Tuesday, June 9, 2026

SC-J.R. Kapoor Vs. Micronix India

MICROTEL vs. MICRONIX: When a Former Partner Starts a Rival Business — The Supreme Court on Trade Mark Similarity, Phonetic Distinction, and the Limits of Interim Injunction

Introduction

When a business partnership breaks down and one partner walks away to start a competing venture, the seeds of a trade mark dispute are often sown. The tension between the right of a former partner to carry on a legitimate trade and the right of the continuing entity to protect its established brand identity is a recurring theme in intellectual property litigation in India. How similar must a new trade mark be to an existing one before a court steps in with an injunction? Is the presence of a common descriptive prefix enough to restrain a competitor? How important is the visual and phonetic comparison of marks in deciding whether a buyer is likely to be confused?

These questions were squarely presented before the Supreme Court of India in J.R. Kapoor v. Micronix India, decided on August 10, 1994, and reported as 1994 Supp (3) SCC 215. The case arose from the dissolution of a partnership firm engaged in the business of manufacturing and selling electrical and electronic goods, and the subsequent decision of one of the partners to strike out independently with a new brand. The judgment, delivered by Justice P.B. Sawant, is a short but instructive ruling on the principles governing interim injunctions in trade mark disputes — particularly on the question of what degree of similarity between two marks justifies restraining one party at an interlocutory stage. It is a case that reminds us that not every common syllable in two trade marks creates confusion, and that courts must look carefully at the entirety of a mark — its phonetics, its visual appearance, its colour, its design — before concluding that buyers will be misled.

Factual and Procedural Background

The facts of this case trace back to the year 1977. A partnership firm named Micronix India was engaged in the business of manufacturing and selling various electrical and electronic goods including cable TV equipment, aerial boosters, solid state boosters, and other electronic instruments and apparatus. The firm had been operating since September 21, 1977. It had a registered trade mark, namely "MICRONIX," and a corresponding logo — the letter "M" with the letter "T" drawn inside the well of the "M," both written in black and white. The trade mark itself was also in black and white. J.R. Kapoor, the appellant, was one of the partners of this firm alongside the respondent-plaintiff, Micronix India.

Over the years, however, the partnership soured. On February 14, 1992, the partnership was formally dissolved by a consent order filed in Suit No. 494 of 1991, which had been instituted before the Court of the Sub-Judge, Delhi. Under the terms of this compromise, the registered trade mark "MICRONIX" along with the associated goodwill was allotted to the respondent-plaintiff, Micronix India. J.R. Kapoor walked away from the firm.

After the dissolution of the partnership, J.R. Kapoor set up his own business to manufacture and sell more or less the same range of electrical and electronic products — the very field he had been working in as a partner of Micronix India. For his new venture, he chose the trade name "MICROTEL." He also adopted a new logo — a single stylised letter "M" designed in bold, broad letters, with the left leg of the "M" being slightly slimmer than the other parts, and with white lines drawn across it. This logo was in blue colour. The trade name "MICROTEL," when written, was in thick bold red letters, without any design surrounding it.

Micronix India was not pleased. It proceeded to file a suit against J.R. Kapoor seeking a permanent injunction restraining him from using the trade name "MICROTEL," the logo "M," and the packing carton he used for his products. Along with the main suit, an application was moved for an ad interim injunction to restrain the appellant during the pendency of the proceedings.

The learned Single Judge of the Delhi High Court granted the interim injunction, restraining the appellant from using his trade name, his logo, and his carton. The appellant challenged this before a Division Bench of the Delhi High Court, but the Division Bench summarily dismissed the appeal by its judgment and order dated October 15, 1993, passed in F.A.O. (OS) No. 229 of 1993. The appellant then approached the Supreme Court of India by way of a Special Leave Petition, which was registered and heard as Civil Appeal No. 2253 of 1994.

The Dispute Before the Supreme Court

The Supreme Court made it clear at the outset that at this stage of the proceedings, it was concerned only with one narrow question: whether the High Court was right in exercising its jurisdiction to grant an interim injunction restraining the appellant from using his trade name "MICROTEL," his logo "M," and his carton. The court was not making any final determination on the merits of the suit, and expressly stated that any findings or observations in its order would be confined to the interim stage. The main suit was still pending before the trial court, and the final conclusions were to be reached only after the full evidence of both sides had been examined.

Before the Supreme Court, the respondent's counsel argued in support of the injunction. It was contended that both parties were operating in the same market, selling similar electrical and electronic products, and that the similarity between the two trade marks — both beginning with the word "MICRO" — was likely to confuse buyers. The respondent's counsel also drew the court's attention to certain alleged similarities in the cartons used by both parties. It was pointed out that the respondent's carton mentioned the words "MODEL TB-212 (indoor type)" while the appellant's carton used the words "MODEL MT-212 (Indoor Unit)," suggesting a resemblance in the model number "212." It was further pointed out that both cartons contained the phrase about suitability for "Colour Black and White TVs & FM Radio," and the same address, "New Delhi-110020," appeared on both cartons.

The appellant, in response, contended that the word "MICRO" was an entirely common and descriptive term — one that merely described the micro-chip technology used in manufacturing electronic goods — and that no party could claim a monopoly over it. The real distinguishing feature of any trade mark in this field, the appellant argued, was the suffix that followed "MICRO," and the suffixes "TEL" and "NIX" were entirely different from each other — both phonetically and visually.

Reasoning and Analysis of the Court

The Supreme Court, through Justice P.B. Sawant, approached the question methodically by examining the two trade marks from multiple angles — the nature of the common prefix, the phonetic comparison of the suffixes, the visual impression of the trade names, the comparison of the logos, and finally the comparison of the cartons.

On the Word "MICRO" as a Descriptive Term

The court began by dealing with the prefix "MICRO" which was common to both trade marks — "MICRONIX" and "MICROTEL." It observed that the appellant was not manufacturing only one product, such as boosters. He was producing a wide range of electrical and electronic apparatus, many of which used micro-chip technology as their base. Even the boosters manufactured by the appellant were of two types — transistorized boosters and Integrated Circuit boosters — while the respondent-plaintiff manufactured only the first type, aerial boosters. Given that micro-chip technology was the foundation of so many electronic products coming to the market daily, the court held that the word "micro" was descriptive of the technology used in the manufacture of such products. No one could claim a monopoly over the use of the word "micro." Anyone producing electronic goods with micro-chip technology would be fully justified in using "micro" as a prefix in their trade name. Furthermore, the court observed that those who are familiar with electronic goods and who regularly use them are unlikely to be misguided or confused by the mere presence of the prefix "micro" in any trade name. With this reasoning, the court effectively set aside the common prefix from the comparison and directed its attention to the distinguishing parts of the two marks.

On Phonetic Comparison of the Suffixes

Having excluded "MICRO" as a common descriptive word, the court focused on the only question that remained: whether the words "TEL" and "NIX" — the suffixes in "MICROTEL" and "MICRONIX" respectively — were so similar as to deceive buyers or create confusion between the two products. The court's answer was clear and unequivocal. Phonetically, "TEL" and "NIX" are totally dissimilar. They do not sound alike. They cannot, by any stretch of imagination, be confused when spoken. The court concluded that there was no phonetic similarity between "MICROTEL" and "MICRONIX" that could cause a buyer to purchase one product mistaking it for the other.

On the Visual Appearance of the Two Trade Names

Beyond phonetics, the court examined the visual impression created by the two trade names. The respondent's trade name "MICRONIX" was written in black and white, in slimmer letters, and was surrounded by a design of elongated triangles both above and below the name — giving it a distinctive visual character. By contrast, the appellant's trade name "MICROTEL" was written in thick, bold letters in red colour, without any design surrounding it. The font, the colour, and the overall visual presentation of the two names were entirely different. The court found it difficult to understand how the visual effect of these two trade names could be the same in the mind of any buyer.

On the Comparison of the Logos

The court then compared the logos of the two parties in considerable detail. The respondent's logo was a composite design — it consisted of the letter "M" in a slim typeface, with the letter "T" sporting a dot on it and drawn within the well of the "M." Below the letter "M," in small letters, was written the word "MICRONIX." All these letters and words were written in white against a black square background oriented in the north-south direction. It was, therefore, a composite logo — two letters combined in a particular artistic manner, set against a distinctive background, accompanied by the full trade name in small print.

The appellant's logo, by contrast, was entirely different in conception and execution. It was a single letter "M," drawn in a bold and broad style, with the left leg of the letter being slightly slimmer than the other parts, which were in thick broad brushstrokes. White lines were drawn across the letter, and the entire logo was in blue colour. There was no other letter, no accompanying word, and no background against which the "M" was set. It stood alone, striking and self-contained.

The court's comparison of these two logos led it to the firm conclusion that there was not even a remote chance that buyers and users would be misguided or confused by these two logos. The logos were visually, conceptually, and artistically distinct. A buyer who had seen one would not confuse it with the other.

On the Comparison of the Cartons

Having concluded that neither the trade names nor the logos were likely to create confusion, the court turned to the cartons used by both parties. Since the cartons merely reproduced the respective trade names and logos, the court reasoned that the same conclusion applied to the cartons as well — if the marks and logos were sufficiently distinct, the cartons bearing them would not confuse buyers.

