Monday, June 8, 2026

SC-Dhodha House Vs. S.K. Maingi

SC-Dhodha House Vs. S.K. Maingi: When Copyright Jurisdiction Cannot Rescue a Trademark Suit

Introduction

In the world of intellectual property, a business owner who feels their brand has been copied naturally wants to file a lawsuit in a court that is convenient for them — ideally close to home. Indian law does offer this comfort to copyright holders through a special provision, Section 62(2) of the Copyright Act, 1957, which allows the person whose copyright has been violated to file a suit in the court located where they themselves live or work, even if the infringement happened elsewhere. This is an exception to the general rule under the Code of Civil Procedure, 1908, which ordinarily requires a suit to be filed where the defendant lives or where the wrongdoing took place.

The case of Dhodha House v. S.K. Maingi, decided by the Supreme Court of India on 15 December 2005, addressed a deceptively simple but practically very important question: if a business owner files a lawsuit claiming infringement of both a copyright and a trademark, can they use the copyright law's convenient "home court" provision to also drag a trademark dispute into a court that would otherwise have no jurisdiction over the trademark claim? The Supreme Court said no, and in doing so, it settled a significant point of law about how courts determine their territorial jurisdiction in intellectual property disputes that involve more than one statute.

Factual and Procedural Background

The Supreme Court dealt with two separate civil appeals together in this judgment, as both raised the same core legal question.

The First Case — Dhodha House v. S.K. Maingi (Civil Appeal No. 6248 of 1997)

Dhodha House, a business dealing in sweet meats, was located in the district of Ghaziabad in Uttar Pradesh. It claimed to have been using the name and trade mark "Dhodha House" since 1960 and had obtained trade mark registration No. 277714-B in Class 30 under the Trade and Merchandise Marks Act, 1958. It had also registered its artistic work — the label and wrapper used on its products — under the Copyright Act, 1957, bearing registration numbers A-5117 and A-5330 of 1970.

The respondent, S.K. Maingi, was running a business called M/s. V.R.K. Todha Sweet House at Kotkapura in the district of Faridkot, Punjab. Dhodha House alleged that the respondent was using an art work, label, trade mark, and wrapper that was confusingly similar to its own.

The appellant filed a suit before the District Judge at Ghaziabad. On 17 January 1992, the First Additional District Judge, Ghaziabad granted a temporary injunction restraining the respondent from infringing the appellant's copyright in its art work and label, and also from passing off his goods using a mark deceptively similar to "Dhodha."

The respondent challenged this order before the Allahabad High Court in First Appeal From Order No. 401 of 1992. By an order dated 5 May 1997, the High Court held that the District Court at Ghaziabad did not have territorial jurisdiction to try the suit because the primary cause of action was one of trade mark infringement under the 1958 Act, and not one of copyright infringement. The High Court also made an observation that "Dodha" is merely the name of a variety of sweet and not a distinctive product manufactured exclusively by the plaintiff. Dhodha House then came in appeal before the Supreme Court.

The Second Case — Patel Field Marshal Industries v. P.M. Diesel Limited (Civil Appeal No. 16 of 1999)

Both parties in this case carried on business in diesel engines and were located at Rajkot in the State of Gujarat. P.M. Diesel Limited, the plaintiff-respondent, had a registered trade mark "Field Marshal" and had also registered its label under the Copyright Act, 1957. It filed a suit on the original side of the Delhi High Court seeking a perpetual injunction against Patel Field Marshal Industries and others, alleging infringement of trade mark, copyright, passing off, and seeking rendition of accounts.

The plaintiff claimed that the Delhi High Court had jurisdiction on three grounds: first, under Section 62(2) of the Copyright Act; second, because the defendants had applied for registration of their trade mark at Delhi (as an advertisement in this regard had appeared in the Trade Marks Journal); and third, that the defendants were selling goods bearing the impugned trade mark in Delhi.

On 28 September 1995, a Single Judge of the Delhi High Court rejected the plaintiff's application for injunction, holding that the plaintiff had failed to prima facie establish either territorial or pecuniary jurisdiction. The plaintiff appealed to a Division Bench through FAO (OS) No. 270 of 1995. The Division Bench, by its judgment dated 10 March 1998, allowed the appeal and held that the Delhi High Court did have jurisdiction, relying primarily on an earlier Division Bench decision in Jawahar Engineering Co. v. Jawahar Engineering Pvt. Ltd. (AIR 1984 Delhi 166). The defendants, Patel Field Marshal Industries, then came in appeal before the Supreme Court.

The Dispute

At the heart of both cases was a question about territorial jurisdiction of courts in intellectual property suits. The specific legal tension was this: Section 62(2) of the Copyright Act, 1957 creates a special additional forum for copyright suits, allowing the plaintiff to sue in the court where they reside or carry on business. No such special provision existed under the Trade and Merchandise Marks Act, 1958 (though a similar provision was later introduced in Section 134(2) of the Trade Marks Act, 1999, which replaced the 1958 Act). The general rule under Section 20 of the Code of Civil Procedure requires suits to be filed where the defendant resides or where the cause of action arises.

The question was therefore: when a plaintiff files a "composite suit" alleging both copyright infringement and trade mark infringement together, can the special home-court advantage given by Section 62(2) of the Copyright Act be used to give jurisdiction to a court that would otherwise have no jurisdiction over the trade mark claim?

Reasoning and Analysis of the Court

Justice S.B. Sinha, writing for the bench of two judges (the other being Justice B.P. Singh), began by setting out the fundamental principles governing territorial jurisdiction of civil courts. The Court referred to Sections 16 to 20 of the Code of Civil Procedure, 1908, explaining that Section 20 is the residual provision under which suits not covered by Sections 16 to 19 must be filed either where the defendant resides or carries on business, or where the cause of action wholly or partly arises.

The Court then examined the language of Section 62(2) of the Copyright Act, 1957, which provides that for purposes of a suit under that chapter (which deals with civil remedies for copyright infringement), a "district court having jurisdiction" shall include a court within whose local limits the person instituting the suit actually and voluntarily resides, or carries on business, or personally works for gain. This is a non-obstante clause, meaning it overrides the general rule in the Code of Civil Procedure for copyright suits specifically.

The Court made a clear and important distinction: this provision applies only to suits for infringement of copyright or other rights under the Copyright Act. It does not extend to a suit for infringement of trade marks under the 1958 Act. The Court pointed out that Parliament was fully aware of Section 62(2) when it enacted the Trade and Merchandise Marks Act in 1958, yet it deliberately chose not to insert a similar provision. This conscious legislative omission was treated as a clear indication that Parliament did not intend to grant plaintiffs a similar home-court advantage in trade mark suits. The Court further observed that when Parliament enacted the Trade Marks Act in 1999, it did introduce such a provision in Section 134(2), which made the legislative intent even clearer — before 1999, no such advantage existed for trade mark suits.

The Court firmly held that a judgment passed by a court without territorial jurisdiction is a nullity and has no legal force. It cited the classic Supreme Court decision in Kiran Singh v. Chaman Paswan (MANU/SC/0116/1954 : [1955] 1 SCR 117), where the Court had declared that "a decree passed by a court without jurisdiction is a nullity, and that its invalidity could be set up whenever and wherever it is sought to be enforced or relied upon, even at the stage of execution and even in collateral proceedings. A defect of jurisdiction... strikes at the very authority of the court to pass any decree." A court that lacks territorial jurisdiction acts as a court that has no authority at all — this is expressed in Latin as coram non judice.

A key argument raised by the appellants in the Dhodha House case was that the plaintiff had filed a composite suit combining both copyright and trade mark claims, and by virtue of Order II Rule 3 of the Code of Civil Procedure (which allows a plaintiff to join several causes of action in one suit), the copyright jurisdiction should extend to cover the trade mark claim as well. The Supreme Court rejected this argument. It held that while Order II Rule 3 does permit joining of causes of action, it does not create jurisdiction. Joining a trade mark claim alongside a copyright claim does not confer on the court jurisdiction over the trade mark matter if the court did not have such jurisdiction to begin with.

The Court further addressed the Jawahar Engineering case heavily relied upon by the Delhi High Court. In that case, a Division Bench of the Delhi High Court had held that when a defendant has applied for registration of a trade mark and an advertisement in this regard has appeared in the Trade Marks Journal, the Delhi High Court gets jurisdiction because a threatened infringement may materialize in Delhi. The Supreme Court disagreed with this reasoning. It held that a cause of action for trade mark infringement arises only when a registered trade mark is actually used — not merely when an application for registration is filed. Moreover, the advertisement in the Trade Marks Journal or any other journal does not by itself create a cause of action within the jurisdiction of a court. The Court relied on its earlier decision in Oil and Natural Gas Commission v. Utpal Kumar Basu (MANU/SC/0759/1994 : (1994) 4 SCC 711) to hold that merely reading an advertisement at a place or sending communications from a place does not constitute facts forming an integral part of the cause of action.

On the Patel Field Marshal case specifically, the Court noted that the application for registration of the defendants' trade mark had been filed at Bombay, not Delhi, and the Delhi office of the Trade Marks Registry had no jurisdiction over parties based in Rajkot. Any opposition to the registration was also required to be filed at Bombay or Ahmedabad. The Delhi High Court could not derive jurisdiction from an advertisement in the Trade Marks Journal.

