Rajani Products Vs. Bhagwan Das Harwani

Factual Background

Rajani Products, a Kota-based company, has held the registered trademark "Swastik" with its associated label since 1983 for edible oils. The company alleged that respondents Bhagwan Das Harwani (Parwati Oil Mill) and Karishma Trading Corporation infringed this trademark by using a deceptively similar mark, "Shree Parwati Swastik," causing business losses.

Procedural Background

Rajani Products filed a civil suit (No. 76/2019) under the Trade Marks Act, 1999, before the Additional District Judge No. 3, Kota, seeking an injunction. Their application for temporary relief under Order 39 Rules 1 and 2 CPC was rejected on 06.02.2020. Aggrieved, they appealed to the Rajasthan High Court (Jaipur Bench) via S.B. Civil Miscellaneous Appeal No. 2198/2020.

Provisions of Law Referred and Their Context

• Order 43 Rule 1(r) CPC: Governs appeals against orders rejecting temporary injunctions, forming the basis of this appeal.
• Order 39 Rules 1 and 2 CPC: Provides for interim injunctions to prevent irreparable harm, invoked by the appellant to restrain the respondents.
• Trade Marks Act, 1999: Protects registered trademarks from infringement, central to the appellant’s claim of exclusive rights over "Swastik."

Judgments Referred with Complete Citation and Context

• S.B. Civil Misc. Appeal No. 2925/2022, Rajasthan High Court, Order dated 06.11.2024: In a parallel case involving Shanker Oil Mill, the same trademark dispute led to an injunction granted by Additional District Judge No. 2, Kota (30.08.2022), upheld by the High Court. This precedent was cited to highlight inconsistent rulings on identical issues.

Reasoning of Court

The Court found the respondents’ trademark "Shree Parwati Swastik" visually, phonetically, and structurally similar to the appellant’s registered "Swastik" mark. It noted the appellant’s long-standing use since 1983 and the respondents’ failure to appear despite notice. Referencing the Shanker Oil Mill case, the Court emphasized judicial consistency, concluding that a prima facie case of trademark infringement existed, warranting interim relief to prevent irreparable harm and protect public interest.

Decision

The High Court granted an ad-interim injunction, restraining the respondents from using the "Swastik" trademark and label until the suit’s final disposal, overturning the lower court’s rejection.

Case Details

• Case Title: Rajani Products Vs. Bhagwan Das Harwani & Anr.
• Date of Order: 19 March 2025
• Case Number: S.B. Civil Miscellaneous Appeal No. 2198/2020
• Neutral Citation: [2025:RJ-JP:12399]
• Name of Court: High Court of Judicature for Rajasthan, Jaipur Bench
• Name of Hon’ble Judge: Justice Anoop Kumar Dhand

Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs

Features with identical functionality may negate novelty if fully anticipated by prior art.

Introduction:

This case involves a legal challenge to a patent refusal by the Assistant Controller of Patent and Designs under the Patents Act, 1970, adjudicated by the Bombay High Court in its Commercial Division. The petitioners, Vishal Prafulsingh Solanke and another, sought to quash an order dated 14th June 2023 that rejected their patent application (No. 879/MUM/2015) for an invention titled "Thread Type Tamper Evident Security Seal." The refusal was based on pre-grant opposition under Section 25(1)(b) (lack of novelty) and Section 25(1)(e) (lack of inventive step) of the Act. The judgment, delivered on 27th March 2025, explores critical issues of patent law, including the standards for novelty, inventive step, and the role of prior art and common general knowledge in patent adjudication.

Detailed Factual Background:

The petitioners filed a patent application on 17th March 2015 for a tamper-evident security seal designed to prevent tampering in applications such as electricity boards and rickshaw meters. The invention featured a thread-type seal made of polycarbonate material with an embedded wire for enhanced tamper evidence. The application was published in the Patents Journal, triggering a pre-grant opposition by Respondent No. 3 on 16th January 2018. The Assistant Controller of Patent and Designs issued a First Examination Report (FER) on 30th April 2020, to which the petitioners responded on 24th December 2020, addressing both the FER and the opposition.