The court then addressed the specific arguments made by the respondent's counsel about certain alleged similarities in the text on the two cartons. On the argument about the model number — "MODEL TB-212 (indoor type)" on the respondent's carton versus "MODEL MT-212 (Indoor Unit)" on the appellant's carton — the court found no real resemblance. The model numbers were constructed differently, and the mere coincidence of the numeral "212" was insufficient to establish confusing similarity. On the argument about the phrase relating to suitability for "Colour Black and White TVs & FM Radio," the court observed that these were standard product descriptions applicable to all similar products in the market — no party could claim exclusivity over such generic functional descriptions. On the argument about both cartons showing the address "New Delhi-110020," the court dismissed this summarily by observing that no one can claim monopoly over an address. The fact that both parties were based in the same part of Delhi could not, by itself, constitute a similarity that warranted restraint. Finally, the court noted that while the respondent's carton was in black and white, the appellant's carton was fully in colour — a difference that further distinguished the two products visually.

On the Standard for Interim Injunction in Trade Mark Matters

Underlying the court's entire analysis is an important principle about the standard to be applied when a court is asked to restrain a party from using a trade mark at the interim stage. The court made clear that the test is whether there is a real likelihood of buyers being misguided or confused — not merely a theoretical or remote possibility. The focus must be on the cumulative impression created by the mark in the mind of an ordinary buyer encountering the products in the marketplace. Courts must look at the entirety of the mark — its phonetics, its visual appearance, its colour scheme, its design — and not isolate one element to build a case for similarity. Where, after such holistic examination, the court finds that there is not even a remote chance of confusion, it should not restrain the use of the mark at the interim stage.

The Final Decision

The Supreme Court allowed the Civil Appeal filed by J.R. Kapoor. It set aside the impugned order of the High Court which had granted the interim injunction. The appellant was thus freed to continue using his trade name "MICROTEL," his logo "M," and his carton during the pendency of the suit. The court expressly clarified that all observations and findings in the order were confined to the interlocutory stage and would not bind the High Court when it came to decide the suit on its merits after examining the full evidence produced by both parties. On the question of costs, the court directed that costs would be costs in the cause — meaning they would ultimately be determined by the result of the main suit.

Points of Law Settled

The judgment in J.R. Kapoor v. Micronix India settles and consolidates several important legal propositions in the law of trade marks and interim injunctions.

The first and most significant principle settled is that a word or prefix which is purely descriptive of a product or the technology used in its manufacture is a common word over which no trader can claim monopoly. The word "micro," being descriptive of micro-chip technology widely used in electronic goods, falls in this category. Therefore, the mere coincidence of a common descriptive prefix in two trade marks is an insufficient basis for granting an interim injunction against one of them.

The second principle is that in trade mark comparison, once a common descriptive element is excluded from consideration, the court must focus on the distinctive elements of each mark — here, the suffixes "TEL" and "NIX" — and determine whether those elements are phonetically or visually similar. Where the distinctive portions of two marks are wholly different from each other in sound and appearance, there can be no basis for finding confusing similarity.

The third principle is that in assessing the likelihood of confusion, the court must undertake a holistic comparison of the marks — looking at phonetics, visual appearance, colour, font, design, and the overall impression created in the mind of an ordinary buyer. A piecemeal comparison that focuses on one element in isolation, while ignoring the overall distinction between the marks, is not a sound basis for granting an interim injunction.

The fourth principle is that no trader can claim exclusivity or monopoly over a common address, a standard product description, or other generic information that naturally appears on any commercial product. Such common elements cannot constitute the basis for a finding of confusing similarity in trade mark proceedings.

The fifth principle, though implicit, is important in the specific context of former partnership disputes. The fact that a former partner sets up a competing business in the same field does not, by itself, entitle the continuing entity to an injunction against the former partner's trade mark. The comparison of the marks must still be conducted on its own merits, applying the ordinary principles of trade mark law, without being prejudiced by the business history between the parties.

Case Details

Title: J.R. Kapoor Vs. Micronix India

Court: Supreme Court of India

Bench: P.B. Sawant and S.C. Agrawal, JJ.

Case Number: Civil Appeal No. 2253 of 1994

Date of Order: August 10, 1994

Neutral Citation: MANU/SC/1166/1994

Equivalent Citations: 1994(2) ARBLR 274 (SC); JT 1994(5) SC 37; 1994(14) PTC 260 (SC); 1994(3) SCALE 732; 1994 Supp (3) SCC 215; [1994] Supp 2 SCR 567; 1994(2) UJ 717

From: Judgment and Order dated October 15, 1993, of the Delhi High Court in F.A.O. (OS) No. 229 of 1993

Name of Hon'ble Judge (Author of Judgment): Justice P.B. Sawant, J.

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

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

Suggested SEO Titles

MICROTEL vs. MICRONIX: Supreme Court on Trade Mark Similarity and Interim Injunction — J.R. Kapoor v. Micronix India (1994)

When a Common Prefix Is Not Enough: Supreme Court Refuses Trade Mark Injunction in J.R. Kapoor v. Micronix India

Descriptive Trade Mark Prefix and Phonetic Dissimilarity: Lessons from J.R. Kapoor v. Micronix India 1994 SCC

Trade Mark Dispute Between Former Partners: How the Supreme Court Analysed MICROTEL vs. MICRONIX

Holistic Comparison of Trade Marks in India: J.R. Kapoor v. Micronix India and the Law of Interim Injunction

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Headnote

J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215

Supreme Court of India | P.B. Sawant and S.C. Agrawal, JJ. | Civil Appeal No. 2253 of 1994 | Decided August 10, 1994

The appellant, a former partner of the respondent-plaintiff firm Micronix India, which had a registered trade mark "MICRONIX" (with logo "MT" in black and white), set up an independent business after dissolution of the partnership on February 14, 1992, adopting the trade name "MICROTEL" and a new logo — a bold blue letter "M" with no other letters or background. Both parties manufactured and sold similar electrical and electronic goods. The respondent filed a suit for injunction against the appellant's use of the trade name "MICROTEL," the logo "M," and the packing carton. The learned Single Judge of the Delhi High Court granted an interim injunction, which the Division Bench confirmed. On appeal, the Supreme Court held: (i) the word "micro" being purely descriptive of micro-chip technology used in manufacturing electronic goods, no trader could claim monopoly over it, and its presence as a common prefix in both trade names was an insufficient basis for injunction; (ii) the suffixes "TEL" and "NIX" were phonetically totally dissimilar and incapable of creating confusion in the mind of buyers; (iii) the visual appearance of the trade names was entirely different — "MICRONIX" in slim black and white letters surrounded by elongated triangle designs versus "MICROTEL" in thick bold red letters with no surrounding design; (iv) the logos were wholly distinct in design, colour, and overall impression; (v) the cartons, which merely reproduced the respective marks and logos, were similarly distinct; (vi) generic information such as a common address or standard product descriptions cannot found a claim of trade mark similarity; (vii) not even a remote chance of buyers being misguided or confused existed on the facts. Interim injunction set aside. The suit was left to proceed before the High Court for final determination on evidence.

Trade Marks Act — Passing off — Interim injunction — Descriptive prefix — Phonetic dissimilarity — Visual comparison — Logo — Carton — Former partner — Common address — No monopoly over descriptive word.

SC-Novartis AG Vs. Union of India

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The Gleevec Verdict: India's Supreme Court Draws the Line Against Evergreening in Novartis AG v. Union of India

Introduction

Few patent law judgments anywhere in the world have generated as much attention, debate, and global consequence as the Supreme Court of India's decision in Novartis AG v. Union of India, delivered on April 1, 2013. At its core, this case was about a cancer drug called Gleevec or Glivec, marketed by Novartis AG, a Swiss multinational pharmaceutical giant, and whether the drug's active substance in a particular crystal form deserved a patent in India. But the implications reached far beyond one drug or one company. The judgment went to the very heart of the tension between the rights of patent-holding pharmaceutical corporations and the right of millions of patients in developing countries to access life-saving medicines at affordable prices. It also addressed, for the first time with such depth and clarity by the Supreme Court, the meaning of "evergreening," the controversial practice by which pharmaceutical companies seek to extend their patent monopoly by making minor tweaks to an already known substance and claiming a fresh patent for the slightly modified version. The Court's ruling, written by Justice Aftab Alam (with Justice Ranjana P. Desai concurring), was a resounding rejection of Novartis's patent claim and a definitive statement that Indian patent law, as amended in 2005, imposes a high bar for the patentability of pharmaceutical products, one that is deliberately higher than that set by many Western patent systems.

Factual and Procedural Background

The story of this litigation begins with a German scientist named Dr. Jürg Zimmermann, who invented a class of compounds called N-phenyl-2-pyrimidine-amine derivatives. One of these compounds was Imatinib, which was found to have remarkable anti-tumoral properties and became the key ingredient in a drug for the treatment of chronic myeloid leukaemia and certain types of tumours. Dr. Zimmermann filed an application for patent for these compounds in the United States on February 4, 1993, which later became US Patent No. 5,521,184, granted on May 28, 1996. This patent, commonly called the Zimmermann Patent, covered Imatinib and its pharmaceutically acceptable salts, including Imatinib Mesylate, which is the methanesulfonic acid addition salt of Imatinib. After Ciba Geigy merged with Sandoz in 1996, the resulting company became Novartis AG, the appellant in this case.

