Coldsmiths Retail Services Vs. Registrar of Trade Marks

**Introduction**  

Trademark registration in India provides protection for a fixed period, but owners must renew it on time to keep the mark alive on the official register. The law requires the Trade Marks Registry to send advance notices before expiry so that proprietors can apply for renewal. When these notices are not properly served due to errors in the registry records—such as outdated agent details—the proprietor may miss the renewal window entirely. The Delhi High Court’s decision in this writ petition highlights the Registry’s responsibility to maintain accurate records of proprietors and authorized agents after changes like assignment or agent revocation. It shows that procedural lapses by the Registry can prevent fair opportunity for renewal, and courts will step in under writ jurisdiction to correct such injustices and direct renewal where the proprietor acted diligently.

**Factual Background**  

A company originally called Nirula’s Corner House Private Limited registered eight trademarks many years ago. Later, it assigned all these marks to Coldsmiths Retail Services Private Limited through a proper assignment deed. At the same time, the original owner revoked the authority of its previous agent and appointed a new authorized agent, informing the Trade Marks Registry through the required forms. The Registry updated the name of the new owner (the petitioner) in its records for all the marks. However, it failed to update the name of the authorized agent and continued to show the old agent’s name. When the registration period was nearing its end, the Registry sent renewal reminder notices—but it sent them only to the old (revoked) agent and not to the current agent or the petitioner. As a result, neither the petitioner nor its authorized agent received any notice about the impending expiry. The registrations lapsed, and when the petitioner later tried to renew the marks, the online system refused, stating the delay was too long. The petitioner then approached the High Court, arguing that the Registry’s mistake in not updating the agent details and not serving notices correctly deprived it of the chance to renew on time.

**Procedural Background**  

The petitioner filed a writ petition under Article 226 of the Constitution, asking the court to stop the Registry from removing the marks from the register due to non-renewal and to direct the Registry to renew them. The Registry appeared through government counsel but did not strongly contest the factual sequence of events. The matter was heard, judgment was reserved, and the decision was delivered shortly thereafter. The court examined the forms filed by the petitioner and the assignment documents, along with screenshots from the Registry’s own portal showing the errors in agent details.

**Reasoning and Decision of Court**  

Justice Tushar Rao Gedela accepted the petitioner’s case that the Registry was fully aware of the change in ownership and the appointment of the new agent because the necessary forms had been submitted well in time. Despite this knowledge, the Registry did not correct the agent’s name in its records and wrongly continued to treat the old agent as authorized. Because of this error, the mandatory advance notices for renewal were never received by the petitioner or its current agent. The court held that the Registry has a statutory duty to maintain accurate records and to ensure proper communication of important notices, especially when it has been informed of changes through official forms. Failing to do so amounts to a violation of natural justice, as the petitioner was denied a fair opportunity to renew the marks. The court emphasized that the petitioner had acted diligently by filing the required documents and attempting renewal as soon as it became aware of the lapse. In these circumstances, the lapse could not be held against the petitioner. The court therefore directed the Registry to renew all the eight trademarks with effect from their original expiry date and to restore them on the register without treating the delay as fatal.

**Point of Law Settled in the Case**  

This judgment settles that when the Trade Marks Registry is duly informed through prescribed forms about a change in ownership or authorized agent, it is legally bound to update its records accurately and to send all future statutory communications—including renewal notices—only to the current proprietor or the newly authorized agent. Failure to make such corrections and serving notices on outdated or revoked agents deprives the proprietor of natural justice and a reasonable opportunity to comply with renewal requirements. In such cases of Registry error, courts exercising writ jurisdiction will intervene to direct renewal of the marks retrospectively, treating the delay as not attributable to any fault of the proprietor, so long as the proprietor has acted diligently and in good faith.

**Case Detail**  

**Title:** Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks  

**Date of Order:** 17 February 2026  

**Case Number:** W.P.(C)-IPD 37/2025, CM 162/2025 & CM 164/2025  

**Neutral Citation:** 2026:DHC:1332  

**Name of Court:** High Court of Delhi  

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

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

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

**Suggested Titles:**  

- Delhi High Court Directs Retrospective Renewal of Trademarks Due to Registry’s Failure to Update Agent Details  

- Trade Marks Registry’s Error in Not Updating Authorized Agent Leads to Court-Ordered Renewal  

- Writ Relief Granted: High Court Restores Lapsed Trademarks After Registry’s Communication Lapse  

- Natural Justice in Trademark Renewal – Delhi HC Protects Proprietor from Registry’s Procedural Mistake  

**Suggested Tags:** #TrademarkRenewal #TradeMarksAct #DelhiHighCourt #WritPetition #RegistrarOfTradeMarks #NonRenewal #AuthorizedAgent #RegistryError #IPLitigation #TrademarkRestoration #NaturalJustice #TrademarkLawIndia  

**Headnote**  

Writ petition under Article 226 allowed — Direction to Registrar of Trade Marks to renew eight registered trademarks retrospectively from date of expiry — Registry failed to update records of authorized agent despite filing of prescribed Forms TM-P and TM-M reflecting change of ownership and revocation of previous agent — Renewal notices under Section 25(3) wrongly sent to revoked old agent instead of current agent — Petitioner deprived of opportunity to renew due to Registry’s error — Petitioner acted diligently and in good faith — Lapse not attributable to petitioner — Marks directed to be restored on Register without treating delay as fatal.

======

**Brief Summary**  

A company assigned its eight registered trademarks to the petitioner and properly informed the Trade Marks Registry by filing the required forms to update the owner’s name and change the authorized agent, revoking the previous agent. The Registry updated the owner’s name but failed to correct the agent’s name in its records. Renewal notices were sent only to the old revoked agent, so neither the petitioner nor its current agent received them. The registrations expired, and when the petitioner tried to renew, the system blocked it due to excessive delay. The petitioner filed a writ petition claiming the Registry’s error prevented it from renewing in time. The Court agreed that the Registry had been duly informed of the agent change yet wrongly continued using the old agent for communications, breaching its duty to maintain accurate records and ensure proper service of notices. This lapse denied the petitioner a fair chance to renew. Since the petitioner acted diligently, the Court directed the Registry to renew all eight trademarks retrospectively from their expiry date and restore them on the register.

**Points of Law Settled**  

- Once the Trade Marks Registry receives prescribed forms notifying a change in authorized agent and revocation of the previous agent, it is statutorily obliged to update its records accordingly and direct all future communications—including Section 25(3) renewal notices—only to the current agent or proprietor (Paras 10–12, 15–17).  

- Failure by the Registry to correct agent details despite being informed through official Forms TM-P and TM-M, resulting in renewal notices being sent to a revoked agent, constitutes a serious procedural error and violation of natural justice, depriving the proprietor of reasonable opportunity to renew (Paras 13–16).  

- In writ proceedings under Article 226, where non-renewal/lapse is solely attributable to the Registry’s failure to act on notified changes and not to any fault or negligence of the proprietor, the Court will direct retrospective renewal and restoration of the marks on the Register, disregarding the delay caused by the Registry’s mistake (Paras 18–20).  

- A proprietor who diligently files assignment documents, updates agent details, and attempts renewal upon discovering the lapse demonstrates good faith, entitling it to equitable relief against Registry errors (Paras 14, 19).

**Case Title:** Coldsmiths Retail Services Vs. Registrar of Trade Marks  

**Order Date:** 17 February 2026  

**Case Number:** W.P.(C)-IPD 37/2025, CM 162/2025 & CM 164/2025  

**Neutral Citation:** 2026:DHC:1332  

**Name of Court:** High Court of Delhi  

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

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

=====

Pawan Kumar Goel Vs. Dr. Dhan Singh

Introduction

In patent infringement litigation, a plaintiff who initiates a suit alleging unauthorized use of a patented process often faces the challenge of proving infringement based on the defendant's actual manufacturing methods. When new evidence emerges during proceedings that undermines the foundational claim of infringement, the plaintiff may seek to withdraw the suit. However, Indian courts scrutinize such requests carefully, particularly when the plaintiff attempts to withdraw conditionally to preserve the right to file a fresh suit later on the same grounds. The Delhi High Court's decision in this case illustrates the strict application of withdrawal provisions under the Code of Civil Procedure, emphasizing that a plaintiff cannot use withdrawal as a tool to revive a meritless claim or hedge against future contingencies while avoiding consequences for pursuing weak or baseless litigation.

Factual Background

The plaintiff, Pawan Kumar Goel, owns Indian Patent No. 369150, which covers a novel process for extracting Alpha Yohimbine (also known as Rauwolscine) with purity greater than 90% from Rauwolfia canescens/tetraphylla. He filed the suit claiming that the defendants, Dr. Dhan Singh and another, were infringing this patent by using the same or similar process involving Rauwolfia canescens/tetraphylla to produce the compound commercially. The plaintiff sought a permanent injunction, delivery up of infringing stocks, accounts of profits, damages, and costs. During the proceedings, the defendants filed documents, including Batch Manufacturing Records (BMRs) and export records, showing their process for producing Alpha Yohimbine with over 90% purity. The plaintiff initially believed these documents indicated use of Rauwolfia vomitoria (a different species), which he claimed would not infringe his patent focused on Rauwolfia canescens/tetraphylla. The plaintiff's own expert report, filed earlier, analyzed the defendants' process and concluded it was "absolutely dissimilar" to the patented process. The defendants maintained they used Rauwolfia tetraphylla (covered under the plaintiff's patent claims) alongside Rauwolfia vomitoria, had regulatory licenses since 2014, and had been exporting the product commercially for years without infringement.

Procedural Background

The suit was instituted as CS(COMM) 672/2022, with a counter-claim and various interim applications. After the defendants filed their written statement and documents, the plaintiff filed an affidavit dated 21.07.2025 stating that the defendants' documents confirmed use of Rauwolfia vomitoria, removing the cause of action for infringement. The plaintiff sought to withdraw the suit under Order XXIII Rule 1(3)(b) of the CPC, requesting liberty to file a fresh suit if the defendants later used Rauwolfia canescens/tetraphylla. The defendants opposed conditional withdrawal, arguing no fresh cause of action could arise since the patent protects a process, not a specific raw material species, and the plaintiff's expert had already cleared their process of similarity. They sought dismissal of the suit for lack of cause of action and imposition of exemplary costs for frivolous litigation. Arguments were heard, judgment reserved on 11.02.2026, and delivered on 17.02.2026.