The invention was intended to address practical issues in prior art seals, such as wastage due to inadvertent rotation and ease of tampering. Unlike prior seals, the petitioners’ design allowed correction of accidental rotations and reuse after a 180-degree rotation, enhancing user-friendliness and cost efficiency. However, the Assistant Controller, after a hearing on 2nd May 2023 and subsequent written submissions, refused the application on 14th June 2023, citing lack of novelty and inventive step based on prior art documents, including US5419599 and US6390519.

Detailed Procedural Background:

The petitioners filed Patent Application No. 879/MUM/2015 on 17th March 2015. The application was published in the Patents Journal. Respondent No. 3 filed a pre-grant opposition on 16th January 2018 under Section 25(1) of the Patents Act. The Assistant Controller issued a First Examination Report (FER) on 30th April 2020. The petitioners’ agent filed replies on 24th December 2020 to both the FER and the opposition. A pre-grant opposition hearing occurred on 2nd May 2023, where amendments were suggested. The petitioners submitted amended specifications post-hearing. On 9th May 2023, the Assistant Controller issued an interim order directing written submissions. The petitioners filed their submissions on 16th May 2023, and Respondent No. 3 filed theirs on 31st May 2023. On 14th June 2023, the Assistant Controller refused the patent under Sections 25(1)(b) and 25(1)(e). The petitioners filed a Commercial Miscellaneous Petition (L) No. 25369 of 2023 on 11th September 2023 under Section 117A of the Patents Act before the Bombay High Court. The judgment was reserved on 28th November 2024 and pronounced on 27th March 2025.

Issues Involved in the Case:

whether the petitioners’ invention lacked novelty under Section 25(1)(b) in light of prior art US5419599? whether it lacked an inventive step under Section 25(1)(e) when compared to prior art and common general knowledge? whether the Assistant Controller’s findings on novelty and inventive step were legally inconsistent or unsupported by prior art analysis? whether the impugned order adequately addressed the petitioners’ submissions and adhered to principles of natural justice? and whether the refusal order provided sufficient reasoning, particularly regarding technical advancement and economic effect?

Petitioners’ Submissions:

The petitioners argued that their invention prevents tampering in critical applications, featuring a unique thread-type seal with a wire moulded inside, distinguishing it from prior art (D1: WO2006000370A1 and D2: US6390519B1). They contended that the impugned order misapplied Sections 25(1)(b) and 25(1)(e), ignoring differences highlighted in diagrams and submissions. Citing Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023), they asserted that novelty requires prior art to disclose the entire invention, noting that the order itself acknowledged a novel feature (threads in cavity and insert) yet contradicted this by refusing the patent. On inventive step, they relied on Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022), arguing that the invention showed technical advancement (e.g., reusability) not obvious to a skilled person. They challenged the order’s lack of detailed analysis on obviousness or common general knowledge sources, referencing Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court). They sought to quash the impugned order and requested a reasoned reconsideration within 12 weeks.

Respondents’ Submissions:

Respondent Nos. 1 and 2, defended the refusal, asserting that a fair hearing was conducted with no procedural lapses. He argued that US5419599 anticipates all features of the invention, with its snap-fit mechanism equivalent to the threaded lock (paragraphs 18-19 of the impugned order). He contended that no surprising effect or economic advantage was demonstrated, citing Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court), which requires more than workshop improvements for patentability. He justified the use of US1911060A (background of US5419599) as common general knowledge, upheld in Agfa NV (supra). He emphasized that the pre-grant opposition (US5419599) and Sections 14-15 analysis (D1, D2) were distinct, and a single valid ground suffices for refusal, per Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court). He concluded that the impugned order was reasoned and warranted no interference.