Gleevec or Glivec, as it is known commercially, is directly derived from the Zimmermann Patent. Novartis has always maintained that Gleevec is fully covered by Zimmermann Patent No. 5,521,184. In the United States, Novartis sought and obtained extension of the Zimmermann Patent's term for the period of regulatory review for Gleevec. When a US company called NATCO sought to market its drug Veenat 100 (containing Imatinib Mesylate as its active ingredient) in the United Kingdom, Novartis successfully stopped it on the basis of the Zimmermann Patent. Before filing its Indian patent application, Novartis made an application in 2002 for the grant of Exclusive Marketing Rights (EMR) for the subject product under Section 24-A (since omitted) of the Patents Act, 1970. The Patent Office granted EMR to the appellant in 2003.

Now comes the critical point of the case. Novartis AG filed an application on July 17, 1998, before the Indian Office of Controller of Patents and Designs, for grant of a patent not for Imatinib or Imatinib Mesylate (the known salt), but specifically for the beta-crystalline form of Imatinib Mesylate, which Novartis referred to as beta-IM or β-IM. The priority date claimed was July 18, 1997, being the date on which the patent was applied for in Switzerland. The Indian Patent Office put the application on hold by adopting the mailbox procedure on account of expected changes in the patent regime in India. It was only after the Patents Act, 1970, was amended in 2005, that the application was taken up for consideration.

On January 25, 2006, the Assistant Controller of Patents vide five separate orders rejected the appellant's patent claim for β-IM, holding that the invention claimed by the appellant was anticipated by prior publication, specifically by Zimmermann Patent No. 5,521,184, and that the same was obvious to a person skilled in the art in view of the disclosures provided in Zimmermann Patent No. 5,521,184 specifications. The Assistant Controller further held that the patentability of the alleged invention was disallowed by Section 3(d) of the Patents Act as amended.

Aggrieved, Novartis appealed to the Intellectual Property Appellate Board (IPAB). By its order dated June 26, 2009, the IPAB held that although β-IM satisfied the test of invention/inventive step prescribed in Sections 2(1)(j) and (ja) of the Patents Act, 1970, it failed the test of enhanced efficacy prescribed in Section 3(d) thereof. The IPAB dismissed the appeals filed by the appellant on this ground. However, in a partial relief to Novartis, the IPAB held that the appellant could not be denied a process patent for the preparation of β-IM. The appellant challenged the IPAB order before the Supreme Court of India directly under Article 136 of the Constitution. The parties who had opposed the patent claim before the authorities below, including Cipla Ltd., NATCO Pharma Limited, the Cancer Patients Aid Association, and others, were permitted to file SLPs in the Supreme Court against the partial ruling in favour of the appellant regarding the process patent. Thus, all parts of the IPAB order were appealed against, and all issues were open for determination by the Supreme Court. The Civil Appeals before the Supreme Court were Civil Appeals Nos. 2706-716 of 2013 (with Civil Appeal No. 2728 of 2013 and Civil Appeals Nos. 2717-27 of 2013).

The Dispute

Before the Supreme Court, the central question was deceptively simple but deeply consequential: could Novartis AG obtain an Indian patent for the beta-crystalline form of Imatinib Mesylate (β-IM), which it marketed as Gleevec/Glivec for the treatment of chronic myeloid leukaemia? This question broke down into several layered issues.

The first was whether β-IM was a new substance altogether, or merely a new form of an already known substance. This was crucial because Section 3(d) of the Patents Act, 1970, as amended in 2005, specifically deals with the situation where a new form of a known substance is claimed for patent, and imposes a requirement that the new form must show significantly enhanced efficacy compared to the known substance.

The second was what the correct legal test for "invention" was under Indian law, specifically under Sections 2(1)(j) and 2(1)(ja) of the Patents Act, 1970. Did β-IM satisfy this test?

The third, and perhaps the most intensely debated, question was the meaning, scope, and applicability of Section 3(d) of the Patents Act, 1970, as amended by the Patents (Amendment) Act, 2005. Novartis strenuously argued that Section 3(d) was an exception provision, operating only in the manner of a caution or as an "ex majore cautela" clause, and that if an applicant passed the test of invention under Sections 2(1)(j) and (ja), it could not be denied a patent merely on the basis of Section 3(d). The respondents argued the opposite: that Section 3(d) represented an independent and additional tier of requirement for chemical substances and pharmaceuticals, deliberately designed to prevent evergreening.

The fourth question was what "efficacy" meant under Section 3(d) and its Explanation. Novartis argued that β-IM had enhanced bioavailability (it was 30% more bioavailable than Imatinib in free base form), and that bioavailability was a form of efficacy. The respondents argued that "efficacy" in the context of a medicine must mean therapeutic efficacy, that is, the ability to cure or treat the disease for which the medicine is prescribed, and that mere physicochemical properties or enhanced bioavailability did not constitute enhanced therapeutic efficacy.

Novartis submitted before the Supreme Court through its Senior Advocate Mr. Gopal Subramanium that both Imatinib Mesylate and β-IM were new products produced as a result of two inventions; that beginning from Imatinib-in-free-base-form, in a two-stage invention they first produced Imatinib Mesylate and then developed β-IM; that Zimmermann Patent No. 5,521,184 did not teach a person how to prepare Imatinib Mesylate from Imatinib-in-free-base; and that Section 3(d) operated only ex majore cautela and was not meant to be an exception to the test of invention. The respondents, including Cipla Ltd. through Senior Advocate Mr. Harish Salve and Mr. Harish Salve and Ranbaxy through Ms. Prathiba Singh, strongly opposed all these positions.

Reasoning and Analysis of the Court

The Supreme Court's judgment, authored by Justice Aftab Alam (Justice Ranjana P. Desai concurring), is a masterly piece of legal analysis that combines an examination of the statutory provisions, their legislative history, the parliamentary debates, international treaty obligations, and the specific facts of the case.

The Court began by setting out the framework of the Patents Act, 1970, noting that "invention" and "patentability" are two distinctly separate concepts under Indian law. Section 2(1)(j), which defines "invention," requires a new product or process involving an inventive step that is capable of industrial application. Section 2(1)(ja) defines "inventive step" as a feature of an invention that involves technical advance as compared to existing knowledge or economic significance, or both, and that makes the invention not obvious to a person skilled in the art. Section 2(1)(ac) defines "capable of industrial application" as a product that is capable of being made or used in an industry. Together, these provisions mean that to qualify as an invention under Indian law, a product must be new (not anticipated), must involve an inventive step (not obvious), and must be capable of industrial application. The Court emphasized that something may be an "invention" in the general sense and yet may not qualify as a patentable invention under the 1970 Act, and something may even satisfy the definition of "invention" under the 1970 Act and yet be denied a patent for other larger considerations, as stipulated in Section 3 of the Act.

Section 3 of the Patents Act lists things that "are not inventions within the meaning of this Act." Section 3(d), as amended in 2005, is the provision that became the epicenter of this litigation. It states that the following shall not be deemed to be an invention: "the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant." The Explanation to Section 3(d) is equally significant: "For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy."

The Court then undertook a detailed examination of the legislative history and parliamentary debates around the 2005 amendment to determine the precise intent of Section 3(d). The Court found that India had an absolutely unenviable task in amending the Patents Act, 1970, to make it TRIPS-compliant without compromising on public health considerations. The TRIPS Agreement had aroused grave concerns about its impact on public health, particularly the inverse relationship between product patents in pharmaceuticals and the availability of essential medicines at affordable prices. The Court noted that India had, after the patent system in India barred the grant of patents for pharmaceutical and chemical substances, developed a pharmaceutical industry that became a major supplier of drugs at cheap prices to a number of developing and underdeveloped countries. Ninety per cent of the drugs India had been supplying to sub-Saharan Africa for treating AIDS were generic drugs whose prices had dramatically fallen because of the competition. The reintroduction of product patents in the Indian patent system through the TRIPS Agreement became a cause of alarm, particularly from the standpoint of public health and the supply of medicines to poor countries.

In Parliament, the government introduced Section 3(d) as the specific provision that would prevent the abuse of product patents in pharmaceutical substances and check the practice of evergreening. In fact, the Court noted that the whole Parliamentary debate on the Patents Amendment Bill centred on medicines and drugs, with about 80% of the debate focusing on medicines and drugs and the remaining 20% on agricultural chemicals. The Court held that the amended portion of Section 3(d) of the 1970 Act sets up a second tier of qualifying standards for chemical substances and pharmaceutical products in order to leave the door open for true and genuine inventions but, at the same time, to check any attempt at repetitive patenting or extension of the patent term on spurious grounds.