The Court also dealt with the decision in Exphar SA v. Eupharma Laboratories Ltd. (MANU/SC/0148/2004 : 2004 (28) PTC 251 (SC)), where the Supreme Court had explained that Section 62(2) of the Copyright Act was introduced to remove impediments for copyright owners and provides an additional ground for attracting court jurisdiction beyond the ordinary grounds in Section 20 CPC. The Court clarified that Exphar dealt with a pure copyright infringement case, and the specific question of whether Section 62(2) could be used to attract jurisdiction in a suit primarily based on trade mark infringement was not decided there. A decision, the Court noted, citing Bharat Forge Co. Ltd. v. Utam Manohar Nakate (MANU/SC/0043/2005), is an authority only for what it actually decides, and not for what can merely be deduced from it.

The Court agreed with the views of the Madras High Court in Premier Distilleries Pvt. Ltd. v. Shashi Distilleries (MANU/TN/0219/2001 : 2001 PTC 907 (Mad)), which had held that the filing of an application for registration of a trade mark does not constitute part of the cause of action in a passing off suit.

On the question of what amounts to "carrying on business" at a particular place for the purpose of establishing jurisdiction, the Court laid down that it requires more than merely having goods sold at that place. There must be a special agent who attends exclusively to the principal's business; the agent must be an agent in the strict legal sense; and the essential part of the business must take place at that location. Citing Mulla on the Code of Civil Procedure (Fifteenth Edition, Volume I, Pages 246-247), the Court explained that a corporation is deemed to carry on business where its registered or principal office is located, or where it has a subordinate office — but not merely because its goods happen to be available for sale there. In the Patel Field Marshal case, the plaintiff's registered office was at Rajkot and it had no branch office in Delhi, no manufacturing facility there, and neither its trade mark nor its copyright was registered at Delhi.

Final Decision of the Court

The Supreme Court dismissed Civil Appeal No. 6248 of 1997 filed by Dhodha House, affirming the Allahabad High Court's finding that the District Court at Ghaziabad had no territorial jurisdiction because the infringement complained of was primarily one of trade mark under the 1958 Act, and the benefit of Section 62(2) of the Copyright Act could not be extended to it.

Civil Appeal No. 16 of 1999 filed by Patel Field Marshal Industries was allowed, setting aside the Delhi High Court Division Bench's finding that the Delhi High Court had jurisdiction. The Supreme Court held that since the primary cause of action was trade mark infringement under the 1958 Act, the jurisdiction of the Delhi High Court could not be invoked under Section 62(2) of the Copyright Act. The plaintiff was not a resident of Delhi, was not carrying on any business in Delhi, had no branch office there, and the trade mark application was to be filed and opposed at Bombay — not Delhi. An advertisement in a trade mark journal is not sufficient to create a cause of action. Costs were ordered to be borne by each party themselves.

Point of Law Settled

The Supreme Court settled a clear and important principle: Section 62(2) of the Copyright Act, 1957 creates an additional forum exclusively for suits arising from infringement of copyright or other rights under that Act. This provision cannot be used to confer jurisdiction on a court in respect of a cause of action that arises under the Trade and Merchandise Marks Act, 1958. Even when a composite suit is filed combining both copyright and trade mark claims, the court must examine the primary and dominant nature of the cause of action. If the infringement complained of is essentially one of trade mark and the copyright element is incidental or secondary, the plaintiff cannot invoke the home-court advantage under Section 62(2) to drag the defendant to a court that would otherwise have no jurisdiction over the trade mark claim. Merely joining two causes of action in one plaint under Order II Rule 3 CPC does not create jurisdiction where none existed. Furthermore, a cause of action for trade mark infringement does not arise merely from an advertisement in a journal or from the filing of an application for registration of a trade mark.

Case Details

Title: Dhodha House v. S.K. Maingi (with Patel Field Marshal Industries and Ors. v. P.M. Diesel Limited)

Date of Order: 15 December 2005

Case Numbers: Civil Appeal No. 6248 of 1997 and Civil Appeal No. 16 of 1999

Neutral Citation: MANU/SC/2524/2005

Equivalent Citations: AIR 2006 SC 730; (2006) 6 SCC 41; 2006 (32) PTC 1 (SC); JT 2006 (1) SC 123; 2006 (1) AWC 864 (SC); 2006 (1) BLJR 29; RLW 2006 (1) SC 543; (2006) 1 MLJ 36 (SC); 2006-3-LW 96; 2006 (2) ALT 18 (SC); 2006 (1) ALD 138 (SC); 2006 (1) RCR (Criminal) 385

Court: Supreme Court of India

Hon'ble Judges: Justice B.P. Singh and Justice S.B. Sinha

Disclaimer: Readers are advised not to treat this as a 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 SEO Titles

Dhodha House v S K Maingi Supreme Court 2005: Copyright Jurisdiction Cannot Extend to Trademark Suits in India
Section 62(2) Copyright Act and Trademark Jurisdiction: What the Supreme Court Decided in Dhodha House Case
Can a Composite Copyright and Trademark Suit Be Filed at Plaintiff's Home Court? Supreme Court Clarifies
Territorial Jurisdiction in IP Suits India: Supreme Court Ruling in Dhodha House and Patel Field Marshal Cases
When Does Section 62(2) Copyright Act Apply? Supreme Court's Landmark Ruling Explained Simply

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Headnote

Held: Section 62(2) of the Copyright Act, 1957 provides an additional forum to a plaintiff to institute a copyright suit at the place where the plaintiff resides or carries on business. This provision is confined in its application to suits for infringement of copyright or rights under the Copyright Act alone. Where the primary cause of action in a suit is infringement of a trade mark under the Trade and Merchandise Marks Act, 1958, the plaintiff cannot invoke Section 62(2) of the Copyright Act to bring the suit in a court at the plaintiff's place of residence or business, if that court would not otherwise have territorial jurisdiction under Section 20 of the Code of Civil Procedure. Joining a copyright cause of action alongside a trade mark cause of action in a composite suit under Order II Rule 3 CPC does not by itself confer jurisdiction upon a court which lacks jurisdiction over the trade mark claim. Parliament's omission to include a similar provision in the 1958 Act was conscious and deliberate, as is evident from the fact that when Parliament enacted the Trade Marks Act, 1999, it expressly inserted such an additional forum provision in Section 134(2) thereof. A decree passed by a court lacking territorial jurisdiction is a nullity and void ab initio. An advertisement in the Trade Marks Journal or any other journal does not constitute a cause of action arising within the jurisdiction of a court.

Sunday, June 7, 2026

Safex Chemicals Private Limited Vs SML Limited

Safex Chemicals Private Limited Vs SML Limited & Anr., decided on 4 June 2026 in COMAP No. 2 of 2025, was adjudicated by the High Court of Himachal Pradesh at Shimla by a Division Bench comprising Chief Justice Gurmeet Singh Sandhawalia and Justice Bipin Chander Negi. The appeal arose from an order confirming an ex parte ad-interim injunction in a patent infringement suit relating to the fertilizer product “Aladdin.” The core dispute before the Division Bench was limited to whether the High Court had territorial jurisdiction to grant and continue interim injunctive relief against Safex Chemicals, the appellant. The plaintiff alleged that infringing goods were sold within Himachal Pradesh, while the appellant contended that it neither carried on business nor authorised sales of the product in the State and that the alleged sales were isolated trap transactions by an unauthorised retailer. The Court closely examined pleadings, invoices, regulatory permissions under the Fertilizer Control Order, and the law laid down by the Supreme Court in Asma Lateef v. Shabbir, holding that jurisdiction must be prima facie established even at the interim stage. It found that there were no pleadings or credible material to show that the appellant manufactured or authorised sale of the product within Himachal Pradesh and that the alleged sales could not confer jurisdiction. Allowing the appeal, the Court vacated the interim injunction insofar as it applied to Safex Chemicals, clarifying that its observations were confined to the issue of interim relief and would not prejudice the trial on merits.

[Disclaimer: Readers are advised not treat this as a substitute for legal advise as it may contain errors in perception,interpretation and presentation of facts and law.]

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**Safex Chemicals Private Limited v. SML Limited & Another**

**Court:** High Court of Himachal Pradesh, Shimla | **Case No.:** COMAP No. 2 of 2025 | **Date of Judgment:** 4th June, 2026 | **Bench:** Hon'ble Chief Justice G.S. Sandhawalia & Hon'ble Justice Bipin Chander Negi (judgment authored by Justice Bipin Chander Negi)

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When Trap Purchases Are Not Enough: Territorial Jurisdiction in Patent Infringement Suits

Territorial Jurisdiction at Interim Injunction Stage to Be Decided on the Basis of Plaint, written statement and documents on record.

Introduction

One of the most fundamental questions in any civil lawsuit is whether the court where the suit is filed actually has the authority to hear it. This authority, known as territorial jurisdiction, determines which court can entertain a dispute based on geography , where the defendant resides, where the alleged wrong occurred, or where business is carried on. In intellectual property disputes, particularly those involving patents, plaintiffs sometimes file suits in distant courts by relying on small, strategically arranged purchases of the allegedly infringing product within that court's territory. These are commonly called "trap purchases" or "trap transactions." The question of whether such purchases alone are sufficient to drag a defendant into litigation before a court far removed from where it actually operates is one that courts across India have grappled with repeatedly.

