IP.ADJUTOR

Tuesday, April 28, 2026

Flipkart India Private Limited Vs Marc Enterprises Pvt. Ltd.

Flipkart India Private Limited Vs Marc Enterprises Pvt. Ltd.:24.04.2026:FAO-IPD 46 of 2021:DHC:Hon'ble Justice Shri Tejas Karia

Brief Facts

The present order arises out of an application filed by the appellant (Flipkart India Pvt. Ltd.) under Sections 151 and 152 of the Code of Civil Procedure, 1908, seeking clarification/modification of a judgment dated 10.04.2026. The appellant contended that the Court had incorrectly recorded its submission regarding the grant of time—asserting that the request was for time to avail legal remedies, and not merely for compliance with the interim injunction.

The respondent (Marc Enterprises Pvt. Ltd.) opposed the application, submitting that the judgment accurately recorded the submissions made in open court and that no clerical or accidental error existed warranting correction.

Issues

Whether the alleged incorrect recording of submissions constitutes a clerical or accidental error under Section 152 CPC.
Scope and limits of the Court’s power to modify or clarify judgments post-pronouncement.

Key Findings

The Court held that the submissions recorded in the original judgment were accurate and reflected the proceedings in open court.
It reiterated that Section 152 CPC is limited to correcting clerical or arithmetical mistakes or accidental slips, and cannot be invoked to alter substantive findings.
Relying on Dwaraka Das v. State of M.P., the Court emphasized that once a judgment is pronounced, the Court becomes functus officio, and cannot modify its terms except for minor corrections.
The Court clarified that substantive grievances must be addressed through appeal or review, not through an application under Section 152 CPC.

Decision

The Delhi High Court dismissed the application, holding that no clerical or accidental error was made out. However, it observed that the recorded statement would not prevent the appellant from availing appropriate legal remedies in accordance with law.

Significance

This order reinforces the narrow scope of Section 152 CPC, emphasizing that it cannot be used as a tool to revisit or alter judicial findings. It also reiterates the doctrine of functus officio, limiting post-judgment intervention by courts and preserving the sanctity and finality of judicial orders.

Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

#IPUpdate #IPCaselaw #IPLaw #IPRNews #Trademark #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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Limits of Judicial Correction: Scope of Section 152 CPC

Introduction:

Courts pronounce judgments after hearing arguments, and sometimes parties feel that what was said in open court or recorded in the order needs a small correction. But how far can a court go in changing its own recorded words after the judgment is out? This case highlights the narrow limits of such corrections under Indian law. It shows that once a judgment is delivered, the court cannot easily rewrite what happened during proceedings, especially if it touches the heart of what was argued. The dispute arose in a trademark battle between e-commerce giant Flipkart and a smaller company called Marc Enterprises, but this particular order focused only on a follow-up request for clarification rather than the trademark itself.

Factual Background

The underlying dispute involved Flipkart using the mark "MARQ" for its private label products, particularly electrical appliances. Marc Enterprises, which had been using and registering marks like "MARC" for similar goods for many years, claimed that Flipkart's mark was deceptively similar and would confuse customers. The trial court had granted an interim injunction stopping Flipkart from using "MARQ". Flipkart challenged this injunction before the Delhi High Court in an appeal. The High Court heard the matter and dismissed the appeal on April 10, 2026, upholding the injunction against Flipkart. Immediately after the judgment was pronounced in open court, there was some discussion about giving Flipkart time to comply with the order.

Procedural Background

After the main judgment dismissing the appeal, Flipkart filed an application under Section 152 read with Section 151 of the Code of Civil Procedure. In this application, Flipkart claimed that the judgment had incorrectly recorded the submission made by its senior counsel right after the pronouncement. According to Flipkart, the counsel had asked for time to explore and avail legal remedies against the judgment. Flipkart wanted the court to modify paragraph 26 of the judgment and grant four weeks specifically for pursuing further legal options. Marc Enterprises strongly opposed this, arguing that the judgment accurately captured what was said in open court and that no change was needed or allowed.The matter came up before the same judge who had delivered the main judgment. Both sides presented their views on what exactly had transpired in court on the day of pronouncement.

Reasoning

The court carefully examined the application and the arguments from both sides. It noted that the paragraphs in question recorded the submissions made by the parties immediately after the judgment was pronounced. The judge observed that these recordings matched what had actually happened in open court. Changing them would amount to altering the court's own understanding of the proceedings, which goes beyond a simple clerical fix.

The court emphasized that Section 152 of the CPC is meant only for correcting genuine clerical or arithmetical mistakes or accidental slips or omissions. It is not a tool to revisit or rewrite substantive parts of the judgment or the record of arguments that reflect the actual events. Once a judgment is delivered, the court generally becomes functus officio, meaning it has finished its role in that matter and cannot make changes that affect the merits or the recorded position of the parties.

The respondent cited important Supreme Court decisions to support this view. In Dwaraka Das v. State of M.P. and Another, the Supreme Court explained that Section 152 allows only ministerial corrections of accidental errors and does not permit the court to pass fresh judicial orders or correct omissions that go to the root of the case. Any such deeper error should be addressed through appeal or review, not through this provision. Similarly, the judgment in State of Maharashtra and Others v. Saeed Sohail Sheikh and Others helped clarify that ministerial acts under these sections involve no independent judgment or discretion — they are routine corrections without changing the substance.

The court rejected the idea that the recorded submission could be treated as a mere accidental slip. It held that the judgment faithfully reflected the events in court. At the same time, to address any concern, the court added a protective observation: the recorded statement by Flipkart's counsel would not prevent the company from pursuing whatever legal remedies are available under law. All rights and contentions of both parties were kept open.

The judge made it clear that this observation was added out of abundant caution and did not amount to any modification of the original judgment. It caused no prejudice to Marc Enterprises because no counsel's statement can legally bar a party from exercising its lawful rights.

Judgements with Complete Citation and Their Context Discussed

The court relied on two key Supreme Court precedents to explain the limited scope of Section 152 CPC.

In Dwaraka Das v. State of M.P. and Another, (1999) 3 SCC 500, the Supreme Court dealt with a situation where a party sought correction regarding interest in a contract dispute. The Court clarified that Section 152 is restricted to fixing clerical mistakes or accidental omissions by the court in its ministerial capacity. It does not allow reopening or varying the terms of a judgment after it has been passed. The court becomes functus officio and cannot correct errors that touch the merits of the case. Such issues must be handled through proper appeal or review. This ruling was cited to show that Flipkart's request went beyond a simple clerical fix and could not be entertained.

In State of Maharashtra and Others v. Saeed Sohail Sheikh and Others, (2012) 13 SCC 192, the Supreme Court discussed the meaning of "ministerial" acts and duties. It explained that these involve routine tasks carried out without exercising personal discretion or judgment — simply following instructions or rules. This helped the court distinguish between minor corrections and any attempt to reinterpret or rewrite what happened in open court.

These judgments were discussed in detail to underline that courts must not use Section 152 or the inherent powers under Section 151 to alter the substance of what was recorded or decided.

Final Decision of the Court

The Delhi High Court dismissed the clarification application filed by Flipkart. It held that no case was made out for any modification under Section 152 or Section 151 CPC because the judgment correctly recorded the proceedings. The application was disposed of accordingly. However, the court added a clarifying observation that the recorded statement would not hinder Flipkart from availing any available legal remedies, and all rights of both parties remained open.

Point of Law Settled in the Case

This order reinforces a clear principle: after a judgment is pronounced, the court has very limited power to make changes. Section 152 CPC can only be used for genuine clerical or arithmetical mistakes or accidental slips that do not affect the merits or the accurate record of what occurred in court. Parties cannot use this provision to rewrite the history of submissions made in open court or to seek substantive alterations. The court becomes functus officio and any deeper grievance must be addressed through appeal or other proper legal channels. At the same time, a mere recorded submission by counsel does not bind a party from pursuing lawful remedies.

Case Title: Flipkart India Private Limited Vs Marc Enterprises Pvt Ltd

Date of Order: 24.04.2026

Case Number: FAO-IPD 46/2021

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia

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

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

Headnote of Article

Headnote: Delhi High Court dismisses Flipkart’s application seeking clarification/modification of recorded submissions in a trademark injunction appeal under Section 152 CPC, reiterating that post-judgment corrections are limited to clerical or accidental slips and do not permit rewriting the record of open court proceedings; protective observation made that recorded statement will not bar availing legal remedies.