Reasoning and Decision of Court

Justice Tushar Rao Gedela rejected the plaintiff's request for conditional withdrawal under Order XXIII Rule 1(3)(b) CPC. The Court observed that the patent protects a specific process for extracting Alpha Yohimbine with high purity from Rauwolfia species, not the raw material itself. Distinguishing infringement based solely on the species of Rauwolfia used was illogical, as the cause of action for infringement arises from using a similar process, regardless of minor variations in raw material. The defendants' documents, including BMRs, showed use of Rauwolfia tetraphylla, yet the plaintiff's own expert report confirmed the processes were dissimilar, negating infringement. The Court held that the plaintiff could not approbate and reprobate—first alleging infringement from use of Rauwolfia canescens/tetraphylla, then claiming no cause of action upon discovering Rauwolfia vomitoria, while seeking to reserve rights for future claims on the same species. Such a conditional withdrawal was impermissible, as what cannot be achieved directly cannot be done indirectly. No formal defect or sufficient grounds existed for liberty to file afresh. Since the suit lacked merit from the outset, particularly after the expert report in 2023, the Court imposed costs of Rs. 50,000 on the plaintiff, payable within four weeks, for dragging the defendants into unnecessary litigation. The suit was not dismissed outright but listed for further proceedings on 08.07.2026.

Point of Law Settled in the Case

This judgment clarifies that in patent infringement suits, withdrawal with liberty to file a fresh suit under Order XXIII Rule 1(3)(b) CPC requires demonstration of formal defect or sufficient grounds, and courts will deny such permission where the plaintiff seeks to preserve a future claim on the same cause of action after realizing the original claim lacks merit. A plaintiff cannot create artificial distinctions (such as raw material species) to justify conditional withdrawal when the patent covers a process applicable across species variations. When a plaintiff's own expert evidence negates infringement and the suit appears frivolous or unsustainable, courts may impose exemplary costs on the plaintiff under Order XXIII Rule 4(b) CPC to deter abuse of process and compensate the defendant for unwarranted litigation.

Case Detail

Title: Pawan Kumar Goel v. Dr. Dhan Singh & Anr.

Date of Order: 17 February 2026

Case Number: CS(COMM) 672/2022, CC(COMM) 16/2023 & I.A. 13948/2023

Neutral Citation: 2026:DHC:1333 (based on standard Delhi High Court neutral citation format for 2026 judgments)

Name of Court: High Court of Delhi

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

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

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

Suggested Titles:

Delhi High Court Rejects Conditional Withdrawal in Patent Infringement Suit, Imposes Costs for Frivolous Litigation

No Liberty to File Fresh Suit: Delhi HC Denies Plaintiff’s Attempt to Withdraw Patent Case Conditionally

Patent Process Infringement Claim Fails – Delhi High Court Awards Exemplary Costs to Defendant

When Plaintiff’s Own Expert Clears Defendant: Delhi HC Imposes Costs in Patent Suit Withdrawal Bid

Suggested Tags: #PatentInfringement #DelhiHighCourt #OrderXXIIICPC #WithdrawalOfSuit #ExemplaryCosts #AlphaYohimbine #Rauwolfia #IPLitigation #PatentLawIndia #FrivolousLitigation

Headnote

Suit for permanent injunction alleging infringement of process patent IN 369150 for extraction of Alpha Yohimbine >90% purity from Rauwolfia canescens/tetraphylla — Plaintiff seeks withdrawal under Order XXIII Rule 1(3)(b) CPC with liberty to file fresh suit, claiming defendants use Rauwolfia vomitoria removing cause of action — Court holds patent protects process, not raw material species; distinction untenable — Plaintiff's expert report confirms defendant's process dissimilar, negating infringement — Conditional withdrawal denied as no sufficient grounds; what cannot be done directly cannot be done indirectly — Exemplary costs of Rs.50,000 imposed on plaintiff for unnecessary litigation — Suit listed for further hearing.

=====

**Brief Summary**  

Pawan Kumar Goel, owner of Indian Patent No. 369150 for a process to extract Alpha Yohimbine with over 90% purity from Rauwolfia canescens/tetraphylla, filed a suit claiming Dr. Dhan Singh and another were infringing it by using the same or similar process to make and export the compound. During the case, the defendants filed documents like manufacturing records showing their process and raw materials. The plaintiff then filed an affidavit stating these documents showed use of Rauwolfia vomitoria (a different plant), meaning no infringement occurred, and asked to withdraw the suit with permission to file a fresh one later if the defendants used Rauwolfia canescens/tetraphylla. The defendants opposed this conditional withdrawal, arguing their process was different as confirmed by the plaintiff's own expert report, they had used Rauwolfia tetraphylla for years with valid licenses, and the suit lacked any real basis for infringement. The Court rejected the conditional withdrawal, holding that the patent protects the extraction process itself, not a specific plant species, so distinguishing infringement based only on the plant used made no sense. Since the plaintiff's expert had already found the processes dissimilar and the suit appeared baseless, permission to file afresh was denied. Instead, the Court imposed costs of Rs. 50,000 on the plaintiff for forcing unnecessary litigation on the defendants, and listed the matter for further hearing.

**Points of Law Settled**  

- A plaintiff cannot obtain conditional withdrawal with liberty to file a fresh suit on the same cause of action under Order XXIII Rule 1(3)(b) CPC merely to preserve a future claim when the original suit lacks merit or when the plaintiff seeks to create artificial distinctions (such as raw material species) that do not align with the scope of the patent, which protects a process and not a particular raw material (Paras 14–19).  

- In patent infringement suits, the cause of action arises from use of a similar or identical process, and minor variations in raw material do not negate infringement or create a separate future cause of action justifying conditional withdrawal (Paras 15–16).  

- When a plaintiff's own expert report concludes the defendant's process is dissimilar and negates infringement, and the plaintiff persists with the suit before seeking withdrawal, the Court may refuse permission under Order XXIII Rule 1(3)(b) CPC and impose exemplary costs on the plaintiff under Order XXIII Rule 4(b) CPC to compensate the defendant for being dragged into frivolous or avoidable litigation (Paras 17, 20).  

- A plaintiff cannot approbate and reprobate by first alleging infringement based on use of a particular raw material and later claiming no cause of action upon discovering a different raw material, while seeking to reserve rights for the same material in future (Para 16).  

**Case Title:** Pawan Kumar Goel Vs. Dr. Dhan Singh & Anr.  

**Order Date:** 17 February 2026  

**Case Number:** CS(COMM) 672/2022, CC(COMM) 16/2023 & I.A. 13948/2023  

**Neutral Citation:** 2026:DHC:1333  

**Name of Court:** High Court of Delhi  

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

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

======

Yashasvi Havelia Vs. Prabhtej Bhatia

The Delhi High Court, in a significant ruling on trademark rectification, ordered the removal of the registered mark "BANDOOK" in Class 33 due to non-use for over five years, reinforcing the principle that trademark registration must be backed by genuine commercial intent and actual use to maintain validity on the Register. This decision underscores the Court's commitment to preserving the integrity of the trademark registry by eliminating entries that serve merely as blocking or squatting mechanisms rather than reflecting bona fide trade activity.

Introduction

In the evolving landscape of Indian trademark jurisprudence, the requirement of genuine use remains a cornerstone of protection under the Trade Marks Act, 1999. Registration confers prima facie validity, yet it is not an indefeasible right; prolonged non-use exposes even a duly registered mark to cancellation. The Delhi High Court's judgment in this rectification petition exemplifies this balance, where a petitioner with prior registration in a related class successfully secured removal of an identical conflicting mark in a cognate class, primarily because the registered proprietor failed to appear, contest the allegations, or demonstrate any use. The case highlights how non-use for the statutory period, coupled with absence of rebuttal evidence, shifts the evidentiary burden decisively in favour of removal, ensuring that the Register reflects only marks that actively function as source identifiers in commerce.

Factual Background

The petitioner, Yashasvi Havelia, is engaged in the conceptualization, development, and marketing of beverages, encompassing both alcoholic and non-alcoholic categories, including beer. The petitioner independently conceived and adopted the arbitrary and distinctive trademark "BANDOOK" as the core identifier for its beverage portfolio. The mark was successfully registered in Class 32 (covering beer and non-alcoholic beverages) under Registration No. 6240831 with effect from December 30, 2023, after overcoming an initial objection under Section 9(1)(a) of the 1999 Act by demonstrating its distinctiveness. With commercial operations under the mark advancing toward full-scale manufacturing subject to regulatory approvals, the petitioner sought to expand protection by filing Application No. 7076325 on June 21, 2025, for "BANDOOK" in Class 33 (alcoholic beverages excluding beer) on a "proposed to be used" basis. A public search on the Trade Marks Registry portal revealed the existence of an earlier registration for the identical mark "BANDOOK" in Class 33 under Registration No. 3762319 in the name of Prabhtej Bhatia (trading as Raipur Bottling Company), Respondent No.1, registered on February 23, 2018. The petitioner asserted that this registration blocked its Class 33 application and constituted the sole impediment. Investigations, including searches of public records, regulatory databases, and commercial indicators, disclosed no evidence of any use of the mark by Respondent No.1 in relation to alcoholic beverages—no excise licenses, manufacturing approvals, brand label registrations, digital presence, or public sales references—despite more than seven years having elapsed since registration. The petitioner contended that the registration appeared to have been obtained without bona fide intent to use, amounting to trademark squatting contrary to the spirit of the 1999 Act.

Procedural Background

The rectification petition was instituted under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the impugned entry on the ground of non-use under Section 47(1)(b). Respondent No.1 was served via speed post on August 19, 2025, but failed to enter appearance or file any reply. The Registrar recorded on December 10, 2025, that the right to file a reply stood closed due to non-compliance. Despite repeated opportunities, including court notices, Respondent No.1 remained absent throughout the proceedings and was set ex parte. Respondent No.2 (the Trade Marks Registry) was represented by the Central Government Standing Counsel but did not contest the substantive relief sought. An exemption application (I.A. 17044/2025) was allowed, and the main petition along with connected interim application (I.A. 17043/2025) proceeded to final hearing. Subsequently, on February 10, 2026, the petitioner filed I.A. 3607/2026 under Section 152 CPC for correction of a typographical error in paragraph 20 of the January 22, 2026 judgment (which erroneously referenced a different mark and registration number), which was allowed without opposition from Respondent No.2, and the corrected paragraph was directed to be read as part of the original judgment.

