Monday, June 22, 2026

Novamax Industries Vs. Prem Appliances

Brief Legal News Write-Up

Novamax Industries LLP Vs. Prem Appliances & Anr.
Date of Judgment: 19.06.2026 : Case No.: CS(COMM) 177/2021 : Neutral Citation: 2026:DHC:5149 : Court: High Court of Delhi : Hon'ble Judge: Justice Tushar Rao Gedela

The Court considered a dispute concerning alleged infringement of a registered design and passing off in relation to air coolers. The case arose from allegations that the defendants were manufacturing and selling air coolers bearing a design that was an identical or fraudulent imitation of the plaintiff’s registered design and were also passing off their goods as those of the plaintiff.

The principal question before the Court was whether the plaintiff’s design infringement claim could survive when evidence on record indicated prior publication of the design before its registration and whether the passing off claim could nevertheless continue independently.

After examining the material on record and the submissions of the parties, Justice Tushar Rao Gedela observed that the plaintiff’s own documents demonstrated publication of the design prior to registration, thereby attracting the grounds for cancellation under Section 19 of the Designs Act, 2000. The Court held that the infringement claim had no real prospect of success because prior publication destroyed the enforceability of the registered design. The Court further emphasized that a passing off action is an independent common law remedy and can survive even if a design infringement claim fails.

Accordingly, the Court partly allowed the application by dismissing the suit insofar as it related to design infringement, while permitting the passing off claim to proceed to trial.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Novamax Industries LLP v. Prem Appliances & Anr.

Introduction

The decision of the Delhi High Court in Novamax Industries LLP v. Prem Appliances & Anr. is an important judgment examining the relationship between design infringement and passing off claims. The case highlights the consequences of prior publication of a registered design and clarifies whether a plaintiff can continue a passing off action even after the design infringement claim becomes unsustainable.

The judgment is significant for manufacturers, designers, intellectual property owners, and businesses engaged in product-based industries. It reinforces the importance of maintaining novelty before seeking design registration while simultaneously recognizing that common law rights relating to goodwill and reputation may survive independently of statutory design protection.

Factual and Procedural Background

The plaintiff instituted a commercial suit alleging infringement of several registered designs relating to air coolers. The plaintiff claimed proprietary rights over various registered designs and asserted that it enjoyed exclusive rights in the shape, configuration, and visual appearance of its products. The plaintiff further alleged that the defendants had copied one of its registered cooler designs and were marketing substantially similar products.

According to the plaint, the defendants were not only using a design identical or deceptively similar to the plaintiff’s registered design but were also employing branding elements that allegedly enabled them to ride upon the goodwill and reputation associated with the plaintiff's products. The plaintiff therefore sought relief for both design infringement and passing off.

The defendants challenged the maintainability of the suit through an application seeking summary judgment under Order XIII-A of the Code of Civil Procedure. They argued that the plaintiff's own documents demonstrated prior publication of the design before registration, rendering the design vulnerable under Section 19 of the Designs Act, 2000. They further contended that the plaint lacked the necessary ingredients to sustain a passing off action.

The Court was therefore required to examine whether either or both claims could survive.

Dispute Before the Court

The principal dispute concerned whether the plaintiff could maintain an action for infringement of a registered design when evidence indicated that the design had been published prior to registration.

A second issue arose regarding the passing off claim. The defendants argued that the plaint failed to plead essential ingredients necessary to constitute a valid cause of action for passing off and therefore deserved dismissal at the threshold.

The plaintiff, on the other hand, contended that the defendants had copied the design and were attempting to misrepresent their products as those of the plaintiff. It was argued that even if issues arose concerning design registration, the passing off claim remained independently maintainable and required adjudication through evidence at trial.

Reasoning and Analysis of the Court

The Court first examined the statutory framework governing cancellation of designs under Section 19 of the Designs Act, 2000. Section 19 permits cancellation of a registered design where it has been published in India or elsewhere prior to registration, where it is not new or original, or where it otherwise fails to satisfy statutory requirements.

Upon examining the record, the Court noted that the plaintiff’s own documents disclosed invoices predating the design application as well as publication of the relevant cooler design on the plaintiff’s website before registration. The Court found that these facts constituted prior publication within the meaning of Section 19. As a result, the Court concluded that the plaintiff's infringement claim had no real prospect of success.

The Court therefore held that the suit insofar as it related to infringement of the registered design could not continue and deserved dismissal under the summary judgment provisions.

The Court then turned to the more significant question regarding passing off. It carefully examined the pleadings and observed that the plaintiff had specifically alleged imitation, deception, diversion of trade, and misappropriation of goodwill. The Court found that these averments were sufficient to constitute a cause of action for passing off at the pleading stage.

While addressing the legal position, the Court extensively relied upon the Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. and the Division Bench decision in Crocs Inc. USA v. Liberty Shoes Ltd.. These decisions recognized that a composite suit combining design infringement and passing off claims is maintainable and that passing off survives independently of statutory design rights.

The Court further referred to Birhan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577, Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980. These authorities were discussed to explain the distinction between infringement actions and passing off actions and the requirement of proving goodwill, misrepresentation, and likelihood of damage in passing off cases.

The Court emphasized that passing off is a valuable common law remedy preserved by Section 27(2) of the Trade Marks Act, 1999 and that its availability cannot be denied merely because the dispute also involves a registered design. Whether the plaintiff ultimately succeeds on passing off would depend upon evidence, but the claim could not be summarily rejected at this stage.

Final Decision of the Court

The Delhi High Court partly allowed the defendants’ application for summary judgment.

The Court dismissed the plaintiff’s claim for design infringement after concluding that prior publication deprived the plaintiff of any realistic prospect of success on that issue. However, the Court rejected the defendants’ challenge to the passing off claim and held that the same required adjudication through evidence during trial. The suit was therefore permitted to continue solely in respect of the passing off cause of action.

Point of Law Settled

The judgment clarifies that prior publication of a design before registration can defeat a design infringement action and may justify dismissal of such a claim at the summary judgment stage. At the same time, the decision reaffirms that passing off is an independent common law remedy based on goodwill, misrepresentation, and likelihood of damage. Even where statutory design rights become unenforceable, a passing off action can continue on the same factual matrix if the pleadings disclose a viable cause of action. The ruling strengthens the distinction between statutory design protection and common law protection of business goodwill.

Case Details

Title of the Case: Novamax Industries LLP v. Prem Appliances & Anr.

Date of Judgment/Order: 19.06.2026

Case Number: CS(COMM) 177/2021

Neutral Citation: 2026:DHC:5149

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tushar Rao Gedela

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

Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

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Delhi High Court Clarifies Difference Between Design Infringement and Passing Off Claims
Prior Publication Defeats Design Infringement Suit: Delhi High Court Ruling Explained
Novamax Industries v Prem Appliances: Landmark Decision on Design Rights and Passing Off
Can a Passing Off Claim Survive Failure of a Design Infringement Action?
Delhi High Court Applies Section 19 of Designs Act in Air Cooler Design Dispute
Prior Publication and Design Registration: Important Delhi High Court Judgment
Composite Design Infringement and Passing Off Suits Explained Through Novamax Case
Passing Off Action Allowed Despite Failure of Design Infringement Claim
Delhi High Court on Summary Judgment in Intellectual Property Litigation
Key Takeaways from Novamax Industries LLP v Prem Appliances & Anr.

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Headnote of the Judgment

Novamax Industries LLP v. Prem Appliances & Anr., High Court of Delhi, CS(COMM) 177/2021, decided on 19.06.2026, Neutral Citation: 2026:DHC:5149. The defendants sought summary dismissal of a suit alleging infringement of a registered air-cooler design and passing off. The Court found that the plaintiff’s own documents established prior publication of the design before registration, thereby attracting Section 19 of the Designs Act, 2000 and defeating the infringement claim. Consequently, the design infringement portion of the suit was dismissed. However, relying on the principles governing passing off and composite intellectual property actions, the Court held that the passing off claim disclosed a triable cause of action and could not be rejected summarily. The application was therefore partly allowed and the suit was permitted to continue solely on the passing off claim.