On the question of whether Section 3(d) was an ex majore cautela clause or an independent substantive provision, the Court firmly rejected Novartis's argument. The Court held that Section 3(d) is not a provision ex majore cautela and is applicable to the subject product β-IM. The submission of Novartis that Section 3(d) has no application to the subject product because it has satisfied the tests of invention as provided in Sections 2(1)(j) and (ja) was completely misconceived, for the reason that Section 3 was designed to defeat an application for patent which passed through the definition of invention. Section 3 was not a mere cautionary provision; it was a substantive disqualifying provision. If clause (d) is isolated from the rest of Section 3, and the legislative history behind the incorporation of Chapter II in the Patents Act, 1970, is disregarded, then it may be possible to see Section 3(d) as an extension of the definition of "invention" and to link Section 3(d) with Sections 2(1)(j) and (ja). In that case, on reading Sections 2(1)(j) and (ja) with Section 3(d), it would appear that the 1970 Act sets different standards for qualifying as "inventions" — for medicines and drugs and other chemical substances, the 1970 Act sets the invention threshold further higher, by virtue of the amendments made in Section 3(d) in the year 2005.

Next, the Court turned to the specific facts to determine whether β-IM was covered by Zimmermann Patent No. 5,521,184. Novartis had argued that Zimmermann Patent No. 5,521,184 did not teach how to prepare Imatinib Mesylate from Imatinib free base. The Court examined the Zimmermann Patent in painstaking detail, noting that the patent related to N-phenyl-2-pyrimidine-amine derivatives, that Example 21 in the patent exemplified Imatinib (referred to as CGP 57148), and that Claim 23 listed Imatinib along with its pharmaceutically acceptable salts. A key article from the journal Cancer Research, published in January 1996, further showed that even before the Indian patent application, there was a detailed discussion about the anti-tumoral properties of Imatinib and its methanesulfonate salt (i.e., Imatinib Mesylate), with CGP 57148B referring specifically to Imatinib Mesylate. Critically, the US Board of Patent Appeals, in the case of the appellant itself, when granting US Patent Zimmermann Patent No. 6,894,051 B1 for β-IM, had proceeded on the basis that Zimmermann Patent No. 5,521,184 had the teaching for making of Imatinib Mesylate from Imatinib for any person skilled in the art. The Court noted the deeply ironic position Novartis found itself in: in the United States it had always maintained that Gleevec was part of Zimmermann Patent No. 5,521,184, used that position to extend the patent term, and relied on the Zimmermann Patent to stop NATCO from marketing its generic drug in the UK. But before the Indian authorities, it was now claiming that Imatinib Mesylate was not taught by or covered by the Zimmermann Patent. The Court held that Novartis was bound by the finding recorded in its own case in the United States. Accordingly, "Imatinib Mesylate" was a known substance under Zimmermann Patent No. 5,521,184. Therefore, β-IM was a new form of a known substance, and Section 3(d) was directly applicable.

On the question of what "efficacy" means for the purposes of Section 3(d) of the Patents Act as applied to medicines, the Court adopted a strict and narrow interpretation. The Court referred to the New Oxford Dictionary of English (1998 Edition) which defines "efficacy" as "the ability to produce a desired or intended result." The Court held that the test of efficacy in each case would depend upon the function, utility or purpose of the product under consideration. In the case of a medicine, the efficacy must be its therapeutic efficacy — its ability to produce the desired therapeutic result, meaning to cure or treat the disease for which it is prescribed. The Court held that mere improvement in physicochemical properties like better flow, thermodynamic stability, lower hygroscopicity, and enhanced bioavailability do not automatically lead to an inference of better therapeutic efficacy. It was absolutely clear, the Court stated, that the physico-chemical properties of β-IM, namely more beneficial flow properties, better thermodynamic stability, and lower hygroscopicity, had nothing to do with therapeutic efficacy. On bioavailability, the Court noted that Novartis claimed that β-IM had 30% increased bioavailability compared to Imatinib in free base form. However, even accepting this claim, the Court reasoned that bioavailability by itself may not necessarily lead to enhanced therapeutic efficacy. The Court relied on a medical commentary which stated that bioavailability studies are meant to determine the rate and extent of absorption of a drug substance; if a drug product is not bioavailable, it cannot be regarded as effective, but a determination that a drug product is bioavailable is not in itself a determination of effectiveness. The Court further noted that the enhanced therapeutic efficacy of β-IM over Imatinib Mesylate had to be specifically claimed and established by research and empirical data, and this had not been done. Indeed, the Court pointed to the clear and unambiguous averments in the subject Indian patent application, in which all the references were to Imatinib in free base form (or to the alpha crystalline form of Imatinib Mesylate in respect of flow properties, thermodynamic stability, and lower hygroscopicity), but there was no claim of any therapeutic advantage for β-IM over Imatinib Mesylate itself.

The Court also addressed an important factual point regarding the drug Gleevec as actually marketed in India (and also in the United States). Gleevec/Glivec was described on its package as "Imatinib Mesylate tablets 100 mg" with no reference to β-IM at all. This meant that the claim for a patent for β-IM was actually an attempt to obtain a patent for "Imatinib Mesylate," which would otherwise be impermissible given the Zimmermann Patent's coverage. The Court found this an attempt to obtain patent for "Imatinib Mesylate" which would otherwise be impermissible.

The Court also addressed the broader principle of patent coverage versus patent disclosure. Indian patent law, the Court held, does not permit the scope of patent coverage or claims to be wider than the disclosures or teachings contained in the patent. A limited monopoly is granted to the patentee in return for making his knowledge available to the public domain. Patent coverage or claim cannot be wider than the disclosures and teachings contained in the patent. This was significant because Novartis, in claiming that its Indian patent application covered a new and separate product from the Zimmermann Patent, was effectively trying to claim protection beyond what it had disclosed.

The Court also rejected Novartis's argument that Indian patent law should be aligned with the standard of a "manipulative step" used in United States patent law. In the United States, when the US Board of Patent Appeals granted β-IM a patent, it recognized it as involving a "manipulative step" which may not necessarily involve an "inventive step." The Court held that the standard under Indian law is "inventive step," not "manipulative step," and the two are clearly different things. The requirement of "inventive step" under Indian law is a higher standard than the "manipulative step" recognized in the US context. Indian patent law, the Court stated, lays down a high requirement of "inventive step" in Section 2(1)(ja) and "enhanced efficacy" in Section 3(d) for incremental improvements of known substances or processes to qualify for patent protection. Standard of inventiveness is high under Indian patent law, and patent law in India should not develop in a manner where the scope of patent is determined based not on the intrinsic worth of the invention but by artful drafting of its claims by skilful lawyers, where patents are traded as a commodity not for production and marketing of patented products but to search for someone who may be sued for infringement.

Final Decision of the Court

The Supreme Court dismissed the appeals filed by Novartis AG with costs. It held that the subject product, β-crystalline-Imatinib Mesylate (β-IM), failed both the test of invention under Sections 2(1)(j) and (ja) of the Patents Act, 1970, and the test of enhanced efficacy/patentability as laid down under Section 3(d) read with its Explanation. The Court therefore held that β-IM was not entitled to the grant of an Indian patent. The Court further dismissed the cross-appeals of the other parties (Cipla, NATCO, Cancer Patients Aid Association, and others) against the partial relief granted by the IPAB in favour of Novartis regarding the process patent, holding that the question of a process patent for β-IM was not strictly a part of the subject matter before the Court.

Points of Law Settled in the Case

This judgment settled several vital and enduring principles of Indian patent law, particularly in relation to pharmaceutical products.

The most foundational principle established is that "invention" and "patentability" are two distinctly separate and cumulative concepts under the Patents Act, 1970. A substance may satisfy the definition of "invention" under Sections 2(1)(j) and (ja) and yet be denied a patent if it fails the requirements of Section 3(d). Section 3(d) is not an ex majore cautela provision; it is a substantive, independent tier of qualifying standards specifically for chemical substances and pharmaceuticals.

The Court definitively interpreted the meaning of "efficacy" under Section 3(d) and its Explanation for the purpose of pharmaceutical products: efficacy means therapeutic efficacy, that is, the ability of the medicine to produce its desired therapeutic result in treating the disease for which it is prescribed. Mere improvements in physicochemical properties such as better flow, greater stability, lower hygroscopicity, or improved bioavailability do not by themselves constitute enhanced therapeutic efficacy unless it is specifically established with research and empirical data that the enhanced physicochemical property or bioavailability actually translates into enhanced therapeutic effect.

The Court established that a new pharmaceutical product in the context of Section 3(d) and its Explanation must not mean something entirely new or unfamiliar; it may mean something "different from a recent previous" product or a product "regarded as better than what went before" or a product "in addition to another or others of the same kind." Such new pharmaceutical products, however, must additionally pass the test of enhanced efficacy to qualify for patent protection.

The Court held that the standard of inventiveness under Indian patent law is high, deliberately set to require a genuine technical advance and not merely a manipulative step, in contrast to the US standard. This means that incremental improvements of known pharmaceutical substances or processes, unless they genuinely advance the state of the art in a way that is not obvious to a person skilled in the art and demonstrate enhanced efficacy, will not qualify for patent protection in India.