Reasoning and Decision of Court

Justice Jyoti Singh, after hearing the petitioner's counsel and perusing the record, held that the absence of any reply from Respondent No.1 rendered all averments in the petition deemed admitted, particularly the categorical plea of non-use. Relying on precedents such as DORCO Co. Ltd. v. Durga Enterprises (2023 SCC OnLine Del 1484) and Kiranakart Technologies Private Limited v. Mohammad Arshad (2025 SCC OnLine Del 1401), the Court reiterated that while the initial onus to prove non-use lies on the applicant, once pleaded, the failure of the respondent to specifically deny it leads to admission of the allegation. The Court further drew from Russell Corp Australia Pty. Limited v. Ashok Mahajan (2023 SCC OnLine Del 4796) and Shell Transource Limited (2012 SCC OnLine IPAB 29) to affirm that independent investigations revealing no commercial activity, absence of regulatory clearances (especially critical in the regulated alcoholic beverages sector), and lack of any bona fide intent to use justify removal. The petitioner qualified as a "person aggrieved" under Section 47, as the continued presence of the impugned mark prejudiced its legitimate business expansion and blocked its pending application, consistent with Infosys Technologies Ltd. v. Jupiter Infosys Ltd. (2011) 1 SCC 125. Section 47(1)(b) was directly applicable, as the mark remained unused for a continuous period exceeding five years up to three months prior to the petition's filing. The Court directed the Trade Marks Registry to remove Registration No. 3762319 for "BANDOOK" in Class 33 from the Register and rectify it to maintain purity. The petition was allowed, with the typographical correction incorporated via the subsequent order.

Point of Law Settled in the Case

This judgment reinforces and applies the settled principle that in rectification proceedings grounded on non-use under Section 47(1)(b) of the Trade Marks Act, 1999, where the petitioner makes a specific and categorical plea of non-use supported by investigations, and the registered proprietor fails to file any reply or specifically deny the allegation despite service, such non-use stands admitted, shifting the balance decisively in favour of cancellation. The decision clarifies that in regulated sectors like alcoholic beverages, the absence of excise licenses, manufacturing approvals, or any commercial footprint over the statutory period strongly evidences lack of bona fide intent to use, rendering the registration vulnerable to removal even without formal evidence from the petitioner beyond pleadings and searches. It further solidifies the position that a party with prior registration in a cognate class and a pending application in the conflicting class qualifies as a "person aggrieved," entitled to seek rectification to safeguard its commercial interests.

Case Detail

Title: Yashasvi Havelia Vs. Prabhtej Bhatia and Anr.

Date of Order: 22nd January, 2026 (Judgment); 10th February, 2026 (Correction Order)

Case Number: C.O. (COMM.IPD-TM) 166/2025

Neutral Citation: 2026:DHC:884

Name of Court: High Court of Delhi

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

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

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

Suggested Titles:

Delhi High Court Cancels "BANDOOK" Trademark in Class 33 on Ground of Non-Use: Key Takeaways on Section 47 Rectification

Non-Use for Over Five Years Leads to Removal of Trademark Registration: Analysis of Yashasvi Havelia v. Prabhtej Bhatia

Trademark Squatting Rejected: Delhi High Court Upholds Removal of Unused "BANDOOK" Mark in Alcoholic Beverages Class

When Absence of Use Equals Loss of Rights: Delhi High Court's Ex-Parte Rectification Order in BANDOOK Case

Suggested Tags: #TrademarkRectification #NonUseCancellation #Section47 #TradeMarksAct1999 #DelhiHighCourt #BANDOOKTrademark #TrademarkNonUse #IPLitigation #TrademarkSquatting #Class33AlcoholicBeverages #RectificationPetition #ExParteOrder #TrademarkRegisterPurity

Headnote

Rectification petition under Sections 47 & 57 of Trade Marks Act, 1999 allowed — Removal of trademark "BANDOOK" under Registration No. 3762319 in Class 33 directed on ground of non-use for continuous period exceeding five years — Averments of non-use deemed admitted due to respondent's failure to file reply or appear despite service — Petitioner held "person aggrieved" owing to prior registration in Class 32 and pending application in Class 33 blocked by impugned mark — Absence of excise licenses and commercial activity evidences lack of bona fide intent to use — Register rectified to maintain purity — Typographical error in judgment corrected under Section 152 CPC.

=====

Brief Summary

Yashasvi Havelia, who holds registration for the trademark “BANDOOK” in Class 32 (beer and non-alcoholic beverages) since 30.12.2023 and filed an application for the same mark in Class 33 (alcoholic beverages excluding beer) on 21.06.2025 on proposed-to-be-used basis, discovered an earlier identical registration in Class 33 under No.3762319 dated 23.02.2018 in the name of Prabhtej Bhatia (Raipur Bottling Company). Claiming non-use of the impugned mark for over five years with no excise licences, manufacturing approvals, commercial activity or bona fide intent to use, the petitioner filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999. Respondent No.1 was served but never appeared or filed any reply, leading to the right to contest being closed and the matter proceeding ex parte. The Court held that the petitioner’s specific pleadings of non-use, supported by investigations showing absence of regulatory clearances and commercial footprint in the highly regulated alcoholic beverages sector, stood admitted due to lack of denial by the registered proprietor. The petitioner qualified as a “person aggrieved” because the impugned registration blocked its pending Class 33 application and prejudiced its business expansion. Accordingly, the Court directed removal of the impugned mark from the Register under Section 47(1)(b) for non-use over the continuous statutory period, with a subsequent order correcting a typographical error in the operative direction.

Points of Law Settled

In rectification proceedings for non-use under Section 47(1)(b), where the applicant/petitioner makes a categorical plea of non-use supported by investigation/search evidence and the registered proprietor fails to file any reply or specifically deny the allegation despite service, the plea of non-use stands deemed admitted and the mark is liable to be removed (followed DORCO Co. Ltd. v. Durga Enterprises, 2023 SCC OnLine Del 1484 and Kiranakart Technologies Pvt. Ltd. v. Mohammad Arshad, 2025 SCC OnLine Del 1401 – Paras 14–15).

Absence of excise licences, manufacturing approvals, brand registrations or any commercial/digital presence over the statutory period in a regulated sector like alcoholic beverages strongly evidences lack of bona fide intent to use and justifies removal on non-use grounds even in ex parte proceedings (Paras 17–18).

A party holding prior registration in a cognate class (here Class 32) and having a pending application in the conflicting class (Class 33) qualifies as a “person aggrieved” under Section 47, entitled to seek rectification where the impugned mark impedes its legitimate commercial interests (relied on Infosys Technologies Ltd. v. Jupiter Infosys Ltd., (2011) 1 SCC 125 – Para 9).

The requirement of continuous non-use for at least five years up to three months prior to filing the rectification petition is satisfied where no genuine use is shown and no special circumstances are pleaded or proved by the proprietor (relied on Russell Corp Australia Pty. Ltd. v. Ashok Mahajan, 2023 SCC OnLine Del 4796 and Shell Transource Ltd., 2012 SCC OnLine IPAB 29 – Paras 11, 16–17).

Case Title: Yashasvi Havelia v. Prabhtej Bhatia & Anr.

Order Date: 22 January 2026 (Judgment); 10 February 2026 (Correction Order)

Case Number: C.O. (COMM.IPD-TM) 166/2025

Neutral Citation: 2026:DHC:884

Name of Court: High Court of Delhi

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

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

======

Oswaal Books and Learnings Pvt.Ltd. Vs The Registrar of Trade Marks

The Delhi High Court Division Bench, in a significant ruling dated February 10, 2026, overturned earlier refusals and permitted registration of the phrase **"ONE FOR ALL"** as a trademark in Class 16 for educational publications, marking an important development in the treatment of suggestive slogans and common English expressions in Indian trademark jurisprudence.

**Introduction**  

The case revolves around the registrability of apparently commonplace phrases when applied as trademarks, particularly slogans or taglines used in the education and publishing sector. Indian trademark law under Section 9(1)(a) of the Trade Marks Act, 1999 bars registration of marks devoid of distinctive character, yet the proviso allows registration where the mark has acquired distinctiveness through use. The Division Bench departed from the Single Judge's view that treated "ONE FOR ALL" as a laudatory, descriptive slogan inherently incapable of monopoly, instead classifying it as suggestive at most and inherently capable of functioning as a source identifier for educational books. This decision reinforces that distinctiveness must be evaluated contextually in relation to the specific goods, not in abstract or general linguistic terms, and highlights the protectability of suggestive rather than directly descriptive expressions even when composed of ordinary words.

**Factual Background**  

Oswaal Books and Learnings Private Limited, a prominent publisher of educational books and academic materials catering to various school boards and competitive examinations, adopted the expression "ONE FOR ALL" on or around August 20, 2020, for its publications in Class 16. The company filed Trade Mark Application No. 4711190 on October 20, 2020, seeking registration of the word mark "ONE FOR ALL" specifically for printed educational materials. The Trade Marks Registry issued an Examination Report raising objections solely under Section 9(1)(a), asserting lack of inherent distinctiveness and requiring proof of acquired distinctiveness. Despite the applicant's reply and hearing, the Registrar refused registration on December 14, 2023, characterising the phrase as a common, non-distinctive expression that failed to distinguish the applicant's goods and noting insufficient evidence of secondary meaning.

**Procedural Background**  

Aggrieved by the refusal, Oswaal Books filed an appeal under Section 91 before the Delhi High Court, registered as C.A.(COMM.IPD-TM) 19/2024. The learned Single Judge dismissed the appeal vide judgment dated May 28, 2025, upholding the Registrar's order. The Single Judge held the mark to be a laudatory slogan descriptively conveying a "one-stop" or universal solution for academic needs, lacking inherent distinctiveness, and found the evidence (sales figures, promotions, etc.) insufficient to prove acquired distinctiveness, as usage was predominantly tied to the house mark "OSWAAL BOOKS" rather than standalone recognition of "ONE FOR ALL". The appellant then preferred the present intra-court Letters Patent Appeal (LPA 571/2025), challenging the Single Judge's findings on grounds including misapplication of descriptiveness tests, violation of the anti-dissection rule, erroneous reliance on public association standards, and failure to appreciate suggestive character.