Infographic Thumbnail Prompt (14:9 Aspect Ratio)

Create a premium 14:9 ultra-realistic 3D legal intellectual property infographic depicting a major industrial design and passing off dispute involving air coolers. At the center, display a large registered design certificate for a modern air cooler being torn into two sections. One side should feature a glowing red stamp reading “PRIOR PUBLICATION” and “DESIGN CLAIM DISMISSED”, symbolizing invalidation of the design infringement claim. The other side should feature a golden shield labeled “PASSING OFF CLAIM SURVIVES” protecting business goodwill and brand reputation. Include highly detailed 3D air coolers with identical shapes and configurations facing each other, digital product catalogs, website publication screenshots, intellectual property files, design registration documents, legal scales, courtroom records, and commercial market imagery. Prominently display text elements: “Design Infringement Rejected”, “Passing Off Continues”, “Section 19 Designs Act”, “Prior Publication”, and “Goodwill & Reputation Protected”. Use cinematic lighting, photorealistic textures, reflective metallic surfaces, premium blue-gold legal theme, dramatic depth of field, high-detail corporate legal aesthetics, and publication-quality composition suitable for a leading legal news platform. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

Laboratoires Griffon Vs. Psychotropics India

Brief Legal News Write-Up

Laboratoires Griffon Pvt. Ltd. & Anr. Vs. Psychotropics India Limited
Date of Judgment: 17.06.2026 : Case No.: Interim Application No. 4006 of 2022 in Commercial IP Suit (L) No. 3999 of 2022 : Neutral Citation: Not Available : Court: High Court of Judicature at Bombay : Hon'ble Judge: Justice Arif S. Doctor

The Court considered a dispute concerning alleged trademark infringement and passing off in relation to pharmaceutical products marketed under the trademarks “GRILINCTUS” and “PIL-LINCTUS”. The case arose from allegations that the defendant adopted and used the mark “PIL-LINCTUS” for medicinal products, which was deceptively similar to the plaintiffs’ long-standing registered trademark “GRILINCTUS”.

The principal question before the Court was whether the defendant’s use of “PIL-LINCTUS” was deceptively similar to the plaintiffs’ registered trademark “GRILINCTUS” and likely to cause confusion in the pharmaceutical market.

After examining the material on record and the submissions of the parties, Justice Arif S. Doctor observed that the rival marks were phonetically, structurally, and visually similar and that a stricter standard must be applied in cases involving medicinal products because confusion may have serious consequences. The Court held that the plaintiffs had established prior registration, long-standing use, goodwill, and a strong prima facie case of infringement and passing off. The Court emphasized that even the possibility of confusion between medicinal products should be avoided.

Accordingly, the Court allowed the interim application and granted interim relief restraining the defendant from using the impugned mark “PIL-LINCTUS” in relation to pharmaceutical products pending disposal of the suit.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited

Introduction

Trademark disputes involving pharmaceutical products occupy a special place in intellectual property law because confusion between medicines can have consequences far beyond commercial loss. The decision in Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited reiterates the judicial approach that greater caution is required when assessing deceptively similar pharmaceutical trademarks.

The judgment is significant because it addresses the interplay between descriptive elements in a trademark, the overall similarity of competing marks, and the heightened public interest considerations applicable to medicinal products. The ruling serves as an important reminder that pharmaceutical companies must exercise greater care while selecting trademarks to ensure that consumers, pharmacists, and medical practitioners are not misled.

Factual and Procedural Background

The plaintiffs are proprietors of the trademark “GRILINCTUS,” which has been registered and used in relation to pharmaceutical products for several decades. The plaintiffs asserted that they had continuously used the trademark since the early 1970s and had built substantial goodwill and reputation in the market. They also relied upon historical invoices, promotional material, sales figures, and evidence of enforcement actions against third parties using similar marks.

The dispute arose when the plaintiffs became aware of the defendant's use of the mark “PIL-LINCTUS” for pharmaceutical products. According to the plaintiffs, the impugned mark was deceptively similar to their registered trademark and was likely to cause confusion among consumers and members of the trade.

The defendant resisted the claim by asserting that “PIL” was derived from its corporate name, Psychotropics India Limited, and that “LINCTUS” was a descriptive term commonly used in the pharmaceutical industry for cough syrup preparations. The defendant further contended that numerous trademark registrations containing the word “LINCTUS” existed and that the plaintiffs could not claim a monopoly over the expression.

An Interim Application seeking injunctive relief was filed by the plaintiffs pending adjudication of the suit.

Dispute Before the Court

The principal issue before the Court was whether the trademark “PIL-LINCTUS” was deceptively similar to the registered trademark “GRILINCTUS”.

The plaintiffs argued that the rival marks were phonetically, visually, and structurally similar and that confusion was likely, particularly because both marks were used in relation to pharmaceutical products. The plaintiffs further contended that the defendant was attempting to come as close as possible to their established trademark.

The defendant argued that “LINCTUS” was descriptive and common to the trade, that the prefixes “GRI” and “PIL” were entirely different, and that the use of a hyphen created sufficient distinction between the marks. The defendant also relied upon alleged delay, acquiescence, and the existence of several third-party registrations incorporating the word “LINCTUS”.

Reasoning and Analysis of the Court

The Court commenced its analysis by reiterating the settled principle that trademarks must be compared as a whole rather than by dissecting them into separate components. The proper test is the overall impression created in the mind of a person of average intelligence and imperfect recollection.

The Court relied upon the principles laid down in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 and Hiralal Parbhudas v. Ganesh Trading Co., emphasizing that deceptive similarity must be assessed from the standpoint of an ordinary consumer rather than through a meticulous side-by-side comparison.

Particular emphasis was placed upon the Supreme Court's landmark decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, wherein the Court observed that confusion between medicinal products may have life-threatening consequences. The judgment quoted the well-known observation that “drugs are poisons, not sweets,” thereby requiring a stricter standard when evaluating pharmaceutical trademarks.

Applying these principles, the Court found that “GRILINCTUS” and “PIL-LINCTUS” were phonetically, structurally, and visually similar. The Court observed that the suffix “LINCTUS” dominated the overall impression of both marks and that the prefixes “GRI” and “PIL” did not sufficiently distinguish them. The mere presence of a hyphen was considered inadequate to eliminate the possibility of confusion.

The Court distinguished F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., where the rival marks were found sufficiently distinguishable because their prefixes created different overall commercial impressions. In contrast, the Court held that the common suffix “LINCTUS” overwhelmingly dominated the competing marks in the present case.

The Court also referred to UltraTech Cement Ltd. v. Alaknanda Cement Pvt. Ltd., accepting the contention that a party seeking registration of a mark cannot simultaneously contend that an essential component of that mark is wholly descriptive and incapable of trademark significance.

On the issue of delay and acquiescence, the Court considered Willmott v. Barber, Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448, and Kamath Hotels (India) Ltd. v. Royal Orchid Hotels Ltd., holding that mere delay does not defeat a claim where a strong case of infringement exists. Acquiescence requires proof of active encouragement or consent, which was absent in the present case.

The Court further relied upon Corn Products Refining Co. v. Shangrila Food Products Ltd. and National Bell Co. v. Metal Goods Manufacturing Co. Pvt. Ltd. while rejecting the defendant’s reliance on third-party registrations. The Court observed that mere production of registry entries is insufficient without proof of actual market use.

Ultimately, the Court concluded that the plaintiffs had established prior registration, continuous use, substantial goodwill, and a strong prima facie case of infringement and passing off. The balance of convenience was found to be in favour of the plaintiffs.

Final Decision of the Court

The Court allowed the Interim Application and granted interim relief in favour of the plaintiffs. It restrained the defendant from using the impugned trademark “PIL-LINCTUS” in relation to pharmaceutical products during the pendency of the suit. No order as to costs was passed. The Court also recorded a statement that the order would not be acted upon for a period of four weeks.

Point of Law Settled

The judgment reinforces that pharmaceutical trademarks are subject to a stricter standard of scrutiny because public health considerations demand avoidance of even a possibility of confusion. It clarifies that a trademark must be assessed as a whole and that descriptive arguments cannot automatically defeat an infringement claim where the overall impression created by the competing marks is deceptively similar. The decision also reiterates that delay alone is not a defence to infringement and that third-party registrations, without proof of actual market use, do not establish that a term has become common to trade.

