Raju Patel Vs. The Registrar of Trade Mark

Bombay High Court Upholds Validity of Trademark Renewal Notice Dispatch in Non-Renewal Removal Racket Dispute

[Case Title] : Raju Patel Vs. The Registrar of Trade Marks, Mumbai

Date of Judgment: 21.07.2026

Case No.: Writ Petition No.4868 of 2025

Neutral Citation : Not Available

[Court Name] : In the High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction

Name of Hon'ble Judge: Hon'ble Mr. Ravindra V. Ghuge, ACJ. & Hon'ble Mr. Gautam A. Ankhad, J.

Factual and Procedural Background

Petitioner No.1 applied for and obtained registration of the trade mark SUNDAY with claimed user from 01.02.2008. The registration certificate issued on 05.05.2011 was valid until 29.05.2019. On 01.03.2019, the Registrar sent a notice for renewal in Form RG-3 dated 26.02.2019 under Section 25(3) of the Trade Marks Act, 1999 to Petitioner No.1's registered agent. On 11.11.2024, Petitioner No.1 filed an Interlocutory Application seeking permission to renew the mark, alleging non-receipt of the RG-3 notice. Petitioner No.1 assigned the mark to Petitioner No.2 on 29.11.2024. Petitioner No.2 filed RTI applications and appeals to obtain dispatch details and subsequently filed a Writ Petition before the High Court apprehending removal of the mark due to non-filing of renewal within the prescribed period.

Dispute before Court

The primary dispute was whether the Registrar of Trade Marks complied with the mandatory requirement under Section 25(3) of the Trade Marks Act, 1999 read with Rule 58 of the Trade Marks Rules, 2017 regarding the issuance of the RG-3 renewal notice. A further dispute was whether the non-availability of online postal tracking information after a lapse of over six years disproves actual service or dislodges the presumption of service under Rule 18 of the Trade Marks Rules, 2017 and Section 27 of the General Clauses Act, 1897.

Reasoning of Judge

The Court observed that under Rule 18 and Rule 58 of the Trade Marks Rules, 2017 read with Section 25(3) of the Act, proving service requires establishing proper address and posting, rather than proving actual receipt or acknowledgment. The Court noted that the Registrar produced contemporaneous records from its Outward dispatch register showing that on 01.03.2019, five renewal notices (including the subject mark) were sent by Speed Post to the registered agent, and two of those marks were in fact renewed by the same agent. The Court held that statutory presumption of service arises under Section 27 of the General Clauses Act, 1897 upon proper address and dispatch. The non-availability of postal tracking details after six years on the India Post website does not dislodge the official outward register or disrepute the statutory presumption, especially when the registered agent was neither made a party nor filed an affidavit denying receipt. The Court further observed that the assignee (Petitioner No.2) cannot acquire better rights than the assignor, who slept over its rights for over five years.

Decision

The High Court dismissed the Writ Petition and discharged the Rule, holding that the Respondent had fully discharged its statutory obligations under Section 25(3) of the Act read with Rule 58 of the Rules. No order was made as to costs.

One Important legal principle held in the case

Under Section 25(3) of the Trade Marks Act, 1999 read with Rule 18 and Rule 58 of the Trade Marks Rules, 2017, the Registrar is only required to establish proper addressing and dispatch of the RG-3 renewal notice to the address for service, creating a rebuttable presumption of service under Section 27 of the General Clauses Act, 1897 which cannot be dislodged merely by the absence of online postal tracking records after a prolonged delay.

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

Legal Protection of Pharmaceutical Packaging and Parallel Criminal Prosecution in Counterfeit Drug Cases

Introduction:

The administration and maintenance of registered intellectual property rights impose explicit duties on both regulatory authorities and mark proprietors. Under trademark jurisprudence, statutory provisions govern the duration, renewal, and eventual removal of registered trademarks. While the law mandates that the Registrar of Trade Marks must notify a proprietor prior to removing a mark for non-renewal, questions frequently arise regarding what constitutes proper legal compliance for serving such statutory notices. In a significant judgment, the High Court analyzed the interplay between statutory renewal notices, postal dispatch proof, the presumption of service, and the evidentiary value of online tracking data after prolonged periods of inaction by mark owners.

Factual and Procedural Background:

The original proprietor, trading as M/s. Anand Ply, applied for the registration of the trademark SUNDAY claiming user from 1st February, 2008. The Registrar of Trade Marks issued a Registration Certificate on 5th May, 2011 under Application No.1823390, with validity extending up to 29th May, 2019. Under Section 25(3) of the Trade Marks Act, 1999, a notice for renewal in Form RG-3 dated 26th February, 2019 was generated and dispatched by the Registry via speed post on 1st March, 2019 to the registered trademark agent on record, M/s. Vishesh & Associates.

No renewal application or prescribed fee was submitted prior to the expiration date of 29th May, 2019, or within the extended six-month period provided under the statutory proviso. On 11th November, 2024—more than five years after the expiration—the original proprietor filed an Interlocutory Application before the Registrar, contending that the Form RG-3 notice was never served and seeking permission to pay renewal fees to restore the mark. Shortly thereafter, on 29th November, 2024, the original proprietor executed an Assignment Deed transferring the trademark to Matra Mobili Private Limited. Requisite assignment documents were submitted to the Registry on 21st March, 2025.

Upon checking the status page on the Registry's website, the assignee noticed an alert stating that the mark was likely to be removed due to non-filing of a renewal request within the prescribed time limit. To build its case, the assignee filed an application under the Right to Information Act, 2005 on 3rd January, 2025 through its agent, M/s. Obhan & Associates. On 20th February, 2025, the Central Public Information Officer provided dispatch particulars, including correspondence numbers, dispatch entries, and speed post tracking number EM692402790IN dated 1st March, 2019. An appeal under Section 19 of the RTI Act was subsequently dismissed by the appellate authority on 17th March, 2025, confirming the dispatch details. When the assignee attempted to track the consignment on the India Post portal, the portal returned a result stating that consignment details were not found. Apprehending imminent removal of the mark, both the assignor and assignee approached the High Court under Writ Petition No.4868 of 2025.

Dispute Before the Court

The central legal issue requiring adjudication was whether the Registrar of Trade Marks satisfied the mandatory statutory obligation under Section 25(3) of the Trade Marks Act, 1999 read with Rule 58 of the Trade Marks Rules, 2017 regarding the issuance and service of the RG-3 renewal notice.

The petitioners contended that compliance with Section 25(3) is mandatory and that a mark cannot be removed without positive proof of actual receipt of the notice. They argued that mere production of a dispatch number is insufficient and highlighted that the speed post tracking number displayed an error message on the postal portal. Relying on earlier precedents, the petitioners argued that without concrete proof of service, the mark could not be removed and restoration ought to be permitted.

Conversely, the Registrar of Trade Marks submitted that the statutory notice was properly issued and dispatched to the address for service of the registered agent in the ordinary course of business. The Registrar produced extracts of the Outward dispatch register showing that on 1st March, 2019, five renewal notices were dispatched to the same agent, two of which were successfully renewed by the same agent pursuant to those notices. The Registrar contended that once proper dispatch to the address for service by government post is established, a presumption of service arises under Section 27 of the General Clauses Act, 1897 and Rule 18 of the Trade Marks Rules, 2017. It was argued that the non-availability of online tracking data after six years cannot negate actual dispatch or override years of unexplained delay by the mark owner.

Reasoning and Analysis of the Court

The Court examined the statutory framework governing trademark renewals, specifically Section 25 of the Trade Marks Act, 1999, alongside Rules 18 and 58 of the Trade Marks Rules, 2017. It observed that while Section 25(3) obliges the Registrar to notify the registered proprietor before removing a mark, it also expects proprietors to maintain due diligence over their intellectual property registrations. The statutory scheme is designed to facilitate renewal, not to preserve registrations indefinitely when proprietors neglect their maintenance responsibilities.

Analyzing Rule 58 and Rule 18 of the Trade Marks Rules, 2017, the Court highlighted that service of documents by the Registrar is complete upon leaving them at or sending them by post to the address for service. Under Rule 18(2), communications sent by post are deemed served at the time they would be delivered in the ordinary course. Crucially, Rule 18(3) explicitly clarifies that to prove service, it is sufficient to prove that the letter was properly addressed and put into the post. The Court held that the rules require proof of proper dispatch to the registered address for service rather than signed proof of delivery or physical acknowledgment from the addressee.

Applying these principles to the facts, the Court found that the Registrar successfully established proper dispatch. The contemporaneous Outward dispatch register documented the entry for 1st March, 2019, reflecting the dispatch of five RG-3 notices to the registered agent, M/s. Vishesh & Associates. The fact that the same agent acted upon two of those five notices to secure renewals for other marks strongly corroborated that dispatches occurred in the ordinary course of business.

The Court held that once proper addressing and posting via Government Speed Post are demonstrated, the statutory presumption under Section 27 of the General Clauses Act, 1897 comes into operation. This presumption dictates that service is deemed effective unless the contrary is proved by cogent evidence. The Court rejected the petitioners' argument that the unavailability of online tracking details on the India Post portal dislodged this presumption. The verification attempt occurred in 2025—six years after the 2019 dispatch. Neither postal departments nor administrative bodies are required to maintain online tracking entries indefinitely.

Furthermore, the Court pointed out that the registered agent who allegedly failed to receive the notice was not made a party to the petition, nor was any affidavit filed by the agent denying receipt. The Court characterized the petitioners' reliance on RTI queries as an attempt at reverse engineering to capitalize on the natural expiration of online tracking records. The original proprietor remained silent for over five years after the registration expired on 29th May, 2019, initiating steps only in November 2024 ahead of assigning the expired mark. The Court affirmed that an assignee cannot claim superior rights to those held by the assignor. Distinguishing past precedents such as Ipca Laboratories Limited vs. The Registrar of Trade Marks, Cipla Ltd. vs. Registrar of Trade Marks, 2013 SCC OnLine Bom 1270, and Cipla Ltd vs. Union of India, Writ Petition (Civil) (IPD) No. 23 of 2025, the Court noted that those cases involved instances where no dispatch steps were taken or where public notices were incorrectly substituted for individual notices. In contrast, concrete proof of individual dispatch was fully established here. The Court also referred to Guruji Enterprises Pvt. Ltd. vs. Union of India, 2017 SCC Online Del 7624 (DB), International Business Machines Corporation vs. Tivoli Gardens, 2026 SCC Online Del 828, and M/s. Madan and Co. vs. Wazir Jaivir Chand, (1989) 1 SCC 264, reinforcing that proof of proper dispatch shifts the burden to the addressee to rebut service.

