Godfrey Phillips India Limited Vs I T C Limited

Godfrey Phillips India Limited Vs I T C Limited

[Case Title] : Godfrey Phillips India Limited v. I.T.C. Limited

Date of Judgment: 29.04.2011

Case No.: G.A. No. 247 of 2011, A.P.O. No. 37 of 2011, A.P.O.T. No. 25 of 2011, C.S. No. 10 of 2009

Neutral Citation : Not Available

[Court Name] : High Court at Calcutta (Original Side)

Name of Hon'ble Judge: Bhaskar Bhattacharya, J. and Sambuddha Chakrabarti, J.

Factual and Procedural Background

I.T.C. Limited filed C.S. No. 10 of 2009 seeking a permanent injunction against Godfrey Phillips India Limited to prevent infringement and passing off concerning the trademark PILOT or PILOT NUMBER ONE. Prior to this suit, in December 2006, Godfrey Phillips had filed an application before the Registrar of Trade Marks for the removal or cancellation of I.T.C.'s registered trademark No. 117155 on grounds of non-user for over 50 years. Godfrey Phillips then moved an application under Section 124 of the Trade Marks Act, 1999, requesting a stay of the suit pending the cancellation proceedings and seeking to strike off the pleadings regarding passing off due to lack of territorial jurisdiction. The Single Judge dismissed Godfrey Phillips' application, leading to the present appeal.

Dispute before Court

 1. Whether an application filed before the Registrar for removal of a trademark on the ground of non-user under Section 47 of the Trade Marks Act, 1999, constitutes a rectification proceeding under Section 57 so as to mandate a stay of the infringement suit under Section 124 of the Act.

 2. Whether the High Court can entertain or permit the joinder of a cause of action for passing off under Clause 14 of the Letters Patent at any stage before trial, even when no prior leave was taken and the defendant resides outside the court's jurisdiction.

Reasoning of Judge

The Court analyzed the substance of the application filed by Godfrey Phillips and noted that its true nature was for removal of the trademark due to non-user under Section 47, rather than a rectification proceeding under Section 57. The Court clarified that removal of a mark under Section 47 takes effect prospectively from the date of the order, whereas a declaration of invalidity or rectification under Section 57 operates differently. Since Section 124 specifically applies to rectification proceedings challenging the validity of a mark, pendency of a removal application under Section 47 does not attract Section 124. Regarding passing off and territorial jurisdiction, the Court held that under Clause 14 of the Letters Patent, the court possesses wide discretionary powers to allow joinder of causes of action at any stage prior to the commencement of the trial.

Decision

The High Court at Calcutta dismissed the appeal, upholding the order of the Single Judge. The prayer to stay the suit under Section 124 was rejected, and the court held that joinder of the cause of action for passing off under Clause 14 of the Letters Patent could be considered prior to trial. No order as to costs was made.

One Important legal principle held in the case

An application for removal of a registered trademark on the ground of non-user under Section 47 of the Trade Marks Act, 1999, is conceptually distinct from an application for rectification under Section 57; hence, the pendency of a Section 47 removal application does not entitle a party to a mandatory stay of an infringement suit under Section 124 of the Act.

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

Introduction:

The legal framework surrounding intellectual property rights in India provides specific mechanisms for trademark owners to enforce their rights and for aggrieved parties to challenge registrations. A critical aspect of trademark litigation involves the intersection between court proceedings for trademark infringement and administrative proceedings for the removal or rectification of trademark entries. In the case of Godfrey Phillips India Limited v. I.T.C. Limited, the High Court at Calcutta examined the distinction between removing a trademark for non-use and rectifying the register due to invalidity. The judgment also addressed key procedural matters concerning the joinder of causes of action under the Letters Patent when jurisdictional challenges arise.

Factual and Procedural Background:

I.T.C. Limited instituted C.S. No. 10 of 2009 before the High Court at Calcutta seeking permanent injunctive relief against Godfrey Phillips India Limited. The action sought to restrain the defendant, its servants, agents, and distributors from infringing or otherwise using the trademark PILOT or PILOT NUMBER ONE, or any deceptively similar mark, in connection with cigarettes and tobacco products. Prior to the institution of this civil suit, in December 2006, Godfrey Phillips India Limited had initiated an administrative proceeding before the Registrar of Trade Marks, Kolkata. This application sought the removal or cancellation of I.T.C. Limited's registered trademark bearing registration number 117155 in Class 34.

Following the institution of the suit and the receipt of an ex parte injunction dated January 22, 2009, Godfrey Phillips India Limited filed an application under Section 124 of the Trade Marks Act, 1999. In this application, the defendant prayed for two primary remedies: first, a stay of all further suit proceedings pending the final outcome of its cancellation application before the Registrar; and second, the striking off of the pleadings concerning the claim of passing off. The defendant contended that the court lacked territorial jurisdiction to adjudicate the passing off claim because the defendant resided and carried on business in Maharashtra, and no cause of action for passing off arose within the local jurisdiction of the High Court at Calcutta.

The single judge heard the matter and passed an order on December 7, 2010, rejecting the defendant's prayers. The single judge concluded that Section 124 of the Trade Marks Act, 1999, was inapplicable to the facts of the case. Regarding the passing off claim, the single judge observed that leave to combine causes of action under Clause 14 of the Letters Patent could be granted at any time prior to the commencement of the trial. Aggrieved by this decision, Godfrey Phillips India Limited preferred an appeal before the appellate bench.

Dispute Before the Court

The primary legal disputes presented for adjudication before the appellate bench centered on two specific issues.

The first core question was whether an application seeking the removal of a registered trademark on the ground of continuous non-user for a period exceeding five years under Section 47 of the Trade Marks Act, 1999, falls within the ambit of a rectification proceeding under Section 57 of the Act. The appellant argued that an application to remove a mark based on non-user substantially operates as a rectification proceeding. Consequently, the appellant asserted that under Section 124 of the Act, when a rectification proceeding is pending prior to or during an infringement suit, the trial court is statutorily mandated to stay the civil suit until the administrative proceeding concludes. On the other hand, the respondent submitted that removal of a mark under Section 47 is legally distinct from rectification under Section 57. The respondent argued that Section 124 only applies to rectification proceedings challenging the validity of the registration, meaning a removal application for non-user does not warrant a stay.

The second dispute pertained to territorial jurisdiction and procedural compliance regarding the claim of passing off. The appellant asserted that because it was located in Maharashtra and no part of the cause of action for passing off occurred within the territorial jurisdiction of the Calcutta High Court, the pleadings on passing off ought to be struck out. The appellant contended that leave under Clause 14 of the Letters Patent to combine the passing off claim with the infringement claim had to be sought prior to any jurisdictional challenge by the defendant. In response, the respondent maintained that partial rejection or striking out of a plaint is impermissible, and that the court retains the authority under Clause 14 of the Letters Patent to grant leave for joinder of causes of action at any stage before trial begins.

Reasoning and Analysis of the Court

In examining the arguments, the appellate court emphasized that the true nature of an application must be determined by analyzing its contents and substantive prayers rather than relying strictly on labels or statutory sections cited in the headings. The court evaluated the appellant's application filed before the Registrar, which cited Sections 47 and 57 alongside Rule 92. Upon inspecting the grounds, the court identified that the core allegations made by the appellant were twofold: that the trademark was registered without a bona fide intention to use it, and that there had been no bona fide use of the mark for a continuous period of five years and three months prior to the application.

The court observed that these specific grounds are explicitly provided under Section 47 of the Trade Marks Act, 1999, which governs the removal of a trademark from the register due to non-use. Analyzing Section 57(2) of the Act, the court explained that rectification applies to situations where an entry was omitted without valid reason, made without sufficient cause, wrongly remaining on the register despite an order of removal, or contains an error or defect. The court highlighted that grounds under Section 47 for non-user do not automatically translate into grounds for invalidity or rectification under Section 57.

The court highlighted a fundamental distinction in legal effect between removal and rectification. A declaration of invalidity or rectification affects the initial entry or validity of the mark, whereas an order of removal on the ground of non-user under Section 47 takes effect prospectively from the date the order is passed. Because Section 124 of the Trade Marks Act, 1999, explicitly governs instances where the validity of the registration is questioned via a rectification proceeding under Section 57, an application for removal based on non-user under Section 47 does not attract the mandatory stay provisions of Section 124. The legislature purposefully created separate provisions for removal and rectification, ensuring they do not overlap in operational scope.

Regarding the procedural challenge under Clause 14 of the Letters Patent, the court rejected the rigid interpretation put forward by the appellant. Clause 14 allows the High Court, when it possesses original jurisdiction over one cause of action (such as statutory trademark infringement), to call upon the defendant to show cause why other causes of action (such as common law passing off) should not be joined in the same suit. The court held that the language of Clause 14 is broad enough to permit the court to exercise this discretionary power at any time before trial commences. To support this procedural flexibility, the court referred to the established principle articulated in Gajanan Jaikhan Joshi v. Prabhakar Mohanlal Kalwar, (1990) 1 SCC 166, which affirmed that technical pleading defects or preliminary jurisdictional objections can be addressed through appropriate procedural steps prior to the trial phase. Consequently, the failure to obtain leave under Clause 14 at the initial filing stage did not automatically require the striking out of the passing off claim.

Final Decision of the Court

The High Court at Calcutta dismissed the appeal preferred by Godfrey Phillips India Limited and affirmed the decision of the single judge. The court concluded that Section 124 of the Trade Marks Act, 1999, was not attracted, and therefore the prayer for staying the infringement suit was rightly denied. Additionally, the court held that the passing off claim was not liable to be struck out at that stage, as the court retained full jurisdiction under Clause 14 of the Letters Patent to decide on the joinder of causes of action prior to trial. The appeal was dismissed without any order as to costs.

