GGR Housing India Private Limited & Ors. Vs Navaratna Estates

In GGR Housing India Private Limited & Ors. Vs Navaratna Estates & Anr., Civil Revision Petition No. 578 of 2026, Neutral Citation: 2026 SCC OnLine AP ___, decided on 07 May 2026, the High Court of Andhra Pradesh at Amaravati, comprising Hon’ble Sri Justice Ravi Nath Tilhari and Hon’ble Sri Justice Balaji Medamalli, allowed a civil revision petition challenging the rejection of an application seeking leave to file additional documents in a commercial suit for specific performance of an oral agreement for sale of land. The dispute arose from a commercial suit filed by the petitioners seeking enforcement of oral agreements dated 28.09.2015 relating to sale of large extents of land and, alternatively, refund of over Rs.36 crore with interest. The trial court had rejected the plaintiffs’ application under Order XI Rule 1(5) CPC as amended by the Commercial Courts Act, 2015, holding that the documents sought to be produced were already within the plaintiffs’ power and possession and ought to have been filed with the plaint. The High Court held that documents obtainable from public authorities, including certified copies of sale deeds and official records, cannot automatically be treated as being in the “power, possession, control or custody” of a party merely because they could have been procured earlier. The Court further observed that several documents became necessary only in response to the defence raised in the written statement and were therefore protected under Order XI Rule 1(1)(c)(ii) CPC. Emphasising that procedural law is a handmaid of justice and should not defeat substantive adjudication, the Court set aside the impugned order dated 04.02.2026 and directed the Commercial Court to take the documents on record, subject to proof and admissibility during trial.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Additional Documents in Commercial Suits Cannot Be Rejected Merely Because They Could Have Been Obtained Earlier: Andhra Pradesh High Court Clarifies Scope of Order XI Rule 1 CPC

Introduction

The High Court of Andhra Pradesh in M/s. GGR Housing India Private Limited & Ors. v. Navaratna Estates & Anr., Civil Revision Petition No. 578 of 2026, decided on 07.05.2026, delivered an important ruling on the scope and interpretation of Order XI Rule 1 of the Code of Civil Procedure as amended by the Commercial Courts Act, 2015. The judgment examined whether parties in a commercial dispute can be denied permission to place additional documents on record merely because such documents were available in the public domain and could have been obtained earlier through reasonable efforts.

The Division Bench comprising Hon’ble Sri Justice Ravi Nath Tilhari and Hon’ble Sri Justice Balaji Medamalli emphasised that procedural law is intended to advance justice and should not become an obstacle in adjudicating the real dispute between parties. The Court clarified that documents which are publicly obtainable cannot automatically be treated as being within the “power, possession, control or custody” of a party merely because they existed prior to institution of the suit. The judgment is significant for commercial litigation because it balances procedural discipline introduced under the Commercial Courts Act with the larger objective of substantial justice.

Factual and Procedural Background

The dispute arose out of a commercial suit filed by M/s. GGR Housing India Private Limited and related entities against Navaratna Estates and another before the Special Judge for Trial and Disposal of Commercial Disputes, Visakhapatnam. The plaintiffs sought specific performance of alleged oral agreements dated 28.09.2015 and 29.09.2015 concerning sale of large extents of immovable property. According to the plaintiffs, the defendants had agreed to sell approximately Ac.129.125 cents of land for a total consideration exceeding Rs.74 crores.

The plaintiffs contended that although a substantial portion of the land measuring Ac.79.89 cents had already been conveyed through registered sale deeds, the balance extent still remained to be transferred despite payment of consideration. In the alternative, the plaintiffs sought refund of Rs.36,22,05,315/- together with interest at the rate of 24% per annum.

During the pendency of the commercial suit, the plaintiffs sought amendment of pleadings through I.A. No.347 of 2024, which was allowed. After filing the amended plaint, the plaintiffs moved I.A. No.271 of 2025 under Order XI Rule 1(5) CPC seeking leave to file 133 additional documents. These included certified copies of sale deeds, Gram Panchayat resolutions, government challans relating to development and conversion charges, proceedings of planning authorities, receipts of payments and photographs obtained through GPS map camera showing development activities over the disputed property.

The plaintiffs argued that these documents had become necessary because the defendants in their written statement disputed the extent of land sold and the amount of consideration paid under the alleged oral agreements. According to the plaintiffs, the documents were required to rebut the stand taken in the written statement and to establish possession, development activities and payment of sale consideration.

The defendants opposed the application by contending that all the documents were available prior to filing of the suit and should have been disclosed along with the plaint as mandated under Order XI Rule 1 CPC applicable to commercial disputes. It was argued that the Commercial Courts Act imposes strict timelines and disclosure obligations and therefore belated production of documents should not be permitted.

The Commercial Court accepted the objections and rejected the application on 04.02.2026. The trial court held that the plaintiffs could have obtained the documents earlier through reasonable effort and therefore they were deemed to be within the plaintiffs’ power and possession. The Commercial Court relied upon the Supreme Court judgment in Sudhir Kumar alias S. Baliyan v. Vinay Kumar G.B., (2021) 13 SCC 71.

Aggrieved by the rejection order, the plaintiffs approached the Andhra Pradesh High Court under Article 227 of the Constitution of India.

Dispute Before the High Court

The principal issue before the High Court was whether additional documents could be permitted to be filed in a commercial suit under Order XI Rule 1(5) CPC when those documents existed before institution of the suit but were not originally disclosed with the plaint.

The Court also examined whether publicly obtainable documents such as certified copies of sale deeds and government records can be treated as being within the “power, possession, control or custody” of the plaintiffs merely because they could have been procured earlier.

Another important issue was the interpretation of Order XI Rule 1(1)(c)(ii) CPC, which excludes the application of disclosure requirements in relation to documents produced “in answer to any case set up by the defendant subsequent to the filing of the plaint.”

Reasoning and Analysis of the High Court

The High Court undertook an extensive examination of Order XI Rule 1 CPC introduced by the Commercial Courts Act, 2015. The Court reproduced the entire provision and analysed its structure carefully. The Bench observed that sub-rule (1) obligates plaintiffs in commercial suits to disclose all documents in their possession, power, custody or control at the time of filing the plaint. However, clause (c)(ii) specifically excludes documents produced in response to a defence subsequently raised by the defendants.

The Court discussed the Supreme Court decision in Sudhir Kumar alias S. Baliyan v. Vinay Kumar G.B., (2021) 13 SCC 71, where the Supreme Court held that additional documents can be permitted if reasonable cause for non-disclosure is shown. However, the Andhra Pradesh High Court clarified that the strict requirement of showing reasonable cause applies only to documents which were actually in the plaintiff’s possession, power or custody at the time of filing the plaint.

The Court then examined the judgment of the Andhra Pradesh High Court in M/s. C-Star Engineers & Contractors (C-180) v. IDMC Limited, 2025 (1) ALT 707. In that case, the Court had held that procedural provisions under Order XI Rule 1 CPC should be interpreted liberally to advance substantial justice and that documents not actually within possession or custody of a party cannot attract the rigours of sub-rule (5). The present Bench relied heavily upon this principle.

The Court also referred to the Delhi High Court decision in Bennett Coleman & Co. Ltd. v. ARG Outlier Media Pvt. Ltd., 2023 SCC OnLine Del 1457. In that case, the Delhi High Court permitted additional documents because the necessity for filing them arose only after the defendants raised a particular defence in the written statement. The Andhra Pradesh High Court found the reasoning directly applicable to the present dispute.

A major aspect of the judgment concerns interpretation of the expression “power, possession, control or custody.” The Commercial Court had held that because the plaintiffs could have obtained certified copies and public records through reasonable efforts, such documents should be deemed to have been within their possession and control. The High Court rejected this approach and held that a document capable of being obtained is fundamentally different from a document actually in possession or custody. The Court observed that constructive or presumed possession cannot be equated with actual possession for purposes of Order XI Rule 1 CPC.

The Bench specifically held that public documents available from government authorities do not automatically become documents within a party’s possession merely because they can be procured upon application. The Court noted that the trial court had committed an error in law by equating “ability to obtain” with “actual possession or control.”

