Shree Rajmoti Industries Vs Rajmoti Foods Products

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

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

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

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

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

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

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

#TrademarkLaw, #TrademarkInfringement, #DelhiHighCourt, #RajmotiCase, #TradeMarksAct1999, #QuiaTimetAction, #PriorUserRights, #PassingOff, #TrademarkApplication, #IPRIndia, #IntellectualPropertyLaw, #TrademarkDispute, #PrathibaMSingh, #TrademarkLitigation, #IPLawUpdate, #CommercialCourts, #BrandProtection, #LegalNewsIndia, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor

=====

Suggested Google SEO Titles

Delhi High Court on Trademark Infringement Through Mere Filing of Trademark Application: Analysis of M/S Shree Rajmoti Industries v. M/S Rajmoti Foods Products

 Detailed Analysis of 2019:DHC:834

Quia Timet Action in Trademark Law Explained: Delhi High Court Judgment in Rajmoti Case

Trademark Application as Evidence of Use under Trade Marks Act, 1999: Delhi High Court Analytical Article

Permanent Injunction in Trademark Infringement Without Proof of Actual Sales: Case Analysis of Rajmoti Judgment

Delhi High Court Protects Prior User Rights in RAJMOTI Trademark Dispute

Section 29 and Section 18 of Trade Marks Act Interpreted by Delhi High Court in Rajmoti Trademark Case

Trademark Filing Itself Can Constitute Threat of Infringement: Important Delhi High Court Ruling

Prior User vs Proposed User in Trademark Law: Detailed Study of Rajmoti Foods Judgment

Ex Parte Trademark Injunction and Quia Timet Relief under Trade Marks Act: Delhi High Court Analysis

---

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

Introduction:

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

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

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

Factual and Procedural Background:

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

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

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

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

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

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

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

Dispute Before the Court:

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

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

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

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

Reasoning and Analysis of the Court:

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

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

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

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

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

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

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

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

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

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

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

Final Decision of the Court:

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

Point of Law Settled in the Case:

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

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

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

Case Detail Title: Shree Rajmoti Industries Vs Rajmoti Foods Products

Date of Order: 7 February 2019

Case Number: CS (COMM) 335/2018 

Neutral Citation: 2019:DHC:834

Name of Court: High Court of Delhi

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

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

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

Google SEO Suitable Tags

Trademark infringement, RAJMOTI trademark case, Delhi High Court trademark judgment, quia timet action, trademark application infringement, Section 29 Trade Marks Act, Section 18 Trade Marks Act, passing off action India, prior user trademark rights, permanent injunction trademark, trademark litigation India, trademark infringement Delhi High Court, Prathiba M Singh judgment, intellectual property law India, trademark registration dispute, trademark application as use, trade name infringement, commercial court trademark dispute, trademark protection India, IP law article, trademark jurisprudence India, AdvocateAjayAmitabhSuman, IPAdjutor,

Headnote

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

=====

Vodafone Idea Limited Vs. The Indian Performing Right Society Limited

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

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

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

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

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

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

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

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

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

=====

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

Alternative SEO Suitable Titles

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

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

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

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

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

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

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

Authors’ Rights in Musical and Literary Works 

Introduction:

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

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

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

Factual and Procedural Background:

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

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

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

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

Dispute Before the Court:

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

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

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

Reasoning and Analysis of the Court:

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

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

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

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

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

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

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

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

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

Final Decision of the Court:

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

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

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

Point of Law Settled by the Judgment:

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

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

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

Date of Judgment: May 8, 2026

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

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

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

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

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

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

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

Headnote

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

=====

GGR Housing India Private Limited & Ors. Vs Navaratna Estates

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

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

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

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

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

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

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

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

#AndhraPradeshHighCourt, #CommercialCourtsAct, #CivilRevisionPetition, #SpecificPerformance, #OrderXICPC, #CommercialLitigation, #ProceduralLaw, #EvidenceLaw, #OralAgreement, #RealEstateDispute, #JusticeRaviNathTilhari, #JusticeBalajiMedamalli, #CommercialSuit, #CPCAmendment, #LegalNewsIndia, #IndianJudiciary, #LitigationUpdate, #CourtJudgment, #CivilProcedureCode, #AndhraPradeshCases, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor

====

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

Introduction:

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

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

Factual and Procedural Background:

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

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

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

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

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

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

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

Dispute Before the High Court:

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

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

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

Reasoning and Analysis of the Court:

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

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

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

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

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

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

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

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

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

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

Final Decision of the Court:

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

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

Point of Law Settled in the Case:

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

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

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

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

Date of Judgment: 07.05.2026

Case Number: Civil Revision Petition No. 578 of 2026

Court: High Court of Andhra Pradesh

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

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

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

Suggested SEO Friendly Titles

Andhra Pradesh High Court Clarifies Scope of Additional Documents in Commercial Suits Under Order XI CPC

Commercial Courts Act Explained: Andhra Pradesh High Court on Filing Additional Documents After Institution of Suit

Public Documents and Commercial Litigation: Key Andhra Pradesh High Court Judgment on Order XI Rule 1 CPC