Point of Law Settled

This judgment clarifies the statutory distinction between Section 47 and Section 57 of the Trade Marks Act, 1999. It settles the rule that an application for removal of a registered trademark on account of non-user under Section 47 does not amount to a challenge to the validity of the trademark's registration under Section 57. Consequently, the pendency of a Section 47 removal proceeding before the Registrar or the Appellate Board does not trigger the mandatory stay of an infringement suit under Section 124 of the Act. Furthermore, the judgment confirms that High Courts exercising original jurisdiction can entertain prayers for joinder of causes of action under Clause 14 of the Letters Patent at any stage prior to the commencement of trial.

Title of the Case: Godfrey Phillips India Limited v. I.T.C. Limited

Date of Judgment: 29.04.2011

Case Number: G.A. No. 247 of 2011, A.P.O. No. 37 of 2011, A.P.O.T. No. 25 of 2011, C.S. No. 10 of 2009

Neutral Citation: Not Available

Name of Court: High Court at Calcutta (Original Side)

Name of Hon'ble Judge: Bhaskar Bhattacharya, J. and Sambuddha Chakrabarti, J.

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

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

Headnote of the Judgment:

In Godfrey Phillips India Limited v. I.T.C. Limited (C.S. No. 10 of 2009), the High Court at Calcutta considered an appeal against an order refusing to stay an infringement suit under Section 124 of the Trade Marks Act, 1999, and refusing to strike off passing off pleadings. The court held that an application for removal of a trademark based on non-user under Section 47 is distinct from a rectification proceeding challenging validity under Section 57. Therefore, the stay provisions under Section 124 are not attracted by a Section 47 application. The court also held that joinder of causes of action under Clause 14 of the Letters Patent can be considered at any stage before trial. The appeal was dismissed.

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 4. When Does Section 124 Mandatory Stay Apply in Trademark Infringement Suits?

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 7. Landmark Calcutta High Court Decision on Section 124 of the Trade Marks Act 1999

 8. Can a Section 47 Non-Use Application Stay an Infringement Suit? Court Explains

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Parle Products Pvt Ltd Vs The Registrar of Trade Marks

Parle Products Pvt Ltd Vs The Registrar of Trade Marks & Anr.

[Case Title] : Parle Products Pvt Ltd v. The Registrar of Trade Marks & Anr.

Date of Judgment: [28.07.2026]

Case No.: LPA 316/2026 & CM APPL. 27819-20/2026

Neutral Citation : 2026:DHC:6020-DB

[Court Name] : High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice V. Kameswar Rao and Hon'ble Ms. Justice Manmeet Pritam Singh Arora

Factual and Procedural Background

Respondent no. 2 filed trademark application no. 1606126 for the mark 20-20 in class 30 on 27.09.2007 on a proposed to be used basis. Appellant Parle Products Pvt Ltd subsequently filed trademark application no. 1608183 for the mark 20-20 in class 30 on 04.10.2007, also on a proposed to be used basis, and commenced commercial use in 2007-2008. After prolonged administrative and judicial proceedings, the mark of respondent no. 2 was advertised in August 2020. Appellant filed an opposition which was dismissed by the Registrar of Trade Marks on 29.04.2025. The appeal filed by the appellant before the learned Single Judge was dismissed on 10.03.2026. Assailing this, the appellant filed the present letters patent appeal before the Division Bench.

Dispute before Court

Whether subsequent commercial use and market presence acquired by a junior applicant during the pendency of trademark registration proceedings can grant superior rights to oust a senior applicant who applied earlier on a proposed to be used basis under Section 18 of the Trade Marks Act, 1999.

Reasoning of Judge

The Court held that rights conferred upon registration relate back to the date of application. The senior applicant had actively pursued registration for 17 years and non-use was due to delays of the Registry. Subsequent commercial use by a junior applicant during pendency of registration proceedings is inconsequential under Section 18 and cannot defeat the rights of the prior applicant. Furthermore, the appellant had previously represented to the Registry that its mark was distinct from cited marks, and could not be permitted to approbate and reprobate by later claiming deceptive similarity.

Decision

The appeal filed by the appellant was dismissed along with all pending applications, upholding the order of the learned Single Judge and the registration granted to respondent no. 2.

One Important legal principle held in the case

In trademark registration proceedings under Section 18 of the Trade Marks Act, 1999, the priority of application date governs, and subsequent commercial use of a mark by a junior applicant during the pendency of a senior applicant's registration application cannot defeat the superior statutory claim of the senior applicant.

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

Introduction:

The High Court of Delhi recently delivered a significant ruling on trademark priority, statutory rights under registration proceedings, and the doctrine of prior adoption versus subsequent commercial user. The Division Bench addressed whether an earlier trademark application filed on a proposed to be used basis can be defeated by a subsequent applicant who actually launched products in the market while the prior application remained pending before the Trade Marks Registry. The ruling brings notable clarity to commercial entities and intellectual property practitioners regarding the sanctity of filing dates in trademark prosecution.

Factual and Procedural Background:

The dispute traces back to late 2007 when two separate entities sought registration for the trademark 20-20 in Class 30 covering food products, biscuits, and confectionery. Respondent no. 2 filed trademark application number 1606126 on 27.09.2007 on a proposed to be used basis. Just a few days later, Parle Products Pvt Ltd filed trademark application number 1608183 on 04.10.2007 for the same mark 20-20, also on a proposed to be used basis.

During examination of Parle's application, the Registry cited the earlier application of respondent no. 2 as a conflicting mark under Section 11 of the Trade Marks Act, 1999. In response, Parle contended that its mark was visually, phonetically, and conceptually distinct, and offered to restrict its specification of goods to biscuits. Parle subsequently commenced commercial sales of its biscuits under the mark 20-20 around 2007-2008 and obtained registration in November 2017.

Meanwhile, the application of respondent no. 2 faced prolonged administrative delays, refusal, and subsequent appeals. After intervention by the Intellectual Property Appellate Board in August 2019, the application of respondent no. 2 was finally advertised in the Trade Marks Journal on 10.08.2020. Parle filed a notice of opposition on 25.11.2020 claiming extensive user, goodwill, and market reputation. The Registrar of Trade Marks dismissed Parle's opposition on 29.04.2025 and issued a registration certificate to respondent no. 2. Parle challenged this before a Single Judge of the High Court of Delhi, who dismissed the appeal on 10.03.2026. Aggrieved by the decision, Parle preferred a Letters Patent Appeal before the Division Bench.

Dispute Before the Court

The core legal question before the Court was whether a prior applicant who applied for a mark on a proposed to be used basis can be denied registration merely because a subsequent applicant introduced goods under the identical mark into the market earlier and generated substantial commercial goodwill.

Parle contended that trademark rights stem from actual commercial use in the market rather than mere registration filings. Relying on the first in the market test and common law principles governing passing off, Parle asserted that its continuous market presence since 2007 gave it superior rights under Section 34 of the Trade Marks Act, 1999, which should override a dormant trademark application.

On the other hand, respondent no. 2 contended that as the senior adopter and prior applicant, its priority date of 27.09.2007 could not be wiped out by Parle's subsequent market launch. It argued that non-use of its mark during the 17-year interregnum was purely due to administrative and procedural delays in the Trade Marks Registry and pending opposition proceedings, which should not prejudice its statutory rights.

Reasoning and Analysis of the Court

The High Court conducted an extensive analysis of statutory provisions under the Trade Marks Act, 1999, specifically examining Section 18, Section 11, Section 28, and Section 34. The Court observed that when two entities apply for identical or deceptively similar marks on a proposed to be used basis, Section 18 establishes that rights upon registration relate back to the date of application.

The Bench carefully analyzed previous judicial precedents, including the judgment of the High Court of Madras in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd. (1977) and decisions of the High Court of Delhi in Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. (2019) and Drums Food International Pvt. Ltd. v. Euro Ice Cream (2011). These rulings consistently establish that for registration entitlement under Section 18, priority is determined as on the date of application. Subsequent commercial use by a junior applicant during the pendency of a senior application does not grant any special statutory privilege or override the prior applicant's claim.

The Court distinguished the judgment of the Supreme Court of India in Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016). The Bench observed that Neon Laboratories was rendered in the context of an interim injunction in an action for passing off, where established market goodwill carries pre-eminence. In contrast, the present dispute pertained strictly to statutory registration and opposition proceedings under Section 18, where the relevant date of assessment is the date of filing.

Additionally, the Court held that respondent no. 2 could not be accused of abandoning its mark or hoarding it without intent, as it had diligently litigated and pursued its registration across various forums for 17 years. Delay caused by procedural bottlenecks of the Registry cannot operate to the detriment of a diligent applicant.

Finally, the Court pointed out that Parle had engaged in approbation and reprobation. In 2008, when replying to the Registry's examination report, Parle had taken a firm stand that the rival marks were visually, phonetically, and conceptually distinct in order to secure its own registration. Having obtained registration on that representation, Parle could not be permitted to take a contradictory stance in opposition proceedings by claiming that the mark of respondent no. 2 was deceptively similar.

Final Decision of the Court

The Division Bench found no merit in the appeal and affirmed the judgment of the Single Judge. The Court held that respondent no. 2 was the senior applicant whose priority related back to 27.09.2007, making Parle's subsequent use in 2007-2008 inconsequential for determining registration rights. Consequently, the Letters Patent Appeal and all connected pending applications were dismissed.

Point of Law Settled

The Court reaffirmed the crucial principle of trademark law that in statutory registration proceedings under Section 18 of the Trade Marks Act, 1999, priority between competing applicants filing on a proposed to be used basis is determined strictly by the date of application. Subsequent commercial entry into the market by a junior applicant while a senior application is pending before the Registry does not divest the senior applicant of their statutory rights. Furthermore, the ruling enforces the principle that a party cannot approbate and reprobate by making inconsistent representations regarding mark similarity before the Trade Marks Registry to suit different stages of litigation.

