Arti Srivastava Vs. The Assistant Controller of Patents

The in Arti Srivastava Vs. The Assistant Controller of Patents:11.05.2026: C.A.(COMM.IPD-PAT) 252/2022: 2026:DHC:4132:Tushar Rao Gedela,H.J.

Delhi High Court upheld the rejection of a patent application relating to a counterfeit product detection system on the ground of insufficiency of disclosure under Sections 10(4)(a) and 10(5) of the Patents Act, 1970.

The patent application titled “Method and System for Detecting Counterfeit Products” proposed a mechanism using visible and hidden alphanumeric codes on product labels to enable consumers to verify product authenticity through a data centre using SMS, phone, email and internet-based communication. 

The Assistant Controller of Patents had rejected the application on 31.01.2014 on grounds of lack of inventive step and insufficiency of disclosure. 

During the appeal, the respondent did not press the inventive step objection as one of the cited prior art documents had been published after the filing date of the application. 

However, the Court examined whether the complete specification adequately disclosed the working methodology of the invention. 

The Court held that the patent specification failed to explain essential technical aspects such as code processing, digital verification mechanisms, system architecture, authentication logic, communication protocols and storage methodology required for practical implementation by a Person Skilled In The Art (PSITA). 

Relying upon precedents including Farbwerke Hoechst v. Unichem Laboratories, 1968 SCC OnLine Bom 118, Titan Umreifungstechnik GMBH v. Assistant Controller of Patents [Judgement dated 02.05.2023 in C.A.(COMM.IPD-PAT) 114/2022] and Caleb Suresh Motupalli v. Controller of Patents [Judgement dated 29.01.2025 in C.M.A. (PT) No. 2 of 2024] the Court reiterated that a patent specification must fully and clearly disclose the invention and its best method of performance. 

Holding that the claims were not fairly based on the complete specification and that substantial further research would be required to implement the invention, the Court dismissed the appeal and upheld rejection of the patent application.

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

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Arti Srivastava v. Assistant Controller of Patents: Delhi High Court Clarifies Sufficiency of Disclosure under Section 10(4) of the Patents Act

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Counterfeit Detection Technology Patent Rejected: Important Lessons from Arti Srivastava v. Assistant Controller of Patents

Detailed Legal Analysis of Arti Srivastava Patent Case on Section 10(4) and Section 10(5) of the Patents Act

Analytical Article

Patent Claims Unsupported by Disclosure Violate Section 10(5) of the Patent Act 1970

Introduction:

The decision of the High Court of Delhi in Arti Srivastava Vs. The Assistant Controller of Patents is an important judgment concerning the law relating to sufficiency of disclosure in patent specifications under the Patents Act, 1970. The judgment was delivered on 11 May 2026. The Court examined whether a patent application describing a counterfeit product detection mechanism sufficiently disclosed the manner in which the invention was to operate and be performed.

The case is significant because it clarifies that merely identifying an inventive concept is not enough for grant of a patent. A patent applicant must also fully explain the working methodology of the invention so that a Person Skilled In The Art (PSITA) can practically implement the invention without conducting further research or inventing additional mechanisms. The judgment also discusses the distinction between inventive step and enablement, and explains the legal requirements under Sections 10(4)(a) and 10(5) of the Patents Act, 1970.

The Court ultimately dismissed the appeal and upheld rejection of the patent application on the ground that the complete specification lacked sufficient disclosure regarding transmission, processing, authentication, storage, and communication mechanisms involved in the invention.

Factual and Procedural Background:

The appellant, Arti Srivastava, filed Patent Application No. 1774/DEL/2006 on 03.08.2006 for an invention titled “Method and System for Detecting Counterfeit Products.” The invention related to a system intended to help consumers verify whether a product was genuine or counterfeit. The application proposed the use of labels containing two alphanumeric codes affixed to products. One code was visible while the second code was hidden beneath a scratchable coating.

The invention contemplated that a consumer would transmit both codes to a data centre through communication methods such as telephone, SMS, fax, internet or email. The data centre would compare the received codes with stored records and return a message indicating whether the product was genuine. The system also proposed maintaining records of repeated verification attempts in order to detect possible misuse or counterfeit activities.

The appellant filed a request for examination and early publication on 08.03.2007. The First Examination Report (FER) was issued on 29.06.2011. The appellant submitted a response on 21.05.2012. A hearing notice was issued on 03.06.2013 and the hearing was scheduled for 16.07.2013. Subsequently, post-hearing written submissions along with amended claims were filed on 02.12.2013.

On 31.01.2014, the Assistant Controller of Patents rejected the patent application. The rejection was based on two principal grounds. First, the invention allegedly lacked inventive step under Section 2(1)(ja) of the Patents Act. Second, the complete specification allegedly failed to sufficiently disclose the invention as required under Section 10(4)(a) of the Act.

The appellant challenged the rejection order before the Delhi High Court by filing C.A.(COMM.IPD-PAT) 252/2022.

Dispute Before the Court:

The central dispute before the Court revolved around whether the invention disclosed in the complete specification met the legal requirements under Section 10(4)(a) of the Patents Act.

The appellant argued that the inventive feature of the invention lay in the simultaneous use of two codes on the product packaging , one visible and another hidden under a scratchable layer. According to the appellant, none of the cited prior art documents disclosed such a mechanism. The appellant further contended that the complete specification, flow charts and diagrams adequately explained the operation of the invention and that further technical details regarding transmission and processing were matters obvious to a PSITA.

The respondent, namely the Assistant Controller of Patents, argued that the patent application did not sufficiently disclose how the claimed system actually functioned. According to the respondent, the specification failed to explain how the codes would be digitally processed, authenticated, converted, transmitted, stored or communicated back to the user. It was argued that essential technical details regarding system architecture, workflow, verification mechanisms and processing logic were absent.

Interestingly, during the hearing, the respondent did not continue to press the objection regarding inventive step under Section 2(1)(ja). Instead, the focus shifted entirely to insufficiency of disclosure under Section 10(4)(a).

Reasoning and Analysis of the Court:

The Court first analysed the nature of the invention. The invention related to counterfeit detection by using visible and hidden identification codes on product labels. The Court noted that the system was intended to allow ordinary consumers to authenticate products without specialized tools.

