Rajkumar Aggarwal, Proprietor of Petro Product Vs Nand Kishore Bhimsariya

Rajkumar Aggarwal, Proprietor of Petro Product Vs Nand Kishore Bhimsariya:05.05.2026: IPDCR/12/2022: 2026:CHC-OS:158:CalHC:Hon’ble Justice Arindam Mukherjee

In this Judgement , the Calcutta High Court set aside the copyright registration granted to Respondent No.1, holding that non-compliance with mandatory provisions of Rule 70 rendered the registration unsustainable.

Facts & Dispute:

The Petitioner, Rajkumar Aggarwal, proprietor of M/s. Petro Product, had his artistic work registered as copyright way back in 2009. Respondent No.1, Nand Kishore Bhimsariya, later applied for registration of a similar artistic work. The Petitioner alleged that Respondent No.1 failed to comply with Rule 70(6) and the mandatory notice requirement under Rule 70(9) of the Copyright Rules, 2013, despite being aware of the Petitioner’s prior registration. Consequently, the Petitioner could not file objections within the 30-day period, and the Registrar of Copyrights granted registration without due verification.

Reasoning of the Court:

Court held that Rules 70(6), 70(9), 70(10), and 70(11) of the 2013 Rules have statutory force and must be mandatorily complied with. The Court observed that Rule 70(9) requires the applicant to give notice to every person who claims interest in or disputes the copyright. Failure to do so prevents affected parties from filing timely objections.

The Court further clarified that even in the absence of objections, Rule 70(10) and 70(11) impose an independent duty on the Registrar to satisfy himself regarding the correctness of the particulars in the application, which may include an inquiry. 

The Registrar’s failure to check existing registrations and ensure procedural compliance amounted to a jurisdictional error. Relying on principles from Nazir Ahmed v. Emperor and other precedents, the Court held that when a statute prescribes a particular manner, it must be followed or not done at all.

Decision:

The Court allowed the rectification application, set aside the copyright registration granted in favour of Respondent No.1, directed its removal from the Register, and rejected the application for non-compliance with mandatory provisions. 

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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Mandatory notice requirement under Rule 70(9) of Copyright Rules 2013

Introduction:

The Calcutta High Court has clarified the mandatory obligations of both the person applying for copyright and the Registrar of Copyrights. The decision protects the interests of existing copyright holders and ensures transparency and fairness in the registration process under the Copyright Act, 1957 and the Copyright Rules, 2013.

Factual and Procedural Background:

Rajkumar Aggarwal, proprietor of. Petro Product , had obtained copyright registration for his artistic work as far back as 2009. In the year 2022, Nand Kishore Bhimsariya applied for registration of copyright for a similar artistic work. The Registrar of Copyrights granted the registration to Bhimsariya. Feeling that his prior rights were being affected and that proper procedure was not followed, Aggarwal filed a rectification application.

Dispute:

The main dispute centered on whether the copyright registration granted in favour of Nand Kishore Bhimsariya was valid? 

Contention of Parties:

Rajkumar Aggarwal argued that Bhimsariya was fully aware of his earlier 2009 copyright registration, yet he did not give him any notice of the new application as required by law. Because of this, Aggarwal could not file objections within the 30-day period. He further contended that the Registrar failed to properly examine the application and overlooked the existing registration. 

The Registrar of Copyrights maintained that once no objection was received within thirty days, it was bound to grant the registration. Bhimsariya did not appear before the Court despite notice.

Reasoning and Analysis of the Court:

Court analysed the relevant provisions of the Copyright Rules, 2013 in detail. He pointed out that Rule 70(6) and Rule 70(9) impose mandatory requirements on the applicant. Under Rule 70(9), the person applying for registration must give notice of his application to every person who claims or has any interest in the subject matter of the copyright or disputes the rights of the applicant. 

The Court explained that this notice requirement is crucial because it gives the affected party a real opportunity to object within thirty days.

The Court further examined Rule 70(10) and Rule 70(11). Even if no objection is received, the Registrar must be satisfied about the correctness of the particulars given in the application. This satisfaction is an independent duty. If needed, the Registrar can hold an inquiry. In this case, the Registrar did not check the existing records and therefore failed to notice the petitioner’s prior registration.

Court emphasised that these Rules have the force of law. Court  relied upon the Supreme Court judgment in Pepsu Road Transport Corporation, Patiala Vs. Mandal Singh & Ors., reported in 2011 (11) SCC 702, which held that rules framed under a statute carry a “statutory flavour” and are binding on all.

The Judge also applied the well-settled principle from the Privy Council case Nazir Ahmed Versus Emperor, reported as 1936 Privy Council 253. This principle, followed by the Supreme Court in Ramchandra Keshav Adke & Ors. vs. Govind Joti Chavare & Ors., reported in 1975 (1) SCC 559, states that if a statute or rule requires a thing to be done in a particular manner, it must be done in that manner or not at all. The Court held that non-compliance with the notice requirement under Rule 70(9) by the applicant and the failure of the Registrar to exercise due satisfaction under Rules 70(10) and 70(11) constituted a serious procedural irregularity that went to the root of the registration.

The Court noted that the respondent himself had admitted in his written reply that there was an error on the part of the Registrar in not putting the petitioner on notice. This admission further strengthened the petitioner’s case. The Court described the procedural lapses as creating a jurisdictional error that made the registration unsustainable.

Final Decision of Court and Point of Law Settled:

The Calcutta High Court allowed the rectification application. It set aside the copyright registration granted to Nand Kishore Bhimsariya, directed the Registrar to remove the particulars from the register and database, and rejected the original application for registration. However, the Court granted liberty to Bhimsariya to file a fresh application after complying with all statutory requirements.

This judgment settles an important point of law: Strict compliance with the notice requirement under Rule 70(9) and the Registrar’s independent duty of satisfaction under Rules 70(10) and 70(11) of the Copyright Rules, 2013 are mandatory. Failure to observe these provisions can result in the cancellation of the copyright registration. The ruling reinforces that procedural safeguards are essential to protect prior rights holders and maintain the credibility of the copyright registration system.

Case Title: Rajkumar Aggarwal, Proprietor of  Petro Product Vs. Nand Kishore Bhimsariya And Anr.

Date of Order: 5th May, 2026

Case Number: IPDCR/12/2022

Neutral Citation: 2026:CHC-05:158

Name of Court: High Court at Calcutta (Intellectual Property Rights Division, Original Side)

Name of Hon'ble Judge: Justice Arindam Mukherjee

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

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Headnote:

Calcutta High Court sets aside copyright registration due to non-compliance with mandatory notice requirement under Rule 70(9) and Registrar’s failure to satisfy itself under Rules 70(10) & 70(11) of Copyright Rules, 2013 – Strict adherence to procedural safeguards reiterated.