**Reasoning and Decision of Court**  

The Division Bench, speaking through Justice Om Prakash Shukla (with Justice C. Hari Shankar concurring), framed the core issue narrowly as whether "ONE FOR ALL" was disentitled to registration for want of distinctiveness under Section 9(1)(a). The court extensively relied on its earlier exposition in Leayan Global Pvt. Ltd. v. Bata India Ltd. (2025), emphasising that distinctiveness must be assessed contextually in relation to the specific goods/services, not in vacuo. A common expression may gain distinctiveness when bearing no immediate connection to the goods. The Bench disagreed with the Single Judge's characterisation of the phrase as descriptive of books, reasoning that "ONE FOR ALL" does not directly evoke or describe printed educational materials, their quality, kind, purpose, or characteristics in Class 16. Instead, the phrase typically denotes a singular remedy replacing multiple processes and carries no natural or immediate association with books. At the highest, the mark is suggestive of broad coverage or universality, requiring imagination to link it to educational publications, thereby falling short of direct descriptiveness. The court noted the absence of any identical or deceptively similar marks cited in Class 16 and the lack of a Section 11 objection in the Examination Report. Finding no immediate connect between the mark and the goods, the Bench held the expression inherently capable of distinguishing the appellant's publications and thus registrable without needing to delve deeply into acquired distinctiveness evidence. Consequently, the court set aside both the Registrar's refusal order and the Single Judge's judgment, restored the application to its pre-refusal stage for further processing, and allowed the appeal with no order as to costs.

**Point of Law Settled in the Case**  

This judgment clarifies and settles several important principles in Indian trademark law concerning registration of slogans and common phrases. First, it reiterates that distinctiveness under Section 9(1)(a) is not evaluated abstractly or linguistically in isolation but must be determined contextually with reference to the specific goods or services in question; a phrase commonplace in general language may still possess inherent distinctiveness for unrelated trade channels. Second, the decision sharpens the descriptiveness-suggestiveness spectrum by applying the imagination-straining test: if the connection between mark and goods is not immediate but requires mental effort, the mark is suggestive rather than descriptive and qualifies for registration even absent long use. Third, slogans and taglines are affirmatively recognised as capable of functioning as trademarks under Sections 2(m) and 2(zb), particularly in digitised markets where they often serve stronger source-identification roles than house marks. Finally, the ruling cautions against over-broad monopolisation concerns when no competing similar marks exist and no Section 11 objection arises, reinforcing that suggestive marks enjoy a lower threshold than purely descriptive ones and need not always prove acquired distinctiveness if inherently capable.

**Case Detail**  

- **Title**: Oswaal Books and Learnings Private Limited v. The Registrar of Trade Marks  

- **Date of Order**: 10 February 2026  

- **Case Number**: LPA 571/2025 & CM APPL. 56791/2025  

- **Neutral Citation**: 2026:DHC:DB:XXXX (as appearing in reports; full neutral citation may be 2026:DHC:1249-DB or similar based on court format)  

- **Name of Court**: High Court of Delhi  

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

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

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

**Suggested Titles for the Article**  

- Delhi High Court Greenlights "ONE FOR ALL" Trademark for Oswaal Books: Suggestive Slogans Gain Protection  

- From Refusal to Registration: Delhi HC Division Bench Holds "ONE FOR ALL" Suggestive, Not Descriptive for Educational Books  

- Suggestive Character Triumphs: Delhi High Court Overturns Refusal of "ONE FOR ALL" Trademark in Class 16  

- Contextual Distinctiveness Prevails: Landmark Ruling on Registrability of Common Phrases in Indian Trademark Law  

**Suggested Tags**  

trademark registration, Section 9(1)(a), distinctiveness, suggestive marks, descriptive marks, slogans as trademarks, Delhi High Court, Oswaal Books, ONE FOR ALL, Class 16, acquired distinctiveness, secondary meaning, Trade Marks Act 1999, LPA 571/2025, educational publications  

**Headnote**  

Delhi High Court (Division Bench) allows registration of "ONE FOR ALL" as trademark in Class 16 for educational books, holding the phrase suggestive rather than descriptive when viewed contextually; no immediate connection exists between the mark and printed publications; distinctiveness assessed relative to specific goods, not in abstract; common expressions capable of inherent distinctiveness absent direct descriptiveness; Single Judge and Registrar's orders set aside; application restored.

=====

Oswaal Books and Learnings Private Limited, a publisher of educational books and academic materials, adopted the mark "ONE FOR ALL" since August 20, 2020, for its Class 16 publications catering to multiple boards and exams, and filed application No. 4711190 on October 20, 2020. The Registrar refused registration on December 14, 2023, under Section 9(1)(a) of the Trade Marks Act, 1999, deeming it a common non-distinctive expression without proven acquired distinctiveness. The Single Judge dismissed the appeal C.A.(COMM.IPD-TM) 19/2024 on May 28, 2025, holding the phrase laudatory and descriptive of a universal solution, with evidence insufficient for secondary meaning as usage tied to house mark "OSWAAL BOOKS". In the intra-court appeal LPA 571/2025, the Division Bench set aside both orders on February 10, 2026, finding the mark suggestive rather than descriptive in the context of Class 16 goods, as it lacks immediate connection to books, evokes no direct link to their characteristics, and requires imagination to associate with universality or broad coverage; absent similar marks or Section 11 objections, it possesses inherent distinctiveness capable of distinguishing the appellant's publications, restoring the application for further processing.

**Crisp Bullet Points of Law Settled in the Case**

- Distinctiveness under Section 9(1)(a) must be assessed contextually in relation to the specific goods/services and not in vacuo or abstractly; a common expression may possess inherent distinctiveness when bearing no immediate connection to the goods (Para 26, relying on Leayan Global Pvt Ltd v Bata India Ltd, 2025:DHC:11331-DB).

- The descriptiveness-suggestiveness test turns on whether the connection between mark and goods is immediate (descriptive) or requires straining imagination (suggestive); suggestive marks qualify for registration even without long use if not directly descriptive (Paras 34-35).

- Slogans/taglines are capable of constituting trademarks under Sections 2(m) and 2(zb) and often perform strong source-identification functions in digitized markets (Paras 27-28).

- Common phrases cannot be presumed non-distinctive merely for linguistic commonality absent evidence of similar marks in the relevant class or Section 11 objections; monopolisation concerns do not arise where no competing use is shown (Paras 33, 36).

- Over-broad application of descriptiveness to suggestive marks is erroneous; "ONE FOR ALL" is suggestive at highest for educational books and satisfies statutory registrability under Section 9(1)(a) (Paras 31-36).

**Case Title**: Oswaal Books and Learnings Pvt.Ltd. Vs  The Registrar of Trade Marks  

**Order Date**: 10 February 2026  

**Case Number**: LPA 571/2025 & CM APPL. 56791/2025  

**Neutral Citation**: 2026:DHC:1249-DB  

**Name of Court**: High Court of Delhi  

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

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

=====

Chacha Saree Bazar Pvt. Ltd.Vs Chacha Cloth House

The Delhi High Court Division Bench, in its oral judgment dated **February 12, 2026**, allowed the appeal FAO(COMM) 217/2025 filed by Chacha Saree Bazar Pvt. Ltd. & Anr., setting aside the order of the learned District Judge (Commercial Court)-01 dismissing the appellants' application for interim injunction under Order XXXIX Rules 1 & 2 CPC in their pending suit for trademark infringement against Chacha Cloth House. The appellants, registered proprietors of the marks “CHACHA SAREE BAZAR PVT LTD” (word mark) and “CHACHE DI HATTI” (device mark), along with related marks like “CHACHA SUIT GALLERY”, since as early as 1988/2010/2013 in Classes 24 (textiles) and 25 (clothing, footwear, headgear), operate a single outlet in Sarojini Nagar Market, New Delhi, dealing in sarees, lehengas, suits, and similar garments. The respondent, operating in Yamuna Nagar, Haryana, uses the unregistered mark “CHACHA CLOTH HOUSE” for identical goods, prompting the suit alleging infringement and passing off. The Commercial Court dismissed interim relief solely on the ground that “Chacha” (meaning uncle in Hindi) is a generic, commonplace expression incapable of monopolization.

The Division Bench (Justices C. Hari Shankar and Om Prakash Shukla) reversed the impugned order, holding that distinctiveness of a mark must be evaluated in relation to the specific goods/services for which it is used, and not in the abstract or based on general etymological/commonplace meaning. The Court reasoned that while “Chacha” is an everyday Hindi word denoting uncle, it bears no natural, etymological, or descriptive connection to sarees, clothing, or textiles; thus, when used as a trademark in the garment trade, it functions as an arbitrary mark possessing inherent distinctiveness capable of distinguishing the appellants' goods from others. The Bench emphasized that commonplace words of ordinary language can acquire protectable distinctiveness in unrelated trade contexts, rejecting the Commercial Court's blanket view that no monopoly can exist over such terms. Given the appellants' prior registrations under Section 23 of the Trade Marks Act, 1999, long user, identical goods, territorial overlap in market perception (despite different physical locations), and prima facie likelihood of confusion/deception, the balance of convenience and irreparable injury tilted in favour of the registered proprietors. The Court accordingly granted interim injunction restraining the respondent from using “CHACHA CLOTH HOUSE” or any mark incorporating “CHACHA” or deceptively similar variants for textiles, clothing, or related goods pending suit disposal, subject to standard exceptions for honest concurrent use if established later.

This judgment settles a crucial principle in Indian trademark law regarding the registrability and protectability of common/ordinary words or household terms as trademarks. It reaffirms that distinctiveness under Sections 9 and 11 of the Trade Marks Act, 1999, and the scope of infringement protection, must be assessed contextually vis-à-vis the goods/services claimed or used, not generically or etymologically; a word that is commonplace in language may be inherently distinctive and monopolizable when applied to goods with which it has no logical/descriptive association, thereby expanding protection for arbitrary adoption of everyday terms in unrelated trades (e.g., family/kinship terms like “Chacha” for apparel). It corrects the erroneous approach of denying interim relief merely because a word is “generic” in everyday parlance without examining trade-specific arbitrariness, reinforcing that registered marks enjoy statutory presumption of validity and prima facie exclusivity against identical/similar marks on identical goods.

**Case Details**  

**Title**: Chacha Saree Bazar Pvt. Ltd. & Anr. v. Chacha Cloth House  

**Date of Order**: February 12, 2026  

**Case Number**: FAO(COMM) 217/2025 & CM APPL. 49543/2025  

**Neutral Citation**: 2026:DHC:1296-DB (indicative based on document reference 2026:DHC:1296-DB)  

**Name of Court**: High Court of Delhi at New Delhi  

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

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

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

**Suggested Titles for the Article**  

1. Delhi High Court Grants Interim Injunction in 'Chacha' Trademark Dispute: Holds Commonplace Word 'Chacha' Distinctive for Sarees & Garments  

2. From Generic to Protectable: Division Bench Reverses Refusal of Injunction Against 'Chacha Cloth House' Use  

3. Contextual Distinctiveness Principle Upheld: Delhi HC Protects 'CHACHA' Marks in Apparel Trade  

4. 'Chacha' Not Generic for Clothing: High Court Restrains Unregistered Use in Trademark Infringement Appeal  

**Suggested Tags**  

Trademark Infringement, Interim Injunction, Distinctiveness of Marks, Commonplace Words as Trademarks, Arbitrary Marks, Section 23 Trade Marks Act, Delhi High Court FAO(COMM), Chacha Saree Bazar, Chacha Cloth House, Contextual Assessment of Distinctiveness, Apparel Trademark Dispute, Passing Off, IP Appeal  

**Headnote**  

Delhi High Court Division Bench allows FAO(COMM) 217/2025, sets aside Commercial Court's dismissal of interim injunction, restrains respondent from using “CHACHA CLOTH HOUSE” or similar marks pending suit, holding that distinctiveness must be assessed relative to specific goods (garments/textiles) and not abstractly; “Chacha”, though a commonplace Hindi term for uncle, is arbitrary and inherently distinctive when used for sarees/clothing with no etymological connection, entitling registered proprietor to prima facie protection against identical/similar use on identical goods.

