Tuesday, June 2, 2026

SC-Cycle Corporation of India Ltd. Vs. T.I. Raleigh Industries Pvt. Ltd.

When Nationalisation Meets Trademark Law: The Supreme Court's Landmark Ruling in Cycle Corporation of India Ltd. vs. T.I. Raleigh Industries Pvt. Ltd.

Introduction

Few trademark disputes in Indian legal history arise from as remarkable a set of circumstances as the one decided by the Supreme Court of India on May 10, 1996, in Cycle Corporation of India Ltd. vs. T.I. Raleigh Industries Pvt. Ltd. and Others. This case sits at the crossroads of trademark law, industrial licensing law, and the consequences of government nationalisation of private industry — a unique confluence that makes it a deeply instructive precedent not only for intellectual property lawyers but for anyone seeking to understand how Indian courts balance commercial reality with statutory formality.

At the core of this case was a question that sounds almost paradoxical: can a company that manufactures goods and sells them in the market under a well-known brand name be considered a legitimate user of that brand, even if it never formally registered itself as a "registered user" under the applicable trademark statute? And when a foreign trademark owner tries to have its mark removed from the Indian register on the ground that no one has been using it for over five years, can an Indian company resist that attempt by pointing to its own long history of actual use — use that was unregistered, unrecognised by the registry, but undeniably real and continuous on the ground?

The Trade and Merchandise Marks Act, 1958, which was the governing legislation at the time, provided in Section 46(1)(b) that a registered trademark could be removed from the register if, for a continuous period of five years or more up to one month before the date of the removal application, the mark had not been used in good faith. Section 48 of the same Act created the concept of a "registered user" — someone other than the trademark proprietor who is formally registered to use the mark. Section 46(3) carved out an exception, protecting proprietors who could show that non-use was due to special circumstances in the trade, not any intention to abandon the mark.

The Supreme Court's navigation through these provisions, against the backdrop of a nationalised Indian bicycle industry and a decades-long collaboration with a British company, produced a judgment of lasting significance. The appeal was dismissed and the High Court's refusal to strike off the trademark from the register was upheld.

Factual and Procedural Background

The respondents, T.I. Raleigh Industries Pvt. Ltd. and others, were connected to the well-known British bicycle brand "Raleigh." Through their agents, they had registered the trademark "Raleigh" and 11 other trade marks — totalling 12 marks — under the Indian Merchandise Marks Act, 1889 (4 of 1889) and the Trade Marks Act, 1940 (5 of 1940). The Trade and Merchandise Marks Act, 1958 (43 of 1958), which came into force on October 3, 1958, repealed the predecessor Acts and is the statute under which this dispute was ultimately decided.

The chain of events that led to this case began as far back as November 3, 1948, when the respondents entered into an agreement with one Sudhir Kumar Sen to provide technical know-how to an Indian company that would be formed to manufacture bicycles and market them under Raleigh's Indian trade marks. Pursuant to this arrangement, a company called Sen Raleigh Ltd. was incorporated, which manufactured bicycles with technical assistance from the respondents and sold them under the Raleigh brand and trade marks belonging to the respondents. On April 24, 1954, Sen Raleigh was recorded as a permitted user of the trade marks. By a further agreement dated December 29, 1962, Sen Raleigh and the respondents agreed that Sen Raleigh would be a registered user of the marks for a further period extending up to 1976.

On September 8, 1975, Sen Raleigh Ltd. was taken over by the Government of India under the Industrial (Development and Regulation) Act, 1951 — commonly referred to as the IDR Act — and the Government assumed management of the company. The agreement dated December 29, 1962, was modified and the respondents were given the option to terminate it. A fresh agreement was then entered into on December 20, 1976, between the appellant, Cycle Corporation of India Ltd. — into which Sen Raleigh had by then been merged by operation of the IDR Act following nationalisation — and the respondent, under which the appellant used the 12 trade marks as a registered user for a period of 5 years.

On March 28, 1978, a joint application signed by the respondent as proprietor and by Sen Raleigh Ltd. as registered user was filed before the Registrar of Trade Marks. On October 24, 1980, Sen Raleigh was formally nationalised and vested in the appellant Corporation by publication of a notification under the IDR Act. On March 5, 1982, the respondent wrote to the appellant stating that in the absence of a new agreement, they were instructing their advocates to prevent the appellant from using the trade mark with effect from April 1, 1982.

On March 24, 1982, the appellant filed an application under Sections 32, 46, and 56 of the Trade and Merchandise Marks Act, 1958, before the High Court of Calcutta in Suit No. 266 of 1992, seeking to have the respondents' trade marks removed from the register. The appellant's case was, in essence, that neither the respondents nor any registered user had used the trade mark for a continuous period of five years or longer, and that further use by the respondents would be likely to deceive and cause confusion among the trade and public. Simultaneously, on March 25, 1982, the appellant also filed an application for registration of three trade marks in its own favour. However, by proceedings dated June 13, 1984, the Registrar of Trade Marks informed the appellant that the registered user applications were treated as abandoned because the appellant had failed to comply with statutory requirements.

The learned Single Judge of the Calcutta High Court dismissed the appellant's application by a judgment dated September 13, 1990. He held that the expression "by any registered proprietor" in Section 46(1)(b) extends beyond the registered proprietor and the registered user to include any bona fide or authorised user. He further held that special circumstances were available to the respondent as a defence for non-use even after 1979, since the supply of technical know-how by the respondent was not entirely absent after the termination of the collaboration agreement. He declined to rectify the trade marks and refused to strike them off the register. The Division Bench of the Calcutta High Court, in Appeal No. 13 of 1991, confirmed this decision by its judgment dated June 3, 1994. The Division Bench held that from October 25, 1980 onwards, the respondent had allowed and permitted the appellant to manufacture bicycles and pass off the goods under the respondents' trade marks. Though the collaboration and registered user agreements had stood expired from October 31, 1981, no new agreement was executed. There was no specific bar preventing an unregistered licensee from using a registered trade mark, so long as there existed a connection in the course of trade between the licensor and the licensee. The Division Bench also held that the non-registration of the user agreement by Sen Raleigh and the appellant was due to the default of the appellant, and that the appellant could not take a contradictory stand of applying for rectification while simultaneously seeking registration of its own marks. The appellant then came before the Supreme Court by way of special leave.

The Dispute

The dispute that came before the Supreme Court had three principal dimensions. The first was whether the appellant Corporation could be considered a "bona fide user" of the respondents' trade marks for the purpose of Section 46(1)(b), notwithstanding that it was not a formally registered user under Section 48(1) of the Act, particularly after the expiry of the registered user agreement on December 20, 1981, and the abandonment of the joint application. If the appellant was not a bona fide user, then the respondents too could not take credit for that use, and the five-year period of non-use might be established — which would then entitle the court to remove the mark.

The second dimension was whether the provisions of Section 46(3) — the special circumstances exception — were available to the respondents to defend themselves against the non-use allegation. The appellant argued that the respondents had not been using the marks as registered proprietors since April 20, 1954, and had failed to prove that they were prevented from using the marks for a period of five years or more preceding the date of the removal application due to special circumstances in the trade.