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Sun Pharma Laboratories Limited Vs. United Biotech Private Limited.

Sun Pharma Laboratories Limited Vs. United Biotech Private Limited. : 04.05.2026: Commercial IP Suit (L) No. 19268 of 2025:2026:BHC-OS:11436 :BombHC: Hon'ble Justice Sharmila U. Deshmukh

Brief Facts & Dispute:

Sun Pharma claimed exclusive rights in the trademark "OCTRIDE" (used for Octreotide Acetate injections since 1998) and sought injunction against United Biotech’s use of the similar mark "OTIDE" for the identical drug. Sun Pharma alleged infringement and passing off, asserting long use, substantial sales, and goodwill. United Biotech defended its adoption of "OTIDE" since 1999, claiming honest adoption derived from the International Non-Proprietary Name (INN) of the molecule Octreotide, continuous use, registration of its mark, and co-existence in the market without confusion. The company argued delay, acquiescence, and lack of prima facie case by Sun Pharma.

Reasoning of the Court:

The court held that both parties hold registrations, but Sun Pharma could not challenge United Biotech’s registration as ex-facie illegal or fraudulent. The Court found phonetic similarity between "OCTRIDE" and "OTIDE" but noted both marks derive from the generic molecule name. On passing off, the Court accepted Sun Pharma’s goodwill based on sales data and drug approvals but observed United Biotech’s open use since at least 2006. Plaintiff is the prior user. The Judge ruled that Sun Pharma established a strong prima facie case of likelihood of confusion. Injunction granted.

Decision: The Court dismissed Sun Pharma’s application for ad-interim injunction and vacated the earlier ex-parte ad-interim order. The suit will proceed to trial.

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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Introduction

In this ruling on trademark protection in the pharmaceutical sector, the Bombay High Court has granted to grant an interim injunction to Sun Pharma against United Biotech’s use of a similar mark for the same medicine. The decision highlights the delicate balance courts must strike between protecting established brand goodwill and respecting long market use, especially when marks are derived from generic drug names. It also underscores the high threshold required to challenge a registered trademark at the interim stage.

Factual and Procedural Background

Sun Pharma Laboratories Limited, a major pharmaceutical company, claimed rights over the trademark “OCTRIDE” used for injections containing Octreotide Acetate, a drug prescribed for serious conditions like acromegaly and certain tumors. The company traced its rights back to the late 1990s through predecessors and asserted substantial sales and reputation across India and globally.

United Biotech Private Limited, another pharmaceutical manufacturer with exports to several countries, had been selling the same drug under the mark “OTIDE” for many years. Both marks are derived from the International Non-Proprietary Name (INN) of the active ingredient “Octreotide.” Sun Pharma filed a commercial intellectual property suit seeking injunction against United Biotech for trademark infringement and passing off. An ex-parte ad-interim injunction was initially granted in July 2025, which United Biotech later challenged by filing an application to vacate it.

Dispute

The core dispute centered on whether Sun Pharma could stop United Biotech from using “OTIDE.” Sun Pharma argued phonetic and visual similarity between “OCTRIDE” and “OTIDE” would cause confusion among doctors, pharmacists, and patients. It claimed prior adoption, registration, and extensive goodwill. United Biotech countered that it had honestly adopted and used its mark since 1999, obtained registration, and both marks had co-existed in the market for years without actual confusion. The defendant also raised issues of delay by Sun Pharma.

Reasoning and Analysis of the Judge

The court carefully examined the rival marks, their registrations, market use, and applicable legal principles. The judge noted that both parties hold trademark registrations, creating a situation where neither can easily claim exclusive rights against the other without strong grounds.

On infringement, the court held that Sun Pharma failed to demonstrate that United Biotech’s registration was ex-facie illegal or fraudulent. The judge referred to the high threshold laid down by the Full Bench of the Bombay High Court in Lupin Limited vs. Johnson and Johnson MANU/MH/3536/2015. Since both marks derive from the same generic molecule name, the registration could not be treated as shocking the conscience of the court.

For passing off, the court applied the classic trinity test of goodwill, misrepresentation, and damage. While acknowledging Sun Pharma’s sales and reputation, the judge found that United Biotech had been using its mark subsequent to Plaintiff. The court emphasized that in pharmaceutical cases, the threshold for confusion is lower due to public health concerns.

The judge discussed several important precedents, including Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. on heightened scrutiny in pharma trademarks, Wander Ltd. vs. Antox India Pvt. Ltd 1990 Supp SCC 727]. on balance of convenience, and S. Syed Mohideen vs. P. Sulochana Bai ((2016) 2 SCC 683) on the irrelevance of fraudulent intent in passing off.

Final Decision of the Court

The Bombay High Court confirmed the interim injunction granted earlier order dated 29.07.2025.

Case Title: Sun Pharma Laboratories Limited v. United Biotech Private Limited

Date of Order: 4 May 2026

Case Number: Interim Application (L) No. 19536 of 2025 in Commercial IP Suit (L) No. 19268 of 2025

Neutral Citation: 2026:BHC-OS:11436

Name of Court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction – Commercial Division)

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

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

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Headnote:

Bombay High Court granted ex-parte interim injunction in trademark suit by Sun Pharma against United Biotech; holds no strong prima facie case for infringement against registered mark and insufficient grounds for passing off despite phonetic similarity where marks derive from generic INN name and have co-existed in market for years.

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Syngenta Participations AG Vs. Controller of Patents

Syngenta Participations AG Vs. Controller of Patents & Designs:04.05.2026:C.A.(COMM.IPD-PAT) 49/2023:2026:DHC:3766:Hon’ble Mr. Justice Tushar Rao Gedela

Brief Facts & Dispute:

Syngenta filed an Indian patent application for a new crystalline monohydrate polymorph of a known agrochemical fungicide compound (formula I). The Controller of Patents refused the application under Section 2(1)(ja) (lack of inventive step) and Section 3(d) of the Patents Act, 1970, primarily holding that the improved thermal stability of the monohydrate form was an inherent property of polymorphs and did not demonstrate enhanced efficacy over the known anhydrous form. Syngenta challenged the order, arguing that polymorphism is unpredictable, and the company had provided specific experimental data (including DSC studies, phase diagrams, and formulation stability tests) showing superior stability in suspension concentrate (SC) formulations, which prevents unwanted crystal growth and potential blockages in agricultural spray equipment, leading to better performance and reduced phytotoxicity.