======

The Delhi High Court Division Bench, in its oral judgment dated February 12, 2026, allowed the appeal FAO(COMM) 217/2025 filed by Chacha Saree Bazar Pvt. Ltd. & Anr., setting aside the order of the learned District Judge (Commercial Court)-01 which had dismissed the appellants' application for interim injunction under Order XXXIX Rules 1 & 2 CPC in their pending suit alleging trademark infringement and passing off against the respondent using the unregistered mark “CHACHA CLOTH HOUSE” for identical goods like sarees, lehengas, suits, and garments. The appellants hold prior registrations since 1988/2010/2013 for marks including “CHACHA SAREE BAZAR PVT LTD” (word) and “CHACHE DI HATTI” (device) in Classes 24 and 25, operating from a single outlet in Sarojini Nagar Market, New Delhi. The respondent operates in Yamuna Nagar, Haryana, using “CHACHA CLOTH HOUSE” with labels/logos incorporating “CHACHA”.

The Commercial Court dismissed interim relief on the sole ground that “Chacha” (Hindi for uncle) is a generic/commonplace expression over which no monopoly can be claimed. The Division Bench (Justices C. Hari Shankar and Om Prakash Shukla) reversed this, holding that distinctiveness must be assessed vis-à-vis the specific goods/services and not in the abstract or based on etymological meaning; while “Chacha” is an everyday word, it has no natural, descriptive, or etymological link to textiles/clothing/garments, rendering its use arbitrary and inherently distinctive in that trade context, capable of distinguishing the appellants' goods. Given prior registrations under Section 23 of the Trade Marks Act, 1999, long user, identical goods, market perception overlap, and prima facie confusion likelihood, the Court found balance of convenience and irreparable injury favouring the registered proprietors, granting interim injunction restraining the respondent from using “CHACHA CLOTH HOUSE” or any “CHACHA”-incorporating/deceptively similar marks for such goods pending suit, subject to exceptions if honest concurrent use is later proved.

- Distinctiveness of a trademark must be evaluated in relation to the specific goods or services for which it is used, not in the abstract or based on general/commonplace/etymological meaning; a commonplace everyday word (e.g., “Chacha” meaning uncle) can possess inherent distinctiveness and be protectable when applied to unrelated goods (e.g., sarees/garments) with no logical/descriptive connection (paras 2, principal reasoning section).

- Commonplace words of ordinary language, when arbitrarily adopted as marks in trades lacking etymological nexus, qualify for protection against infringement/passing off, entitling registered proprietors to prima facie interim restraint on identical/similar marks for identical goods where goodwill, prior registration, and confusion elements are established (paras 1-2, overarching view and application to facts).

**Case Title**: Chacha Saree Bazar Pvt. Ltd.Vs  Chacha Cloth House  

**Order Date**: February 12, 2026  

**Case Number**: FAO(COMM) 217/2025 & CM APPL. 49543/2025  

**Neutral Citation**: 2026:DHC:1296-DB  

**Name of Court**: High Court of Delhi at New Delhi  

**Name of Judge**: Hon'ble Mr. Justice C. Hari Shankar & Hon'ble Mr. Justice Om Prakash Shukla  

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

====

Lotus Herbals Pvt.Ltd. Vs DPKA Universal Consumer Ventures Pvt.Ltd.

The Delhi High Court Division Bench, in a landmark interim relief decision dated **February 16, 2026**, reversed the Single Judge's order dismissing Lotus Herbals Private Limited's application for temporary injunction in its trademark infringement and passing off suit against DPKA Universal Consumer Ventures Private Limited (associated with actor Deepika Padukone's self-care brand 82°E) and others. The appeal arose from the Single Judge's January 25, 2024 order refusing to restrain the respondents from using the mark "LOTUS SPLASH" for a face cleanser/facewash product, holding no prima facie infringement or passing off. Lotus Herbals, a well-established player in herbal cosmetics and personal care with the word/device mark "LOTUS" registered since 1996 across classes 3 and 5 (with over 55 registrations, massive turnover exceeding Rs. 695 crores in 2022-23, substantial advertising spends, and widespread reputation including IPL sponsorships), contended that "LOTUS SPLASH" was deceptively similar to its "LOTUS" family of marks, likely to cause confusion and dilute its goodwill, especially for identical goods like face cleansers. The respondents defended the use as descriptive (indicating lotus extract in the formulation), non-trademark use under Section 30(2)(a) of the Trade Marks Act, 1999, and argued no likelihood of confusion given distinct packaging and branding.

The procedural history began with Lotus Herbals filing suit CS (COMM) 454/2023 seeking permanent injunction, damages, etc., accompanied by I.A. 12308/2023 under Order XXXIX Rules 1 & 2 CPC for interim restraint. The learned Single Judge dismissed the IA, prompting the intra-court appeal FAO(OS)(COMM) 45/2024 under Section 13 of the Commercial Courts Act. The Division Bench heard arguments extensively, condoned delays in filings, deleted one party by consent, and reserved judgment on December 18, 2025, delivering it on February 16, 2026.

In its detailed reasoning, the Bench (Justices V. Kameswar Rao and Vinod Kumar) disagreed with the Single Judge's view that "Lotus Splash" was merely descriptive or that no confusion arose. It held prima facie that "LOTUS" formed the dominant, essential feature of the impugned mark, as the word "Splash" was subsidiary and did not detract from the overall impression; the entire "LOTUS" mark appeared prominently in "LOTUS SPLASH", creating initial interest confusion per Cadila Healthcare principles, especially in pharmaceuticals/cosmetics where consumer attention is low. The Court rejected the descriptive defence under Section 30(2)(a), noting that the product description ("conditioning cleanser with lotus and bioflavonoids") rendered "Lotus Splash" redundant as a descriptor, and respondents' keyword purchases for "Lotus Face Wash" online, failure to register "Lotus Splash" despite registering other marks, and prominent sub-brand usage indicated mala fide intent to ride on Lotus Herbals' long-standing goodwill. Applying the dominant feature test from Hem Corporation v. ITC Ltd., the Bench found deceptive similarity under Section 29, likelihood of association, and passing off, with balance of convenience and irreparable injury tilting in favour of the prior registered proprietor. It granted the injunction as prayed, restraining use of "LOTUS SPLASH" or any "LOTUS" derivative/identical/deceptively similar marks (with or without prefix/suffix) for cosmetics, beauty, and hygiene products till suit disposal.

This judgment settles key principles in trademark law for composite marks containing common/descriptive elements. It reaffirms that when a registered mark like "LOTUS" (a well-known/family mark in the field) constitutes the essential feature of an impugned mark, the addition of non-distinctive words does not avoid infringement if overall impression causes confusion or deception, particularly for identical goods. It clarifies that bona fide descriptive use under Section 30(2)(a) requires the term to be necessary for indicating character/quality, not redundant or used as a brand identifier; mala fide elements like keyword bidding and selective non-registration strengthen infringement claims. It underscores protection against initial interest confusion in low-attention categories like personal care, and prioritizes prior registered user's rights in interim relief where goodwill is established through decades of use, high sales, and promotion.

**Case Details**  

**Title**: Lotus Herbals Private Limited v. DPKA Universal Consumer Ventures Private Limited & Ors.  

**Date of Order**: February 16, 2026  

**Case Number**: FAO(OS)(COMM) 45/2024 (with connected CM Appls.)  

**Neutral Citation**: 2026 DHC 1300 (as per available references)  

**Name of Court**: High Court of Delhi at New Delhi  

**Name of Hon'ble Judges**: Hon'ble Mr. Justice V. Kameswar Rao & Hon'ble Mr. Justice Vinod Kumar  

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

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

**Suggested Titles for the Article**  

1. Delhi High Court Grants Interim Injunction Against Deepika Padukone's 82°E Brand in 'Lotus Splash' Trademark Dispute: Reverses Single Judge Order  

2. Lotus Herbals Triumphs in Appeal: Division Bench Restrains 'Lotus Splash' Use by DPKA/82°E Citing Deceptive Similarity and Mala Fide Intent  

3. Trademark Infringement in Cosmetics: Delhi HC Protects 'LOTUS' Mark Against Derivative 'LOTUS SPLASH' in Face Cleanser Case  

4. From Descriptive Defence to Injunction: Key Takeaways from Lotus Herbals v. DPKA Universal on Dominant Feature and Initial Interest Confusion  

**Suggested Tags**  

Trademark Infringement, Passing Off, Interim Injunction, Lotus Herbals, Lotus Splash, Deepika Padukone 82°E, Delhi High Court, Deceptive Similarity, Dominant Feature Test, Section 29 Trade Marks Act, Section 30(2)(a) Defence, Initial Interest Confusion, Well-Known Mark Protection, Cosmetics Trademark Dispute, IP Appeal, FAO(OS)(COMM)

**Headnote**  

Delhi High Court Division Bench reverses Single Judge's refusal of interim injunction, grants restraint against use of "LOTUS SPLASH" or any "LOTUS" derivative marks by respondents (DPKA Universal/82°E) for face cleanser pending suit, holding prima facie deceptive similarity, dominant "LOTUS" element, likelihood of confusion/passing off, rejection of descriptive use defence due to mala fide branding/keyword use, and balance favouring prior registrant Lotus Herbals' established goodwill.