Title of the Case: Parle Products Pvt Ltd v. The Registrar of Trade Marks & Anr.

Date of Judgment: 28.07.2026

Case Number: LPA 316/2026 & CM APPL. 27819-20/2026

Neutral Citation: 2026:DHC:6020-DB

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice V. Kameswar Rao and Hon'ble Ms. Justice Manmeet Pritam Singh Arora

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

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

Headnote of the Judgment:

In Parle Products Pvt Ltd v. The Registrar of Trade Marks & Anr. (2026:DHC:6020-DB), the High Court of Delhi dismissed an appeal against a Single Judge order upholding the registration of the trademark 20-20 in favor of respondent no. 2. Both parties had applied for registration in Class 30 on a proposed to be used basis, with respondent no. 2 applying on 27.09.2007 and Parle on 04.10.2007. Parle commenced commercial sales during the pendency of proceedings and opposed respondent's registration. The Division Bench held that priority under Section 18 of the Trade Marks Act, 1999 is governed by the application date, and subsequent market use by a junior applicant during procedural delays cannot oust the senior applicant. The appeal was accordingly dismissed.

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 5. Section 18 Trade Marks Act: Delhi HC Clarifies Scope of Proposed To Be Used Applications

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 7. Can Subsequent Commercial Use Defeat an Earlier Trademark Filing? Delhi HC Answers

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 9. Delhi High Court Distinguishes Passing Off Principles from Trademark Registration Rights

 10. Legal Analysis: Parle Products Pvt Ltd v Registrar of Trade Marks on Trademark Priority

JK Engineering Private Limited Vs ANE Industries Private Limited

JK Engineering Private Limited Vs ANE Industries Private Limited

Date of Judgment: 28.07.2026

Case No.: IA NO. GA-COM/3/2025 In CS-COM/834/2024

Neutral Citation : Not Available

In The High Court at Calcutta (Ordinary Original Civil Jurisdiction - Commercial Division)

Name of Hon'ble Judge: Hon'ble Justice Aniruddha Roy

### Factual and Procedural Background

The plaintiff originally instituted a non-commercial suit in 2016, followed by a second suit on the same cause of action, which was later permitted to be withdrawn by the Division Bench on 03.12.2024 with liberty to file a fresh commercial suit within four weeks. The plaintiff then filed the present commercial suit on 24.12.2024, seeking dispensation of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015 and leave under Clause 12 of the Letters Patent, 1865, both of which were granted ex-parte by a Coordinate Bench on 06.01.2025. The defendant filed an application seeking revocation of both the Section 12A dispensation and the Clause 12 Letters Patent leave, contending that no urgent interim relief was contemplated and that Calcutta was an inconvenient forum given that the contract was executed in Punjab, work was executed in Assam, and the parties were registered in Sikkim and Punjab.

### Dispute before Court

Whether the court should revoke the dispensation granted to the plaintiff from exhausting mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, and whether the leave granted under Clause 12 of the Letters Patent, 1865 ought to be revoked on the ground of forum conveniens.

### Reasoning of Judge

The Court held that dispensation under Section 12A of the Commercial Courts Act, 2015 was validly granted because the plaintiff genuinely contemplated urgent interim relief from its own standpoint, supported by pleadings and oral submissions regarding the apprehension that the defendant might alienate assets. However, regarding Clause 12 of the Letters Patent, the Court held that even if a minuscule part of the cause of action arose within its jurisdiction, the balance of convenience heavily favored the defendant, as no operations or registered offices were in West Bengal, and a related suit was already pending in Punjab.

### Decision

The application was allowed in part. The prayer to recall the Section 12A dispensation was rejected, but the leave granted under Clause 12 of the Letters Patent, 1865 was revoked on the principle of forum conveniens, and the plaint was ordered to be returned to the plaintiff to be presented before the competent jurisdictional commercial court in Punjab.

### One Important legal principle held in the case

Even if a part of the cause of action arises within the territorial jurisdiction of a Chartered High Court, the leave granted under Clause 12 of the Letters Patent, 1865 can be revoked if the balance of convenience overwhelmingly favors the defendant under the doctrine of forum conveniens.

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

# Analytical Legal Article

## Introduction:

Commercial litigation in India demands a delicate balance between procedural efficiency, statutory compliance, and equitable access to an appropriate legal forum. The interplay between mandatory pre-institution mediation under commercial law and the discretionary territorial jurisdiction exercised by Chartered High Courts often gives rise to complex procedural battles. A prominent instance of such litigation involves the challenge raised by a defendant seeking the dismissal or return of a commercial suit on two distinct procedural grounds: the failure to undergo mandatory pre-litigation mediation and the improper invocation of territorial jurisdiction under historic letters patent provisions. The judgment in question offers a comprehensive analysis of how courts evaluate the stand-point of a plaintiff seeking urgent interim relief against the hardships faced by a defendant forced to litigate in a forum that lacks substantial connection with the underlying dispute.

## Factual and Procedural Background:

The history of the dispute traces back to 18.08.2016, when the plaintiff initially instituted a civil suit before the regular non-commercial division of the High Court. On the very next day, 19.08.2016, the plaintiff withdrew the initial suit and filed a second suit on the self-same cause of action between identical parties seeking identical reliefs. In this second action, the plaintiff secured a judgment upon admission on 07.02.2019. However, the defendant filed a demurrer application which eventually escalated to the appellate stage. On 03.12.2024, the Division Bench disposed of the appeal by setting aside the judgment upon admission, observing that the dispute was commercial in nature and ought not to have proceeded before the regular non-commercial division. The Division Bench permitted the plaintiff to withdraw the second suit with liberty to institute a fresh commercial suit within four weeks, specifying that failure to do so within the stipulated timeframe would deprive the plaintiff of the benefit of exclusion of time under Section 14 of the Limitation Act, 1963.

Pursuant to the directions of the Division Bench, the plaintiff presented a fresh commercial suit on 24.12.2024. Along with the suit, the plaintiff sought leave under Order II Rule 2 of the Code of Civil Procedure, 1908, leave under Clause 12 of the Letters Patent, 1865 for invoking territorial jurisdiction, and dispensation with the requirement of mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. On 06.01.2025, a Coordinate Bench granted ex-parte leave under Clause 12 of the Letters Patent and dispensed with the pre-institution mediation requirement, thereby admitting the suit. Subsequently, on 11.08.2025, the defendant filed an interlocutory application seeking revocation of the leave granted under Clause 12 of the Letters Patent, revocation of the dispensation granted under Section 12A of the Commercial Courts Act, 2015, and dismissal of the suit.

The commercial contract in dispute was a memorandum of understanding dated 26.03.2013. The registered office of the plaintiff was located in Gangtok, Sikkim, while the registered office of the defendant was situated in Chandigarh Road, Punjab. The execution of the contracted works was to take place entirely in Assam, and the financial banking transfers associated with the contract were routed through a bank in Nawanshahr, Punjab. The plaintiff asserted jurisdiction in Calcutta on the premise that negotiations occurred at its corporate office situated within local limits and that one witness to the agreement had an address in Kolkata. Meanwhile, the defendant had already instituted a civil suit arising out of the same contractual transaction against the plaintiff, which remained pending before the jurisdictional court in Punjab.

## Dispute Before the Court

The core legal questions requiring adjudication centered on whether the plaintiff had legitimately bypassed the statutory mandate of pre-institution mediation and whether the High Court ought to retain territorial jurisdiction over the suit.

The defendant argued that Section 12A of the Commercial Courts Act, 2015 creates an absolute statutory bar against instituting a commercial suit without exhausting pre-litigation mediation unless the suit genuinely contemplates urgent interim relief. The defendant contended that the suit was primarily a money claim where no urgent interim relief had been formally applied for or granted since 2016. The defendant asserted that the plaintiff used the plea of urgency as a mere camouflage and guise to bypass the mandatory statutory process. On the issue of jurisdiction, the defendant urged that the contract was executed in Punjab, the works were performed in Assam, payments originated from Punjab, and both parties had registered offices outside West Bengal. Relying on the doctrine of forum conveniens, the defendant maintained that compelling it to defend the action in Calcutta caused severe hardship, especially when a related proceeding was pending in Punjab.

Conversely, the plaintiff contended that the contemplation of urgency must be assessed holistically from the standpoint of the plaintiff at the time of filing. The plaintiff highlighted that having previously obtained a judgment upon admission that was later set aside on technical jurisdictional grounds, it possessed a legitimate apprehension that the defendant would dissipate or alienate assets to defeat the claim if forced into mediation. Furthermore, the plaintiff argued that the strict four-week timeline imposed by the Division Bench on 03.12.2024 necessitated immediate filing without waiting for mediation. Regarding territorial jurisdiction, the plaintiff maintained that part of the cause of action arose within the local limits where contractual negotiations occurred, and that averments in the plaint must be accepted as true at the initial stage without forcing a revocation of leave.

## Reasoning and Analysis of the Court

In analyzing the first issue regarding pre-institution mediation, the Court examined the statutory mandate under Section 12A of the Commercial Courts Act, 2015 alongside Rule 8 of the High Court Commercial Court Practice Directions, 2021. The Court observed that Section 12A imposes a mandatory requirement that non-compliance with ordinarily renders a plaint institutionally defective, leading to rejection under Order VII Rule 11 of the Code of Civil Procedure, 1908. However, an explicit statutory exception exists where a suit contemplates urgent interim relief.