The Court settled the principle that the scope of a patent claim cannot be wider than the disclosure or teaching contained in the patent. The patentee's monopoly is limited to what has been disclosed in the patent specification. This prevents companies from using artful claim drafting to secure broader protection than they have actually invented and disclosed.

The Court also settled the principle that an applicant for a patent is bound by positions taken and findings recorded in patent proceedings in other jurisdictions, particularly when the applicant itself has relied on those findings. Novartis, having always maintained in the United States and elsewhere that Gleevec was part of the Zimmermann Patent, could not turn around and claim before Indian authorities that Imatinib Mesylate was not disclosed in the Zimmermann Patent.

Case Details

Title: Novartis AG v. Union of India and Others

Date of Order: April 1, 2013

Case Numbers: Civil Appeals Nos. 2706-716 of 2013 (with Civil Appeal No. 2728 of 2013 and Civil Appeals Nos. 2717-27 of 2013)

Citation: (2013) 6 SCC 1

Name of Court: Supreme Court of India

Hon'ble Judges: Aftab Alam, J. and Ranjana P. Desai, J.

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

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

Suggested SEO Titles

Novartis AG Vs. Union of India: The Landmark Supreme Court Ruling That Blocked Gleevec's Indian Patent
Section 3(d) of the Indian Patents Act Explained: The Novartis Gleevec Judgment and Evergreening
India's Supreme Court on Pharmaceutical Patent Evergreening: Novartis Case Analysis 2013
Therapeutic Efficacy vs. Bioavailability in Indian Patent Law: Lessons from the Novartis Judgment
Imatinib Mesylate Patent Denied in India: Complete Legal Analysis of the Novartis Decision
TRIPS, Access to Medicines, and Indian Patent Law: The Novartis Gleevec Case Fully Explained
What Is Evergreening in Patent Law? India's Supreme Court Answers in Novartis v. Union of India
Section 3(d) Patents Act 1970: How India Protects Generic Drug Access — The Novartis Case

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Headnote

Under the Patents Act, 1970, "invention" and "patentability" are two distinct and cumulative concepts. For a pharmaceutical or chemical substance that is a new form of a known substance, the applicant must satisfy not only the test of "invention" as defined in Sections 2(1)(j) and (ja) but also the separate and independent test of enhanced efficacy prescribed in Section 3(d) read with its Explanation. Section 3(d) is a substantive disqualifying provision and not an ex majore cautela clause. For the purposes of Section 3(d) of the Patents Act, 1970, and its Explanation, "efficacy" in the case of a medicine means therapeutic efficacy — the ability of the medicine to cure or treat the disease for which it is prescribed. Mere improvement in physico-chemical properties such as better flow, thermodynamic stability, lower hygroscopicity, or enhanced bioavailability does not constitute enhancement of known efficacy unless specifically established with research and empirical data to result in enhanced therapeutic effect. Beta-crystalline Imatinib Mesylate (β-IM), the active ingredient of the cancer drug Gleevec/Glivec, being a new form of Imatinib Mesylate, which was itself a known substance disclosed in Zimmermann Patent No. 5,521,184, failed both the test of invention and the test of enhanced efficacy, and was accordingly held not entitled to an Indian patent. The standard of inventiveness under Indian patent law is deliberately high and differs from the standard of a "manipulative step" recognized in United States patent law. Indian patent law disallows evergreening and sets up a second tier of qualifying standards for pharmaceutical products to permit genuine inventions while preventing repetitive patenting or extension of patent term on spurious grounds.

Monday, June 8, 2026

GRM Foodkraft Pvt Ltd and Another Vs. KS Agro Impex

GRM Foodkraft Pvt. Ltd. & Anr. Vs. KS Agro Impex & Anr.:29 May 2026: CS(COMM) 637/2024: 2026:DHC:4851:Hon’ble Ms. Justice Jyoti Singh

The Delhi High Court, in a trademark and trade dress passing-off dispute concerning Basmati rice packaging, granted interim protection to GRM Foodkraft Pvt. Ltd. and its affiliate against KS Agro Impex. The plaintiffs alleged that the defendants had copied the distinctive packaging and trade dress of their “10X Zarda King” Golden Sella Basmati Rice product, including the green-and-gold colour scheme, stylised lettering, lanterns, stars, moon imagery, and other visual elements.

The defendants contended that the features relied upon by the plaintiffs were generic, that the word “Zarda” was descriptive and common to trade, and that their prominent “Double Chabi” house mark eliminated any possibility of confusion.

Court held that the test in a passing-off action is the overall impression created by the rival trade dresses and not a side-by-side comparison of differences. The Court found that the defendants had copied several essential and distinctive elements of the plaintiffs’ packaging, resulting in deceptive similarity likely to confuse consumers of average intelligence and imperfect recollection. The Court further observed that the plaintiffs had established substantial goodwill and reputation through significant sales, advertising expenditure, and market presence.

Holding that a prima facie case of passing off was made out, the Court concluded that the defendants’ packaging amounted to “smart copying” of the plaintiffs’ trade dress and upheld the injunction restraining use of the impugned packaging pending disposal of the suit.

Here is a concise legal news-style report:

GRM Foodkraft Pvt. Ltd. & Anr. v. KS Agro Impex & Anr.

Date of Judgment: 29 May 2026

Case No.: CS(COMM) 637/2024

Neutral Citation: 2026:DHC:4335

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Jyoti Singh

Justice Jyoti Singh held that the test in a passing-off action is the overall impression created by the rival trade dresses and not a side-by-side comparison of differences. The Court found that the defendants had copied several essential and distinctive elements of the plaintiffs’ packaging, resulting in deceptive similarity likely to confuse consumers of average intelligence and imperfect recollection. The Court further observed that the plaintiffs had established substantial goodwill and reputation through significant sales, advertising expenditure, and market presence.

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

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Presence of house mark on packaging does not by itself dispel consumer confusion

Introduction:

In the competitive world of fast-moving consumer goods, particularly food products like rice, the visual appearance of packaging often matters more to consumers than the brand name printed on it. A consumer walking into a kirana store or wholesale market relies heavily on colour, design, imagery, and overall visual impression to identify and pick a product they have previously purchased. This reality forms the bedrock of trade dress protection law in India, and the Delhi High Court's judgment in GRM Foodkraft Pvt Ltd v. KS Agro Impex is a significant recent addition to this body of law.

Decided on 29th May 2026, this case deals with the question of whether a rice seller can protect the unique packaging of its product, even without a registered trademark , when a competitor launches a nearly identical-looking product in the market. The Court's answer is a resounding yes, provided the plaintiff can demonstrate goodwill, misrepresentation, and damage, the three classic ingredients of a passing off action. What makes this judgment particularly instructive is the Court's detailed analysis of how the "overall impression" test works in practice, how the presence of a competitor's own house mark does not automatically rescue it from a finding of deceptive similarity, and why rice as a food product demands a lower threshold of deceptive similarity than many other products.

Factual and Procedural Background:

The story of this dispute begins in 1974, when the predecessors of the Plaintiff companies started a rice milling business called Garg Rice & General Mills in Panipat, Haryana. They set up their first milling plant between 1974 and 1979, initially selling only in the domestic market. A second plant followed in 1980, and by 1988 the business had expanded internationally, exporting basmati rice to Saudi Arabia and other Middle Eastern countries. Over the decades, the business grew substantially, and by 2024, Plaintiff No. 2 had a presence in more than 38 countries and was recognised as one of India's leading basmati rice exporters.

Plaintiff No. 1, GRM Foodkraft Pvt Ltd, was incorporated on 7th July 2020 as a wholly owned subsidiary of Plaintiff No. 2, specifically to handle the domestic market. It adopted the house mark "10X" for its range of rice products. In 2021, Plaintiff No. 1 launched Golden Sella Basmati Rice under the sub-brand "Zarda King," using a specially designed, distinctive packaging. This packaging featured a green and gold colour scheme, gold English lettering styled to resemble Urdu or Arabic script, the words "Zarda King" prominently placed in the centre in golden font, hanging lanterns and stars at the top in golden colour, a crescent moon with a star at the top centre, an image of a building resembling Arabic architecture with minarets, and a plate of pulao at the bottom. The trademarks associated with this packaging were assigned to Plaintiff No. 1 by Mr. Dhruv Kumar Singhal through assignment deeds dated 6th August 2023, following trademark applications filed on 4th November 2022.

The product achieved remarkable commercial success. From the time of its launch in October 2021 through financial year 2023-24, it generated cumulative sales exceeding Rs. 86.16 crores. Promotional and marketing expenditure exceeded Rs. 8 crores over this period. Celebrities such as Salman Khan and Saina Nehwal endorsed the brand, and it was promoted through hoardings, YouTube videos, and listings on platforms like IndiaMart.