The Court further observed that several documents sought to be filed had become necessary only because of the defence raised by the defendants regarding the extent of land transferred and the quantum of consideration paid. Therefore, the documents fell squarely within Order XI Rule 1(1)(c)(ii) CPC, which excludes such documents from the disclosure requirements altogether.

The judgment also contains an important discussion on procedural law. The Court relied upon Bunge India Pvt. Ltd. v. Sree Mahalakshmi Oil Mills, 2026 SCC OnLine AP 808, which in turn relied upon the Supreme Court judgments in Sambhaji v. Gangabai, (2008) 17 SCC 117, Sugandhi v. P. Rajkumar, (2020) 10 SCC 706 and Abraham Patani v. State of Maharashtra, (2023) 11 SCC 79. These cases collectively reiterate the settled principle that procedural rules are handmaids of justice and should not defeat substantive adjudication.

The Court emphasised that although commercial litigation requires procedural discipline and speedy adjudication, procedural provisions cannot be interpreted so rigidly that genuine adjudication of disputes becomes impossible. The Bench observed that no serious prejudice would be caused to the defendants by taking the documents on record, particularly when trial had not yet commenced.

The respondents had also argued that certified copies of sale deeds amounted to secondary evidence and therefore could not be permitted without satisfying Section 65 of the Indian Evidence Act. The Court rejected this objection at the present stage and held that questions regarding admissibility and proof can always be considered during trial.

Final Decision of the Court

The Andhra Pradesh High Court allowed the Civil Revision Petition and set aside the order dated 04.02.2026 passed by the Commercial Court. The High Court directed the trial court to take the additional documents on record subject to their admissibility and proof during trial proceedings.

The Court held that the Commercial Court had committed an error in rejecting the application solely on the ground that the documents could have been obtained earlier. It further held that Order XI Rule 1(1)(c)(ii) CPC excludes documents produced in response to a defence raised after filing of the plaint and therefore such documents cannot be rejected merely for delayed disclosure.

Point of Law Settled in the Case

The judgment settles an important principle in commercial litigation that publicly obtainable documents cannot automatically be treated as being within the “power, possession, control or custody” of a party merely because they could have been procured earlier through reasonable efforts. Actual possession and constructive ability to obtain documents are legally distinct concepts.

The Court also clarified that documents required in response to a defence subsequently raised by the opposite party are protected under Order XI Rule 1(1)(c)(ii) CPC and are not hit by the rigours of delayed disclosure under Order XI Rule 1(5).

The ruling further reinforces the broader principle that procedural law under the Commercial Courts Act must be interpreted in a manner that advances substantive justice and fair adjudication rather than defeating genuine claims on technical grounds.

Case Details

Title: M/s. GGR Housing India Private Limited & Ors. v. Navaratna Estates & Anr.

Date of Judgment: 07.05.2026

Case Number: Civil Revision Petition No. 578 of 2026

Neutral Citation: 2026 SCC OnLine AP ___

Court: High Court of Andhra Pradesh

Coram: Hon’ble Sri Justice Ravi Nath Tilhari and Hon’ble Sri Justice Balaji Medamalli

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

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Headnote

The Andhra Pradesh High Court in M/s. GGR Housing India Private Limited & Ors. v. Navaratna Estates & Anr., CRP No.578 of 2026, held that publicly obtainable documents cannot automatically be treated as being within the “power, possession, control or custody” of a party merely because they could have been procured earlier. The Court clarified that documents filed in response to a defence raised after filing of the plaint are protected under Order XI Rule 1(1)(c)(ii) CPC and are not barred by delayed disclosure provisions under Order XI Rule 1(5). Emphasising that procedural law is a handmaid of justice, the Court allowed additional documents to be taken on record in a commercial suit subject to proof and admissibility during trial.

Ahmed Perfumes LLC and Anr. Vs Mohammed Faisal Rehman Sultan Ahmed

In Ahmed Perfumes LLC and Anr. Vs Mohammed Faisal Rehman Sultan Ahmed and Ors., Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025, decided on 7 May 2026 by the , Justice refused interim relief in a passing off action relating to perfume trademarks but granted protection against copyright infringement in artistic label works.

The dispute arose between UAE-based perfume manufacturers using marks such as “Ahmed Al Maghribi”, “Bin Shaikh”, “Oud & Roses”, “Kaaf” and “Marj” and Indian defendants alleged to have adopted similar marks and artistic packaging in India. The plaintiffs claimed transborder reputation and asserted that Indian consumers associated the impugned marks with their products. The defendants disputed the plaintiffs’ goodwill and claimed prior adoption and use in India.

Justice Sharmila U. Deshmukh extensively examined the law relating to transborder reputation and passing off by relying upon judgments including N.R. Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan Inc., and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. The Court held that mere global reputation, website accessibility, social media presence, or isolated overseas purchases by Indian travellers were insufficient to establish goodwill in India. The Court found that the plaintiffs had failed to produce convincing evidence of substantial sales, customer base, advertisements, or market penetration in India.

However, the Court held that certain impugned labels used by the defendants were slavish reproductions of the plaintiffs’ artistic works protected under copyright law. Since the defendants failed to explain adoption of the identical artwork or establish prior ownership in the artistic labels, the Court granted interim injunction restraining copyright infringement while declining interim relief for passing off.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Detailed Analytical Article

Introduction

The decision delivered by the High Court of Judicature at Bombay in Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors., Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025, decided on 7 May 2026, is an important judgment concerning the principles of transborder reputation, passing off, territorial goodwill, and copyright protection in artistic label works. The judgment was delivered by Justice Sharmila U. Deshmukh and extensively discusses the legal standards applicable when foreign entities seek protection of unregistered trademarks in India. 

The dispute arose between UAE-based perfume manufacturers claiming global reputation in marks such as “Ahmed Al Maghribi”, “Bin Shaikh”, “Kaaf”, “Oud & Roses” and “Marj”, and Indian defendants who were allegedly using deceptively similar marks and artistic labels in India. The plaintiffs sought interim injunctions alleging passing off and copyright infringement. The Court, however, drew a clear distinction between trademark goodwill and copyright ownership. While the Court refused interim relief for passing off due to lack of proof of substantial goodwill in India, it granted protection against infringement of artistic label works after finding that some of the impugned labels were slavish reproductions of the plaintiffs’ artistic works.

The judgment is significant because it reiterates that mere worldwide reputation or internet presence is not sufficient to establish transborder reputation in India. At the same time, it clarifies that artistic works incorporated in labels can independently enjoy copyright protection even if trademark rights are disputed.

Factual and Procedural Background

The plaintiffs, Ahmed Perfumes LLC and another entity incorporated in the United Arab Emirates, were engaged in the manufacture and sale of perfumes and fragrance products internationally. They claimed ownership and worldwide goodwill in several perfume brands and label marks including “Ahmed Al Maghribi”, “Ahmed Perfumes”, “Bin Shaikh”, “Kaaf”, “Oud & Roses”, and “Marj”. The plaintiffs asserted that these marks had acquired substantial international recognition through global sales, social media presence, websites, exhibitions, promotional activities, and customer goodwill. 

According to the plaintiffs, their products had entered the Indian market since at least November 2021 through Indian customers purchasing products abroad and bringing them into India. The plaintiffs further claimed that they subsequently entered into distribution arrangements for direct sales in India from July 2024 onwards. They also relied upon domain names, websites, Instagram pages, Facebook pages, LinkedIn accounts, online advertisements, promotional campaigns, and publicity materials to establish spillover reputation in India. 

The defendants were Indian entities and individuals alleged to have adopted deceptively similar marks and artistic labels in relation to perfume products. The plaintiffs alleged that the defendants had dishonestly copied not only their brand names but also sub-brands and artistic packaging. The plaintiffs argued that such conduct amounted to passing off and copyright infringement. 

The defendants opposed the interim application by contending that the plaintiffs had failed to establish actual goodwill or customer base in India. They argued that the plaintiffs did not possess registered trademarks in India and that their evidence merely showed sales abroad to customers who later brought products into India. The defendants also asserted prior adoption and use of certain marks in India and disputed the plaintiffs’ claim of transborder reputation. 