The Court referred to authoritative precedents of the Supreme Court of India to establish the precise legal standard applicable to Section 12A. In Patil Automation Private Limited and Others vs. Rakheja Engineering Private Limited [(2022) 10 SCC 1], the Supreme Court established the mandatory nature of pre-institution mediation. This standard was further refined in Yamini Manohar vs. T.K.D. Keerthi [(2024) 5 SCC 815] and Dhanbad Fuels Private Limited vs. Union of India and Another [(2025) 9 SCC 424], where the Apex Court clarified that the test under Section 12A is not whether an urgent interim relief is ultimately granted on merits, but whether, upon a holistic examination of the plaint, documents, and oral submissions, a prayer for urgent interim relief was genuinely contemplable from the standpoint of the plaintiff.

This principle was reaffirmed in Novenco Building and Industry A/S vs. Xero Energy Engineering Solutions Private Limited [2025 SCC OnLine SC 2278], which summarized that courts must examine if there exists a plausible urgency or risk of losing rights or assets, rather than assessing the final merits of the interim relief. Applying these principles, the Court held that the apprehension of asset alienation expressed by the plaintiff—given the prior litigation history where a judgment upon admission had been recorded—constituted a plausible and reasonable basis for contemplating urgent interim relief. Consequently, the ex-parte order dispensing with pre-institution mediation was affirmed as a valid exercise of judicial discretion.

Turning to the second issue regarding Clause 12 of the Letters Patent, 1865, the Court undertook a detailed evaluation of discretionary territorial jurisdiction. Under Clause 12, where only a part of the cause of action arises within the ordinary original civil jurisdiction of the High Court, the court possesses discretion to grant, refuse, or subsequently revoke leave to sue. The Court reviewed the landmark decision in Madanlal Jalan vs. Madanlal & Ors. [AIR 1949 Cal 495], which formulated the foundational principles governing revocation of leave under Clause 12. The principles establish that the court must consider the balance of convenience of both parties and may apply the doctrine of forum conveniens to revoke leave if the balance is overwhelmingly in favor of the defendant, even in the absence of bad faith by the plaintiff.

The Court also considered Ultra Engineering vs. Spintex Industry [AIR 1980 Cal 159] and Mighty Metals Pvt. Ltd. and Anr. vs. Rajasthan Financial Corporation [2011 SCC OnLine Cal 2113], which emphasized that genuine hardship and lack of territorial nexus justify revoking leave. Upon scrutinizing the material on record, the Court observed that the primary elements of the transaction occurred far outside Calcutta: the registered office of the plaintiff was in Sikkim, the registered office of the defendant was in Punjab, the memorandum of understanding was executed in Punjab, the works were executed in Assam, and payments were processed in Punjab.

Furthermore, the defendant had already instituted a civil suit in Punjab arising from the same transaction. The Court noted that under company law mandates, corporate records are maintained at registered offices. While the plaintiff would have to transport records from Sikkim regardless of whether the trial occurred in Calcutta or Punjab, the defendant—having no place of business in West Bengal—would suffer extreme hardship in transporting witnesses and records from Punjab to Calcutta. Balancing the convenience of both sides, the Court held that Calcutta was not the natural or convenient forum, and that trying the suit in Punjab alongside or before the jurisdictional court would serve the ends of justice.

## Final Decision of the Court

The Court disposed of the interlocutory application by granting partial relief to the applicant defendant. The Court refused to recall or revoke the order granting dispensation from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, holding that the dispensation was lawfully granted based on the plaintiff's contemplable urgency.

However, the Court allowed the application regarding territorial jurisdiction and revoked the leave previously granted under Clause 12 of the Letters Patent, 1865 on the ground of forum conveniens. The Court directed that the plaint be returned to the plaintiff along with the original court fees paid, upon retaining a certified photostat copy of the plaint on record. The plaintiff was granted liberty to present the plaint before the competent jurisdictional commercial court in Punjab where the defendant's suit was pending. The Court noted that because the defendant had forfeited its right to file a written statement by operation of law under Order VIII Rule 1 of the Code of Civil Procedure, 1908 as amended by the Commercial Courts Act, 2015, the suit would proceed from its present stage before the transferee commercial court as an undefended suit. Connected interlocutory applications were disposed of, and interim orders were vacated with liberty to re-apply before the appropriate court in Punjab.

## Point of Law Settled

This judgment reaffirms and clarifies two crucial procedural standards in commercial litigation:

First, in evaluating compliance with Section 12A of the Commercial Courts Act, 2015, the test for dispensing with pre-institution mediation is subjective-objective, measured strictly from the standpoint of the plaintiff at the time of filing. The Court is not required to adjudicate whether interim relief will be granted on merits, but whether the plaintiff had a plausible and non-illusory reason to contemplate urgent intervention to protect its rights or assets.

Second, the judgment reaffirms that ex-parte leave granted under Clause 12 of the Letters Patent, 1865 is subject to judicial review under the doctrine of forum conveniens. Even if a minuscule or formal part of the cause of action is shown to arise within the territorial limits of a Chartered High Court, the court retains inherent discretion to revoke leave if the balance of convenience heavily favors the defendant and litigating in that forum imposes undue hardship without a substantial nexus to the core transaction.

Title of the Case: JK Engineering Private Limited Vs ANE Industries Private Limited

Date of Judgment: 28.07.2026

Case Number: IA NO. GA-COM/3/2025 In CS-COM/834/2024

Neutral Citation: Not Available

Name of Court: In The High Court at Calcutta (Ordinary Original Civil Jurisdiction - Commercial Division)

Name of Hon'ble Judge: Hon'ble Justice Aniruddha Roy

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

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

### Headnote of the Judgment:

In JK Engineering Private Limited Vs ANE Industries Private Limited (IA NO. GA-COM/3/2025 In CS-COM/834/2024), the High Court at Calcutta considered an application to recall Section 12A Commercial Courts Act, 2015 pre-litigation mediation dispensation and revoke Clause 12 Letters Patent, 1865 leave. The Court affirmed the Section 12A dispensation, holding that urgency must be assessed holistically from the plaintiff's standpoint. However, the Court revoked Clause 12 leave applying the doctrine of forum conveniens, as the contract was executed in Punjab, works were performed in Assam, and both corporate offices were outside West Bengal. The plaint was ordered to be returned for presentation before the jurisdictional Commercial Court in Punjab to proceed as an undefended suit.

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 4. Forum Conveniens in Commercial Litigation: JK Engineering v. ANE Industries

 5. When Can Clause 12 Letters Patent Leave Be Revoked in Commercial Suits?

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Vaishnani Vipul Dalsukhbhai Vs State of Gujarat

Gujarat High Court Rejects Pre-Arrest Bail in Multi-Crore Nal Se Jal Public Welfare Scheme Scam

Case Title : Vaishnani Vipul Dalsukhbhai Vs State of Gujarat

Date of Judgment : 27-07-2026

Case No. : R/Criminal Misc. Application (For Anticipatory Bail) No. 17277 of 2026

Neutral Citation : 2026:GUJHC:17277

Court Name : High Court of Gujarat at Ahmedabad

Name of Hon'ble Judge : Hon'ble Mr. Justice Sanjeev J. Thaker

Factual and Procedural Background

The applicant, proprietor of M/s Shrinathji Construction Agency, preferred an anticipatory bail application under Section 482 of the Bharatiya Nagarik Suraksha Sanhita, 2023 in connection with FIR C.R. No. 11201005250003 of 2025 registered with CID Crime Police Station, Vadodara Zone. The offences alleged fall under Sections 406, 409, 420, 467, 468, 471, 474, 114, and 120B of the Indian Penal Code, alongside Sections 13(1)(a), 13(1)(b), 13(2), and 7(a) of the Prevention of Corruption Act, 1988. The case pertains to multi-crore irregularities in implementing the government's Nal Se Jal scheme designed to deliver potable water to rural households in Mahisagar district. The applicant was awarded pipe-laying and execution work for villages including Bachkariya, Ditvas, Babrol, and Shir. Investigation revealed significant shortfalls in execution, shallower pipeline laying, inflated house connection counts, and the submission of forged invoice records.

Dispute before Court

The main issue before the Court was whether the applicant was entitled to pre-arrest bail under Section 482 of BNSS in a complex economic fraud case involving public funds. The applicant contended that he was innocent, that the dispute was essentially contractual, that documents were already in police possession, and that no custodial interrogation was required. Conversely, the State argued that the applicant colluded in a systematic white-collar crime siphoning off government exchequer funds, submitted fabricated invoices, and required custodial interrogation to unearth the broader multi-agency scam involving 123 crore rupees.

Reasoning of Judge

The Court observed that anticipatory bail is an extraordinary remedy to be granted sparingly, especially in serious economic offences that impact the country's financial health and public exchequer. Examining the investigation records, the Court found specific prima facie evidence showing that the applicant installed shorter pipelines than claimed, laid pipelines at unauthorized shallow depths, provided fewer domestic connections while claiming higher funds, and forged invoice records (such as Kamdhenu Pipes invoice No. 2122/903). Relying on Supreme Court precedents including SFIO v. Aditya Sarda, P. Chidambaram v. Directorate of Enforcement, Y.S. Jagan Mohan Reddy v. CBI, and Pratibha Manchanda v. State of Haryana, the Court emphasized that personal liberty under Article 21 must be balanced against societal interest. In sophisticated white-collar crimes undermining public welfare programs, custodial interrogation is vital to conduct a thorough investigation.

Decision

The High Court dismissed the anticipatory bail application and discharged the rule, holding that the applicant failed to make out an exceptional case for pre-arrest protection.

One Important legal principle held in the case

Anticipatory bail cannot be granted as a matter of routine in economic offences involving white-collar fraud and siphoning of public exchequer money, as custodial interrogation is essential to protect larger societal interests and ensure a comprehensive investigation.

