No Longer Excluded: In-Depth Analysis of Justice Ravi Krishan Kapur’s Judgment Overturning Controller’s Narrow View on Industrial Design Protection
3. From Software Codes to Protectable Designs – Calcutta HC Clarifies Registrability of GUIs in Consolidated Appeals

Suitable Tags: #CalcuttaHighCourt #DesignsAct2000 #GUIRegistration #GraphicUserInterface #IndustrialDesigns #IntellectualPropertyIndia #LocarnoClassification #CryogasEquipment #UpdatingConstruction #IPLaw #DigitalInnovation #ControllerOfPatents #DualProtection #TRIPSCompliance

Introduction

High Court at Calcutta delivered a comprehensive judgment on 9 March 2026 that decisively settles the question of whether Graphic User Interfaces can be registered as designs under the Designs Act, 2000. The Court examined the statutory definitions of “article” and “design”, rejected the Controller’s unduly restrictive interpretation, and held that GUIs are not per se ineligible for protection. The ruling underscores that a GUI, comprising iconography, layout, colour schemes, composition of lines and ornamentation, inherently satisfies the visual features contemplated by Section 2(d) when applied to an article such as a display screen or finished electronic device through an industrial process broadly understood to include digital rendering. 

By invoking principles of updating construction to accommodate technological evolution and drawing persuasive value from both Indian and foreign precedents, the court has not only set aside multiple rejection orders but has also aligned Indian design law with international practices prevalent in 92 per cent of jurisdictions as per WIPO surveys. This decision heralds greater legal certainty for technology companies, reduces potential litigation, and ensures that India remains competitive in protecting digital assets under the Hague Agreement and the Riyadh Design Law Treaty.

Factual Background

The appeals stemmed from a series of design applications filed by leading global and Indian entities seeking protection for innovative GUIs displayed on electronic screens. NEC Corporation’s application No. 285453 claimed novelty residing in the shape and pattern of a display screen hosting a GUI, which the Controller rejected on the ground that the GUI itself does not constitute an article under Section 2(a) and is merely software codes lacking permanence. 

ERBE Elektromedizin GMBH’s application No. 277243, initially titled “A Display Unit for a High Frequency Generator” and later amended to “Display Screen for an Electrosurgical High Frequency Generator”, was turned down because the GUI was visible only when the device was switched on and connected to a computing system, rendering it purely functional without consistent eye appeal. 

Abiomed Inc. faced rejection of applications Nos. 397600-001 and 397600-002 for “Display Panel or Portion thereof with Graphical User Interface” intended for vehicle dashboards, the Controller holding that the pictogram displayed on the screen could not be registered. 

TVS Motor Company Limited’s application No. 393339-001 for a GUI design was refused on the additional ground that it lacked reasons in the order, amounting to violation of natural justice, and that a GUI cannot be judged solely by the eye or possess a sense of touch. In each instance the Controller proceeded on the premise that the 2021 amendment to the Design Rules incorporating GUI under Locarno Class 14-04 was merely administrative and could not override the unamended definitions in the parent Act, that GUIs are not applied by industrial means, cannot be sold or manufactured separately, and are already protected under copyright as artistic works, precluding dual protection.

Reasoning:The court commenced its analysis by setting out the positive and negative limbs of Section 2(d) of the Designs Act, 2000, emphasising that the definition is not confined to physical tangibility but extends to any features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article by any industrial process, whether manual, mechanical or chemical, separate or combined, and judged solely by the eye. 

It clarified that the design and the article are distinct; the relevant article for a GUI may be the display unit itself or the finished consumer product such as a smartphone, tablet or automobile dashboard. The expression “article of manufacture” received a liberal interpretation, drawing upon the United States Supreme Court’s observation in Samsung Electronics Co. Ltd. vs. Apple Inc. that it covers “a thing made by hand or machine”, and the subsequent recognition in Microsoft Corp. v. Corel Corp. that even software qualifies. The court rejected the fallacy that every article must possess physical embodiment, noting that such a narrow approach would permanently exclude digital and virtual designs.

Turning to the phrase “applied to an article by any industrial process”, the judgment highlighted that the word “any” preceding “industrial process” is deliberately expansive and not limited to the illustrative manual, mechanical or chemical methods. 

The process of displaying a GUI involves systematic manipulation of electronic signals and precise rendering by advanced hardware, fitting squarely within modern industrial enterprise. The court applied the doctrine of updating construction, citing Bennion on Statutory Interpretation and State of Punjab vs. Amritsar Beverages Ltd., to interpret the Act in light of technological advancements, and found persuasive analogy in the Federal Court of Australia’s decision in Aristocrat Technologies Australia Pty. Ltd. vs. Commissioner of Patents.

The impugned orders’ insistence on permanence was found to have no statutory foundation; Section 2(d) nowhere requires the design to be permanently visible or affixed. The court relied on In re: Hruby, where the ornamental display of a fountain was protected despite dependence on external water flow, and K.K. Suwa Seikosha’s Design Application, where a watch display visible only when activated was held registrable. The test of noticeability recognised in the Manual of Designs Practice and Procedure further confirmed that features visible only during normal use satisfy the “judged solely by the eye” criterion. The finished-article requirement was satisfied because the GUI forms part of the complete product received by the consumer.