Reasoning of the Court:

Justice Tushar Rao Gedela extensively reviewed scientific literature on polymorphism, emphasising its unpredictable nature. The Court held that the Controller erred in treating thermal stability as an “inherent property” without citing any supporting prior art or sources. The judge noted that Syngenta’s data convincingly demonstrated technical advancement — the monohydrate form remained stable in SC formulations where the anhydrous form converted, causing crystal growth issues. The Court applied the tests for inventive step laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2015:DHC:9674-DB) and Agriboard International LLC v. Deputy Controller (2022 SCC OnLine Del 940), finding that the Controller failed to properly analyse the differences and technical effect shown by the applicant. On Section 3(d), the Court observed that in the agrochemical context, improved formulation stability and reduced phytotoxicity could qualify as enhanced efficacy, distinguishing it from the stricter therapeutic efficacy standard for pharmaceuticals under Novartis AG v. Union of India (2013) 6 SCC 1.

Decision: The appeal was allowed. The impugned order refusing the patent was set aside. The matter was remanded to the Patent Office for fresh consideration in light of the observations made by the Court.

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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Introduction

In a notable decision concerning patent protection for new forms of known chemical compounds in the agrochemical sector, the Delhi High Court has emphasised the importance of experimental evidence demonstrating technical advantages of a new crystalline form. The ruling underscores that polymorphism — the ability of a substance to exist in multiple crystal structures — is often unpredictable, and courts must carefully evaluate whether a new form offers genuine improvements over known versions rather than dismissing it as a mere variation.

Factual and Procedural Background

Syngenta Participations AG filed a patent application in India for a specific crystalline monohydrate form of a known fungicide compound used to control plant diseases. This new form was claimed to provide better stability in certain agricultural formulations compared to the previously known anhydrous version. The Indian Patent Office, after examination and hearing, refused the application. Syngenta challenged this refusal by filing an appeal before the Delhi High Court.

The matter was heard by the court, with detailed arguments presented by senior advocates on both sides. The company submitted experimental data and expert evidence to show the practical benefits of the new form, while the Controller defended the rejection primarily on grounds of obviousness and lack of sufficient improvement.

Dispute

The central dispute was whether the new monohydrate crystalline form of the known compound involved an inventive step and whether it qualified for patent protection or fell under the exclusion for new forms of known substances that do not demonstrate enhanced efficacy. The Patent Office took the view that improved thermal stability was an inherent and expected property of such forms and that the applicant had not shown meaningful enhancement in performance. Syngenta argued that preparing a stable and useful new polymorph requires significant research, that the behaviour of different crystal forms is unpredictable, and that their data proved real advantages in formulation stability and reduced issues during agricultural application.

Reasoning and Analysis of the Judge

The COURT highlighted that polymorphism is a complex phenomenon where different crystal arrangements of the same molecule can lead to significantly different physical behaviours, even though the chemical composition remains identical. He referred to scientific literature explaining that it is generally not possible to predict in advance whether a new polymorph will form or what its properties will be.

The court discussed the judgment in F-Hoffmann-la Roche Ltd. & Anr. vs Cipla Ltd., 2015:DHC:9674-DB, where the Division Bench of the Delhi High Court laid down a structured approach for assessing inventive step, including identifying the person skilled in the art, the inventive concept, common general knowledge, differences from prior art, and whether those differences would have been obvious. Justice Gedela also relied upon Agriboard International LLC vs Deputy Controller of Patents & Designs, 2022 SCC OnLine Del 940, stressing that a Controller must properly analyse the prior art, the new invention, and how it would appear to a skilled person, rather than reaching a bare conclusion of obviousness.

On the objection under Section 3(d) of the Patents Act, the court referred to the Supreme Court’s landmark decision in Novartis AG vs Union of India & Others, (2013) 6 SCC 1. While noting that the stricter “therapeutic efficacy” test applies mainly to pharmaceuticals, the judge observed that in the agrochemical field, improvements in formulation stability, handling, and reduced plant toxicity can constitute enhanced efficacy for the purpose of patentability.

The court found that the Controller had not adequately explained why the experimental evidence of superior stability in practical agricultural suspensions was insufficient. It also criticised the reliance on “common general knowledge” without citing specific sources. The judge concluded that the applicant had demonstrated a technical advance through concrete data showing that the new form solved real problems of crystal growth and equipment blockages that occurred with the known form.

Final Decision of the Court

The Delhi High Court allowed Syngenta’s appeal. The order of the Controller refusing the patent application was set aside. The matter was remanded back to the Patent Office for fresh consideration in accordance with the observations made by the court.

Point of Law Settled in the Case

This judgment reinforces that in cases involving new polymorphic forms, patent examiners and courts must give due weight to experimental evidence of improved properties and practical advantages, particularly in agrochemicals. It clarifies that unpredictability of polymorphism and demonstrated technical benefits in formulation stability can support both inventive step and enhanced efficacy under Section 3(d). Mere assertions that a new form is obvious or inherently stable are not enough; the analysis must be evidence-based and reasoned.

Case Title: Syngenta Participations AG versus Controller of Patents Designs

Date of Order: 04.05.2026

Case Number: C.A.(COMM.IPD-PAT) 49/2023

Neutral Citation: 2026:DHC:3766

Name of Court: High Court of Delhi

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

Disclaimer: Readers are advised not to treat this as substitute for legal 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

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Headnote:

Delhi High Court allows appeal by Syngenta and sets aside rejection of patent application for monohydrate polymorph of known fungicide compound; holds that experimental data showing improved formulation stability demonstrates inventive step and enhanced efficacy in agrochemical context; emphasises unpredictability of polymorphism and necessity of reasoned analysis by Controller.

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Anil Shah Vs. Le Shark Apparel Limited.

Case Title: Anil Shah Trading as Le Shark India & Anr. v. Le Shark Apparel Limited :18.04.2026:Commercial Appeal (L) No. 40525 of 2025: BombHC: Bharati Dangra and Manjusha Deshpande JJ.

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Introduction:

The Bombay High Court, in a significant ruling concerning trademark rectification and appellate jurisdiction, dealt with an appeal arising from an order directing removal of the trademark “LESHARK” from the register. The original proceedings were initiated by Le Shark Apparel Limited seeking rectification on the ground that the registered proprietor, Anil Shah trading as Le Shark India, had not genuinely used the mark and had allegedly adopted it dishonestly.

The Single Judge had earlier allowed the rectification petition under the Trade Marks Act and ordered expunging of the mark, holding that there was lack of bona fide use and the registration was liable to be removed to maintain the purity of the register.