Can Additional Documents Be Filed Later in Commercial Suits? Andhra Pradesh High Court Answers

Procedural Law Is Handmaid of Justice: Important Andhra Pradesh High Court Ruling in Commercial Dispute

Order XI Rule 1 CPC Interpretation by Andhra Pradesh High Court in Commercial Suit

High Court Allows Additional Documents in Commercial Suit Despite Delay in Filing

Andhra Pradesh High Court on Disclosure Obligations Under Commercial Courts Act, 2015

Important Commercial Litigation Judgment on Additional Evidence and Public Documents

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

SEO Suitable Tags

Andhra Pradesh High Court, Commercial Courts Act 2015, Order XI Rule 1 CPC, Commercial Litigation India, Specific Performance Suit, Additional Documents in Commercial Suit, Procedural Law India, Civil Revision Petition, Commercial Court Procedure, Public Documents Evidence Law, Certified Copy Evidence, Sudhir Kumar v Vinay Kumar GB, Bennett Coleman Case, C Star Engineers Case, Indian Civil Procedure Code, Article 227 Constitution of India, Evidence Act Section 65, Real Estate Commercial Dispute, Procedural Justice, Commercial Suit Procedure, High Court Judgment Analysis, Legal News India, Commercial Dispute Judgment, Andhra Pradesh Case Law, Procedural Law Handmaid of Justice, AdvocateAjayAmitabhSuman, IPAdjutor,

Headnote

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

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

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

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

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

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

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

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

#BombayHighCourt, #AhmedPerfumes, #TrademarkPassingOff, #TransborderReputation, #CopyrightInfringement, #PerfumeTrademarkDispute, #JusticeSharmilaDeshmukh, #PriusCase, #WhirlpoolCase, #TrademarkLawIndia, #IntellectualPropertyLaw, #PassingOffAction, #CommercialIPSuit, #ForeignTrademarkProtection, #ArtisticWorkCopyright, #TrademarkLitigation, #IPRIndia, #CrossBorderGoodwill, #BrandProtection, #LegalNewsIndia, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor

=====

Suggested SEO Titles

Bombay High Court on Transborder Reputation in Trademark Passing Off Case

Ahmed Perfumes LLC v Mohammed Faisal Rehman Sultan Ahmed: Detailed Analysis of Passing Off and Copyright Protection

Can Foreign Trademark Owners Claim Passing Off in India Without Indian Customers? Bombay High Court Explains

Bombay High Court Clarifies Law on Transborder Reputation and Goodwill in India

Detailed Case Analysis of Ahmed Perfumes LLC Trademark and Copyright Dispute

Passing Off Action by Foreign Trademark Owners: Bombay High Court Explains Territoriality Principle

Bombay High Court Refuses Passing Off Relief but Grants Copyright Injunction in Perfume Brand Dispute

Transborder Reputation under Indian Trademark Law: Analysis of Ahmed Perfumes Judgment

Foreign Brands and Indian Trademark Protection: Important Bombay High Court Decision

Trademark Passing Off and Copyright in Artistic Labels: Bombay High Court Judgment Explained

Detailed Analytical Article

Transborder Reputation under Indian Trademark Law

Introduction:

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

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

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

Factual and Procedural Background:

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

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

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

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

Dispute Before the Court:

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

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

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

Reasoning and Analysis of the Judge:

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

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

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

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

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

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

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

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

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

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

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

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

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

Final Decision of the Court:

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

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

Point of Law Settled in the Case:

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

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

Date of Judgment: 7 May 2026

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

Neutral Citation: 2026:BHC-OS:11828

Court: High Court of Judicature at Bombay

Hon’ble Judge: Justice Sharmila U. Deshmukh

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

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

Suggested SEO Tags

Bombay High Court, Ahmed Perfumes LLC, Transborder Reputation, Passing Off Action, Trademark Law India, Copyright Infringement, Artistic Work Protection, Foreign Trademark Owners, Toyota Prius Case, Whirlpool Case, Trademark Passing Off India, Territoriality Principle, Global Reputation Trademark, Perfume Brand Dispute, Intellectual Property Litigation, Commercial IP Suit, UAE Trademark Dispute, Copyright in Labels, Indian Trademark Law, Spillover Reputation, Social Media and Trademark Law, Online Reputation Cases, Brand Protection India, Trademark and Copyright Overlap, Justice Sharmila Deshmukh, AdvocateAjayAmitabhSuman, IPAdjutor,

Headnote

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

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

Ars Steels and Alloy International Private Limited Vs. The Controller of Patents and Designs:07.05.2026:IPDAID/43/2024:2026:CHC-OS:160:CalHC:Hon'ble Justice Ravi Krishan Kapur:

Calcutta High Court set aside an order of the Deputy Controller of Patents and Designs which had refused cancellation of a registered design relating to a “double XX-Rib” construction rod design in favour of Souvik Steels Private Limited.