The Himachal Pradesh High Court, in its decision dated 4th June 2026 in COMAP No. 2 of 2025, addressed this precise question in a patent infringement dispute between SML Limited as the plaintiff and Safex Chemicals Private Limited as one of the defendants. The Division Bench, comprising the Chief Justice and another learned Judge, examined whether the Himachal Pradesh High Court had the territorial jurisdiction to entertain a suit and, more immediately, whether the interim injunction granted against Safex Chemicals Private Limited should be sustained. The court's conclusion was a clear and firm answer: four invoices generated by a third party who was neither an authorized dealer nor agent of the defendant, combined with an unsubstantiated claim about a manufacturing unit, did not create a prima facie basis for the court's jurisdiction. The interim injunction was accordingly set aside.

Factual and Procedural Background

SML Limited, the plaintiff in the underlying suit, claimed to be the owner of a patent and filed a commercial suit before the learned Single Judge of the Himachal Pradesh High Court, alleging that two defendants had infringed its patent by manufacturing, marketing, and selling a product under the brand name "Aladdin." The product in question is a fertilizer-based commodity regulated under the Fertilizer (Control) Order, 1985, which itself is issued under the Essential Commodities Act, 1955.

The first defendant in the suit was a local entity with its principal place of business within Himachal Pradesh. The second defendant was Safex Chemicals Private Limited, which became the appellant before the Division Bench. Safex Chemicals had addresses in New Delhi and Jaipur, Rajasthan, and did not have any business establishment within the territorial limits of the Himachal Pradesh High Court.

On 24th July 2023, the learned Single Judge granted an ex-parte ad-interim injunction against both defendants. This order was later confirmed by the learned Single Judge on 6th June 2025 in OMP No. 320/23 in COMS No. 6/2026. It was this confirmed order that Safex Chemicals challenged before the Division Bench in COMAP No. 2 of 2025. By agreement between the parties, the Division Bench confined its hearing only to the preliminary issue of territorial jurisdiction.

The plaintiff's case for jurisdiction rested on two broad planks. First, it was averred in paragraph 8 of the plaint that Safex Chemicals carries on business for gain within the territorial jurisdiction of the court, and relevant downloaded documents were annexed as Annexure "D." Second, it was averred in paragraphs 29, 55, and 56 of the plaint that infringing products manufactured and marketed by Safex Chemicals were being offered for sale within the territorial limits of the court. To support this, four sale invoices were placed on record as Annexure "M," showing that the product "Aladdin" had been sold by the first defendant within Himachal Pradesh.

Safex Chemicals filed a detailed written statement contesting jurisdiction. It asserted that it had no authorized dealers or retailers within Himachal Pradesh, that "Aladdin" was a regulated commodity and it had obtained permission to market it only in certain specific states, that Himachal Pradesh was not among those states, and that the first defendant had purchased the product from Haryana, where Safex Chemicals was authorized to sell, and had then brought it into Himachal Pradesh for resale. Safex Chemicals categorically denied being in any business relationship with the first defendant.

At a significant hearing on 29th December 2025, the Division Bench noted procedural infirmities in the counter-affidavit filed by the first defendant before the Single Judge and directed that the proprietor of the first defendant, one Mr. Mohan Lal Sharma, appear in person. On 8th January 2026, Mr. Mohan Lal Sharma appeared before the Division Bench and produced original documents. His authorization letter showed that he was licensed only to sell straight fertilizers, NPK complex fertilizers, and bio fertilizers from specified sources none of which included "Aladdin" or Safex Chemicals as a source. He himself acknowledged that he had no authority to sell "Aladdin," which he had purchased from a shop called Jangra Khad Beej Bhandar, Sarmathla, not directly from Safex Chemicals or its authorized dealers.

The Dispute Before the Division Bench

The core dispute before the Division Bench was whether the Himachal Pradesh High Court had the territorial jurisdiction to entertain the suit and grant injunction against Safex Chemicals, a company based entirely outside Himachal Pradesh. The specific grievance of Safex Chemicals was directed at the finding in paragraph 55 of the Single Judge's order dated 6th June 2025, which held that jurisdiction existed primarily on the basis of two factors: the sale invoices generated by the first defendant, and an alleged manufacturing unit of Safex Chemicals located at Una, Himachal Pradesh.

Safex Chemicals argued that the manufacturing unit finding was unsupported by any pleading in the plaint or replication, that the invoices were not issued to the plaintiff but to unconnected third parties, that there was no explanation for how the plaintiff obtained those invoices, and that the first defendant was demonstrably not an authorized dealer of Safex Chemicals. It further argued, drawing on the Supreme Court's ruling in Asma Lateef and Another vs. Shabbir and Others, reported as (2024) 4 SCC 696, that even for the purpose of granting interim injunction, the court must record at least a prima facie satisfaction regarding its own jurisdiction.

The plaintiff countered that even a single act of selling, making, offering for sale, or importing a patented product within a court's territory violates the rights of the patentee under Section 48 of the Patents Act, 1970, and that this single act is sufficient to invoke jurisdiction. The plaintiff also argued that since damages were also claimed, Section 19 of the Code of Civil Procedure would apply, which provides that where a wrong is committed within the limits of one court and the defendant resides or carries on business within another court, the plaintiff may choose either forum. It also sought to distinguish the judgments cited by Safex Chemicals on the ground that those cases involved the Trademarks Act, not the Patents Act, under which the nature of rights and violations is different.

Reasoning and Analysis of the Court

The court began its analysis by firmly endorsing the principle laid down in Asma Lateef and Another vs. Shabbir and Others, (2024) 4 SCC 696, where the Supreme Court of India had clarified that the question of jurisdiction is not merely a question to be deferred to trial. Even at the stage of considering an application for interim relief, the court must record at least a prima facie satisfaction that it has the jurisdiction. If a party raises a specific objection that the suit is not maintainable or is barred before the court, the grant of interim relief must be preceded by the court's prima facie finding on this jurisdictional question. The court cannot simply proceed to grant protection on the assumption that jurisdiction will be determined later as a preliminary issue under Order XIV Rule 2 of the Code of Civil Procedure. To do so would amount to an improper exercise of judicial power.

Turning to the first basis of jurisdiction the finding about the manufacturing unit at Una, Himachal Pradesh the court subjected it to close scrutiny. The court observed that paragraph 8 of the plaint averred that Safex Chemicals "carries on business for gain within the territorial jurisdiction" of the court, with reference to documents annexed as Annexure "D." However, on an examination of Annexure "D," the court found that nothing in those documents indicated that Safex Chemicals had a manufacturing facility within the territorial jurisdiction of the court. The plaint and the replication were both silent on the question of any manufacturing unit in Himachal Pradesh.

The court then examined a document placed on record by Safex Chemicals itself an authorization letter issued by the State of Madhya Pradesh, authorizing Safex Chemicals to carry on business for a period of five years from 29th June 2021 to 28th June 2026 within Madhya Pradesh. Annexed to this authorization letter was Annexure-I, which detailed the products and their sources. The court found that the product "Aladdin" appeared at serial numbers 5 and 8 of this annexure. Insofar as serial number 5 was concerned, the product was manufactured by Safex Chemicals itself at Delhi. Insofar as serial number 8 was concerned, the same product was manufactured by an entirely separate entity, M/s Him Bio Agro, at Village Bala, Bathari, Tehsil Haroli, District Una, Himachal Pradesh.

The court drew a critical conclusion from this document. The manufacturing unit at Una belonged not to Safex Chemicals but to M/s Him Bio Agro, a completely separate and distinct entity. Therefore, the finding in paragraph 55 of the learned Single Judge's impugned order that Safex Chemicals had a manufacturing unit within the territorial jurisdiction was factually incorrect and unsupported by the record. The learned Single Judge appeared to have relied on a brochure from Safex Chemicals' website, which, on closer examination, did not support the conclusion that Safex Chemicals itself manufactured the product in Himachal Pradesh. Furthermore, if "Aladdin" was being manufactured at Una and was available locally in Himachal Pradesh, there would have been no reason for the first defendant to have procured it from Haryana, which is what actually happened.

Turning to the second basis of jurisdiction the sale invoices the court carefully examined their character and provenance. The court noted that Safex Chemicals had obtained permission to market "Aladdin" in only five states, as stated in paragraph 12 of its written statement, though paragraph 83(b) of the same written statement disclosed that the product was actually being sold in eleven states. Himachal Pradesh was conspicuous by its absence from either list. There was no permission granted to Safex Chemicals to sell "Aladdin" within the State of Himachal Pradesh, and the plaint itself contained no averment that "Aladdin" was being sold in Himachal Pradesh through unauthorized channels in breach of the regulatory framework.

The written statement of Safex Chemicals specifically averred that "Aladdin," being a regulated product under the Fertilizer (Control) Order, 1985, was sold only through authorized dealers, and that the first defendant was not its authorized dealer. When Mr. Mohan Lal Sharma appeared before the Division Bench on 8th January 2026, this was confirmed beyond doubt. He acknowledged that he had no authority to sell "Aladdin" and had procured it from Jangra Khad Beej Bhandar, Sarmathla, not from Safex Chemicals or any of its authorized dealers. He had purchased it from Haryana, where Safex Chemicals had authorization to sell, and then resold it locally.