In the first week of July 2024, Plaintiff No. 1 learned through trade channels that Defendant No. 1, KS Agro Impex, was also selling Golden Sella Basmati Rice. When the product was procured from the market, it became apparent that the packaging of Defendant No. 1 was strikingly similar to that of the Plaintiffs. It used a green and gold colour scheme, gold lettering in English resembling Urdu or Arabic script, the word "Zarda" in a similar golden stylised font (but with the suffix "Special" added), hanging lanterns and stars at the top in golden colour, the word "Zarda" written separately in Urdu or Arabic script, and an image of a pulao dish towards the lower portion of the pack. Defendant No. 1 was established as a partnership firm in 2016 and claimed to be a reputed business entity selling over 50 varieties of rice under the brand "Double Chabi," exporting to over 25 countries. In July 2024, two of its partners applied for trademark registration of a label bearing "Double Chabi Zarda Special." Defendant No. 2 was found to be the manufacturer and supplier of packaging material to Defendant No. 1.

After conducting an extensive market survey covering 208 persons across 7 cities comprising 109 street hawkers, 75 rice retailers, and 24 rice distributors the Plaintiffs filed the suit. The survey revealed that 81 percent of respondents were aware of the Plaintiffs' packaging and 85 percent could identify it from a distance. On 1st August 2024, the Court passed an ex parte ad interim injunction restraining the Defendants from selling, offering for sale, or advertising Golden Sella Basmati Rice in the impugned packaging, while granting Defendant No. 1 the liberty to continue its business using a different and distinct packaging. Defendant No. 1 subsequently filed an application under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 seeking vacation of this ex parte order.

The Dispute:

The core dispute before the Court was whether the packaging or trade dress adopted by Defendant No. 1 for its Golden Sella Basmati Rice was deceptively similar to the distinctive trade dress of the Plaintiffs, and whether the Plaintiffs had made out a prima facie case of passing off and copyright infringement warranting continuation of the interim injunction.

The Plaintiffs argued that Defendant No. 1 had dishonestly and deliberately copied almost every essential element of their unique packaging the colour scheme, font style, the word Zarda, hanging lanterns and stars, Arabic architectural imagery, and pulao plate with the intent to mislead consumers into believing that the Defendant's product was associated with the Plaintiffs. They contended that all three ingredients of passing off goodwill and reputation, misrepresentation, and irreparable harm were clearly established. They emphasised that for edible products like rice, a lower threshold of deceptive similarity should apply and the relevant consumers include street hawkers, rice retailers, and distributors in Tier-II and Tier-III cities who may not be discerning buyers.

Defendant No. 1 contested the claim on several grounds. It argued that individual elements of a trade dress such as colours, stars, lanterns, the crescent moon, a pulao image, or minarets cannot be monopolised by any party. It contended that the word "Zarda" is generic and descriptive, referring to a traditional sweet rice dish made from milk, saffron, sugar, and food colouring, and that the word originates from the Urdu word "Zard" meaning yellow. Defendant No. 1 also argued that it had given a disclaimer in its trademark application stating it would not claim exclusive rights over the word "Zarda." It further contended that its packaging was distinct from the Plaintiffs' because it had a matte finish with white polka dots in the background, prominently displayed the house mark "DOUBLE CHABI" on multiple places including the foldable sides of the packaging, had a prominent red colour strip at the bottom, and placed the pulao image in the centre rather than on the side. It argued that the Plaintiffs had failed to prove goodwill specifically in relation to the Zarda King sub-brand packaging and had merely shown overall sales figures for the 10X brand. It also argued that consumers buying rice in 30-kg bags are discerning consumers who would not be confused.

Reasoning and Analysis of the Court:

The Court approached the matter by first identifying the applicable legal framework for passing off before examining the facts in light of that framework.

On the law of passing off, the Court reiterated the classic "trinity test" goodwill and reputation, misrepresentation, and damage or injury drawing from the House of Lords judgment in Reckitt and Colman Products Ltd v. Borden Inc., [1990] 1 WLR 491, and the Supreme Court's judgment in Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65. From the Reckitt and Colman case, the Court noted that a successful passing off action requires that the plaintiff's goods have acquired a reputation in the market and are known by some distinguishing feature, and that the misrepresentation has deceived or is likely to deceive in a manner likely to cause damage to the plaintiff. The Court also drew upon the Delhi High Court's own judgment in Dabur India Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd., 2012 SCC OnLine Del 3332, emphasising that no trader is entitled to represent his goods as being the goods of another, and that any representation through marks, devices, colour combinations, or other means constitutes an invasion of proprietary rights.

On the question of deceptive similarity, the Court anchored itself firmly in the landmark Supreme Court decision in Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618. From this case, the Court extracted the central principle that in determining whether one mark or packaging is deceptively similar to another, it is the broad and essential features that must be considered, not a side-by-side comparison to hunt for differences. The test is whether there is overall similarity sufficient to mislead a person of average intelligence and imperfect recollection. The Court quoted the Supreme Court's observation from Parle Products that if a person was not careful enough to note the peculiar features of the plaintiff's packaging, he might easily mistake the defendant's packaging for it some time after seeing the original, because an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes.

Applying these principles, the Court conducted a detailed visual comparison of the rival packaging. It found that the similarities were numerous and obvious green and gold colour scheme, gold English lettering styled to resemble Urdu or Arabic script, the word "Zarda" in a similar font and style, hanging stars and lanterns at the top in golden colour, the word "Zarda" separately inscribed in Urdu or Arabic script, and a plate of pulao in the lower portion — and these similarities substantially outweighed the differences pointed out by Defendant No. 1. The Court acknowledged that there were some differences, such as the white polka dots and matte finish on Defendant No. 1's packaging, the placement of the pulao image, and the red strip at the bottom. However, it held that the test is not to focus on dissimilarities but on similarities of essential elements, and that even where dishonesty is apparent, the law requires paying greater attention to points of similarity. In this context, the Court drew on the observation in Baker v. Master Printers Union of New Jersey, 47 USPQ 69, which has been widely quoted in Indian courts: the most successful form of copying is to employ enough points of similarity to confuse the public, with enough points of difference to confuse the courts.

The Court found that Defendant No. 1 had engaged in precisely this kind of "smart copying," a term the Court borrowed from Allied Blenders alias Distillers Private Limited v. Hermes Distillery Private Limited, 2024 SCC OnLine Del 217. In the Allied Blenders case, the Court had observed that when broad similarities are so obvious at first look, the differences are nudged into oblivion, and that a chart of differences showing extraordinary effort by the defendant actually highlights the similarities rather than diminishing them.

On the argument that the word "Zarda" is generic or descriptive and therefore no one can claim exclusivity over it, the Court took a nuanced position. It acknowledged that even if Zarda is accepted to be generic or descriptive, this does not materially dilute the Plaintiffs' case of passing off, because the claim is not merely about the word Zarda but about the overall deceptive imitation of the entire trade dress, get-up, and visual presentation. The Court further observed that in the overall setting of the packaging, Zarda functions as a memorable component in consumer recollection, and that the addition of the suffix "Special" by Defendant No. 1 is not sufficient to create any meaningful distinction in the mind of a consumer guided by overall impression. The Court noted pointedly that this addition of "Special" was an unsuccessful attempt to create an illusion of distinction and avoid an action for dishonest copying and imitation.

The Court was also unpersuaded by Defendant No. 1's argument that it cannot claim monopoly over individual elements like colours, stars, minarets, or lanterns. Referring to the Delhi High Court's judgment in Colgate Palmolive Company and Another v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005, the Court observed that while no party can have monopoly over a particular colour, if there is substantial reproduction of a colour combination in similar order and proportion on packaging that has been imprinted on consumers' minds, it is liable to cause confusion and dilute distinctiveness. The Court emphasised that it is the overall combination, arrangement, and ensemble of these elements taken together that acquires distinctiveness and deserves protection.

On the question of goodwill and reputation, the Court rejected Defendant No. 1's contention that the Plaintiffs had failed to prove goodwill specifically in relation to the Zarda King packaging. It found that the Plaintiffs had placed on record sales turnover documents, GST invoices for printing the laminated packaging in question, CA Certificates, sales invoices, photographs of hoardings and billboards, social media promotions, YouTube campaign screenshots, and IndiaMart listings, all specifically linked to the 10X Zarda King brand. The Court held that sales worth approximately Rs. 90 crores in three years cannot be regarded as nominal for a fast-moving consumer food product like rice and are sufficient to support a prima facie inference of goodwill and distinctiveness in the trade dress.

A particularly striking rhetorical question posed by the Court was: if the Plaintiffs' trade dress was not distinctive and had not created formidable goodwill and reputation in the market, why did Defendant No. 1 choose to copy it to the maximum extent possible? The Court drew support from the principle articulated in cases like Dabur India Limited v. Shree Baidyanath Ayurved Bhawan (supra) and Seven Towns Ltd. and Another v. M/s. Kiddiland and Another, 2016 SCC OnLine Del 5168, that in a passing off action, the trade dress and get-up of packaging constitute an essential component of goodwill and reputation.

On the critical question of whether the prominent display of Defendant No. 1's house mark "DOUBLE CHABI" on its packaging was sufficient to dispel consumer confusion, the Court gave a clear and emphatic answer in the negative. It drew upon the Supreme Court's decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, which emphasised that the relevant consumer is a person of average intelligence and imperfect recollection, and that for products purchased across different literacy levels and in diverse markets, the degree of care exercised is lower. The Court observed that for rice, which is a fast-moving consumer good sold from retail shelves, kirana stores, and wholesale counters, buying decisions are predominantly driven by visual recognition of packaging colour scheme, layout, and general trade dress rather than careful scrutiny of brand names or house marks. In such an environment, the presence of DOUBLE CHABI is not sufficient to dispel consumer confusion.