Case Details:

Title of the Case: Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited

Date of Judgment/Order: 17.06.2026

Case Number: Interim Application No. 4006 of 2022 in Commercial IP Suit (L) No. 3999 of 2022

Neutral Citation: Not Available

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Justice Arif S. Doctor

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

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GRILINCTUS vs PIL-LINCTUS: Pharmaceutical Trademark Dispute Explained
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Pharmaceutical Trademark Infringement: Analysis of the GRILINCTUS Judgment
Can Descriptive Elements Defeat a Trademark Claim? Bombay High Court Answers
Interim Injunction Granted in GRILINCTUS Trademark Litigation
Trademark Protection for Medicines: Key Takeaways from Recent Bombay High Court Ruling
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PIL-LINCTUS Restrained: Important Intellectual Property Judgment of 2026
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Headnote of the Judgment

Laboratoires Griffon Pvt. Ltd. & Anr. v. Psychotropics India Limited, High Court of Judicature at Bombay, Interim Application No. 4006 of 2022 in Commercial IP Suit (L) No. 3999 of 2022, decided on 17.06.2026. The plaintiffs sought an interim injunction restraining the defendant from using the trademark “PIL-LINCTUS” for pharmaceutical products, alleging infringement and passing off of their registered trademark “GRILINCTUS.” Applying the principles governing deceptive similarity in pharmaceutical trademarks and relying upon the stricter standard laid down in Cadila Healthcare Ltd., the Court held that the rival marks were phonetically, visually, and structurally similar and likely to cause confusion. The Court found a strong prima facie case in favour of the plaintiffs and allowed the interim application, restraining use of the impugned mark pending disposal of the suit.

Infographic Thumbnail Prompt (14:9 Aspect Ratio)

Create a premium 14:9 ultra-realistic 3D legal-pharmaceutical infographic depicting a major trademark infringement dispute involving two competing cough syrup brands. At the center, display two large medicine bottles labeled “GRILINCTUS” and “PIL-LINCTUS” facing each other with a glowing red warning symbol showing trademark conflict and consumer confusion. Show a giant metallic legal scale balancing intellectual property rights against pharmaceutical safety concerns. Include pharmaceutical packaging, prescription sheets, medicine boxes, capsules, trademark registration certificates, legal files, courtroom documents, digital trademark databases, and glowing comparison graphics highlighting phonetic and visual similarity between the competing marks. Add a prominent red injunction stamp reading “USE RESTRICTED” and large text banners stating “Pharmaceutical Trademark Dispute”, “Deceptive Similarity”, “Interim Injunction Granted”, and “Consumer Safety First”. Use cinematic lighting, ultra-realistic textures, reflective surfaces, premium legal-business aesthetics, dramatic depth of field, high-detail 3D rendering, blue-gold corporate color scheme, and publication-quality composition suitable for a leading legal news portal. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

Honasa Consumer Ltd. Vs. Visage Beauty and Health Care

Brief Legal News Write-Up

Honasa Consumer Ltd. Vs. Visage Beauty and Health Care Pvt. Ltd. & Anr.
Date of Judgment: 19.06.2026 : Case No.: C.O. (COMM.IPD-TM) 215/2023 : Neutral Citation: 2026:DHC:4870 : Court: High Court of Delhi : Hon'ble Judge: Justice Tushar Rao Gedela

The Court considered a dispute concerning the validity of the registered trademark “D-TAN” in relation to cosmetic and skincare products. The case arose from allegations that Visage Beauty and Health Care Pvt. Ltd., proprietor of the registered mark “D-TAN”, issued a cease-and-desist notice to Honasa Consumer Ltd. objecting to the latter’s use of the expression “DETAN” in connection with its skincare products.

The principal question before the Court was whether the registered trademark “D-TAN” was a descriptive and non-distinctive expression incapable of exclusive trademark protection and therefore liable to be removed from the Register of Trade Marks.

After examining the material on record and the submissions of the parties, Justice Tushar Rao Gedela observed that the expression “D-TAN” directly described the intended purpose and function of skincare products, namely the removal of tanning from the skin. The Court found that the mark was descriptive, common to trade, lacked inherent distinctiveness, and that the respondent had failed to establish that it had acquired secondary significance sufficient to justify continued registration.

The Court held that descriptive expressions which designate the nature, quality, or intended purpose of goods cannot ordinarily enjoy exclusive trademark protection. The Court emphasized that widespread industry use of the expressions “D-TAN” and “DETAN” demonstrated their descriptive character rather than source-identifying significance.

Accordingly, the Court allowed the rectification petition and directed the Registrar of Trade Marks to cancel and remove the registration of the trademark “D-TAN” bearing Registration No. 2065580 in Class 3 from the Register of Trade Marks.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr.

Introduction

The Delhi High Court's decision in Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr. is a significant addition to Indian trademark jurisprudence dealing with descriptive trademarks and rectification proceedings. The judgment examines whether a term commonly used in the cosmetics and skincare industry to describe the purpose of a product can be monopolized through trademark registration.

The case is particularly relevant for businesses operating in highly competitive consumer markets where product descriptions often overlap. It highlights the distinction between a trademark that identifies the source of goods and a descriptive expression that merely explains the characteristics or intended use of a product. The ruling serves as an important reminder that trademark law protects brand identifiers, not ordinary descriptive language that competitors may legitimately need to use in trade.

Factual and Procedural Background

Visage Beauty and Health Care Pvt. Ltd. applied for registration of the trademark “D-TAN” in Class 3 for cosmetic products on 9 December 2010, claiming use since 1 December 2009. During examination, the Trade Marks Registry raised objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999 on the ground that the mark lacked distinctiveness and appeared descriptive in nature. Despite these objections, the mark was eventually advertised and subsequently registered on 30 January 2018.

Honasa Consumer Ltd., a well-known consumer products company, launched skincare products under its “AQUALOGICA” brand. In 2023, Visage issued a cease-and-desist notice alleging infringement of its registered trademark “D-TAN” by Honasa’s use of the expression “DETAN” in connection with certain skincare products.

Honasa responded by asserting that “DETAN” was a descriptive term widely used in the skincare industry to indicate products intended to remove tanning from the skin. According to Honasa, the term was generic, lacked distinctiveness, and could not be exclusively appropriated by any single trader.

Following the exchange of notices, Honasa filed a rectification petition under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the registration of the trademark “D-TAN” from the Register of Trade Marks.

Dispute Before the Court

The principal dispute before the Court was whether the registered trademark “D-TAN” was capable of trademark protection under the Trade Marks Act, 1999.

Honasa contended that the expression directly described the purpose and intended result of skincare products designed to remove tanning. It argued that the mark was descriptive, common to trade, and incapable of distinguishing the goods of one trader from another.

Visage, on the other hand, argued that “D-TAN” was a coined expression adopted in 2009 and extensively used for over fifteen years. It claimed substantial sales, widespread recognition, significant advertising expenditure, and asserted that the mark had acquired distinctiveness and secondary meaning through long and continuous use.

The Court was therefore required to determine whether the mark was descriptive or distinctive and whether any acquired distinctiveness justified its continued registration.

Reasoning and Analysis of the Court

The Court undertook a detailed examination of the statutory scheme contained in Sections 9, 12 and 57 of the Trade Marks Act, 1999.

The Court first reviewed the examination history of the trademark application and noted that the Trade Marks Registry had originally objected to the registration under Sections 9(1)(a) and 9(1)(b). These provisions prohibit registration of marks that are devoid of distinctive character or consist exclusively of indications describing the characteristics, quality, intended purpose or other attributes of goods.

Upon examining the record, the Court found that the responses filed by the proprietor did not adequately overcome the objections regarding lack of distinctiveness and descriptiveness. The Court observed that there was no satisfactory explanation demonstrating why the mark deserved registration despite the statutory objections.

The Court then examined the linguistic meaning of the expression “D-TAN”. Referring to dictionary definitions, it noted that the prefix “de” ordinarily denotes removal or reversal, while “tan” refers to the tanning of skin caused by exposure to sunlight. When combined, the expression naturally conveyed the idea of removing or reversing tanning.

According to the Court, an average consumer would immediately understand “D-TAN” as describing the function or intended purpose of the product rather than identifying its commercial source. No imagination or mental process was required to understand the meaning of the expression.

The Court also relied upon industry practice and evidence demonstrating widespread use of the expressions “D-TAN” and “DETAN” by numerous skincare manufacturers. Such widespread use indicated that the expression had become a descriptive term within the trade.

While discussing principles relating to descriptive trademarks, the Court referred to the well-known treatise McCarthy on Trademarks and Unfair Competition. The Court noted that a mark is descriptive when it directly conveys information about the intended purpose, function, quality, characteristics, or effect of a product. The treatise further recognizes that extensive third-party use of a term is a strong indicator of descriptiveness.