Johnson Paints Co. Vs. Johnson Paints Private Limited

Johnson Paints Co. Vs. Johnson Paints Private Limited:24.04.2026:Commercial Appeal No. 2 of 2025:PatnaHC:Rajeev Ranjan Prasad and Praveen Kumar, H.JJ.

Brief Facts

The dispute concerns competing claims over the trademark “JOHNSON” used in relation to paints and allied products. The appellant, Johnson Paints Co., claimed prior adoption and continuous use of the mark since 1987, asserting goodwill and reputation built over decades. The respondent, Johnson Paints Pvt. Ltd., relied on a chain of assignment deeds dating back to 1990 and subsequent trademark registrations to justify its use.

The appellant filed a suit for permanent injunction alleging passing off, along with an application for interim injunction. The Commercial Court rejected the injunction application on the ground that the appellant failed to establish a prima facie case of prior use and goodwill. The present appeal challenged that refusal.

Issues

Whether the appellant established a prima facie case of prior user of the trademark “JOHNSON”.
Whether the refusal of interim injunction by the Commercial Court was justified.
Applicability of the “first user rule” in passing off vis-à-vis competing claims and assignments.

Key Findings

The High Court reiterated that prior use is the foundation of a passing off action under Section 27 of the Trade Marks Act, 1999.
Upon examining invoices, tax records, and contemporaneous documents, the Court found prima facie evidence supporting the appellant’s use since 1987–88.
The respondent’s reliance on assignment deeds was viewed with skepticism due to serious inconsistencies, lack of supporting evidence, and absence of registration or proof of use by assignors.
The Court emphasized that registration does not override prior user rights, reaffirming the principle laid down in Neon Laboratories Ltd. v. Medical Technologies Ltd..
It was observed that the Commercial Court failed to adequately consider relevant documents and misapplied the principles governing interim injunctions.

Legal Principles

First User Rule Prevails: Prior use outweighs subsequent registration.
Passing Off Independent of Registration: Common law rights survive statutory registration.
Interim Injunction Test: Courts must assess prima facie case, balance of convenience, irreparable harm, and likelihood of confusion.

Decision

The High Court found that the appellant had made out a prima facie case of prior use, and that the respondent’s claim based on assignment deeds lacked credibility at this stage. The refusal of interim injunction was held to be unsustainable, warranting interference.

Significance

This judgment reinforces the dominance of the “prior user” doctrine in Indian trademark law, especially in passing off actions. It also underscores judicial caution in accepting assignment-based claims without clear proof of continuity and legitimacy, and reiterates that registration alone cannot defeat established goodwill.

Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

#IPUpdate #IPCaselaw #IPLaw #Trademark #PassingOff #IndianIPUpdate

Shruti Sharma Vs. The Registrar of Trade Marks

Shruti Sharma Vs. The Registrar of Trade Marks:22.04.2026:C.A.(COMM.IPD-TM) 21/2026:DHC:Jyoti Singh, H.J.

Brief Facts

The appellant challenged the refusal of her trademark application for “AROMA SPHERE” in Class 35, relating to retail and marketing of fragrance-based products. The Registrar had rejected the application under Section 11 of the Trade Marks Act, 1999 on the ground of deceptive similarity with an earlier mark “AROMASPHERE”.

The appellant contended that the refusal was erroneous as the cited mark pertained to distinct and unrelated services, and that the Registrar failed to consider her prior and actual use supported by evidence.

Issues

Whether similarity of marks alone is sufficient to refuse registration under Section 11.
Whether dissimilarity of goods/services must be considered while assessing likelihood of confusion.
Whether the Registrar erred in overlooking evidence of actual prior use.

Key Findings

The Court held that mere similarity of marks is not decisive; similarity or identity of goods/services is an equally critical factor.
It was emphasized that the Registrar must examine whether the competing goods/services are similar or related, as mandated under Section 11 and Rule 33 of the Trade Marks Rules, 2017.
The Court found that the Registrar failed to consider the appellant’s submission that the cited mark covered business marketing services, whereas the applied mark related to retail and sale of fragrance products.
The Registrar also erred in treating the application as filed on a “proposed to be used” basis, despite evidence of actual use since 31.03.2023 being on record.
The Court reiterated that no monopoly can be claimed over an entire class of goods/services merely by registration of a mark in that class.

Decision

The Delhi High Court set aside the refusal order and remanded the matter to the Registrar for fresh consideration, directing a reasoned decision after giving the appellant an opportunity of hearing.

Significance

This judgment reinforces that trademark examination must go beyond phonetic or visual similarity and must include a holistic assessment of nature of goods/services and likelihood of confusion. It also highlights the importance of properly evaluating user evidence, preventing mechanical refusals by the Registry.

Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

#IPUpdate #IPCaselaw #IPLaw #Trademark #IPIndiaupdate #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Monday, April 27, 2026

Ganesh Consumer Products Ltd. Vs Assistant Registrar of Trademarks

Madras High Court Upholds Registration of ‘GANESHA’ Trademark for Gram Flour on Ground of Honest Concurrent Use and Territorial Limitations

Ganesh Consumer Products Ltd. Vs Assistant Registrar of Trademarks :15.04.2026:CMA (TM)No.21 of 2025:2026:MHC:1519:MadHC:Hon’ble Mr. Justice Senthilkumar Ramamoorthy

In a notable trademark appeal concerning rival claims over marks containing the word “GANESHA” for gram flour (Class 30), the Madras High Court dismissed the challenge filed by Ganesh Consumer Products Ltd. and upheld the registration of the device mark “SPECIAL GANESHA BRAND” (with pictorial elements) granted to the partners of Shankar Industries, Karnataka.

Brief Facts

The appellant, Ganesh Consumer Products Ltd., opposed the registration of Trademark Application No. 1831646 filed by K.R. Nagendra and K.N. Shobha (partners of Shankar Industries) for a label mark featuring “SPECIAL GANESHA BRAND” and device elements in respect of gram flour. The opposition was rejected by the Registrar of Trade Marks, Chennai, vide order dated 11.09.2024, leading to registration of the mark as No. 1831646. The appellant preferred the present Civil Miscellaneous Appeal under Section 91 of the Trade Marks Act, 1999, seeking to set aside the Registrar’s order and cancel the registration.

The appellant claimed prior use and registration of several “GANESH”/“GANESHA” marks and argued that the impugned mark was deceptively similar. The respondents relied on their long-standing use, an earlier registration of a similar mark (No. 460314) since the 1980s, and evidence of turnover and advertisement expenses supported by a Chartered Accountant’s certificate.

Key Issues and Court’s Analysis

The Court examined the evidence of use adduced by both sides. It noted that the respondents had an earlier registered mark containing “SPECIAL GANESHA BRAND” with a pictorial device of Lord Ganesha, registered with effect from 1986 on a user claim from 1978. A rectification petition filed by the appellant against that registration was withdrawn without leave to re-file.

The respondents also placed on record a Chartered Accountant’s certificate showing turnover and advertisement expenses for the “GANESHA” mark in respect of gram flour from 1995-96 onwards. Though the appellant raised objections regarding the evidentiary value of the certificate (absence of underlying documents and affidavit), the Court held that the Registrar of Trade Marks does not conduct a full trial and the strict rules of the Evidence Act are not binding. The certificate specifically linked the figures to the mark and goods in question and was thus acceptable as evidence of use. Invoices and other documents further supported the respondents’ claim.

The appellant’s evidence showed use since 1992, which was subsequent to the respondents’ claimed and registered use. Additional documents sought to be filed by the appellant at the appellate stage, including old advertisements from 1936, were not admitted as they fell outside the pleadings.

Crucially, the Court observed that both the impugned registration and the respondents’ earlier registration carried a territorial limitation restricting use to the State of Karnataka only. Many of the appellant’s registrations were similarly limited to West Bengal. This territorial restriction provided an additional ground for invoking Section 12 of the Trade Marks Act, 1999, which permits registration in cases of honest concurrent use or other special circumstances.