Final Decision of the Court

The High Court held that the Registrar of Trade Marks successfully fulfilled all statutory requirements under Section 25(3) of the Trade Marks Act, 1999 read with Rule 58 of the Trade Marks Rules, 2017. Consequently, the High Court dismissed the Writ Petition and discharged the Rule. The Court made no order as to costs.

Point of Law Settled

This judgment establishes that under Section 25(3) of the Trade Marks Act, 1999 read with Rules 18 and 58 of the Trade Marks Rules, 2017, the Registrar is required to prove proper addressing and dispatch of the RG-3 renewal notice to the address for service, rather than proving actual delivery or physical acknowledgment. Once proper dispatch by post is evidenced through official outward registers, a statutory presumption of service arises under Section 27 of the General Clauses Act, 1897. This presumption cannot be dislodged merely by pointing to the non-availability of online postal tracking records after a significant lapse of time. Furthermore, assignees of expired marks cannot bypass statutory renewal deadlines when their assignors have failed to exercise due diligence.

Title of the Case: Raju Patel and Another vs. The Registrar of Trade Marks, Mumbai

Date of Judgment: 21.07.2026

Case Number: Writ Petition No.4868 of 2025

Neutral Citation: Not Available

Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction

Name of Hon'ble Judge: Hon'ble Mr. Ravindra V. Ghuge, ACJ. & Hon'ble Mr. Gautam A. Ankhad, J.

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 a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

Raju Patel and Another vs. The Registrar of Trade Marks, Mumbai, High Court of Judicature at Bombay, Writ Petition No.4868 of 2025, Judgment Dated 21.07.2026. The petitioners filed a writ petition challenging the non-renewal and potential removal of the trademark SUNDAY following its expiry on 29.05.2019, alleging non-service of the mandatory RG-3 renewal notice under Section 25(3) of the Trade Marks Act, 1999. The High Court held that the Registrar proved proper dispatch of the notice to the address for service via official outward records, triggering the presumption of service under Rule 18 of Trade Marks Rules, 2017 and Section 27 of General Clauses Act, 1897. The Court held that non-availability of online tracking details after six years does not dislodge this presumption. The High Court dismissed the writ petition.

Suggested SEO Tags:

Bombay High Court, Trademark Renewal Law, Section 25 Trade Marks Act, Rule 58 Trade Marks Rules, Rule 18 Trade Marks Rules, RG-3 Notice Service, Presumption of Service, Section 27 General Clauses Act, Registrar of Trade Marks Mumbai, Non Renewal Trademark Removal, Trademark Assignment Expired Mark, Intellectual Property Law India, Trademark Agent Service, Speed Post Dispatch Proof, Postal Tracking Record Expiry, Outward Dispatch Register Evidence, Trademark Restoration Petition, Trade Mark Removal Alert, Due Diligence Trademark Owner, RTI Trade Mark Registry, Legal Presumption Post Service, IP Litigation India, Trademark Jurisprudence, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles:

 1. Bombay High Court Rules on Validity of Trademark RG-3 Renewal Notice Dispatch

 2. Is Postal Tracking Proof Mandatory to Prove Service of Trademark Renewal Notice?

 3. Understanding Section 25(3) and Presumption of Service Under Trade Marks Act

 4. Bombay High Court Dismisses Writ Seeking Restoration of Expired Trademark SUNDAY

 5. Can an Assignee Renew a Trademark After Years of Inaction by the Assignor?

 6. Proof of Dispatch vs Proof of Delivery Under Rule 18 of Trade Marks Rules 2017

 7. Interplay Between Trade Marks Act 1999 and Section 27 General Clauses Act 1897

 8. High Court Clarifies Legal Impact of Missing Postal Tracking Details in IP Matters

 9. Duties of Trademark Proprietors and Registrars in Trademark Renewal Proceedings

 10. Bombay High Court Upholds Registry Actions on Removal of Non-Renewed Trademarks

Vivek Venkatesan Vs The State of Puducherry

Madras High Court Refuses to Quash FIR in Spurious Drug Racket Involving Copyright and Cheating Offences

[Case Title] : Vivek Venkatesan Vs The State of Puducherry 

Date of Judgment: 21.07.2026

Case No.: Crl.O.P.No.35020 of 2025 and Crl.M.P.Nos.24577 of 2025 & 3904 of 2026

Neutral Citation : Not Available

[Court Name] : In the High Court of Judicature at Madras

Name of Hon'ble Judge: Hon'ble Mr. Justice G.K. Ilanthiraiyan

Factual and Procedural Background

The case stems from an FIR registered following a complaint by Sun Pharma Laboratories Limited regarding large-scale counterfeiting of its registered drug products and brand names across multiple states. Investigation linked the petitioners to the supply chain and manufacturing facilities operating in Puducherry under false pretenses. The FIR was registered under Sections 276, 318(4), and 61 of the Bharatiya Nyaya Sanhita, 2023, along with Sections 27(d) and 17B(b) of the Drugs and Cosmetics Act, 1940. The investigation was subsequently transferred to the Central Bureau of Investigation. The petitioners moved the High Court seeking to quash the FIR.

Dispute before Court

The main dispute was whether police authorities can register an FIR and investigate penal offences under the BNS when the matter involves spurious drugs falling under Chapter IV of the Drugs and Cosmetics Act. Additionally, the court addressed whether allegations of copying product packaging, artistic labels, and 3D security strips attract offences of copyright infringement and cheating, and whether the existence of multiple FIRs across different states invalidated the present proceedings.

Reasoning of Judge

The Court observed that while cognizable offences under Chapter IV of the Drugs and Cosmetics Act are primarily subject to complaints by Drugs Inspectors, Section 32(3) of the Act contains a saving clause allowing prosecution under other general laws. The Court held that police officers are fully empowered to register and investigate cognizable offences under general criminal laws like the BNS. Regarding intellectual property rights, the Court reasoned that copyright law operates independently, and the doctrine of overlapping remedies permits parallel penal action when distinct artistic packaging, labels, or security marks protected under Section 13(1)(a) of the Copyright Act are unlawfully reproduced. The Court further noted that deceiving consumers and distributors into buying fake medicines using replicated brand art constitutes dishonest inducement under Section 318(4) of the BNS. Lastly, it was held that this FIR pertained to distinct seizures, batch codes, and locations, making it independent of other state cases.

Decision

The High Court dismissed the petition seeking to quash the FIR, holding that prima facie cognizable offences were disclosed. The Court directed the investigating agency to complete its investigation and submit a final report before the jurisdictional Magistrate within twelve weeks.

One Important legal principle held in the case

Section 32(3) of the Drugs and Cosmetics Act, 1940 acts as a saving clause allowing parallel investigation and prosecution under general penal laws (such as the BNS) for cheating and copyright infringement involving distinct artistic packaging, independent of statutory drug inspection procedures.

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

Legal Protection of Pharmaceutical Packaging and Parallel Criminal Prosecution in Counterfeit Drug Cases

Introduction:

The illicit trade of counterfeit pharmaceutical products poses severe risks to public safety, commercial reputation, and healthcare integrity. When spurious medicines flood the market, legal questions frequently arise regarding which investigating agency possesses the jurisdiction to prosecute the offenders and under what specific statutory framework. A crucial aspect of this debate is whether the specialized statutory mechanism governing drugs exclusively bars traditional law enforcement agencies from investigating penal offences under general criminal codes or intellectual property statutes. In a significant judicial ruling, the High Court examined these overlapping statutory frameworks, addressing the balance between drug regulatory laws, penal provisions against cheating, and copyright protections extended to proprietary product packaging.

Factual and Procedural Background:

The origin of the case traces back to widespread detection of counterfeit medicines across several regions in India, including Maharashtra, Rajasthan, Delhi, West Bengal, Telangana, and Uttar Pradesh. A leading pharmaceutical firm, Sun Pharma Laboratories Limited, owning established registered trademarks for several well-known drug formulations such as Rosuvas, Ranozex, Montek, Rozavel, Levipil, and Gemer, uncovered a widespread distribution network dealing in fake versions of its products. Enquiries indicated that key supply operations were linked to facilities located in Puducherry, where storage and production units were allegedly functioning under the guise of fake pharma entities.

Consequently, an FIR was lodged in Puducherry under Sections 276, 318(4), and 61 of the Bharatiya Nyaya Sanhita, 2023, along with Sections 27(d) and 17B(b) of the Drugs and Cosmetics Act, 1940. Simultaneously, other FIRs had already been registered in cities such as Agra, Muzaffarnagar, and Delhi. During the pendency of the matter, the investigation of the Puducherry FIR was formally transferred to the Central Bureau of Investigation. The individuals named as key players in the Puducherry supply chain invoked the inherent jurisdiction of the High Court under Section 528 of the Bharatiya Nagarik Suraksha Sanhita, 2023, seeking to quash the FIR.

Dispute Before the Court

The core legal question presented before the Court was whether a police officer or specialized investigating agency has the legal authority to register an FIR and conduct an investigation when the allegations predominantly involve spurious or adulterated drugs. The petitioners contended that under Section 32 of the Drugs and Cosmetics Act, 1940, only a designated Drugs Inspector is authorized to institute legal proceedings for offenses under Chapter IV of the Act. Relying on binding judicial precedents, they argued that police officers are barred from registering FIRs or conducting searches and seizures for drug-related offenses, making the entire police action illegal and devoid of jurisdiction.

The petitioners further asserted that no offense of cheating under Section 318(4) of the Bharatiya Nyaya Sanhita, 2023 was made out since there was no direct dishonest inducement of any specific individual to deliver property. They also argued that copyright law applies strictly to traditional literary, dramatic, musical, or artistic works and cannot be extended to pharmaceutical products or drug packaging. Lastly, they submitted that registering multiple FIRs across different states for the same overarching set of allegations amounted to an abuse of the legal process.

In response, the investigating agency and the pharmaceutical company argued that Section 32(3) of the Drugs and Cosmetics Act contains an explicit saving clause preserving the right to prosecute offenders under other existing laws. They contended that the unauthorized replication of distinctive packaging designs, logos, and 3D security strips violates copyright in artistic works, which exists independently of trademark or drug regulatory statutes. They also argued that deceiving distributors and the general public into purchasing fake medicines under the guise of genuine products clearly satisfies the elements of criminal cheating.