The Court also referred to its recent decision in Renee Cosmetics Private Limited v. Rupali Sharma & Anr., C.O. (COMM.IPD-TM) 107/2025, decided on 05.06.2026, while examining the principles governing descriptive marks.

A significant aspect of the judgment was the Court's analysis of acquired distinctiveness and secondary meaning. Although Visage produced evidence of substantial sales figures and promotional expenditure, the Court held that commercial success alone does not automatically establish secondary meaning. To establish acquired distinctiveness, a proprietor must demonstrate that consumers associate the mark exclusively with its goods and no one else's.

The Court found that the respondent had not produced sufficient evidence such as consumer surveys, market recognition studies, or other material demonstrating that the public exclusively associated the expression “D-TAN” with its products.

Another important factor considered by the Court was the respondent's own manner of usage. The Court observed that the respondent prominently displayed its house mark “Professional O3+” on product packaging, while “D-TAN” appeared more as a description of the product's function. This supported the conclusion that even the proprietor itself used the expression descriptively rather than as a primary source identifier.

The Court further held that Honasa qualified as an “aggrieved person” under Section 57 because the cease-and-desist notice sought to prevent it from using a descriptive expression that was legitimately required in trade. Reliance was placed upon the Supreme Court's decision in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92 regarding the meaning of an aggrieved person in rectification proceedings.

Having considered the evidence and statutory framework, the Court concluded that the mark was descriptive, common to trade, lacked distinctiveness, and had not acquired secondary significance sufficient to justify continued registration.

Final Decision of the Court

The Delhi High Court allowed the rectification petition filed by Honasa Consumer Ltd.

The Court directed the Registrar of Trade Marks to cancel the registration of the trademark “D-TAN” bearing Application No. 2065580 in Class 3. The Registrar was further directed to remove the trademark from the Register of Trade Marks within four weeks from receipt of the order.

No order as to costs was passed.

Point of Law Settled

The judgment reaffirms that descriptive expressions indicating the nature, purpose, quality, function, or intended result of goods cannot ordinarily enjoy exclusive trademark protection.

The Court clarified that commercial success and high sales figures alone are insufficient to establish acquired distinctiveness. A proprietor seeking protection for a descriptive mark must produce convincing evidence that consumers identify the mark exclusively with its goods.

The decision also underscores that widespread industry use of a term is a strong indicator that the expression is descriptive and common to trade. Such terms must remain available for use by all market participants and cannot be monopolized through trademark registration.

Case Details:

Title of the Case: Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr.

Date of Judgment/Order: 19.06.2026

Case Number: C.O. (COMM.IPD-TM) 215/2023

Neutral Citation: 2026:DHC:4870

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tushar Rao Gedela

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

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D-TAN Held Descriptive and Common to Trade: Important Trademark Judgment
Honasa Consumer v. Visage Beauty: Key Takeaways on Descriptive Trademarks
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Cosmetics Industry Trademark Dispute Ends with Cancellation of D-TAN Registration

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Headnote of the Judgment:

Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd. & Anr., High Court of Delhi, C.O. (COMM.IPD-TM) 215/2023, decided on 19.06.2026. The petitioner filed a rectification petition under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the registered trademark “D-TAN” in Class 3. The Court examined whether the mark was descriptive, non-distinctive, and common to trade. Holding that “D-TAN” directly described the intended purpose of skincare products used for removal of tanning and that the respondent failed to establish acquired distinctiveness or secondary meaning, the Court concluded that the mark was wrongly remaining on the Register of Trade Marks. The petition was allowed and the Registrar of Trade Marks was directed to cancel and remove the registration of the trademark “D-TAN”.

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Thursday, June 18, 2026

Raman Kwatra Vs. The Registrar of Trade Marks

Below is a complete, publication-ready legal news brief followed by a comprehensive analytical legal article, strictly in the exact format, tone, and structural instructions provided by you, based on the judgment Raman Kwatra v. The Registrar of Trade Marks, decided on 15 June 2026.

Brief Legal News Write-Up

Raman Kwatra Vs. The Registrar of Trade Marks & Anr.:15.06.2026 : IAL-23211-2025 in Com Misc Pet (L) No. 36812 of 2024 : 2026:BHC-OS:13306: BombHC:Hon'ble Judge: Justice Arif S. Doctor

The Court considered a dispute concerning the territorial jurisdiction and forum conveniens for entertaining a rectification petition seeking removal of marks from the list of well-known trade marks under the Trade Marks Act, 1999. The case arose from allegations that the impugned trade marks were wrongly declared as well-known by the Trade Marks Registry, Mumbai, despite pending infringement and passing-off proceedings involving the same marks before the Delhi High Court. The principal question before the Court was whether the Bombay High Court, though having statutory jurisdiction under Section 125 of the Trade Marks Act, ought to decline exercising such jurisdiction on the ground of forum conveniens.

After examining the material on record and the submissions of the parties, court observed that while jurisdiction under Section 125 was clearly vested in the High Court exercising appellate jurisdiction over the Trade Marks Registry that made the impugned entry, the Court was not bound to exercise such jurisdiction in all circumstances. The Court held that where substantially overlapping issues concerning the same marks and parties were already pending before another High Court, principles of forum conveniens, avoidance of multiplicity of proceedings, and prevention of conflicting decisions justified declining jurisdiction.

Accordingly, the Court disposed of the petition, granting liberty to the petitioner to initiate appropriate proceedings before the Delhi High Court.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Analytical Legal Article

Trademark cancellation is maintainable against a well known trademark

Introduction

The decision in Raman Kwatra v. The Registrar of Trade Marks assumes considerable significance in the evolving jurisprudence governing trade mark rectification proceedings against a well known trademark, particularly in relation to well-known trade marks. The judgment addresses a recurring and practical dilemma faced by litigants and practitioners alike: whether statutory jurisdiction alone is sufficient, or whether courts must also consider convenience, overlap of issues, and the risk of conflicting decisions when parallel proceedings are pending before different High Courts. By harmonising the statutory framework of the Trade Marks Act, 1999 with the doctrine of forum conveniens, the Court has delivered a ruling of substantial relevance to brand owners, intellectual property litigators, and registry-related disputes across India.

Factual and Procedural Background

The dispute arose from the declaration of certain trade marks as “well-known” by the Trade Marks Registry at Mumbai. The petitioner challenged the inclusion of these marks in the official list of well-known trade marks, contending that the declaration was erroneous and liable to be rectified and removed under the provisions of the Trade Marks Act, 1999. The declaration of the marks as well-known had not followed a detailed adjudicatory process but was made through publication by the Registry.

At the same time, infringement and passing-off proceedings involving the very same marks and parties were already pending before the Delhi High Court. Both parties carried on business within the territorial jurisdiction of Delhi, and the underlying trade mark registrations had been applied for and granted by the Trade Marks Registry at New Delhi. Subsequently, the well-known trade marks section of the Registry itself was shifted to New Delhi.

The petitioner nonetheless invoked Section 125 and Section 57 of the Trade Marks Act and filed the rectification petition before the Bombay High Court, asserting that jurisdiction was vested there since the impugned declaration had been made by the Mumbai Registry. The respondents raised a preliminary objection, not disputing jurisdiction in the strict statutory sense, but urging the Court to decline entertaining the petition on the ground of forum conveniens.

Dispute Before the Court

The core issue before the Court was whether, despite having jurisdiction under Section 125 and 57 of the Trade Marks Act, the Bombay High Court ought to exercise that jurisdiction or decline it in favour of the Delhi High Court. The petitioner argued that rectification proceedings were independent of infringement actions and that the statute deliberately anchored jurisdiction to the Registry that made the impugned entry. It was contended that considerations such as dynamic effect of trade marks or convenience could not override the clear legislative scheme.

On the other hand, the respondents contended that parallel proceedings concerning the same marks and overlapping issues were already pending before the Delhi High Court, creating a real risk of conflicting findings. They argued that courts must adopt a pragmatic approach to prevent multiplicity of proceedings and that the Delhi High Court was the more appropriate forum to comprehensively adjudicate disputes relating to the validity, use, goodwill, and enforceability of the marks.

Reasoning and Analysis of the Court

The Court undertook a detailed examination of Sections 57, 91, 124 and 125 of the Trade Marks Act, 1999, read with the Trade Marks Rules, 2017. It reaffirmed that Section 125 vests jurisdiction in the High Court exercising appellate jurisdiction over the Trade Marks Registry that processed the impugned entry. On this basis, the Court rejected the contention that it lacked jurisdiction to entertain the petition.