The Court held that the respondents were entitled to the benefit of Section 12 on account of their prior registration, established use, and the territorial limitations. In view of this finding, it was unnecessary to examine the issue of deceptive similarity between the rival marks in detail. Even if the additional documents were considered, no case was made out to interfere with the Registrar’s order.

Final Decision

The Madras High Court dismissed the appeal (CMA (TM) No.21 of 2025) and the connected miscellaneous petition without costs. The registration of Trademark No. 1831646 in favour of the respondents was upheld.

This judgment highlights the importance of territorial limitations in trademark registrations, the evidentiary flexibility before the Registrar, and the protective scope of Section 12 for honest concurrent users, particularly where marks incorporate common or religious elements like the name of a deity and operate in geographically limited markets.

Disclaimer: This is a brief write-up based on the judgment for reporting purposes only and does not constitute legal advice. It may contain subjective summarization.

Written By:Advocate Ajay Amitabh Suman, IP Adjutor

[Patent and Trademark Attorney], High Court of Delhi

#IPUpdate #IPCaselaw #TrademarkLaw #HonestConcurrentUse #Section12TradeMarksAct #MadrasHighCourt #GANESHA trademark #IndianIPLaw #IPIndiaupdate #AdvocateAjayAmitabhSuman #IPAdjutor

Suggested Title for Legal Journal:

“Madras High Court Upholds ‘GANESHA’ Trademark Registration Emphasising Honest Concurrent Use and Territorial Limitations under Section 12 of Trade Marks Act”

Tags: #Trademark #HonestConcurrentUse #Section12 #MadrasHighCourt #DeityName #TerritorialLimitation #GramFlour #IPCaselaw #TradeMarksAct1999 #RegistrarOfTradeMarks

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**Madras High Court Upholds Trademark Registration on Grounds of Honest Concurrent Use and Territorial Limitations**

### Introduction

Trademark disputes often arise when two businesses want to use similar names or labels for their products, especially when the name has a common or religious connection. In one such case involving marks with the word “GANESHA” for gram flour, the Madras High Court delivered an important ruling that balances the rights of long-time users while considering practical limitations on where the goods are sold. The judgment shows how courts look at real-world use of trademarks, old registrations, and special situations that allow similar marks to coexist peacefully in different areas. This decision offers valuable guidance to businesses on how prior use, honest adoption, and geographic restrictions can protect a trademark registration even when another party claims earlier rights.

### Factual Background

The dispute centred on a label mark featuring the words “SPECIAL GANESHA BRAND” along with pictorial elements, used for pure gram flour. One side was Ganesh Consumer Products Ltd., a company based in West Bengal that claimed rights over several marks containing the word “GANESH” or “GANESHA” for food products like atta and flour. The other side consisted of partners of Shankar Industries from Arsikere in Karnataka, who had been selling gram flour under their GANESHA brand for many years.

The Karnataka firm had obtained an earlier trademark registration for a similar label that included a picture of Lord Ganesha. They later applied for registration of the impugned mark without the deity image but with the same brand name. The West Bengal company opposed this application, arguing that their own marks were similar and that allowing the new registration would create confusion among customers. They claimed to have been using their GANESH marks for a long time and had several registrations in their favour or in the name of their predecessors.

The Karnataka partners defended their position by pointing to their established business in gram flour, supported by sales records, advertisement expenses certified by chartered accountants, and their existing registration. They maintained that their use was honest and had continued for decades without any major issues.

### Procedural Background

The West Bengal company filed a formal opposition before the Trade Marks Registry in Chennai against the application by the Karnataka firm. After considering evidence and arguments from both sides, the Assistant Registrar of Trade Marks rejected the opposition and allowed the registration of the mark in Class 30 for gram flour. Feeling aggrieved, the West Bengal company approached the Madras High Court through a civil miscellaneous appeal under the relevant provisions of the Trade Marks Act. They also filed an application to place additional old documents on record, such as newspaper advertisements and assignment deeds.

Both parties were represented by experienced counsel who presented detailed arguments. The appellant stressed the similarity of the marks and their own prior use, while the respondents highlighted their long-standing registration, continuous business activity, and the limited geographic scope of their operations.

### Reasoning

The Court carefully reviewed the evidence presented by both parties regarding the use of their respective marks. It noted that the respondents had secured an earlier trademark registration for a very similar label mark many years ago, claiming use dating back even further. Although the appellant had challenged that earlier registration through a rectification petition, the challenge was later withdrawn without permission to file it again, which weakened their position.

The respondents produced a certificate from chartered accountants showing their sales turnover and advertisement spending specifically linked to the GANESHA mark for gram flour over many years. The Court accepted this as valid evidence of use, observing that trademark proceedings before the Registrar are not strict court trials and that rigid rules of evidence do not always apply in the same way. The appellant’s own evidence of use began later than the respondents’ claimed and registered use.

A key factor in the Court’s thinking was the territorial limitation attached to both the respondents’ registrations and many of the appellant’s marks. The respondents’ marks were restricted to goods sold only within Karnataka, while the appellant’s registrations were often limited to West Bengal. This geographic separation reduced the chance of actual confusion or conflict in the market.

The Court explained that the law allows registration of similar marks in appropriate cases when there is honest concurrent use or other special circumstances that make it fair to do so. Here, the respondents’ long prior registration, continuous honest business activity in their region, and the territorial limits created such special circumstances. Because of this, the Court found it unnecessary to deeply analyse whether the marks looked deceptively similar. Even if the additional documents the appellant wanted to introduce were considered, they did not change the overall picture, as many related to periods or connections not properly pleaded earlier.

### Judgements with Complete Citation and Their Context Discussed

The Madras High Court delivered its judgment on 15 April 2026 in the matter of CMA (TM) No.21 of 2025 and connected CMP No.32352 of 2025, cited as **2026:MHC:1519**, authored by Hon’ble Mr. Justice Senthilkumar Ramamoorthy.

In its reasoning, the Court discussed the scope of Section 12 of the Trade Marks Act, 1999. This provision empowers the Registrar to permit registration of identical or similar marks by more than one proprietor when there is honest concurrent use or other special circumstances that justify it. The judgment placed this section in the context of balancing competing interests in the marketplace, particularly where parties operate in different regions and have built their businesses honestly over time.

The Court also referred to the limited nature of proceedings before the Trade Marks Registry, noting that it does not function like a full civil trial and that the Evidence Act is not strictly binding. This context helped justify reliance on the chartered accountants’ certificate as proof of use, even without supporting affidavits or all underlying invoices for every year.

Additionally, the judgment touched upon the effect of an earlier registration and the withdrawal of a rectification petition without leave, explaining how these procedural steps impact later challenges. The territorial limitations on registrations were highlighted as creating “special circumstances” under Section 12, allowing similar marks to coexist without causing widespread confusion.

### Final Decision of Court

After weighing all aspects, the Madras High Court found no reason to interfere with the Registrar’s order that had allowed the registration. The appeal was dismissed in its entirety, and the connected miscellaneous petition for additional documents was closed. No order was passed as to costs. The registration of the impugned “SPECIAL GANESHA BRAND” mark in favour of the partners of Shankar Industries was thus upheld.

### Point of Law Settled in the Case

This judgment settles an important practical point in trademark law: When two parties use similar marks containing common elements like the name of a deity, and their registrations or business activities are confined to different geographic areas, the law can permit both to coexist under the principle of honest concurrent use or special circumstances. A prior registration, even if challenged and later withdrawn from contest, combined with evidence of continuous honest use and territorial restrictions, can provide strong protection against later opposition. The decision also clarifies that trademark registries have flexibility in accepting evidence of use and that courts will not readily disturb such decisions when special circumstances exist.