=====

In **Lotus Herbals Private Limited v. DPKA Universal Consumer Ventures Private Limited & Ors.**, the appellant, a leading herbal cosmetics brand with the registered "LOTUS" family of marks since 1996 (over 55 registrations in classes 3 and 5, massive turnover exceeding Rs. 695 crores in 2022-23, substantial advertising spends, and established goodwill including IPL sponsorships), filed suit CS (COMM) 454/2023 for infringement and passing off against the respondents' use of "LOTUS SPLASH" for a face cleanser under the 82°E brand (associated with actor Deepika Padukone). The Single Judge dismissed the interim injunction application I.A. 12308/2023 under Order XXXIX Rules 1 & 2 CPC vide order dated January 25, 2024, holding no prima facie case due to descriptive nature of "Splash" and lack of confusion. Aggrieved, Lotus Herbals preferred intra-court appeal FAO(OS)(COMM) 45/2024, which the Division Bench heard, reserved judgment on December 18, 2025, and delivered on February 16, 2026.

The Division Bench set aside the impugned order and granted interim injunction restraining the respondents from using "LOTUS SPLASH" or any identical/deceptively similar "LOTUS" derivative marks (with or without prefix/suffix) for cosmetics, beauty, and hygiene products pending suit disposal. It held prima facie deceptive similarity, with "LOTUS" as the dominant and essential feature of the impugned mark; "Splash" being subsidiary and non-distinctive, creating initial interest confusion especially in low-attention personal care products. The Court rejected the bona fide descriptive use defence under Section 30(2)(a) of the Trade Marks Act, 1999, observing that "Lotus Splash" was redundant as a descriptor given the product's explicit "conditioning cleanser with lotus and bioflavonoids" claim, respondents' keyword bidding on "Lotus Face Wash" online, selective non-registration of "Lotus Splash" despite registering other marks, and prominent branding use indicated mala fide intent to ride on Lotus Herbals' goodwill. Applying the dominant feature test, likelihood of association under Section 29, and passing off elements, the Bench found balance of convenience and irreparable injury in favour of the prior registered proprietor.

- In composite marks, where a registered mark (e.g., "LOTUS") constitutes the dominant/essential feature, addition of non-distinctive/subsidiary words (e.g., "Splash") does not avoid deceptive similarity or infringement if overall impression is likely to cause confusion, association, or initial interest confusion, particularly for identical goods in low-attention categories like cosmetics (paras relevant to dominant feature analysis and Cadila principles).

- Bona fide descriptive use defence under Section 30(2)(a) Trade Marks Act, 1999 requires the term to be necessary/bona fide to indicate character/quality of goods; it fails where the expression is redundant, used as a brand identifier, or accompanied by mala fide conduct such as keyword advertising on plaintiff's mark, selective non-registration, or intent to freeride on established goodwill (paras addressing Section 30(2)(a) and mala fide findings).

- Prior registered proprietor with long use, high sales, advertising, and reputation is entitled to interim restraint against derivative marks causing passing off/infringement where prima facie case, balance of convenience, and irreparable injury are established (paras on interim relief criteria and goodwill protection).

**Case Title**: Lotus Herbals Pvt.Ltd. Vs DPKA Universal Consumer Ventures Pvt.Ltd.

**Order Date**: February 16, 2026  

**Case Number**: FAO(OS)(COMM) 45/2024 (with connected CM Applications)  

**Neutral Citation**: 2026:DHC:1300-DB (indicative based on judgment upload reference)  

**Name of Court**: High Court of Delhi at New Delhi  

**Name of Judges**: Hon'ble Mr. Justice V. Kameswar Rao & Hon'ble Mr. Justice Vinod Kumar  

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

=====

Fornnax Technology Pvt.Ltd. Vs. The Registrar of Copyrights

The Delhi High Court, in a significant ruling delivered on **February 11, 2026**, set aside a common order passed by the Registrar of Copyrights dated January 28, 2026, and remanded multiple connected copyright registration applications back to the Registrar for fresh de novo consideration. The decision addresses critical procedural and substantive issues in the pre-registration scrutiny of artistic works under the Copyright Act, 1957, particularly where opposition arises from competitors in the industrial machinery sector. The appellant, Fornnax Technology Private Limited, sought copyright registration for artistic works consisting of technical drawings or views of components of its secondary shredder machines (notably the "Cutting Chamber Part of Secondary Shredder R-4000 Front View" and related models). The Registrar rejected these applications after entertaining oppositions from respondents (including competitors represented through counsel for R-2 to R-4), primarily on the ground that the works had been industrially applied to more than fifty articles, triggering the bar under Section 15(2) of the Act, and thus could not qualify for copyright protection.

The factual matrix revolves around Fornnax's claim to copyright in original artistic works embodied in engineering drawings or visual representations of shredder components designed for waste processing and recycling machinery. The company asserted that these were pure artistic expressions not intended solely for industrial application beyond limited production. The opposing parties, apparently competitors in the shredder or recycling equipment market, challenged the registrability, producing materials such as PR articles, website "success stories" claiming over 100 installations, and even YouTube/social media videos allegedly showing widespread commercial exploitation of the designs.

Procedurally, the appellant filed applications under Section 45 of the Copyright Act for entry in the Register of Copyrights. The Registrar, invoking powers under Section 45(2) to conduct such inquiry as deemed fit, entertained written oppositions and documents from the respondents, conducted a personal hearing on January 21, 2026, and passed the impugned common rejection order. Aggrieved, Fornnax preferred multiple connected appeals under Section 72 of the Act before the Delhi High Court, which were heard together.

The Court, speaking through Justice Tushar Rao Gedela in an oral judgment, identified two primary infirmities warranting remand. First, the Registrar failed to properly address the appellant's specific objection that the opposing respondents were not "persons interested" as contemplated under Rule 70(9) and (10) of the Copyright Rules, 2013, which govern pre-registration scrutiny and opposition at the application stage. Instead, the Registrar erroneously equated or imported the concept of "person aggrieved" (who can seek rectification or cancellation post-registration under Section 50) into the pre-grant phase, thereby allowing competitors to participate and oppose when their locus standi may be limited to post-grant proceedings. The Court emphasized that these are distinct statutory stages with different standing requirements, and the failure to deal with this objection vitiated the order. Reliance was placed on the appellant's submissions citing the Allahabad High Court in Pramod Sharma vs. State of U.P. (2023 SCC OnLine All 1904) to define "person interested," which remained unaddressed.

Second, the Court found a serious breach of natural justice in the Registrar's reliance on electronic evidence (website claims of over 100 installations, PR materials, YouTube videos, and social media content) to invoke the Section 15(2) bar without furnishing copies to the appellant prior to or during the hearing, and without granting any effective opportunity to rebut the same with counter-evidence. The appellant had specifically asserted production of only 29–34 units for certain models and challenged the admissibility of such electronic material under Section 65B of the Indian Evidence Act (or equivalent provisions under the Bharatiya Sakshya Adhiniyam), pointing out lack of certification/affidavit. These contentions, raised in detailed post-hearing written submissions (particularly paras 16–17), found no engagement in the impugned order. The Court held that assertions and counter-assertions on the quantum of industrial application required adjudication on tangible, admissible evidence, which was absent here.

While noting the appellant's reliance on the Supreme Court's recent pronouncement in Cryogas Equipment (P) Ltd. vs. Inox India Ltd. (2025 SCC OnLine SC 780, para 66) — which clarified that an original artistic work does not lose copyright protection merely because a design derived from it is industrially applied — the High Court did not decide the merits. It clarified that no opinion was expressed on whether the works qualified as artistic works retaining copyright or whether the Section 15(2) bar applied, leaving these for fresh examination.

The Court accordingly quashed the impugned order, remitted the applications for de novo consideration by a different officer, directed that the appellant be permitted to rebut any documents relied upon by the respondents, allowed the respondents to file further materials in support of opposition, and explicitly required the Registrar to record a specific finding on whether opposition by the respondents could be maintained at the pre-registration stage. No costs were imposed.

This decision settles important points of law in copyright registration practice. It reinforces the strict separation between pre-grant inquiry/opposition under Section 45 read with Rule 70 (limited to "persons interested") and post-grant rectification/expungement under Section 50 (available to "persons aggrieved"). Conflating the two concepts is impermissible. It also establishes that any reliance on electronic or documentary evidence adverse to the applicant during inquiry must comply with natural justice — copies must be supplied and rebuttal opportunity afforded — failing which the order becomes unsustainable. Finally, it underscores that the Section 15(2) industrial application bar (loss of copyright after more than fifty reproductions without design registration) requires concrete, rebuttable evidence rather than untested website claims or media content, aligning with the Supreme Court's emphasis in Cryogas on preserving underlying artistic copyright despite industrial derivation.

**Case Details**  

**Title**: Fornnax Technology Private Limited vs. The Registrar of Copyrights & Ors. (and connected matters)  

**Date of Order**: February 11, 2026  

**Case Number**: CA (COMM.IPD-CR) 5/2026, 6/2026, 7/2026 & 8/2026 (with connected I.As.)  

**Neutral Citation**: Not available in the provided judgment text (awaiting publication)  

**Name of Court**: High Court of Delhi at New Delhi  

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

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

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

**Suggested Titles for the Article**  

1. Delhi High Court Remands Copyright Applications: Strict Adherence to Locus Standi and Natural Justice in Pre-Registration Oppositions  

2. Fornnax Technology vs Registrar of Copyrights: High Court Quashes Rejection Order Over Procedural Lapses and Evidence Irregularities  

3. Pre-Grant Opposition in Copyright Registration: Delhi High Court Draws Clear Line Between "Person Interested" and "Person Aggrieved"  

4. Section 15(2) Bar and Electronic Evidence: Delhi High Court Mandates Fair Opportunity in Copyright Registration Proceedings  

**Suggested Tags**  

Copyright Registration, Registrar of Copyrights, Section 45 Copyright Act, Section 50 Copyright Act, Section 15(2) Copyright Act, Rule 70 Copyright Rules 2013, Natural Justice in IP Proceedings, Person Interested vs Person Aggrieved, Industrial Application of Artistic Works, Delhi High Court IP Judgment, Fornnax Technology Copyright Case, Cryogas Equipment Precedent  

**Headnote**  

Delhi High Court sets aside Registrar of Copyrights' rejection of artistic work registration applications on grounds of improper conflation of "person interested" (pre-grant) with "person aggrieved" (post-grant), failure to address locus objections, and violation of natural justice by relying on unshared electronic evidence to invoke Section 15(2) bar; matter remanded for de novo consideration by different officer with directions to permit rebuttal and record finding on maintainability of opposition.