However, the Court drew a clear distinction between the existence of jurisdiction and the exercise of jurisdiction. It emphasised that statutory jurisdiction does not mandate its mechanical exercise in all cases, particularly where doing so may lead to conflicting decisions and judicial inefficiency. The Court relied upon earlier decisions, including those addressing rectification proceedings and jurisdictional coherence, to underline that the legislative intent of the Trade Marks Act is to avoid uncertainty and multiplicity of proceedings.

The Court also examined the nature of a declaration of a well-known trade mark and noted that such declarations are essentially administrative or ministerial acts that do not involve a detailed adjudicatory process or a reasoned order. Consequently, the validity of the underlying trade mark registration, along with issues of goodwill, reputation, and use, would inevitably be examined in greater depth in infringement and passing-off proceedings.

Court held that rectification petition under Section 57 of Trademarks Act 1999 is maintainable against a Trademark , which has been declared as well known by the Registrar of Trademark as Appeal against such orders are not convenient remedy.

Significantly, the Court recognised that even if infringement proceedings were stayed pending rectification, passing-off claims could still proceed, thereby perpetuating the risk of inconsistent findings. The Court further rejected the argument that the Trade Marks Act is a self-contained code that excludes the application of forum conveniens, holding that nothing in the statute prohibits courts from adopting a pragmatic approach to ensure coherent adjudication.

In light of the overlapping issues, the pendency of earlier proceedings in Delhi, the location of parties, and the transfer of the well-known trade marks section to New Delhi, the Court concluded that the Delhi High Court was the more appropriate forum to adjudicate the dispute.

Final Decision of the Court

The Court upheld the preliminary objection based on forum conveniens. While affirming that it possessed jurisdiction under Section 125 of the Trade Marks Act, it declined to exercise such jurisdiction in the facts of the case. The petition was disposed of, and liberty was granted to the petitioner to initiate appropriate proceedings before the Delhi High Court.

Point of Law Settled

Court held that rectification petition under Section 57 of Trademarks Act 1999 is maintainable against a Trademark . The also judgment clarifies that although jurisdiction for rectification proceedings under Section 125 of the Trade Marks Act is statutorily vested in a specific High Court, such jurisdiction need not be exercised in every case. Courts may legitimately decline to exercise jurisdiction on the ground of forum conveniens where parallel proceedings involving substantially overlapping issues are pending before another competent High Court. The ruling reinforces the principle that avoidance of conflicting decisions and multiplicity of proceedings is of paramount importance in trade mark litigation, including disputes involving well-known trade marks.

Case Details

Title of the Case: Raman Kwatra Vs. The Registrar of Trade Marks & Anr.

Date of Judgment/Order: 15.06.2026

Case Number: IAL-23211-2025 in Com Misc Pet (L) No. 36812 of 2024

Neutral Citation: 2026:BHC-OS:13306

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Justice Arif S. Doctor

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

Suggested SEO Titles

Forum Conveniens in Trade Mark Rectification: Bombay High Court Clarifies Law
Well-Known Trade Marks and Jurisdiction: Key Takeaways from Raman Kwatra Case
When Courts Decline Jurisdiction Despite Statutory Power: A Trade Mark Perspective
Rectification of Well-Known Trade Marks and Parallel Proceedings Explained
Bombay High Court on Forum Conveniens under the Trade Marks Act
Jurisdiction vs Convenience in Trade Mark Rectification Proceedings
Avoiding Conflicting Decisions in IP Litigation: Bombay HC Ruling Explained
Trade Mark Rectification and Forum Conveniens after Raman Kwatra Judgment
Overlapping IP Proceedings and Choice of Forum under Indian Trade Mark Law
Declining Jurisdiction under Section 125 Trade Marks Act: Legal Analysis

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Headnote of the Judgment

Raman Kwatra v. The Registrar of Trade Marks & Anr., Bombay High Court, IAL-23211-2025, decided on 15 June 2026. The petitioner sought rectification and removal of certain marks from the list of well-known trade marks under Section 125 of the Trade Marks Act, 1999. Though the Court held that it possessed jurisdiction as the impugned declaration was made by the Mumbai Registry, it declined to exercise jurisdiction on the ground of forum conveniens, noting that infringement and passing-off proceedings involving the same marks were already pending before the Delhi High Court with overlapping issues. The petition was disposed of with liberty to approach the Delhi High Court.

Infographic Thumbnail Prompt

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Kangaro Industries Vs V-Guard Industries

Brief Legal News Write-Up

Kangaro Industries Vs V-Guard Industries & Anr.
Date of Judgment: 21.08.2025 : Case No.: (T)CMA(TM) No.193 of 2023 (SR.No.74/2018/TM/CHN) : Neutral Citation: 2025:MHC:2131 : Court: High Court of Judicature at Madras : Hon'ble Judge: Justice Senthilkumar Ramamoorthy

The Court considered a dispute concerning the maintainability of an application for extension of time to file evidence in support of a trademark opposition under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The case arose from allegations that the Registrar of Trade Marks wrongly treated Kangaro Industries’ opposition to V-Guard Industries’ trademark application as abandoned after refusing an application seeking extension of time for filing evidence.

The principal question before the Court was whether an application under Section 131 of the Trade Marks Act, 1999 could be invoked to seek extension of the two-month period prescribed under Rule 45(1) of the Trade Marks Rules, 2017 and whether the opposition could consequently be deemed abandoned under Rule 45(2).

After examining the material on record and the submissions of the parties, Justice Senthilkumar Ramamoorthy observed that Section 131 permits extension of time in cases where the time limit is not expressly fixed by the Act itself and that Rule 45 does not exclude the operation of Section 131. The Court held that an application seeking extension of time filed within the original two-month period constitutes sufficient action under Rule 45(1), thereby preventing the automatic operation of the deemed abandonment provision under Rule 45(2). The Court emphasized that legal fictions such as deemed abandonment should be confined to their intended purpose and not be applied mechanically where the opponent has actively pursued the proceedings.

Accordingly, the Court disposed of the appeal by setting aside the Registrar’s order, restoring the opposition proceedings for adjudication on merits, and directing that the existing registration shall remain subject to the final outcome of the remanded opposition proceedings.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Can Section 131 of the Trade Marks Act Extend the Time for Filing Evidence in Opposition Proceedings? Madras High Court Clarifies the Law

Introduction

The decision of the Madras High Court in Kangaro Industries (Regd.) v. V-Guard Industries & Anr. is an important ruling for trademark proprietors, applicants, intellectual property practitioners, and businesses involved in trademark disputes. The judgment addresses a recurring procedural issue in trademark opposition proceedings: whether the Registrar of Trade Marks has the authority to extend the time prescribed for filing evidence in support of an opposition under the Trade Marks Rules, 2017.

Trademark opposition proceedings play a crucial role in preventing the registration of marks that may conflict with existing rights. Procedural defaults during such proceedings can have serious consequences, including deemed abandonment of an opposition. The Court's ruling clarifies the relationship between Section 131 of the Trade Marks Act, 1999 and Rule 45 of the Trade Marks Rules, 2017, while also explaining the limits of the deemed abandonment doctrine. The judgment is therefore significant for ensuring fairness in trademark adjudication and preventing technical procedural defaults from defeating substantive rights.

Factual and Procedural Background

V-Guard Industries filed an application on 9 May 2016 seeking registration of a label mark containing the expression "KANGARO" as a prominent feature. Kangaro Industries, claiming prior adoption and use of the mark "KANGARO" since 1959, opposed the registration by filing a notice of opposition on 6 January 2017.

The applicant filed its counter-statement on 19 May 2017. According to the record, the opponent received the counter-statement on 5 August 2017. Under Rule 45 of the Trade Marks Rules, 2017, the opponent was required to file evidence in support of the opposition within two months from receipt of the counter-statement.

Before expiry of that period, Kangaro Industries filed Form TM-M on 23 September 2017 seeking a one-month extension of time. Evidence in support of the opposition was subsequently filed on 18 October 2017. Thereafter, V-Guard filed its evidence in support of the application and Kangaro filed evidence in reply.

Despite the progress of the proceedings, the Registrar of Trade Marks issued a notice regarding the delay in filing evidence and ultimately passed an order on 8 May 2018 rejecting the request for extension. The Registrar concluded that the 2017 Rules did not permit any extension of time under Rule 45 and consequently held that the opposition stood abandoned under Rule 45(2).