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

Analytical Legal Overview of the Judgment

Introduction:

The discretionary power of courts to grant pre-arrest protection under Section 482 of the Bharatiya Nagarik Suraksha Sanhita, 2023 requires a delicate judicial balancing act. While the statutory remedy exists to protect citizens from arbitrary arrest and malicious prosecution, courts must maintain vigilance when public funds and welfare projects are compromised. In a decision concerning public exchequer fraud, the High Court of Gujarat adjudicated an anticipatory bail application filed by a contractor implicated in the alleged multi-crore Nal Se Jal scheme scam in Mahisagar district. The judgment reinforces the established judicial doctrine that economic offences affecting public interest constitute a class apart, where custodial interrogation is often necessary to unearth complex conspiracies.

Factual and Procedural Background:

The controversy stems from an official investigation into the execution of the Nal Se Jal scheme, a flagship government welfare project designed to deliver potable drinking water to rural households across Mahisagar district. In connection with these works, an FIR bearing C.R. No. 11201005250003 of 2025 was registered at the CID Crime Police Station, Vadodara Zone. The penal provisions invoked included Sections 406, 409, 420, 467, 468, 471, 474, 114, and 120B of the Indian Penal Code, together with Sections 13(1)(a), 13(1)(b), 13(2), and 7(a) of the Prevention of Corruption Act, 1988.

The applicant, carrying on business as the sole proprietor of M/s Shrinathji Construction Agency, was entrusted with execution contracts for several rural habitations, including Babrol, Shir, Bachkariya, and Ditvas. Contracts were executed through local Water Committees starting around November 2021. The broader investigation launched by state authorities uncovered massive systemic irregularities across 620 villages in the district, involving approximately 112 separate contractors, agencies, and firms. The State alleged that approximately 123 crore rupees were siphoned off through falsified test reports, inflated bills, and non-execution of contractual work.

Fearing arrest, the applicant approached the High Court of Gujarat by filing an application under Section 482 of the Bharatiya Nagarik Suraksha Sanhita, 2023 seeking anticipatory bail.

Dispute Before the Court:

The primary issue before the Court was whether the applicant was entitled to the extraordinary relief of pre-arrest bail in the context of ongoing criminal investigations into serious financial misappropriation.

The applicant submitted that he had been falsely implicated and that no specific overt act was attributed to him in the initial FIR text. It was argued that the work was executed through valid purchases from authorized pipe manufacturers, as corroborated by administrative verification letters. The applicant asserted that the entire matter was essentially a contractual dispute being given an improper criminal character. Furthermore, because all financial and administrative documents were already in the custody of the investigating agency, the applicant argued that custodial interrogation was wholly unnecessary.

On the other hand, the State strongly resisted the application, contending that the case involved a sophisticated white-collar crime impacting a vital public welfare scheme. The State demonstrated through field inspection reports and witness statements under Section 179 of the Bharatiya Nagarik Suraksha Sanhita, 2023 that the applicant had engaged in severe physical and financial discrepancies. Specific findings included laying shorter pipelines than billed, digging trenches to depths significantly less than mandated standards, claiming payments for non-existent household connections, and forging manufacturer invoices (such as Kamdhenu Pipes invoice No. 2122/903). The prosecution emphasized that custodial interrogation was indispensable to unravel the deep-rooted conspiracy and recover misappropriated public money.

Reasoning and Analysis of the Court:

In analyzing the rival contentions, the Court underscored that while individual liberty is a cherished fundamental right under Article 21 of the Constitution of India, it is not absolute and must be balanced against larger public and societal interests. Pre-arrest bail is an extraordinary statutory privilege and not an automatic right, requiring careful consideration of the nature and gravity of the accusations, the role of the accused, and the potential impact on public welfare.

The Court conducted a detailed review of the evidentiary material assembled by the investigating agency regarding the four villages assigned to the applicant's firm. The findings revealed a consistent pattern of physical shortfalls and financial inflated claims:

In Babrol village, pipelines were installed at inadequate depths, overall length was shorter than recorded, and excess payments were drawn against false invoices.

In Shir village, household connections were fewer than approved, yet extra money was claimed, alongside price variation payments obtained through false documentation.

In Bachkariya Part-2 and Ditvas villages, excavation work was incomplete, depth standards were violated, and public beneficiaries were deprived of intended water supply benefits.

A critical piece of evidence noted by the Court involved invoice No. 2122/903 for 26,38,022 rupees issued by Kamdhenu Pipes. While the applicant submitted this invoice to claim payments for Ditvas village, statement recordings from the pipe manufacturer confirmed that the bill actually pertained to Shir village and was never issued for Ditvas, establishing prima facie fabrication of billing records.

To contextualize the legal standard for granting anticipatory bail in economic offences, the Court placed reliance on key landmark precedents from the Supreme Court of India:

In Serious Fraud Investigation Office v. Aditya Sarda, 2025 SCC OnLine SC 764, the Supreme Court reiterated that anticipatory bail should not be granted routinely in complex financial crimes and serious economic offences involving large-scale public funds.

In P. Chidambaram v. Directorate of Enforcement, (2019) 9 SCC 24, the apex court observed that power under Section 438 of the Code of Criminal Procedure (now Section 482 of BNSS) is extraordinary and must be exercised sparingly. Refusal of anticipatory bail in grave offences does not violate Article 21, as societal interest in a fair and thorough investigation outweighs individual protection in such contexts.

In Y.S. Jagan Mohan Reddy v. Central Bureau of Investigation, (2013) 7 SCC 439, and Nimmagadda Prasad v. Central Bureau of Investigation, (2013) 7 SCC 466, the Supreme Court held that economic offences constitute a class apart because they pose a severe threat to the financial health and developmental structure of the nation. Financial crimes committed with deliberate design for personal profit warrant a strict judicial approach regarding bail.

In Siddharam Satlingappa Mhetre v. State of Maharashtra, (2011) 1 SCC 694, the apex court observed that personal liberty must not be protected at the cost of the larger interest of society.

In Jai Prakash Singh v. State of Bihar, (2012) 4 SCC 379, the Supreme Court held that anticipatory bail can be granted only in exceptional circumstances where the court forms a prima facie view that the applicant was falsely enroped.

In Pratibha Manchanda v. State of Haryana, AIR 2023 SC 3307, the Supreme Court emphasized walking a tightrope to strike a balance between safeguarding individual liberty and protecting the integrity of criminal investigations.

Applying these principles, the High Court concluded that the present case did not present any exceptional circumstances warranting pre-arrest protection. Given the gravity of the white-collar scam and the need to unearth the full scope of collusion, custodial interrogation was held to be fully justified.

Final Decision of the Court:

The High Court of Gujarat held that the application for anticipatory bail lacked merit. Exercising its jurisdiction under Section 482 of the Bharatiya Nagarik Suraksha Sanhita, 2023, the Court formally dismissed the application and discharged the rule. The Court clarified that its observations regarding the facts were tentative and meant solely for deciding the pre-arrest bail plea.

Point of Law Settled:

This judgment reaffirms that economic offences involving white-collar fraud, falsification of records, and misappropriation of public welfare funds constitute a distinct category of crime. In such matters, courts must prioritize societal interest and the necessity of effective custodial interrogation over personal liberty. The decision clarifies that submitting pre-arrest bail applications in contractual or execution fraud cases cannot succeed merely by labeling the dispute as commercial, especially when prima facie evidence demonstrates systemic forgery and intentional financial loss to the public exchequer.

Case Details

Title of the Case: Vaishnani Vipul Dalsukhbhai v. State of Gujarat

Date of Judgment: 27/07/2026

Case Number: R/Criminal Misc. Application (For Anticipatory Bail) No. 17277 of 2026

Neutral Citation: 2026:GUJHC:17277

Name of Court: High Court of Gujarat at Ahmedabad

Name of Hon'ble Judge: Hon'ble Mr. Justice Sanjeev J. Thaker

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

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

Headnote of the Judgment:

Vaishnani Vipul Dalsukhbhai v. State of Gujarat, High Court of Gujarat at Ahmedabad. Application for anticipatory bail under Section 482 of BNSS in connection with FIR for offences under IPC and Prevention of Corruption Act relating to multi-crore irregularities in the Nal Se Jal public water scheme. Allegations involved siphoning government funds through forged invoices, shallow pipe-laying, and incomplete work. The Court held that economic offences affecting public exchequer require thorough custodial interrogation. Application dismissed.

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Raj Abhushan Bhandar Vs. The Assistant Registrar of Trade Marks

Raj Abhushan Bhandar Vs. The Assistant Registrar of Trade Marks 

Date of Judgment: 23-07-2026

Case No.: Letters Patent Appeal No. 619 of 2026 in Civil Appeal No. 22 of 2023

Neutral Citation: 2026:GUJHC:LPA619

Court Name: High Court of Gujarat at Ahmedabad

Name of Hon'ble Judge: Hon'ble Mrs. Justice Sunita Agarwal, Chief Justice, and Hon'ble Mr. Justice D.N. Ray

### Factual and Procedural Background

The appellant filed intra-court appeals under Clause 15 of the Letters Patent against a single-judge judgment dated July 11, 2025. That judgment was rendered in a statutory appeal under Section 91 of the Trade Marks Act, 1999, which originated from an order passed by the Trademark Registry, Ahmedabad on February 27, 2023. Respondent No. 2 raised a preliminary objection regarding the maintainability of the Letters Patent Appeals.

### Dispute before Court

The primary legal issue before the High Court was whether an intra-court appeal under Clause 15 of the Letters Patent lies against a decision of a single judge rendered in a statutory appeal under Section 91 of the Trade Marks Act, 1999.

### Reasoning of Judge

The Court held that the Registrar of Trade Marks performs quasi-judicial duties and possesses the trappings of a civil court, making proceedings under Section 91 appellate in nature rather than an exercise of original civil jurisdiction. Furthermore, Section 100A of the Code of Civil Procedure, 1908, explicitly bars a second appeal from an order passed by a single judge exercising appellate powers. The conscious omission of a second appeal provision in the Trade Marks Act, 1999 (which previously existed under Section 109(5) of the 1958 Act) reflects legislative intent to restrict statutory appeals to a single tier before the High Court.