Before the Division Bench, the primary dispute was whether the appeal against such an order was maintainable under Section 13 of the Commercial Courts Act. The respondent raised a preliminary objection contending that the impugned order was not a “decree” or an appealable order under the statute.

The Court examined the distinction between “judgment,” “decree,” and “order” and relied on precedents including MITC Rolling Private Limited v. Renuka Realtors & Ors., 2025 SCC OnLine SC 2375, to interpret the scope of appellate jurisdiction. It held that the impugned order, although arising from a rectification application and not a traditional suit, conclusively determined the rights of the parties.

Accordingly, the Court ruled that such a decision amounts to a “judgment” or “decree” for the purpose of appeal under the Commercial Courts Act. The preliminary objection was rejected, and the appeal was held to be maintainable, with directions for further hearing on merits.

This ruling clarifies that final adjudications in trademark rectification proceedings are appealable, emphasizing that the substance of the decision, rather than the procedural form, determines appellate rights.

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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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Introduction

The decision of the Bombay High Court in Anil Shah Trading as Le Shark India v. Le Shark Apparel Limited offers an important clarification on the scope of appeals under commercial law as well as the nature of trademark rectification proceedings. While the dispute originated from a challenge to a registered trademark, the core legal question before the Division Bench was procedural yet highly significant: whether an order passed in rectification proceedings amounts to a “judgment” or “decree” and is therefore appealable under the Commercial Courts Act. The ruling brings clarity on how courts should interpret final decisions in intellectual property disputes, especially when such proceedings are not initiated through traditional suits.

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Factual and Procedural Background

The dispute arose when Le Shark Apparel Limited, a foreign entity, sought rectification of a trademark registered in India in the name of Anil Shah trading as Le Shark India. The respondent alleged that the registered mark had not been genuinely used and that its adoption was dishonest. It was further claimed that the supporting documents relied upon by the registered proprietor were not reliable and did not establish real commercial use of the mark.

The rectification application was initially filed before the Intellectual Property Appellate Board, but after institutional changes, the matter came to be decided by the High Court. The learned Single Judge, after examining the material on record, concluded that the trademark registration suffered from lack of bona fide use and appeared to be dishonestly adopted. Exercising powers under the Trade Marks Act, the Court ordered removal of the mark from the register in order to maintain the purity of the trademark registry.

Aggrieved by this decision, the registered proprietor filed an appeal before the Division Bench under the Commercial Courts Act. However, the respondent raised a preliminary objection questioning whether such an appeal was maintainable at all.

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Dispute

The central dispute before the Division Bench was not directly about trademark rights but about the maintainability of the appeal itself. The question was whether the order passed by the Single Judge in rectification proceedings could be treated as a “judgment” or “decree” so as to permit an appeal under the Commercial Courts Act.

The respondent argued that appeals under the statute are limited and can only be filed against specific categories of orders or decrees. Since the rectification order did not fall within those categories, it was contended that the appeal should be dismissed at the threshold. On the other hand, the appellant argued that the order finally determined the rights of the parties and therefore qualified as a judgment capable of being appealed.

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Reasoning and Analysis of the Judge

The Division Bench undertook a detailed examination of the statutory framework and judicial precedents to resolve the issue. It began by explaining the distinction between a “judgment,” “decree,” and “order” under the Code of Civil Procedure. A decree is understood as a final determination of rights in a suit, while an order may not necessarily conclude the dispute. A judgment, on the other hand, is the reasoning that supports either a decree or an order.

The Court then analysed Section 13 of the Commercial Courts Act, which allows appeals from judgments and orders of commercial courts. It referred to the Supreme Court decision in MITC Rolling Private Limited v. Renuka Realtors & Ors., 2025 SCC OnLine SC 2375, where it was held that the provision for appeal must be interpreted in a manner that gives full effect to its language and that the proviso restricting appeals against certain orders cannot be used to narrow the broader right of appeal against judgments.

The Court also considered the earlier Bombay High Court ruling in Skil-Himachal Infrastructure & Tourism Ltd. v. IL&FS Financial Services Ltd., 2022 SCC OnLine Bom 3152, which had interpreted the scope of appeals under the Commercial Courts Act. However, the Division Bench clarified that the interpretation in that case did not mean that appeals were confined only to decrees in a strict sense.

In examining the nature of the impugned order, the Court observed that although the proceedings were styled as a miscellaneous petition for rectification, the outcome had conclusively determined the rights of the parties. The order directed removal of the trademark from the register, which effectively ended the dispute between the parties on that issue.

The Court distinguished other precedents such as Nalinakhya Bysack v. Shyam Sunder Haldar, (1953) 1 SCC 167, and Madhavprasad Kalkaprasad Nigam v. S.G. Chandraverkar, 1950 ILR Bom 326, by noting that those cases dealt with situations where the orders did not finally resolve the dispute. In contrast, the present case involved a complete and final adjudication.

The Court emphasized that the Commercial Courts Act is designed to deal with a wide range of commercial disputes, whether arising from suits, applications, or other proceedings. Therefore, restricting appeals only to traditional decrees would defeat the purpose of the legislation.

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Final Decision of the Court

The Division Bench rejected the preliminary objection and held that the appeal was maintainable. It concluded that the order passed by the Single Judge amounted to a final adjudication of the rights of the parties and therefore qualified as a judgment or decree within the meaning of the law. The Court directed that the appeal be listed for further hearing on merits.

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Point of Law Settled

The judgment settles that an order passed in trademark rectification proceedings, even if arising from an application and not a suit, can be treated as a judgment or decree if it conclusively determines the rights of the parties. Such an order is appealable under the Commercial Courts Act. The decision reinforces that the substance of the adjudication, rather than the form of proceedings, determines the availability of appellate remedies.

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Case Details

Title: Anil Shah Trading as Le Shark India & Anr. Vs. Le Shark Apparel Limited & Anr.

Date of Order: 18 April 2026

Case Number: Commercial Appeal (L) No. 40525 of 2025 

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

Judges: Hon’ble Justice Bharati Dangre and Hon’ble Justice Manjusha Deshpande

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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

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Trademark Rectification and Appeal Rights in India: Legal Analysis

Understanding Judgment vs Decree in Commercial Law: Le Shark Case Insight

Bombay High Court on Final Adjudication and Appealability in Trademark Matters

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Headnote

An order in trademark rectification proceedings that conclusively determines the rights of the parties constitutes a judgment or decree and is appealable under the Commercial Courts Act, regardless of the form in which the proceedings were initiated.