The third dimension was whether the High Court had properly exercised its discretion under Section 46 in refusing to rectify and strike off the trade marks from the register. The appellant contended that the public interest in having access to quality goods produced under the Raleigh brand should weigh in favour of keeping the marks alive in Indian hands, and that the court should have exercised its discretion to remove the marks.

Reasoning and Analysis of the Judge

The judgment of the Supreme Court was delivered by K. Ramaswamy, J., with whom Faizan Uddin, J., and G.B. Pattanaik, J., concurred.

On the Statutory Framework

The Court began by carefully setting out the relevant statutory provisions. Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958, provides that a registered trade mark may be taken off the register if it is established that up to a date one month before the date of application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor for the time being. Section 46(3) provides that an applicant shall not be entitled to rely on non-use if the non-use was due to special circumstances in the trade and not to any intention to abandon or not use the trade mark.

Section 48 provides for registered users and states that the permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purpose of Section 46 or for any other purpose for which such use is material under the Act or any other law.

The Court read these provisions together and explained their interplay clearly. The benefit of Section 46 — meaning the protection from having a mark struck off — would be available during the period for which an agreement was registered and use continued in furtherance of that agreement. Under Section 48(1), for the purpose of the deemed use fiction, the use must be either by the registered proprietor or by a formally registered user. An unregistered permitted person does not benefit from the deemed use fiction under sub-section (2) of Section 48. So far, the statutory position seemed to favour the appellant.

On the Concept of Bona Fide User and the Unregistered Licensee

However, the Court went further, and here lay the most important and original reasoning of the judgment. The Court held that even in the case of an unregistered licensee — that is, someone who is using the mark with the permission or consent of the proprietor but is not formally registered as a user — so long as there is an unbroken connection in the course of trade between the licensor and the passing off of the licensee's goods under the trade mark, there would be sufficient connection in the course of trade between the proprietor and the bona fide user of the trade mark by that unregistered licensee. This connection would link the registered proprietor and the user of the trade mark through the activities of the unregistered licensee. The permission or consent for such use may be express or may be implied by a long course of dealings. The appellant must, by course of conduct, be presumed to be a bona fide user for the purpose of Section 46(1)(b).

The Court acknowledged a decision of the Delhi High Court in K.R. Beri & Co. vs. Metal Goods Mfg. Co. (P) Ltd., reported at AIR 1980 Del 299, where the Division Bench had taken the view that an unregistered user of the trade mark, even with the consent of the proprietor, cannot be construed to be a registered user under Section 48(1), and that construing it otherwise would render sub-section (2) of Section 48 surplusage or otiose. The Supreme Court disagreed with this view, holding that it was not correct to hold that proving a bona fide user of an unregistered user when connection between the proprietor of the trade mark and the permitted user in relation to passing off of the goods under the trade mark are proved, renders sub-section (2) of Section 48 surplusage or otiose. The Delhi High Court's view on this specific point was, therefore, partly overruled.

The factual foundation for this conclusion was important. The High Court had found, and it was not disputed before the Supreme Court, that the appellant had entered into an agreement with Sen Raleigh — which was a permitted user of the trade marks — and had used the trade mark until November 1, 1976. Thereafter, by the registered user agreement dated December 20, 1976, the trade mark had been used for a period of 5 years. The Court found that it was not in dispute that till the date of filing of the application, the appellant had used the trade mark in passing off the bicycles under the trade mark of the respondent. The appellant had come to succeed to the position of Sen Raleigh by statutory operation following nationalisation under the IDR Act. This was therefore not a case of getting the trade mark registered under a predecessor Act and continuing under the Act for trafficking in the trade mark — an entirely different and less meritorious situation.

The Court also relied on American Home Products Corpn. vs. Mac Laboratories (P) Ltd., reported at (1986) 1 SCC 465, to reiterate that getting a trade mark registered without any intention to use it in relation to any goods but merely to sell it to others would be trafficking in the trade mark, and such conduct would not receive the assistance of the court. The court requires a real trade connection between the proprietor and the licensee of the goods, and the intention to use the trade mark must exist at the date of the application and must be genuine and bona fide and continue to subsist. In the present case, the facts showed that such a genuine trade connection existed throughout the relevant period.

On the Special Circumstances Exception under Section 46(3)

The Court held that while the burden lies on the registered proprietor to establish the special circumstances exception under Section 46(3), the application for rectification itself prima facie shows non-use for the relevant period, after which the burden shifts to the proprietor of the trade mark to affirmatively prove that the non-use was strictly due to special circumstances of the trade and not due to any intention not to use the mark. The non-use must be due to something that would have prevented use by the mark's owner independently of whether or not those special circumstances had arisen.

However, the Court concluded that it was not even necessary to enter into this question in the present case. The admitted position was that Sen Raleigh — admittedly a registered user — had been the channel through which the appellant had bona fide used the registered trade mark of the registered proprietor. Since Sen Raleigh was a registered user through whom the appellant had bona fide used the trade mark, there was no discontinuance or non-use of the trade mark by the respondent to establish the special circumstances argument. Sub-section (3) of Section 46 was therefore not attracted to the facts of the instant case at all.

The Court also chose not to decide whether the pendency of the application filed by the appellant under Section 48(1) for registration as a registered user would have constituted a special circumstance in favour of the respondent for the purpose of Section 46(3), leaving that question open.

On the Exercise of Discretion under Section 46

The Court affirmed that while exercising discretion under Section 46, the court must take into consideration not only the commercial interests of the parties but also the public interest. It referred to paragraph 21.82 at page 386 of the Law of Trade Marks and Passing-off by P. Narayanan (4th Edition), which states that ordinarily a mark will be expunged — taken off the register — when the factual circumstances necessary for its removal are established, unless it is shown that the case falls within the exceptions provided in sub-section (3).

The Court noted that the appellant had never at any point of time abandoned the use of the trade mark of the respondent-registered proprietor till the filing of the application. Although the appellant had not used the trade mark by itself since 1954 and after the expiry of the permitted use by Sen Raleigh, once the respondent issued notice directing the appellant not to use the mark, the appellant came to use the same in passing off bicycles manufactured by it under the trade mark of the respondent. The High Court had, therefore, rightly declined to rectify the trade mark under Section 46(1)(b) of the Act. The Supreme Court found no persuasive reason to take a different view from that of the High Court. The High Court had, in its opinion, properly exercised its discretion and refused to rectify and strike off the trade mark from the register of trade marks.

The Final Decision of the Court

The Supreme Court dismissed the appeal. It upheld the judgment of the Division Bench of the Calcutta High Court dated June 3, 1994, which in turn had confirmed the judgment of the Single Judge dated September 13, 1990. The respondents' 12 trade marks, including the mark "Raleigh," were not removed from the register. The appeal was dismissed without costs in view of the particular circumstances of the case.