The court then analyzed the four invoices that formed the plaintiff's primary evidentiary basis for invoking jurisdiction. These invoices were issued by the first defendant, not to the plaintiff itself, but to unconnected third parties. The plaintiff provided no explanation as to how it came to obtain these invoices. The plaint contained no averments establishing any connection between Safex Chemicals and the first defendant as principal and agent, or as manufacturer and authorized dealer. In this light, the court had to assess whether these transactions could prima facie be said to have been obtained by fair means.

The court referred to the Delhi High Court's judgment in Rieter AG and Another vs. Kavassery Narayanaswamy Venkatasubramanian, reported as 2025 SCC Online Del 4379, and the Delhi High Court's judgment in Kubota Corporation and Godabari Agro Machinery and Services India Pvt. Ltd. (CS Comm 655 of 2023) and Others vs. Great Galleon Venture Limited vs. Champa Prema Tandel Sole Proprietor of Dharmesh Distiller and Another, CS (CoMM) No. 343/2023, decided on 1st May 2024 both of which the plaintiff had relied upon. The court distinguished these cases on a crucial ground. In Rieter AG, the plaintiff's investigator had directly placed an order with the defendant for the infringing goods. In Kubota Corporation, the defendant had directly made an offer for sale to the plaintiff's investigator. In both those cases, there was a direct, authentic, and traceable transaction between the plaintiff's representative and the defendant's representative, demonstrating infringement within the court's territory by fair means. The present case was entirely different: the invoices were transactions between the first defendant and unconnected third parties, the first defendant was not Safex Chemicals' authorized representative, and the plaintiff could not explain how it obtained those invoices.

The court also addressed the Madras High Court's judgment in OSA Nos. 38, 40 and 42 of 2020 and CMP Nos. 1518, 1538 and 1544 of 2020, titled Sulphur Mills Limited vs. M/s Dayal Fertilizers Pvt. Ltd. and Others, decided on 11th November 2020, where it had been held that a suit could be maintained on the basis of a lone "trap order" and that whether the defendant was offloading its product within the court's jurisdiction was a matter for trial. The court noted that this ruling arose in the context of an application seeking revocation of leave, not an application for interim injunction under Order 39 Rules 1 and 2 of the Code. The considerations applicable are materially different in the two contexts.

On this point, the court drew extensively from the Delhi High Court Division Bench judgment in M/s Allied Blenders and Distillers Pvt. Ltd. vs. Prag Distillery Pvt. Ltd. and Another, reported as 2017 SCC Online Del 7225, FAO (OS) No. 49/2017, decided on 1st March 2017. This judgment clarified that the standard of examination under Order VII Rule 10 of the Code (for return of plaint) is entirely different from the standard applicable under Order XXXIX Rules 1 and 2 (for interim injunction). Under Order VII Rule 10, the court examines only the averments in the plaint and assumes them to be correct. But when considering interim injunction, the court must look at not just the plaint but also the defendant's reply and written statement. A mere averment in the plaint is not enough. The assumption that plaint averments are correct is unavailable. If the issue of jurisdiction is highly debatable and prima facie not tenable, the court can refuse interim injunction on that ground even if it has previously declined to return the plaint. The earlier refusal to return the plaint does not foreclose the defendant's right to raise jurisdiction as an objection to interim relief.

The court also cited the Supreme Court's judgment in Exphar Sa vs. Eupharma Laboratories Ltd., (2004) 3 SCC 688, which had held that when a jurisdictional objection is raised by demurrer (without a full trial), the court must proceed on the assumption that the facts as pleaded are true. However, as clarified in Allied Blenders, this principle is confined to the Order VII Rule 10 context and does not apply when the court is considering interim relief.

On the plaintiff's argument based on Section 48 of the Patents Act, 1970, the court accepted the legal proposition that even a single act of selling, making, offering for sale, or importing a patented product without authorization violates the patentee's rights. However, the court held that the real question was whether such an act had been committed by Safex Chemicals within the court's territorial jurisdiction. Given that the first defendant had no authorization from Safex Chemicals, that the goods had been procured from Haryana through channels entirely unconnected to any agency of Safex Chemicals, and that Safex Chemicals had no authorized dealer in Himachal Pradesh, the court concluded prima facie that no such act attributable to Safex Chemicals had taken place within its territorial limits.

On the Section 19 CPC argument, the court was equally dismissive. Section 19 provides that where a wrong is committed within the jurisdiction of one court and the defendant resides or carries on business within the jurisdiction of another, the plaintiff may sue in either. However, the court held that for Section 19 to apply, the wrong must first be shown prima facie to have been committed by the defendant within the court's territory. Since the evidence indicated that no act attributable to Safex Chemicals had been committed within Himachal Pradesh, Section 19 was of no assistance to the plaintiff.

The court also took a broader view of the risks of allowing jurisdiction to be manufactured through the mechanism of unverified trap transactions. It observed that if the mere existence of a few invoices issued by an entity that is not an authorized representative of the defendant to some third parties is sufficient to confer jurisdiction, any company can easily be dragged into distant litigation, regardless of whether it has any genuine connection to that forum. This would be an open invitation to forum shopping and harassment. The court was therefore of the view that such transactions must at least prima facie appear to have been obtained by fair and authentic means, a threshold that the plaintiff in this case could not meet.

Final Decision of the Court

The Division Bench allowed the appeal preferred by Safex Chemicals Private Limited. It held that prima facie there was no cause of action or wrong attributable to Safex Chemicals that could invoke the territorial jurisdiction of the Himachal Pradesh High Court. The alleged cause of action or wrong, if any, was declared to be a triable issue meaning the question could be examined at full trial on the basis of additional material if brought on record. As a consequence, the impugned interim order dated 6th June 2025, passed in OMP No. 320/23 in COMS No. 6/2026, insofar as it operated against Safex Chemicals Private Limited (defendant No. 2), was vacated. The court carefully added that these observations were confined only to the question of interim injunction at this stage and would not influence the learned Single Judge in arriving at a finding on the basis of any additional material that the parties may bring on record in the main suit. The appeal was accordingly disposed of on 4th June 2026.

Points of Law Settled

This judgment makes a significant and clear contribution to the law on several fronts. It reaffirms that territorial jurisdiction is not a question to be deferred indefinitely it must be addressed prima facie even at the stage of interim injunction, following the Supreme Court's mandate in Asma Lateef, (2024) 4 SCC 696. It firmly distinguishes between the standard applicable under Order VII Rule 10 CPC (return of plaint) and Order XXXIX Rules 1 and 2 CPC (interim injunction) a distinction that significantly raises the bar for obtaining interim relief when jurisdiction is genuinely disputed. It establishes that in patent infringement cases, trap purchases or trap transactions must be shown prima facie to have been obtained by fair and authentic means before they can form the basis for invoking territorial jurisdiction. Where the alleged infringing product reaches the court's territory not through the defendant's own acts or through any authorized agent or dealer of the defendant, but through independent and unconnected intermediaries, no cause of action against the defendant can be said to have arisen within that territory. Finally, it clarifies that Section 48 of the Patents Act, 1970, while conferring rights against a single infringing act, still requires prima facie proof that the act was committed by the defendant within the court's jurisdiction.

Case Title: Safex Chemicals Private Limited Vs. SML Limited and Another

Date of Order: 4th June 2026

Case Number: COMAP No. 2 of 2025

Court: High Court of Himachal Pradesh, Shimla

Hon'ble Judges: Hon'ble Mr. Gurmeet Singh Sandhawalia, Chief Justice, and Hon'ble Mr. Justice Bipin Chander Negi

Disclaimer: Readers are advised not to treat this as a 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 SEO Titles for Legal Journals

Trap Purchases and Territorial Jurisdiction in Patent Infringement: Himachal Pradesh High Court's Landmark Ruling in Safex Chemicals vs SML Limited

Can a Single Trap Purchase Confer Territorial Jurisdiction in Patent Suits? HP High Court Answers

Interim Injunction and Territorial Jurisdiction in Patent Cases: What the Safex Chemicals Ruling Means for IP Litigation in India

Unauthorized Dealer Sales and Forum Shopping in Patent Disputes: Lessons from Safex Chemicals vs SML Limited

Patent Infringement, Trap Transactions, and the Prima Facie Jurisdiction Test: Analysis of Safex Chemicals vs SML Limited 2026

When Courts Must Check Jurisdiction Before Granting Injunctions: Safex Chemicals vs SML Limited Explained

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Brief Headnote

Facts: The plaintiff SML Limited sued two defendants for patent infringement relating to a fertilizer product sold under the brand name "Aladdin." The Himachal Pradesh High Court granted and confirmed an ex-parte ad-interim injunction against both defendants including Safex Chemicals Private Limited, whose addresses were in New Delhi and Jaipur. Safex Chemicals challenged jurisdiction on the ground that it had no business presence, authorized dealer, or manufacturing unit in Himachal Pradesh, and that the invoices relied upon by the plaintiff were issued by an unauthorized third party who had independently procured the product from Haryana.

Decision: The Division Bench allowed the appeal, held that no prima facie cause of action attributable to Safex Chemicals had arisen within the territorial jurisdiction of the court, vacated the interim injunction against Safex Chemicals, and ruled that trap transactions by unauthorized intermediaries, unsupported by any pleading or evidence of agency or authorization, are insufficient to invoke territorial jurisdiction for the purpose of granting interim relief in a patent suit.