### Case Details

**Title:** Ganesh Consumer Products Ltd. Vs Assistant Registrar of Trademarks and G.I. & Ors.

**Date of Order:** 15.04.2026

**Case Number:** CMA (TM) No.21 of 2025 and CMP No.32352 of 2025

**Neutral Citation:** 2026:MHC:1519

**Name of Court:** High Court of Judicature at Madras

**Name of Hon'ble Judge:** Hon’ble Mr. Justice Senthilkumar Ramamoorthy

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

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

### Suggested Titles for the Article

1. Madras High Court Upholds ‘GANESHA’ Trademark Registration Based on Honest Concurrent Use and Territorial Limits

2. Territorial Restrictions and Prior Registration Save Similar Trademark in Gram Flour Dispute: Madras HC Ruling

3. Section 12 of Trade Marks Act Comes to Rescue in Honest Concurrent Use Case: Madras High Court Decision

4. Madras HC Emphasises Special Circumstances Allowing Coexistence of Similar Trademarks in Different Regions

### Suggested Tags

#TrademarkLaw #HonestConcurrentUse #Section12TradeMarksAct #MadrasHighCourt #GANESHA trademark #TerritorialLimitation #IPCaselaw #TradeMarksAct1999 #IndianIPLaw #TrademarkRegistration #IPUpdate #DeityNameTrademark #AdvocateAjayAmitabhSuman

### Headnote of Article

**Headnote:** In a trademark appeal concerning rival “GANESHA” marks for gram flour, the Madras High Court upheld the registration granted to the Karnataka-based respondents by invoking Section 12 of the Trade Marks Act, 1999. The Court held that honest concurrent use, an earlier similar registration, continuous business activity, and territorial limitations restricting sales to Karnataka constituted special circumstances justifying the coexistence of similar marks. The appeal by the West Bengal company was dismissed, reinforcing that geographic separation and prior honest use can protect registrations even when marks share common elements.

R. Kishore Kumar Vs. R.R. Cine Productions

Madras High Court Decrees Copyright Suit in Favour of Producer in Film Title Dispute

Case Title: R. Kishore Kumar v. M/s R.R. Cine Productions & Ors. (C.S. No. 362 of 2016) & Connected Cross Suit C.S. (Comm Div) No. 237 of 2022

Court: High Court of Judicature at Madras

Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Date of Judgment: 08.04.2026

In a significant copyright dispute concerning ownership of the Tamil feature film originally titled “MANI” (later censored as “MONEY” and subsequently as “DHADHA”), the Madras High Court has upheld the claim of R. Kishore Kumar, proprietor of Annai Therasa International Films, as the producer and first owner of copyright in the cinematograph film.

Brief Facts

Kishore Kumar claimed to have conceived, produced, and directed the film starring Nithin Sathiya, Gayathri, Yogi Babu, and Mono Bala. He alleged that he had approached editor Durairajan @ R.D. Rajan for post-production work. According to him, Durairajan and M/s R.R. Cine Productions (represented by Meeran Malu Mohamed Rafiq) induced him to transfer only the title rights, but later fraudulently claimed production credits and obtained a CBFC censor certificate in the name of R.R. Cine Productions for the film titled “MONEY”.

Kishore Kumar complained to the Tamil Film Producers Council, which reportedly reversed the title transfer. He filed the suit in 2016 seeking declaration of copyright ownership and permanent injunction against infringement.

In a counter-suit filed in 2022, Durairajan and R.R. Cine Productions claimed that they had actually produced the film, with Durairajan acting as director and music director. They alleged Kishore Kumar was merely an assistant and had misappropriated documents. They sought declaration that their film “DHADHA” was not infringing and injunction against Kishore Kumar.

Key Evidence & Court’s Analysis

The Court meticulously examined the evidence led by both sides:

Kishore Kumar’s evidence: Included agreements with key crew members (hero, heroine, comedian, music director, dance director, art director, cinematographer) executed in May 2015 onwards (Exs.P3–P9), shooting ledger with contemporaneous entries bearing his production company’s stamp (Ex.P10), original bound script (Ex.P34), lyrics draft by Na. Muthukumar (Ex.P2), confirmation letter from actor Nasser (Ex.P37), and testimony of five supporting witnesses (PW1–PW5) who confirmed working under Kishore Kumar and receiving payments from him.

Durairajan/R.R. Cine Productions’ evidence: Relied on professional services agreements purportedly executed in March–April 2015 by the partnership firm (Exs.D2–D9), CBFC certificate in the name of Rafiq (Ex.P24), bank statements, pooja/shooting photographs, and testimony of DW1 (Durairajan), DW2, and DW3.

The Court found serious infirmities in the defence evidence:

The partnership deed (Ex.D16) was executed only on 18.07.2015, yet the agreements (Exs.D2–D9) were shown as executed earlier by the non-existent partnership firm.

A subsequent registered partnership deed dated 04.03.2016 further undermined the earlier documents.

Durairajan failed to produce the bound script despite claiming possession.

He could not recall camera details despite claiming to be the director and had no prior film production/directing experience.

Key defence witnesses included interested parties (e.g., editor Vinoth was Durairajan’s sister’s son).

The Court held that Kishore Kumar’s contemporaneous documents, especially the shooting ledger and crew agreements, carried greater credibility. It concluded that Kishore Kumar took the initiative and bore the responsibility for making the film, thereby qualifying as the “producer” under Section 2(uu) of the Copyright Act, 1957, and the first owner of copyright under Section 17.

Judgment

The Madras High Court decreed C.S. No. 362 of 2016 in favour of Kishore Kumar, granting:

Declaration that he is the author, creator, and sole copyright owner of the film “MANI”/“MONEY”.

Permanent injunction restraining Durairajan, R.R. Cine Productions, and others from infringing the copyright by releasing or exploiting the film.

The connected cross-suit C.S. (Comm Div) No. 237 of 2022 was dismissed. Costs of ₹4,00,000/- were awarded to Kishore Kumar.

Neutral Citation: To be assigned.

This judgment underscores the importance of contemporaneous documentary evidence and credible witness testimony in film copyright disputes, particularly where rival claims of production ownership arise. It reaffirms that the producer — the person who takes the initiative and responsibility for the film — is the first owner of copyright in a cinematograph work.

Disclaimer: This is a brief write-up based on the judgment for reporting purposes only and does not constitute legal advice. It may contain subjective summarization.

Written By:

Advocate Ajay Amitabh Suman, IP Adjutor

[Patent and Trademark Attorney], High Court of Delhi

#IPUpdate #IPCaselaw #CopyrightLaw #FilmCopyright #MadrasHighCourt #IndianIPLaw #IPIndia

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Madras High Court Clarifies Copyright Ownership in Film Production Dispute: Producer Who Takes Initiative and Responsibility Holds the Rights

Introduction

In the world of Indian cinema, disputes over who actually produced a film often lead to heated legal battles, especially when money, credits, and future releases are at stake. A recent judgment from the Madras High Court brings welcome clarity to such conflicts. The Court resolved a long-running clash between two parties claiming ownership of the same Tamil film, originally known as “MANI” and later censored under the title “MONEY”. The ruling emphasizes that the true producer is the person who steps forward to organize and take responsibility for creating the movie, and that person automatically becomes the first owner of its copyright. This decision serves as an important reminder for filmmakers, producers, and industry professionals about the value of proper documentation and honest claims in copyright matters.

Factual Background

The story revolves around a Tamil feature film featuring actors like Nithin Sathiya, Gayathri, Yogi Babu, and Mono Bala. R. Kishore Kumar, who runs Annai Therasa International Films, claimed that he conceived the project, wrote the story, screenplay, and dialogues, and directed the film. He said he had approached Durairajan, a professional editor, for post-production help. According to Kishore Kumar, Durairajan introduced him to Meeran Malu Mohamed Rafiq of R.R. Cine Productions, who expressed interest in buying or promoting the film. Kishore Kumar agreed only to transfer the title rights, but things went wrong when the other side allegedly started claiming full production credits. They even published advertisements showing themselves as producers and Durairajan as director, leaving out Kishore Kumar’s name entirely.

Kishore Kumar complained to film industry bodies like the Tamil Film Producers Council, which reportedly helped restore the title in his name. He also obtained clearances and registrations supporting his claim. However, the rival group managed to secure a censor certificate from the Central Board of Film Certification (CBFC) for the film under the name “MONEY”, listing Rafiq as the producer. Kishore Kumar believed this was done by misusing earlier documents and that it amounted to copyright infringement.

On the other side, Durairajan and R.R. Cine Productions told a different story. They asserted that Durairajan had written the script, served as director and music director, and that the production was funded and managed through their company, with Rafiq providing the financial support. They viewed Kishore Kumar as someone who assisted in production but later tried to take undue credit. They also claimed that Kishore Kumar had taken away important materials, including footage, and later renamed the film “DHADHA” to obtain his own censor certificate. This mutual finger-pointing led to cross suits being filed in court.