Points of Law Settled in the Case

This judgment settled several important propositions under the Trade and Merchandise Marks Act, 1958, that continue to guide courts and practitioners in trademark matters.

The first and most important point is that the concept of a bona fide user under Section 46(1)(b) is not confined to formally registered users under Section 48(1). Even an unregistered licensee — someone using a trade mark with the express or implied permission of the registered proprietor — can constitute a bona fide user for the purposes of Section 46, provided there is an unbroken connection in the course of trade between the licensor and the passing off of the licensee's goods under the trade mark. This connection is what links the registered proprietor's ownership of the mark with the actual commercial use of the mark in the market.

The second point is a clarification of the relationship between Section 46 and Section 48. The deemed use fiction in sub-section (2) of Section 48 — which says that permitted use is deemed to be use by the proprietor — is specifically referable to the registered user or the permitted user who is registered. It does not extend automatically to unregistered permitted users. However, this does not mean that unregistered use is entirely irrelevant. The connecting link of passing off goods under the trade mark between the licensor and the unregistered licensee, when bona fide and with permission, can establish sufficient trade connection to prevent the mark from being taken off the register.

The third point relates to the burden of proof under Section 46(3). The burden to establish special circumstances for non-use lies on the registered proprietor of the trade mark. An application for rectification itself creates a prima facie presumption of non-use, following which the proprietor must affirmatively show that the non-use was due to special circumstances in the trade alone, not to any other cause and not to any intention to abandon the mark.

The fourth point is that Section 46(3) is not attracted when, on the facts, there has actually been bona fide use of the trade mark — whether by the registered proprietor, the registered user, or an unregistered licensee with a genuine trade connection. The special circumstances exception is only relevant when non-use is actually established.

The fifth point reinforces the principle from American Home Products Corpn. vs. Mac Laboratories (P) Ltd., (1986) 1 SCC 465, that trademark registration obtained merely to traffic in the mark — that is, to sell it rather than use it — will not receive judicial protection. There must be a real and genuine trade connection between the proprietor and the licensee, and the intention to use the mark must be genuine and subsisting.

The sixth point is that discretion under Section 46 must be exercised having regard to both commercial interest of the parties and broader public interest. When the factual circumstances for removal are not established — particularly because bona fide use by an authorised party has been proved — the court is entitled to decline to strike off the mark.

Case Details

Title: Cycle Corporation of India Ltd. Vs. T.I. Raleigh Industries Pvt. Ltd. and Others

Date of Order: May 10, 1996

Case Number: Civil Appeal No. 8266 of 1996 (arising from Judgment and Order dated June 3, 1994 of the Calcutta High Court in Appeal No. 13 of 1991)

Neutral Citation: (1996) 9 SCC 430; H-M/T/16307/S

Name of Court: Supreme Court of India

Name of Hon'ble Judges: K. Ramaswamy, J.; Faizan Uddin, J.; G.B. Pattanaik, J.

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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Headnote

The Supreme Court of India, in this appeal by special leave from the judgment of the Division Bench of the Calcutta High Court, held that the appellant — Cycle Corporation of India Ltd., a nationalised entity that had succeeded to the position of Sen Raleigh Ltd. by statutory operation under the Industrial (Development and Regulation) Act, 1951 — was a bona fide user of the respondents' trade marks for the purpose of Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958, notwithstanding that it was not formally registered as a permitted user under Section 48(1) of the Act after the expiry of the registered user agreement dated December 20, 1976. The Court held that even an unregistered licensee, so long as there is an unbroken connection in the course of trade between the licensor-proprietor and the passing off of the licensee's goods under the trade mark, constitutes a bona fide user sufficient to prevent removal of the trade mark from the register under Section 46(1)(b). The deemed use fiction in sub-section (2) of Section 48 is referable to the registered user or the permitted user who is registered, and does not extend to unregistered permitted users; however, the connecting link of bona fide passing off of goods under the trade mark with the permission — express or implied — of the registered proprietor is independently sufficient to establish bona fide use under Section 46(1)(b). The Court further held that sub-section (3) of Section 46 — the special circumstances exception for non-use — was not attracted on the facts of this case, since bona fide use of the trade mark through the registered user Sen Raleigh and thereafter through the appellant had been established throughout the relevant period, leaving no non-use to be excused by special circumstances. On the question of discretion under Section 46, the Court held that the High Court had properly exercised its discretion in refusing to rectify and strike off the respondents' trade marks from the register of trade marks, since the factual circumstances necessary for removal had not been established. The view of the Delhi High Court in K.R. Beri & Co. vs. Metal Goods Mfg. Co. (P) Ltd., AIR 1980 Del 299, insofar as it held that bona fide use by an unregistered user with the proprietor's consent renders sub-section (2) of Section 48 surplusage, was partly overruled. Reliance placed on American Home Products Corpn. vs. Mac Laboratories (P) Ltd., (1986) 1 SCC 465, to reaffirm that there must be a real and genuine trade connection between the proprietor and the licensee at the date of the application for registration of the trade mark, and the intention to use the mark must be genuine, bona fide, and continuing. Appeal dismissed without costs.

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Monday, June 1, 2026

Intas Pharmaceuticals Limited Vs. Sun Pharma Laboratories Limited

BEVATAS vs BEVETEX: How Delhi High Court Overturned a Permanent Injunction Against Intas Pharmaceuticals in a Landmark Pharmaceutical Trademark Dispute

Introduction

The intersection of trademark law and public health has always been a sensitive and complex terrain for courts. When pharmaceutical companies fight over brand names, the stakes are not merely commercial — lives can potentially be at risk if wrong drugs are dispensed to cancer patients. Yet, the law cannot be stretched beyond its limits on the mere invocation of public interest, especially when the party claiming to protect public interest has itself admitted it suffered no commercial loss and produced no credible evidence of any real confusion in the marketplace. The Delhi High Court's Division Bench judgment delivered on May 29, 2026 in Intas Pharmaceuticals Limited versus Sun Pharma Laboratories Limited is a landmark ruling that settles several important questions about how trademark infringement cases involving pharmaceutical products must be tried, what evidence must be led, and how courts must assess deceptive similarity between drug brand names at the post-trial stage. The court reversed a permanent injunction that had been granted against Intas Pharmaceuticals and, in doing so, laid down important principles that will guide pharmaceutical trademark litigation in India for years to come.

Factual and Procedural Background

Intas Pharmaceuticals Limited is a large multinational pharmaceutical company operating across multiple therapeutic segments including oncology. In 2016, Intas launched an anti-cancer drug under the brand name BEVATAS. This drug contains the molecule Bevacizumab, which is a monoclonal antibody — a biological drug used as a first line of treatment for several serious cancers including colorectal cancer, ovarian cancer, cervical cancer, lung cancer, metastatic breast cancer, and recurrent glioblastoma. The drug was approved by the Drug Controller General of India before its launch, went through rigorous clinical trials, and is administered intravenously only in hospital oncology settings by trained oncology nurses under the supervision of an Oncologist. By the time this appeal was heard, BEVATAS had become the market leader among drugs containing Bevacizumab in India, with approximately 22 percent market share, having been administered to over 75,000 cancer patients with about 12,000 patients currently undergoing treatment with the drug.