### Decision

The Division Bench sustained the preliminary objection and held that the Letters Patent Appeals were not maintainable.

### One Important Legal Principle Held in the Case

An intra-court appeal under Clause 15 of the Letters Patent does not lie against a single judge's judgment in a statutory appeal under Section 91 of the Trade Marks Act, 1999, as the Registrar functions with the trappings of a court and Section 100A of the Code of Civil Procedure bars a second appellate tier.

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

# Maintainability of Letters Patent Appeals Under Section 91 of the Trade Marks Act, 1999

## Introduction:

The interplay between special intellectual property enactments and general procedural provisions governing appellate remedies often raises significant jurisdictional questions. In a crucial judgment, the Division Bench of the High Court of Gujarat examined whether a further intra-court appeal under Clause 15 of the Letters Patent is maintainable against a single judge's order passed in a statutory appeal under Section 91 of the Trade Marks Act, 1999.

## Factual and Procedural Background:

The dispute arose out of an order dated February 27, 2023, passed by the Trademark Registry, Ahmedabad. Aggrieved by the Registry's decision, statutory appeals were preferred before the High Court under Section 91 of the Trade Marks Act, 1999. On July 11, 2025, a single judge of the High Court adjudicated the appeals. Following this determination, intra-court appeals under Clause 15 of the Letters Patent were filed before the Division Bench. The respondents raised a preliminary objection contending that such appeals were barred by Section 100A of the Code of Civil Procedure, 1908, and the statutory framework of the 1999 Act.

## Dispute Before the Court

The core legal question requiring adjudication was whether an intra-court appeal under Clause 15 of the Letters Patent can be entertained against a decision rendered by a single judge exercising appellate jurisdiction under Section 91 of the Trade Marks Act, 1999.

The appellants argued that the jurisdiction under Clause 15 of the Letters Patent is an independent constitutional charter power that remains available unless expressly or by necessary implication excluded by statute. They contended that because the Registrar is an administrative authority and not a formal civil court, Section 100A of the Code of Civil Procedure does not apply to bar an intra-court appeal.

Conversely, the respondents argued that the Registrar functions as a quasi-judicial authority with full trappings of a court while deciding trademark disputes. Consequently, an appeal under Section 91 before a single judge is an exercise of appellate jurisdiction. They submitted that Section 100A of the Code of Civil Procedure bars any second appeal from a single judge's appellate order, and that Parliament consciously removed the provision for a second appeal when replacing the Trade and Merchandise Marks Act, 1958 with the Trade Marks Act, 1999.

## Reasoning and Analysis of the Court

The Court conducted a comprehensive analysis of the powers vested in the Registrar under the Trade Marks Act, 1999, and the accompanying Trade Marks Rules, 2017. It noted that under Section 127 of the Act, the Registrar is endowed with explicit powers of a civil court, including receiving evidence, administering oaths, enforcing witness attendance, compelling document production, issuing commissions, and reviewing decisions. Moreover, orders regarding costs passed by the Registrar are executable as decrees of a civil court.

By examining established constitutional precedents regarding quasi-judicial authorities, the Court observed that the basic test to determine whether an authority possesses the trappings of a court is whether it has been conferred with statutory power to resolve a dispute between contesting parties in exercise of the State's inherent judicial function. Because the Registrar decides substantial legal rights and liabilities through adversarial evidentiary procedure, the Registrar functions as a tribunal possessing the trappings of a civil court.

As a result, when a single judge hears a statutory appeal under Section 91 of the Trade Marks Act, 1999, the judge exercises appellate jurisdiction rather than original jurisdiction. Section 100A of the Code of Civil Procedure contains a non-obstante clause overriding the Letters Patent and prohibiting any further appeal when a single judge decides an appeal from an order or decree.

Additionally, the Court evaluated the legislative history, highlighting that Section 109(5) of the repealed 1958 Act specifically provided for a second tier of appeal to a Division Bench, whereas Section 91 of the 1999 Act consciously omitted this provision. This omission reflects a clear legislative intent to restrict statutory appeals to a single appellate forum.

## Final Decision of the Court

The Court sustained the preliminary objection raised by the respondents. It held that the intra-court appeals filed under Clause 15 of the Letters Patent against the judgment of the single judge were not maintainable and accordingly dismissed them.

## Point of Law Settled

This judgment reaffirms that the Registrar of Trade Marks acts as a tribunal with the trappings of a civil court when adjudicating trademark controversies. Consequently, an appeal determined by a single judge under Section 91 of the Trade Marks Act, 1999, constitutes appellate adjudication. By application of Section 100A of the Code of Civil Procedure, 1908, further intra-court appeals under Clause 15 of the Letters Patent are completely barred.

Title of the Case: M/S Raj Abhushan Bhandar v. The Assistant Registrar of Trade Marks & Anr.

Date of Judgment: 23/07/2026

Case Number: Letters Patent Appeal No. 619 of 2026 in Civil Appeal No. 22 of 2023

Neutral Citation: 2026:GUJHC:LPA619

Name of Court: High Court of Gujarat at Ahmedabad

Name of Hon'ble Judge: Hon'ble Mrs. Justice Sunita Agarwal, Chief Justice, and Hon'ble Mr. Justice D.N. Ray

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

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

Headnote of the Judgment:

M/S Raj Abhushan Bhandar v. The Assistant Registrar of Trade Marks & Anr., High Court of Gujarat. Intra-court appeals under Clause 15 of Letters Patent were filed against a single judge's judgment rendered in a statutory appeal under Section 91 of the Trade Marks Act, 1999. The respondents raised preliminary objections on maintainability. The Court held that the Registrar exercises quasi-judicial powers with the trappings of a civil court. Therefore, the single judge exercised appellate jurisdiction, and further intra-court appeals are barred by Section 100A of the Code of Civil Procedure, 1908, and the statutory scheme. Appeals dismissed as not maintainable.

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BioPharma Inc. Vs. Deputy Controller of Patents

Delhi High Court Remands Array BioPharma Cancer Combination Patent Application for Fresh Reconsideration

Array BioPharma Inc. Vs. Deputy Controller of Patents and Designs:23.07.2026:C.A.(COMM.IPD-PAT) 37/2023:2026:DHC:5856:Hon'ble Mr. Justice Tushar Rao Gedela

Factual and Procedural Background

Array BioPharma Inc. filed Indian Patent Application No. 450/DELNP/2015 on January 19, 2015, titled "PHARMACEUTICAL COMBINATION COMPRISING A BRAF INHIBITOR AN EGFR INHIBITOR AND OPTIONALLY A PI3K ALPHA INHIBITOR", tracing priority to a US application filed on August 7, 2012. Following the issuance of the First Examination Report and multiple rounds of hearings, the Deputy Controller of Patents and Designs passed an order on June 30, 2023 under Section 15 of the Patents Act, 1970, refusing the grant of patent. The refusal was based on grounds of lack of inventive step under Section 2(1)(ja), non-patentability under Section 3(d), non-patentability under Section 3(i), and non-compliance with Section 10(4) and Section 10(5). Aggrieved by this rejection, the applicant filed an appeal under Section 117A of the Patents Act before the High Court of Delhi.

Dispute before Court

The central dispute was whether the claimed pharmaceutical combination comprising a B-Raf inhibitor (Encorafenib), an EGFR inhibitor (Cetuximab or Erlotinib), and optionally a PI3K-alpha inhibitor (Alpelisib) lacked an inventive step over prior art citations D1 to D4. Additionally, the Court had to determine whether the subject application fell under the statutory bar of Section 3(d) as a non-patentable form or derivative of a known substance without enhanced efficacy, and whether the phrase "for simultaneous, separate or sequential administration" transformed a product combination claim into a non-patentable method of treatment under Section 3(i) of the Patents Act, 1970.

Reasoning of Judge

The Court observed that none of the cited prior art documents D1 to D4 disclosed or suggested the specific dual or triple combination of Encorafenib, Cetuximab/Erlotinib, and Alpelisib, nor did they provide any motivation for a person skilled in the art to combine these precise active pharmaceutical agents. The Controller failed to conduct a proper analysis of inventive step or identify any technical problem solved over the closest prior art. Regarding Section 3(d), the Court held that the provision applies when an invention is a new form of a known substance, and the Controller failed to identify any base "known compound" of which the claimed combination was alleged to be a derivative. On Section 3(i), the Court affirmed that Claim 1 was explicitly structured as a product claim for a pharmaceutical combination rather than a treatment method, protocol, or dosing schedule. The description of administration modes served merely as a functional descriptor of the product, and working examples in the specification demonstrating practical utility do not alter the product nature of the claims.

Decision

The High Court of Delhi set aside the impugned refusal order dated June 30, 2023, and remanded the patent application back to the Controller of Patents and Designs for a de novo reconsideration on its merits. The Court directed the Controller to dispose of the matter within six months from the date of receipt of the order after providing a fair opportunity of hearing to the appellant.

One Important legal principle held in the case

A pharmaceutical combination product claim is not converted into a non-patentable method of treatment under Section 3(i) of the Patents Act, 1970 merely because the claims or complete specification describe administration schedules or include working examples demonstrating practical clinical feasibility.

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

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Analytical Legal Article on Patentability of Pharmaceutical Combination Claims

Introduction:

The legal framework governing pharmaceutical patents in India strikes a delicate balance between encouraging genuine technical innovation and preventing the unwarranted extension of patent monopolies. Central to this balance are statutory provisions under the Patents Act, 1970 that exclude certain subject matters from patentability, particularly those relating to mere derivatives of known substances and methods of medical treatment. A recurrent issue in patent prosecution concerns whether claims directed to pharmaceutical combinations containing known active ingredients constitute patentable product inventions or barred therapeutic regimens. This judgment of the High Court of Delhi provides critical clarity on the threshold of inventive step, the scope of Section 3(d), and the boundaries of Section 3(i) exclusions when adjudicating pharmaceutical combination patent applications.