Reasoning and Analysis of the Court

The Court undertook an analytical evaluation of the statutory provisions, inter-statutory harmony, and established legal principles. Addressing the jurisdictional challenge under the Drugs and Cosmetics Act, 1940, the Court acknowledged that while Chapter IV offenses are meant to be prosecuted through formal complaints filed by Drugs Inspectors, this restriction does not create an absolute bar against police investigation under general penal statutes. The Court emphasized Section 32(3) of the Drugs and Cosmetics Act, 1940, which explicitly provides that nothing in Chapter IV shall be deemed to prevent any person from being prosecuted under any other law for an act or omission constituting an offense. Therefore, general police powers to register cases under Section 173 of the Bharatiya Nagarik Suraksha Sanhita, 2023 for offenses under the Bharatiya Nyaya Sanhita, 2023 remain fully intact.

Examining the applicability of the Copyright Act, 1957, the Court applied the doctrine of overlapping remedies. The Court clarified that copyright protection operates as an independent statutory framework that can be invoked concurrently alongside other commercial and penal remedies. Under Section 2(c) read with Section 13(1)(a) of the Copyright Act, 1957, original artistic work embodied in product labels, packaging layouts, and specialized graphic designs enjoys distinct copyright protection. When counterfeiters fraudulently copy and reproduce these distinctive labels, color schemes, and specialized 3D security strips, their actions go beyond mere drug contamination and constitute a direct criminal infringement of copyright under Section 51, punishable under Sections 63 and 65 of the Copyright Act, 1957.

Regarding the charge of cheating under Section 318(4) of the Bharatiya Nyaya Sanhita, 2023, the Court rejected the defense that no direct deception was proven at the threshold stage. The Court observed that by placing spurious medicines bearing identical brand names, artwork, and fraudulent packaging into the commercial supply chain, the accused intentionally induced distributors, retailers, and end consumers to pay money for fake drugs under the belief that they were buying genuine pharmaceutical products. This systematic misrepresentation directly establishes dishonest inducement to part with money, satisfying the statutory ingredients of cheating and causing wrongful loss to both consumers and the genuine manufacturer.

On the issue of multiple FIRs, the Court reviewed the factual record and noted that the present FIR was not a duplicate registration for the same specific occurrence. Instead, it was based on distinct seizures, specific local storage facilities uncovered in Puducherry, manipulated e-way bills, fraudulent purchase invoices, and separate batch codes. Reaffirming settled legal principles on the exercise of inherent powers to quash criminal proceedings, the Court observed that an FIR is not meant to be an exhaustive encyclopedia of every detail. Citing Supreme Court rulings including Sau. Kamal Shivaji Pokarnekar vs. State of Maharashtra, (2019) 14 SCC 350, and M/s. Neeharika Infrastructure Pvt. Ltd. vs. State of Maharashtra, 2021 SCC OnLine SC 315, the Court reiterated that criminal proceedings should not be scuttled at the initial stage when the allegations prima facie disclose the commission of cognizable offenses.

Final Decision of the Court

The Court declined to quash the First Information Report and dismissed the criminal original petition along with all connected miscellaneous petitions. Recognizing the need for a prompt investigation into the counterfeit drug operation, the Court directed the Central Bureau of Investigation to complete its investigation in Crime No.27 of 2025 and submit its final report before the jurisdictional Magistrate within twelve weeks.

Point of Law Settled

This decision clarifies the legal relationship between specialized regulatory statutes and general criminal laws. It reaffirms that the presence of specialized enforcement mechanisms under the Drugs and Cosmetics Act, 1940 does not oust police jurisdiction to investigate penal offenses such as cheating under the Bharatiya Nyaya Sanhita, 2023 or copyright violations under the Copyright Act, 1957. Furthermore, the ruling confirms that original artistic elements on drug packaging, labels, and anti-counterfeiting security features qualify as protected artistic works. Consequently, their unauthorized replication constitutes an independent criminal offense, allowing brand owners to pursue multi-pronged legal remedies against counterfeiters.

Title of the Case: Vivek Venkatesan and Another vs. The State of Puducherry and Others

Date of Judgment: 21.07.2026

Case Number: Crl.O.P.No.35020 of 2025 and Crl.M.P.Nos.24577 of 2025 & 3904 of 2026

Neutral Citation: Not Available

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon'ble Mr. Justice G.K. Ilanthiraiyan

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 a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

Vivek Venkatesan and Another vs. State of Puducherry and Others, High Court of Judicature at Madras, Crl.O.P.No.35020 of 2025, Judgment Dated 21.07.2026. The petitioners filed a criminal original petition seeking to quash an FIR registered under Sections 276, 318(4), and 61 of Bharatiya Nyaya Sanhita, 2023, and Sections 27(d) and 17B(b) of Drugs and Cosmetics Act, 1940, alleging unauthorized police jurisdiction and non-applicability of copyright and cheating provisions to counterfeit medicines. The High Court held that Section 32(3) of Drugs and Cosmetics Act saves prosecution under other penal laws, and unauthorized copying of artistic product packaging and security labels attracts copyright infringement and criminal cheating. Finding a prima facie cognizable offense, the High Court dismissed the petition and directed the investigating agency to file a final report within twelve weeks.

Suggested SEO Tags:

Madras High Court, Counterfeit Medicines, Spurious Drugs, Drugs and Cosmetics Act 1940, Section 32 Drugs Act, Bharatiya Nyaya Sanhita 2023, Section 318 BNS, Cheating Penal Provisions, Copyright Infringement, Copyright in Packaging, Section 13 Copyright Act, Artistic Work Protection, Brand Protection Law, Pharmaceutical Trademarks, Central Bureau of Investigation, Quashing of FIR, Section 528 BNSS, Doctrine of Overlapping Remedies, Parallel Criminal Prosecution, Sun Pharma Judgment, Fake Medicine Racket, Multi State FIR Law, Criminal Original Petition, IP Enforcement India, Police Jurisdiction Drugs Act, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles:

 1. Madras High Court Rules Police Can Investigate BNS Offences in Fake Drug Cases

 2. Is Copyright Protection Applicable to Pharmaceutical Packaging and Labels?

 3. Interplay Between Drugs and Cosmetics Act and General Criminal Penal Laws

 4. Madras High Court Refuses to Quash FIR Against Counterfeit Medicine Network

 5. Can Counterfeit Drug Operations Be Prosecuted Under Cheating and Copyright Laws?

 6. Understanding Section 32 Saving Clause Under the Drugs and Cosmetics Act 1940

 7. Overlapping Remedies in Intellectual Property and Spurious Medicine Prosecution

 8. High Court Mandates CBI Timebound Probe in Spurious Pharma Label Racket

 9. Protection of Product Artwork and Security Features Under Copyright Law India

 10. Legal Remedies Against Counterfeit Pharmaceutical Brands and Spurious Drugs

SAPAT International Pvt.Ltd. Vs. NIRAVI Consumer

Bombay High Court Grants Injunction Protecting Registered Trade Mark SAPAT in Tea Business Dispute

[Case Title] : SAPAT International Private Limited Vs. NIRAVI Consumer LLP and Ors.

Date of Judgment: 21.07.2026

Case No.: Interim Application No. 6387 of 2025 in Commercial IP Suit No. 612 of 2025

Neutral Citation : 2026:BHC-OS:16227

[Court Name] : High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction in its Commercial Division)

Name of Hon'ble Judge: Hon'ble Mrs. Justice Sharmila U. Deshmukh

Factual and Procedural Background

The applicant/plaintiff, SAPAT International Private Limited (formerly known as Sapat Packaging Industry Private Limited), filed a commercial suit claiming trademark infringement and passing off regarding its registered trademark SAPAT under Class 30 (tea). The history traces back to a business started by Late Ramashankar Haribhai Joshi, which was subsequently assigned in 1995. Under the family arrangement/assignment in 1995, the tea business with Class 30 registrations was assigned to the plaintiff, while the healthcare business with Class 3 and Class 5 registrations went to an affiliate entity, now known as Sapat Global Health Private Limited. The defendants (NIRAVI Consumer LLP and others) operated retail outlets selling NIRAVI tea and healthcare products. Until June 2024, Defendant No. 2 procured tea from the plaintiff and sold it under SAPAT signages. Following the cessation of supply, the defendants began displaying signages bearing the mark SAPAT alongside NIRAVI, using adhesive tapes marked SAPAT on NIRAVI packaged tea, issuing invoices using the trade name Sapat & Co. Nashik, and listing SAPAT mixture on their price cards for tea. The plaintiff sought temporary injunctive relief.

Dispute before Court

The primary issue before the court was whether the plaintiff, as a registered proprietor of the trademark SAPAT in Class 30 (tea), was entitled to an injunction restraining the defendants from using the mark SAPAT or deceptively similar marks for selling tea, operating outlets, or displaying signages. The defendants resisted the injunction by alleging prior user rights, continuous use of the trade name Sapat & Co. Nashik for several decades, acquiescence by the plaintiff, and entitlement to use SAPAT as permitted users of Sapat Global Health Private Limited for Class 3 and 5 goods.

Reasoning of Judge

The Court observed that the plaintiff is the registered subsequent proprietor of the trademark SAPAT in Class 30 (tea) following the valid 1995 assignment. It held that an assignor or parties deriving rights through the assignor cannot claim prior user rights to defeat the effect of a valid trademark assignment. The Court found that the defendants failed to prove an independent right to the mark SAPAT for tea, as their past usage was under a common law license/commercial procurement arrangement with the plaintiff that ceased in June 2024. Furthermore, the court applied the principle of initial interest confusion, holding that displaying SAPAT signages at outlets selling NIRAVI tea draws consumers under the belief that SAPAT tea is available, creating actionable confusion regarding product origin.

Decision

The High Court allowed Interim Application No. 6387 of 2025 in terms of prayer clauses (a) and (d), granting a temporary injunction restraining the defendants from manufacturing, marketing, advertising, or selling tea under the mark SAPAT, operating tea counters using SAPAT, or using the mark to pass off their tea business as that of the plaintiff. A separate application filed by the plaintiff under Order 39 Rule 2A of the CPC alleging contempt of a previous ad-interim statement was dismissed for lack of concrete evidence. Operation of the injunction order was stayed for four weeks on the defendants' request.