=====

In **Fornnax Technology Private Limited v. The Registrar of Copyrights & Ors.**, the appellant sought copyright registration under Section 45 of the Copyright Act, 1957 for artistic works comprising technical drawings/views of components (such as the "Cutting Chamber Part of Secondary Shredder R-4000 Front View") of its secondary shredder machines used in waste processing/recycling. The Registrar entertained oppositions from respondents (competitors), considered their documents including website PR articles claiming over 100 installations, YouTube/social media videos, and rejected the applications on February 28, 2026 (impugned common order), primarily invoking the Section 15(2) bar that copyright ceases after industrial application to more than fifty articles without design registration. Aggrieved, the appellant filed connected appeals under Section 72 before the Delhi High Court.

The Court, in its oral judgment dated February 11, 2026, quashed the impugned order and remanded the applications for de novo consideration by a different officer. It held that the Registrar failed to address the appellant's objection that respondents were not "persons interested" under Rule 70(9) & (10) of the Copyright Rules, 2013 (governing pre-registration inquiry/opposition) and wrongly equated them with "persons aggrieved" under Section 50 (post-registration rectification), conflating distinct statutory stages and allowing impermissible pre-grant participation by competitors. Further, the Registrar violated natural justice by relying on adverse electronic evidence (website claims, videos) without supplying copies to the appellant or granting opportunity to rebut, despite the appellant's assertions of limited production (29-34 units for certain models) and challenges to admissibility under Section 65B of the Indian Evidence Act/Bharatiya Sakshya Adhiniyam. The Court directed that the appellant be allowed to rebut documents, respondents to file further materials, and the Registrar to specifically find on maintainability of opposition, without expressing any view on merits including applicability of Section 15(2) or reliance on Cryogas Equipment (P) Ltd. v. Inox India Ltd. (2025 SCC OnLine SC 780).

- Pre-registration inquiry under Section 45 read with Rule 70 of Copyright Rules, 2013 permits opposition only by "persons interested"; post-registration rectification/expungement under Section 50 is available to "persons aggrieved" — these are distinct stages and concepts that cannot be conflated or substituted (paras 4-7, 15).

- Registrar's failure to consider and decide specific objection on locus standi of opponents as "persons interested" vitiates the order (paras 5, 15).

- Reliance on adverse documentary/electronic evidence (including website content, videos) during inquiry without furnishing copies to applicant and affording effective rebuttal opportunity breaches principles of natural justice (paras 8-9, 16).

- Invocation of Section 15(2) bar requires adjudication on tangible, admissible evidence of industrial application exceeding 50 articles, not untested or unsubstantiated claims; underlying artistic copyright not lost merely by industrial derivation of design (paras 6, 16; reference to Cryogas Equipment (P) Ltd. v. Inox India Ltd., 2025 SCC OnLine SC 780, para 66).

**Case Title**: Fornnax Technology Pvt.Ltd. Vs. The Registrar of Copyrights  

**Order Date**: February 11, 2026  

**Case Number**: CA (COMM.IPD-CR) 5/2026, 6/2026, 7/2026 & 8/2026 (with connected I.As.)  

**Neutral Citation**: Not available/published in provided sources (as per judgment text)  

**Name of Court**: High Court of Delhi at New Delhi  

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

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

ADS Agro Industries Pvt. Ltd. Vs. The Registrar of Trade Marks

Introduction : The case revolves around the trademark registration battle for the mark 'TAJPURIYA' in Class 33 for alcoholic beverages, highlighting critical procedural safeguards in trademark examination and adjudication under the Trade Marks Act, 1999. The Delhi High Court's decision in this appeal underscores the imperative that the Registrar of Trade Marks must confine refusals to objections explicitly raised in the Examination Report, thereby upholding principles of natural justice and preventing arbitrary shifts in grounds for refusal. This ruling reinforces that applicants deserve a full and fair opportunity to address all objections, and any deviation renders the order unsustainable, especially when the mark is asserted to be arbitrary and devoid of direct descriptive or geographical linkage to the goods.

Factual Background :ADS Agro Industries Pvt. Ltd., a rapidly expanding liquor conglomerate in India's alcohol beverage sector, is involved in manufacturing, marketing, trading, and selling liquor products. The company honestly and bona fide adopted the trademark 'TAJPURIYA' for alcoholic beverages and preparations for making such beverages, claiming the mark to be arbitrary in relation to the goods and inherently distinctive, with no natural or direct connection to alcohol or the industry.

Procedural Background : On 08.06.2021, the Appellant filed Trademark Application No. 4997781 in Class 33 on a 'proposed to be used' basis for the mark 'TAJPURIYA'. The Registrar issued an Examination Report dated 24.06.2021, raising an objection solely under Section 9(1)(a) of the Trade Marks Act, 1999, on the ground that the mark constituted a geographical name and was thus incapable of distinguishing the goods or services of one person from those of another. The Appellant promptly filed a detailed reply dated 26.06.2021, asserting the mark's arbitrariness, inherent distinctiveness, absence of any geographical connection, and entitlement to registration even if hypothetically treated as having geographical origin, relying inter alia on the Gujarat High Court precedent in Sahkar Seeds Corporation v. Dharti Seeds, 2017 SCC OnLine Guj 2577. Following this, the Registrar issued a hearing notice, conducted a hearing on 03.01.2024, and passed the impugned order dated 29.01.2024 refusing registration under Section 9, but on an entirely new and extraneous ground—that 'Tajpuriya' refers to an indigenous tribe of Nepal (also residing in parts of India such as Bihar, West Bengal, Sikkim, and Darjeeling), where alcohol forms an essential part of religious rituals, rendering the mark devoid of distinctive character.

Reasoning and Decision of Court: The Delhi High Court, presided over by Hon'ble Ms. Justice Jyoti Singh, found substantial merit in the Appellant's challenge under Section 91 of the Act. The Court observed that the impugned order suffered from two fundamental defects. First, the refusal was predicated on a fresh ground (tribal name linked to ritualistic alcohol use) never raised in the Examination Report, thereby denying the Appellant any opportunity to contest or reply to it, which violated procedural requirements under the Act and breached principles of natural justice. Second, the original geographical name objection from the Examination Report was neither reiterated nor addressed in the impugned order, and the Registrar failed to engage with the detailed submissions in the Appellant's reply regarding the mark's arbitrariness, inherent distinctiveness, and high degree of protection for arbitrary marks (even those with alleged geographical connotations). The Court noted that shifting to an extraneous ground without prior notice or consideration of the reply rendered the order wholly illegal and unsustainable. Consequently, the impugned order dated 29.01.2024 was set aside, and the matter was remanded to the Registrar for re-examination of the application from the hearing stage, mandating due consideration of the reply to the Examination Report, grant of a fresh hearing opportunity to the Appellant, and completion of the entire process within two months from the date of the judgment.

Point of Law Settled in the Case :The judgment firmly establishes that the Registrar of Trade Marks is bound to restrict refusal grounds to those explicitly articulated in the Examination Report issued under the Trade Marks Act, 1999. Introducing new or extraneous grounds in the final order without affording the applicant prior notice and an opportunity to respond constitutes a serious procedural irregularity, infringing natural justice principles and statutory procedure. Furthermore, where specific objections are raised and a detailed reply is filed addressing distinctiveness, arbitrariness, or exceptions for arbitrary use, the Registrar is duty-bound to deal with and consider those submissions; failure to do so, coupled with reliance on unheralded grounds, vitiates the refusal order. This ruling strengthens applicant protections in opposition and refusal proceedings by mandating transparency, consistency, and fairness throughout the examination and hearing stages.

Case Title: ADS Agro Industries Pvt. Ltd. Vs. The Registrar of Trade Marks 

Date of Order: 3rd February, 2026 

Case Number: C.A.(COMM.IPD-TM) 33/2024 

Neutral Citation: 2026:DHC:1134 

Name of Court: High Court of Delhi 

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

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

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

Suggested Titles for the Article:

Delhi High Court Sets Aside Trademark Refusal for 'TAJPURIYA': Procedural Fairness Prevails in Registrar's Examination

Arbitrary Marks and Natural Justice: Delhi HC Remands 'TAJPURIYA' Application, Bars Extraneous Refusal Grounds

No New Grounds Without Opportunity: Procedural Fairness Trademark Examination Landmark Delhi HC Ruling on Trademark Refusal Procedure

Suggested Tags: TrademarkLaw, DelhiHighCourt, IPLaw, TradeMarksAct1999, NaturalJustice, TrademarkRefusal, ArbitraryMarks, IPIndia, TrademarkRegistration, RegistrarOfTradeMarks, IndianIP,  IPUpdate, TrademarkCaseLaw,

Headnote Delhi High Court holds that Registrar cannot refuse trademark registration on grounds not raised in Examination Report; impugned refusal for 'TAJPURIYA' set aside for violating natural justice and failing to address applicant's reply on arbitrariness and distinctiveness; matter remanded for fresh consideration within two months (2026:DHC:1134).

=====

ADS Agro Industries Pvt. Ltd., engaged in manufacturing and selling liquor products, adopted the arbitrary and inherently distinctive mark 'TAJPURIYA' for alcoholic beverages in Class 33 and filed Trademark Application No. 4997781 on 08.06.2021 on proposed-to-be-used basis. The Registrar raised objection under Section 9(1)(a) of the Trade Marks Act, 1999 vide Examination Report dated 24.06.2021 treating it as a geographical name incapable of distinguishing goods; Appellant filed detailed reply dated 26.06.2021 asserting arbitrariness, inherent distinctiveness, lack of geographical connection and reliance on Gujarat HC precedent. After hearing on 03.01.2024, Registrar refused registration vide impugned order dated 29.01.2024 on new ground that 'Tajpuriya' is name of an indigenous tribe of Nepal (also in parts of India) where alcohol is essential in religious rituals, thus lacking distinctive character under Section 9. Appellant challenged this under Section 91 before Delhi High Court, which found the order unsustainable as the refusal relied on a fresh ground not raised in Examination Report (violating natural justice and procedure, denying Appellant opportunity to respond) and failed to address points in Appellant's reply on arbitrariness and protection even for arbitrary geographical-origin marks; accordingly, impugned order was set aside and matter remanded to Registrar for re-examination from hearing stage after considering reply, with fresh hearing and decision within two months.