Dispute Before the Court

The principal issue before the Bombay High Court was whether the plaintiffs had established sufficient transborder reputation and goodwill in India to maintain an action for passing off despite being foreign entities without substantial direct business operations in India.

The Court was also required to determine whether the defendants’ use of allegedly similar labels and artwork constituted copyright infringement under Indian copyright law.

The dispute therefore involved two separate but related legal questions. The first concerned trademark passing off based on transborder reputation and spillover goodwill. The second concerned ownership and infringement of artistic works embodied in perfume labels and logos.

Reasoning and Analysis of the Judge

Justice Sharmila U. Deshmukh undertook a detailed examination of Indian and foreign precedents dealing with passing off and transborder reputation. The Court emphasized that in passing off actions involving foreign entities, the claimant must establish not merely global reputation but actual goodwill and customer recognition within India. 

The Court first examined the classic trinity of passing off, namely goodwill, misrepresentation, and damage. Since the plaintiffs were foreign entities and their trademarks were unregistered in India, the Court observed that the plaintiffs were required to establish spillover reputation and goodwill in India before any passing off claim could succeed. 

The Court extensively relied upon the Supreme Court judgment in N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., (1996) 5 SCC 714, where the Supreme Court recognized that even advertisement of a trademark without actual sales could constitute use sufficient to establish transborder reputation. The Bombay High Court noted that Whirlpool represented an early recognition of spillover reputation through advertisements circulating in India. 

The Court also referred to Milmet Oftho Industries and Ors. v. Allergan Inc., (2004) 12 SCC 624, where the Supreme Court held that international reputation and medical literature circulating in India could support passing off claims in pharmaceutical products. The Court noted, however, that pharmaceutical products constitute a special category because doctors and medical professionals regularly rely upon international journals and literature. 

The most significant reliance was placed upon the landmark Supreme Court judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors., (2018) 2 SCC 1. In Prius, the Supreme Court strongly favoured the “territoriality principle” over the “universality principle.” Justice Deshmukh reproduced and analysed the Supreme Court’s reasoning that a claimant must establish actual goodwill and customer recognition within India rather than merely relying upon global reputation. The Court highlighted that mere existence of worldwide reputation is insufficient unless the claimant proves substantial presence of the mark in the Indian market. 

The Court further referred to the UK Supreme Court judgment in Starbucks (HK) Ltd. and Anr. v. British Sky Broadcasting Group Plc and Ors., [2015] UKSC 31, where it was held that mere reputation is insufficient and that a claimant must demonstrate customers within the jurisdiction. Justice Deshmukh emphasized that Indian courts have consistently followed this principle while dealing with foreign trademark owners seeking passing off protection. 

The Court also discussed Athlete’s Foot Marketing Associates Inc. v. Cobra Sports Ltd., [1980] RPC 343, where it was observed that no trader can complain of passing off in a territory where it has no customers or trade relations. 

The Court relied upon the Delhi High Court decision in Bolt Technology OU v. Ujoy Technology Pvt. Ltd. and Anr., 2022 SCC OnLine Del 2208, which summarized the principles flowing from Toyota Prius and clarified that a claimant must show significant goodwill in India and not merely worldwide reputation. 

Another important precedent discussed by the Court was Sumit Vijay and Another v. Major League Baseball Properties Inc., 2026 SCC OnLine Del 2. In that case, the Delhi High Court held that mere accessibility of websites or availability of products on e-commerce platforms does not establish transborder reputation unless there is evidence of substantial Indian customers, viewership, circulation, or purchases within India. Justice Deshmukh expressly agreed with this reasoning and applied it to the present dispute. 

Applying these principles, the Court found serious deficiencies in the plaintiffs’ evidence. The Court observed that most invoices relied upon by the plaintiffs reflected sales made in UAE to customers who subsequently brought products into India. Such sales did not establish that the plaintiffs had customers in India. The Court emphasized that the law distinguishes between customers who purchase goods abroad and customers who purchase goods within India. 

The Court also found that the plaintiffs had failed to produce reliable evidence regarding Indian distributors, circulation of advertisements in India, social media followers from India, targeted Indian promotional campaigns, or substantial sales turnover in India. The Court noted that the promotional expenditure shown for India through Meta and Google advertisements was extremely insignificant and did not support the claim of extensive market penetration. 

The Court therefore concluded that the plaintiffs had failed to establish prima facie goodwill and reputation in India necessary for a passing off action. The Court held that there were no genuine documented local sales, no substantial advertisements targeted at Indian consumers, and no convincing evidence showing that the plaintiffs’ marks had permeated the Indian market. 

However, on the issue of copyright infringement, the Court reached a different conclusion. The plaintiffs had specifically pleaded that certain artistic labels and logos were conceived and designed in-house in 2015 and that copyright protection extended to India through the International Copyright Order, 1999 because UAE is a WTO Convention country. 

The Court found that the defendants had failed to explain adoption of identical artistic labels and had not produced material showing prior authorship or ownership of the artwork. The Court observed that the impugned labels were “slavish reproductions” of the plaintiffs’ artistic works. Accordingly, the Court held that the plaintiffs had established a prima facie case for copyright infringement. 

Final Decision of the Court

The Bombay High Court refused interim relief in respect of passing off and trademark claims after holding that the plaintiffs had failed to establish sufficient transborder reputation and goodwill in India.

However, the Court granted interim injunction against copyright infringement and restrained the defendants from reproducing, printing, publishing, or using the plaintiffs’ artistic label works and logos or any colourable imitation thereof. The interim application was therefore partly allowed only to the extent of copyright protection. 

Point of Law Settled in the Case

The judgment reinforces the territoriality principle in trademark passing off actions involving foreign entities. It clarifies that worldwide reputation, internet accessibility, social media presence, and isolated overseas sales to Indian customers are insufficient to establish transborder goodwill in India. A foreign claimant must demonstrate substantial customer recognition, market penetration, advertisements, or commercial presence within India. The judgment also clarifies that copyright in artistic label works can independently receive protection even where trademark passing off claims fail due to lack of territorial goodwill.

Case Details

Title of the Case: Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors.

Date of Judgment: 7 May 2026

Case Number: Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025

Neutral Citation: Not Available

Court: High Court of Judicature at Bombay

Hon’ble Judge: Justice Sharmila U. Deshmukh

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

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Headnote

The Bombay High Court in Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors. held that foreign trademark owners seeking passing off protection in India must establish substantial goodwill and customer recognition within India and cannot rely merely upon worldwide reputation, internet accessibility, social media presence, or overseas sales to Indian travellers. Applying the territoriality principle laid down in Toyota Prius, the Court refused interim injunction in passing off but granted copyright protection against slavish reproduction of artistic label works and logos.

Ars Steels and Alloy International Private Limited Vs The Controller of Patents and Designs

In Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors., IPDAID/43/2024, Neutral Citation: 2026:CHC-OS:160, decided on 7 May 2026, the , Intellectual Property Rights Division, presided over by , set aside an order of the Deputy Controller of Patents and Designs which had refused cancellation of a registered design relating to a “double XX-Rib” construction rod design in favour of Souvik Steels Private Limited.

The dispute arose after the respondent alleged infringement of its registered design for TMT bars, following which the appellant sought cancellation of the registration under Section 19 of the Designs Act, 2000 on grounds of prior publication, lack of novelty and originality, and functionality. The appellant relied on various publications, invoices, and market materials allegedly showing that similar X-Rib and XX-Rib designs had existed in the market since 2002-2003.

Justice Ravi Krishan Kapur held that the Controller had failed to properly evaluate the documentary evidence relating to prior publication and market availability of similar designs and had incorrectly confined the enquiry to ocular impression without adequately examining novelty, originality, prior use, and the “state of the art.” The Court observed that the impugned order ignored relevant precedents and failed to apply the correct legal tests under the Designs Act.