The name BEVATAS was coined by Intas by combining BEVA, taken from the first part of the molecule name Bevacizumab, and TAS, derived from the corporate name INTAS.

Sun Pharma Laboratories Limited is the registered proprietor of the trademark BEVETEX, which it applied for registration back in 1983, receiving the certificate of registration in 1990 under Class 5 of the Trade Marks Register. However, Sun Pharma admittedly did not actually use the mark BEVETEX for over three decades. It began commercially using BEVETEX only in 2015 for its own anti-cancer drug, which contains an entirely different molecule called Paclitaxel. Paclitaxel is a synthetic chemical cytotoxic agent, not a biological drug. It is used as a second line of treatment — that is, only after a patient's combination chemotherapy has failed, or after a relapse within six months of adjuvant chemotherapy — and only for metastatic breast cancer. Sun Pharma's drug BEVETEX is thus fundamentally different in composition, indication, mechanism of action, and stage of treatment from Intas's drug BEVATAS.

Within just about one year of Sun Pharma launching BEVETEX in 2015, Intas launched BEVATAS in October 2016. Sun Pharma learned about Intas's trademark application for BEVATAS in October 2016 and filed an opposition before the Trademark Registry on December 27, 2016. Claiming to have gained knowledge of the actual product only in October 2017, Sun Pharma instituted a suit before the Additional District Judge, South-East District, Saket Courts, Delhi, in December 2017, being CS (COMM) No. 39 of 2021, alleging trademark infringement, passing off, unfair competition, misappropriation of goodwill and reputation, and seeking permanent injunction, damages, rendition of accounts, and costs.

The Trial Court, vide a detailed order dated September 17, 2018, dismissed Sun Pharma's application for interim injunction, holding that the marks BEVATAS and BEVETEX were structurally, phonetically, and visually different and that no prima facie case of infringement or passing off was made out in view of the distinctions in the character, mode of administration, and other distinct factors of the two drugs. This order was upheld by an Appellate Bench of the Delhi High Court on January 9, 2020, and Sun Pharma's Special Leave Petition before the Supreme Court of India was dismissed on February 14, 2020.

After completion of evidence and trial, and after the valuation of the suit's reliefs was enhanced, the matter was transferred to the Original Side IP Division of the Delhi High Court. During the trial, Sun Pharma gave up its claim for damages, rendition of accounts, and all monetary reliefs, taking the stand that it was prosecuting the suit solely in public interest and had no commercial interest. Only the prayer for a permanent injunction restraining Intas from using the mark BEVATAS was pressed before the learned Single Judge.

The learned Single Judge, by the impugned judgment dated March 28, 2026, decreed the suit in favor of Sun Pharma and permanently restrained Intas from using the mark BEVATAS, holding it to be deceptively similar to BEVETEX and likely to cause confusion in the minds of consumers. Aggrieved by this order, Intas filed the present Regular First Appeal before the Division Bench under Section 96 of the Code of Civil Procedure, 1908.

The Dispute

The core dispute before the Division Bench was whether the learned Single Judge was justified in granting a permanent injunction against Intas on the ground that BEVATAS was deceptively similar to BEVETEX and likely to cause confusion among the public. Several sub-issues arose: whether Sun Pharma's plaint was properly framed and disclosed a legitimate cause of action; which specific provision of Section 29 of the Trade Marks Act, 1999 governed the dispute; whether the two drugs were similar or dissimilar goods; whether the two trademarks were visually, structurally, or phonetically similar; whether Sun Pharma had actually led any credible evidence to prove likelihood of confusion among the relevant class of public; and whether the learned Single Judge's approach of deciding infringement purely on a visual and phonetic comparison of marks at the post-trial stage was legally sustainable.

Reasoning and Analysis of the Court

The Division Bench, comprising Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora (who authored the judgment), examined the matter exhaustively under multiple heads.

On the vexatious nature of the plaint regarding passing off and unfair competition: The court noted that Sun Pharma's plaint was framed in the broadest possible manner, pleading multiple causes of action including trademark infringement, passing off, unfair competition, misappropriation of goodwill, and seeking monetary damages and rendition of accounts. Yet, soon after filing the suit, Sun Pharma represented before the Trial Court, in its rejoinder to the injunction application on January 29, 2018, that it had no commercial interest and was prosecuting the suit purely in public interest because Sun Pharma did not sell any medicine containing the molecule Bevacizumab. This stand was reiterated before the Appellate Court in FAO 447/2018, in the evidence affidavit of its sole witness PW-1 dated February 8, 2019, and again in cross-examination. The court held that this admission constituted a clear acknowledgment that Sun Pharma had suffered no commercial loss, no diversion of sales, and no damage to goodwill from Intas's use of BEVATAS. The court held that the dissimilarity of the two drugs' molecules was a fact known to Sun Pharma even before the suit was filed, yet it vexatiously pleaded passing off, misrepresentation, unfair competition, and monetary claims to create an illusion of a cause of action and a false sense of urgency. The court further observed that Sun Pharma ought to have restricted its suit from inception to the narrow claim of infringement based on alleged deceptive similarity, and that even at the stage of amendment of the plaint in August 2022 when the pecuniary valuation was enhanced, Sun Pharma did not delete the vexatious pleas it knew to be untenable. The court relied on ITC Ltd. v. Debts Recovery Appellate Tribunal, (1998) 2 SCC 70, and Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company and Anr., (1997) 1 SCC 99, to hold that proceeding to trial on such a plaint emboldened dishonest litigants and encouraged frivolous litigation, undermining the sanctity of the Statement of Truth under the Commercial Courts Act, 2015.

On the applicable sub-section of Section 29 of the Trade Marks Act, 1999: The court examined Sun Pharma's shifting legal positions. Before the Single Judge, Sun Pharma invoked Section 29(3) of the Act, which creates a statutory presumption of likelihood of confusion — but this presumption under Section 29(3) is only available when both the marks and the goods are identical, which falls under Section 29(2)(c). The court categorically held that the marks BEVATAS and BEVETEX are not identical, nor are the goods identical. Therefore, Section 29(2)(c) and the presumption of Section 29(3) were wholly inapplicable. The court also held that Section 29(4), which deals with dissimilar goods, was inapplicable since Sun Pharma had abandoned its plea of reputation. The court concluded that the dispute was squarely governed by Section 29(2)(b) of the Act — which applies where the defendant's mark is similar (not identical) to the registered mark and is used in relation to goods that are identical or similar to the goods covered by the registered mark — and that under this provision, the burden lay entirely on Sun Pharma to affirmatively prove likelihood of confusion among the public. The court was critical of Sun Pharma's vague and overbroad pleading of merely "Section 29" without specifying the sub-section, which the court described as inexact, intentional, and mischievous, enabling Sun Pharma to shift its legal arguments across different sub-sections at different stages.