The Court carefully reviewed the complete specification and the figures provided by the appellant. It observed that the invention described a process in which a user transmits visible and hidden codes to a data centre, which thereafter verifies authenticity and communicates the result back to the user. However, the Court found that the specification merely described the broad objective and not the detailed operational mechanism.

The Court noted that the specification did not adequately explain how the transmission and processing of codes would actually occur. There was no detailed disclosure regarding digital conversion mechanisms, verification logic, authentication protocols, data handling, storage systems, or communication architecture. According to the Court, these were essential aspects of the invention and could not be left entirely to the imagination or further research by a PSITA.

The Court specifically observed that the specification lacked sufficient details regarding:the manner in which the data centre would process the incoming codes,the mechanism through which digital information would be authenticated,the protocols and architecture for communication between user and data centre,the storage and reuse of processed information, andthe safeguards against repeated misuse of already verified codes.

The Court emphasized that under Section 10(4)(a), a complete specification must “fully and particularly describe the invention and its operation or use and the method by which it is to be performed.” The Court interpreted this provision to mean that the invention must be practically reproducible by a PSITA without requiring further inventive effort.

The Court further held that although the invention identified communication modes such as SMS, internet and email, it did not disclose the actual implementation mechanism. Merely mentioning communication mediums was not enough to satisfy the enablement requirement.

The Court also held that the best method requirement under Section 10(4)(b) had not been satisfied. Though several communication methods were mentioned, the specification failed to disclose which method constituted the best mode known to the inventor for implementing the invention.

In reaching its conclusion, the Court relied upon several important judicial precedents.

The Court referred to Farbwerke Hoechst v. Unichem Laboratories and Ors., 1968 SCC OnLine Bom 118, where the Bombay High Court explained that insufficiency of disclosure has two aspects. First, the specification must disclose an embodiment of the invention. Second, the disclosure must enable implementation without requiring further inventions. The Delhi High Court applied this principle and concluded that the present specification failed both requirements because essential technical details were missing.

The Court also relied upon Titan Umreifungstechnik GMBH and Co. KG v. Assistant Controller of Patents and Designs & Anr., C.A.(COMM.IPD-PAT) 114/2022 decided on 02.05.2023, where the Delhi High Court had explained that patent specifications must provide clear and complete descriptions enabling a PSITA to reproduce the invention. The Court clarified that working examples may not always be mandatory, especially in non-chemical inventions, but sufficient operational disclosure remains essential.

Another important precedent relied upon was Caleb Suresh Motupalli v. Controller of Patents, C.M.A. (PT) No. 2 of 2024 decided by the Madras High Court on 29.01.2025. In that case, the Madras High Court held that absence of technological enablement and workable implementation details results in failure under Sections 10(4)(a) and 10(5). The Delhi High Court adopted this reasoning and observed that the claims in the present case were not fairly based on the disclosure in the complete specification.

The Court also referred to The General Tire & Rubber Company Va The Firestone Tyre and Rubber Company Limited and Others, [1972] R.P.C. 457, and Biogen Inc v. Medeva Plc, [1997] R.P.C. 1, while discussing clarity, fair basis and enablement requirements under patent law.

A notable aspect of the judgment is the Court’s treatment of the inventive step objection. The Court observed that prior art document D1 could not have been relied upon because D1 was published on 10.08.2006, whereas the subject patent application had already been filed on 03.08.2006. Therefore, D1 was not valid prior art against the application. Consequently, the objection relating to lack of inventive step under Section 2(1)(ja) did not survive.

Nevertheless, despite the appellant overcoming the inventive step objection, the Court held that the patent application still failed because of insufficiency of disclosure and lack of fair basis under Sections 10(4)(a) and 10(5).

The Court concluded that the specification did not provide enough information for a PSITA to implement the invention without conducting further research and experimentation. Since the essential technical architecture and operational methodology were absent, the invention failed the enablement requirement.

Final Decision of the Court:

The Delhi High Court dismissed the appeal and upheld the rejection of Patent Application No. 1774/DEL/2006.

The Court held that the invention suffered from insufficiency of disclosure under Section 10(4)(a) of the Patents Act, 1970 because the complete specification failed to fully describe the operation, implementation methodology and best mode of performing the invention.

The Court also held that the claims were not fairly based on the complete specification and therefore violated Section 10(5) of the Patents Act.

Accordingly, the rejection order dated 31.01.2014 passed by the Assistant Controller of Patents was sustained.

Point of Law Settled in the Case:

The judgment settles the important legal principle that a patent specification must do more than merely identify the inventive concept. The complete specification must disclose sufficient operational and technical details enabling a Person Skilled In The Art to practically implement the invention without requiring additional inventive effort or substantial research.

The decision further clarifies that:A patent may fail even if inventive step exists, where the invention is not sufficiently enabled.

Essential implementation details relating to architecture, processing, workflow, verification and communication mechanisms cannot be omitted.

The best method known to the inventor must be disclosed.

Patent Claims that extend beyond the disclosed technical teaching violate Section 10(5) of the Patents Act.

The judgment therefore reinforces the importance of detailed patent drafting and comprehensive disclosure standards in Indian patent law.

Case Title: Arti Srivastava Vs. The Assistant Controller of Patents

Date of Order: 11 May 2026

Case Number: C.A.(COMM.IPD-PAT) 252/2022

Neutral Citation: 2026:DHC:4132

Court: High Court of Delhi

Hon’ble Judge: Justice Tushar Rao Gedela

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

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

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Headnote

The Delhi High Court in Arti Srivastava v. Assistant Controller of Patents held that a patent specification must provide sufficient technical disclosure enabling a Person Skilled In The Art to practically implement the invention without further inventive research. The Court clarified that broad functional descriptions without adequate implementation details regarding processing, transmission, authentication and system architecture violate Sections 10(4)(a) and 10(5) of the Patents Act, 1970. The Court upheld rejection of a patent application relating to counterfeit product detection on the ground of insufficiency of disclosure despite the inventive step objection not surviving.

Indian Explosives Pvt Ltd Vs Ideal Detonators Pvt Ltd and Ors.

Indian Explosives Pvt Ltd Vs Ideal Detonators Pvt Ltd and Ors:05.05.2026:. APD/13/2023 with CS/48/2023, 2026:CHC-OS:157-DB, CalHc:Hon'ble  Justice Debangsu Basak and Justice Md. Shabbar Rashidi

Calcutta High Court Division Bench  dismissed the appeal challenging revocation of exemption from mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. 