One Important legal principle held in the case

Once a trademark has been validly assigned, the assignor or entities claiming through the assignor cannot assert a defense of prior user or prior adoption to defeat the statutory rights of the registered assignee.

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

=====

Analysis of Trade Mark Assignment and Initial Interest Confusion in Family Business Disputes

Introduction:

The enforcement of intellectual property rights within family-owned businesses that split operations across different product categories often presents complex legal challenges. When trademark rights are divided by mutual consent or assignment deeds, conflicts frequently arise if one group entity attempts to leverage the common brand equity in overlapping trade channels. A prominent decision rendered by the High Court of Judicature at Bombay thoroughly examines the statutory protections available to registered trademark owners, the limitations of prior user defenses post-assignment, and the application of the doctrine of initial interest confusion in commercial transactions.

Factual and Procedural Background:

The origin of the trade name traces back to 1897 when a foundational business started marketing products under the name Sapat, followed by the establishment of tea outlets around 1905. Over decades, trademark registrations were secured across multiple classes, including early registrations in Class 30 for tea and Class 5 for healthcare preparations. In 1995, a structural division took place among the partners of the parent firm. Pursuant to explicit assignment documentation dated in January 1995, the tea business together with the registered trademarks under Class 30 was exclusively assigned to the entity now functioning as the plaintiff company. Concurrently, the healthcare and personal care business along with Class 3 and Class 5 registrations was assigned to a separate entity, now known as Sapat Global Health Private Limited. Both entities were duly recorded as subsequent proprietors in the records of the Trade Marks Registry in their respective classes.

The conflict emerged when business relations deteriorated between the corporate entity controlling the registered tea trademark and allied retail operators. Defendant No. 2 had long operated retail outlets in regional locations and maintained a supply arrangement to procure tea directly from the registered proprietor until June 19, 2024. Following the termination of this commercial supply arrangement, Defendant No. 1 and Defendant No. 2 began marketing tea under a newly adopted mark, Niravi. However, the defendants continued to display prominent signages combining Sapat with Niravi at their retail outlets, affixed adhesive tapes bearing the mark Sapat on Niravi tea packages, issued sales invoices referencing Sapat, and listed Sapat mixture on their tea price cards. Aggrieved by these actions, the registered proprietor instituted a commercial IP suit seeking temporary and permanent injunctive relief against trademark infringement and passing off.

Dispute Before the Court

The principal legal question requiring adjudication was whether the plaintiff, as the exclusive registered proprietor of the trademark Sapat in Class 30, was entitled to restrain the defendants from utilizing the mark or trade name in connection with tea sales, advertising, and store signages.

The plaintiff contended that the statutory rights under Class 30 rested solely with it by virtue of the 1995 assignment. The plaintiff asserted that any past permission granted to the defendants to use the brand was a mere permissive user under a commercial supply arrangement, which ceased upon termination of supply. Continued display of signages and brand elements by the defendants constituted statutory infringement and passing off.

Conversely, the defendants argued that the trademark Sapat originated as a common family house mark used continuously across all product lines since the late nineteenth century. They asserted a defense of prior user and honest concurrent user, claiming an independent historic existence of their regional trading entity. They further submitted that since an allied group company legitimately owned Class 3 and Class 5 registrations for Sapat Niravi, displaying signages at their stores was a lawful exercise of permitted user rights for health beverages, which could not be restricted merely because tea was sold in the same store.

Reasoning and Analysis of the Court

The High Court undertook a structured statutory analysis governed by the provisions of the Trade Marks Act, 1999. The Court primary noted that Section 28 of the statute confers an exclusive right upon the registered proprietor to use the trademark in relation to the specific goods for which it is registered. Under Section 29, any unauthorized commercial use or application of an identical or deceptively similar mark for registered goods, including use in advertising, constitutes actionable infringement.

In evaluating the defense of prior user, the Court rejected the contention that an assignor or parties claiming through an assignor can set up a plea of prior adoption against the registered assignee. The Court reasoned that allowing an assignor to assert prior rights after executing a formal assignment deed in 1995 would render the assignment completely nugatory and defeat statutory registration protections.

The Court further addressed the practical realities of retail sales and consumer perception by applying the doctrine of initial interest confusion. The Court emphasized that trademark protection extends to preventing confusion that arises at the initial stage of consumer attraction. Even if counter-level notices or disclaimers exist inside a shop to clarify product origin, displaying Sapat signages outside retail stores selling tea entices consumers into the outlet under the impression that Sapat tea is available. This creates a state of transient wonderment and deceptive association between Niravi tea and the registered brand Sapat.

The Court found that the defendants failed to produce cogent evidence demonstrating an independent commercial right to use Sapat for tea sales outside the revoked supply arrangement. The defense of long acquiescence was also rejected, as the historical usage was deemed permissive during the subsistence of active trade relations.

Final Decision of the Court

The High Court granted temporary injunctive relief in favor of the plaintiff under Interim Application No. 6387 of 2025. The Court restrained the defendants, their partners, agents, and representatives from manufacturing, marketing, selling, advertising, or dealing in tea under the trademark Sapat or any deceptively similar mark. The defendants were further enjoined from operating stores or counters for selling tea using the mark Sapat or passing off their tea products as those of the plaintiff. An interim application filed by the plaintiff alleging contempt for breach of an ad-interim statement was dismissed due to insufficient evidence of willful non-compliance regarding packaged tea. To enable the defendants to seek appellate remedies, the Court granted a four-week stay on the operation of the injunction.

Point of Law Settled

This judgment reaffirms two fundamental tenets of Indian intellectual property jurisprudence. First, a party to a trademark assignment—or any entity deriving title through such a party—cannot defeat the assignee's statutory exclusivity by pleading prior user rights established before the assignment. Second, initial interest confusion caused by displaying a registered mark on storefront signages constitutes trademark infringement and passing off if it misleads consumers into entering a retail establishment, irrespective of disclaimers placed at the final point of sale.

Title of the Case:

SAPAT International Private Limited v. NIRAVI Consumer LLP and Ors.

Date of Judgment:

21.07.2026

Case Number:

Interim Application No. 6387 of 2025 in Commercial IP Suit No. 612 of 2025

Neutral Citation:

2026:BHC-OS:16227

Name of Court:

High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction in its Commercial Division)

Name of Hon'ble Judge:

Hon'ble Mrs. Justice Sharmila U. Deshmukh

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 a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

SAPAT International Private Limited v. NIRAVI Consumer LLP and Ors., High Court of Judicature at Bombay, Interim Application No. 6387 of 2025 in Commercial IP Suit No. 612 of 2025, Neutral Citation 2026:BHC-OS:16227. The plaintiff, registered proprietor of the trademark SAPAT in Class 30 (tea) pursuant to a 1995 assignment, sought a temporary injunction against the defendants for trademark infringement and passing off. The defendants displayed SAPAT signages and brand elements at retail outlets selling NIRAVI tea after commercial supply ceased. The High Court held that assignors cannot assert prior user defenses post-assignment and applied the doctrine of initial interest confusion. Interim Application allowed granting injunction against defendants.

Suggested SEO Tags:

Sapat Trademark Case, Bombay High Court IP Judgment, Trademark Infringement Tea Industry, Class 30 Trademark Law, Trademark Assignment Rights, Prior User Defense Intellectual Property, Initial Interest Confusion Doctrine, Deceptive Similarity Tea Business, Passing Off Injunction India, Commercial IP Suit Bombay High Court, Permissive User Termination Trademark, Family Settlement IP Rights, Retail Outlet Signage Infringement, Trade Marks Act 1999 Section 28, Trade Marks Act 1999 Section 29, Subsequent Proprietor Registration, Sapat Tea Dispute, Niravi Consumer Lawsuit, Intellectual Property Litigation India, Commercial Division Bombay High Court, Trademark Injunction Orders, Common Law License IP, Brand Equity Rights, Storefront Signage IP Confusion, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles:

 1. Bombay High Court Grants Injunction in SAPAT Trademark Dispute

 2. Trademark Assignment vs Prior User: Key Insights from Bombay High Court

 3. Initial Interest Confusion in Retail Outlets: Analysis of SAPAT Judgment

 4. Class 30 Trademark Enforcement: SAPAT International v NIRAVI Consumer

 5. Legal Consequences of Terminating Common Law Licenses in Trademarks

 6. Can an Assignor Claim Prior User Rights Post Trademark Assignment?

 7. Bombay High Court Clarifies Rights over Multi-Class Family Brands

 8. Storefront Signages and Trademark Infringement: A Detailed IP Analysis

 9. Understanding Initial Interest Confusion under Indian Trademark Law

 10. SAPAT Trademark Lawsuit: Bombay High Court Protects Registered Tea Brand

Havells India Ltd. Vs Havai Home Products

Havells India Limited & Anr. v. Havai Home Products Pvt. Ltd. & Ors.

[Case Title] : Havells India Limited & Anr. v. Havai Home Products Pvt. Ltd. & Ors.

Date of Judgment: 13.07.2026

Case No.: CS(COMM) 778/2024 & I.A. 38970/2024

Neutral Citation : 2026:DHC:5704

[Court Name] : High Court of Delhi at New Delhi

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

Factual and Procedural Background

The plaintiffs, Havells India Limited and another, filed an interim injunction application under Order XXXIX Rules 1 and 2 CPC in a commercial suit against Havai Home Products Pvt. Ltd. and another. The plaintiffs, who have used the registered and well-known trademark HAVELLS since 1942 (with earliest registration dating back to 1955), sought to restrain the defendants from using the mark HAVAI and its device marks for electrical products like air coolers, fans, and immersion rods. Originally, the Bureau of Indian Standards was impleaded as defendant no. 3, but was subsequently deleted from the array of parties on 24.12.2025.

Dispute before Court

The primary legal dispute was whether the defendants' use of HAVAI and its formative device marks on identical goods constituted passing off and deceptive similarity, particularly when the defendants altered the last letter 'I' in their market representation to resemble an 'L' (making it appear as 'HAVAL'/phonetically 'Ha-va-L'), despite defendant no. 1 holding a registration for the word mark HAVAI in Class 11.