Accordingly, the Court set aside the impugned order and remanded the matter to a different officer for fresh adjudication after granting both parties an opportunity of hearing, directing completion of the exercise within three months.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Detailed Analytical Article

Introduction

The judgment delivered by the High Court at Calcutta in Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors., IPDAID/43/2024, Neutral Citation: 2026:CHC-OS:160, decided on 7 May 2026, is an important decision dealing with the concepts of novelty, originality, prior publication, and functionality under the Designs Act, 2000. The judgment was delivered by Justice Ravi Krishan Kapur sitting in the Intellectual Property Rights Division of the High Court. 

The case revolved around the validity of a registered design relating to TMT construction rods bearing a “double XX-Rib” surface pattern. The dispute raised a common but significant issue in industrial design law: whether a design which is already available in the market, or substantially similar to existing designs, can continue to enjoy statutory monopoly protection merely because it has been registered. The Court examined the legal tests governing prior publication and originality and clarified that the Controller of Designs must conduct a meaningful enquiry into existing market materials and prior art before upholding a registered design.

The judgment is particularly relevant for industries dealing with construction materials, engineering products, and commercially manufactured goods where slight variations in patterns and configurations are often claimed as proprietary designs. The decision also reinforces the principle that registration under the Designs Act cannot be used to monopolise common trade variants already available in the public domain.

Factual and Procedural Background

The appellant, Ars Steels and Alloy International Private Limited, and the private respondent, Souvik Steels Private Limited, were both engaged in the manufacture and sale of TMT bars and construction rods. On 6 November 2013, the respondent obtained registration of a design under Class 25-01 in respect of construction rods having a “double XX-Rib” pattern on the surface of the rods. 

In early 2016, the respondent issued a legal notice to the appellant alleging infringement of the registered design. The respondent also instituted a design infringement suit before the District Court at Bengaluru. In response, the appellant filed an application under Section 19 of the Designs Act, 2000 seeking cancellation of the registered design. The appellant challenged the registration on several grounds, namely that the design had been previously registered, that it had already been published prior to registration, that it lacked novelty and originality, and that the design was merely functional in nature and therefore incapable of protection under the Designs Act. 

The Deputy Controller of Patents and Designs rejected the cancellation application by an order dated 10 April 2023. The Controller concluded that there was no prior publication of the impugned design and held that the design was not merely functional but possessed visual appeal capable of design protection. The Controller therefore upheld the registration. Aggrieved by this order, the appellant approached the Calcutta High Court under Section 19(2) of the Designs Act. 

Dispute Before the Court

The principal controversy before the High Court was whether the registered “XX-Rib” design possessed sufficient novelty and originality to deserve protection under the Designs Act, 2000. The appellant contended that similar X-Rib and XX-Rib designs had already existed in the market long before the registration date and therefore the registered design was neither new nor original.

The appellant relied on several documents including publications in the Indian Concrete Journal of 2004, Business Line dated 8 September 2004, and The Hindu dated 18 June 2011. The appellant also relied upon invoices dating back to March and April 2003 to show commercial sale of X-Rib TMT rods before the respondent’s registration. Further evidence was produced to demonstrate that XX-Rib designs had already been used in the market by different manufacturers since 2012 and 2013. 

The respondent, however, argued that the impugned design was distinct and visually identifiable and that the appellant had failed to establish any prior publication of the exact same design. The respondent also contended that a design could possess both functional and aesthetic features and still qualify for protection under the Designs Act.

Reasoning and Analysis of the Judge

Justice Ravi Krishan Kapur undertook a detailed examination of Sections 2(d), 4, and 19 of the Designs Act, 2000. Section 2(d) defines “design” as features of shape, configuration, pattern, ornament, or composition applied to an article which appeal solely to the eye, while excluding mere mechanical devices or purely functional features. Section 4 prohibits registration of designs which are not new or original or which have already been disclosed to the public prior to filing. Section 19 provides grounds for cancellation of registered designs including prior publication and absence of novelty. 

The Court observed that the Deputy Controller had failed to properly analyse the evidence produced by the appellant regarding prior publication and prior market use. The judgment emphasized that when allegations of prior publication are raised, the authority deciding the matter must carefully examine whether similar designs were already available in the market and whether the registered design truly possessed any distinctiveness.

The Court relied heavily upon the decision in Gopal Glass Works Limited v. Assistant Controller of Patents and Designs and Ors., 2005 SCC OnLine Cal 413, where it was held that prior disclosure through trade catalogues, journals, magazines, brochures, or photographs depicting the same design on the same article could destroy novelty. The High Court reiterated that prior publication need not be in the form of identical replication; even clear disclosure sufficient to convey the design to an informed reader may invalidate novelty. 

The Court also referred to the landmark Supreme Court judgment in Bharat Tubes Limited v. Gopal Glass Works Ltd., (2008) 10 SCC 657. In that case, the Supreme Court explained that the objective of the Designs Act is to reward genuine innovation and originality while preventing monopoly over known designs already existing in trade. Justice Kapur extracted extensive observations from the Supreme Court explaining that the Act protects visual appearance rather than functional utility and that designs already disclosed to the public cannot receive protection. 

The Court further discussed SRMB Srijan Limited v. Triveni Industries Pvt. Ltd. and Anr., 2011 SCC OnLine Cal 1935, a case concerning X-Rib TMT rod designs. In that decision, it had already been held that the X-Rib design lacked novelty and originality because similar designs had existed in the market since 2001-2002. Justice Kapur noted that the Controller had selectively referred to this precedent without meaningfully considering its implications for the present dispute. 

The Court criticised the Controller for focusing only on “ocular impression” without conducting the broader legal enquiry required under the Designs Act. According to the Court, novelty and originality are separate legal concepts requiring examination of the state of the art, prior trade variants, and market availability. The judgment stressed that even small changes to an old design do not necessarily create a new or original design if the essential visual character remains common in trade.

The Court referred to Phillips v. Harboro Rubber Company (1920) 37 RPC 233 for the proposition that introduction of ordinary trade variants into an old design does not make it original. The Court also relied upon Western Engineering Company v. Paul Engineering Company, AIR 1968 Cal 109, Anuradha Doval v. Controller of Patents and Designs, 2017 (71) PTC 288 (Cal), Shree Vari Multiplast India Pvt. Ltd. v. Deputy Controller of Patents & Designs, 2018 SCC OnLine Cal 5820, and Jayson Industries v. Crown Craft (India) Pvt. Ltd., 2023 SCC OnLine Del 3750 to reinforce the requirement of comparing the impugned design with prior art and evaluating whether it creates a genuinely different overall visual impression. 

On the issue of functionality, the Court accepted the legal proposition that a design can possess both functional and aesthetic elements and still qualify for registration. For this proposition, the Court referred to Cow (P.B.) & Co. Ltd. v. Cannon Rubber Manufacture Ltd., 1959 RPC 347. However, the Court held that the Controller had failed to adequately analyse whether the design was dictated entirely by functionality or whether any genuine visual creativity existed. 

Ultimately, the Court concluded that the impugned order suffered from serious infirmities because it ignored documentary evidence relating to prior use and prior publication and failed to apply the correct legal tests governing novelty and originality.

Final Decision of the Court

The Calcutta High Court set aside the order dated 10 April 2023 passed by the Deputy Controller of Patents and Designs. The Court remanded the matter for fresh consideration by a different officer and directed that both parties be given an opportunity of hearing. The Court further directed that the reconsideration process be completed within three months from communication of the order. The Court clarified that its observations on merits were tentative and would not bind the authority conducting the fresh adjudication. Accordingly, the appeal was allowed. 

Point of Law Settled in the Case

The judgment settles several important principles relating to industrial design protection under the Designs Act, 2000. The Court clarified that novelty and originality cannot be assessed merely through superficial visual comparison and require examination of prior art, market availability, and trade usage. Prior publication includes publications in journals, newspapers, catalogues, and commercial documents capable of conveying the design to an informed reader. The decision further reiterates that ordinary trade variants or slight modifications of known designs do not qualify as new or original designs. The judgment also establishes that the Controller of Designs must conduct a detailed and reasoned enquiry into documentary evidence relating to prior publication and cannot ignore relevant precedents dealing with similar designs.

Case Details

Title of the Case: Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors.