The dispute arose from allegations that a former employee of the plaintiff had illegally shared confidential artistic drawings and trade secrets with the defendant company since 2016, resulting in alleged copyright infringement and breach of confidentiality obligations. 

The plaintiff claimed discovery of the misconduct only in 2022 and sought urgent interim relief without undergoing pre-institution mediation. The Court held that the plaintiff failed to disclose specific dates of discovery and had waited several years before instituting the suit, thereby negating any genuine urgency. 

Relying upon earlier precedents, the Bench observed that exemption under Section 12A cannot be used to bypass mandatory mediation through vague pleadings or deceptive urgency claims. Upholding the Single Judge’s findings, the Court ruled that there was no justification for dispensing with pre-institution mediation and consequently dismissed the appeal without costs.

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

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

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Introduction:

The decision delivered by the High Court at Calcutta in Indian Explosives Pvt Ltd vs Ideal Detonators Pvt Ltd & Ors., Neutral Citation No. 2026:CHC-OS:157-DB, is an important judgment explaining the mandatory nature of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The judgment was delivered on May 5, 2026 by the Division Bench in APD/13/2023 arising out of CS/48/2023.

The case is significant because it clarifies that commercial litigants cannot avoid the statutory requirement of pre-institution mediation merely by making vague claims of urgency in the plaint. The Court emphasized that the power to dispense with mediation is exceptional and can be exercised only where a real and immediate need for urgent interim relief exists. The judgment further strengthens the judicial trend promoting mediation and discouraging unnecessary commercial litigation.

Factual and Procedural Background:

The appellant-plaintiff, Indian Explosives Pvt Ltd, instituted a commercial suit alleging infringement of copyright, misuse of confidential information, and breach of confidentiality obligations by its former employee and other defendants. According to the plaintiff, Defendant No. 2 had been employed since 2012 and had access to proprietary technical drawings, trade secrets, and confidential documents belonging to the company.

The plaintiff alleged that from around 2016 onwards, the employee illegally shared confidential drawings and documents with Defendant No. 1, Ideal Detonators Pvt Ltd, without authorization. It was further claimed that such conduct continued till 2022 when the employee’s services were terminated due to alleged misconduct and moral turpitude.

The plaintiff contended that it became aware of these activities only in 2022 and thereafter initiated criminal proceedings and subsequently filed the commercial suit in March 2023. While filing the suit, the plaintiff sought exemption from mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015 on the ground that urgent interim relief was necessary. Such leave was granted ex parte on March 23, 2023 and an interim order was passed on March 27, 2023.

Thereafter, Defendant No. 1 filed an application seeking revocation of the exemption granted under Section 12A. The learned Single Judge accepted the contention of the defendants and held that the plaintiff had failed to demonstrate genuine urgency warranting bypass of mandatory mediation. Consequently, the plaint was rejected. Aggrieved by this decision, the plaintiff preferred the present appeal before the Division Bench.

Dispute Before the Court:

The central issue before the Division Bench was whether the plaintiff had legitimately obtained exemption from mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

The plaintiff argued that urgent interim relief was necessary because the defendants were allegedly continuing to misuse confidential and copyrighted materials. It was contended that once the illegal conduct was discovered in 2022, immediate legal action was taken and therefore the exemption from mediation was justified.

The defendants, on the other hand, argued that the allegations related to conduct allegedly occurring since 2016 and that the plaintiff had failed to provide any specific dates regarding discovery of the alleged misconduct. According to the defendants, the plaintiff had attempted to circumvent the mandatory statutory requirement of mediation through vague and incomplete pleadings.

Thus, the core dispute was whether the requirement of urgency under Section 12A had genuinely been established.

Reasoning and Analysis of the Judges:

The Division Bench undertook a detailed examination of the plaint and the surrounding circumstances. The Court noted that although the plaintiff alleged that illegal activities had been taking place since 2016, the plaint did not specify any exact dates either of the alleged acts or of the discovery of such acts in 2022.

The Court observed that the suit had been verified on March 17, 2023 and the exemption under Section 12A had been obtained on March 23, 2023. The judges found that despite alleging misconduct continuing for several years, the plaintiff had waited for a substantial period before approaching the Court. This delay seriously undermined the claim of urgency.

The Division Bench emphasized that Section 12A of the Commercial Courts Act, 2015 is mandatory in nature. The provision requires parties to undergo pre-institution mediation before filing a commercial suit unless urgent interim relief is genuinely required.

The Court relied upon and discussed several important precedents. The appellant had relied upon Gavrill Metal Pvt. Ltd. v. Maira Fabricators Pvt. Ltd., 2023 SCC OnLine Cal 2443, Yamini Manohar v. T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Novenco Building and Industry A/S v. Xero Energy Engineering Solutions Private Ltd. and Another, 2025 SCC OnLine SC 2278. The appellant argued that these decisions supported the grant of exemption under Section 12A where urgent relief was sought.

However, the Division Bench referred to its own earlier judgment in Unique Enterprenuers and Finance Limited and Another v. Really Agritech Private Limited and Another, Neutral Citation 2026:CHC-OS-117-DB. In that case, the Court had held that while considering exemption under Section 12A, courts must carefully examine whether there exists a real need for urgent interim relief. The Court had also clarified that if exemption is obtained by deception, falsity, or suppression of material facts, the court retains power to recall such exemption.

The Division Bench reproduced and relied upon paragraph 21 of the Unique Enterprenuers judgment, where it was observed that courts are not powerless to revisit orders granting leave under Section 12A if such leave was obtained improperly.

Applying this principle, the Court concluded that the plaintiff’s pleadings lacked sufficient particulars and that the delay between the alleged acts and institution of the suit showed absence of real urgency. The Bench warned that the statutory requirement of mediation cannot be defeated merely by cleverly drafted pleadings or generalized allegations of urgency.

The Court also stressed an important policy consideration behind Section 12A. The provision was introduced to encourage settlement of commercial disputes through mediation and to reduce unnecessary burden on courts. Therefore, courts must ensure that litigants do not misuse the “urgent interim relief” exception as a routine escape route.