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SC-Dhariwal Industries Ltd. and Another Vs. M.S.S. Food Products

Malikchand vs Manikchand: The Battle Over an Unregistered Trademark and the Supreme Court's Guidance on Passing Off, Assigned Marks, and Interim Injunctions

Introduction

When two businesses claim rights over similar-sounding trademarks for the same category of products, and neither of them holds a registered trademark, the resulting legal battle can be complex, bitter, and full of disputed facts. The situation becomes even more complicated when one party claims its rights not on the basis of its own long use of the mark, but on the basis that the mark was assigned to it by someone who used it earlier. In such circumstances, can a court grant an emergency injunction stopping one party from using its mark while the full case is being heard? And if two courts below have already decided to grant such an injunction, should the Supreme Court step in and overturn that decision?

These are the questions that the Supreme Court of India addressed in its decision dated 25 February 2005 in Dhariwal Industries Ltd. and Another v. M.S.S. Food Products, reported as (2005) 3 Supreme Court Cases 63. The judgment, delivered by a Bench comprising Justice B.P. Singh and Justice P.K. Balasubramanyan, touches upon several important legal principles — the passing off action for unregistered trademarks, the right to claim prior use through an assignor, the scope of the Supreme Court's interference in interlocutory matters, and the role of public health considerations in the balance of convenience. It is a judgment that is practical, nuanced, and genuinely useful for anyone who deals with trademark disputes in the consumer goods sector.

Factual and Procedural Background

The dispute in this case arose out of competing claims over two very similar-sounding marks: "Malikchand" and "Manikchand." Both marks were used for the same category of products — pan masala, gutkha, supari, and supari mix. Neither party held a registered trademark at the time the suit was filed, though both had subsequently applied for registration and their applications were pending.

M.S.S. Food Products, the respondent-plaintiff, claimed that it and its predecessors had been using the mark "Malikchand" since around 1960 for these products. The plaintiff's claim of prior use was not based solely on its own use of the mark. It claimed to have received the right to use the mark "Malikchand" through a series of three assignments — that is, formal transfers of the mark — from the original users. In other words, the plaintiff was saying: we may not have started using this mark ourselves from the very beginning, but the original users transferred their rights to us through proper legal documents, and we can therefore claim the benefit of their prior use. This concept of "tacking on" the prior use of the assignor to the assignee's claim is recognized under Section 39 of the Trade Marks Act, 1999, which allows an unregistered trademark to be assigned or transmitted with or without the goodwill of the business.

The defendants, Dhariwal Industries Ltd. and another, were also marketing pan masala, gutkha, and supari under the mark "Manikchand." They claimed to be well-established in the market, having built up considerable reputation and goodwill under that name. They asserted that the plaintiff was a rival trader who was well aware of their use of "Manikchand" for a considerable time, and that the plaintiff's belated approach to the court was an attempt to interfere with their established trade.

The plaintiff filed Civil Suit No. 8-A of 2004 before the District Court of Mandaleshwar, Madhya Pradesh. Along with the suit, it filed an application, designated IA No. 2 of 2004, under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction to restrain the defendants from selling products under the mark "Manikchand" pending the outcome of the suit. The defendants appeared and not only filed objections to the injunction application but also filed their own application, IA No. 5 of 2004, under Order 39 Rule 4 of the Code of Civil Procedure, seeking to vacate the ad interim injunction that the trial court had initially granted.

Both parties produced various documents before the trial court, and the genuineness and validity of those documents was hotly contested from both sides. The trial court, by its order dated 6 April 2004, held that the plaintiff had made out a prima facie case for an interim injunction and that the balance of convenience was in its favour. It accordingly confirmed the ad interim injunction, allowed IA No. 2 of 2004, and dismissed IA No. 5 of 2004, meaning the injunction against the defendants would continue until the final disposal of the suit.

The defendants then appealed to the Madhya Pradesh High Court under Order 43 Rule 1(r) of the Code of Civil Procedure, which allows a party to appeal against an order granting or refusing an interlocutory injunction. The High Court, by its judgment and order dated 11 May 2004 in MA No. 904 of 2004, examined the arguments raised before it and came to the conclusion that the trial court's order could not be described as incorrect, arbitrary, or perverse. The High Court confirmed the injunction. However, it gave an additional direction to the trial court to conclude the trial of the suit expeditiously, preferably within a period of six months from the date of receipt of a copy of its order. The defendants were not satisfied with this outcome and approached the Supreme Court of India by way of a Special Leave Petition, which was converted into Civil Appeal No. 1407 of 2005.

The Dispute

The central issues before the Supreme Court were of both law and fact, though the Court was careful to recognize the limited scope of its jurisdiction at this interlocutory stage. The core factual question was whether the plaintiff had prima facie established that it was the prior user of the mark "Malikchand" — either through its own use or through the assignments from its predecessors. The defendants argued strenuously that the assignment documents relied upon by the plaintiff were forged or manufactured specifically for the purpose of this litigation, and hence entirely unreliable.

The core legal questions were threefold. First, can a plaintiff in a passing off action base its claim of prior use on assignments received from earlier users — that is, can it "tack on" the prior use of its assignors? Second, what documents and materials can be considered by the Supreme Court when hearing an appeal against an interlocutory order, particularly when fresh documents have been placed before it that were never shown to the trial court or the appellate court? Third, given that both the trial court and the High Court had granted and confirmed the interim injunction, was there any ground for the Supreme Court to interfere at this stage under its special leave jurisdiction under Article 136 of the Constitution of India?

Additionally, two subsidiary questions arose. The defendants had argued that even if the injunction was to be maintained, they should be allowed to sell their products under the "Manikchand" name if they maintained separate accounts of sales, so that any damages payable to the plaintiff at the end of the trial could be calculated. They also argued that the plaintiff had been guilty of delay and laches — meaning that the plaintiff had known about the defendants' use of "Manikchand" for a long time and had waited too long before filing the suit, thereby disentitling itself to an urgent remedy.

Reasoning and Analysis of the Judge

The judgment was delivered by Justice P.K. Balasubramanyan on behalf of the Bench. The reasoning is careful, practical, and marked by a clear awareness that at the interlocutory stage, a court must be cautious about making final pronouncements on disputed questions of fact.

The Court first addressed the legal foundation for the passing off action. It noted that Section 27 of the Trade Marks Act, 1999 expressly states that nothing in the Act shall be deemed to affect the right of action against any person for passing off goods as the goods of another person, or the remedies in respect thereof. This provision makes clear that a passing off action is completely independent of registration — the absence of a registered trademark does not stand in the way of a party bringing a passing off suit and seeking an injunction, as long as it can establish prima facie that it was the prior user of the mark and that the balance of convenience favours the grant of an injunction.

On the question of whether an assignee can claim the benefit of its assignor's prior use, the Court referred to Section 39 of the Trade Marks Act, 1999. That provision states that an unregistered trademark may be assigned or transmitted with or without the goodwill of the business concerned. The Court held that this provision makes it legally possible for a plaintiff or defendant to show that an unregistered trademark that was being used by another person earlier had been assigned to it, and that such an assignee can tack on the prior use of its predecessor. This is an important and clear ruling: in a passing off action, a party whose title to a mark derives from an assignment is not at a disadvantage compared to someone who has personally used the mark from the beginning, provided the assignment is valid and genuine. The plaintiff was therefore legally entitled to rely on the assignments to assert prior use of the mark "Malikchand."

The Court then addressed the fundamental evidentiary question at this stage: what happens when the very documents on which a party's case rests are challenged as forged or fabricated? The defendants had invested considerable time and effort before the Supreme Court in challenging the three assignment deeds produced by the plaintiff, raising issues about the stamp papers used, the dates of execution, and the licence status of the stamp vendor. The Court observed that the trial court had noted the prima facie evidence of prior use while also acknowledging that the question of whether the assignment documents were genuine was one to be finally decided only at trial. The High Court had similarly taken the view that a wholesale condemnation of the plaintiff's documents as forged could not be made at the interlocutory stage. The Court in the Supreme Court agreed with this approach. It noted that even before it, a document relating to one of the prior assignments had allegedly been seized during an income tax raid in 2001, and a document acknowledging that seizure was produced. The Court held that at this prima facie stage, it was not possible to decide whether the documents had been manufactured for the litigation. Questions of genuineness, admissibility, and discrepancy in documents are matters to be decided at trial, not at the interlocutory stage.

The Court addressed the scope of its own jurisdiction in a pointed and practical way. It noted that the present appeal had come before it under Article 136 of the Constitution of India, which allows the Supreme Court to grant special leave to appeal from any judgment or order passed by any court or tribunal in India. When the Supreme Court exercises this jurisdiction in an interlocutory matter, the materials it can properly consider are normally those that were produced before the trial court or before the appellate court with the permission of that court under Order 41 Rule 27 of the Code of Civil Procedure. In this case, the defendants had produced a large number of documents before the Supreme Court that had never been shown to the trial court or the High Court. The Court firmly declined to enter into an adjudication based on these fresh documents, particularly since their authenticity and genuineness were mutually questioned. It confined itself to the materials that had been before the courts below, as is appropriate in an interlocutory appeal of this nature.