Date of Judgment: 7 May 2026

Case Number: IPDAID/43/2024

Neutral Citation: 2026:CHC-OS:160

Court: High Court at Calcutta, Intellectual Property Rights Division

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

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Headnote

The Calcutta High Court in Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors. held that while determining validity of a registered design under Sections 4 and 19 of the Designs Act, 2000, the Controller must conduct a detailed enquiry into prior publication, market availability, originality, and novelty of the impugned design. The Court ruled that mere ocular impression is insufficient for determining novelty and that ordinary trade variants or previously published designs cannot receive statutory protection. The Court accordingly set aside the Controller’s order upholding registration of an XX-Rib TMT rod design and remanded the matter for fresh adjudication.

Toyota Jidosha Kabushiki Kaisha Vs. Tech Square Engineering Pvt. Ltd.

Toyota Jidosha Kabushiki Kaisha Vs. Tech Square Engineering Pvt. Ltd. & Anr., 04.05.2026: LPA 176/2023:2026:DHC:3762-DB: Hon'ble Justice C. Hari Shankar and Justice Om Prakash Shukla

The Court dealt with the issue of trans-border reputation and protection of globally reputed trademarks in India under the Trade Marks Act, 1999. The dispute arose after Toyota challenged the registration of the trademark “ALPHARD” obtained by Tech Square Engineering Pvt. Ltd. in Classes 9, 12 and 27 on a “proposed to be used” basis in 2015.

Toyota contended that it had adopted the ALPHARD mark globally in 1986 and commercially launched luxury vehicles under the mark in 2002, and that the mark had acquired substantial worldwide goodwill including spill-over reputation in India through imports, online visibility, automobile forums, media publications and niche consumer recognition. The Single Judge had earlier dismissed Toyota’s rectification petitions holding that Toyota failed to establish sufficient goodwill or commercial reputation of the ALPHARD mark within India prior to the respondent’s adoption.

Allowing the appeals, the Division Bench held that the Single Judge adopted an unduly narrow approach in assessing trans-border reputation and goodwill in the context of luxury automobiles. The Court observed that for niche luxury products, reputation cannot be judged solely on mass commercial sales or formal market launches.

It held that unsolicited imports of ALPHARD vehicles into India by private individuals and automobile enthusiasts themselves constituted strong evidence of consumer awareness, recognition and demand for the mark in India. The Bench distinguished the Supreme Court decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and clarified that the principle of territoriality does not negate protection of trans-border reputation where sufficient recognition among the relevant section of Indian consumers is established. The Court emphasized that Section 11 of the Trade Marks Act protects well-known trademarks even in the absence of actual physical sales in India, provided the mark enjoys substantial recognition in the relevant consumer segment.

The Court concluded that Toyota had successfully demonstrated spill-over reputation and goodwill of the ALPHARD mark in India prior to the respondent’s 2015 application and that the respondent’s adoption of an identical mark for allied goods could not be sustained. Consequently, the Division Bench set aside the judgment of the Single Judge and held that the respondent’s registrations were liable to be removed from the Trade Marks Register under Section 57 of the Trade Marks Act, 1999.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

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Introduction:

The decision rendered by the Division Bench of the High Court of Delhi in Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt. Ltd. & Anr. marks an important development in Indian trademark jurisprudence relating to trans-border reputation, well-known trademarks, territoriality principle, and protection of global brands in India. The judgment examines whether a globally recognized trademark can obtain protection in India even in the absence of formal commercial launch or direct sales within the Indian market. The Court was required to determine whether the trademark “ALPHARD”, used globally by Toyota for its luxury vehicles, had acquired sufficient reputation and goodwill in India before the respondent secured trademark registrations in 2015.

The judgment assumes significance because it clarifies the extent to which international reputation, digital visibility, niche consumer awareness, and independent imports into India can establish trademark goodwill within India under the Trade Marks Act, 1999. The Court also revisited and distinguished the landmark Supreme Court decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. reported in (2018) 2 SCC 1, which has long governed the doctrine of territoriality and spill-over reputation in India.

Factual and Procedural Background:

The appellant, Toyota Jidosha Kabushiki Kaisha, is one of the world’s leading automobile manufacturers incorporated in Japan. Toyota adopted the trademark “ALPHARD” in the year 1986 and commercially launched luxury multi-purpose vehicles under the said mark in 2002. According to Toyota, the ALPHARD vehicle acquired substantial worldwide reputation and goodwill because of extensive sales, promotions, advertisements, global registrations, and consumer recognition across several jurisdictions.

Toyota asserted before the Court that although the ALPHARD vehicle was not formally launched in India, the vehicle had nevertheless entered the Indian market through direct imports by private individuals, automobile enthusiasts, and luxury vehicle consumers since at least 2008. Toyota relied upon online listings, automobile blogs, automotive discussions, classified advertisements, media reports, and import data to show that Indian consumers were aware of the ALPHARD brand much prior to 2015.

The dispute arose after Tech Square Engineering Pvt. Ltd. applied for and secured registrations of the trademark “ALPHARD” in Classes 9, 12 and 27 under Registration Nos. 3093216, 3093218 and 3093219 in 2015 on a “proposed to be used” basis. Toyota thereafter initiated rectification proceedings under Section 57 of the Trade Marks Act, 1999 seeking removal of the impugned marks from the Trade Marks Register on the ground that the registrations violated Sections 11(1), 11(2), and 11(3) of the Act and amounted to dishonest adoption of a globally reputed trademark.

The rectification petitions were originally filed before the Intellectual Property Appellate Board (IPAB). After abolition of the IPAB, the matters stood transferred to the Delhi High Court and were adjudicated by the learned Single Judge in C.O. (COMM.IPD-TM) 586/2022. By judgment dated 03.02.2023, the learned Single Judge dismissed Toyota’s rectification petitions holding that Toyota failed to establish sufficient goodwill, use, or reputation of the ALPHARD mark in India prior to the respondent’s adoption in 2015.

Aggrieved by the dismissal, Toyota filed Letters Patent Appeals being LPA 176/2023, LPA 177/2023 and LPA 178/2023 before the Division Bench of the Delhi High Court.

Nature of the Dispute

The central dispute before the Division Bench concerned whether Toyota’s ALPHARD mark qualified as an “earlier trade mark” and a “well-known trademark” in India under Section 11 of the Trade Marks Act, 1999 despite absence of formal commercial launch in India before 2015.

Toyota argued that its prior worldwide adoption, extensive global reputation, trans-border goodwill, digital presence, automobile publications, and independent imports into India sufficiently established consumer recognition and goodwill in India. Toyota further contended that the respondent dishonestly adopted an identical mark for allied goods with knowledge of Toyota’s internationally reputed mark.

On the other hand, Tech Square Engineering contended that Toyota never commercially sold or advertised ALPHARD vehicles in India before 2015 and that mere international reputation was insufficient to claim exclusivity within India. The respondent relied heavily upon the territoriality principle recognized in Prius and argued that Toyota had itself filed trademark applications in India in 2017 on a “proposed to be used” basis, thereby admitting absence of prior use in India.

The respondent further argued that it was the bona fide adopter and registered proprietor of the ALPHARD mark in India since 2015 and had continuously used the mark for automobile accessories and related goods.

Reasoning and Analysis of the Court:

The Division Bench analyzed the concept of rectification under Section 57 and observed that a trademark can be removed from the Register if it was wrongly registered or wrongly remains on the Register.

The Court referred extensively to the judgment in Sumit Vijay and Another Vs. Major League Baseball Properties Inc. and Another, 2026 SCC OnLine Del 2, and BPI Sports LLC v. Saurabh Gulati & Ors., 2023 SCC OnLine Del 2424, while explaining the scope of goodwill and the relationship between Sections 9 and 11 of the Trade Marks Act.

The Court explained that under Section 11(1) and 11(2), a mark may be refused registration if it conflicts with an “earlier trade mark”. The expression “earlier trade mark” includes not only prior registrations but also well-known trademarks entitled to protection in India.