The judges made it clear that urgency must be real, immediate, and supported by specific facts. Long delay in approaching the court ordinarily weakens the claim for exemption from mediation.

Final Decision of the Court:

The Division Bench upheld the findings of the learned Single Judge and dismissed the appeal. The Court held that there was no genuine requirement for urgent interim relief at the time of institution of the suit and therefore the plaintiff was not entitled to bypass mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

The appeal being APD/13/2023 was dismissed without costs.

Point of Law Settled in the Case:

The judgment settles and reiterates several important principles relating to Section 12A of the Commercial Courts Act, 2015.

Firstly, pre-institution mediation under Section 12A is mandatory unless the plaintiff demonstrates a genuine and immediate need for urgent interim relief.

Secondly, vague allegations and generalized assertions of urgency are insufficient for obtaining exemption from mediation.

Thirdly, courts retain the power to recall or revoke exemption granted under Section 12A if it is later found that the exemption was obtained through suppression, deception, or lack of genuine urgency.

Fourthly, delay in approaching the court is a relevant factor while determining whether urgent interim relief actually exists.

Lastly, the judgment reinforces the legislative objective of encouraging mediation in commercial disputes and preventing unnecessary litigation.

Case Title: Indian Explosives Pvt Ltd Vs Ideal Detonators Pvt Ltd and Ors.

Date of Judgment: May 5, 2026

Case Number: APD/13/2023 with CS/48/2023

Neutral Citation: 2026:CHC-OS:157-DB

Court: High Court at Calcutta, Commercial Division, Original Side

Bench: Hon’ble Justice Debangsu Basak and Hon’ble Justice Md. Shabbar Rashidi

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

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

Headnote

The Calcutta High Court held that exemption from mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015 can be granted only where genuine urgency requiring immediate interim relief is clearly established. Mere vague allegations of copyright infringement and misuse of confidential information, particularly after long delay, are insufficient to bypass the statutory mandate of mediation. The Court further held that courts possess the authority to revoke exemption if obtained through incomplete or misleading pleadings.

Commercial Courts Act, Section12A, PreInstitutionMediation, Commercial Litigation, Copyright Infringement, Confidential Information, Trade Secrets, Urgent Interim Relief, Calcutta High Court, Indian Explosives Case, Mandatory Mediation, Commercial Disputes, Copyright Litigation, Trade Secret Protection, Commercial Division, Mediation Law India, IP Litigation India, Civil Procedure, Legal News India, High Court Judgments, Business Disputes, Commercial Suit, AdvocateAjayAmitabhSuman, IPAdjutor

Shree Rajmoti Industries Vs Rajmoti Foods Products

Shree Rajmoti Industries Vs Rajmoti Foods Products:07.02.2019:CS (COMM) 335/2018: 2019:DHC:834:Prathiba M Singh,H.J.

Delhi High Court granted permanent injunction in favour of the Plaintiff holding that even filing of a trademark application can amount to infringement and constitute sufficient ground for a quia timet action under the Trade Marks Act, 1999.

The Plaintiff, M/s Shree Rajmoti Industries, claimed long and continuous use of the trademark “RAJMOTI” since 1962 in relation to edible oils and allied products and relied upon several trademark registrations in different classes. 

The dispute arose after the Defendant, M/s Rajmoti Foods Products, filed a trademark application for “RAJMOTI BRAND” in Class 30 claiming user since 1 April 1995 for food and cereal products. The Plaintiff contended that adoption of the identical mark and trading style amounted to trademark infringement and passing off.

The Defendant failed to appear before the Court despite substituted service and was proceeded ex parte. The Court examined whether mere filing of a trademark application without proof of actual sales was sufficient to grant injunction. Justice Prathiba M. Singh relied upon earlier Delhi High Court decisions including Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd., 2014 (58) PTC 585 (Del) and KRBL Limited v. Ramesh Bansal & Anr., 2009 (41) PTC 114 (Del), and held that a trademark application reflects intention to use the mark in trade and constitutes a real and imminent threat to the proprietary rights of the prior user.

The Court observed that under Section 18 of the Trade Marks Act, 1999, a trademark application can only be filed by a person claiming proprietorship through use or proposed use and therefore filing of such application itself amounts to use in relation to goods. Holding the Plaintiff to be the prior adopter and prior user of the mark “RAJMOTI”, the Court restrained the Defendant from using the mark “RAJMOTI” either as a trademark or trade name in relation to food products and allied goods. However, damages and other monetary reliefs were declined due to absence of proof of actual sales or damage.

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

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

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Whether mere filing of a trademark application can amount to infringement or passing off?

Introduction:

The judgment delivered by the High Court of Delhi in Shree Rajmoti Industries Vs Rajmoti Foods Products is an important decision in Indian trademark jurisprudence dealing with the question whether mere filing of a trademark application can amount to infringement or passing off. The Court examined the scope of Sections 18 and 29 of the Trade Marks Act, 1999 and clarified that a trademark application itself reflects intention to use the mark in trade and can constitute a sufficient threat to justify a quia timet action and grant of permanent injunction.

The case is significant because the Defendant was not actively participating in the proceedings and there was limited evidence of actual commercial sale of goods. Despite this, the Court protected the long-standing trademark rights of the Plaintiff by recognizing that an application seeking registration of an identical mark was itself enough to establish imminent threat to the proprietary rights of the registered proprietor.

The judgment also reiterates the principle that prior user and prior adopter enjoy superior protection under trademark law. The Court emphasized that where a party has been using a trademark for several decades and has built substantial goodwill and reputation, adoption of an identical mark by another party, even through a trademark application, cannot be permitted.

Factual and Procedural Background:

The Plaintiff, Shree Rajmoti Industries, instituted a commercial suit seeking permanent injunction against infringement of trademark, passing off, delivery up and other ancillary reliefs against the Defendant,  Rajmoti Foods Products.

The Plaintiff stated that it had adopted the trademark “RAJMOTI” in the year 1962 and had continuously used the mark as its trademark, trade name and trading style. The mark was registered in several classes including Classes 29, 31, 32, 35 and 42 under the Trade Marks Act, 1999. The Plaintiff was primarily dealing in edible oils and had also secured copyright registrations in the artistic label and style of writing of “RAJMOTI”.