Reasoning of Judge

The court noted that registration of a trademark is not a defense against a common law action for passing off, relying on established precedents including S. Syed Mohideen v. P. Sulochana Bai. Assessing the actual visual and phonetic presentation in the market, the court found that the defendants deliberately omitted the serif on the letter 'I' in HAVAI to make it resemble 'L', creating phonetic deceptive similarity with HAVELLS. Additionally, the defendants copied the black-and-white and red-and-white color scheme of the plaintiffs' device marks and had previously displayed HAVELLS SPARES on their listings. Applying the initial interest confusion test and classical trinity of passing off, the court found dishonesty, misrepresentation, and potential harm to the plaintiffs' immense goodwill.

Decision

The High Court allowed the application (I.A. 38970/2024) and granted an ad-interim injunction restraining the defendants and anyone acting on their behalf from manufacturing, selling, advertising, or offering for sale electrical goods under the impugned marks HAVAI, its stylized variations, or any other mark deceptively similar to HAVELLS during the pendency of the suit.

One Important legal principle held in the case

A registered proprietor of a trademark cannot plead registration as a defense against an action for passing off, as common law rights premised on prior user and goodwill override statutory registration rights under Section 27(2) of the Trade Marks Act, 1999.

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

===

Introduction:

The protection of trade dress, brand identity, and structural visual elements plays a pivotal role in maintaining market integrity and preventing customer deception. In trademark jurisprudence, the common law remedy of passing off serves as a shield against unfair commercial practices where one enterprise attempts to trade upon the established reputation of another. A critical dimension of this doctrine is that statutory registration under trademark legislation does not confer an absolute immunity against claims of deceit. When a trader subtly modifies a registered mark in actual market usage to resemble a competitor's well-known brand, the courts look beyond statutory filings to evaluate real-world consumer perception. A recent ruling by the High Court of Delhi provides an illuminating analysis on the interplay between statutory rights and common law remedies, the application of the initial interest confusion doctrine, and the legal implications of font manipulation designed to induce phonetic and visual confusion.

Factual and Procedural Background:

The primary plaintiff is a prominent Indian Fast-Moving Electrical Goods company incorporated in 1983, with roots in the electrical and power distribution equipment business dating back to 1942 through predecessor entities. Over decades of operation, the enterprise expanded its market footprint across more than 60 countries, establishing widespread consumer trust through certified industrial and consumer electrical products. The mark HAVELLS and its associated formative device marks were registered under various classes, with the earliest registration dating back to 1955 under Class 11. The financial scale of the enterprise is reflected in its commercial figures, having achieved a sales turnover exceeding 18,500 crore rupees in the 2023-2024 financial year, supported by marketing and advertising expenditures exceeding 520 crore rupees in the same period. Owing to continuous, extensive, and uninterrupted commercial presence, the mark HAVELLS was formally recognized and declared as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, by the High Court of Delhi in a judgment dated December 8, 2024, and subsequently listed in the official register of well-known marks.

The conflict arose when the plaintiffs discovered that the defendants were engaged in manufacturing and selling electrical appliances, including air coolers, pedestal fans, immersion rods, and cooler covers, under the mark HAVAI and stylized device variations. In December 2023, the plaintiffs learned that an initial trademark application filed in 2013 by the second defendant was later assigned to the first defendant through an assignment deed dated June 24, 2023. While the first defendant secured registrations for the word mark HAVAI in Class 11 and certain other classes on a proposed-to-be-used basis, the plaintiffs observed that the mark actually deployed on physical products and online sales portals like Amazon and Flipkart differed significantly from the registered mark. Furthermore, the defendants were found listing spare parts using the label HAVELLS SPARES without authorization.

The plaintiffs initiated a commercial suit seeking a permanent injunction against trademark infringement, passing off, and copyright violation. An interlocutory application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, was submitted to secure an immediate temporary injunction. During procedural developments, the Bureau of Indian Standards, initially arrayed as the third defendant, was deleted from the proceedings on December 24, 2025, after confirming that no statutory violations under its governing enactment were identified. The defendants also undertook on December 20, 2025, to remove all references to HAVELLS SPARES from their online literature.

Dispute Before the Court

The core legal questions brought before the court centered on whether the use of the mark HAVAI and its stylized device forms constituted passing off of the plaintiffs' well-known HAVELLS marks, and whether a registered proprietor of a trademark can be restrained under common law from using a variation of its registered mark.

The plaintiffs contended that the defendants intentionally altered the visual rendering of the last letter in HAVAI by removing its traditional serif, thereby causing the letter to be perceived visually and phonetically as an L. This font modification created an impression of the word being pronounced as Ha-va-L, establishing a direct phonetic and visual similarity to HAVELLS. The plaintiffs highlighted that the consumer base for electrical goods includes household buyers, contractors, and tradespersons who purchase products with average intelligence and imperfect recollection. They argued that the adoption of identical color schemes, black-and-white and red-and-white visual layouts, and identical product categories demonstrated clear bad faith aimed at capitalizing on the plaintiffs' market goodwill.

In response, the defendants argued that the suit lacked a valid cause of action because the first defendant was the registered owner of the word mark HAVAI in Class 11. Relying on statutory rights, they submitted that an infringement action cannot lie against another registered proprietor. On the question of passing off, the defendants maintained that HAVAI was derived honestly from the Hindi word HAVA, meaning air, aligning with their focus on air-based cooling products. They asserted that the competing marks were visually, structurally, and phonetically distinct when viewed as a whole. The defendants further submitted that the prefix HAV was common to the electrical trade and that no exclusive monopoly could be claimed over it. They argued that without empirical consumer surveys or proof of actual deception, a common law claim for passing off could not be sustained.

Reasoning and Analysis of the Court

The court entered into a comprehensive analysis of the statutory framework and common law principles governing intellectual property rights. Addressing the preliminary defense of trademark registration, the court referred to the landmark Supreme Court decision in S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683. The judicial consensus reaffirms that statutory registration under Section 28 of the Trade Marks Act, 1999, is expressly subject to Section 27(2), which preserves common law rights against passing off. The court emphasized that rights originating from prior use and market goodwill are superior to statutory registration. Registration merely recognizes pre-existing common law rights rather than creating new proprietary rights. Consequently, the existence of a registration in favor of a defendant does not bar a prior user with established goodwill from maintaining a passing off action.

To evaluate the claim of passing off, the court applied the classical trinity test formulated in English common law and affirmed in Indian jurisprudence, consisting of three essential elements: established goodwill, misrepresentation by the defendant, and likelihood of damage to the plaintiff's reputation. Examining the evidence on record, including audited sales figures and extensive promotional investments, the court held that the mark HAVELLS possessed overwhelming commercial goodwill and public recognition.

On the element of misrepresentation, the court closely analyzed the physical and visual representation of the competing marks. Applying the principles of mark comparison established in Corn Products Refining Co. v. Shangrila Food Products Ltd. (1959 SCC OnLine SC 11) and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) 5 SCC 73), the court agreed that marks must be compared as a whole rather than dissected. However, the court observed a striking discrepancy between what the first defendant registered and what was deployed in the marketplace. While the registered mark HAVAI featured a clear serif on the terminal letter, the mark actually affixed to products featured a straight vertical line without a serif. This intentional modification created a visual ambiguity where the letter could easily be read as an L, altering the auditory perception to Ha-va-L.

The court observed that in passing off actions, the test of deceptive similarity must be conducted against actual market presentation because ordinary consumers do not inspect the official register of trademarks. The unexplained departure from the registered mark, combined with the adoption of identical black-and-white and red-and-white color combinations and product identity across air coolers, fans, and immersion rods, established a deliberate attempt to sail close to the plaintiffs' mark. The court noted that the defense of deriving the mark from the word HAVA failed to explain why the mark was used on immersion rods, which bear no relation to air-based functions.

The analysis further incorporated the doctrine of initial interest confusion, as discussed by the court's Division Bench in Under Armour Inc. v. Anish Agarwal (2025 SCC OnLine Del 3784). This doctrine holds that actionable confusion occurs at the moment a potential purchaser first encounters the defendant's mark, even if any ambiguity is resolved prior to the finalization of the purchase. Given that the relevant customer base includes ordinary consumers and tradespersons purchasing everyday household electrical items, the likelihood of initial confusion was found to be tangible and substantial.

Final Decision of the Court

The High Court held that the plaintiffs successfully established a prima facie case for interim relief, with the balance of convenience tilting in their favor. The court observed that allowing the continued commercial deployment of deceptively similar marks would cause irreparable harm and dilution to the plaintiffs' well-known brand identity.

Accordingly, the court allowed the interlocutory application and issued an ad-interim injunction restraining the defendants, their directors, associates, and agents from manufacturing, marketing, advertising, offering for sale, or selling electrical appliances under the marks HAVAI, its stylized logo variations, or any other mark deceptively similar to HAVELLS. The temporary injunction remains operational during the pendency of the main suit.

Point of Law Settled

This ruling re-affirms that trademark registration cannot be used as a shield against a passing off action when a party alters its mark in trade to induce customer confusion. The decision confirms that courts will evaluate deceptive similarity based on the actual representation of marks in the market rather than formal register entries. It underscores that subtle typographical modifications, such as changing font styles or removing serifs to make one letter resemble another, constitute deliberate misrepresentation under common law. The judgment strengthens brand protection for established prior users by reiterating that common law rights grounded in prior use and goodwill override statutory registration rights when deceptive marketing practices are identified.

Title of the Case: Havells India Limited & Anr. Vs Havai Home Products Pvt. Ltd. & Ors.

Date of Judgment: July 13, 2026

Case Number: CS(COMM) 778/2024 & I.A. 38970/2024

Neutral Citation: 2026:DHC:5704

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Ms. Justice Jyoti 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 a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

Havells India Limited & Anr. v. Havai Home Products Pvt. Ltd. & Ors., High Court of Delhi, CS(COMM) 778/2024, Judgment dated July 13, 2026. The plaintiffs, owners of the well-known registered mark HAVELLS, sought an interim injunction against the defendants for using the mark HAVAI and its device variations on identical electrical products. The plaintiffs alleged passing off, demonstrating that the defendants altered the font of the final letter 'I' in market usage to resemble an 'L', creating visual and phonetic similarity. The defendants claimed immunity based on word mark registration in Class 11. The High Court held that trademark registration is no defense to common law passing off under Section 27(2) of the Trade Marks Act, 1999. Finding deliberate misrepresentation, initial interest confusion, and trade dress imitation, the Court granted an interim injunction restraining the defendants from using the impugned marks. Application allowed.