The Court then examined Sections 11(6) to 11(10) of the Trade Marks Act dealing with well-known trademarks. It emphasized that Indian law does not require actual commercial use in India as a mandatory condition for recognizing a trademark as well-known. The Court highlighted Section 11(9), which specifically provides that the Registrar shall not require the trademark to have been used in India for determining whether it is well-known.

The Division Bench carefully distinguished the Supreme Court judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1. The Court clarified that Prius did not reject the doctrine of trans-border reputation. Instead, Prius merely held on facts that Toyota had failed to establish sufficient spill-over reputation of the PRIUS mark in India at the relevant time.

The Court observed that the present case stood on a materially different footing because Toyota had produced substantial evidence demonstrating recognition of the ALPHARD mark among Indian consumers in the luxury automobile segment. The evidence included import data, online automobile portals, classified advertisements, blogs, automotive discussions, second-hand vehicle listings, media reports, and references to use of ALPHARD vehicles by prominent Indian personalities.

The Division Bench laid particular emphasis on unsolicited imports of ALPHARD vehicles into India by private individuals. According to the Court, such independent imports were not accidental or insignificant but constituted strong evidence of consumer awareness and brand recognition in India. The Court observed that consumers do not voluntarily import expensive luxury vehicles unless the brand already enjoys substantial goodwill and recognition.

The Court held that for luxury and niche products, the test of reputation cannot be based on mass-market sales alone. Reputation in such markets must be judged from the perspective of the relevant section of consumers who deal with such specialized goods.

The Court relied upon the Supreme Court observations in Prius which recognized that a claimant need not establish existence of a full-fledged market in India and that subtle market presence may suffice for establishing spill-over reputation.

The Court further observed that the Single Judge adopted an excessively restrictive approach by insisting on direct commercial sales and formal launch within India. According to the Division Bench, modern brand recognition is often created through digital visibility, online discussions, international travel, automobile journalism, and independent imports rather than traditional sales channels alone.

The Court also examined the concept of territoriality and clarified that Indian trademark law balances territoriality with protection of trans-border reputation. The Bench observed that where a mark enjoys substantial recognition among the relevant consumer base in India, the proprietor is entitled to protection even in absence of formal domestic sales.

The Division Bench found that Toyota had successfully demonstrated spill-over reputation and goodwill of the ALPHARD mark in India prior to the respondent’s trademark applications dated 05.11.2015. The Court also noted that the respondent had adopted an identical mark for allied goods and that such adoption could not be treated as entirely bona fide in the circumstances of the case.

Final Decision of the Court

The Delhi High Court allowed Toyota’s appeals and set aside the judgment of the learned Single Judge dated 03.02.2023. The Division Bench held that Toyota had successfully established trans-border reputation and goodwill of the ALPHARD trademark within India prior to the respondent’s adoption in 2015.

The Court held that the respondent’s registrations were liable to be removed from the Trade Marks Register under Section 57 of the Trade Marks Act, 1999. The Court concluded that the ALPHARD mark qualified for protection as a well-known mark under Indian law and that the respondent’s registrations could not be permitted to remain on the Register.

Point of Law Settled in the Case

The judgment settles an important point of trademark law in India relating to trans-border reputation and well-known marks. The Court clarified that actual commercial launch or direct sales in India are not indispensable requirements for establishing trademark goodwill in India. Recognition among the relevant section of Indian consumers, supported by evidence such as imports, digital visibility, media publications, online discussions, and niche market awareness, can sufficiently establish trans-border reputation under Sections 11(6) to 11(10) of the Trade Marks Act, 1999.

The judgment also clarifies that the Supreme Court ruling in Prius does not reject protection of foreign trademarks lacking direct Indian sales. Instead, Prius merely requires proof of substantial recognition and spill-over reputation within India. The Delhi High Court therefore reaffirmed that Indian trademark law protects globally reputed marks where sufficient consumer recognition within India is established.

Case Title: Toyota Jidosha Kabushiki Kaisha VsTech Square Engineering Pvt. Ltd. & Anr.

Date of Judgment: 04.05.2026

Case Numbers: LPA 176/2023, LPA 177/2023 and LPA 178/2023

Neutral Citation: 2026:DHC:3762-DB

Court: High Court of Delhi

Coram: 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

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Delhi High Court Clarifies Law on Trans-Border Reputation in Toyota Trademark Dispute

Toyota vs Tech Square: Landmark Delhi High Court Ruling on Well-Known Trademarks

ALPHARD Trademark Case: Delhi High Court Protects Global Brand Reputation in India

Delhi High Court on Spill-Over Reputation and Foreign Trademark Rights in India

Toyota Trademark Victory: Important Judgment on Section 11 and Section 57 of Trade Marks Act

Delhi High Court Recognizes Trans-Border Reputation of Toyota ALPHARD Mark

Landmark Trademark Rectification Judgment by Delhi High Court in Toyota ALPHARD Dispute

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Headnote

The Delhi High Court in Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt. Ltd. held that actual commercial launch or direct sales in India are not mandatory for establishing goodwill and trans-border reputation of a trademark in India. The Court ruled that recognition among the relevant Indian consumer segment through imports, digital visibility, media coverage, and niche market awareness is sufficient to confer protection upon a well-known trademark under Sections 11 and 57 of the Trade Marks Act, 1999. Distinguishing the Supreme Court judgment in Prius, the Court held that Toyota’s ALPHARD mark had acquired substantial goodwill in India prior to the respondent’s 2015 registrations and ordered rectification of the impugned trademarks from the Register.

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Rajkumar Aggarwal, Proprietor of Petro Product Vs Nand Kishore Bhimsariya

Rajkumar Aggarwal, Proprietor of Petro Product Vs Nand Kishore Bhimsariya:05.05.2026: IPDCR/12/2022: 2026:CHC-OS:158:CalHC:Hon’ble Justice Arindam Mukherjee

In this Judgement , the Calcutta High Court set aside the copyright registration granted to Respondent No.1, holding that non-compliance with mandatory provisions of Rule 70 rendered the registration unsustainable.

Facts & Dispute:

The Petitioner, Rajkumar Aggarwal, proprietor of M/s. Petro Product, had his artistic work registered as copyright way back in 2009. Respondent No.1, Nand Kishore Bhimsariya, later applied for registration of a similar artistic work. The Petitioner alleged that Respondent No.1 failed to comply with Rule 70(6) and the mandatory notice requirement under Rule 70(9) of the Copyright Rules, 2013, despite being aware of the Petitioner’s prior registration. Consequently, the Petitioner could not file objections within the 30-day period, and the Registrar of Copyrights granted registration without due verification.

Reasoning of the Court:

Court held that Rules 70(6), 70(9), 70(10), and 70(11) of the 2013 Rules have statutory force and must be mandatorily complied with. The Court observed that Rule 70(9) requires the applicant to give notice to every person who claims interest in or disputes the copyright. Failure to do so prevents affected parties from filing timely objections.

The Court further clarified that even in the absence of objections, Rule 70(10) and 70(11) impose an independent duty on the Registrar to satisfy himself regarding the correctness of the particulars in the application, which may include an inquiry. 

The Registrar’s failure to check existing registrations and ensure procedural compliance amounted to a jurisdictional error. Relying on principles from Nazir Ahmed v. Emperor and other precedents, the Court held that when a statute prescribes a particular manner, it must be followed or not done at all.

Decision:

The Court allowed the rectification application, set aside the copyright registration granted in favour of Respondent No.1, directed its removal from the Register, and rejected the application for non-compliance with mandatory provisions. 

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

#CopyrightRegistration, #CopyrightRectification, #Rule70CopyrightRules, #CalcuttaHighCourt, #IPRJudgment, #IntellectualPropertyLaw, #CopyrightDispute, #RegistrarOfCopyrights, #IPLitigation, #ArtisticWorkCopyright, #LegalNewsIndia, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor

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Mandatory notice requirement under Rule 70(9) of Copyright Rules 2013

Introduction:

The Calcutta High Court has clarified the mandatory obligations of both the person applying for copyright and the Registrar of Copyrights. The decision protects the interests of existing copyright holders and ensures transparency and fairness in the registration process under the Copyright Act, 1957 and the Copyright Rules, 2013.