The Plaintiff placed on record its sales figures from 1996 to 2004 showing annual sales exceeding Rs. 200 crores. It was also stated that the products were advertised through the website “www.rajmoti.com”.

The dispute arose when the Plaintiff discovered that the Defendant had filed Trademark Application No. 2322047 in Class 30 for the mark “RAJMOTI BRAND” claiming user since 1 April 1995 in respect of flour, cereals, coffee, tea, sugar, bread, pastry, spices and allied food products.

According to the Plaintiff, use of the expression “RAJMOTI” as a trademark and trading style by the Defendant amounted to infringement of the Plaintiff’s registered trademark and also constituted passing off.

The suit was initially listed before the Delhi High Court on 28 May 2014. Notice was issued in the injunction application and a Local Commissioner was appointed. However, the local commission could not be executed because the premises of the Defendant were found locked. Several attempts were made to serve the Defendant. Eventually substituted service through publication was carried out. On 13 March 2018, the Defendant was proceeded ex parte.

The Plaintiff relied upon earlier decisions of the Delhi High Court to argue that where the Defendant chooses not to appear, formal recording of oral evidence may be dispensed with.

Dispute Before the Court:

The principal issue before the Court was whether mere filing of a trademark application by the Defendant for the mark “RAJMOTI BRAND” constituted sufficient basis to grant permanent injunction for trademark infringement and passing off.

The Plaintiff argued that filing of the trademark application itself demonstrated clear intention to use the mark and therefore constituted “use” within the meaning of the Trade Marks Act, 1999.

The Defendant had not appeared before the Court to contest the proceedings. Therefore, the Court had to determine whether the Plaintiff could succeed solely on the basis of the trademark application and documentary material placed on record.

Another connected question was whether a quia timet action could be maintained where actual commercial sale of infringing products was not conclusively proved.

Reasoning and Analysis of the Court:

The Court returned the finding that the Defendant had applied for registration of a mark identical to the Plaintiff’s mark. The Court noted that the Plaintiff’s mark “RAJMOTI” was registered both as a word mark and label mark and that the dominant and essential feature of the Plaintiff’s labels was the word “RAJMOTI”.

The Court also took note of the fact that the Plaintiff had been vigilant in protecting its trademark rights and had immediately filed objections before the Trademark Registry after becoming aware of the Defendant’s application.

The Court observed that the Defendant’s trademark application not only claimed use of the mark since 1995 but also showed adoption of the trading style “Rajmoti Foods Products”. The Defendant’s application therefore reflected a clear intention to commercially exploit the mark.

The Court relied heavily upon the judgment in Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd., 2014 (58) PTC 585 (Del) . where the Delhi High Court had held that filing of a trademark application itself demonstrates intention to use the mark and that a suit for infringement or passing off can be maintained in anticipation.

The Court also referred to KRBL Limited v. Ramesh Bansal & Anr. concerning quia timet actions, where it was recognized that a trademark application reflects intention to use the mark in trade and may justify preventive relief.

Another important judgment referred to by the Court was Everstone Capital Advisors Pvt Ltd. & Anr. Vs.Akansha Sharma & Ors [CS(Comm)1028/2016 decided on 17th July, 2018] in which it was held that where a Defendant remains ex parte, the formality of recording oral evidence may be dispensed with.

The Court then examined Section 18 of the Trade Marks Act, 1999. It observed that a trademark application can only be filed by a person claiming to be proprietor of the trademark either through actual use or proposed use. Therefore, filing such an application inherently indicates intention to claim proprietary rights and to use the mark in trade.

Court further interpreted Section 2(c) and Section 29 of the Trade Marks Act, 1999. The Court held that filing of a trademark application constitutes “use in relation to goods” and therefore can amount to infringement under Section 29.

The Court observed that the Defendant’s conduct created an imminent and grave threat to the Plaintiff’s rights. Since the Defendant had claimed use since 1995 and adopted the mark as part of its business name, the threat was real and substantial.

The Court emphasized that the Plaintiff was the prior adopter and prior user of the mark for more than five decades. Therefore, the Plaintiff’s statutory and common law rights deserved protection.

Importantly, the Court held that use of the mark “RAJMOTI” either as trademark or trading style violated Sections 29(1), 29(2) and 29(5) of the Trade Marks Act, 1999.

Final Decision of the Court:

The Delhi High Court decreed the suit in favour of the Plaintiff and granted permanent injunction restraining the Defendant from using the mark “RAJMOTI” either as a trademark or trade name in relation to food products or goods allied and cognate to edible oil.All pending applications were disposed of and decree sheet was directed to be prepared.

Point of Law Settled in the Case:

The judgment settled an important principle in trademark law that filing of a trademark application itself may constitute sufficient evidence of intention to use the mark and may amount to “use” under the Trade Marks Act, 1999.

The Court clarified that a trademark proprietor need not wait for actual commercial sale of infringing goods before approaching the Court. A quia timet action can be maintained where there exists imminent threat to trademark rights.

The judgment also reinforces the supremacy of prior user rights and confirms that adoption of an identical mark as part of business name or trading style may independently amount to infringement under Section 29(5) of the Trade Marks Act, 1999.

Case Detail Title: Shree Rajmoti Industries Vs Rajmoti Foods Products

Date of Order: 7 February 2019

Case Number: CS (COMM) 335/2018 

Neutral Citation: 2019:DHC:834

Name of Court: High Court of Delhi

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

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

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

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Headnote

The Delhi High Court in M/S Shree Rajmoti Industries v. M/S Rajmoti Foods Products, 2019:DHC:834, held that mere filing of a trademark application can constitute intention to use the mark and may amount to “use” under the Trade Marks Act, 1999. The Court ruled that a quia timet action is maintainable even in absence of proof of actual sale of infringing goods. Recognizing the Plaintiff as prior adopter and prior user of the mark “RAJMOTI” since 1962, the Court granted permanent injunction restraining the Defendant from using the identical mark as trademark or trade name. The judgment interpreted Sections 18, 29(1), 29(2) and 29(5) of the Trade Marks Act, 1999 and reaffirmed protection of prior user rights in trademark law.