On the question of delay and laches, the Court accepted that this was a potentially relevant consideration in the balance of convenience analysis. However, it noted two important factors. First, the High Court had concluded that the present suit was in substantial part triggered by the defendants' own suit filed in the High Court of Bombay, where they had sought to restrain the plaintiff from using the mark "Malikchand" on the ground that it was deceptively similar to their mark "Manikchand." The plaintiff, apprehensive that its mark was about to be annihilated by a court order, responded by filing the present suit to assert its own prior user rights. In that context, the delay in approaching the trial court was understandable and was not the kind of unjustified delay that disentitles a party to interim relief. Second, and more importantly, the argument of delay and laches had not been properly or clearly raised by the defendants in their written submissions before the trial court or the High Court. It would not be appropriate for the Supreme Court to refuse relief on a ground that had not been squarely put before and considered by the courts below. The Court noted that in any event, once the trial court had adverted to the question and granted the injunction, and the High Court had confirmed it, the Supreme Court at the special leave stage would not be justified in reversing that decision solely on the ground of delay and laches. The argument was kept open for the defendants to raise at the final trial.

On the question of balance of convenience, the defendants had argued that instead of maintaining the injunction, the Court should allow them to continue selling under the "Manikchand" mark on the condition that they maintained separate accounts of sales, so that any ultimate liability could be quantified. The Court rejected this suggestion. It noted that the interim injunction had been in force since 16 March 2004 — at least seven months by the time the matter came before the Supreme Court. Importantly, the defendants had already changed the format of their product wrapper and were continuing to market their products under the brand name "RMD" after the injunction was granted. In this context, directing them to maintain separate accounts would in effect mean modifying the injunction and allowing them to resume use of the disputed name "Manikchand," which the courts below had specifically prohibited. The Court declined to do this.

The Court also noted, in a passage of significant public interest value, that the High Court had drawn attention to several cases registered against the defendants under the Prevention of Food Adulteration Act on the ground of alleged adulteration of the pan masala and gutkha sold by them under the name "Manikchand." The Court invoked Article 47 of the Constitution of India, which places a duty on the State to improve public health and nutrition and to prohibit the consumption of intoxicating drinks and drugs injurious to health. The Court clarified that it was referring to the adulteration aspect not to pronounce on the merits of those prosecutions, but only to reinforce the conclusion that in exercising its discretion, it would not interfere with the injunction granted below. The product itself — gutkha and pan masala — was noted to be potentially harmful to health, and adulterated versions of it even more so. This consideration reinforced the balance of convenience in favour of maintaining the injunction.

Finally, the Court reiterated the general principle that there cannot be any absolute rule regarding interference or non-interference in interlocutory matters when the Supreme Court exercises its jurisdiction under Article 136. The arguments of both sides must be kept in mind. However, the Court must also guard against making final pronouncements on contested issues of fact lest it prejudice the fair trial of the suit. Both the balance of convenience and the prima facie case had been decided in the plaintiff's favour by two courts. The Supreme Court found no basis to disagree.

Final Decision of the Court

The Supreme Court dismissed the appeal filed by Dhariwal Industries Ltd. It declined to interfere with the order of the Madhya Pradesh High Court confirming the interim injunction granted by the trial court. The injunction restraining the defendants from selling products under the mark "Manikchand" was upheld. The Court also directed the trial court to comply with the High Court's earlier direction to try and dispose of the suit expeditiously, and to complete the trial and final disposal within a period of six months from the date of the Supreme Court's order of 25 February 2005.

Points of Law Settled in the Case

This judgment settles several important and practically useful legal principles that continue to be relevant in trademark and passing off litigation.

The first and most significant point is that an assignee of an unregistered trademark can claim the benefit of the prior use of its assignor. Under Section 39 of the Trade Marks Act, 1999, an unregistered mark can be assigned with or without the goodwill of the business. The assignee is entitled to "tack on" the earlier use by its predecessor to establish its own priority of use for the purpose of a passing off action. This means that a person who acquires an unregistered mark through a valid assignment does not have to start counting priority only from the date of the assignment — it can go back to when the original user first used the mark.

The second point is that in a passing off action, the absence of registration does not bar a plaintiff from claiming an interim injunction, provided it can make out a prima facie case of prior user and a balance of convenience in its favour. Section 27 of the Trade Marks Act, 1999 expressly preserves the common law right of action for passing off regardless of whether either party holds a registered mark.

The third point relates to the evidence at the interlocutory stage. A court cannot wholesale condemn documents produced by a party as forged or fabricated at the interim stage of a lawsuit. The genuineness of documents is a matter to be decided at trial. At the interlocutory stage, the court only needs to satisfy itself that the documents prima facie support the case being made, and that there is no compelling reason to reject them entirely before the trial.

The fourth point concerns the scope of the Supreme Court's jurisdiction under Article 136 of the Constitution in interlocutory matters. The Court should not base its decision on fresh documents produced for the first time before it, especially when those documents' authenticity is disputed. The materials to be considered are normally those that were before the trial court and the appellate court.

The fifth point is that delay and laches, while relevant to the balance of convenience, will not automatically disentitle a party to an interim injunction — particularly when the delay was triggered by the conduct of the opposing party itself, and when the argument of delay was not properly raised and argued before the courts below.

Case Details

Title: Dhariwal Industries Ltd. and Another v. M.S.S. Food Products

Date of Order: 25 February 2005

Case Number: Civil Appeal No. 1407 of 2005 (Arising out of SLP (C) No. 14862 of 2004)

Citation: (2005) 3 Supreme Court Cases 63

Name of Court: Supreme Court of India

Name of Hon'ble Judges: Justice B.P. Singh and Justice P.K. Balasubramanyan

Disclaimer: Readers are advised not to treat this as a 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 SEO Titles

Malikchand vs Manikchand: Supreme Court on Passing Off, Assigned Unregistered Trademarks and Interim Injunctions
Can an Assignee Claim Prior Use of an Unregistered Trademark? Supreme Court Answers in Dhariwal Industries v. M.S.S. Food Products
Passing Off Action for Unregistered Trademark: Dhariwal Industries v. M.S.S. Food Products (2005) 3 SCC 63 Explained
Tacking Prior Use in Trademark Assignment: What Dhariwal Industries v. M.S.S. Food Products Means for IP Law in India
Interim Injunction in Trademark Passing Off Cases: Supreme Court's Guidance in Dhariwal Industries v. MSS Food Products 2005
Unregistered Trademark Assignment and Passing Off: A Plain Language Analysis of the 2005 Supreme Court Ruling
Delay and Laches in Trademark Injunction Cases: Lessons from Dhariwal Industries Ltd. v. M.S.S. Food Products

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Headnote

SC-Dhariwal Industries Ltd. and Another Vs. M.S.S. Food Products — Supreme Court of India — Civil Appeal No. 1407 of 2005 — Decided on 25 February 2005 — (2005) 3 SCC 63

Held: In a passing off action concerning an unregistered trademark, the plaintiff is entitled to maintain the action and claim interim injunction by demonstrating prima facie prior user of the mark, even in the absence of registration, in view of Section 27 of the Trade Marks Act, 1999, which expressly preserves the common law passing off remedy. Under Section 39 of the Trade Marks Act, 1999, an unregistered trademark may be assigned with or without the goodwill of the business, and an assignee of such an unregistered mark is entitled to tack on the prior use of its assignor to establish priority of use for the purpose of a passing off action. The genuineness and authenticity of assignment documents relied on to establish prior user cannot be conclusively determined at the interlocutory stage; such questions are to be decided only at trial. The Supreme Court, exercising jurisdiction under Article 136 of the Constitution in an interlocutory matter, confines its consideration to materials that were before the trial court and the appellate court and does not enter into adjudication based on fresh documents produced for the first time before it, particularly when their authenticity is disputed. Where both the trial court and the first appellate court have, on a consideration of the relevant materials, granted and confirmed an interim injunction in favour of the plaintiff in a passing off action, and those courts have prima facie accepted the case of prior user, the Supreme Court will not interfere with such orders unless they can be characterized as perverse or unreasonable. Argument of delay and laches, while relevant to balance of convenience, does not automatically defeat a claim for interim injunction, particularly where the delay was provoked by the opposing party's own litigation and the argument was not clearly raised before the courts below. Appeal dismissed.

Friday, June 5, 2026

Robert A. Merry and Co. Ltd. Vs. Piccadily Agro Industries Ltd.

Case Title: Robert A. Merry and Co. Ltd. Vs. Piccadily Agro Industries Ltd.

Case Number: CS(COMM) 1164/2025

Date of Judgment: 29 May 2026

Neutral Citation: 2026:DHC:4852

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Jyoti Singh

In a trademark dispute concerning the mark “WHISTLER” for whisky products, the Delhi High Court decided rival interim injunction applications filed by Irish whisky manufacturer Robert A. Merry and Co. Ltd. and Indian liquor company Piccadily Agro Industries Ltd. The foreign company alleged passing off by Piccadily’s use of the mark “WHISTLER”, while Piccadily sought to restrain the foreign company from selling whisky in India under the marks “WHISTLER” and “THE WHISTLER”.