Aggrieved by this decision, Kangaro Industries filed an appeal before the Madras High Court under Section 91 of the Trade Marks Act.

Dispute Before the Court

The primary controversy before the Court concerned the interpretation of Section 131 of the Trade Marks Act and Rule 45 of the Trade Marks Rules, 2017.

Kangaro Industries argued that Section 131 permits extension of time whenever the relevant time limit is not expressly provided in the Act itself. Since Section 21(4) merely states that evidence shall be filed within the prescribed time and leaves the specification of that time to the Rules, it was argued that Section 131 remained available.

The appellant further contended that Rule 109, which governs applications for extension of time under Section 131, did not prohibit such an application in the context of Rule 45.

V-Guard Industries argued that the omission of the earlier provision allowing a one-month extension under the 2002 Rules reflected a deliberate legislative intention to make the two-month period under Rule 45 absolute and mandatory. It was contended that allowing extensions through Section 131 would defeat the objective of expediting opposition proceedings and would undermine the deemed abandonment provision contained in Rule 45(2).

The Court was therefore required to determine whether Section 131 could be invoked to seek extension of time under Rule 45 and whether the opposition had been rightly treated as abandoned.

Reasoning and Analysis of the Court

The Court first examined the maintainability of the appeal. Although Section 131 provides that no appeal lies from an order passed under that provision, the Court observed that the Registrar's order was not merely an order refusing extension. It also declared that the opposition stood abandoned. Consequently, the order was a composite order affecting substantive rights and was appealable under Section 91 of the Trade Marks Act.

The Court then undertook a detailed analysis of Section 21 of the Trade Marks Act. It noted that Section 21 expressly prescribes time limits for filing a notice of opposition and a counter-statement. In contrast, Section 21(4) merely provides that evidence shall be submitted "within the prescribed time," leaving the actual period to be prescribed through subordinate legislation.

The Court carefully examined Section 131, which authorizes the Registrar to extend time for doing any act "not being a time expressly provided in this Act." According to the Court, the expression "expressly provided in this Act" could not be interpreted as including time limits prescribed only through rules. If Parliament intended such a broad exclusion, it could have expressly stated so.

The Court further analyzed Rule 109 of the Trade Marks Rules, 2017. Rule 109 excludes extension applications in certain specified situations, including cases where the Act itself expressly prescribes the time limit or where a specific rule already provides for extension. The Court found that Rule 45 did not prescribe any maximum period beyond which extension was barred and did not fall within the exclusions contemplated by Rule 109.

An important aspect of the judgment is the Court's discussion of the legislative history. Under Rule 50 of the Trade Marks Rules, 2002, an opponent could seek a one-month extension beyond the initial two-month period. Although the 2017 Rules omitted that express provision, Rule 109 simultaneously empowered the Registrar to grant an extension of up to one month in appropriate cases. The Court concluded that the overall statutory framework continued to permit a limited extension through Section 131 read with Rule 109.

The Court also examined the concept of deemed abandonment under Rule 45(2). It emphasized that legal fictions must be confined to the purpose for which they are created. The provision was intended to address situations where an opponent takes no steps whatsoever after filing an opposition.

In the present case, the opponent had actively pursued the proceedings by filing an extension application, subsequently filing evidence, participating in further evidentiary stages, and continuing to prosecute the opposition. In these circumstances, treating the opposition as abandoned would be inconsistent with both logic and fairness.

The Court referred extensively to several decisions, including Hastimal Jain v. Registrar of Trade Marks (2000) 52 DRJ 196 (FB), SAP SE v. Swiss Auto Products 2024 SCC OnLine Del 1750, Sun Pharma Industries Ltd. v. Dabur India Ltd. 2024:DHC:946, Victor Guedes Industria v. Deputy Registrar of Trade Marks 2023:MHC:1193, Needle Industries (India) Ltd. v. Needle Industries Newey (India) Holdings Ltd., AIR 1981 SC 1298, and foreign authorities dealing with statutory interpretation.

While the Court agreed with certain aspects of the Delhi High Court's analysis in SAP SE, it respectfully disagreed with the conclusion that Rule 45 completely excluded the operation of Section 131. The Court held that the better interpretation was one that preserved the statutory power of extension while maintaining an outer limit of one month under Rule 109.

Final Decision of the Court

The Court allowed the appeal to the extent of setting aside the Registrar's order refusing extension and declaring the opposition abandoned.

The opposition proceedings were restored and remanded for adjudication on merits. However, the Court declined to cancel the trademark registration already granted to V-Guard Industries because the registration had remained in force for several years and had been relied upon in subsequent proceedings.

Instead, the Court directed that the registration would remain subject to the outcome of the remanded opposition proceedings. If Kangaro Industries ultimately succeeds, the Registrar would be required to rectify the register by removing the impugned registration. If the opposition fails, the registration would continue to remain valid.

The appeal was disposed of without any order as to costs.

Point of Law Settled

The judgment clarifies that Section 131 of the Trade Marks Act, 1999 can be invoked to seek extension of time in relation to acts for which the time limit is prescribed by the Trade Marks Rules rather than expressly fixed by the Act itself.

The Court further held that an application seeking extension of time filed within the original period prescribed under Rule 45 constitutes sufficient action to prevent the operation of the deemed abandonment provision under Rule 45(2). The ruling reinforces the principle that procedural rules should facilitate fair adjudication and should not be applied in a manner that unnecessarily defeats substantive rights.

The decision is likely to have considerable impact on trademark opposition practice by providing greater clarity regarding the Registrar's powers under Section 131 and by limiting the circumstances in which opposition proceedings may be treated as abandoned.

Case Details:

Title of the Case: Kangaro Industries (Regd.) v. V-Guard Industries & Anr.

Date of Judgment/Order: 21.08.2025

Case Number: (T)CMA(TM) No.193 of 2023 (SR.No.74/2018/TM/CHN)

Neutral Citation: 2025:MHC:2131

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Justice Senthilkumar Ramamoorthy

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

Suggested SEO Titles

Madras High Court Clarifies Extension of Time Under Section 131 in Trademark Opposition Proceedings
Kangaro Industries v V-Guard Industries: Important Ruling on Trademark Opposition Deadlines
Can Trademark Opposition Evidence Be Filed After Two Months? Madras High Court Answers
Section 131 of the Trade Marks Act Explained Through Kangaro v V-Guard Judgment
Deemed Abandonment in Trademark Opposition Cases: Madras High Court Sets Limits
Trademark Opposition Proceedings Restored Despite Delay in Filing Evidence
Madras High Court on Rule 45 and Section 131 of the Trade Marks Act, 1999
Kangaro v V-Guard: Landmark Decision on Procedural Fairness in Trademark Litigation
Extension of Time for Filing Evidence in Trademark Opposition Matters: Key Legal Developments
Trademark Law Update 2025: Madras High Court Restores Opposition Proceedings in Kangaro Case

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Headnote of the Judgment

Kangaro Industries (Regd.) v. V-Guard Industries & Anr., High Court of Judicature at Madras, (T)CMA(TM) No.193 of 2023, decided on 21.08.2025, Neutral Citation: 2025:MHC:2131. The appellant challenged an order of the Registrar of Trade Marks refusing an application for extension of time to file evidence in support of a trademark opposition and treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, 2017. The High Court held that Section 131 of the Trade Marks Act, 1999 may be invoked where the time limit is prescribed by the Rules and not expressly by the Act. The Court further held that filing an extension application within the prescribed period constitutes sufficient action to prevent deemed abandonment. The impugned order was set aside and the opposition proceedings were restored for adjudication on merits, subject to the outcome affecting the existing registration.

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Wednesday, June 17, 2026

Saathi, Inc. Vs. Office of the Controller General of Patents

Brief Legal News Write-Up

Saathi, Inc. v. Office of the Controller General of Patents, Designs and Trade Marks & Anr.
Date of Judgment: 15.06.2026 : Case No.: Commercial Miscellaneous Petition No. 17 of 2026 : Neutral Citation: 2026:BHC-OS:13304 : Court: High Court of Judicature at Bombay : Hon'ble Judge: Justice Arif S. Doctor

The Court considered a dispute concerning the validity of an order revoking a patent in post-grant opposition proceedings. The case arose from allegations that the Controller had revoked the petitioner’s patent without providing adequate reasons, without properly considering the Opposition Board’s recommendation, without addressing the issue of locus standi of the opponent, and despite the absence of an affidavit of evidence from the opponent.