On the evidentiary standard and Sun Pharma's failure to discharge the burden: The court emphasized that in a case where goods are not identical or closely similar, the likelihood of confusion cannot be presumed and must be proved by positive evidence. The court drew support from P. Narayanan's authoritative commentary on the Law of Trade Marks and Passing Off (Sixth Edition, 2004, paragraph 9.28), which states that where goods are not closely similar in character, evidence of witnesses is necessary to establish whether confusion is likely to occur. Sun Pharma itself had identified the relevant class of persons likely to be confused as being chemists, specifically pleading in paragraph 21(D) of the plaint that a chemist may give out the wrong drug on account of confusion or lack of stock. The court noted that Sun Pharma never even pleaded that an Oncologist might be confused at the prescription stage.

Despite identifying the chemist as the relevant class of public susceptible to confusion, Sun Pharma examined only a single witness, PW-1, who was its own Sales Manager. This witness parroted the plaint and made bald assertions about likelihood of confusion without any personal knowledge. In cross-examination, PW-1 admitted that the drug formulations of BEVATAS and BEVETEX were completely different, that the two drugs were a very different class of drugs with different indications and mode of action, that the toxicity profiles were different, and — most significantly — that there was no actual instance of confusion between the two marks on record. The only document PW-1 could point to as evidence of confusion was Ex. PW-1/9, an e-newspaper article about a 2011 incident of gross negligence by a pharmacist involving entirely different drugs — which PW-1 admitted had nothing to do with BEVATAS or BEVETEX and was merely a general example. The court held that PW-1 was not a competent witness to depose about likelihood of confusion as he belonged to a completely different class from chemists, Oncologists, and trained nurses. The court held PW-1's testimony to be unreliable and discarded it entirely. In contrast, Intas's witness DW-1 deposed that the drugs were administered under strict medical supervision in specialized oncological settings and that the possibility of confusion was negligible — testimony that remained largely uncontroverted in cross-examination.

On the learned Single Judge's approach: The court found that the impugned judgment dated March 28, 2026 determined the entire issue of infringement solely on a bare visual and phonetic comparison of the marks undertaken by the judge himself, without evaluating any of the evidence led at trial. The court noted that the learned Single Judge, while correctly setting out the governing legal principles in paragraphs 19 to 29 of the impugned judgment, proceeded directly to conclude at paragraph 28 that a likelihood of confusion existed, without adverting to any oral or documentary evidence of the parties. The court held that this approach, at the post-trial stage, was legally unsustainable. A bare comparison of marks by the court can at best constitute a prima facie view appropriate for deciding interim applications — it cannot form the basis of a final decree of permanent injunction after a full trial. The court noted that the impugned judgment effectively imported the statutory presumption under Section 29(3) of the Act without even acknowledging it, despite that presumption being wholly inapplicable on the facts of the case. The court also noted that after the interim injunction was denied and that denial was confirmed right up to the Supreme Court, the learned Single Judge would have needed clear and cogent evidence emerging at trial to form a contra view — but Sun Pharma had produced no new documentary or oral evidence from any relevant member of the public after the dismissal of the interim injunction.

On the similarity of the two drugs: The court, relying on the undisputed comparative table of the two drugs set out in paragraph 9.9 of the impugned judgment itself, found that BEVATAS and BEVETEX were wholly dissimilar drugs. BEVATAS is a biological rDNA drug containing Bevacizumab, a monoclonal antibody, while BEVETEX is a synthetic chemical drug containing Paclitaxel. One is prescribed as the first line of treatment; the other only after failure of chemotherapy. Their indications are different, their dosage regimens are different, their infusion durations are different (90 minutes initially for BEVATAS versus 30 minutes for BEVETEX), their reconstitution procedures are different, and their side effect profiles are starkly different. The only overlap in indication is metastatic breast cancer (mBC), but even that overlap is not real because BEVATAS is given to mBC patients as a first line treatment while BEVETEX is given only when those patients have failed to respond to chemotherapy — meaning the same patient would never receive both drugs at the same time or in substitution for each other. Both parties had admitted that the two drugs were not therapeutic substitutes. The price difference — Rs. 25,990 for 100mg of BEVATAS versus Rs. 12,500 for 100mg of BEVETEX — was another factor militating against confusion. The court held that drugs that are not interchangeable, do not serve the same therapeutic purpose, and are not perceived by Oncologists, chemists, or patients as alternatives, are dissimilar for all purposes of trademark law. The court held that the mere fact that both drugs fall in the Nice Classification of medicinal and pharmaceutical preparations in Class 5 does not make them similar goods. The court relied on factors (c) and (d) of paragraph 35 of the Supreme Court's judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 (Cadila-2001), which require assessment of the nature, character, and performance of the goods.

On the phonetic and visual similarity of the trademarks: Applying the anti-dissection rule — meaning the marks must be compared as a whole — the court found that BEVATAS and BEVETEX were not phonetically or visually similar. The court observed that the prefix BEV and BEVA were publici juris in the pharmaceutical industry for drugs containing the molecule Bevacizumab. It was undisputed that at least seven other pharmaceutical companies — Zydus (ZYBEV), Reliance Lifesciences (BEVACIREL), Hetero Drugs (CIZUMAB), Lupin (BEVAZZA), Emcure (BEVAREST), Abbott (BEVACIZAB), and Cadila Pharma (BEVARO) — marketed drugs containing Bevacizumab with trademarks using BEV or BEVA as prefix or suffix. Sun Pharma itself had no objection to any of these marks and acknowledged it claimed no exclusive right over BEV or BEVA. This meant that the distinctive portion of the marks to be compared were the suffixes: TAS in BEVATAS and ETEX in BEVETEX. The court noted that the molecule Bevacizumab is an International Non-Proprietary Name (INN) and is pronounced as beh-vuh-SIH-zoo-mab, and that given 20 pharmaceutical companies were making drugs with this molecule, Oncologists and chemists were well acquainted with the name. The fourth letter in BEVATAS is A (a vowel) and the fourth letter in BEVETEX is E (a vowel), and these vowels create distinctly different phonetic modulations — the word BEVATAS is likely pronounced as beh-vuh-tas while BEVETEX is pronounced as beh-veh-tex. The suffixes TAS and TEX are phonetically distinct and produce entirely different auditory impressions. The court also noted the suffix TAS was derived from Intas's corporate name and was used in approximately 40 other registered Intas trademarks such as LOMITAS, SPARTAS, CLARITAS, RUMENTAS, etc. — a fact that Oncologists and chemists were aware of. The court relied on the judgment in Astrazeneca UK Limited & Anr v. Orchid Chemicals & Pharmaceuticals Ltd., ILR (2007) I Delhi 874 (MERONEM/MEROMER), which held that due emphasis must be given to the uncommon letters in rival pharmaceutical marks once publici juris syllables are set aside. Considering the distinct suffixes ATAS versus ETEX, the court held the marks were not visually or structurally similar either, noting that the packaging of the two drugs was also completely different in colour scheme, font, layout, and overall visual presentation, with both products prominently displaying their respective active molecules — Bevacizumab and Paclitaxel — in large font on the packaging itself.