Suggested SEO Tags:

Havells Trademark Infringement, Havai Trademark Suit, Delhi High Court IP Judgment, Passing Off Law India, Trade Marks Act 1999 Section 27, Registered Mark vs Passing Off, Initial Interest Confusion, Deceptive Similarity Test, Electrical Goods Trademark, Well Known Trademark India, Trademark Font Stylization, Color Scheme Passing Off, Interim Injunction CPC Order 39, Prior User Rights India, Common Law Trademark Remedies, IP Litigation Delhi High Court, Intellectual Property Rights India, Trademark Deception Font Change, Syllable Comparison Trademarks, Trade Dress Protection India, Commercial Suit Delhi High Court, Class 11 Trademark Disputes, Brand Protection Electrical Industry, Advocate Ajay Amitabh Suman, IP Adjutor

Suggested SEO Titles:

 1. Delhi High Court Restrains Use of HAVAI Mark in HAVELLS Trademark Passing Off Suit

 2. Registration Is No Defense to Passing Off: Delhi High Court Grants Injunction in HAVELLS Case

 3. Deceptive Font Manipulation and Passing Off: Analysis of HAVELLS v. HAVAI Judgment

 4. Delhi High Court Reaffirms Superiority of Prior User Rights in HAVELLS Trademark Ruling

 5. Initial Interest Confusion and Trade Dress Imitation: Lessons from HAVAI Trademark Dispute

 6. Can a Registered Trademark Owner Be Sued for Passing Off? Delhi High Court Explains

 7. HAVELLS v. HAVAI: How Typographical Changes Lead to Deceptive Similarity in Intellectual Property Law

 8. Judicial Analysis of Section 27(2) Trade Marks Act: Delhi High Court Injunction Order

 9. Protecting Well-Known Trademarks in India: High Court Restrains Impugned HAVAI Device Marks

 10. Legal Update: Delhi High Court Decision on Phonetic Similarity and Passing Off Remedies

SC-Indian Performing Rights Society Ltd. Vs Sanjay Dalia

Indian Performing Rights Society Ltd. Vs Sanjay Dalia Case:  Territorial Jurisdiction Under Section 62 of Copyright Act and Section 134 of Trade Marks Act

Introduction

The question of where a plaintiff can sue for infringement of copyright or trademark has always carried immense practical significance for litigants across India. Parliament, recognising the hardship faced by authors and trademark owners who had to travel long distances to vindicate their rights, inserted special provisions in the Copyright Act and the Trade Marks Act allowing suits to be filed at the place where the plaintiff resides or carries on business. However, this beneficial provision came to be misused by large corporations who, despite having their principal place of business and the cause of action arising at one location, chose to file suits at distant places merely because they maintained a branch office there. This judgment of the Supreme Court addresses this precise mischief and lays down an important interpretative principle balancing the convenience of the plaintiff with the need to avoid undue hardship to the defendant.

Factual and Procedural Background

The case arose out of a batch of appeals dealing with a common question of law relating to the interpretation of Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999, particularly with regard to the place where a suit for infringement can be instituted.

In the lead matter, the plaintiff had filed a suit seeking to restrain the defendant from infringing its rights without obtaining a licence. The defendant owned cinema halls in Maharashtra and Mumbai, and the entire cause of action, as pleaded, had arisen in Mumbai. Despite this, the suit was filed in the High Court of Delhi on the ground that the plaintiff had a branch office in Delhi and carried on business there. It was not disputed that the plaintiff's head office was situated in Mumbai. The defendant objected to the territorial jurisdiction of the Delhi court, and this objection was upheld both by the Single Judge and later by the Division Bench of the Delhi High Court, which held that the suit ought to have been filed at Mumbai. This order was challenged before the Supreme Court.

In a connected matter, a suit had been filed concerning infringement of a trademark relating to a well known magazine. The registered office of the concerned entity was in Mumbai, where the magazine was also processed and published. The plaintiff sought to invoke the jurisdiction of the Delhi court on the ground that it had a branch office in Delhi, and later sought amendment of the plaint to strengthen this plea. The amendment application was rejected by the Single Judge, but the Division Bench allowed the amendment, giving rise to a further appeal before the Supreme Court.

Given the recurring nature of this jurisdictional controversy and the divergent approaches taken by different High Courts over the years, the Supreme Court took up the appeals together to settle the correct interpretation of the relevant statutory provisions.

Dispute Before the Court

The core question before the Court was whether Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act, both of which permit a plaintiff to file a suit at the place where he resides or carries on business, could be read to allow a plaintiff to choose a distant forum such as a branch office location, even when the cause of action had wholly or partly arisen at the plaintiff's principal place of business or ordinary residence.

The appellants argued that these provisions, being non obstante clauses beginning with the words notwithstanding anything contained in the Code of Civil Procedure, created an unqualified additional right in favour of the plaintiff to sue at any place where it resided or carried on business, regardless of where the cause of action arose. According to this view, the restrictions found in Section 20 of the Civil Procedure Code, 1908 had no application once the special provisions of the Copyright Act and Trade Marks Act were invoked.

The respondents, on the other hand, contended that such an interpretation would open the door to abuse, particularly by large corporations and multinational entities having offices in multiple cities, who could drag defendants to inconvenient and unconnected places merely by citing a branch office, even though neither the cause of action nor the principal business had any connection with that place. They argued that the provisions were intended to remove hardship for the plaintiff, not to create a tool for harassing defendants.

In simple terms, the dispute was about whether a company having its head office and the entire cause of action in one city could nevertheless drag the defendant to litigate in a completely different city merely because it maintained a subordinate office there.

Reasoning and Analysis of the Court

The Court began by examining the scheme of Section 20 of the Civil Procedure Code, which ordinarily governs territorial jurisdiction. Under clauses (a) to (c) of Section 20, a suit can be filed where the defendant resides or carries on business, or where the cause of action wholly or in part arises. The Explanation to Section 20 clarifies that a corporation is deemed to carry on business at its principal office, or in respect of any cause of action arising at a place where it has a subordinate office, at such place as well. The Court explained that this Explanation was intended to prevent a corporation having a subordinate office at the place where the cause of action arises from escaping suit there, but it was never meant to allow a plaintiff to drag a defendant to a place having no connection with the cause of action.

The Court then traced the legislative history behind the insertion of Section 62(2) in the Copyright Act. Reference was made to the report of the Joint Committee of the Houses, which had noted that many authors were deterred from instituting infringement proceedings because the court having jurisdiction was often located far away from their ordinary residence. This impediment was sought to be removed by allowing suits to be filed at the place where the author or copyright owner ordinarily resided or carried on business. The Court also referred to relevant portions of the Parliamentary debates on the Copyright Act, where it was clarified that the purpose of the provision was to spare the injured party the burden of travelling to distant courts, and not to enable the plaintiff to drag the infringer to an inconvenient forum having no connection with the dispute.

Applying this legislative purpose, the Court held that the words notwithstanding anything contained in the Code of Civil Procedure did not oust the applicability of Section 20 CPC altogether. Rather, these provisions provided an additional forum to the plaintiff, over and above what was already available under Section 20 CPC. Where the cause of action, wholly or in part, arises at the place where the plaintiff resides or carries on business, the suit has to be filed at that place. The plaintiff cannot ignore the fact that the cause of action has arisen at its principal place of business and instead choose to file the suit at a subordinate or branch office located elsewhere, merely because such a branch office exists.

The Court extensively invoked the mischief rule laid down in Heydon's case, (1584) 3 Co Rep 7a, which requires courts to consider four aspects while interpreting a statute, namely, what was the law before the enactment, what was the defect or mischief for which the previous law did not provide, what remedy the legislature has resolved to cure the defect, and the true reason for the remedy. Applying this framework, the Court held that the mischief which Section 62 of the Copyright Act and Section 134 of the Trade Marks Act sought to remedy was the hardship caused to authors and trademark owners who had to travel to distant places to file suits despite residing or carrying on business elsewhere. The remedy provided was to allow them to sue at their own place of residence or business. However, if this remedy were interpreted so widely as to permit the plaintiff to choose any place where it merely had a branch office, even when unconnected with the cause of action, it would create a fresh mischief of its own, namely enabling harassment of defendants by dragging them to inconvenient and unconnected forums. The Court therefore emphasised the need to avoid such counter mischief while interpreting these provisions purposively.

Several precedents were considered in detail. In Patel Roadways Ltd. v. Prasad Trading Co., (1991) 4 SCC 270, the Court had earlier interpreted the Explanation to Section 20 CPC and held that where a corporation has a subordinate office at the place where the cause of action arises, it cannot escape being sued there merely because its principal office is located elsewhere, and further clarified that the sole or principal office continues to be the relevant place for filing suit unless a cause of action arises at the place of a subordinate office. This decision was relied upon to explain the true scope of the term corporation and principal place of business. Similarly, in New Moga Transport Co. v. United India Insurance Co. Ltd., (2004) 4 SCC 677, the Court reiterated that the Explanation to Section 20 CPC applies to prevent a corporation from claiming that it cannot be sued where its subordinate office is located, if the cause of action arose there.

The Court also examined its earlier decision in Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, where it had been held that the word include in Section 62 of the Copyright Act shows that the jurisdiction under this provision is wider than that prescribed under the Code of Civil Procedure. The present judgment clarified that this earlier decision did not oust the applicability of Section 20 CPC, but merely recognised that Section 62 provided an additional ground for jurisdiction, and that the decision in Exphar Sa in fact supported rather than contradicted the interpretation now being adopted.

Reference was made to Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, where the Court had considered the maintainability of a composite suit combining causes of action under the Copyright Act and the erstwhile Trade and Merchandise Marks Act, 1958, and had held that the additional forum under Section 62(2) was intended to enable an author to file a suit at a place where he might not otherwise be in a position to sue. The Court in the present case clarified that the specific question involved in the present appeals had not arisen for consideration in Dhodha House, and that a decision is not to be construed like a statute; it cannot be assumed that a previous decision has also decided a question which was never raised before it. The Court also referred to its decision in Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595, which had held that a composite suit combining different causes of action cannot confer jurisdiction on a court which does not otherwise possess territorial jurisdiction in respect of one of the causes of action.