Factual and Procedural Background:

The subject patent application, numbered 450/DELNP/2015 and titled "PHARMACEUTICAL COMBINATION COMPRISING A BRAF INHIBITOR AN EGFR INHIBITOR AND OPTIONALLY A PI3K ALPHA INHIBITOR", originated from a priority US application filed on August 7, 2012. An international PCT application was filed on August 5, 2013, published internationally on February 13, 2014, and subsequently entered the Indian national phase on January 19, 2015. The application was published under Section 11A of the Patents Act, 1970 on June 26, 2015, and a formal request for examination was filed on August 1, 2016.

The Patent Office issued a First Examination Report on August 24, 2018, to which a detailed response was submitted on February 6, 2019. Following hearing notices, adjournments, and formal hearings held under Section 15 of the Act, along with written submissions and clinical data filed on record, the Deputy Controller of Patents and Designs issued an order on June 30, 2023. The Controller refused the patent application on the grounds of lack of inventive step under Section 2(1)(ja), non-patentability under Sections 3(d) and 3(i), and lack of clarity and definitive scope under Sections 10(4)(c) and 10(5) of the Patents Act, 1970. The applicant then preferred a statutory appeal under Section 117A before the High Court of Delhi challenging the refusal order.

Dispute Before the Court

The main dispute before the Court revolved around whether the Patent Office was justified in refusing the patent application for a pharmaceutical combination designed for the treatment of proliferative diseases such as colorectal cancer. The primary legal issue was whether the claimed combination lacked an inventive step under Section 2(1)(ja) in light of four prior art documents cited by the Patent Office. A key factual controversy pertained to whether a person skilled in the art, reading the prior art documents, would have had the motivation or reasonable expectation of success to combine the specific active pharmaceutical agents selected by the applicant.

Another essential issue was whether the subject application fell within the non-patentability bar of Section 3(d) of the Act. The Patent Office contended that the combination comprised known compounds without showing enhanced efficacy over known prior art. The applicant countered that Section 3(d) is inapplicable to a combination of distinct, independent active pharmaceutical agents having different chemical structures and mechanisms of action.

Finally, a major point of contention was the applicability of Section 3(i) of the Act, which prohibits patents for processes of medicinal or therapeutic treatment of human beings. The Patent Office argued that because the claims referenced simultaneous, separate, or sequential administration and the specification outlined clinical trial dosing protocols, the claimed invention was essentially a method of medical treatment. The applicant maintained that the claims were strictly product claims defining a pharmaceutical combination entity, and that administration descriptors and clinical examples merely demonstrated industrial applicability and practical workability.

Reasoning and Analysis of the Court

In analyzing the objection regarding lack of inventive step under Section 2(1)(ja) of the Act, the Court conducted a comprehensive, document-by-document evaluation of the four cited prior arts. Prior art D1 disclosed B-Raf inhibitors generally and taught combinations with MEK inhibitors, but provided no teaching or disclosure regarding combinations with EGFR or PI3K-alpha inhibitors. Prior art D2 focused on diagnostic and prognostic methods for detecting mutations and mentioned EGFR signaling inhibitors generally in combination with unspecified RAF inhibitors, without disclosing the specific B-Raf inhibitor Encorafenib. Prior art D3 disclosed combinations of dabrafenib with an unspecified PI3K inhibitor, but contained no reference to EGFR inhibitors such as Erlotinib or Cetuximab. Prior art D4 was directed to novel PI3K inhibitors as chemical entities and discussed in vitro models involving EGFR, but failed to disclose the specific combination claimed.

The Court concluded that none of the cited prior art documents, whether viewed individually or collectively, disclosed or suggested the specific dual combination of Encorafenib with Erlotinib or Cetuximab, or the triple combination incorporating Alpelisib. The Court observed that the Controller failed to identify the closest prior art document, articulate the specific technical problem solved by the invention, or explain how a person skilled in the art would be motivated to select and combine these specific active ingredients from a vast landscape of known compounds. Furthermore, the Court highlighted that the clinical data in the specification demonstrated significant technical advancement and synergistic therapeutic effects, including tumor regression, which had not been properly evaluated by the Controller.

Addressing the objection under Section 3(d) of the Act, the Court noted that Section 3(d) applies to the mere discovery of a new form of a known substance or derivatives unless they differ significantly in efficacy. The Court emphasized that for Section 3(d) to be invoked, the decision-maker must explicitly identify the base known compound. Relying upon the principle affirmed in Topotarget UK Ltd. vs. Controller General of Patents & Designs [IPDPTA/50/2023], the Court reiterated that a combination of two or more independent active pharmaceutical agents, each possessing a distinct chemical identity and therapeutic mechanism, cannot be treated as derivatives of each other under Section 3(d). The Controller's failure to identify any specific known compound rendered the Section 3(d) finding legally unsustainable.

On the challenge under Section 3(i) of the Act, the Court examined the structural language of Claim 1. Section 3(i) prohibits processes for therapeutic treatment, but does not exclude pharmaceutical products or combinations. The Court held that the phrase "for simultaneous, separate or sequential administration" functions merely as a descriptor defining the range of ways the constituent active ingredients in the combination product can be delivered, without transforming the product claim into a process or method step.

To reinforce this legal standard, the Court referred to established precedents including Societe Des Produits Nestle SA vs. Controller of Patents & Designs [CA (COMM).IPD-PAT) 22/2022] and Medilabo RFP Ink Inc. vs. Controller of Patents [CA (COMM).IPD-PAT) 16/2024], which established that using expressions relating to treatment or administration to define a composition does not attract Section 3(i). Furthermore, drawing upon the principles laid down in Bayer Pharma Aktiengesellschaft vs. The Controller of Patents and Design [2024:DHC:2395], the Court clarified the fundamental legal distinction between claim scope and working examples. Working examples and clinical protocols set out in a patent specification serve to demonstrate the practical feasibility and workability of an invention under Section 10(4) of the Act, but do not dictate or expand the legal boundaries of the claim itself. Since Claim 1 was drafted as a product claim for a pharmaceutical combination, Section 3(i) was completely inapplicable.

The Court also briefly evaluated principles from related jurisprudence including Ranbaxy Laboratories Ltd. vs. The Controller of Patents & Designs [OA/15/2011/PT/MUM], Ajantha Pharma Ltd. vs. Allergan Inc. & Ors. [Order No. 173/2013], Biomoneta Research Pvt. Ltd. v. Controller General of Patents & Designs [2023/DHC/001816], Zydus Lifesciences Ltd. v. ER Squibb & Sons LLC [2026:DHC:178-DB], and Novartis AG v. Union of India [(2013) 6 SCC 1]. The Court found that the Controller's rejection under Sections 10(4)(c) and 10(5) was entirely devoid of reasoning, making a complete re-examination necessary.

Final Decision of the Court

The Court set aside the impugned order dated June 30, 2023 passed by the Deputy Controller of Patents and Designs under Section 15 of the Patents Act, 1970. The matter was remanded back to the Patent Office for a de novo reconsideration of the patent application on its merits. The Court directed the Controller to afford the applicant a fair hearing and to dispose of the patent application within six months from the date of receipt of the judicial order, while clarifying that the fresh determination must be made independently without being influenced by the observations made in the judgment.

Point of Law Settled

This decision clarifies and reinforces two important principles in Indian patent law. First, it settles that a product claim directed to a pharmaceutical combination entity cannot be recharacterized as a non-patentable process or method of treatment under Section 3(i) of the Patents Act, 1970 simply because the claim describes administration modes or because the complete specification details clinical trial protocols and dosing schedules. Second, it affirms that when rejecting an application under Section 3(d) or Section 2(1)(ja), the Patent Office must specifically identify the base known compound and clearly articulate the technical problem and motivation that would lead a person skilled in the art to combine specific active pharmaceutical agents, rather than relying on generalized mosaic references to prior art.

Title of the Case: Array BioPharma Inc. vs. Deputy Controller of Patents and Designs

Date of Judgment: 23.07.2026

Case Number: C.A.(COMM.IPD-PAT) 37/2023

Neutral Citation: 2026:DHC:5856

Name of Court: High Court of Delhi at New Delhi

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

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

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

Headnote of the Judgment:

Array BioPharma Inc. v. Deputy Controller of Patents and Designs, High Court of Delhi, C.A.(COMM.IPD-PAT) 37/2023, Neutral Citation 2026:DHC:5856. The appellant appealed against an order of the Deputy Controller refusing patent application 450/DELNP/2015 for a pharmaceutical combination of a B-Raf inhibitor, an EGFR inhibitor, and optionally a PI3K-alpha inhibitor under Sections 2(1)(ja), 3(d), and 3(i) of the Patents Act, 1970. The High Court found that prior art documents D1 to D4 did not teach or suggest the claimed combination. The Court held Section 3(d) inapplicable as no base known compound was identified, and ruled that Section 3(i) does not bar combination product claims merely because administration modes or clinical examples are described. The High Court set aside the refusal order and remanded the matter for fresh de novo consideration within six months.

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ADS Spirits Pvt. Ltd. Vs. The Registrar of Trade Marks

Delhi High Court Sets Aside Rejection Order of Registrar of Trade Marks for Applying Misconceived Parameter of Uniqueness Under Section 9(1)(a)

ADS Spirits Pvt. Ltd. Vs. The Registrar of Trade Marks:21.07.2026:C.A.(COMM.IPD-TM) 8/2026:2026:DHC:5783:Hon'ble Ms. Justice Jyoti Singh

Factual and Procedural Background

The appellant, an established liquor manufacturer with substantial market presence, applied for registration of the word mark OFFER under Class 33 for alcoholic beverages on a proposed to be used basis. The Registrar of Trade Marks issued an examination report raising objections under Section 9(1)(a) of the Trade Marks Act, 1999, describing the mark using standard pre-drafted language. Despite detailed responses and additional submissions citing earlier registered composite marks containing the word offer and relevant judicial precedents, the Registrar passed an order rejecting the application on the ground that the word offer in common parlance signifies a discount and lacks uniqueness. The appellant challenged this rejection before the High Court of Delhi under Section 91 of the Trade Marks Act, 1999.