On the governing principles for infringement: The court synthesized the law from three landmark judgments. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the Supreme Court had identified seven factors for determining deceptive similarity of pharmaceutical marks — the nature of the marks, the degree of resemblance, the nature of the goods, the similarity in nature, character and performance of the goods, the class of purchasers and their education and degree of care, the mode of purchasing, and any other surrounding circumstances — emphasizing that weightage must be given to each factor depending on the facts of the case. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 SCC OnLine SC 14, the Supreme Court held that in an infringement action, if the marks bear close similarity, no further evidence is required, but if they are merely similar (not an imitation), the plaintiff must establish that the mark used by the defendant so nearly resembles the plaintiff's registered mark as to be likely to deceive or cause confusion, and that deceptive similarity is essentially a question of fact. In Gufic Ltd. v. Clinique Laboratories, LLC & Anr., 2010 (43) PTC 788, a Coordinate Bench of the Delhi High Court had culled out that the test of deceptive similarity in infringement cases is the same as in passing off actions where marks are not identical, and five principles must be applied including overall structural and phonetic similarity and whether both marks convey the same idea. The court synthesized these authorities to hold that infringement adjudication in cases of similar (not identical) marks proceeds in two stages — a threshold comparison of marks by the court itself to assess degree of visual, structural, and phonetic resemblance, and if the marks are not found wholly dissimilar or nearly identical imitations, a second evidence-based stage where the court must assess deceptive similarity and likelihood of confusion on the basis of all the Cadila-2001 factors and the evidence led at trial.

On surrounding circumstances and public interest: Examining the surrounding circumstances in terms of the Cadila-2001 factors, the court found that since both drugs are Schedule H drugs requiring an Oncologist's prescription and administered only in oncology clinics by trained nurses under Oncologist supervision, there was little scope for casual or uninformed consumer choice at any stage — prescription, dispensing, or administration. The high price of both drugs (over Rs. 12,500 even for the smaller dose) meant purchasers would exercise heightened caution. The prominent display of the molecule name on the packaging ruled out confusion even for persons with imperfect recollection. The court also rejected Sun Pharma's belated oral submission before it that drugs could be sold over the counter without a prescription, noting this had not been pleaded and was not proved. On the question of public interest, the court found Sun Pharma's claim to be a red herring. The court held that Sun Pharma had no valid cause of action at all — it suffered no loss of revenue, no damage to goodwill, and its mark's distinctiveness was not eroded in any demonstrable way. The court concluded that Sun Pharma pursued the litigation to protect its purely commercial interest in the mark BEVETEX under the guise of public interest. The court also noted that after nearly ten years of concurrent use of both marks from 2016 to 2026, not a single instance of actual confusion in the market had been reported or proved.

On the case law cited by Sun Pharma: The court carefully distinguished each precedent cited by Sun Pharma. United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2012 SCC OnLine Del 2942 (FORZID/ORZID), was a rectification proceeding involving the same drug molecule Ceftazidime where the risk arose from direct substitutability of identical therapeutic agents with differing dosages — entirely unlike the present case. Sun Pharma Laboratories Limited v. BDR Pharmaceuticals International Pvt. Ltd. & Anr., 2020 SCC OnLine Del 623 (LABEBET/LULIBET), was a final judgment where parties elected not to lead oral evidence, and the drugs could be self-administered — again, an entirely different scenario. Novartis AG v. Crest Pharma Pvt. Ltd. and Anr., 2009 SCC OnLine Del 4390 (SECEF/CECEF), was an interim injunction order. Nutrica Pusti Healthcare Pvt. Ltd. v. Morepen Laboratories Ltd., 2021 SCC OnLine Del 263, was also an interim order. Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories Ltd., 2024 SCC OnLine Del 2707 (ISTAMET/INDAMET), also relied upon by Sun Pharma, was a prima facie finding by a Division Bench in an interim matter, and importantly involved self-administered diabetes drugs where patients themselves managed the medication — starkly different from hospital-administered oncology drugs. The court also referred with approval to the Division Bench judgments in Sun Pharmaceuticals Laboratories Ltd. v. Hetero Healthcare Ltd. and Another, 2022 SCC OnLine Del 2580 (LETROZ/LETERO), Sun Pharmaceuticals Industries Ltd. v. Anglo French Drugs & Industries Ltd. & Anr., 2014 SCC OnLine Del 4716 (OXETOL/EXITOL), Schering Corporation & Ors v. Alkem Laboratories Ltd., 2009 SCC OnLine Del 3886 (TEMODAL/TEMODAR vs TEMOKEM/TEMOGET), and Astrazeneca UK Limited & Anr v. Orchid Chemicals & Pharmaceuticals Ltd., ILR (2007) I Delhi 874 (MERONEM/MEROMER), all of which had held that despite phonetic similarities, no likelihood of confusion was found given the specialized nature of the drugs, therapeutic use, and modes of administration. The court noted that the judgment in Modi-Mundipharma Pvt. Limited v. Specialty Meditech Pvt. Ltd & Anr., 2025:DHC:5039-DB, supported the principle that where marks are an imitation and goods are identical, no further evidence is needed — but that this principle had no application where, as here, the marks were not an imitation and the goods were dissimilar.

Final Decision of the Court

The Division Bench allowed the appeal and set aside the impugned judgment dated March 28, 2026. The permanent injunction granted against Intas Pharmaceuticals was vacated. The suit filed by Sun Pharma was dismissed. The court found in favor of Intas on Issues 3, 4, 9, and 10 (relating to infringement, likelihood of confusion, proprietorship of BEVATAS, and honest adoption), and set aside the findings of the Single Judge on Issues 7 and 8 as well. The court awarded costs of the suit and the appeal in favor of Intas against Sun Pharma, directing Intas to file its bill of costs within 30 days, with the matter of quantum referred to the Taxation Officer to assess actual costs, payable by Sun Pharma within eight weeks of determination. Representatives of Intas were directed to appear before the Taxation Officer on July 13, 2026.

Points of Law Settled in the Case

This judgment establishes a number of important legal principles. At the post-trial stage in a trademark infringement suit under Section 29(2)(b) of the Trade Marks Act, 1999, where the marks are similar but not identical and the goods are similar but not identical, the court cannot grant a permanent injunction based solely on its own visual and phonetic comparison of the marks — an evidence-based assessment of likelihood of confusion among the relevant class of public is mandatory. The statutory presumption of likelihood of confusion under Section 29(3) is available only when both the marks and the goods are identical under Section 29(2)(c); it cannot be imported into cases falling under Section 29(2)(b). The mere fact that two drugs fall in the same Nice Classification — Class 5, medicinal and pharmaceutical preparations — does not make them similar goods for the purposes of trademark infringement if they are not interchangeable, do not serve the same therapeutic purpose, and are not perceived by the relevant class of professionals as alternatives. Where the plaintiff in a pharmaceutical trademark suit has identified a specific class of persons (such as chemists) as being susceptible to confusion, it must examine witnesses from that class; testimony by the plaintiff's own sales representative is not a substitute. The prefix BEV/BEVA is publici juris in the pharmaceutical trade for drugs containing the molecule Bevacizumab, and the court must give primacy to the distinctive, uncommon parts of rival marks when making a comparison. The deliberate filing of a vexatiously overbroad plaint incorporating causes of action the plaintiff knows to be untenable — such as passing off and misappropriation of goodwill when the plaintiff itself admits no commercial loss — is an abuse of process, and courts should not permit such plaints to proceed to trial. Trademark infringement litigation driven by commercial interest in protecting a mark cannot be dressed up as public interest litigation merely by abandoning monetary claims.