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Vodafone Idea Limited Vs. The Indian Performing Right Society Limited

Vodafone Idea Limited Vs. The Indian Performing Right Society Limited :08.05.2026:., A.O (COM) No. 17 of 2024: 2026:CHC-OS:170-DB, CalHC:Hon’ble Justice Debangsu Basak and Hon’ble Justice Md. Shabbar Rashidi

The Calcutta High Court  reaffirmed the royalty rights of authors and composers under the Copyright (Amendment) Act, 2012. The Division Bench held that telecom operator Vodafone Idea could not commercially exploit underlying musical and literary works embedded in sound recordings for its value added services such as caller tunes and ring tones without obtaining authorization from The Indian Performing Right Society (IPRS).

The dispute arose from competing claims between Vodafone, IPRS and Saregama India Ltd regarding royalty payments for use of copyrighted musical and literary works contained in sound recordings.

The Court examined the effect of the 2012 amendments to the Copyright Act, 1957 and held that the amendments created a “paradigm shift” by statutorily protecting authors and composers and ensuring their entitlement to royalties whenever sound recordings are commercially exploited, except limited exhibition in cinema halls. 

Rejecting Vodafone’s contention that licences obtained from Saregama were sufficient, the Court ruled that music companies do not possess legal authority to independently license underlying literary and musical works in derogation of rights vested in IPRS and authors. 

The Bench further held that agreements contrary to Sections 18 and 19 of the Copyright Act would be void. Consequently, the Court upheld the earlier order of the Single Judge, directed release of deposited amounts to IPRS subject to undertaking, dismissed Vodafone’s appeals and refused stay of the judgment.

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

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

#VodafoneIdea, #IPRS, #Saregama, #CalcuttaHighCourt, #CopyrightAct1957, #CopyrightAmendment2012, #MusicRoyaltyDispute, #CopyrightRoyalty, #SoundRecordingRights, #LiteraryWorks, #MusicalWorks, #CallerTuneRoyalty, #TelecomCopyrightCase, #IPLawIndia, #IndianCopyrightLaw, #CommercialExploitation, #CopyrightSociety, #MusicLicensing, #RoyaltyRights, #IntellectualPropertyLaw, #DelhiIPLawyer, #IPRNews, #LegalNewsIndia, #CopyrightLitigation, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor

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Vodafone Idea Limited v. The Indian Performing Right Society Limited & Anr.: Calcutta High Court Clarifies Royalty Rights of Authors and Composers in Commercial Exploitation of Sound Recordings

Alternative SEO Suitable Titles

Vodafone Idea vs IPRS Judgment 2026: Calcutta High Court Upholds Royalty Rights of Authors and Composers

Calcutta High Court on Copyright Royalties in Caller Tunes and Ring Tones: Vodafone Idea v. IPRS Explained

Copyright Amendment Act 2012 Strengthened Authors’ Royalty Rights: Analysis of Vodafone Idea v. IPRS

Can Telecom Companies Use Songs Without IPRS Licence? Detailed Analysis of Vodafone Idea Judgment

Commercial Exploitation of Sound Recordings Requires IPRS Licence: Calcutta High Court Judgment Analysis

IPRS Wins Royalty Battle Against Vodafone Idea: Important Copyright Law Ruling by Calcutta High Court

Detailed Analysis of Vodafone Idea v. IPRS and Saregama on Music Royalty and Copyright Law

Authors’ Rights in Musical and Literary Works 

Introduction:

The decision of the Calcutta High Court in is an important development in Indian copyright jurisprudence concerning the rights of authors, lyricists and composers in musical and literary works incorporated into sound recordings. The judgment was delivered on May 8, 2026 by a Division Bench comprising Justice Debangsu Basak and Justice Md. Shabbar Rashidi in A.O (COM) No. 17 of 2024 and APOT No. 300 of 2024. The Court examined the impact of the Copyright (Amendment) Act, 2012 and clarified whether telecom operators commercially exploiting songs through caller tunes, ring tones and value added services are required to obtain separate licences from the Indian Performing Right Society (IPRS) even when licences are already obtained from music companies such as Saregama.

The judgment is significant because it discusses the distinction between rights in a sound recording and rights in the underlying literary and musical works embodied within that sound recording. 

The Court held that the 2012 amendments introduced a major change in law by protecting authors and composers and ensuring their continuing entitlement to royalties whenever such works are commercially exploited. The ruling also clarifies the legal role of copyright societies such as IPRS and limits the authority of music labels to independently license underlying literary and musical works contrary to statutory protections available to authors.

Factual and Procedural Background:

The litigation arose out of disputes relating to Value Added Services (VAS) provided by Vodafone Idea Limited to its telecom subscribers. These services included caller tunes and ring tones using film and non-film songs. Vodafone entered into licensing arrangements with Saregama India Limited, a music company engaged in production and distribution of sound recordings. Vodafone contended that by obtaining licences from Saregama, it had lawfully acquired rights to commercially exploit sound recordings and no further licence or royalty payment was required to be made to IPRS.

Three suits were filed before the Calcutta High Court. Vodafone filed an interpleader suit being CS No. 23 of 2018 against Saregama and IPRS seeking adjudication regarding competing royalty claims. Saregama filed CS No. 155 of 2018 seeking injunction against Vodafone from exploiting copyrighted sound recordings without authorization. IPRS filed CS No. 210 of 2018 seeking injunction against Vodafone from communicating to the public the repertoire of literary and musical works administered by IPRS without payment of royalties.

During the pendency of proceedings, several interim orders were passed. On October 1, 2018, the Court restrained both Saregama and IPRS from raising royalty claims against Vodafone subject to Vodafone depositing Rs. 3.5 crores with the Registrar, Original Side of the Calcutta High Court. Another order dated October 12, 2018 permitted Vodafone to continue its VAS operations upon depositing Rs. 2.5 crores. Subsequently, Vodafone and Saregama entered into settlement agreements dated September 20, 2019 and other renewal agreements which were brought on record.

The learned Single Judge by judgment dated May 17, 2024 held that IPRS possessed independent rights in underlying literary and musical works and issued directions protecting those rights. Vodafone challenged that decision before the Division Bench leading to the present appeals.