Sri Sai Baba Impex Vs. Venkateswara Food Products

Case Title: Sri Sai Baba Impex v. Venkateswara Food Products:15.04.2026:Civil Revision Petition No. 1101 of 2026:APHC010197992026:High Court of Andhra Pradesh at Amaravati: Hon’ble Ms. Justice B. S. Bhanumathi

Brief Facts & Dispute

The petitioner, M/s. Sri Sai Baba Impex, engaged in manufacturing and selling processed sunflower seeds, claimed prior use and registration of the trademark “RAM-G GOLD” since 2015 (registered in 2022). The respondent allegedly adopted a deceptively similar mark “SRI RAM-G GOLD” for identical goods, leading to claims of trademark infringement and passing off.

The petitioner filed a suit before the District Court seeking injunction. However, the trial court declined to grant an ex parte ad-interim injunction and instead issued notice to the respondent, primarily on the ground that the respondent had also applied for trademark registration.

Aggrieved by the refusal of immediate protection, the petitioner approached the High Court through a revision petition.

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Key Issue

Whether the trial court erred in refusing to grant an ex parte ad-interim injunction in a clear case of prima facie trademark infringement and prior user rights.

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Court’s Reasoning

The High Court observed:

• The petitioner was the prior user of the mark, and prior user rights prevail even over subsequent registration claims.
• The respondent’s mark was deceptively similar in phonetic, visual, structural, and overall commercial impression, likely to cause confusion among consumers.
• The trial court wrongly assumed that pendency of a trademark application bars grant of interim relief, which is contrary to settled law.
• Established precedents affirm that in cases of clear infringement, injunction should ordinarily follow, especially when a strong prima facie case exists.
• Appellate/revisional courts can interfere where discretion is exercised arbitrarily or based on incorrect legal principles.

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Decision

The High Court held that the trial court committed an error in law and granted an ex parte ad-interim injunction restraining the respondent from using the impugned mark for a period of three weeks, enabling the petitioner to seek further relief before the trial court.

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Significance

This ruling reiterates that:

• Prior user rights are paramount in trademark law.
• Mere pendency of a trademark application does not defeat injunction claims.
• Courts must grant prompt interim protection in clear infringement cases to prevent irreparable harm.

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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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Introduction

The decision of the High Court of Andhra Pradesh in M/s. Sri Sai Baba Impex v. Venkateswara Food Products is a significant reaffirmation of core principles governing trademark infringement and interim relief. The case highlights the importance of prior user rights, the test of deceptive similarity, and the duty of courts to grant timely protection where a prima facie case exists. It also clarifies that mere pendency of a trademark application by a defendant does not dilute the plaintiff’s right to seek immediate injunctive relief. The judgment is particularly relevant for businesses seeking urgent protection of their brand identity in competitive markets.

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Factual and Procedural Background

The petitioner, M/s. Sri Sai Baba Impex, had been engaged in the business of manufacturing and selling processed sunflower seeds for several years and had been using the mark “RAM-G GOLD” since an earlier point in time. The mark was formally registered subsequently, and the petitioner had also applied for registration of related marks. Over time, the petitioner built goodwill and market recognition associated with this mark.

The dispute arose when the respondent began using a mark “SRI RAM-G GOLD” for identical goods. According to the petitioner, the respondent’s mark was not only similar but deceptively close in appearance, sound, and overall impression. The petitioner approached the trial court seeking an injunction to restrain the respondent from continuing such use.

However, the trial court declined to grant an immediate ex parte injunction and instead issued notice to the respondent, primarily on the ground that the respondent had also applied for registration of the mark. Feeling aggrieved by the lack of urgent protection, the petitioner approached the High Court through a civil revision petition seeking intervention.

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Dispute

The central dispute revolved around whether the respondent’s use of the mark “SRI RAM-G GOLD” amounted to infringement and passing off of the petitioner’s registered and prior-used mark “RAM-G GOLD,” and whether the trial court erred in refusing to grant immediate interim relief.

A connected issue was whether the pendency of a trademark application filed by the respondent could justify denial of an interim injunction, even when the plaintiff had established prior use and a strong prima facie case of infringement.

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Reasoning and Analysis of the Judge

The High Court carefully examined the facts and the applicable legal principles. It emphasized that trademark law places significant weight on prior use. The Court relied on the principle laid down in S. Syed Mohideen v. P. Sulochana Bai, Civil Appeal No. 2758 of 2015, decided on 17 March 2015 by the Supreme Court, where it was held that prior user rights prevail over subsequent registration. Applying this principle, the Court found that the petitioner clearly stood ahead in time and had established continuous use of the mark.

The Court also examined the similarity between the competing marks and concluded that the respondent’s mark was deceptively similar. The addition of the prefix “SRI” did not materially distinguish the mark, especially when the dominant portion “RAM-G GOLD” remained identical. The Court noted that an average consumer with imperfect recollection would likely be misled, which is the standard test in such cases.

On the issue of interim injunction, the Court relied upon the Delhi High Court decision in Metro Playing Card Co. v. Wazir Chand Kapoor, AIR 1972 Delhi 248, where it was held that mere acceptance or pendency of a trademark application does not confer enforceable rights and does not negate infringement. This principle was used to reject the trial court’s reasoning.

Further, the Court referred to Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, AIR 2006 SC 3304, where the Supreme Court clarified that appellate courts can interfere with discretionary orders if such discretion has been exercised arbitrarily or based on incorrect legal principles. The High Court found that the trial court had acted under a misconception of law and failed to properly assess the petitioner’s prima facie case.

The Court also relied on established precedents such as Ruston & Hornsby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649, and Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, which emphasize that in clear cases of trademark infringement, injunction should ordinarily follow and delay or technicalities should not defeat such relief.

In addition, the Court took guidance from decisions where higher courts intervened when trial courts failed to grant interim protection despite strong prima facie evidence. The reasoning reflects a consistent judicial approach that emphasizes protection of goodwill and prevention of consumer confusion.

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Final Decision of the Court

The High Court held that the trial court had erred in law by refusing to grant an ex parte interim injunction based on an incorrect understanding of the effect of a pending trademark application. Recognizing the petitioner’s prior use and the deceptive similarity between the marks, the Court granted an ex parte ad-interim injunction restraining the respondent from using the impugned mark for a limited period. This interim protection was intended to safeguard the petitioner’s rights until the matter could be properly heard by the trial court.