Dispute before Court

The core dispute was whether the Registrar of Trade Marks applied the correct legal standard under Section 9(1)(a) of the Trade Marks Act, 1999, in refusing the registration of the mark OFFER for alcoholic beverages. The court had to determine whether uniqueness is a statutory requirement for trademark registration and whether an unreasoned order that ignores written submissions and prior precedents can be sustained.

Reasoning of Judge

The court observed that Section 9(1)(a) of the Trade Marks Act, 1999, bars registration if a mark is devoid of distinctive character, meaning it cannot distinguish the goods of one person from those of another, but does not impose any requirement of uniqueness, novelty, or inventiveness. The Registrar wrongly evaluated the mark on an unknown parameter of uniqueness rather than assessing its inherent distinctiveness relative to the specific goods. Distinctiveness must be evaluated in relation to the relevant product category; a ordinary English word may be arbitrary and distinctive when applied to goods with which it has no direct connection. Furthermore, the court held that as a quasi-judicial authority, the Registrar is legally obligated to pass a reasoned, speaking order addressing the specific responses and authorities submitted by the applicant. Passing cryptic and stereotyped rejection orders without applying mind to the record constitutes a complete failure of quasi-judicial functions.

Decision

The High Court allowed the appeal, set aside the impugned rejection order dated 30.10.2025, and remanded the trade mark application back to the Registrar of Trade Marks for fresh consideration in accordance with the parameters of Section 9(1)(a) within four months, after providing an opportunity of hearing to the appellant.

One Important legal principle held in the case

Section 9(1)(a) of the Trade Marks Act, 1999, requires a mark to possess distinctive character relative to the applied goods and does not mandate uniqueness as a test for registration, and quasi-judicial orders rejecting registration must be speaking orders that explicitly address the submissions and precedents placed on record.

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

Introduction:

The High Court of Delhi recently delivered a significant judgment concerning the standards applied by the Trade Marks Registry when examining trademark applications for registration. The decision clarifies the distinct boundary between the statutory requirement of distinctive character under Section 9(1)(a) of the Trade Marks Act, 1999, and the non-statutory concept of uniqueness. The ruling reinforces the imperative that quasi-judicial authorities like the Registrar of Trade Marks must issue well-reasoned, speaking orders that actively consider the material and precedents submitted by applicants rather than issuing standardized rejection templates.

Factual and Procedural Background:

The appellant company, incorporated in 2010 as part of a prominent Indian alcoholic beverage group, had achieved total liquor sales exceeding 7,500 crore rupees by March 2025 across its various established brand lines. Seeking statutory rights over a new mark, the appellant filed Trade Mark Application No. 5514779 on July 3, 2022, seeking registration of the word mark OFFER in Class 33 for alcoholic beverages (except beers) and alcoholic preparations for making beverages, on a proposed to be used basis.

The Trade Marks Registry issued an Examination Report on November 18, 2022, raising absolute grounds of refusal under Section 9(1)(a) of the Trade Marks Act, 1999. The objection was communicated through a pre-formulated template stating that the mark was a common surname, personal name, geographical name, ornamental, or non-distinctive geometrical figure. The applicant filed its formal reply on December 26, 2022, explaining that the mark was arbitrary and inherently distinctive in respect of alcoholic beverages. Ahead of scheduled hearings, the applicant submitted an additional reply on June 24, 2024, listing over thirty previously registered marks in various classes incorporating the word OFFER along with relevant case laws establishing that an ordinary word can be arbitrary when applied to unrelated goods.

Without addressing these detailed submissions or the cited precedents, the Registrar issued an order on October 30, 2025, refusing registration under Section 9(1)(a). The order concluded that in general usage, the word offer refers to demanding a discount when purchasing goods or services and, being devoid of uniqueness, could not be registered. The applicant subsequently filed an appeal under Section 91 of the Trade Marks Act, 1999, before the High Court of Delhi.

Dispute Before the Court

The primary legal issue requiring adjudication was whether the Registrar of Trade Marks applied the correct legal standard under Section 9(1)(a) of the Trade Marks Act, 1999, when assessing the registrability of the mark OFFER for Class 33 goods.

The appellant contended that the Registrar applied an incorrect legal test by insisting on uniqueness, a concept foreign to trademark law, instead of assessing capability to distinguish goods. The appellant argued that while offer is an ordinary English word, it is completely arbitrary when applied to alcoholic beverages, as it carries no direct descriptive connection to liquor products. It was further argued that the Registrar failed to act as a proper quasi-judicial authority by issuing a cryptic order that totally ignored the applicant's written replies, lists of registered composite marks, and binding judicial precedents.

Conversely, the respondent maintained that the word offer is commonly used in everyday trade to denote discounts or promotional schemes. The respondent argued that granting exclusive rights over such a common word would impede ordinary commercial communication and that the refusal order was sufficiently reasoned under Section 9(1)(a).

Reasoning and Analysis of the Court

The Court examined the statutory language of Section 9(1)(a) of the Trade Marks Act, 1999, which prohibits registration of marks that are devoid of any distinctive character—defined statutorily as being incapable of distinguishing the goods or services of one person from those of another. The Court observed that the statute nowhere mentions or requires uniqueness, novelty, or inventiveness as a prerequisite for registration. By evaluating the mark on the test of uniqueness, the Registrar introduced an unauthorized standard not supported by law.

Analyzing the spectrum of distinctiveness, the Court reiterated that marks fall into arbitrary, suggestive, descriptive, and generic categories. Distinctiveness cannot be determined in isolation; it must always be evaluated relative to the specific goods or services involved. An ordinary English word may be generic or descriptive for one category of goods but entirely arbitrary and distinctive for another. To illustrate this principle, the Court referred to well-established judicial precedents where common or non-descriptive words were protected because they lacked a direct connection to the underlying products:

In Oswaal Books and Learnings Private Limited v. Registrar of Trade Marks (2026 SCC OnLine Del 2362), a Division Bench held that the phrase ONE FOR ALL was registrable for educational books in Class 16 because the mark did not describe or directly connect to tangible paper products.

In Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. (2019 SCC OnLine Del 8739), the court observed that while ZEN is a generic term in the context of Buddhism, it is arbitrary and fully protectable when used for mobile phones.In Mohd. Rafiq v. Modi Sugar Mills Ltd. (1971 SCC OnLine Del 190), the word SUN was held capable of acquiring distinctiveness for lanterns because any connection between the sun and lanterns was remote rather than direct or descriptive.In Disruptive Health Solutions Private Limited v. Registrar of Trade Marks (2022 SCC OnLine Del 2002), the court affirmed that arbitrary or suggestive marks possess in

herent distinctiveness and do not require proof of secondary meaning to achieve registration.

The Court also observed that the Registrar conflated the terms offer and discount. An offer is an invitation to transact, whereas a discount is a price reduction; the word offer alone is not a standard standalone term for price reductions without qualifying words like special or limited.

Additionally, the Court severely criticized the administrative manner in which the Trade Marks Registry processed the application. The initial examination report contained a mechanical checklist of contradictory objections, showing lack of application of mind at the outset. Furthermore, the final rejection order failed to discuss the applicant's responses, the thirty-one registered composite marks cited, or the binding decisions presented. Citing I Am the Ocean, LLC v. Registrar of Trade Marks (2023 SCC OnLine Bom 3341) and Psychotropic India Limited v. Registrar of Trade Marks (2026 SCC OnLine Del 446), the Court reiterated that passing unreasoned and cryptic orders without considering material on record represents an abdication of quasi-judicial duties.

Final Decision of the Court

The Court set aside and quashed the impugned order dated October 30, 2025. The trade mark application was remanded back to the Registrar of Trade Marks for fresh consideration strictly under the statutory parameters of Section 9(1)(a) of the Trade Marks Act, 1999. The Registrar was directed to issue a reasoned decision within four months after granting a hearing to the appellant and reviewing all written submissions and cited materials on record.

Point of Law Settled

This judgment reaffirms that uniqueness is not a statutory condition for trademark registration in India. The test under Section 9(1)(a) of the Trade Marks Act, 1999, is limited to distinctiveness specifically whether a mark can distinguish the applicant's goods from those of others when viewed in direct relation to the specific goods involved. The decision also reaffirms that the Registrar of Trade Marks, operating as a quasi-judicial authority, cannot issue mechanical, unreasoned, or standardized rejection orders that ignore written replies and precedents submitted by applicants.

Title of the Case: ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks

Date of Judgment: 21.07.2026

Case Number: C.A.(COMM.IPD-TM) 8/2026 

Neutral Citation: 2026:DHC:5783

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

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

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

Headnote of the Judgment:

ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks, High Court of Delhi at New Delhi, C.A.(COMM.IPD-TM) 8/2026 (Neutral Citation: 2026:DHC:5783). The appellant challenged the rejection of its trademark application for the mark OFFER in Class 33 for alcoholic beverages under Section 9(1)(a) of the Trade Marks Act, 1999. The High Court held that the Registrar applied an incorrect legal test by evaluating the mark on the parameter of uniqueness rather than statutory distinctiveness relative to the goods. The Court further ruled that the Registrar failed to perform quasi-judicial duties by issuing a non-speaking order that ignored written replies and cited precedents. The appeal was allowed, the rejection order was quashed, and the matter was remanded for fresh adjudication within four months.

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