Dispute Before the Court:

The principal dispute before the Court concerned the effect of the Copyright (Amendment) Act, 2012 on royalty rights of authors and composers. Vodafone argued that once a licence for the sound recording had been obtained from Saregama, no separate licence from IPRS was required for use of caller tunes and ring tones. Vodafone relied upon earlier judicial precedents including AIR 1974 Cal 257, Eastern India Motion Pictures Association v. Indian Performing Rights Society and the Supreme Court judgment reported in (1977) 2 SCC 820, Indian Performing Rights Society Ltd. v. Eastern India Motion Pictures Association. Vodafone contended that producers and music companies continued to remain owners of composite sound recordings and therefore licences granted by them were sufficient.

IPRS on the other hand argued that the 2012 amendments fundamentally altered the law and created statutory protection in favour of authors and composers. IPRS contended that rights in underlying literary and musical works continued to subsist independently under Section 13(1)(a) of the Copyright Act, 1957 and that separate authorization from IPRS was mandatory for commercial exploitation of those works. IPRS further argued that agreements between Vodafone and Saregama acknowledged Vodafone’s obligation to obtain licences from IPRS and that Saregama lacked legal competence to assign or license rights already vested with IPRS under valid assignment deeds.

The Court therefore had to decide three important questions. First, whether the 2012 amendments permit IPRS to claim royalties for underlying musical and literary works in sound recordings when commercially exploited. Second, whether music companies like Saregama have authority to grant licences in respect of such underlying works. Third, whether Vodafone possessed a valid licence permitting commercial exploitation of those works without authorization from IPRS.

Reasoning and Analysis of the Court:

The Division Bench undertook an extensive examination of the Copyright Act, 1957 and its amendments. The Court particularly focused upon Sections 13, 14, 17, 18 and 19 of the Act. The Court observed that Section 13 separately recognizes copyright in literary works, musical works and sound recordings. Therefore, rights in underlying literary and musical works do not disappear merely because they are incorporated into a sound recording.

The Court emphasized Section 13(4), which specifically states that copyright in a sound recording shall not affect separate copyright in any work in respect of which the sound recording is made. According to the Bench, this provision clearly recognizes the independent existence of rights in literary and musical works embedded within sound recordings.

The Court then examined the effect of the Copyright (Amendment) Act, 2012. It noted that the amendments were introduced after considering developments under international copyright treaties including the WIPO Copyright Treaty, 1996 and the WIPO Performances and Phonograms Treaty, 1996. The statement of objects and reasons behind the amendments reflected legislative intent to strengthen protection for authors and composers against commercial exploitation of their works without fair royalty sharing.

Particular emphasis was placed upon the third and fourth provisos to Section 18(1) inserted through the 2012 amendments. The Court observed that these provisos prohibit authors of literary and musical works from assigning or waiving their right to receive royalties except in limited circumstances. Any agreement contrary to these protections would be void. Similarly, Sections 19(9) and 19(10) ensure that assignments for creation of cinematograph films or sound recordings do not affect the author’s right to claim equal share of royalties for commercial utilization of such works.

The Court described the amendments as bringing a “paradigm shift” in Indian copyright law. According to the Bench, authors and composers are now statutorily protected and entitled to receive royalties whenever sound recordings are commercially exploited outside limited exceptions such as exhibition of films in cinema halls.

The Court also discussed several important precedents. The Bench analyzed Eastern India Motion Pictures Association v. Indian Performing Rights Society, AIR 1974 Cal 257 and the Supreme Court decision in Indian Performing Rights Society Ltd. v. Eastern India Motion Pictures Association, (1977) 2 SCC 820. The Court noted that these judgments were delivered before the 2012 amendments and therefore reflected the earlier legal position under which producers often became first owners of copyright.

The Court further referred to The Indian Performing Rights Society v. Aditya Pandey, 2011 SCC OnLine Del 3113 and the appellate judgment reported in 2012 SCC OnLine Del 2645. The Court also examined International Confederation of Societies of Authors and Composers (ICSAC) v. Aditya Pandey & Ors., (2017) 11 SCC 437. The Supreme Court in ICSAC had recognized the distinction between assignment of copyright and grant of licence and acknowledged that after June 21, 2012 authors retained rights to equal share of royalties notwithstanding assignment for creation of sound recordings.

The Bench also discussed Entertainment Network (India) Limited v. Super Cassette Industries Limited, (2008) 13 SCC 30 and subsequent Delhi High Court judgments concerning broadcasting rights and royalty claims. However, the Calcutta High Court clarified that the legal position after the 2012 amendments must be interpreted in light of statutory protections specifically introduced for authors and composers.

The Court rejected Vodafone’s argument that agreements with Saregama extinguished IPRS rights. The Bench held that agreements between Vodafone and Saregama could not override statutory provisions under Sections 18 and 19. The Court further observed that some agreements themselves acknowledged Vodafone’s obligation to obtain licences from IPRS. Therefore, Vodafone could not commercially exploit underlying musical and literary works without express authorization from IPRS.

Final Decision of the Court:

The Division Bench answered the first issue in favour of IPRS and held that the Copyright (Amendment) Act, 2012 allows IPRS to claim royalties in respect of underlying literary and musical works in sound recordings whenever such sound recordings are commercially exploited.

On the second and third issues, the Court held that Saregama and other music companies do not possess legal authority or competence to independently grant licences for commercial exploitation of underlying literary and musical works contrary to rights vested in IPRS and authors. The Court further held that Vodafone did not possess valid licence to commercially exploit such works without authorization from IPRS.

Accordingly, the Court dismissed Vodafone’s appeals, upheld the judgment of the learned Single Judge and directed that monies deposited before the Court be released to IPRS subject to undertaking regarding refund if required after final adjudication. Vodafone’s prayer for stay was also refused.

Point of Law Settled by the Judgment:

The judgment settles an important point of copyright law in India by clarifying that after the Copyright (Amendment) Act, 2012, authors and composers retain enforceable statutory royalty rights in literary and musical works incorporated within sound recordings. Commercial exploitation of such works through caller tunes, ring tones, broadcasting or similar services requires proper authorization from the copyright society administering those rights, namely IPRS, and licences obtained solely from music companies owning sound recordings are insufficient.

The decision also confirms that statutory protections introduced under Sections 18 and 19 of the Copyright Act override private contractual arrangements inconsistent with authors’ royalty rights.

CaseTitle: Vodafone Idea Limited v. The Indian Performing Right Society Limited & Anr. and Vodafone Idea Limited v. Saregama India Limited & Anr.