Case Details

Title: Intas Pharmaceuticals Limited Vs. Sun Pharma Laboratories Limited

Date of Order: May 29, 2026

Case Number: RFA(OS)(COMM) 10/2026 with CM APPL. 21698/2026

Neutral Citation: 2026:DHC:4879-DB

Name of Court: High Court of Delhi at New Delhi (Original Side, Division Bench)

Names of Hon'ble Judges: Hon'ble Mr. Justice V. Kameswar Rao and Hon'ble Ms. Justice Manmeet Pritam Singh Arora (Judgment authored by Justice Manmeet Pritam Singh Arora)

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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Headnote

Intas Pharmaceuticals Limited v. Sun Pharma Laboratories Limited — 2026:DHC:4879-DB — Delhi High Court Division Bench — RFA(OS)(COMM) 10/2026 — Decided May 29, 2026

Trade Marks Act, 1999 — Section 29(2)(b), Section 29(2)(c), Section 29(3), Section 29(4), Section 2(1)(h) — Pharmaceutical Trademark Infringement — Post-Trial Standard — Likelihood of Confusion — Evidentiary Burden — Deceptive Similarity — Publici Juris Prefix.

Held: In a trademark infringement suit under Section 29(2)(b) of the Trade Marks Act, 1999 involving similar but not identical marks and similar but not identical pharmaceutical goods, the court cannot at the post-trial stage grant a permanent injunction based solely on its own visual and phonetic comparison of the marks. An evidence-based assessment of likelihood of confusion among the relevant class of public is mandatory. The statutory presumption of likelihood of confusion under Section 29(3) is available only when both marks and goods are identical under Section 29(2)(c); it cannot be applied to Section 29(2)(b) situations. Two pharmaceutical drugs are not similar goods merely because they fall in Nice Classification Class 5 if they contain different molecules, treat different cancers, are prescribed at different stages of disease, are not interchangeable, and are not perceived as substitutes by Oncologists, chemists, or patients. The prefix BEV/BEVA, being derived from the International Non-Proprietary Name Bevacizumab and used by multiple manufacturers, is publici juris in the pharmaceutical trade; emphasis must be placed on the distinctive uncommon parts of rival marks — here, the suffixes TAS and ETEX — which are phonetically and visually distinct. Sun Pharma's witness PW-1, a sales representative with no direct knowledge of the relevant class of public (chemists, Oncologists, trained nurses), was not a competent witness to prove likelihood of confusion. The plaint was vexatiously framed to include causes of action for passing off and misappropriation of goodwill that Sun Pharma knew to be untenable prior to filing the suit, constituting an abuse of process. Permanent injunction set aside; suit dismissed with costs. (Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73; Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 SCC OnLine SC 14; Gufic Ltd. v. Clinique Laboratories, LLC & Anr., 2010 (43) PTC 788; Astrazeneca UK Limited & Anr v. Orchid Chemicals & Pharmaceuticals Ltd., ILR (2007) I Delhi 874 — Relied Upon.)

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Hindware Ltd. Vs. Grohe India Pvt. Ltd.

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Hindware Ltd. v. Google LLC & Google India: Delhi High Court Holds Sale of Trademark as Keyword to be Trademark Infringement

Introduction

The judgment delivered by the Delhi High Court on 22 May 2026 in the Hindware litigation represents one of the most significant Indian decisions concerning trademark protection in the digital advertising ecosystem. The dispute centered around whether Google, through its AdWords (now Google Ads) programme, could permit advertisers to bid for and use a competitor's registered trademark as a keyword so that advertisements of competing businesses would appear when consumers searched for the trademark owner. The case involved the well-known trademark "HINDWARE", a leading brand in the sanitaryware industry, and raised important questions regarding trademark infringement under the Trade Marks Act, 1999, the scope of Google's liability as an online advertising platform, and the availability of intermediary protection under Section 79 of the Information Technology Act, 2000. The Court ultimately held that Google's conduct in allowing and facilitating the use of the plaintiff's trademark as a keyword amounted to trademark infringement and granted permanent injunction, damages, and costs in favour of Hindware.

Factual and Procedural Background

Hindware Limited, formerly known as HSIL Limited, is a prominent manufacturer and seller of sanitaryware products in India. The company has been using the trademark "HINDWARE" since 1991 and had already been recognized as the proprietor of a well-known trademark by the Delhi High Court in an earlier judgment dated 21 April 2017 in HSIL Limited v. Kripton Ceramics Pvt. Ltd. & Ors.

The controversy began when Hindware discovered that competing sanitaryware companies, namely Cera and Grohe, had availed Google's AdWords programme and had purchased the trademark "HINDWARE" and related expressions as keywords. As a result, whenever consumers searched for terms such as "HINDWARE", "HINDWARE SANITARYWARE", or similar expressions on Google Search, advertisements and sponsored links relating to Cera and Grohe appeared prominently, often above Hindware's own search results.

Two separate suits were instituted before the Delhi High Court. One suit concerned Grohe's advertising activities, while the second concerned Cera and its website developer Omkara Infoweb. During the pendency of the proceedings, Hindware settled its disputes with Grohe, Cera and Omkara Infoweb. Consequently, the surviving controversy before the Court remained between Hindware on one side and Google India and Google LLC on the other.

The litigation continued for several years. Interim injunctions were granted in favour of Hindware as early as 2013 and 2014 restraining the use of "HINDWARE" as an AdWord or keyword. After recording extensive evidence and hearing detailed submissions, the Court finally rendered its judgment in May 2026.

Dispute Before the Court

The central legal issue was whether Google's act of permitting advertisers to bid on and purchase the registered trademark "HINDWARE" as a keyword constituted trademark infringement under Section 29 of the Trade Marks Act, 1999.

Hindware argued that Google was not merely a passive platform. According to the plaintiff, Google actively auctioned, suggested, monetized and sold the trademark to competitors for commercial gain. Hindware contended that such conduct violated its exclusive rights under Section 28 of the Trade Marks Act and amounted to infringement under Sections 29(2), 29(3), 29(6) and 29(8). It was further argued that Google's conduct diluted the distinctiveness of the well-known mark and diverted potential customers searching specifically for Hindware products.