The Court further discussed various High Court decisions cited by the parties, including Smithkline Beecham Plc. v. Sunil Singh, Caterpillar Inc. v. Kailash Nichani, Intas Pharmaceuticals Ltd. v. Allergan Inc., Ford Motor Co. v. C.R. Borman, Sap Aktiengesellschaft v. Varehouse Infotech, Wipro Ltd. v. Oushadha Chandrika Ayurvedic India (P) Ltd., Hindustan Unilever Ltd. v. Ashique Chemicals, and Ultra Tech Cement Ltd. v. Shree Balaji Cement Industries, and explained that the facts and precise questions involved in the present appeals had not arisen for determination in any of these decisions, and that observations in these cases, to the extent inconsistent with the present ruling, could not be treated as binding.

On the question of Section 134 of the Trade Marks Act, the Court clarified that sub-section (2) of Section 134 applies only to clauses (a) and (b) of Section 134(1), which deal with infringement of a registered trademark and any right relating thereto. It does not extend to clause (c), which deals with actions for passing off. Consequently, the procedure for instituting a suit in respect of passing off continues to be governed exclusively by Section 20 of the Civil Procedure Code, and the additional forum under Section 134(2) is not available for such actions. The Court also held that the provisions of Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act are in pari materia with each other, meaning they deal with the same subject matter and are to be interpreted consistently.

The Court also addressed and rejected the argument that since litigation relating to intellectual property is predominantly filed in Delhi, and lawyers practising there have developed particular expertise in such matters, this convenience should be a relevant factor while deciding territorial jurisdiction. The Court held firmly that the convenience or expertise of lawyers at a particular place is wholly irrelevant for determining territorial jurisdiction, and jurisdiction cannot be founded on such considerations.

Throughout its reasoning, the Court relied upon well established principles of statutory interpretation, including the need to avoid constructions leading to hardship, inconvenience, injustice, absurdity or anomaly, drawing upon the writings of Justice G.P. Singh in Interpretation of Statutes and Bennion on Statutory Interpretation, as well as a long line of English and Indian precedents dealing with purposive construction, including Bengal Immunity Co. Ltd. v. State of Bihar, AIR 1955 SC 661, and Sonic Surgical v. National Insurance Co. Ltd., (2010) 1 SCC 135, the latter having interpreted a similarly worded provision in the Consumer Protection Act, 1986 to restrict the meaning of branch office to the branch office where the cause of action actually arose, in order to avoid absurd consequences.

Final Decision of the Court

Having examined the language, legislative history, and object of the provisions in question, the Court concluded that where the cause of action has wholly or partly arisen at the place where the plaintiff resides or carries on business or personally works for gain, and where the plaintiff also has its principal office at that very place, the suit has to be instituted at that place alone, and not at any other place merely because the plaintiff happens to have a subordinate or branch office there. The plaintiff cannot invoke the additional forum created by these special provisions to bypass the place where its principal business and the cause of action are both located, in favour of a distant subordinate office.

Applying this principle to the facts before it, the Court found that the principal place of business of the appellant was admittedly in Mumbai, and the cause of action had also arisen in Mumbai. The provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act could not, therefore, be interpreted so as to confer jurisdiction on the Delhi court merely because the appellant maintained a branch office there. The Delhi court accordingly had no territorial jurisdiction to entertain the suit.

The Court declined the request to transfer the suit to Delhi, holding that no such transfer could be ordered in the present proceedings, and that if the parties so desired, they were free to file an appropriate application, but the suit would first have to be presented before the court of competent jurisdiction. The submission that the matter should be referred to a larger Bench, on the ground that the earlier decision in Dhodha House held the field, was also rejected, since the Court found that the specific question involved in the present appeals had not been considered in that earlier decision. Ultimately, all the appeals were dismissed, and the orders passed by the High Court were upheld, with no order as to costs.

Point of Law Settled

This judgment settles the important principle that the additional forum created under Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act is not an unqualified or absolute right allowing a plaintiff to sue anywhere it maintains an office. Where the plaintiff's principal place of business or ordinary residence coincides with the place where the cause of action has wholly or partly arisen, the suit must be filed at that place, and the plaintiff cannot invoke a distant subordinate or branch office to confer jurisdiction elsewhere. The provisions are meant to spare the plaintiff the hardship of travelling to a distant forum, not to create a tool for dragging the defendant to an inconvenient and unconnected place. This ruling has significantly shaped subsequent trademark and copyright litigation strategy across India, particularly curbing the earlier practice of large corporations routinely filing infringement suits in Delhi merely on the strength of a branch office, regardless of where their principal business and the actual cause of action were located.

Title of the Case: Indian Performing Rights Society Ltd. v. Sanjay Dalia and Another

Date of Judgment: July 1, 2015

Case Number: Civil Appeals Nos. 10643-44 of 2010 with Civil Appeal arising out of SLP (C) No. 8253 of 2013 (with Civil Appeal No. 4912 of 2015)

Neutral Citation: (2015) 10 Supreme Court Cases 161

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Jagdish Singh Khehar and Arun Mishra, JJ.

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 a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

Headnote of the Judgment

In Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161, the Supreme Court examined the territorial jurisdiction for suits under Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999. The plaintiff's principal office and the cause of action were both in Mumbai, yet suits were filed in Delhi citing a branch office there. Dismissing the appeals, the Court held that where the plaintiff's principal place of business and the cause of action coincide at one place, the suit must be filed there, and cannot be shifted to a distant subordinate office. The additional forum under these provisions supplements, but does not oust, Section 20 CPC, and must be construed purposively to prevent counter mischief to defendants.

Suggested SEO Tags

Indian Performing Rights Society v Sanjay Dalia, territorial jurisdiction copyright act, Section 62 Copyright Act 1957, Section 134 Trade Marks Act 1999, Section 20 CPC jurisdiction, cause of action jurisdiction India, forum for copyright infringement suit, forum for trademark infringement suit, plaintiff principal place of business, subordinate office jurisdiction, branch office jurisdiction India, Heydon's mischief rule, purposive interpretation statutes, Supreme Court copyright jurisdiction, Supreme Court trademark jurisdiction, passing off jurisdiction Section 20 CPC, Dhodha House case explained, Exphar Sa jurisdiction case, Patel Roadways jurisdiction judgment, corporate jurisdiction Explanation Section 20 CPC, forum shopping trademark suits, IP litigation jurisdiction India, counter mischief doctrine, statutory interpretation Indian courts, non obstante clause interpretation, intellectual property forum India, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles

Indian Performing Rights Society v Sanjay Dalia: Supreme Court Settles Jurisdiction Under Copyright and Trade Marks Act

Section 62 Copyright Act and Section 134 Trade Marks Act: How the Supreme Court Curbed Forum Shopping

When Can a Plaintiff Sue at a Branch Office? Supreme Court Explains Territorial Jurisdiction in IP Suits

Sanjay Dalia Judgment: A Landmark on Territorial Jurisdiction in Copyright and Trademark Suits

Principal Place of Business vs Branch Office: Supreme Court Resolves Jurisdiction Dilemma in IP Cases

Heydon's Mischief Rule Applied: Supreme Court Interprets Copyright and Trade Marks Jurisdiction Provisions

Balancing Plaintiff Convenience and Defendant Hardship: The Sanjay Dalia Ruling Explained

Analysis of Indian Performing Rights Society Ltd v Sanjay Dalia on Forum for IP Infringement Suits

How the Supreme Court Limited Misuse of Section 62 Copyright Act and Section 134 Trade Marks Act

Territorial Jurisdiction in Trademark and Copyright Litigation: Lessons from the Sanjay Dalia Judgment

Dr. Ashok M. Bhat Vs Harichand Nagpal

Bombay High Court Holds Defendants Guilty of Willful Contempt under Order 39 Rule 2A for Violating Trademark and Copyright Injunction

60a,b,m,j

​Dr. Ashok M. Bhat Vs. Harichand Nagpal: 13-07-2026: Interim Application (L) No. 9324 of 2025 in Commercial IP Suit No. 378 of 2021:BOMBHC: Hon'ble Judge: Arif S. Doctor, J.

​Factual and Procedural Background

The plaintiff, a registered proprietor of the trademark NOVA and its associated artistic label for brilliantine hair cream, filed a commercial suit for infringement and passing off in 2007 against the defendants after discovering counterfeit products. In November 2010, the court granted an interim injunction restraining the defendants from using the NOVA mark or any deceptively similar mark, as well as the plaintiff's original artistic carton and label. 

Later, the plaintiff discovered that the defendants were selling brilliantine hair cream under the mark NONI using a green color scheme and geometric layout virtually identical to the plaintiff's protected artistic work. The plaintiff filed contempt applications under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908, alleging willful disobedience of the 2010 injunction order.

​Dispute before Court

The primary issue was whether the defendants committed willful disobedience of the injunction order by utilizing the mark NOVA MINI and the NONI label. The defendants argued that the injunction was restricted strictly to the word mark NOVA, that the NONI mark was a distinct registered trademark protected under the Trade Marks Act, and that the plaintiff had consciously excluded the NONI mark from the original plaint.

​Reasoning of Judge

The court observed that in contempt proceedings under Order XXXIX Rule 2A, the court's inquiry is strictly confined to verifying whether a breach of the operational order occurred, rather than re-evaluating the merits or legality of the underlying order. 

The comparison of the labels clearly demonstrated that the defendants adopted a green color scheme and geometric layout on the NONI label that was virtually identical to the plaintiff's registered artistic work. Furthermore, the defendants were fully conscious that the injunction covered the artistic work across labels, as evidenced by their failed attempt to seek a clarification from the Division Bench to exempt the NONI mark. 

The court also invoked the safe distance rule, clarifying that an enjoined party must stay far away from the margins of the plaintiff's intellectual property to avoid confusion. The defense that an employee mistakenly utilized old labels for the NOVA MINI mark was rejected as untenable.

​Decision

The court allowed the interim application, holding the defendants guilty of willful breach of the injunction order. Due to the advanced age of the first defendant, the court abstained from ordering civil imprisonment but imposed hefty financial penalties. The first defendant was directed to pay the plaintiff actual legal costs of Rs. 32,42,868 and additional exemplary costs of Rs. 50,00,000 within four weeks. The defendants were also ordered to disclose their complete sales accounts on oath, failing which their defense in the main suit would be struck off.

​One Important legal principle held in the case

In an application under Order XXXIX Rule 2A of the Code of Civil Procedure, the inquiry is strictly confined to whether a willful breach of the injunction order has occurred, and a party cannot plead the correctness or merits of the original order as a defense to justify its disobedience.