The court held that although the foreign company had international registrations and reputation, it failed to establish sufficient spillover of transborder goodwill and reputation in India prior to Piccadily’s adoption and use of the mark. The Court applied the territoriality principle laid down in Toyota Prius and found that global reputation alone was insufficient for a passing-off claim in India. The Court also noted that Piccadily was the registered proprietor of the mark “WHISTLER” in India and had been commercially selling whisky under the mark since 2018.

The Court dismissed the foreign company’s application for interim injunction and allowed Piccadily’s application, restraining Robert A. Merry and Co. Ltd. and its associates from selling whisky in India under the marks “WHISTLER”, “THE WHISTLER” or any deceptively similar mark during the pendency of the suit.

[Disclaimer: Readers are advised not treat this as a substitute for legal advise as it may contain errors in perception,interpretation and presentation of facts and law.]

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The Whistler Whiskey War: When Global Fame Meets Indian Trademark Law

Trans-Boarder Reputation and Principle of Territoriality

Introduction

In a world increasingly connected by trade, travel, and digital media, a foreign brand may become well known in a country even before it physically arrives there. But does that familiarity alone give the foreign brand legal protection against a domestic rival who has been selling under the same name for years? This is precisely the question that came before the High Court of Delhi in a landmark trademark dispute between an Irish whiskey maker and an Indian distillery, both claiming rights over the name "WHISTLER" for their respective whiskey products. The judgment, delivered on 29th May 2026, offers a rigorous and illuminating analysis of the law of passing off, trademark infringement, and the doctrine of trans border reputation and Territoriality of Goodwill as it applies in India. It is a judgment that every brand owner, domestic or foreign, seeking to enter or protect a position in the Indian market must carefully study.

Factual and Procedural Background

Robert A. Merry and Co. Ltd. is a Private Limited Company incorporated under Irish Company Law. It has been engaged in the manufacture, production, and trading of Irish whiskey, gin, and other alcohol-based drinks for more than two decades and describes itself as an industry leader. The company claims that the trademark WHISTLER was first registered on 12th May 2005 in the United Kingdom and was later assigned to its sister concern, Boann Distillery Limited, in 2015, before being transferred to the company itself in 2017. The mark THE WHISTLER was adopted in 2016 and the company obtained registrations for one or both marks in several countries including the Russian Federation, Chile, Japan, South Korea, Taiwan, Mexico, Brazil, and Nigeria. However, and this is a fact of central importance in the entire dispute, the company does not hold any trademark registration in India for either of the two marks WHISTLER or THE WHISTLER.

The company claims an impressive global market presence spanning Asian countries including China, India, and Japan, European countries, North and South America, the United Kingdom, and parts of Africa. It registered several domain names incorporating the words WHISTLER and THE WHISTLER. It also claims substantial global revenues from as early as 2011-12 reaching over Rs. 224 crore in 2023-24. The company won several awards including the World's Best Honey at the World Liqueur Awards in 2020 and the World's Best Grain at a prestigious whiskey event in 2022. A number of established Indian liquor distributors including Radico Khaitan, Oberoi Spirits, and Globus Spirits reportedly approached the company between 2014 and 2025 to market and sell its products in India.

Piccadily Agro Industries Ltd. is a listed Public Limited Company incorporated in 1994 and is described as India's premier independent producer and distributor of malt spirits. Its portfolio includes single malt whiskey, blended malt whiskies, rum, vodka, and other products. The company is also the maker of the celebrated Indian single malt brand INDRI, which became the first single malt brand in the world to cross sales of one lakh cases in 2023-24 and commands 35 percent of export market share from India in its category with presence in 27 countries. In 2007, Piccadily conceived the trademark WHISTLER and in April 2008 filed an application for registration. The company says the brand draws inspiration from the Whistler Warbler, a vibrant song bird indigenous to the Indian sub-continent known for its rich and melodic whistling songs. The mark was registered and the company spent nearly a decade developing the product before commercially launching the whiskey under the WHISTLER brand in 2018. The whiskey became a success upon launch and was relaunched in 2025 with a varied blend and new packaging. The product received excise approvals in more than 15 states including Delhi, Uttar Pradesh, Goa, and Rajasthan and is priced in the range of Rs. 980 to Rs. 1500 for a 750 ml pack.

In August 2025, Piccadily learned that the Irish company was attempting to market and sell its whiskey under the WHISTLER mark in India through M/s HS Oberoi Spirits. It issued objection letters to various state excise departments in September 2025 and sent a legal notice. The Irish company replied asserting its ownership of the mark globally and on the very same day, 27th October 2025, filed CS (COMM) 1164/2025 before the High Court of Delhi seeking a permanent injunction restraining Piccadily from selling its IMFL whiskey under the mark WHISTLER, alleging passing off. Piccadily in turn filed CS (COMM) 9/2026 seeking a permanent injunction against the Irish company for infringement of its registered trademark WHISTLER in India. Both parties also filed applications for ad interim injunctions. The court took up both applications together and disposed them by a single judgment.

The Dispute

The dispute in its simplest form is this. Two companies are using or seeking to use the trademark WHISTLER for whiskey in India. The Irish company registered the mark internationally first, in 2005, but has no Indian registration and has only recently attempted physical entry into the Indian market. The Indian company registered the mark in India in 2008, launched the product commercially in 2018, has been selling it successfully ever since, and possesses extensive documentary evidence of Indian sales, promotions, and recognition.

The Irish company sued for passing off, arguing that its global reputation and goodwill in the WHISTLER brand had spilled over into India, and that the Indian company was misrepresenting its product as originating from or being associated with the Irish company, thereby causing damage to its reputation and goodwill. The Irish company also resisted the infringement claim made by the Indian company, arguing that the products cater to entirely different consumer segments, that the Irish whiskey retails at Rs. 2800 to Rs. 11,000 per bottle while the Indian product retails at an average of Rs. 780 per bottle, that discerning whiskey consumers would never confuse the two, and that the Irish whiskey is an EU Geographical Indication protected product clearly labelled as Irish whiskey.

The Indian company on its part claimed infringement of its registered trademark WHISTLER by the Irish company and also claimed passing off. It argued that it has an unchallenged Indian registration from 2008, that it was first in the Indian market in 2018, that the Irish company had no presence or reputation in India when the Indian product was launched, and that the near-identical marks used for the same product category namely whiskey would inevitably cause confusion among consumers.

Reasoning and Analysis of the Court

The court began by addressing the legal framework applicable to both sets of claims, providing a thorough and scholarly analysis of the governing principles.

On the question of passing off, the court noted that in the absence of any trademark registration in India, the Irish company could only assert common law rights by establishing the three classic ingredients of a passing off action as described by Lord Oliver in Reckitt and Colman Products Ltd. v. Borden Inc and Ors, MANU/UKHL/0012/1990, namely goodwill, misrepresentation, and damage to goodwill. The Supreme Court of India had endorsed this classical trinity in Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65. Registration merely recognises rights pre-existing in common law and does not create new rights.

The critical question, however, was whether the Irish company could establish goodwill in India sufficient to sustain a passing off claim. This brought the court to the most important legal issue in the case, namely the territoriality principle versus the universality doctrine in trademark law.

The court reviewed the evolution of this legal position through a series of landmark Supreme Court decisions. In N.R. Dongre and Others v. Whirlpool Corporation and Another, (1996) 5 SCC 714, the Supreme Court had upheld an injunction against an Indian company using the mark WHIRLPOOL, holding that the American corporation had the necessary transborder reputation which had spilled into India through its advertising and worldwide reputation. In 2004, in Milmet Oftho Industries and Others v. Allergan Inc., (2004) 12 SCC 624, the Supreme Court applied the first-in-the-world-market test, holding that a mark first used in the world market is entitled to protection in India against a subsequent adopter, though this reasoning was applied specifically in the context of pharmaceutical products given their inherently international character where doctors and medical professionals regularly access global literature.

The decisive shift came with the Supreme Court's judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited and Others, (2018) 2 SCC 1. In this case, the Supreme Court authoritatively moved away from the universality doctrine and firmly endorsed the territoriality principle. It held that the existence of goodwill and reputation must be shown to exist in India specifically, and that global goodwill and reputation without evidence of territorial goodwill and reputation in India will not be sufficient to succeed in a claim of passing off. The court in Toyota Jidosha reviewed the view of the UK Supreme Court in Starbucks (HK) Ltd. v. British Sky Broadcasting Group, (2015) 1 WLR 2628, which had held that mere reputation is not enough and that a claimant must show significant goodwill in the form of customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. The yardstick under Toyota Jidosha for passing off became prior use in India. The Supreme Court further held that once goodwill is established in the jurisdiction, the claimant is not required to prove actual confusion and that likelihood of confusion would be a sufficient test.

The court also reviewed the Delhi High Court's own judgment in BPI Sports LLC v. Saurabh Gulati and Another, (2023) 3 HCC (Del) 164, which drew out the following principles from Toyota Jidosha: that the territoriality principle applies and not the universality doctrine; that mere reputation is not enough; that the claimant must have customers within India rather than merely people in India who are customers of the brand abroad; that the claimant must be present through its mark in the territorial jurisdiction even if a real market is not necessary; and that such presence may be shown by extensive advertisements circulated and seen in India.