This conclusion was reinforced by the recent judgment of the Division Bench of the Delhi High Court in Dabur India Limited v. Emami Limited, 2026 SCC OnLine Del 3922, where it was observed that even when a defendant's product bears a well-known house mark like "DABUR," this has little role to play when the overlapping features in the trade dress are likely to cause confusion. The Division Bench specifically held that if individual elements of a trade dress are common to the trade, the distinctive combination, arrangement, and presentation of those elements as a whole can still acquire secondary meaning and deserve protection.

The Court also drew from Cadbury India Ltd. and Others v. Neeraj Food Products, 2007 SCC OnLine Del 841, where the Delhi High Court had found passing off even though one packet was marked "Cadbury GEMS" and the other "Neeraj JAMES BOND," because all other essential features of the Cadbury pillow pack — the blue background, brown oval shape, colour of the tablets, visual explosion imagery — had been copied by the Defendant. Similarly, in Allied Blenders and Distillers Pvt. Ltd. v. Agribiotech Industries Limited (ABIL), 2020 SCC OnLine Del 2770, the Court had found deceptive similarity between the "Officers Choice" whisky label and the "Chetak" label despite clearly different brand names, because the overall combination and arrangement of elements was substantially similar.

The Court found additional support in Mondelez India Foods Pvt. Ltd. and Another v. Neeraj Food Products, 2022 SCC OnLine Del 2199, where a blue and purple pillow pack comparison had led to a passing off finding on account of copying of all essential features, and in Marico Limited v. Mr. Mukesh Kumar and Others, 2018 SCC OnLine Del 10823, where the Court held that trade dress was novel and distinctive, and exclusivity could be claimed over several elements taken as a whole.

For food products specifically, the Court applied the principle from Dominos IP Holder LLC and Another v. Dominick Pizza and Another, 2023 SCC OnLine Del 6135, Ferrero SPA and Others v. M.B. Enterprises, 2025 SCC OnLine Del 5105, and Capital Foods Private Limited v. Sankalp Recreation Private Limited and Others, MANU/DEOR/75775/2025, that greater sensitivity is required and the threshold of deceptive similarity is far lower for edible products.

The Court also applied the initial interest confusion test drawn from the Division Bench judgment in Under Armour Inc v. Anish Agarwal and Another, 2025 SCC OnLine Del 3784, noting that given the deceptive similarity in the rival packaging, a consumer may initially be drawn to Defendant No. 1's product in the mistaken belief that it has some association with the Plaintiffs, and this constitutes actionable confusion.

On the third ingredient of passing off damage the Court held that once goodwill and misrepresentation are established, damage is ordinarily presumed. The mere existence of an identically packaged competing product for an identical product — Golden Sella Basmati Rice sold through common trade channels to a common consumer base is sufficient to indicate the likelihood of injury to the Plaintiffs' goodwill and reputation.

Finally, on the common to trade argument based on third-party use of the word Zarda, the Court found no merit in it. It observed that none of the documents filed by Defendant No. 1 showed any third party using the word Zarda with a packaging deceptively similar to that of the instant case with the same colour combination and elements. Drawing from Marico Limited (supra), the Court held that to establish the plea of common use, the use by other persons must be shown to be substantial and capable of affecting distinctiveness, and the Plaintiffs are not required to pursue every insignificant infringer.

Final Decision of the Court:

The Court held that the Plaintiffs had made out a prima facie case for continuing the ex parte ad interim injunction order dated 1st August 2024. The balance of convenience lay in favour of the Plaintiffs and against the Defendants, particularly since the injunction had already been in operation for almost two years. Vacating it would cause irreparable harm and injury to the Plaintiffs. Accordingly, the injunction was confirmed and made operative till the disposal of the suit. The Defendants and all persons acting on their behalf were restrained from selling, offering for sale, and advertising Golden Sella Basmati Rice in the impugned trade dress or packaging, which was found to be confusingly and deceptively similar to the Plaintiffs' trade dress or packaging.

However, it was expressly clarified that Defendant No. 1 is not precluded from carrying on its business for Golden Sella Basmati Rice using a different trade dress or packaging that is distinct and not deceptively similar to the Plaintiffs' packaging. It was also clarified that the packaging proposals offered by Defendant No. 1 during the course of the hearing cannot be used, as those too were found to be deceptively similar.

Point of Law Settled:

This judgment settles and reinforces several important principles of passing off law in the Indian context. The overall impression test applies to trade dress just as firmly as it applies to trademarks, and what matters is not whether the packaging is identical but whether, taken as a whole, it is likely to deceive a person of average intelligence and imperfect recollection. The presence of a competitor's house mark on its packaging, even a well-known one, does not by itself dispel consumer confusion when the overall trade dress is substantially similar to that of the plaintiff. For fast-moving consumer goods, particularly food products like rice where visual impression dominates purchase decisions and consumers include those with varying literacy levels, a lower threshold of deceptive similarity applies. A party who copies all essential features of a trade dress cannot escape liability by making minor cosmetic differences, as this constitutes "smart copying" which is still copying. Goodwill in a trade dress can be established even within a relatively short period through substantial sales, promotional expenditure, and celebrity endorsements, without necessarily requiring decades of use. The word or element claimed to be generic or descriptive does not dilute the overall passing off claim if the gravamen of the action is the deceptive imitation of the entire trade dress rather than any single word.

Case Title: GRM Foodkraft Pvt Ltd and Another Vs. KS Agro Impex and Another

Date of Order: 29th May 2026

Case Number: CS(COMM) 637/2024

Neutral Citation: 2026:DHC:4851

Name of Court: High Court of Delhi at New Delhi

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

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

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

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Head Note

GRM Foodkraft Pvt Ltd launched Golden Sella Basmati Rice in 2021 under the sub-brand Zarda King with a distinctive green and gold packaging featuring gold Arabic-style lettering, hanging lanterns and stars, a crescent moon, minarets, and a pulao plate image, achieving sales of over Rs. 86 crores in three years. On discovering that KS Agro Impex was selling an identically named product in packaging reproducing almost all these elements under the mark "Double Chabi Zarda Special," the Plaintiffs filed a suit for passing off and copyright infringement and obtained an ex parte interim injunction on 1st August 2024. The Delhi High Court, on hearing both the application for ad interim injunction and the Defendant's application for vacation of the ex parte order, held that the Defendant had substantially copied the Plaintiffs' trade dress and that the presence of the house mark "Double Chabi" was insufficient to dispel consumer confusion for a food product like rice. Applying the overall impression test from Parle Products, the Court confirmed the injunction and dismissed the vacation application, reinforcing that smart copying of trade dress, even with cosmetic differences, constitutes actionable passing off.

Jyothy Labs Limited Vs. The Registrar of Trade Marks

Jyothy Labs Limited v. The Registrar of Trade Marks & Ors.:18.05.2026:C.A.(COMM.IPD-TM) 29/2026:Hon'ble Justice Tushar Rao Gedela

In a trademark dispute, the Delhi High Court set aside an order of the Registrar of Trade Marks that had dismissed Jyothy Labs Limited’s opposition to a trademark application on the ground that the company failed to file evidence within the prescribed period. The appellant contended that the counter-statement filed by the applicant was never served upon it, depriving it of the opportunity to submit evidence under Rule 45 of the Trade Marks Rules, 2017. During the proceedings, the Registrar’s counsel acknowledged that due to a technical glitch, the counter-statement had in fact not been served on the appellant.

Justice Tushar Rao Gedela observed that proper service of the counter-statement is a mandatory requirement and that the failure to comply with this requirement denied the appellant a fair opportunity to pursue its opposition. Finding merit in the appellant’s grievance, the Court quashed the impugned order dated 6 February 2025 and remanded the matter to the Registrar of Trade Marks with directions to complete service of the counter-statement, provide the appellant an opportunity to file evidence, and thereafter continue the opposition proceedings. The appeal was accordingly disposed of.

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

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Technical Glitch Cannot Defeat Trademark Opposition

Introduction: In trademark opposition proceedings, procedural fairness is not merely a technical formality it is the very foundation on which the entire system of checks and balances rests. When a party files an opposition to the registration of a trademark, it does so to protect its existing rights from being diluted or infringed upon by a new registration. The opposition process under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 is a carefully designed mechanism that gives both the applicant and the opponent a fair opportunity to present their respective cases before the Registrar of Trade Marks. This mechanism depends critically on proper service of documents between the parties, because every subsequent step in the opposition including the filing of evidence is triggered by the receipt of the previous document.

When this chain of communication breaks down due to a technical failure on the part of the Registry itself, and the opposition is dismissed merely because the opponent did not file evidence within the prescribed time, a grave injustice results. The opponent is penalised not for its own default but for a failure that was entirely the Registry's doing. The Delhi High Court's order dated 18th May 2026 in Jyothy Labs Limited v. The Registrar of Trade Marks and Others directly confronts this situation and reaffirms a principle that is fundamental to any fair adjudicatory process: no party can be condemned for failing to do something it was never given the opportunity or notice to do.