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

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

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

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

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

#ArsSteels, #CalcuttaHighCourt, #DesignsAct2000, #PatentAndDesigns, #IPRDivision, #DesignCancellation, #TMTBarsDesign, #IndustrialDesignLaw, #PriorPublication, #NoveltyInDesign, #OriginalityTest, #ConstructionRodDesign, #JusticeRaviKrishanKapur, #IntellectualPropertyLaw, #DesignInfringement, #IndianIPLaw, #RegisteredDesign, #IPLitigation, #LegalNewsIndia, #DesignRegistration, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor

=====

Suggested SEO Titles

Calcutta High Court on Design Cancellation and Prior Publication in TMT Bar Design Case

Ars Steels v Controller of Patents and Designs: Calcutta High Court Clarifies Novelty Test Under Designs Act

Prior Publication and Originality in Industrial Designs Explained by Calcutta High Court

Calcutta High Court Sets Aside Controller’s Order in XX-Rib TMT Bar Design Dispute

Important Design Law Judgment on Novelty and Prior Use under Designs Act, 2000

Industrial Design Protection in India: Analysis of Ars Steels Judgment

Whether X-Rib and XX-Rib TMT Bar Designs Are New and Original: Calcutta High Court Analysis

Detailed Case Analysis of Ars Steels and Alloy International Pvt Ltd v Controller of Patents and Designs

Judicial Review of Design Registration under the Designs Act: Calcutta High Court Decision

Scope of Prior Publication and Originality in Registered Designs under Indian Law

Novelty and originality of Design cannot be assessed merely through superficial visual comparison

Introduction:

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

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

Factual and Procedural Background:

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

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

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

Dispute Before the Court:

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

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

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

Reasoning and Analysis of the Court:

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

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

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

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

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

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

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

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

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

Final Decision of the Court:

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

Point of Law Settled in the Case:

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

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

Date of Judgment: 7 May 2026

Case Number: IPDAID/43/2024

Neutral Citation: 2026:CHC-OS:160

Court: High Court at Calcutta, Intellectual Property Rights Division

Hon’ble Judge: Justice Ravi Krishan Kapur

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

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

Suggested SEO Tags

Designs Act 2000, Calcutta High Court, Industrial Design Law, Prior Publication, Novelty in Design Law, Originality Test, Registered Design Cancellation, TMT Bar Design Case, XX Rib Design, X Rib Design, Design Infringement India, Intellectual Property Rights Division, Design Registration India, Construction Rod Design, Patent and Designs Office, Justice Ravi Krishan Kapur, Design Law Judgment, Industrial Design Protection, IP Litigation India, Design Cancellation Proceedings, Prior Use in Design Law, Functional Design, Eye Appeal Test, Trade Variant Design, Controller of Patents and Designs, Indian IP Law, AdvocateAjayAmitabhSuman, IPAdjutor,

Headnote

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

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

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

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

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

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

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

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

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

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

#Toyota, #ToyotaAlphard, #ToyotaTrademarkCase, #ALPHARDTrademark, #DelhiHighCourt, #TrademarkLaw, #TransBorderReputation, #WellKnownTrademark, #TrademarkRectification, #TradeMarksAct1999, #Section57Trademark, #LuxuryAutomobileTrademark, #IPLawIndia, #TrademarkDispute, #ToyotaVsTechSquare, #TrademarkInfringement, #PassingOff, #BrandProtection, #IndianTrademarkLaw, #IPLitigation, #TrademarkNews, #LegalNewsIndia, #HighCourtJudgment, #CrossBorderReputation, #WellKnownMarks, #AutomobileTrademark, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor,

=====

Introduction:

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

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

Factual and Procedural Background:

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

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

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

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

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

Nature of the Dispute

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

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

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

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

Reasoning and Analysis of the Court:

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

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

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

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

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

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

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

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

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

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

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

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

Final Decision of the Court

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

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

Point of Law Settled in the Case

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

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

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

Date of Judgment: 04.05.2026

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

Neutral Citation: 2026:DHC:3762-DB

Court: High Court of Delhi

Coram: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla

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

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

Suggested SEO Titles

Toyota Wins ALPHARD Trademark Battle Before Delhi High Court

Delhi High Court Strengthens Protection of Trans-Border Trademark Reputation in Toyota ALPHARD Case

Toyota ALPHARD Trademark Judgment Explained: Delhi High Court on Well-Known Marks

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

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

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

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

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

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

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

Suggested SEO Tags

Toyota ALPHARD trademark case, Toyota trademark dispute India, Delhi High Court trademark judgment, trans-border reputation India, well-known trademark India, trademark rectification case, Section 57 Trade Marks Act, Section 11 Trade Marks Act, spill-over reputation India, foreign trademark protection India, Toyota vs Tech Square, ALPHARD trademark dispute, trademark litigation India, luxury automobile trademark case, Delhi High Court IP judgment, trademark infringement India, trademark law update India, IP law India, well-known mark protection, Prius judgment analysis, cross-border reputation trademark, Indian trademark jurisprudence, Toyota India trademark case, intellectual property litigation, AdvocateAjayAmitabhSuman, IPAdjutor

Headnote

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

=====