Google, on the other hand, argued that keywords operate invisibly in the backend and are not visible to consumers. According to Google, a keyword is merely a trigger mechanism and does not amount to trademark use. Google further contended that it merely provided an advertising platform and that advertisers alone selected keywords. It relied heavily on the intermediary safe harbour provisions contained in Section 79 of the Information Technology Act, 2000 and also cited earlier decisions including Google LLC v. DRS Logistics (P) Ltd., 2023 SCC OnLine Del 4809; Google LLC v. MakeMyTrip (India) Pvt. Ltd., 2023 SCC OnLine Del 7965; and Policybazaar Insurance Web Aggregator v. Coverfox Insurance Broking Pvt. Ltd., 2023 SCC OnLine Del 5523.

Reasoning and Analysis of the Judge

The Court emphasized that a trademark is not merely a label identifying goods. It is a valuable commercial asset embodying goodwill, reputation, advertising investment and market recognition. The Court observed that the Trade Marks Act protects not only the source-identifying function of a trademark but also its investment and advertising functions.

A significant part of the Court's reasoning focused on Section 28 of the Trade Marks Act. The Court held that registration grants two independent rights to the proprietor: an exclusive right to use the trademark and a right to seek relief against infringement. Thus, the trademark owner's exclusivity extends beyond merely preventing physical copying of the mark.

The Court found that Google had actively enabled and facilitated the use of the trademark "HINDWARE" by competitors. Evidence showed that Google allowed the trademark to be listed as a biddable keyword and that advertisers could purchase it to ensure their advertisements appeared before consumers searching specifically for Hindware products. The Court rejected Google's characterization of keywords as mere invisible backend triggers.

Court observed that Google's advertising model was designed to commercially exploit the goodwill associated with the plaintiff's trademark. The Court held that Google was not a passive conduit. Rather, it actively conducted auctions, suggested keywords, determined advertising rankings and derived revenue from keyword bidding. Therefore, Google could not escape liability by claiming neutrality.

The Court carefully distinguished earlier decisions relied upon by Google. It observed that the cases of Google LLC v. DRS Logistics (P) Ltd., Google LLC v. MakeMyTrip (India) Pvt. Ltd., and Policybazaar Insurance Web Aggregator v. Coverfox Insurance Broking Pvt. Ltd. involved trademarks that were descriptive, generic, or dictionary words. In contrast, "HINDWARE" was a coined and judicially recognized well-known trademark. The Court therefore held that those precedents did not govern the present dispute.

The judgment also contains an important discussion of Section 29(8) of the Trade Marks Act. The Court held that Google's conduct amounted to advertising that took unfair advantage of the plaintiff's trademark and was contrary to honest commercial practices. According to the Court, allowing competitors to bid for and exploit the plaintiff's trademark for commercial gain constituted free-riding on the goodwill painstakingly built by Hindware over decades.

The Court further rejected Google's argument that keyword advertising necessarily promotes competition. While acknowledging that competition benefits consumers, the Court emphasized that competition must be achieved through lawful means. The Court remarked that increased competition cannot justify the auctioning and monetization of another entity's trademark without authorization.

Another major issue was Google's claim of intermediary protection under Section 79 of the Information Technology Act, 2000. The Court extensively examined the statutory framework and precedents relating to intermediary liability. It concluded that Google's actions went far beyond merely hosting or transmitting third-party information. By conducting auctions, facilitating keyword purchases and monetizing trademark use, Google actively participated in the infringing activity. Consequently, the Court held that Google could not claim safe harbour protection under Section 79.

The Court also referred to the Division Bench decision in Amazon Seller Services Pvt. Ltd. v. Amway India Enterprises Pvt. Ltd. & Ors., 2020 SCC OnLine Del 454, while analyzing the scope of intermediary protection. Applying those principles, the Court found that Google's conduct disqualified it from claiming immunity.

The judgment additionally noted that Google's own internal policy changes had allowed trademark bidding despite earlier restrictions. The Court took note of evidence showing that the company anticipated substantial revenue growth from permitting trademark bidding and considered this relevant in assessing Google's role in the infringing activity.

Final Decision of the Court

The Delhi High Court decreed the suits in favour of Hindware and against Google LLC and Google India.

The Court granted a permanent injunction restraining Google from using or permitting the use of the marks "HINDWARE", "HINDWARE SANITARYWARE", "HINDWARE SANITARY", "HINDWARE SANITARYWARE INDIA" or any combination thereof as advertising keywords, AdWords or in any manner amounting to trademark infringement.

The Court further awarded nominal damages of ₹30,00,000 payable jointly and severally by Google LLC and Google India to Hindware. In addition, actual litigation costs were awarded in favour of the plaintiff. The Court also decreed the suit against Omkara Infoweb in terms of the settlement agreement already executed between the parties.

Point of Law Settled

The judgment establishes several important legal principles:

The use of a registered and well-known trademark as a keyword in a search engine advertising programme can amount to trademark infringement under the Trade Marks Act, 1999.

A search engine operator that actively auctions, suggests, promotes and monetizes trademark keywords is not merely a passive intermediary and may be held liable for infringement.

The protection available under Section 79 of the Information Technology Act, 2000 does not extend to activities involving active commercial exploitation of third-party trademarks through keyword advertising.

The exclusive rights granted under Section 28 of the Trade Marks Act protect not only the source-identifying function of a trademark but also its advertising and commercial value.

Commercial competition cannot justify the unauthorized auctioning or monetization of another person's trademark.

The principles applicable to descriptive or generic marks cannot automatically be extended to coined and judicially recognized well-known trademarks.

Case Title: Hindware Ltd. Vs Grohe India Pvt.Ltd. & Ors and Hindware Ltd. Vs Omkara Infoweb Pvt. Ltd. & Ors.

Date of Order: 22 May 2026

Case Numbers: CS(COMM) 591/2017 and CS(COMM) 592/2017

Neutral Citation: 2026:DHC:4614

Court: High Court of Delhi at New Delhi

Coram: Hon'ble Ms. Justice Mini Pushkarna

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

Trademark Law – Google Ads – Keyword Advertising – Well-Known Trademark – Intermediary Liability – Section 29 Trade Marks Act – Section 79 Information Technology Act – Hindware Trademark. Delhi High Court held that Google's practice of permitting competitors to bid on and purchase the well-known trademark "HINDWARE" as a keyword under its AdWords programme constituted trademark infringement. The Court ruled that Google actively facilitated and monetized the use of the plaintiff's trademark and therefore could not claim safe harbour protection as an intermediary under Section 79 of the Information Technology Act, 2000. Permanent injunction, ₹30 lakh damages and actual costs were awarded in favour of Hindware.

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Mr. Vijay Gupta Vs. Ms. Renu Malhotra

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WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING

WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING IN ORDER TO PROVE THE TRADEMARK  REGISTRA...

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IPR UPDATE BY ADVOCATE AJAY AMITABH SUMAN

IPR UPDATE BY ADVOCATE AJAY AMITABH SUMAN

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