Factual and Procedural Background:

Rajkumar Aggarwal, proprietor of. Petro Product , had obtained copyright registration for his artistic work as far back as 2009. In the year 2022, Nand Kishore Bhimsariya applied for registration of copyright for a similar artistic work. The Registrar of Copyrights granted the registration to Bhimsariya. Feeling that his prior rights were being affected and that proper procedure was not followed, Aggarwal filed a rectification application.

Dispute:

The main dispute centered on whether the copyright registration granted in favour of Nand Kishore Bhimsariya was valid? 

Contention of Parties:

Rajkumar Aggarwal argued that Bhimsariya was fully aware of his earlier 2009 copyright registration, yet he did not give him any notice of the new application as required by law. Because of this, Aggarwal could not file objections within the 30-day period. He further contended that the Registrar failed to properly examine the application and overlooked the existing registration. 

The Registrar of Copyrights maintained that once no objection was received within thirty days, it was bound to grant the registration. Bhimsariya did not appear before the Court despite notice.

Reasoning and Analysis of the Court:

Court analysed the relevant provisions of the Copyright Rules, 2013 in detail. He pointed out that Rule 70(6) and Rule 70(9) impose mandatory requirements on the applicant. Under Rule 70(9), the person applying for registration must give notice of his application to every person who claims or has any interest in the subject matter of the copyright or disputes the rights of the applicant. 

The Court explained that this notice requirement is crucial because it gives the affected party a real opportunity to object within thirty days.

The Court further examined Rule 70(10) and Rule 70(11). Even if no objection is received, the Registrar must be satisfied about the correctness of the particulars given in the application. This satisfaction is an independent duty. If needed, the Registrar can hold an inquiry. In this case, the Registrar did not check the existing records and therefore failed to notice the petitioner’s prior registration.

Court emphasised that these Rules have the force of law. Court  relied upon the Supreme Court judgment in Pepsu Road Transport Corporation, Patiala Vs. Mandal Singh & Ors., reported in 2011 (11) SCC 702, which held that rules framed under a statute carry a “statutory flavour” and are binding on all.

The Judge also applied the well-settled principle from the Privy Council case Nazir Ahmed Versus Emperor, reported as 1936 Privy Council 253. This principle, followed by the Supreme Court in Ramchandra Keshav Adke & Ors. vs. Govind Joti Chavare & Ors., reported in 1975 (1) SCC 559, states that if a statute or rule requires a thing to be done in a particular manner, it must be done in that manner or not at all. The Court held that non-compliance with the notice requirement under Rule 70(9) by the applicant and the failure of the Registrar to exercise due satisfaction under Rules 70(10) and 70(11) constituted a serious procedural irregularity that went to the root of the registration.

The Court noted that the respondent himself had admitted in his written reply that there was an error on the part of the Registrar in not putting the petitioner on notice. This admission further strengthened the petitioner’s case. The Court described the procedural lapses as creating a jurisdictional error that made the registration unsustainable.

Final Decision of Court and Point of Law Settled:

The Calcutta High Court allowed the rectification application. It set aside the copyright registration granted to Nand Kishore Bhimsariya, directed the Registrar to remove the particulars from the register and database, and rejected the original application for registration. However, the Court granted liberty to Bhimsariya to file a fresh application after complying with all statutory requirements.

This judgment settles an important point of law: Strict compliance with the notice requirement under Rule 70(9) and the Registrar’s independent duty of satisfaction under Rules 70(10) and 70(11) of the Copyright Rules, 2013 are mandatory. Failure to observe these provisions can result in the cancellation of the copyright registration. The ruling reinforces that procedural safeguards are essential to protect prior rights holders and maintain the credibility of the copyright registration system.

Case Title: Rajkumar Aggarwal, Proprietor of  Petro Product Vs. Nand Kishore Bhimsariya And Anr.

Date of Order: 5th May, 2026

Case Number: IPDCR/12/2022

Neutral Citation: 2026:CHC-05:158

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

Name of Hon'ble Judge: Justice Arindam Mukherjee

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 SEO Titles for Legal Journal:

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Headnote:

Calcutta High Court sets aside copyright registration due to non-compliance with mandatory notice requirement under Rule 70(9) and Registrar’s failure to satisfy itself under Rules 70(10) & 70(11) of Copyright Rules, 2013 – Strict adherence to procedural safeguards reiterated.

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Sun Pharma Laboratories Limited Vs. United Biotech Private Limited.

Sun Pharma Laboratories Limited Vs. United Biotech Private Limited. : 04.05.2026: Commercial IP Suit (L) No. 19268 of 2025:2026:BHC-OS:11436 :BombHC: Hon'ble Justice Sharmila U. Deshmukh

Brief Facts & Dispute:

Sun Pharma claimed exclusive rights in the trademark "OCTRIDE" (used for Octreotide Acetate injections since 1998) and sought injunction against United Biotech’s use of the similar mark "OTIDE" for the identical drug. Sun Pharma alleged infringement and passing off, asserting long use, substantial sales, and goodwill. United Biotech defended its adoption of "OTIDE" since 1999, claiming honest adoption derived from the International Non-Proprietary Name (INN) of the molecule Octreotide, continuous use, registration of its mark, and co-existence in the market without confusion. The company argued delay, acquiescence, and lack of prima facie case by Sun Pharma.

Reasoning of the Court:

The court held that both parties hold registrations, but Sun Pharma could not challenge United Biotech’s registration as ex-facie illegal or fraudulent. The Court found phonetic similarity between "OCTRIDE" and "OTIDE" but noted both marks derive from the generic molecule name. On passing off, the Court accepted Sun Pharma’s goodwill based on sales data and drug approvals but observed United Biotech’s open use since at least 2006. Plaintiff is the prior user. The Judge ruled that Sun Pharma established a strong prima facie case of likelihood of confusion. Injunction granted.

Decision: The Court dismissed Sun Pharma’s application for ad-interim injunction and vacated the earlier ex-parte ad-interim order. The suit will proceed to trial.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

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Introduction

In this ruling on trademark protection in the pharmaceutical sector, the Bombay High Court has granted to grant an interim injunction to Sun Pharma against United Biotech’s use of a similar mark for the same medicine. The decision highlights the delicate balance courts must strike between protecting established brand goodwill and respecting long market use, especially when marks are derived from generic drug names. It also underscores the high threshold required to challenge a registered trademark at the interim stage.

Factual and Procedural Background

Sun Pharma Laboratories Limited, a major pharmaceutical company, claimed rights over the trademark “OCTRIDE” used for injections containing Octreotide Acetate, a drug prescribed for serious conditions like acromegaly and certain tumors. The company traced its rights back to the late 1990s through predecessors and asserted substantial sales and reputation across India and globally.

United Biotech Private Limited, another pharmaceutical manufacturer with exports to several countries, had been selling the same drug under the mark “OTIDE” for many years. Both marks are derived from the International Non-Proprietary Name (INN) of the active ingredient “Octreotide.” Sun Pharma filed a commercial intellectual property suit seeking injunction against United Biotech for trademark infringement and passing off. An ex-parte ad-interim injunction was initially granted in July 2025, which United Biotech later challenged by filing an application to vacate it.

Dispute

The core dispute centered on whether Sun Pharma could stop United Biotech from using “OTIDE.” Sun Pharma argued phonetic and visual similarity between “OCTRIDE” and “OTIDE” would cause confusion among doctors, pharmacists, and patients. It claimed prior adoption, registration, and extensive goodwill. United Biotech countered that it had honestly adopted and used its mark since 1999, obtained registration, and both marks had co-existed in the market for years without actual confusion. The defendant also raised issues of delay by Sun Pharma.

Reasoning and Analysis of the Judge

The court carefully examined the rival marks, their registrations, market use, and applicable legal principles. The judge noted that both parties hold trademark registrations, creating a situation where neither can easily claim exclusive rights against the other without strong grounds.

On infringement, the court held that Sun Pharma failed to demonstrate that United Biotech’s registration was ex-facie illegal or fraudulent. The judge referred to the high threshold laid down by the Full Bench of the Bombay High Court in Lupin Limited vs. Johnson and Johnson MANU/MH/3536/2015. Since both marks derive from the same generic molecule name, the registration could not be treated as shocking the conscience of the court.