The principal question before the Court was whether the impugned order revoking Patent No. IN365526 could be sustained when it allegedly failed to comply with statutory requirements and principles of reasoned decision-making under the Patents Act, 1970 and the Patents Rules, 2003.

After examining the material on record and the submissions of the petitioner, Justice Arif S. Doctor observed that the impugned order was wholly unreasoned, contained no independent analysis of the rival contentions, failed to explain its departure from the Opposition Board’s recommendation, and did not address fundamental issues relating to locus standi and admissible evidence.

The Court held that a Controller deciding a post-grant opposition must pass a reasoned and speaking order, duly consider the recommendations of the Opposition Board, determine whether the opponent qualifies as a “person interested,” and ensure compliance with statutory requirements relating to evidence. The Court emphasized that failure to do so vitiates the decision-making process.

Accordingly, the Court allowed the petition, set aside the impugned order revoking the patent, and granted relief in terms of the petitioner's prayers. There was no order as to costs.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Bombay High Court Sets Aside Patent Revocation Order for Lack of Reasons and Failure to Consider Opposition Board Findings

Introduction

The decision of the Bombay High Court in Saathi, Inc. v. Office of the Controller General of Patents, Designs and Trade Marks & Anr. is an important judgment concerning post-grant patent opposition proceedings under the Patents Act, 1970. The ruling reinforces the obligation of patent authorities to provide reasoned decisions, properly consider recommendations made by the Opposition Board, and address threshold issues affecting the maintainability of opposition proceedings.

The judgment is particularly relevant for patent holders, innovators, start-ups, technology companies, intellectual property professionals, and patent authorities. It underscores that administrative decisions affecting valuable patent rights must be transparent, reasoned, and consistent with statutory requirements.

The ruling also highlights the importance of procedural fairness and judicial scrutiny of administrative decision-making in intellectual property matters.

Factual and Procedural Background

Saathi, Inc. was granted Patent No. IN365526 after undergoing multiple rounds of examination, scrutiny, and amendment before the Patent Office. Following the grant of the patent, Respondent No. 2 instituted post-grant opposition proceedings under Section 25(2) of the Patents Act, 1970 seeking revocation of the patent.

An Opposition Board was constituted in accordance with the statutory framework. The Board examined the matter and recommended rejection of the opposition. Despite this recommendation, the Controller passed an order dated 17 July 2025 allowing the opposition and revoking the patent.

The petitioner challenged the revocation order before the Bombay High Court under Section 117A of the Patents Act. The petitioner argued that the order was non-speaking, ignored the Opposition Board’s recommendation, failed to examine whether the opponent was a “person interested” under the Act, and overlooked the fact that the opponent had not filed an affidavit of evidence as required by Section 79 of the Act.

The Court therefore examined whether the revocation order could legally survive.

Dispute Before the Court

The dispute before the Court centered on whether the Controller's order revoking the patent was legally sustainable.

The petitioner contended that the impugned order merely reproduced the submissions of the opponent and contained no independent reasoning. It further argued that although the Opposition Board had recommended rejection of the opposition, the Controller failed to provide any explanation for disagreeing with that recommendation.

The petitioner also argued that Respondent No. 2, who claimed to be a medical practitioner, had failed to establish that he qualified as a “person interested” under Section 2(1)(t) and Section 25(2) of the Patents Act. According to the petitioner, this issue affected the very maintainability of the opposition proceedings.

Additionally, the petitioner submitted that Respondent No. 2 had not filed an affidavit of evidence as required by Section 79 of the Patents Act and had merely annexed documents to the opposition.

The Court was therefore required to determine whether these defects rendered the revocation order legally unsustainable.

Reasoning and Analysis of the Court

The Court found substantial merit in all the principal objections raised by the petitioner.

The Court first examined the impugned order and concluded that it was a non-speaking order. It observed that the Controller had substantially reproduced the submissions of the opponent and revoked the patent without conducting any independent analysis of the evidence, technical materials, prior art, or rival contentions. The Court emphasized that administrative authorities exercising statutory powers affecting patent rights must provide clear and reasoned findings.

The Court also attached significance to the fact that the dispute arose in post-grant opposition proceedings under Section 25(2) of the Patents Act. Since the patent had already undergone detailed examination before grant, a decision revoking the patent required careful and reasoned consideration of all relevant materials.

While dealing with the Opposition Board’s recommendation, the Court referred to Rule 62(5) of the Patents Rules, 2003. The Court clarified that although the Controller is not bound by the Board’s recommendation, the Controller is statutorily required to consider it. Where the Controller disagrees with the recommendation, reasons must be recorded explaining the basis of disagreement.

The Court relied upon Pharmacyclics, LLC v. Controller General of Patents, 2020 SCC OnLine IPAB 37, which emphasized that recommendations of the Opposition Board cannot be ignored and that the Controller must clearly indicate reasons for agreement or disagreement.

The Court further relied upon decisions including Saurabh Arora v. Deputy Controller of Patents & Anr., Medipack Global Ventures (P) Ltd. v. Assistant Controller of Patents & Designs, and Dolby International AB v. Controller of Patents & Designs, 2023 SCC OnLine Del 1521, which stress the necessity of reasoned orders in patent matters.

On the issue of evidence, the Court found merit in the contention that the opponent had failed to file an affidavit of evidence as required under Section 79 of the Patents Act. The Court observed that merely annexing documents to an opposition does not convert those documents into admissible evidence. The Court accepted the petitioner’s reliance on Akebia Therapeutics Inc. v. Controller General of Patents, 2023 SCC OnLine Del 4841.

The Court also examined the issue of locus standi. It observed that Section 25(2) permits post-grant opposition proceedings only by a “person interested” as defined under Section 2(1)(t) of the Act. The petitioner had specifically argued that Respondent No. 2 failed to establish any nexus with the patented invention titled “Absorbent Article Having Natural Fibres.” Despite the importance of this objection, the Controller had completely failed to address it.

The Court held that the issue of whether the opponent is a “person interested” must be decided at the threshold because it goes to the maintainability of the proceedings themselves. In this context, the Court found support in the Supreme Court decision in Aloys Wobben v. Yogesh Mehra & Ors., (2014) 15 SCC 360.

Final Decision of the Court

The Bombay High Court held that the impugned order suffered from multiple legal infirmities. The order was unreasoned, failed to properly consider the Opposition Board’s recommendation, overlooked statutory requirements relating to evidence, and did not determine the maintainability of the opposition by examining whether the opponent qualified as a “person interested.”

Consequently, the Court allowed the petition and granted relief in terms of prayer clauses (a) and (b). The Court made no order as to costs.

Point of Law Settled

The judgment reinforces several important principles governing post-grant patent opposition proceedings.

A Controller deciding a post-grant opposition must pass a reasoned and speaking order supported by independent analysis. The Controller must genuinely consider the recommendations of the Opposition Board and provide reasons whenever those recommendations are not accepted. The maintainability of opposition proceedings depends upon the opponent establishing that it is a “person interested” under the Patents Act. Further, documents annexed without a supporting affidavit cannot automatically be treated as evidence where the statute requires evidence to be filed by affidavit.

The decision strengthens procedural safeguards in patent opposition proceedings and promotes transparency, accountability, and fairness in patent administration.

Case Details:

Title of the Case: Saathi, Inc. Vs. Office of the Controller General of Patents, Designs and Trade Marks & Anr.

Date of Judgment/Order: 15.06.2026

Case Number: Commercial Miscellaneous Petition No. 17 of 2026

Neutral Citation: 2026:BHC-OS:13304

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Justice Arif S. Doctor

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

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Headnote of the Judgment:

Saathi, Inc. v. Office of the Controller General of Patents, Designs and Trade Marks & Anr., Bombay High Court, Commercial Miscellaneous Petition No. 17 of 2026, decided on 15.06.2026. The petitioner challenged an order revoking Patent No. IN365526 in post-grant opposition proceedings. The Bombay High Court held that the impugned order was a non-speaking order, failed to provide reasons for departing from the Opposition Board’s recommendation, did not address whether the opponent qualified as a “person interested” under Section 25(2) of the Patents Act, and overlooked statutory requirements relating to evidence under Section 79. The Court allowed the petition, set aside the impugned revocation order, and granted relief in favour of the patent holder.