The Division Bench's decision in VIP Industries Limited v. Carlton Shoes Limited and Another, 2025 SCC OnLine Del 4620, was also discussed at length. In that case the Division Bench reaffirmed that global goodwill and reputation alone is insufficient for passing off and that existence of goodwill and reputation must be demonstrated in India. The court in that case had granted injunction to Carlton against VIP after finding that Carlton had priority of user in India supported by sale invoices, revenue certificates, articles in high-profile Indian magazines, VAT registrations, and presence across multiple retail outlets in India, none of which VIP could match for the relevant period.

The Division Bench's very recent decision in Sumit Vijay and Another v. Major League Baseball Properties Inc. and Another, 2026 SCC OnLine Del 2, was also relied upon by the court. In that case the Division Bench reversed an order striking a mark from the Register, holding that acquisition of global goodwill and reputation is entirely irrelevant unless the global goodwill has percolated into India. It was held that the mere accessibility of a mark on websites in India is no evidence of transborder goodwill, that availability of goods bearing the mark online without actual purchases from India is not sufficient, and that publication of marks in magazines globally available on the internet cannot by itself establish transborder reputation without positive evidence of readership or subscription in India.

Applying all these principles to the facts before it, the court conducted a detailed document-by-document analysis of what the Irish company had filed to support its transborder reputation claim.

The trademark registrations in other countries were found to be entirely irrelevant since they did not confer any protection in India. Two of the three domain names of the Irish company were not even accessible in India. Even if they were, the Irish company had failed to show how many times and by whom in India those websites had been accessed. The financial statements filed did not pertain specifically to the WHISTLER product and showed no Indian sales. The sales invoices pertained to other countries except for one invoice showing a sale to M/s HS Oberoi Spirits in India, but this was a pro forma invoice dated 2nd May 2025, years after the Indian company had launched its product in 2018. Social media screenshots showed no engagement counts, viewership statistics, or liked post statistics specific to India. The copies of journals in which the Irish company's products were mentioned were all post-2021, and most pertained to foreign markets. The awards won had no connection to any activity or transaction in India. The emails relied upon mostly did not even mention the WHISTLER mark, and those that did were post-2021 and discussed only the prospect of the Irish company entering India rather than an established presence. The lone email mentioning WHISTLER in 2017 showed at best some confidential correspondence with a third party and could not establish spillover reputation. An article dated 27th October 2025 was created on the very day the Irish company filed its suit and was therefore self-serving. Excise approvals for Delhi and Maharashtra for the Irish company's whiskey were granted only in January 2026 and the Indian Customs Department documents for import of the Irish whiskey pertained to 2025, all of which actually undermined the claim that the Irish company's reputation had reached India before 2018.

The court therefore found that the Irish company had prima facie failed to demonstrate spillover of transborder reputation and goodwill in India prior to the Indian company's commercial launch of Whistler whiskey in 2018. The court noted that it is not enough to show that people in India were customers of the Irish company when they travelled abroad, but what is required is to demonstrate the presence of the mark within Indian boundaries.

The court also rejected the argument that the advertising ban on liquor in India should excuse the Irish company from producing evidence of spillover reputation. While acknowledging that liquor is a regulated industry where direct advertisement is restricted, the court pointed out that several brands have successfully established reputation in India through other means such as events, sponsorships, actual sales, and trade channels. None of the documents established spillover reputation prior to 2018.

The court found further that the Irish company had not applied for trademark registration in India even for its THE WHISTLER mark, and that its actual physical products had not entered the Indian market before 2025. This itself was described as self-destructive of the claim of goodwill and reputation preceding the Indian company's 2018 launch.

Having dismissed the Irish company's passing off claim, the court turned to the Indian company's infringement claim. Here the legal position was clearer. The Indian company held an unchallenged registration in the mark WHISTLER in India in Class 33 from 3rd April 2008. The Irish company had no Indian registration. Under Section 28 of the Trade Marks Act, 1999, the registered proprietor has the exclusive right to use the mark in relation to the goods for which it is registered. Under Section 29(2)(b), a registered trademark is infringed when a person, not being a registered proprietor or permitted user, uses in the course of trade a mark which because of its similarity to the registered mark and identity or similarity of goods covered by such trademark is likely to cause confusion. Under Section 29(2)(c) read with Section 29(3), when the marks are identical and the goods are identical, confusion is presumed.

The court found that the marks THE WHISTLER and WHISTLER are structurally, visually, and phonetically nearly identical or deceptively similar. The rival products are both whiskey. The court referred to the Supreme Court's decision in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others, (2022) 5 SCC 1, where the addition of the word SAI to RENAISSANCE did not save the mark and the court found the marks RENAISSANCE and SAI RENAISSANCE to be so similar as to attract Section 29(2)(c) read with 29(3). Applying the same principle, adding or removing the word THE did not create any meaningful distinction between WHISTLER and THE WHISTLER.

The court also rejected the Irish company's defence of no confusion owing to price difference and discerning consumers. This defence was found to be self-contradictory because the Irish company itself had built its passing off claim on inevitable confusion arising from the similarity of marks and products. A party cannot approbate and reprobate, that is, a party cannot take inconsistent positions at the same time to suit its own convenience. Furthermore, in the liquor industry where advertising is strictly prohibited, the brand name becomes the singular element of consumer recall and purchase decisions at liquor counters are often made orally. Under these circumstances, even discerning consumers are likely to be confused when the marks are near identical.

The court specifically addressed the argument about the different types of whiskey, noting that the Irish company had itself pleaded that rival marks and products being similar would cause confusion, and could not then turn around in the infringement case and argue that the products are so different that no confusion is possible. On the infringement claim, the only available defences for the Irish company were registration in India, prior use in India under Section 34 of the Trade Marks Act 1999, or spillover of transborder reputation. The Irish company had failed on all three counts.

On balance of convenience, the court found that the Indian company had been commercially selling its Whistler whiskey since 2018, had built substantial goodwill and reputation in India, and would suffer irreparable harm if the Irish company were allowed to enter the Indian market under an identical or near-identical mark. The request of the Irish company for interim relief permitting it to sell its existing stock was also refused, because on the date the Irish company filed its suit in December 2025, it did not yet possess the requisite excise approvals to sell the goods in India, which were granted only in January 2026. This was a calculated risk taken by the Irish company and no equity could be claimed on account of it.

Final Decision of the Court

The court allowed IA 414/2026 filed by the Indian company and granted an ad interim injunction restraining the Irish company and all those acting on its behalf from selling Irish whiskey in India under the marks THE WHISTLER and/or WHISTLER and/or any other mark deceptively similar to the Indian company's registered mark WHISTLER during the pendency of the suit.IA 26995/2025 filed by the Irish company was dismissed as it had failed to make out a prima facie case of passing off.

Point of Law Settled

The judgment makes a significant contribution to Indian trademark law by firmly applying and extending the territoriality principle laid down in Toyota Jidosha to the alcohol and liquor industry, rejecting any industry-specific exception. The court settled that in a passing off action by a foreign brand in India, global goodwill and reputation without actual percolation into India is insufficient. The foreign brand must demonstrate that its mark was present within Indian territorial jurisdiction through sales, advertisements, events, trade channels, or other means that would have made the mark known to the relevant consuming public in India before the domestic user began occupying the space. The mere accessibility of websites, availability of goods online without proof of actual Indian purchases, publication in internationally circulated magazines without proof of Indian readership, and foreign trade awards without Indian connection do not amount to spillover of transborder reputation into India. Furthermore, the court settled that in a claim for trademark infringement by a registered proprietor under Section 29(2)(c) read with 29(3) of the Trade Marks Act, 1999, where marks are identical and goods are identical, confusion is presumed, and price difference or product quality distinction does not constitute a defence, particularly in the alcohol industry where advertising is prohibited and oral articulation of brand names plays a decisive role in consumer purchases. It was also clarified that a party alleging confusion in its own passing off suit cannot simultaneously deny confusion in defending an infringement claim by the opposite party, as such inconsistency amounts to approbating and reprobating.

Case Details

Title: Robert A. Merry and Co. Ltd. v. Piccadily Agro Industries Ltd. and connected matter

Date of Order: 29th May 2026

Case Numbers: CS(COMM) 1164/2025 and CS(COMM) 9/2026

Neutral Citation: 2026:DHC:4852

Name of Court: High Court of Delhi at New Delhi

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

Disclaimer: Readers are advised not to treat this as a 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

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Brief Headnote:

The Irish whiskey manufacturer Robert A. Merry and Co. Ltd., owner of the WHISTLER and THE WHISTLER marks internationally since 2005 and 2016 respectively but without any Indian trademark registration, filed suit for passing off against Indian company Piccadily Agro Industries Ltd., which held a registered trademark in WHISTLER in India from 2008 and had commercially launched the whiskey product in 2018. Piccadily in turn sued for infringement of its registered Indian trademark. The High Court of Delhi, on competing applications for ad interim injunction, dismissed the Irish company's passing off application holding that it had failed to establish prima facie spillover of transborder reputation and goodwill in India prior to the Indian company's 2018 launch, applying the territoriality principle authoritatively laid down in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited, (2018) 2 SCC 1. The court allowed the Indian company's infringement application restraining the Irish company from selling its whiskey under THE WHISTLER and WHISTLER marks in India, holding that the marks were nearly identical and the goods identical, attracting presumption of confusion under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999, and that the Irish company's price-difference and discerning consumer defence was inconsistent with its own passing off claim and therefore untenable.

Monday, June 8, 2026