Procedural Background

Kishore Kumar filed his suit in 2016 seeking a declaration that he was the rightful author, creator, and sole copyright owner of the film, along with a permanent order stopping the others from releasing or exploiting it under any name. The rival side responded with their own suit in 2022, asking the court to declare that their version of the film (called “DHADHA”) was not an infringement and to restrain Kishore Kumar from interfering. Because the cases were connected and involved the same film, the Madras High Court heard them together as cross suits.

Both parties presented extensive evidence during the trial. Kishore Kumar brought forward agreements with key crew members such as the lead actors, music composer, dance director, art director, and cinematographer. He also submitted payment records, a detailed shooting ledger, the original bound script of the film, and supporting statements from several witnesses who had worked on the project. Durairajan and his team produced their own set of agreements, photographs from the shoot, bank records, and witness statements. They heavily relied on the CBFC censor certificate issued in Rafiq’s name. The court carefully examined all this material, including cross-examination of the main witnesses, before reaching its conclusions.

Reasoning

The judge analyzed the evidence with a focus on who truly took the lead in making the film. He looked at the timing and authenticity of the documents presented by each side. Kishore Kumar’s records, including crew agreements and a handwritten ledger showing day-to-day payments during shooting, appeared consistent and made at the time the work was happening. Several independent crew members, such as the camera person, art director, music director, and dance director, confirmed through their testimony that they had worked with Kishore Kumar and received payments from him.

In contrast, the court found weaknesses in the defence documents. Some key agreements were shown as signed by a partnership firm before that firm had even been legally formed according to the partnership deed. The rival side also struggled to produce the original bound script despite claiming to have it, and Durairajan could not provide clear details about basic aspects of the production, such as the type of camera used, even though he claimed to be the director. He had no prior experience directing or producing films, which raised further doubts.

The court noted that the CBFC censor certificate, while important as proof that the film was completed and viewed by officials, is only initial or prima facie evidence of who the producer is. It cannot override stronger, more detailed records of actual production activities. Ultimately, the judge concluded that the person who initiates the project and bears the main responsibility for organizing and completing the film qualifies as the producer. On the facts, Kishore Kumar had demonstrated that role through consistent evidence, while the other side’s involvement seemed more limited or secondary.

Judgements with Complete Citation and Their Context Discussed

The Madras High Court delivered a detailed common judgment on 8 April 2026 in the case bearing numbers C.S. No. 362 of 2016 and the connected C.S. (Comm Div) No. 237 of 2022. The citation is 2026:MHC:1440. Hon’ble Mr. Justice Senthilkumar Ramamoorthy authored the judgment.

In reaching the decision, the Court discussed key provisions of the Copyright Act, 1957. It referred to the definition of “producer” under Section 2(uu), which describes the producer as the person who takes the initiative and responsibility for making the cinematograph film. The judgment also explained Section 17, which states that the producer is the first owner of copyright in a film, unless there is a specific agreement to the contrary. These sections were applied in the context of weighing rival claims where both parties had some involvement but only one could be identified as the primary driving force behind the project.

The Court further clarified the limited evidentiary value of a CBFC certificate. While it serves as strong proof that the film exists and was certified for public exhibition after examination, it does not conclusively settle private disputes over ownership or copyright between parties. This point was discussed against the backdrop of the detailed production records, witness testimonies, and contemporaneous documents placed on record by Kishore Kumar.

By carefully comparing the quality and reliability of evidence from both sides, the Court rejected the defence claims and upheld Kishore Kumar’s position. It also addressed the cross suit, noting that it appeared to be a later response to Kishore Kumar’s earlier action.

Final Decision of Court

The Madras High Court decreed Kishore Kumar’s suit in his favour. It declared him as the author, creator, and sole copyright owner of the film “MANI” (censored as “MONEY”). A permanent injunction was granted, restraining Durairajan, R.R. Cine Productions, and others from infringing the copyright by releasing, distributing, or exploiting the film in any manner. The connected cross suit filed by the rival side was dismissed entirely. The Court also directed the losing parties to pay costs to Kishore Kumar.

Point of Law Settled in the Case

This judgment settles an important practical point in Indian copyright law for the film industry: In disputes over ownership of a cinematograph film, the court will primarily look at who actually took the initiative and assumed responsibility for producing the movie. A CBFC censor certificate provides only prima facie (initial) evidence of producer status and can be outweighed by better documentary and oral evidence showing the real course of production. The decision reinforces that the first owner of copyright in a film is the producer as defined under the Copyright Act, and proper, contemporaneous records play a crucial role in proving that status. It offers clear guidance that mere claims or isolated official documents are not enough when stronger proof of actual involvement exists.

Case Details

Title: R. Kishore Kumar Vs. R.R. Cine Productions & Ors.

Date of Order: 08.04.2026

Case Number: C.S. No. 362 of 2016 & C.S. (Comm Div) No. 237 of 2022

Neutral Citation: 2026:MHC:1440

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

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

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

Sunday, April 26, 2026

Dinesh Kumar Chowdhury Vs The Registrar of Trade Marks

Calcutta High Court Division Bench Holds No Further Appeal Lies Against Single Judge Order in Trademark Rectification Matters Under Section 91 of the Trade Marks Act, 1999

Dinesh Kumar Chowdhury Vs. The Registrar of Trade Marks:24.04.2026: TEMPAPO-IPD/2/2025:CalHC: Hon’ble Justice Debangsu Basak and Hon’ble Justice Md. Shabbar Rashidi

Calcutta High Court dismissed an intra-court appeal as not maintainable. The Division Bench held that Section 100A of the Code of Civil Procedure, 1908 bars any further appeal against an order passed by a Single Judge of the High Court in an appeal under Section 91 of the Trade Marks Act, 1999, arising from a rectification order of the Registrar of Trade Marks.

Background

The appellant, Dinesh Kumar Chowdhury, had obtained registration of a label mark containing the words “Ganraj Chhappan Bhog”. Respondent No. 2 filed a rectification application seeking cancellation of the registration, which the Registrar allowed by order dated 6 August 2024. Aggrieved, the appellant preferred an appeal under Section 91 of the Trade Marks Act, 1999 before the Intellectual Property Rights Division of the High Court. A learned Single Judge dismissed the appeal by order dated 3 March 2025. The appellant then filed the present appeal before the Division Bench challenging the Single Judge’s order.

Issue and Contentions

The core issue before the Division Bench was the maintainability of the Letters Patent Appeal.

Decision

The Division Bench, speaking upheld the preliminary objection and dismissed the appeal as not maintainable. The Court held that once a Single Judge exercises appellate powers under Section 91 of the Trade Marks Act, 1999 against the Registrar’s order, the prohibition under Section 100A CPC squarely applies, irrespective of whether the Registrar qualifies strictly as a “court” or whether the original order meets the technical definition of a “decree” under the CPC. The “notwithstanding” clause in Section 100A overrides the Letters Patent, 1865 and any other law.

The Bench noted that when the legislature substituted the Appellate Board with the High Court in Section 91 (with retrospective effect from 4 April 2021), Section 100A CPC (in its present form since 2002) was already in force. The legislature must be presumed to have been aware that no further appeal would lie from the Single Judge’s order. The Court distinguished or reconciled earlier precedents relied upon by the appellant, observing that many related to pre-amendment regimes or different statutes.

The appeal (TEMPAPO-IPD/2/2025) was accordingly dismissed without costs. The underlying rectification and cancellation of the appellant’s trademark registration thus stands upheld.

This judgment aligns with the Calcutta High Court’s earlier view in Glorious Investment and highlights a potential divergence with certain other High Courts on the availability of intra-court appeals in IP matters. It underscores the finality of Single Judge orders in trademark appeals to the High Court and reinforces the statutory bar under Section 100A CPC in such proceedings.

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

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

IPUpdate, #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #TrademarkRectification #TrademarkAppeal #Section91TMAct #Section100ACPC #CalcuttaHighCourt #IndianIPLaw #LegalUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Headnote: Calcutta High Court Division Bench rules that no intra-court (Letters Patent) appeal lies against a Single Judge’s order dismissing an appeal under Section 91 of the Trade Marks Act, 1999 from a Registrar’s rectification order, in view of the bar under Section 100A CPC.