Date of Judgment: May 8, 2026

Case Numbers: A.O (COM) No. 17 of 2024 and APOT No. 300 of 2024

Neutral Citation: 2026:CHC-OS:170-DB

Court: High Court at Calcutta, Commercial Appellate Division, Original Side

Coram: Hon’ble Justice Debangsu Basak and Hon’ble Justice Md. Shabbar Rashidi

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

Vodafone Idea vs IPRS, Calcutta High Court copyright judgment, Copyright Amendment Act 2012, IPRS royalty rights, music royalty dispute India, caller tune copyright case, sound recording copyright India, literary and musical works copyright, authors royalty rights India, telecom copyright dispute, Saregama copyright case, copyright society India, commercial exploitation copyright, copyright law India 2026, Vodafone Idea copyright litigation, IPRS licensing rights, music copyright royalties, copyright infringement telecom services, copyright jurisprudence India, AdvocateAjayAmitabhSuman, IPAdjutor

Headnote

The Calcutta High Court held that after the Copyright (Amendment) Act, 2012, authors and composers of literary and musical works embedded in sound recordings possess independent statutory rights to receive royalties whenever such sound recordings are commercially exploited. The Court ruled that licences obtained from music labels owning sound recordings do not dispense with the requirement of obtaining authorization from IPRS for commercial exploitation of underlying literary and musical works. Agreements contrary to Sections 18 and 19 of the Copyright Act, 1957 were held void to the extent they extinguish statutory royalty rights of authors and composers.

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GGR Housing India Private Limited & Ors. Vs Navaratna Estates

GGR Housing India Private Limited & Ors. Vs Navaratna Estates & Anr.:07.05.2026:Civil Revision Petition No. 578 of 2026, High Court of Andhra Pradesh at Amaravati:Hon’ble Sri Justice Ravi Nath Tilhari and Hon’ble Sri Justice Balaji Medamalli

The Division Bench allowed a civil revision petition challenging the rejection of an application seeking leave to file additional documents in a commercial suit for specific performance of an oral agreement for sale of land.

The dispute arose from a commercial suit filed by the petitioners seeking enforcement of oral agreements dated 28.09.2015 relating to sale of large extents of land and, alternatively, refund of over Rs.36 crore with interest.

The trial court had rejected the plaintiffs’ application under Order XI Rule 1(5) CPC as amended by the Commercial Courts Act, 2015, holding that the documents sought to be produced were already within the plaintiffs’ power and possession and ought to have been filed with the plaint.

The High Court held that documents obtainable from public authorities, including certified copies of sale deeds and official records, cannot automatically be treated as being in the “power, possession, control or custody” of a party merely because they could have been procured earlier.

The Court further observed that several documents became necessary only in response to the defence raised in the written statement and were therefore protected under Order XI Rule 1(1)(c)(ii) CPC. Emphasising that procedural law is a handmaid of justice and should not defeat substantive adjudication, the Court set aside the impugned order dated 04.02.2026 and directed the Commercial Court to take the documents on record, subject to proof and admissibility during trial.

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

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

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Additional Documents in Commercial Suits Cannot Be Rejected Merely Because They Could Have Been Obtained Earlier

Introduction:

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

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

Factual and Procedural Background:

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

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

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

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

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

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

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

Dispute Before the High Court:

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

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

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

Reasoning and Analysis of the Court:

The Court gone through Order 11 of Commercial Court Act 2015 and analysed its structure carefully. The Bench observed that sub-rule (1) obligates plaintiffs in commercial suits to disclose all documents in their possession, power, custody or control at the time of filing the plaint. However, clause (c)(ii) specifically excludes documents produced in response to a defence subsequently raised by the defendants.

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

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

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

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

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

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

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

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

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

Final Decision of the Court:

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

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

Point of Law Settled in the Case:

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

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

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

Case Title: GGR Housing India Private Limited & Ors. v. Navaratna Estates & Anr.

Date of Judgment: 07.05.2026

Case Number: Civil Revision Petition No. 578 of 2026

Court: High Court of Andhra Pradesh

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

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

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

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Scope of “Power, Possession, Control or Custody” Under Order XI CPC Explained by Andhra Pradesh High Court

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Headnote

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

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

Ahmed Perfumes LLC and Anr. Vs Mohammed Faisal Rehman Sultan Ahmed and Ors.: 07.05.2026:Commercial IP Suit (L) No. 1403 of 2025:2026:BHC-OS:11828:BombHC: SHarmila U Deshmukh, H.J.

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

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

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

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

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

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Bombay High Court on Transborder Reputation in Trademark Passing Off Case

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Detailed Analytical Article

Transborder Reputation under Indian Trademark Law

Introduction:

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

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

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

Factual and Procedural Background:

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

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

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

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

Dispute Before the Court:

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

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

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

Reasoning and Analysis of the Judge:

The Court emphasized that in passing off actions involving foreign entities, the claimant must establish not merely global reputation but actual goodwill and customer recognition within India.The Court first examined the classic trinity of passing off, namely goodwill, misrepresentation, and damage. Since the plaintiffs were foreign entities and their trademarks were unregistered in India, the Court observed that the plaintiffs were required to establish spillover reputation and goodwill in India before any passing off claim could succeed.

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

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

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

The Court further referred to the UK Supreme Court judgment in Starbucks (HK) Ltd. and Anr. v. British Sky Broadcasting Group Plc and Ors.,  (2015) 1 WLR 2628, where it was held that mere reputation is insufficient and that a claimant must demonstrate customers within the jurisdiction. Justice Deshmukh emphasized that Indian courts have consistently followed this principle while dealing with foreign trademark owners seeking passing off protection.

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

The Court relied upon the Delhi High Court decision in Bolt Technology OU v. Ujoy Technology Pvt. Ltd. and Anr., (2023) 96 PTC 155, which summarized the principles flowing from Toyota Prius and clarified that a claimant must show significant goodwill in India and not merely worldwide reputation.

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

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

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

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

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

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

Final Decision of the Court:

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

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

Point of Law Settled in the Case:

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

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

Date of Judgment: 7 May 2026

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

Neutral Citation: 2026:BHC-OS:11828

Court: High Court of Judicature at Bombay

Hon’ble Judge: Justice Sharmila U. Deshmukh

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

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

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Headnote

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