Law settled: Registrar cannot refuse trademark registration on a ground not raised in the Examination Report, as it deprives applicant of opportunity to respond, violating principles of natural justice and procedural fairness under the Trade Marks Act, 1999. (Para 4, 8)

Law settled: Where Examination Report raises specific objection (e.g., geographical name under Section 9(1)(a)), Registrar must deal with applicant's detailed reply addressing distinctiveness/arbitrariness and cannot shift to extraneous or new grounds without opportunity; failure to consider reply renders order unsustainable. (Para 5, 8)

Law settled: Impugned refusal order must be confined to objections raised in Examination Report and cannot be sustained if it introduces new grounds or ignores applicant's submissions on inherent distinctiveness of arbitrary marks. (Para 8)

Case Title: M/s. ADS Agro Industries Pvt. Ltd. Vs. The Registrar of Trade Marks Order Date: 3rd February, 2026 Case Number: C.A.(COMM.IPD-TM) 33/2024 Neutral Citation: 2026:DHC:1134 Name of Court: High Court of Delhi Name of Judge: Hon'ble Ms. Justice Jyoti Singh

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

7-Eleven International LLC Vs The Deputy Registrar of Trade Marks

Brief Note: The Madras High Court, in a detailed judgment on February 11, 2026, dismissed the appeals filed by 7-Eleven International LLC, a global convenience store chain based in the USA, thereby upholding the 2014 order of the Deputy Registrar of Trade Marks. The ruling affirmed the registration of the trademark "Big Bite" in Class 30 in favor of the Indian company Ravi Foods Private Limited (the substituted third respondent, following assignments from the original applicant Dukes Consumer Care Limited), while rejecting 7-Eleven's competing application and opposition. This decision reinforces the territorial nature of trademark rights under Indian law and clarifies the limited role of international reputation and prior filing dates when no actual use or goodwill has been established in the Indian market.

Introduction: Trademark disputes involving identical or highly similar marks often hinge on the fundamental principles of priority, goodwill, and territoriality. In cross-border conflicts, foreign entities frequently invoke their global reputation, extensive international use, and early filing dates to claim superior rights, especially when a local entity enters the scene later. The present case exemplifies such a clash between a multinational giant and an Indian food products company over the mark "Big Bite" for goods in Class 30, encompassing confectionery, biscuits, bakery items, savoury snacks, and related food products. The Madras High Court delved deeply into whether mere international fame, prior adoption abroad, or an earlier application date in India can override the established prior user status of a domestic party that has continuously used the mark in trade within India. The judgment underscores that Indian trademark law, while recognizing trans-border reputation in exceptional cases, predominantly adheres to the principle of territoriality, requiring concrete evidence of goodwill and reputation spilling over into or being cultivated in the Indian jurisdiction for protection against local prior users.

Factual Background: 7-Eleven International LLC, renowned for operating nearly 80,000 convenience stores worldwide under the "7-Eleven" brand (including some presence in India), claimed to have adopted and continuously used the formative mark "Big Bite" since August 1988, primarily for savoury food items such as hot dogs, pizzas, and potato chips sold in its stores. The company asserted that through extensive global use, promotion, and registrations in multiple jurisdictions (including Classes 29, 30, and 43), the mark had acquired a trans-border reputation that extended to India. To secure statutory rights in India, 7-Eleven filed its earliest application for "Big Bite" on August 16, 1994 (Application No. 636986 in Class 30), which was advertised in the Trade Marks Journal on September 16, 2007.  

On the other side, the original applicant (M/s. Dukes Consumer Care Limited, later renamed SWG Consumer Care Limited and eventually assigned to Ravi Foods Private Limited effective January 21, 2025) filed Application No. 1297871 in Class 30 on July 19, 2004, seeking registration of "Big Bite" for chocolates, biscuits, bread, pastry, confectionery, ice creams, spices, and other goods in the class. The mark was advertised on May 15, 2005. Ravi Foods (and its predecessors) claimed continuous, open, and extensive use of the mark in India since October 5, 2004, for various food products. 7-Eleven opposed the Indian application, while the Indian side opposed 7-Eleven's earlier-filed but later-advertised application.

Procedural Background: The oppositions were adjudicated together by the Deputy Registrar of Trade Marks, Chennai, who passed a common order on July 18, 2014. In that order, the Deputy Registrar rejected 7-Eleven's Application No. 636986 (opposed by the Indian side under Opposition No. MAS-720132) and accepted the Indian company's Application No. 1297871 (opposing 7-Eleven's opposition under No. MAS-211161). The Registrar primarily relied on the Supreme Court's decision in Milmet Oftho Industries v. Allergan Inc. (2004) to prioritize the first actual user in India, noting that 7-Eleven had not demonstrated any use or business presence in India under the mark, while the Indian party had established prior and continuous local use.  

Aggrieved, 7-Eleven filed two appeals under Section 91 of the Trade Marks Act, 1999: (T)CMA(TM) No. 110 of 2023 challenging the acceptance of the Indian application and (T)CMA(TM) No. 157 of 2023 challenging the rejection of its own application. During the pendency of these appeals, there were substitutions of parties due to corporate changes and assignments, culminating in Ravi Foods Private Limited being arrayed as the third respondent. The appeals were heard and reserved on January 22, 2026, and decided on February 11, 2026.

Reasoning and Decision of Court:  The High Court meticulously examined the arguments advanced by both sides. 7-Eleven contended that the Registrar erred by applying a narrow "prior user in India" test, ignoring its prior international adoption since 1988, global registrations, trans-border reputation, and earlier filing date in 1994. It argued that the Indian adoption in 2004 was mala fide, aimed at riding on its international goodwill, and that allowing identical use would cause confusion and association. Reliance was placed on numerous precedents, including N.R. Dongre v. Whirlpool Corporation (emphasizing trans-border reputation), S. Syed Mohideen v. P. Sulochana Bai, Milmet Oftho, and various High Court decisions supporting protection of well-known or spill-over reputation.  

The Court, however, rejected these contentions after a thorough analysis. It held that Indian trademark law is fundamentally territorial, and rights are acquired primarily through use in India. Mere availability of the mark on a foreign website or international reputation does not automatically confer goodwill or reputation in India absent evidence of actual spillover or substantial business activity on Indian soil. The Court observed that 7-Eleven had not placed any material showing sales, business, or reputation-building efforts in India under "Big Bite" either at the time of its 1994 application or during opposition proceedings commencing in 2007. The mere filing date, while relevant under Section 11, could not override the established prior use by the Indian party since 2004.  

Distinguishing the Milmet Oftho line of cases, the Court clarified that trans-border reputation protection is exceptional and requires clear proof of reputation in India, which was absent here. The mark was not shown to qualify as "well-known" under Section 2(1)(zg) or to warrant protection under Section 11(2) or 11(3) without local goodwill. The Court found no error in the Registrar's reliance on territorial prior use and upheld the impugned order in its entirety, dismissing both appeals without costs.

Point of Law Settled in the Case:  This judgment reaffirms and strengthens the territoriality principle in Indian trademark jurisprudence, holding that international reputation and prior foreign use, without corresponding goodwill, reputation, or actual business presence in India, cannot defeat the rights of a prior bona fide user who has continuously used the mark in the Indian market. A foreign applicant's earlier application date alone is insufficient to prevail over a local prior user's established trade use, particularly when no spillover of reputation is proved. The decision clarifies the narrow scope for invoking trans-border reputation under Sections 11(2) and 11(3) of the Trade Marks Act, 1999, emphasizing that concrete evidence of Indian goodwill is essential, and mere global fame or website presence does not suffice.

Case Title: 7 – Eleven International LLC Vs The Deputy Registrar of Trade Marks.  

Date of Order: 11.02.2026  

Case Number: (T)CMA(TM) Nos.110 & 157 of 2023  

Neutral Citation: 2026:MHC:542  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: The Hon'ble Mr. Justice N. Anand Venkatesh  

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

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

**Suggested Titles for the Article**  

- Madras High Court Upholds Territoriality: Indian Company Wins "Big Bite" Trademark Battle Against Global Giant 7-Eleven  

- International Reputation Insufficient Without Indian Goodwill: Madras HC Rejects 7-Eleven's "Big Bite" Claim in Favour of Local Prior User  

- Territorial Principle Prevails: Madras High Court Dismisses 7-Eleven's Appeals Over "Big Bite" Trademark Registration  

- "Big Bite" Trademark Dispute: Madras HC Affirms Prior Use in India Over Global Fame and Early Filing  

**Suggested Tags**  

TrademarkLaw, BigBiteTrademark, 7Eleven, RaviFoods, MadrasHighCourt , TerritorialityPrinciple, TransBorderReputation, PriorUser, Section11, TradeMarksAct, IntellectualProperty, IPLitigation, JusticeNAnandVenkatesh, Class30Trademarks, IndianTrademarkDispute,  

**Headnote of Article**  

Madras High Court dismisses appeals by 7-Eleven International LLC, upholds Deputy Registrar's 2014 order granting "Big Bite" trademark registration in Class 30 to Ravi Foods Private Limited as prior user in India; holds that international reputation and prior foreign adoption/early filing date cannot override local prior use absent proof of goodwill or spillover reputation in India, reinforcing strict application of territoriality under the Trade Marks Act, 1999.

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In this trademark dispute over the mark "Big Bite" in Class 30 for food products like confectionery, biscuits, savouries and allied items, the appellant 7-Eleven International LLC, a US-based global convenience store chain, claimed prior adoption since 1988 internationally, global registrations, trans-border reputation extending to India, and an earlier Indian application filed on 16.8.1994 (No.636986), while the contesting respondent (originally Dukes Consumer Care Ltd, later assigned to Ravi Foods Private Limited) filed its application on 19.7.2004 (No.1297871) and claimed continuous use in India since 5.10.2004. The Deputy Registrar, vide common order dated 18.7.2014, rejected 7-Eleven's application and opposition, accepting the respondent's application on the ground of prior actual use in India, relying on territoriality and Supreme Court precedent in Milmet Oftho Industries v. Allergan Inc. Aggrieved, 7-Eleven filed appeals under Section 91 of the Trade Marks Act, 1999 before the Madras High Court, which were heard and decided on 11.2.2026, dismissing both appeals and upholding the Registrar's order in toto.

Law settled: 

Trademark rights in India are primarily territorial; international reputation and prior foreign use/adoption do not automatically confer goodwill or protection in India absent concrete evidence of actual business, sales, spillover reputation or goodwill generated on Indian soil — mere website presence, global fame or prior application date (without use) cannot override a bona fide prior local user's continuous and extensive trade use in India .

In opposition/registration proceedings, the test of prior user in India prevails over international reputation unless trans-border reputation is clearly proved to have permeated the Indian market with substantial evidence; a foreign applicant's earlier filing date is relevant but not decisive when no use is shown in India by the date of application or opposition commencement .

Case Title: 7 Eleven International LLC Vs. The Deputy Registrar of Trade Marks:11.02.2026:(T)CMA(TM) Nos.110 of 2023 : 2026:MHC:542 : Madras HC:Hon’ble Mr. Justice N. Anand Venkatesh  

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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