For passing off, the court applied the classic trinity test of goodwill, misrepresentation, and damage. While acknowledging Sun Pharma’s sales and reputation, the judge found that United Biotech had been using its mark subsequent to Plaintiff. The court emphasized that in pharmaceutical cases, the threshold for confusion is lower due to public health concerns.

The judge discussed several important precedents, including Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. on heightened scrutiny in pharma trademarks, Wander Ltd. vs. Antox India Pvt. Ltd 1990 Supp SCC 727]. on balance of convenience, and S. Syed Mohideen vs. P. Sulochana Bai ((2016) 2 SCC 683) on the irrelevance of fraudulent intent in passing off.

Final Decision of the Court

The Bombay High Court confirmed the interim injunction granted earlier order dated 29.07.2025.

Case Title: Sun Pharma Laboratories Limited v. United Biotech Private Limited

Date of Order: 4 May 2026

Case Number: Interim Application (L) No. 19536 of 2025 in Commercial IP Suit (L) No. 19268 of 2025

Neutral Citation: 2026:BHC-OS:11436

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

Name of Hon'ble Judge: Justice Sharmila U. Deshmukh

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

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Headnote:

Bombay High Court granted ex-parte interim injunction in trademark suit by Sun Pharma against United Biotech; holds no strong prima facie case for infringement against registered mark and insufficient grounds for passing off despite phonetic similarity where marks derive from generic INN name and have co-existed in market for years.

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Syngenta Participations AG Vs. Controller of Patents

Syngenta Participations AG Vs. Controller of Patents & Designs:04.05.2026:C.A.(COMM.IPD-PAT) 49/2023:2026:DHC:3766:Hon’ble Mr. Justice Tushar Rao Gedela

Brief Facts & Dispute:

Syngenta filed an Indian patent application for a new crystalline monohydrate polymorph of a known agrochemical fungicide compound (formula I). The Controller of Patents refused the application under Section 2(1)(ja) (lack of inventive step) and Section 3(d) of the Patents Act, 1970, primarily holding that the improved thermal stability of the monohydrate form was an inherent property of polymorphs and did not demonstrate enhanced efficacy over the known anhydrous form. Syngenta challenged the order, arguing that polymorphism is unpredictable, and the company had provided specific experimental data (including DSC studies, phase diagrams, and formulation stability tests) showing superior stability in suspension concentrate (SC) formulations, which prevents unwanted crystal growth and potential blockages in agricultural spray equipment, leading to better performance and reduced phytotoxicity.

Reasoning of the Court:

Justice Tushar Rao Gedela extensively reviewed scientific literature on polymorphism, emphasising its unpredictable nature. The Court held that the Controller erred in treating thermal stability as an “inherent property” without citing any supporting prior art or sources. The judge noted that Syngenta’s data convincingly demonstrated technical advancement — the monohydrate form remained stable in SC formulations where the anhydrous form converted, causing crystal growth issues. The Court applied the tests for inventive step laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2015:DHC:9674-DB) and Agriboard International LLC v. Deputy Controller (2022 SCC OnLine Del 940), finding that the Controller failed to properly analyse the differences and technical effect shown by the applicant. On Section 3(d), the Court observed that in the agrochemical context, improved formulation stability and reduced phytotoxicity could qualify as enhanced efficacy, distinguishing it from the stricter therapeutic efficacy standard for pharmaceuticals under Novartis AG v. Union of India (2013) 6 SCC 1.

Decision: The appeal was allowed. The impugned order refusing the patent was set aside. The matter was remanded to the Patent Office for fresh consideration in light of the observations made by the Court.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

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Introduction

In a notable decision concerning patent protection for new forms of known chemical compounds in the agrochemical sector, the Delhi High Court has emphasised the importance of experimental evidence demonstrating technical advantages of a new crystalline form. The ruling underscores that polymorphism — the ability of a substance to exist in multiple crystal structures — is often unpredictable, and courts must carefully evaluate whether a new form offers genuine improvements over known versions rather than dismissing it as a mere variation.

Factual and Procedural Background

Syngenta Participations AG filed a patent application in India for a specific crystalline monohydrate form of a known fungicide compound used to control plant diseases. This new form was claimed to provide better stability in certain agricultural formulations compared to the previously known anhydrous version. The Indian Patent Office, after examination and hearing, refused the application. Syngenta challenged this refusal by filing an appeal before the Delhi High Court.

The matter was heard by the court, with detailed arguments presented by senior advocates on both sides. The company submitted experimental data and expert evidence to show the practical benefits of the new form, while the Controller defended the rejection primarily on grounds of obviousness and lack of sufficient improvement.

Dispute

The central dispute was whether the new monohydrate crystalline form of the known compound involved an inventive step and whether it qualified for patent protection or fell under the exclusion for new forms of known substances that do not demonstrate enhanced efficacy. The Patent Office took the view that improved thermal stability was an inherent and expected property of such forms and that the applicant had not shown meaningful enhancement in performance. Syngenta argued that preparing a stable and useful new polymorph requires significant research, that the behaviour of different crystal forms is unpredictable, and that their data proved real advantages in formulation stability and reduced issues during agricultural application.

Reasoning and Analysis of the Judge

The COURT highlighted that polymorphism is a complex phenomenon where different crystal arrangements of the same molecule can lead to significantly different physical behaviours, even though the chemical composition remains identical. He referred to scientific literature explaining that it is generally not possible to predict in advance whether a new polymorph will form or what its properties will be.

The court discussed the judgment in F-Hoffmann-la Roche Ltd. & Anr. vs Cipla Ltd., 2015:DHC:9674-DB, where the Division Bench of the Delhi High Court laid down a structured approach for assessing inventive step, including identifying the person skilled in the art, the inventive concept, common general knowledge, differences from prior art, and whether those differences would have been obvious. Justice Gedela also relied upon Agriboard International LLC vs Deputy Controller of Patents & Designs, 2022 SCC OnLine Del 940, stressing that a Controller must properly analyse the prior art, the new invention, and how it would appear to a skilled person, rather than reaching a bare conclusion of obviousness.

On the objection under Section 3(d) of the Patents Act, the court referred to the Supreme Court’s landmark decision in Novartis AG vs Union of India & Others, (2013) 6 SCC 1. While noting that the stricter “therapeutic efficacy” test applies mainly to pharmaceuticals, the judge observed that in the agrochemical field, improvements in formulation stability, handling, and reduced plant toxicity can constitute enhanced efficacy for the purpose of patentability.

The court found that the Controller had not adequately explained why the experimental evidence of superior stability in practical agricultural suspensions was insufficient. It also criticised the reliance on “common general knowledge” without citing specific sources. The judge concluded that the applicant had demonstrated a technical advance through concrete data showing that the new form solved real problems of crystal growth and equipment blockages that occurred with the known form.

Final Decision of the Court

The Delhi High Court allowed Syngenta’s appeal. The order of the Controller refusing the patent application was set aside. The matter was remanded back to the Patent Office for fresh consideration in accordance with the observations made by the court.

Point of Law Settled in the Case

This judgment reinforces that in cases involving new polymorphic forms, patent examiners and courts must give due weight to experimental evidence of improved properties and practical advantages, particularly in agrochemicals. It clarifies that unpredictability of polymorphism and demonstrated technical benefits in formulation stability can support both inventive step and enhanced efficacy under Section 3(d). Mere assertions that a new form is obvious or inherently stable are not enough; the analysis must be evidence-based and reasoned.

Case Title: Syngenta Participations AG versus Controller of Patents Designs

Date of Order: 04.05.2026

Case Number: C.A.(COMM.IPD-PAT) 49/2023

Neutral Citation: 2026:DHC:3766

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tushar Rao Gedela

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

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Headnote:

Delhi High Court allows appeal by Syngenta and sets aside rejection of patent application for monohydrate polymorph of known fungicide compound; holds that experimental data showing improved formulation stability demonstrates inventive step and enhanced efficacy in agrochemical context; emphasises unpredictability of polymorphism and necessity of reasoned analysis by Controller.

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