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Point of Law Settled

The judgment reinforces that prior user rights are superior and can override even subsequent registration claims. It also clarifies that the pendency of a trademark application does not create any defence against infringement nor does it bar the grant of interim injunction. Courts are expected to grant prompt relief in cases where a strong prima facie case of trademark infringement is made out, especially where delay could result in irreparable harm and consumer confusion.

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Case Details

Title: Sri Sai Baba Impex Vs. Venkateswara Food Products

Date of Order: 15 April 2026

Case Number: Civil Revision Petition No. 1101 of 2026 with I.A. No. 1 of 2026

Neutral Citation: Not specified

Court: High Court of Andhra Pradesh at Amaravati

Judge: Hon’ble Ms. Justice B. S. Bhanumathi

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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

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Suggested SEO Titles

Prior User Rights Prevail: Andhra Pradesh High Court Grants Trademark Injunction

Trademark Infringement and Interim Relief: Key Ruling by Andhra Pradesh High Court

Ex Parte Injunction in Trademark Disputes: Analysis of Sri Sai Baba Impex Case

Deceptive Similarity and Prior Use: Landmark Trademark Ruling Explained

When Courts Must Grant Injunction in Trademark Cases: A Practical Analysis

Trademark Law in India: Prior User vs Subsequent Applicant Explained

High Court Clarifies Law on Pending Trademark Applications and Injunctions

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Headnote

A prior user of a trademark is entitled to protection against deceptively similar marks even if the defendant has applied for registration. Pendency of a trademark application does not bar grant of interim injunction. Courts must grant timely protection where a strong prima facie case of infringement and likelihood of confusion is established.

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Ms.Anuradha Sharma Vs Jiva Ayurvedic

Holistic comparison of composite marks and emphasizing overall impression on average consumer

Introduction:

Delhi High Court has clarified important principles regarding how courts should compare rival trademarks, especially composite marks involving common words. The case involved Ayurvedic brand "Jiva" challenging the use of "Shatam Jeeva" by another player in the wellness and Ayurvedic sector. The High Court overturned a lower court's injunction, holding that there was no deceptive similarity between the marks when viewed as a whole. 

Factual and Procedural Background:

Jiva Ayurvedic Pharmacy and related entities had been using the mark "Jiva" for many years in connection with Ayurvedic products, wellness services, and related businesses. They held several trademark registrations featuring the word "Jiva" often combined with device elements like a lotus. The defendants, connected with the Baidyanath group, adopted "Shatam Jeeva" for a wellness retreat. "Shatam" refers to hundred in Sanskrit, symbolizing longevity to mark a centenary celebration of their family brand. They also held a registration for their mark.

When the Jiva group discovered the defendants' use, they filed a commercial suit seeking injunction on grounds of trademark infringement and passing off. The trial court granted an interim injunction in favor of the plaintiffs, restraining the defendants from using "Shatam Jeeva". The defendants appealed to the Delhi High Court.

Dispute:

The core dispute centered on whether the defendants' mark "Shatam Jeeva" was deceptively similar to the plaintiffs' "Jiva" marks, creating likelihood of confusion among consumers. The plaintiffs argued that "Jiva" was the dominant and essential part of their branding, and the defendants were riding on their goodwill. The defendants countered that their full mark, including "Shatam" and the prominent "By Baidyanath" association, when seen as a whole, was distinctly different in look, sound, and overall impression. They also raised points about honest adoption, prior use claims, and the descriptive nature of "Jeeva".

Reasoning and Analysis of the Judge

The Division Bench stressed that marks must be compared as a whole, not dissected into parts. This anti-dissection rule aligns with how ordinary consumers perceive and remember brands – through overall impression rather than detailed analysis.

The judgment drew heavily from Pernod Ricard India Private Limited & Another vs. Karanveer Singh Chhabbra, , where the Supreme Court explained that even if there is a common element, the test is the general impression on an average consumer with imperfect recollection. The Delhi High Court quoted extensively from this case, including the analogy of mixing milk and water to illustrate how dominant elements function within composite marks. It emphasized that common Sanskrit words like "Jiva" or "Jeeva" cannot be exclusively monopolized unless they have acquired very strong secondary meaning specifically linked to one party.

On infringement, the court applied Section 29(2)(b) of the Trade Marks Act, 1999, and found no visual, phonetic, or conceptual similarity between "Jiva" (with lotus device) and "Shatam Jeeva" (with its own circular device featuring 'S' and herbs, plus "By Baidyanath"). The additional elements sufficiently distinguished the marks.

For passing off, the court referred to the classical trinity of goodwill, misrepresentation, and damage, as discussed in Brihan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577. It noted the lower court had not properly established these elements, particularly goodwill prior to the defendants' use and actual misrepresentation.

The court also cited the landmark case Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980  to differentiate between infringement (statutory right) and passing off (common law action based on deceit). This case explains that in passing off, additional features that distinguish the goods can help the defendant, whereas in infringement the focus is more strictly on the registered mark.

The judgment highlighted that the presence of "Shatam" and the Baidyanath association created clear source distinction. It rejected the idea that the defendants were merely copying a dominant part, reiterating that holistic comparison is key. The court found the trial court's reasoning suffered from fallacies, including failure to consider distinguishing features and lack of clear findings on key legal ingredients.

Final Decision of the Court:

The Delhi High Court allowed the appeal, set aside the impugned order granting injunction, and held that the plaintiffs had failed to make out a prima facie case for either infringement or passing off. The defendants were permitted to continue using their "Shatam Jeeva" mark as no likelihood of confusion was established.

Point of Law Settled in the Case:

This judgment reinforces that in trademark disputes involving composite marks with common or descriptive words, courts must undertake a holistic comparison focusing on the overall commercial impression rather than isolating parts. It clarifies that mere presence of a shared word element does not automatically lead to injunction if distinguishing features are present. The decision also underscores the need for trial courts to give clear, reasoned findings on all ingredients of passing off and infringement at the interim stage.

Case Title: Ms.Anuradha Sharma & anr Vs Jiva Ayurvedic Pharmacy Ltd. & Ors.

Date of Order: 21.04.2026

Case Number: FAO (COMM) 334/2025 

Neutral Citation: 2026:DHC:3302-DB

Name of Court: High Court of Delhi

Name of Hon'ble Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla 

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

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Headnote: Delhi High Court sets aside injunction in "Jiva" vs "Shatam Jeeva" trademark dispute, holding no deceptive similarity upon holistic comparison of composite marks and emphasizing overall impression on average consumer rather than isolated word elements.