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No Intra-Court Appeal Against Single Judge’s Order Under Section 91 of the Trade Marks Act, 1999

Introduction:

In a case involving dismissal of Appeal under Section 91 of Trademarks Act 1999 by Single Judge of Calcutta High Court, the Division Bench of Calcutta High Court decided whether a party could file yet another appeal after losing before a Single Judge of the High Court. The decision touches on how special laws like the Trade Marks Act interact with general rules about appeals in civil cases. It provides clarity for businesses and lawyers dealing with trademark registrations and challenges, showing that once a Single Judge has heard an appeal from the Registrar of Trade Marks, the matter usually ends there without any further appeal to a larger bench.

Factual Background:

A businessman named Dinesh Kumar Chowdhury had successfully registered a label mark that included the words “Ganraj Chhappan Bhog” along with other design elements. Another party felt this registration should not have been granted and applied to the Registrar of Trade Marks for rectification, asking the Registrar to cancel the registration. After hearing both sides, the Registrar agreed with the challenger and cancelled the trademark registration belonging to Dinesh Kumar Chowdhury. Feeling wronged, the trademark owner challenged this cancellation before the High Court.

Procedural Background:

The owner first filed an appeal under the special provision in the Trade Marks Act that allows any person unhappy with the Registrar’s decision to approach the High Court. A Single Judge of the Intellectual Property Rights Division carefully examined the matter and dismissed the appeal, agreeing with the Registrar’s decision to cancel the registration. Not satisfied even after this, the owner filed a further appeal before the Division Bench of the High Court, hoping for another chance to argue his case. The other party immediately raised an objection, saying this second appeal inside the same High Court was not allowed by law. The Division Bench heard detailed arguments only on this question of whether the further appeal could even be considered.

Reasoning:

The Division Bench, agreeing, focused on a key rule in the general law of civil procedure. This rule states that when a Single Judge of a High Court hears and decides an appeal from any original or earlier order, no further appeal can be filed against that decision, no matter what other laws or old charters of the High Court might say. The judges explained that this bar applies whenever a Single Judge is exercising powers as an appeal court, regardless of whether the first decision came from a regular civil court or from a special authority like the Registrar of Trade Marks.

The Court noted that the Trade Marks Act allows an appeal from the Registrar’s order straight to the High Court. When the legislature changed the law to send such appeals to the High Court instead of a separate board, the general rule preventing further appeals was already part of the law. The judges felt the lawmakers must have known that Single Judge decisions in these matters would become final. They carefully reviewed arguments that the Registrar does not act like a full court and that special rules of the High Court might allow more appeals, but concluded that the broad wording of the general rule covers these situations. The focus remains on the fact that the Single Judge was hearing an appeal, which triggers the prohibition on any additional appeal.

Judgements with Complete Citation Referred and Their Context Discussed:

The Division Bench placed strong reliance on the Supreme Court’s decision in Kamal Kumar Dutta and Another vs. Ruby General Hospital Ltd. and Others (2006) 7 SCC 613. In that case, the Supreme Court examined a similar situation under company law where appeals went to a Single Judge and held that no further appeal was possible because the law created a complete system with finality at that stage. The Calcutta High Court applied the same logic here, noting that the Registrar, while deciding rectification matters, performs quasi-judicial functions with many features similar to a court, such as hearing evidence and deciding rights between parties.

The Bench also referred to its own earlier coordinate bench ruling in Glorious Investment Ltd vs. Dunlop International Ltd (2025 SCC Online Cal 8647), which had already taken the view that further appeals are barred in trademark matters. Other Supreme Court cases like Mohd. Saud and Another vs. Dr. (Maj.) Shaikh Mahfooz (2010) 13 SCC 517 and Geeta Devi and Others vs. Puran Ram Raigar and Another (2010) 9 SCC 84 were cited to reinforce that appeals are creatures of statute and can be limited by clear legal provisions.

Final Decision of Court:

The Division Bench held that the further appeal before it was not maintainable in law. It dismissed the appeal without going into the merits of the trademark cancellation. As a result, the Single Judge’s order upholding the Registrar’s decision to cancel the registration stands, and the matter reaches its final conclusion at that stage.

Point of Law Settled in the Case:

This judgment settles that when a person challenges the Registrar of Trade Marks’ decision by filing an appeal before the High Court under the Trade Marks Act, the order passed by the Single Judge hearing that appeal is final. No additional appeal can be filed to a Division Bench of the same High Court because of the clear bar in the general civil procedure law. This brings certainty and speed to trademark disputes by limiting layers of appeals, while still allowing one full hearing before the High Court after the Registrar’s decision. It also shows that special intellectual property laws do not automatically override general rules designed to prevent endless litigation unless the statute expressly says so.

Case Detail:Dinesh Kumar Chowdhury Vs The Registrar of Trade Marks and Another

Order dated 24.04.2026

Case No.TEMPAPO-IPD/2/2025

Name of Court:Calcutta High Court (Intellectual Property Rights Appellate Division)

Name of Judges: Honourable Justice Debangsu Basak and Honourable Justice Md. Shabbar Rashidi.

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

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

**Suggested Titles for the Article:**

1. No Second Appeal in Trademark Rectification Cases: Calcutta High Court Applies Bar Under Section 100A CPC

2. Finality in Trademark Appeals: Calcutta High Court Rules Single Judge Orders Under Trade Marks Act Are Conclusive

3. Calcutta High Court Limits Intra-Court Appeals in IP Matters, Reinforcing Statutory Finality

TrademarkAppeal, Section91TMAct, Section100ACPC, CalcuttaHighCourt,IPCaseLaw, TrademarkRectification,LettersPatentAppeal, IndianIPLaw,IPRUpdate,TrademarkLaw, IPAdjutor, LegalUpdate, IPIndiaupdate

**Headnote of Article:**

Calcutta High Court Division Bench holds that no further intra-court appeal lies against a Single Judge’s order passed in an appeal under Section 91 of the Trade Marks Act, 1999 from the Registrar’s rectification decision, due to the bar under Section 100A of the Code of Civil Procedure; the ruling emphasizes finality after one High Court appeal and aligns with the principle that appeals are statutory creations subject to legislative limits.

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S.S. White Burs Inc. Vs The Registrar of Trade Marks

S.S. White Burs Inc. Vs. The Registrar of Trade Marks:25.04.2026:C.O. (COMM.IPD-TM) No. 448/2022:2026:DHC:3478:Hon’ble Ms. Justice Manmeet Pritam Singh Arora

In a detailed judgment concerning cross-rectification petitions over the trademark ‘S.S. WHITE’ used for dental care products, the Delhi High Court allowed the petition filed by S.S. White Burs Inc., a U.S.-based company, and directed cancellation of the Indian company’s registration while dismissing the counter-rectification petition.

Background

S.S. White Burs Inc. (Petitioner), a pioneer in dental products since 1844, claimed global rights in the coined mark ‘S.S. WHITE’ through a chain of title originating from its founder Dr. Samuel Stockton White. It held a prior Indian registration (No. 609897 in Class 10, applied in 1993) and asserted trans-border reputation and use in India since 1991 through distributors. The Petitioner sought rectification of Trade Mark Registration No. 2147676 in Classes 5 and 10 granted to S.S. White Dental Private Limited (Respondent), an Indian company incorporated in 1992, which had applied for the mark in 2011 and obtained registration in 2013.

The Respondent claimed honest adoption of ‘S.S. WHITE’ in 1991–92 at the instance of S.S. White, U.K., along with prior use in India. The parties were also litigating parallel commercial suits.

Key Findings

Justice Manmeet Pritam Singh Arora held that the Petitioner established prior, bona fide, and continuous global proprietary rights in the inherently distinctive coined mark ‘S.S. WHITE’, including territorial assignment under 1986 agreements (and amendments) granting it worldwide rights except in the UK, France, and Brazil.