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

Safe Distance Rule in Contempt Petition

​Introduction

​Adherence to judicial orders forms the foundational bedrock of the administration of justice. In commercial disputes, particularly those involving intellectual property rights like trademarks and copyrights, interim injunctions are critical tools deployed to preserve the status and distinctiveness of proprietary marks pending final disposal. When a party attempts to circumvent such injunctions through deceptive modifications or alternative branding that mimics the protected trade dress, the legal framework provides robust mechanisms to penalize the contumacious behavior. The judgment delivered by the High Court of Bombay in the case of Dr. Ashok M. Bhat v. Harichand Nagpal addresses the precise limits of contempt jurisdiction under the Code of Civil Procedure, 1908, reinforcing that technological or typographical variations cannot shield an infringer who willfully breaches a court order.

​Factual and Procedural Background

​The litigation traces back to the year 2007 when the plaintiff, a registered proprietor of the trademark NOVA and its accompanying distinct artistic label used for manufacturing and selling brilliantine hair cream, discovered that the proprietor of Ravi Industries was distributing counterfeit products. These counterfeit goods copied both the name and the visual identity of the plaintiff's products. Seeking immediate legal recourse, the plaintiff filed a commercial suit for trademark infringement, copyright infringement, and passing off. The court considered the request for interlocutory relief and, by a detailed order dated November 24, 2010, granted an interim injunction. This order explicitly restrained the defendants from manufacturing, marketing, or selling cosmetic goods using the counterfeit mark NOVA or any deceptively similar mark, and specifically prohibited the unauthorized replication of the plaintiff's registered artistic carton and labels under the Copyright Act, 1957.

​Subsequent to this injunction, the plaintiff discovered in December 2013 that the defendants were actively commercializing a brilliantine hair cream under the brand name NONI. Upon inspection, the label affixed to the NONI products mirrored the exact green color get-up, diamond geometric patterns, and visual styling of the plaintiff's original registered artistic work. This discovery prompted the filing of the first contempt application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908. While this application remained pending, a court receiver executing an order in a separate matter in February 2025 discovered extensive stocks of products bearing the mark NOVA MINI alongside the controversial NONI labels at the business premises of the defendants. Crucially, the son of the first defendant was found running the day-to-day operations and asserted proprietary authority over the business. This led to the institution of a second contempt application, bringing both applications before the court for a consolidated determination.

​Dispute Before the Court

​The primary legal dispute centered on whether the defendants' commercial use of the mark NOVA MINI and the structurally identical NONI label constituted a willful and deliberate breach of the operating 2010 injunction. The plaintiff argued that the visual presentation of the NONI label was an identical imitation of the registered artistic work that the defendants were expressly barred from utilizing. The plaintiff further contended that the introduction of the mark NOVA MINI was a blatant violation of the word mark injunction.

​Conversely, the defendants set up a multi-layered defense. They argued that the suit and the resulting injunction were structurally confined to the word mark NOVA and did not cover the label NONI. They emphasized that the mark NONI was independently registered under the Trade Marks Act, 1999, dating back to an application from 1966 with claimed user since 1958. They asserted that under statutory provisions, one registered proprietor cannot maintain an infringement action against another registered proprietor. Furthermore, they pointed out that the Intellectual Property Appellate Board had previously dismissed a rectification application filed by the plaintiff against the NONI registration, which they claimed acted as an estoppel against the current contempt proceedings. For the NOVA MINI marks, the defendants claimed it was a bona fide error committed by a newly appointed employee who mistakenly unpacked and utilized old discarded labels without the management's knowledge.

​Reasoning and Analysis of the Court

​The court entered into an exhaustive analysis of the statutory boundaries governing contempt jurisdiction under Order XXXIX Rule 2A of the Code of Civil Procedure. It clarified that the primary scope of an inquiry in such applications is singularly focused on whether an order has been violated. The court held that arguments questioning the legality, correctness, or fairness of the underlying injunction are entirely irrelevant in contempt proceedings. So long as a judicial order remains operational and has not been stayed, modified, or vacated by a competent higher forum, it commands absolute obedience from the parties bound by it.

​In assessing the facts, the court compared the physical layout of the plaintiff's registered artistic work against the defendants' impugned NONI label. The visual matrix revealed that the defendants had meticulously replicated the identical green color palette, the specific circular and diamond geometric enclosures, and the general trade dress. The court rejected the argument that the independent registration of the mark NONI allowed the defendants to bypass the injunction. It noted that the injunction explicitly protected the plaintiff's copyright in the original artistic work. Therefore, using that exact artistic layout under a slightly altered brand name still constituted a direct breach of the text and spirit of the 2010 order.

​The court exposed the dishonesty in the defendants' argument by referencing past appellate records. The defendants had previously filed an appeal before a Division Bench explicitly seeking a clarification to exclude the NONI mark from the scope of the injunction, openly admitting that without such a modification, they could face contempt consequences. The Division Bench had explicitly refused to grant that clarification, leaving the decision to the single judge handling the contempt application. This established beyond doubt that the defendants were fully aware that their conduct fell within the prohibitive scope of the injunction.

​Furthermore, the court invoked the established safe distance rule in intellectual property litigation. Under this principle, once a business is caught infringing a trademark or copyright and is placed under an injunction, it is legally obligated to stay completely clear of the margins of the plaintiff's property. The infringer cannot make minor, trivial adjustments to its mark or packaging and claim compliance. The court noted that the defendants failed to maintain this safe distance. The court also discarded the defense concerning the employee's mistake regarding the NOVA MINI labels, calling it an untenable and fabricated explanation, especially given the extensive commercial volume discovered.

​Final Decision of the Court

​The court found the defendants guilty of deliberate, calculated, and willful contempt of the injunction order dated November 24, 2010. In determining the appropriate penalties, the court took note of the advanced age of the first defendant and decided not to order civil imprisonment. However, the court determined that the contumacious commercial exploitation of the plaintiff's intellectual property required strict economic penalties to uphold the dignity of judicial orders.

​The court allowed the interim application in terms of the prayers seeking a declaration of guilt, implementation of enforcement measures, and disclosure of assets. The first defendant was directed to pay the plaintiff actual legal costs amounting to Rs. 32,42,868 within four weeks, subject to detailed verification on affidavit. Additionally, exercising its discretion under Section 35 of the Code of Civil Procedure as amended by the Commercial Courts Act, 2015, read with the inherent powers under Section 151, the court levied exemplary and punitive costs of Rs. 50,00,000 against the first defendant due to their dishonest conduct and false statements on oath. The defendants were ordered to submit a comprehensive statement of accounts detailing all sales under the counterfeit labels, the NONI label, and the NOVA MINI mark since inception. The court explicitly directed that if the defendants failed to pay the costs or provide the mandatory sales disclosures within the stipulated four weeks, their entire legal defense in the main commercial suit would be struck off automatically. A subsequent request by the defendants to stay the operation of this order was summarily rejected.

​Point of Law Settled

​This judgment reaffirms and solidifies two vital legal propositions. First, it clarifies that a subsisting statutory trademark registration cannot be used as a defense or a shield to excuse the willful violation of a separate copyright injunction protecting an artistic work layout. When an injunction restrains the use of a specific trade dress or artistic work, the introduction of a registered word mark over that identical visual trade dress amounts to contempt. Second, the ruling underscores that in commercial litigations, the safe distance rule applies strictly to post-injunction modifications. An enjoined party must actively alter its branding to avoid any deceptive proximity to the protected mark, and any failure to do so will be viewed as a willful, punishable breach rather than an innocent commercial overlap.

​Title of the Case: Dr. Ashok M. Bhat Vs Harichand Nagpal & Ors.

Date of Judgment: 13-07-2026

Case Number: Interim Application (L) No. 9324 of 2025 in Commercial IP Suit No. 378 of 2021

Name of Court: High Court of Judicature at Bombay (Commercial Division)

Name of Hon'ble Judge: Arif S. Doctor, J.

​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 a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

​Headnote of the Judgment:

In a commercial intellectual property suit, the plaintiff secured an interim injunction in November 2010 restraining the defendants from using the trademark NOVA and the plaintiff's registered green geometric artistic labels. The plaintiff later discovered the defendants selling brilliantine cream under the mark NONI using the identical green artistic trade dress, alongside products marked NOVA MINI. The plaintiff moved contempt applications under Order XXXIX Rule 2A of the Civil Procedure Code. The High Court of Bombay held that the correctness of an injunction cannot be re-argued in contempt proceedings. Comparing the labels, the court found the defendants fully aware of the restriction, having previously been denied an appellate clarification. Applying the safe distance rule, the court found the breach willful and deliberate. The court allowed the application, imposing Rs. 32,42,868 as legal costs and Rs. 50,00,000 as exemplary costs, ordering complete sales disclosures on pain of striking out the defense.

​Suggested SEO Tags:

Bombay High Court, Trademark Infringement, Copyright Contempt, Order 39 Rule 2A, Civil Procedure Code, Intellectual Property Law, Nova Trademark, Noni Label Case, Commercial IP Suit, Exemplary Costs, Legal Writeup, Trade Dress Infringement, Safe Distance Rule, Willful Disobedience, Injunction Breach, Section 35 CPC, Commercial Courts Act, High Court Judgments, Patent Attorney Delhi, Trademark Attorney India, Strike Off Defense, Market Deception, Passing Off Cosmetics, Judicial Orders Accountability, Contempt Financial Penalty, AdvocateAjayAmitabhSuman, IPAdjutor

​Suggested SEO Titles:

1. ​Bombay High Court Imposes Massive Exemplary Costs for Trademark Injunction Breach
2. ​Order 39 Rule 2A CPC: The Safe Distance Rule in Trademark Contempt Explained
3. ​How Independent Trademark Registration Fails as a Defense in Copyright Contempt
4. ​Comprehensive Analysis of the Nova vs Noni Label Contempt Judgment by Bombay High Court
5. ​Striking Off Legal Defense: The Price of Willful Disobedience in Commercial Suits
6. ​Bombay High Court Reaffirms Finality of Interim Injunctions in Intellectual Property Matters
7. ​Intellectual Property Enforcement: Understanding Penalties for Copying Registered Artistic Labels
8. ​Strict Liability in Commercial Contempt: The Bombay High Court Precedent
9. ​Why Minor Visual Modifications Can Still Trigger Contempt in Trademark Lawsuits
10. ​The Safe Distance Rule: Legal Consequences for Habitual Counterfeiters in India