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Delhi High Court Sets Aside Injunction: No Deceptive Similarity Between "Jiva" and "Shatam Jeeva" Marks

New Delhi: In a notable trademark dispute, the Delhi High Court on 21.04.2026 allowed the appeal and set aside the interim injunction granted by the Commercial Court against the use of the mark "Shatam Jeeva".

Ms.Anuradha Sharma Vs Jiva Ayurvedic:FAO (COMM) 334/2025:2026:DHC:3302-DB: Date of Judgment: 21.04.2026

Court: High Court of Delhi

Coram: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla (Justice Om Prakash Shukla, J. authoring the judgment)

Facts and Dispute

The Plaintiffs (Jiva Group) have been using the mark "Jiva" since the 1990s for Ayurvedic products and wellness services and hold multiple registrations. The Defendants, linked to the Baidyanath group, adopted "Shatam Jeeva" (meaning hundred lives/longevity) for a wellness retreat to mark the centenary of their family brand, along with the prominent suffix "By Baidyanath". The Plaintiffs filed a suit alleging infringement and passing off, claiming deceptive similarity. The Commercial Court granted an interim injunction in their favour, which was challenged in appeal.

Reasoning of the Court

Justice Om Prakash Shukla, writing for the Division Bench, held that trademarks must be compared as a whole and not dissected into individual parts. Applying the anti-dissection rule and principles laid down by the Supreme Court in Pernod Ricard India Private Limited & Anr. vs. Karanveer Singh Chhabbra (2025 INSC 981), the Court found no visual, phonetic or conceptual similarity between the rival marks that could cause confusion in the mind of an average consumer with imperfect recollection. The addition of "Shatam" and "By Baidyanath", along with distinct device elements, sufficiently distinguished the marks. The Court also found the trial court's findings on passing off deficient, particularly on the issue of goodwill and misrepresentation.

Decision

The High Court allowed the appeal, set aside the injunction, and held that the Plaintiffs failed to establish a prima facie case of infringement or passing off. The Defendants were held entitled to use their registered mark "Shatam Jeeva".

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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Malikie Innovations Ltd & Anr. Vs Xiaomi Corporation

SEP and FRAND: Pro tem orderwithout  detailed examination of the merits

Introduction:

In the evolving landscape of intellectual property law, disputes involving Standard Essential Patents (SEPs) continue to test the balance between innovators who develop critical technologies and companies that implement them in consumer products. A recent judgment from the Delhi High Court in a case involving cellular SEPs has provided important clarity on the use of interim measures known as pro tem security. This order underscores that implementers cannot indefinitely use patented technology without fair compensation while negotiations or court proceedings drag on. The ruling offers practical guidance for both patent holders and technology users in India.

Factual and Procedural Background:

The dispute arose when Malikie Innovations Ltd., which had acquired a significant portfolio of cellular patents originally developed by BlackBerry, approached Xiaomi Corporation and its Indian entities for a license to use patents essential to 4G and 5G mobile technologies. After initial discussions failed to result in an agreement, Malikie filed a commercial suit in the Delhi High Court alleging infringement through the manufacture and sale of mobile devices compliant with these standards.

Alongside the suit, Malikie filed an application seeking a direction for Xiaomi to deposit a pro tem (provisional) security amount. This measure aimed to secure the patent holder’s interests during the long pendency of the case. Xiaomi opposed the application on several grounds, including questions about the ownership of patents, the validity and essentiality of the claimed patents, the fairness of the offered licensing terms, and the overall maintainability of the suit.

Dispute

At the heart of the matter was whether the court could direct an implementer like Xiaomi to deposit security even before a full trial or detailed interim injunction hearing. Malikie argued that Xiaomi’s continued sale of devices using the patented technology without payment amounted to unfair hold-out tactics. Xiaomi, on the other hand, maintained that no such deposit should be ordered without clear proof of infringement and without first determining whether the offered royalty rates were fair, reasonable, and non-discriminatory (FRAND).

Concept of Standard Essential Patents (SEPs):

Standard Essential Patents (SEPs) are patents that cover technologies which have become essential to the implementation of a technical standard adopted by the industry. In the telecommunications sector, examples include the 3G, 4G, and 5G cellular communication standards developed by standard-setting organizations such as the European Telecommunications Standards Institute (ETSI).

A patent is considered “essential” if it is impossible (or commercially unviable) to implement the standard without infringing that patent. For instance, if a mobile phone is to be 4G or 5G compliant, it must necessarily use certain specific technical features covered by the SEPs. In this case, the three Suit Patents (IN 283303, IN 317530, and IN 335982) are asserted by the Plaintiffs (Malikie Innovations Ltd.) as SEPs essential to 3G, 4G, and 5G standards. The Plaintiffs claim that Xiaomi’s 4G and 5G compliant mobile phones and handsets infringe these patents.

SEPs create a unique situation because technical standards are meant to be widely adopted for interoperability. Once a patent is declared essential and incorporated into the standard, the patent holder gains significant market power. This is why standard-setting bodies require patent holders to make commitments regarding licensing.

Concept of FRAND:

FRAND stands for Fair, Reasonable, and Non-Discriminatory. When a company declares its patents as essential to a standard, it typically undertakes to license those SEPs to any willing implementer (manufacturer) on FRAND terms.

Fair and Reasonable refers to royalty rates that reflect the actual technical contribution and value of the patented invention, without exploiting the monopoly created by standardization.

Non-Discriminatory means the patent holder cannot favour some licensees over others who are similarly situated.

The purpose of FRAND is to balance two competing interests: rewarding innovation by allowing patent holders to earn reasonable returns, and ensuring that standards remain accessible so that the technology can be widely implemented without anti-competitive barriers.

Relevance of SEPs and FRAND in This Case:

This Delhi High Court case is a classic SEP infringement and FRAND licensing dispute. The Plaintiffs (Malikie Innovations Ltd., which acquired a large portfolio from BlackBerry) approached Xiaomi in October 2023 seeking a worldwide FRAND license for their cellular SEPs. They allege that Xiaomi has been manufacturing, importing, and selling 4G and 5G compliant devices in India without taking a license, thereby infringing the Suit Patents.

The Plaintiffs filed the suit and an interim application under Section 151 CPC seeking pro tem security (a provisional deposit of royalties) based on their FRAND offers. They argued that Xiaomi was engaging in “hold-out” tactics — delaying negotiations through excessive demands on NDAs, making unreasonably low counteroffers, and continuing to sell infringing products without payment. They relied on precedents such as Huawei v. ZTE, Nokia v. OPPO, Dolby v. Lava, and others to contend that a willing licensee must provide adequate security during negotiations, especially in jurisdictions like India where litigation takes time.