The Court found substantial evidence of the Petitioner’s use and reputation in India since at least 1991, supported by sales data, affidavits, and worldwide registrations in over 90 countries.On the Respondent’s adoption, the Court ruled it was unauthorized and dishonest. The Respondent failed to produce any written authorization from S.S. White, U.K., whose own written statement in connected proceedings denied granting any such permission. Contemporary 1993 cease-and-desist notices from UK solicitors (asserting the Petitioner’s rights) put the Respondent on notice, yet it persisted with use. The Court highlighted inconsistencies in the Respondent’s stand — claiming derivation from S.S. White, U.K. in suits, but describing the name as an acronym (“Surgical Scientific White”) before the Registrar of Companies — rendering its adoption lacking in bona fides.

The Court further noted the Respondent’s slavish imitation of the Petitioner’s stylized device mark, evidencing bad faith under Section 11(10) of the Trade Marks Act, 1999. Procedural lapses in the original registration (improper classification and examination) were also considered, though the dishonesty finding was decisive.

The Respondent’s defences — including delay, lack of opposition, honest concurrent use, and absence of trans-border reputation — were rejected. The Court clarified that the Petitioner qualified as a “person aggrieved” and that prior knowledge did not bar rectification in cases of dishonest adoption.

Outcome

The Court allowed C.O. (COMM.IPD-TM) No. 448/2022, directing rectification of the Register by cancelling the Respondent’s impugned registration No. 2147676. Consequently, the Respondent’s counter-petition (C.O. (COMM.IPD-TM) No. 299/2023) was dismissed as it did not survive.

This judgment reinforces principles of prior rights in coined marks, strict scrutiny of claims of honest adoption (especially when derivative), and the relevance of bad faith and stylistic imitation in rectification proceedings under the Trade Marks Act, 1999. It underscores that territorial assignments and global reputation can prevail over local claims of concurrent use when adoption lacks bona fides.

Case Details: S.S. White Burs Inc. versus The Registrar of Trade Marks & Anr. and connected matter, Order dated 25.04.2026, C.O. (COMM.IPD-TM) 448/2022 (lead) & 299/2023, Delhi High Court, Honourable Ms. Justice Manmeet Pritam Singh Arora.

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

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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**Delhi High Court Cancels Indian Company’s ‘S.S. WHITE’ Trademark Registration, Upholding Global Rights of U.S. Pioneer in Dental Products**

**Introduction**

In a significant ruling on trademark rights in the dental industry, the Delhi High Court resolved a long-standing dispute between an American company with roots dating back to the 19th century and an Indian firm over the use of the mark ‘S.S. WHITE’. The Court examined claims of prior global ownership, honest adoption, and bad faith registration, ultimately protecting the established international brand while highlighting the importance of genuine and lawful adoption of trademarks in India.

**Factual Background**

The American company, S.S. White Burs Inc., traces its origins to a dentist named Dr. Samuel Stockton White who started making dental products in the United States in 1844 under the name ‘S.S. WHITE’. Over the decades, this coined mark became well-known worldwide for dental tools and supplies. Through business transfers and agreements in the 1980s, the U.S. company gained exclusive rights to the mark across most of the world, including India, while certain countries like the United Kingdom, France, and Brazil were treated separately. The American firm had been selling its products in India through distributors since the early 1990s and held an Indian trademark registration from the 1990s.

The Indian company, S.S. White Dental Private Limited, was incorporated in the early 1990s. It claimed it adopted the name ‘S.S. WHITE’ after discussions with a director from the UK branch of the brand for selling and making dental goods in India. The Indian firm registered the mark ‘S.S. WHITE’ in 2013 for dental and related products after applying in 2011. Both sides accused each other of copying and infringing rights, leading to parallel court cases.

**Procedural Background**

The U.S. company filed a petition before the Delhi High Court seeking to cancel the Indian company’s trademark registration, arguing it was wrongly granted and obtained through improper means. In response, the Indian company filed its own petition to cancel the U.S. company’s earlier registration. These cross-petitions were heard together, with the U.S. company’s petition treated as the main one. The Court also considered pleadings and documents from related commercial suits between the parties. The Indian company did not file a formal reply in the main petition, though it submitted written arguments drawing from the connected cases. After hearing detailed submissions from both sides, the Court reserved judgment and delivered its decision on 25 April 2026.

**Reasoning**

The Court first looked at the history of the mark and found that ‘S.S. WHITE’ was a specially created, distinctive name with a clear chain of ownership leading to the U.S. company for most parts of the world, including India. Evidence showed the American firm had built a strong global reputation over many years, with products reaching India through regular channels well before the Indian company’s adoption. The U.S. company had actively protected its rights worldwide and acted promptly once it learned of the Indian firm’s use.

Turning to the Indian company’s claim, the Court found its adoption was not independent or honest. The Indian firm said it received permission from the UK branch, but no written proof was provided, and the UK entity itself denied giving any such authorization in related proceedings. Old letters from the early 1990s showed the Indian company was warned about unauthorized use of the name, yet it continued. The Court noted inconsistencies in the Indian company’s explanations — one version linked the name to a foreign collaborator, while another described it as a simple abbreviation for its business activities. This shifting stand suggested the adoption was not straightforward.

The Court also observed that the Indian company had copied not just the words but the special stylized way the U.S. company presented its mark, which pointed to an attempt to ride on the established reputation. Even though the Indian firm had been using the name locally for some time, the Court held that such use did not create superior rights when the original adoption lacked genuine permission from the true owner for the Indian territory.

**Judgements with Complete Citation and Their Context Discussed**

The Court referred to principles from earlier cases to support its view on bad faith adoption. It discussed the ruling in *Kia Wang v. The Registrar of Trademarks & Anr.* (2023: DHC: 6684), where a coordinate bench cancelled a registration because the respondent had copied the stylized device mark of the petitioner for similar goods. In that context, the Court explained that imitating the distinctive presentation of a mark, combined with identical goods, shows bad faith and makes the registration vulnerable to cancellation under relevant provisions of the Trade Marks Act. This helped illustrate why slavish copying of style strengthens a case for rectification.

The judgment also touched upon the need for honest concurrent use and proper examination at the trademark registry, referencing the broader framework under the Act that protects prior rights and prevents misleading registrations. While discussing trans-border reputation, the Court kept in mind settled ideas from Supreme Court precedents like *Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.* (AIR 2018 SC 167), emphasizing that reputation can spill over into India through specialized fields even without massive local advertising.

**Final Decision of Court**

The Delhi High Court allowed the main petition filed by the U.S. company and directed the cancellation of the Indian company’s trademark registration for ‘S.S. WHITE’. As a result, the counter-petition by the Indian company did not survive and was dismissed. The Court made it clear that the U.S. company’s prior and legitimate rights prevailed, and the Indian registration could not stand due to the circumstances of its adoption and registration.

**Point of Law Settled in the Case**

This judgment settles that when a trademark has a clear international owner with prior rights in a territory, a local party cannot claim honest adoption merely by asserting oral permission from a related but unauthorized entity, especially when contemporaneous records show awareness of the true owner’s rights. Copying the stylized form of an established mark further indicates bad faith, making the registration liable to be removed. The decision reinforces that genuine permission or assignment from the rightful proprietor is essential for building independent rights, and shifting explanations about adoption can undermine a party’s claim before the court.

**Case Detail:** S.S. White Burs Inc. versus The Registrar of Trade Marks & Anr. and connected matter, Order dated 25.04.2026, C.O. (COMM.IPD-TM) 448/2022 (lead petition) & 299/2023, Delhi High Court, Honourable Ms. Justice Manmeet Pritam Singh Arora.

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

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

**Suggested Titles for the Article:**

1. Delhi High Court Protects Century-Old U.S. Dental Brand, Cancels Indian Firm’s ‘S.S. WHITE’ Trademark

2. Honest Adoption Under Scanner: Delhi High Court Cancels ‘S.S. WHITE’ Registration in Dental Products Dispute

3. Prior Global Rights Prevail: Key Trademark Rectification Ruling by Delhi High Court in ‘S.S. WHITE’ Case

**Suitable Tags:**

#TrademarkRectification #DelhiHighCourt #IPCaseLaw #TrademarkLaw #HonestAdoption #BadFaith #DentalProducts #IPRUpdate #IndianIPLaw #TrademarkDispute #S.S.White #IPAdjutor #AdvocateAjayAmitabhSuman #TrademarkCancellation

**Headnote of Article:**

Delhi High Court cancels Indian company’s ‘S.S. WHITE’ trademark registration holding its adoption unauthorized and lacking bona fides despite local use; upholds prior global rights of U.S. pioneer in dental products and emphasizes that imitation of stylized mark and inconsistent explanations indicate bad faith under trademark law.