Locarno Class 14-04 explicitly listing Screen Displays and Icons, including Graphical User Interfaces, was acknowledged as indicative of legislative intent following India’s accession to the Locarno Agreement and the 2021 Rules amendment, though classification remains administrative and registration is ultimately subject to Sections 2(a) and 2(d). Dual protection concerns were dispelled through a harmonious reading with the Copyright Act, 1957; a GUI is a visual configuration distinct from both computer programmes (literary works) and pure artistic works. 

The Supreme Court’s recent pronouncement in Cryogas Equipment Private Limited vs Inox India Ltd. provided the definitive two-pronged test: first ascertaining whether the work is purely artistic or a design derived from it through industrial application, and second applying functional utility where copyright does not apply. The UST Global (Singapore) order was held to be based on a misconstruction of the Act and was accordingly distinguished. Foreign decisions were accorded persuasive value, consistent with Supreme Court jurisprudence in Forasol v. ONGC and the Cryogas case itself.

The court further noted the inconsistent practice within the Designs Office, where several GUIs had already been registered (e.g., Siemens Nos. 274917, 2749178; Kneevoice No. 284680; LG No. 276736), underscoring the absence of any per se exclusion. It emphasised that registration would bring legal certainty, reduce litigation, and encourage innovation without encroaching upon copyright or patent domains.

Judgements with complete citation discussed and decision of court, point of law settled in the case

The judgment extensively discussed and applied several authorities. The Supreme Court in Cryogas Equipment Private Limited vs Inox India Ltd 2025 SCC Online SC 780 exhaustively analysed the overlap between the Copyright Act, 1957 and the Designs Act, 2000, formulating a two-pronged test under Section 15(2) of the Copyright Act to distinguish pure artistic works from industrially applied designs and mandating a functional utility inquiry where necessary; the Calcutta High Court adopted this framework to clarify that once GUI features are industrially applied they cease to remain mere artistic works. In Samsung Electronics Co. Ltd. vs. Apple Inc 137 S.Ct.429 the United States Supreme Court broadly construed “article” to include any thing made by hand or machine, which the court found directly applicable to display screens hosting GUIs. Microsoft Corporation vs. Corel Corporation 5:15-cv-05836-EJD further reinforced that software itself can constitute an article of manufacture. English authorities K.K.Suwa Seikosha's Design Application [1982] R.P.C. 166 and the decision in In re: Hruby 54 C.C.P.A. 1196 were relied upon to establish that designs visible only upon activation or during intended use remain registrable, with permanence being a function of the materials employed rather than a statutory prerequisite. The Federal Court of Australia’s ruling in Aristocrat Technologies Australia Pty. Ltd. vs. Commissioner of Patents [2025] FCAFC 131 supplied the principle of updating construction for technology-driven legislation. The Controller’s reliance on its own order dated 6 July 2023 in UST Global (Singapore) vs. Controller of Patents and Designs was expressly disapproved as resting on an erroneous limitation of industrial process and an artificial requirement of integrality.

The decision of the court was unanimous in allowing all appeals. The impugned orders dated 1 October 2019 (IPDAID/21/2024), 20 September 2019 (IPDAID/22/2024), 17 February 2025 (IPDAID/1/2025 and IPDAID/2/2025) and 31 May 2024 (IPDAID/3/2025) were set aside in their entirety. All applications were remanded to the Controller for fresh consideration after affording full opportunity of hearing to the respective appellants, directing the authorities to apply the correct legal tests articulated in the judgment.

The point of law settled in the case is that Graphic User Interfaces satisfy the criteria of a “design” under Section 2(d) of the Designs Act, 2000 read with Section 2(a) and are eligible for registration on a case-to-case basis when the visual features are applied to an identifiable article by an industrial process (broadly understood to encompass digital rendering) and are judged solely by the eye, with no statutory requirement of permanence, separate saleability, or exclusion on the ground of dual protection with copyright; the inclusion of GUIs in Locarno Class 14-04 further evidences legislative intent to protect digital designs, subject only to the fulfilment of the statutory ingredients.

Case Title: NEC Corporation Vs The Controller of Patents and Designs and another

Date of Order: 09.03.2026

Case Number: IPDAID/21/2024, IPDAID/22/2024, IPDAID/1/2025, IPDAID/2/2025 & IPDAID/3/2025

Neutral Citation: 2026:CHC-OS:71

Name of court: High Court at Calcutta, Original Side (Intellectual Property Rights Division)

Name of Hon'ble Judge: Justice Ravi Krishan Kapur

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

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

Headnote of Article

Calcutta High Court holds that Graphic User Interfaces are registrable as industrial designs under the Designs Act, 2000 when applied to an article by any industrial process and judged solely by the eye; the court sets aside Controller’s rejection orders, applies updating construction to digital technologies, distinguishes copyright overlap via Cryogas test, and remands applications for fresh adjudication, thereby settling that there is no per se exclusion for GUIs and aligning Indian law with global digital design protection norms.