This case, though brief in its order, carries significant lessons for trademark practitioners, trademark applicants, and the Trade Marks Registry itself about the importance of proper service, the consequences of procedural lapses by administrative bodies, and the role of the High Court in correcting such errors on appeal.

Factual and Procedural Background:

Jyothy Labs Limited, the Appellant, is a well-known Indian consumer goods company with an established presence in personal care, fabric care, and household products. The company filed an opposition bearing Opposition No. 1279339 against an application for registration of the trademark "JIVA AYURVEDA" filed under Application No. 4903005 in Class 42. Class 42 under the Trade Marks Act, 1999 relates broadly to scientific and technological services and wellness-related services, which is consistent with the Ayurveda services that the applied mark appeared to cover.

Under the Trade Marks Rules, 2017, the trademark opposition process follows a structured sequence. Once an opposition notice is filed by the opponent, the trademark applicant is required to file a counter-statement. Under Rule 45 of the Trade Marks Rules, 2017, once the counter-statement is filed by the applicant and served upon the opponent, the opponent has a period of two months to file its evidence in support of its opposition. This evidence stage is critical because it is through this evidence that the opponent substantiates the grounds of its opposition and places on record the factual basis for why the applied trademark should not be registered.

In the present case, the Registrar of Trade Marks passed an order dated 6th February 2025, dismissing the opposition filed by Jyothy Labs. The basis for this dismissal was that Jyothy Labs had not filed its evidence under Rule 45 of the Trade Marks Rules, 2017 within the prescribed period of two months from the alleged date of service of the counter-statement. As a consequence of this dismissal, the Registrar allowed the application for registration of the mark "JIVA AYURVEDA" under Application No. 4903005 in Class 42 to proceed for registration.

Jyothy Labs challenged this order by filing an appeal before the Delhi High Court under Section 91 of the Trade Marks Act, 1999 read with Rule 156 of the Trade Marks Rules, 2017. The appeal was registered as C.A.(COMM.IPD-TM) 29/2026 and was accompanied by three interlocutory applications bearing numbers I.A. 13755/2026, I.A. 13756/2026, and I.A. 13757/2026.

The core grievance of Jyothy Labs was straightforward: it never received the counter-statement filed by the trademark applicant. Since the counter-statement was never served upon it, Jyothy Labs could not have known that the two-month clock for filing evidence had started running. It was therefore impossible for it to have filed evidence within a period the commencement of which it had no notice of. There was an additional and telling inconsistency in the Registry's own records. The Hearing Notice dated 11th September 2025 issued by the Registrar of Trade Marks recorded the date of service of the counter-statement upon the appellant as 11th June 2024. However, the impugned order dated 6th February 2025 recorded the date of service of the counter-statement as 23rd April 2024. These two dates are different, and this discrepancy within the Registry's own documents powerfully corroborated the appellant's claim that something had clearly gone wrong with the service process.

The Dispute:

The dispute before the Court was narrow but significant. The question was whether the Registrar of Trade Marks was justified in dismissing Jyothy Labs' opposition under Opposition No. 1279339 solely on the ground that evidence under Rule 45 of the Trade Marks Rules, 2017 had not been filed within two months, when in fact the counter-statement the very document whose service triggers the running of that two-month period had never been properly served upon the appellant.

Jyothy Labs' position was that it was a victim of the Registry's own failure. It had filed its opposition diligently and was waiting for the next step in the proceedings. It was never informed that a counter-statement had been filed, and it was therefore never in a position to respond by filing evidence. To penalise it for this non-compliance was to visit upon it the consequences of a failure that was not of its making.

Reasoning and Analysis:

Upon hearing the parties, the Court first noted the specific claim of the Appellant that the counter-statement had never been served upon it, which was the direct cause of its failure to file evidence within the prescribed period under Rule 45 of the Trade Marks Rules, 2017. The Court also took note of the significant internal inconsistency in the Registry's own records the discrepancy between the date of alleged service mentioned in the Hearing Notice dated 11th September 2025, which stated 11th June 2024, and the date recorded in the impugned order of 6th February 2025, which stated 23rd April 2024. This inconsistency by itself raised serious doubt about whether any effective service had taken place at all.

Most importantly, when the Court issued notice and the matter was heard, the counsel representing the Registrar of Trade Marks made a candid and critical statement on instructions, after scrutinising the official records of the Registry. He stated that upon examination, it was indeed found that the counter-statement had in fact not been served upon the appellant. The reason attributed was a technical glitch that occurred at the time of service. The Registry thus effectively admitted that the service had failed and that the failure was on its part, not the appellant's.

The Court's analysis, though concise, was legally sound and principled. It observed that the mandate under Rule 45 of the Trade Marks Rules, 2017 which requires the counter-statement to be served upon the opponent before the evidence period commences had not been properly complied with by the Registrar. This non-compliance by the Registry directly deprived the appellant of the opportunity to file its evidence in support of its opposition notice. Essentially, a party cannot be expected to comply with a time-bound procedural obligation when the very trigger for that obligation the receipt of a document never reached it. Procedural deadlines presuppose proper notice; without notice, there can be no default.

No external judicial precedents were cited or discussed in this brief order, which is not unusual for an interlocutory or remand order where the facts speak clearly for themselves and the legal principle is well-established. The principle that a party must be given due notice before a proceeding can be conducted against it is foundational to natural justice and has been affirmed in countless contexts by Indian courts. The right to be heard audi alteram partem is one of the oldest and most fundamental principles of fair adjudication, and it cannot be bypassed by a procedural glitch in the Registry's own system.

The Court found it entirely appropriate in these circumstances to quash the impugned order dated 6th February 2025 and remand the matter back to the Registrar of Trade Marks. The directions given were specific and practical. The Registrar was directed to complete service of the counter-statement upon the appellant within three weeks from the date of the order. Thereafter, the appellant was to be given a proper opportunity to file its evidence in accordance with Rule 45 of the Trade Marks Rules, 2017. The Registrar was also directed to continue the proceedings in Opposition No. 1279339 after this was done.

Final Decision of the Court:

The appeal filed by Jyothy Labs Limited under Section 91 of the Trade Marks Act, 1999 read with Rule 156 of the Trade Marks Rules, 2017 was disposed of by quashing the order dated 6th February 2025 passed by the Registrar of Trade Marks. The matter was remanded to the Registrar with a direction to serve the counter-statement upon the appellant within three weeks, after which the appellant was to be given a full and proper opportunity to file its evidence under Rule 45 of the Trade Marks Rules, 2017.

Point of Law Settled:

This order reaffirms and applies the elementary but vital principle that a statutory time period for filing evidence in trademark opposition proceedings under Rule 45 of the Trade Marks Rules, 2017 can only commence from the date of actual and proper service of the counter-statement upon the opponent. Where the counter-statement has never been served upon the opponent due to a technical failure in the Registry's own system, the opposition cannot be dismissed for non-filing of evidence within that period. The consequences of a procedural failure by the Registry cannot be visited upon the opposing party. When it is admitted by the Registry itself that there was a glitch in service, the proper remedy is to quash the order dismissing the opposition and remand the matter with a direction for fresh and proper service followed by a genuine opportunity to file evidence.

Case Title: Jyothy Labs Limited Vs. The Registrar of Trade Marks and Others

Date of Order: 18th May 2026

Case Number: C.A.(COMM.IPD-TM) 29/2026

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tushar Rao Gedela

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

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

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**Head Note**

Jyothy Labs Limited filed an opposition to the registration of the trademark "JIVA AYURVEDA" under Application No. 4903005 in Class 42. The Registrar of Trade Marks dismissed the opposition vide order dated 6th February 2025 on the ground that Jyothy Labs had not filed evidence under Rule 45 of the Trade Marks Rules, 2017 within two months of the alleged service of the counter-statement. On appeal before the Delhi High Court, the Registry's own counsel admitted upon scrutiny of records that the counter-statement had in fact never been served upon the appellant due to a technical glitch. The Court held that the mandate under Rule 45 of serving the counter-statement upon the opponent had not been complied with, thereby depriving the appellant of its right to file evidence. The impugned order was quashed, the matter was remanded to the Registrar with a direction to serve the counter-statement within three weeks, and the appellant was to be given a proper opportunity to file evidence thereafter.

IP.ADJUTOR

Tuesday, June 9, 2026

SC-J.R. Kapoor Vs. Micronix India

SC-Novartis AG Vs. Union of India

The Gleevec Verdict: India's Supreme Court Draws the Line Against Evergreening in Novartis AG v. Union of India

Introduction

Factual and Procedural Background

The Dispute

Reasoning and Analysis of the Court

Final Decision of the Court

Points of Law Settled in the Case

Case Details

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Headnote

Monday, June 8, 2026

GRM Foodkraft Pvt Ltd and Another Vs. KS Agro Impex

Jyothy Labs Limited Vs. The Registrar of Trade Marks

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