Xiaomi, on the other hand, contested the application by raising several defences typical in SEP cases: non-joinder of BlackBerry (the original patentee), lack of sufficient evidence on validity, essentiality, and infringement, absence of third-party comparable license agreements to prove FRAND rates, and the need for the Court to first establish a prima facie case before ordering any security. Xiaomi also highlighted that they had filed a parallel FRAND rate-setting suit in the Shenzhen Court in China.

The judgment discusses at length the history of negotiations, the parties’ conduct, the strength of the BlackBerry-derived portfolio, market share data of Xiaomi, and the legal principles governing pro tem security in SEP disputes. The filing of the Chinese rate-setting suit was treated as a significant development, potentially amounting to an admission of the need to license the SEPs.

The case revolves around enforcing FRAND obligations in the Indian context: whether Xiaomi has acted as a willing licensee, whether the Plaintiffs have made FRAND offers, and whether interim security is warranted to prevent the SEP holder from suffering irreparable harm during the pendency of the suit, while the implementer continues to benefit from the patented technology.

This dispute highlights the global nature of SEP litigation, where parallel proceedings in India, China, the US, and Europe are common, and courts strive to strike a balance between innovation incentives and fair access to standardized technologies.

Reasoning and Analysis of the Judge:

Court explained that pro tem security is not the same as a full injunction that stops sales. Instead, it acts as a temporary financial safeguard to maintain balance between the parties while the main case proceeds. The judge noted that SEP disputes often involve complex technical and commercial issues that take considerable time to resolve. During this period, the implementer continues to benefit from the technology while the patent owner remains unpaid, creating an unfair advantage.

The Court found prima facie evidence that the patents were essential and that Xiaomi’s devices used them, based on publicly available declarations and product specifications. Court observed that prolonged negotiations, exchange of offers and counteroffers, and Xiaomi’s own filing of a rate-setting case in China indicated recognition of the need for a license. He emphasized that once an implementer knows about the patents and uses the technology, it has an obligation to act as a willing licensee, which includes providing appropriate security.

The judge drew support from several important precedents. He referred to the principles laid down in Huawei Technologies Co. Ltd. v. ZTE Corp. [2015] Bus LR 1261  regarding good faith negotiations in SEP cases. He also relied on Indian rulings such as Nokia Technologies OY v. Guangdong OPPO Mobile Telecommunications Corp. Ltd. & Ors. (Neutral Citation: 2023:DHC:4465-DB), where the Division Bench clarified that pro tem orders have a lower threshold than regular interim injunctions and serve to prevent injustice during the interregnum. Other cases like Dolby International AB & Anr. v. Lava International Limited 2025:DHC:5426, were cited to highlight the court’s equitable powers under Section 151 of the Code of Civil Procedure to pass such orders without a detailed merits examination at this stage.

Court  rejected the argument that full proof of every aspect (including exact FRAND rate) was required before ordering security. He clarified that pro tem relief is meant to preserve the status quo and protect the patent holder’s rights without finally deciding the case. At the same time, he made it clear that the order does not amount to a final finding on infringement or the exact royalty rates.

Final Decision of the Court and Point of Law Settled:

The Court disposed of the application by directing Xiaomi to deposit a substantial security amount with the Registrar General of the Delhi High Court within six weeks, either in cash (as fixed deposit) or through a bank guarantee. It was further clarified that failure to comply could lead to further reliefs, including possible injunction. Importantly, the order emphasized that this was only a provisional measure and would not prejudice the final outcome of the suit.

This judgment settles an important point of law: In SEP infringement cases involving FRAND licensing, Indian courts have the discretion to order pro tem security at an early stage based on a prima facie view of essentiality and use. This mechanism prevents undue delay tactics and ensures that patent owners are not left remediless during lengthy proceedings, while still allowing full adjudication of all issues at the appropriate stage.

Case Title: Malikie Innovations Ltd & Anr. Vs Xiaomi Corporation & Ors.

Date of Order: 30 April 2026

Case Number: CS(COMM) 734/2025 

Neutral Citation: 2026:DHC:3674

Name of Court: High Court of Delhi

Name of Hon’ble Judge: 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

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Headnote: Delhi High Court directs deposit of pro tem security in SEP FRAND dispute emphasizing lower threshold for provisional relief to balance interests of patent holders and implementers during pendency of litigation.

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Delhi High Court Directs Xiaomi to Deposit ₹272 Crores as Pro Tem Security in SEP Infringement Suit by Malikie Innovations

Malikie Innovations Ltd Vs Xiaomi Corporation:30.04.2026:CS(COMM) 734/2025:2026:DHC:3674: Hon’ble Mr. Justice Tejas Karia

Facts & Dispute:

Malikie Innovations Ltd. (which acquired a large cellular SEP portfolio from BlackBerry) filed a suit alleging infringement of three Indian SEPs essential to 4G and 5G standards by Xiaomi’s mobile devices. The Plaintiffs claimed that despite approaching Xiaomi in 2023 and making FRAND offers, the Defendants engaged in hold-out tactics, continued unlicensed sales, and later initiated FRAND rate-setting proceedings in China. 

Xiaomi contested the suit’s maintainability (non-joinder of BlackBerry), disputed essentiality/infringement/FRAND compliance, and argued that pro tem security could not be ordered without a full prima facie adjudication.

Reasoning of the Court:

Court  held that in SEP cases, pro tem security is a distinct equitable relief with a lower threshold than Order XXXIX injunctions. It serves to balance equities during prolonged litigation and prevent implementers from gaining unfair advantage through continued use of SEPs without compensation. The Court found prima facie infringement based on claim charts, ETSI declarations, and Xiaomi’s self-declared 4G/5G compliance. It viewed Xiaomi’s negotiations, counteroffers, and the Chinese rate-setting suit as indicative of recognition of the need to license. The Court relied on precedents such as Nokia Technologies OY v. OPPO, Dolby v. Lava, and Huawei v. ZTE, emphasizing that implementers must furnish security commensurate with the SEP holder’s offer during negotiations.

Decision:

The Court allowed the application in part and directed Xiaomi to deposit ₹272 crores (approx. $28.7 million, calculated as 19.12% of the mean of the parties’ second lump-sum offers, corresponding to Indian market share) with the Registrar General within 6 weeks, either as cash in an interest-bearing FDR or as an unconditional bank guarantee. Failure to comply would entitle the Plaintiffs to seek interim injunction. The order clarifies that it does not amount to a final finding on infringement, validity, or FRAND rates.

Disclaimer: Do not treat this as substitute for legal advice 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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21,40,42,61,79,80

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