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Qualyst Transporter Solutions LLC Vs. The Assistant Controller of Patents

Brief Legal News Write-Up

Qualyst Transporter Solutions LLC v. The Assistant Controller of Patents & Anr.
Date of Judgment: 15.06.2026 : Case No.: Interim Application No. 1778 of 2026 in Patent Appeal Proceedings : Neutral Citation: Not Available : Court: High Court of Judicature at Bombay : Hon'ble Judge: Justice Arif S. Doctor

The Court considered a dispute concerning the scope of a remand order in patent prosecution proceedings. The case arose from allegations that after an earlier remand directing a fresh hearing due to violation of natural justice, the Patent Office sought to introduce entirely new objections and prior art references that had not formed part of the original examination record.

The principal question before the Court was whether, after a remand limited to curing a procedural defect and granting a fresh hearing, the Controller of Patents could reopen the examination process by raising fresh objections and introducing new prior art references.

After examining the record and submissions, Justice Arif S. Doctor observed that the earlier remand order was passed solely to remedy a breach of natural justice and was not intended to restart the patent examination process. The Court found that the Controller's jurisdiction on remand was confined to reconsidering the matter on the basis of objections already forming part of the record.

The Court held that while Controllers generally possess authority to raise additional objections during patent examination, such power could not be exercised in a manner inconsistent with the limited scope of the remand order. The Court emphasized that permitting entirely new objections or fresh prior art references would effectively amount to reopening examination proceedings beyond the remit of the remand.

Accordingly, the Court allowed the application and held that the Patent Office could elaborate upon existing objections already on record but could not introduce wholly new grounds of objection or fresh prior art references. The Court further directed that the hearing be completed and a fresh order be passed within eight weeks.

Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.

Bombay High Court Clarifies Limits of Patent Office Powers After Remand in Qualyst Transporter Solutions Case

Introduction

The decision of the Bombay High Court in Qualyst Transporter Solutions LLC v. The Assistant Controller of Patents & Anr. is an important ruling on the scope of remand orders in patent prosecution proceedings. The judgment addresses a recurring issue faced by patent applicants—whether the Patent Office can introduce fresh objections after a court remands a matter for reconsideration.

The ruling is significant for patent applicants, intellectual property practitioners, technology companies, research institutions, and patent authorities. It underscores the principle that administrative authorities must strictly adhere to the terms of a judicial remand order and cannot expand the scope of proceedings beyond what the court has authorized.

The judgment also reinforces the importance of procedural fairness and provides clarity regarding the balance between the Patent Office's statutory duties and compliance with judicial directions.

Factual and Procedural Background

The dispute arose from a patent application filed by Qualyst Transporter Solutions LLC. During the course of examination, a First Examination Report (FER) was issued in December 2020, followed by responses and amendments submitted by the applicant in June 2021. Hearing notices were thereafter issued and proceedings continued before the Patent Office.

An earlier order refusing the patent application was challenged before the Court. The Court found that certain objections had been raised for the first time during the hearing without prior notice to the applicant, thereby violating principles of natural justice. Consequently, the matter was remanded to an independent Controller for a fresh hearing.

Following remand, the Patent Office issued a fresh hearing notice and sought to raise additional objections under various provisions of the Patents Act, along with new prior art references. The applicant objected to this course of action, arguing that the remand was limited to granting a fresh hearing and did not authorize reopening of the examination process.

This led to the filing of the present application before the Bombay High Court seeking clarification and enforcement of the scope of the earlier remand order.

Dispute Before the Court

The central issue before the Court was whether the Controller could raise fresh objections and rely on new prior art references after the matter had been remanded solely to cure a procedural defect.

The applicant argued that the earlier remand order was limited in nature and merely required the Patent Office to provide a fresh hearing on the objections already forming part of the record. According to the applicant, allowing fresh objections would effectively restart examination proceedings and defeat the purpose of the remand.

The Patent Office contended that Controllers possess statutory authority to raise additional objections during examination and that patent prosecution involves public interest considerations because patents create monopolistic rights enforceable against the public at large. The Patent Office therefore argued that the remand order did not restrict its statutory powers.

The Court was therefore required to determine the precise limits of the remand order and whether the Controller could go beyond objections already forming part of the examination record.

Reasoning and Analysis of the Court

The Court acknowledged the legal position emerging from PerkinElmer Health Sciences Inc., Otsuka Pharmaceutical Co. Ltd. v. Controller of Patents, 2022 SCC OnLine Del 4982, and Bayer Pharm Aktiengesellschaft v. Controller General of Patents and Designs, 2024 SCC OnLine Del 2044. These decisions recognize that during ordinary patent examination proceedings, the Controller may raise additional objections provided adequate notice is given through a hearing notice.

However, the Court held that the present matter stood on a different footing because it concerned the interpretation of a specific remand order. The earlier remand had been granted solely because objections were raised during a hearing without prior notice, resulting in a breach of natural justice. The Court emphasized that the remand was intended only to cure that procedural defect.

The Court carefully examined the language and context of the remand order and concluded that the direction to consider the matter afresh could not be interpreted as authorization to reopen the entire examination process. Instead, it meant that the applicant should be given a fair opportunity to respond to objections already on record.

The Court noted that when the earlier remand order was passed, there was no indication that examination remained incomplete or that additional prior art references were required. The entire focus of the remand was correction of a procedural irregularity. Therefore, introducing fresh objections years later would fundamentally alter the nature of the proceedings.

The judgment also distinguished cases relied upon by the Patent Office, observing that those authorities dealt with ordinary examination proceedings rather than situations involving a limited remand order. The Court relied upon principles governing remand jurisdiction and observed that once a court restricts the purpose of remand, the authority receiving the remand must remain within those boundaries.

The Court accepted the applicant's reliance on decisions including Euro-Apex B.V., Grupo Petrotemex S.A. de C.V., and Kamterter Products LLC, which emphasized that refusal orders based on grounds not previously communicated to applicants violate principles of natural justice. The Court also referred to authorities discussing the limited scope of remand proceedings.

Importantly, the Court clarified that the Patent Office would remain free to elaborate, clarify, or further develop objections already emerging from the examination record and previously cited prior art references. What was impermissible was the introduction of entirely new grounds or fresh prior art references that had never formed part of the original proceedings.

Final Decision of the Court

The Bombay High Court allowed the application and held that the Controller could not introduce wholly new prior art references or entirely fresh objections after remand. The Court clarified that the Controller's authority on remand was confined to curing the procedural defect identified in the earlier order by granting a fresh hearing.

At the same time, the Court permitted the Patent Office to explain, elaborate upon, and develop objections already forming part of the existing examination record. The Court directed that the hearing be completed and a fresh order be passed within eight weeks from the date of upload of the judgment.

The Court further clarified that the ruling was based on the peculiar facts of the case and the specific terms of the earlier remand order. A four-week stay on the operation of the judgment was subsequently granted.

Point of Law Settled

The judgment establishes that where a court remands a patent matter solely to cure a procedural defect or violation of natural justice, the Patent Office cannot treat the remand as authorization to restart examination proceedings from the beginning.

The ruling clarifies that the scope of remand is determined by the language, purpose, and context of the remand order. Administrative authorities must strictly operate within those limits. While Controllers ordinarily possess statutory powers to raise additional objections during examination, such powers cannot be exercised in a manner that expands or defeats the purpose of a limited remand order.

The decision reinforces the principles of finality, procedural fairness, and adherence to judicial directions in patent prosecution proceedings.

Case Details:

Title of the Case: Qualyst Transporter Solutions LLC Vs. The Assistant Controller of Patents & Anr.

Date of Judgment/Order: 15.06.2026

Case Number: Interim Application No. 1778 of 2026

Neutral Citation: Not Available

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Justice Arif S. Doctor

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

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Headnote of the Judgment:

Qualyst Transporter Solutions LLC v. The Assistant Controller of Patents & Anr., Bombay High Court, Interim Application No. 1778 of 2026, decided on 15.06.2026. The applicant challenged the Patent Office's attempt to introduce fresh objections and new prior art references after an earlier remand order that had been passed solely to cure a breach of natural justice. The Bombay High Court held that the Controller's jurisdiction on remand was limited to granting a fresh hearing on objections already forming part of the record and did not extend to reopening examination proceedings de novo. The Court allowed the application, restrained introduction of wholly new objections and prior art references, and directed completion of the hearing and issuance of a fresh order within eight weeks.

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