Sanjeev Gaur Vs The State of Assam

Gauhati High Court Upholds Cognizance in Intellectual Property Theft Dispute Involving Surgical Glove Manufacturing Machines

Case Title: Sanjeev Gaur & Anr. v. State of Assam & Anr.

Case No.: Crl.Pet./1526/2024

Decided on: 23.04.2026

Coram: Honourable Mr. Justice Pranjal Das

In a significant ruling concerning territorial jurisdiction and prima facie case in intellectual property-related offences, the Gauhati High Court dismissed a petition under Section 528/529 BNSS, 2023, seeking quashing of criminal proceedings in CR Case No. 40 of 2024.

Background

The informant, M/s Anondita Healthcare Pvt. Ltd., alleged that the petitioners — Sanjeev Gaur (petitioner No. 1) and Ranjit Kumar Yadav (petitioner No. 2, a former employee) — conspired to steal the design of an indigenously developed machine used for manufacturing surgical gloves. The machine was conceptualized in 2013, became operational in October 2013, and its design was registered under the Designs Act, 2002 on 18.04.2016. The company claimed the machine was assembled in Noida and later shifted to its factory in Village Kurshala, Paneri, Kamrup (under Boko Police Station jurisdiction) in 2015.

It was alleged that petitioner No. 2, while working as Assistant Production Manager till July 2019 at the Assam factory, had access to the confidential design and shared it with petitioner No. 1 after being induced with better pay and bribes. Petitioner No. 2 later joined petitioner No. 1’s company, M/s Swear Healthcare Pvt. Ltd., at Dholpur, Rajasthan, where an allegedly identical machine was manufactured, causing wrongful loss to the informant and gain to the petitioners.

An initial FIR (Boko P.S. Case No. 826/2021) under Sections 120(B), 408, 420 IPC read with Section 63 of the Copyright Act and Sections 103/104 of the Trade Marks Act was registered. However, the police filed a final report (FR No. 168/2023) citing insufficient evidence. The informant then filed a protest petition and a private complaint dated 28.06.2024, registered as CR Case No. 40/2024.

Proceedings Before the Magistrate

The learned JMFC, Boko, examined the complainant under Section 200 CrPC and three witnesses (CW1–CW3) under Section 202 CrPC. The witnesses consistently deposed about petitioner No. 2’s involvement in the design process, his communications with petitioner No. 1 regarding the machine, and the identical nature of the machine observed at the Rajasthan factory. On 21.08.2024, the Magistrate took cognizance under Sections 408, 420, 120(B) IPC read with Section 63 of the Copyright Act and Sections 103/104 of the Trade Marks Act, and issued summons.

High Court’s Decision

The petitioners contended that:

The complaint was malicious and stemmed from business rivalry.

The Boko court lacked territorial jurisdiction, as the alleged copied machine was operating in Rajasthan.

No prima facie case existed, especially after the police final report.

Justice Pranjal Das rejected both grounds. On territorial jurisdiction, the Court held that part of the offence (design theft and access to the machine) occurred within the jurisdiction of Boko Police Station in Assam, where the informant’s machine operated and the former employee had worked. Relying on Sections 177 and 178 CrPC (corresponding to Sections 197 and 198 BNSS), the Court ruled that even if the offence had multiple limbs across jurisdictions, the Boko court had jurisdiction since a part of the cause of action arose there. The decisions in Y. Abraham Ajith (2004) 8 SCC 100 and Bhura Ram (2008) 11 SCC 103 were distinguished, as those cases involved no part of the offence in the concerned jurisdiction.

On merits, the Court found that the complainant and witnesses’ statements disclosed a prima facie case of criminal conspiracy, breach of trust, cheating, and IP violations. The Magistrate had applied his mind and properly scrutinized the evidence before taking cognizance, in line with the principles laid down in Sujoy Ghosh v. State of Jharkhand (SLP (Crl) No. 9452 of 2025). The police final report did not bar the private complaint.

Outcome

The High Court upheld the cognizance order dated 21.08.2024 and dismissed the petition. The stay on proceedings was vacated.

This judgment reaffirms that in cases involving multi-jurisdictional economic and IP offences, courts can exercise jurisdiction where any part of the offence occurs, and private complaints can proceed even after a police closure report if sufficient material discloses a prima facie case.

=====

Factual and Procedural Background

A company called M/s Anondita Healthcare Pvt Ltd was making surgical gloves using a special machine they had designed themselves in their factory near Boko in Assam. They alleged that one of their former employees, Ranjit Kumar Yadav, who had worked closely with the machine and knew all its details, secretly shared the design with another businessman named Sanjeev Gaur. Gaur then started producing very similar machines in his factory in Dholpur, Rajasthan, through his company Swear Healthcare. The company claimed this caused them heavy losses. They first filed a police complaint in Assam in 2021, but after investigation the police submitted a final report saying there was not enough evidence. Not satisfied, the company filed a private complaint before the local magistrate in Boko in 2024. The magistrate heard the company owner and three witnesses who described how the employee had access to the design, spoke about making similar machines for Gaur, and how an identical machine was later seen in Rajasthan. Based on these statements, the magistrate took cognizance of offences like cheating, criminal conspiracy, breach of trust, and violations related to copyright and trademarks, and issued summons to both men.

Dispute in Question

The petitioners Sanjeev Gaur and Ranjit Kumar Yadav approached the Gauhati High Court to get the entire criminal case quashed. They argued that the case was nothing but a business rivalry turned into a criminal matter, that the police had already found no evidence, and most importantly that the court in Assam had no jurisdiction because the accused were operating their machines in Rajasthan, far away from Assam. They also said there was no strong enough case to even summon them.

Judgement with Complete Citation their Context Referred, Reasoning and Decision of Court

Justice Pranjal Das of the Gauhati High Court carefully examined the matter and delivered the judgment on 23 April 2026 in the case of Sanjeev Gaur and Anr. versus The State of Assam and Anr. The court referred to the landmark Supreme Court decisions on territorial jurisdiction such as Y. Abraham Ajith & Ors Vs. Inspector of Police, Chennai (2004) 8 SCC 100 and Bhura Ram & Ors Vs. State of Rajasthan & Anr (2008) 11 SCC 103, which explain that a court has jurisdiction only if part of the offence has occurred within its area. The court also relied on the recent Supreme Court ruling in Sujoy Ghosh Vs. The State of Jharkhand & Anr (SLP (Crl) No. 9452 of 2025), which lays down clear principles that summoning an accused is a serious step and the magistrate must apply his mind to see if a prima facie offence is made out from the complaint and witness statements.

The High Court reasoned that even though the copied machines were being used in Rajasthan, a significant part of the alleged offence – including the development and operation of the original machine, the employee’s access to its confidential design while working in the Assam factory, and the alleged stealing of that design – had taken place within the jurisdiction of the Boko court in Assam. Therefore, under the rules of territorial jurisdiction, the local magistrate had the power to hear the case. The court further observed that the statements given by the complainant and the three witnesses were consistent and detailed enough to show a basic case of wrongdoing against the petitioners. The magistrate had properly examined the material before taking cognizance and issuing summons, and the earlier police closure report did not prevent the private complaint from proceeding when fresh evidence was placed before the court. Finding no merit in the petition, the High Court upheld the magistrate’s order dated 21 August 2024, dismissed the quashing petition, and vacated the stay on the proceedings.

One Important Legal Point Settled in this Case

Even when the main manufacturing activity or the accused persons are located in another state, a criminal court can still exercise jurisdiction if any important part of the alleged offence, such as the place where the original machine operated or where the design was allegedly stolen, occurred within its local area. This allows cases involving intellectual property theft and business disputes spanning multiple states to be tried where a substantial connection exists.

Case Details: Sanjeev Gaur and Anr. versus The State of Assam and Anr., Order dated 23.04.2026, Case No. Crl.Pet./1526/2024, Gauhati High Court, Honourable Mr. Justice Pranjal Das.

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

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

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Point of Law Settled in the Case

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