Detailed Discussion on Judgments Cited by Parties:

Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023) was cited by the petitioners to argue that novelty and inventive step objections cannot stem from the same prior art. The court rejected this, finding that different prior arts (US5419599 for pre-grant, D1/D2 for Sections 14-15) were used, rendering the citation misplaced.

Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022) was relied upon by the petitioners to claim that technical advancement (reusability) satisfied the inventive step. The court found no such advancement, as the threaded lock was equivalent to US5419599’s features, negating the petitioners’ reliance.

Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court) was invoked by the petitioners to challenge the lack of detailed obviousness analysis, while the respondents justified citing prior art as common knowledge. The court upheld the use of US1911060A as common knowledge, finding no prohibition in citing prior art literature.

Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court) was cited by the respondents to argue that the invention was a mere workshop improvement. The court applied this to hold that the threaded lock lacked inventive step beyond known art.

Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court) was referenced by the respondents to assert that a single valid ground suffices for refusal. The court agreed, upholding the refusal under Section 25(1)(b) alone.

Mahesh Gupta v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 328 of 2022, Delhi High Court) supported the respondents’ inventive step analysis with common knowledge. It reinforced the court’s acceptance of US1911060A as a valid source.

Detailed Reasoning and Analysis of Judge :

The Court bifurcated the impugned order into two parts: paragraphs 12-23 (pre-grant opposition) and 24-31 (Sections 14-15), treating them as independent. On novelty under Section 25(1)(b), he found that US5419599 anticipated all features, with its snap-fit mechanism mechanically equivalent to the threaded lock. US1911060A’s disclosure further supported this as common knowledge, justifying refusal. For inventive step under Section 25(1)(e), even if novelty were contested, the threaded lock showed no technical advancement or economic effect, being obvious to a skilled person per US5419599 and US1911060A. The petitioners’ reliance on a novelty finding in Sections 14-15 (against D1/D2) did not override the pre-grant refusal (against US5419599), as the analyses were distinct. Legal precedents like Biswanath Prasad confirmed the need for more than workshop improvements, while Opentv Inc. validated that one ground suffices for refusal. The judge found no violation of natural justice, with the order addressing all contentions and substantiated by reasons. He concluded that the petitioners failed to demonstrate error in the refusal, warranting dismissal.

Final Decision:

The Commercial Miscellaneous Petition was dismissed on 27th March 2025, with no order as to costs, upholding the Assistant Controller’s refusal of Patent Application No. 879/MUM/2015.

Law Settled in This Case:

The case clarified that a patent refusal can stand on a single valid ground (e.g., lack of novelty), irrespective of other findings. It affirmed that disclosures in prior art backgrounds (e.g., US1911060A in US5419599) can constitute common general knowledge for inventive step analysis. It also established that Features with identical functionality (e.g., snap-fit vs. threaded lock) may negate novelty if fully anticipated by prior art.

Case Title: Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs 

Date of Order: 27th March 2025

Case No.: Commercial Miscellaneous Petition (L) No. 25369 of 2023

Neutral Citation: 2025:BHC-OS:4952

Name of Court: High Court Bombay

Name of Judge: Hon'ble Justice Shri R.I. Chagla J.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.

Section 11(2) requires proof of unfair advantage or detriment, not mere reputation

Introduction

The case of Nandhini Deluxe vs. M/S. Karnataka Cooperative Milk Producers Federation Ltd. is a significant trademark dispute adjudicated by the Supreme Court of India on July 26, 2018. The central issue revolved around the use and registration of the trademark "NANDHINI" by the appellant, a restaurant business, in the face of opposition from the respondent, a cooperative federation known for its milk and milk products sold under the phonetically similar trademark "NANDINI." This case exemplifies the application of trademark law principles under the Trade Marks Act, 1999, particularly concerning distinctiveness, likelihood of confusion, and the scope of monopoly over a class of goods. It underscores the balance between protecting established trademarks and allowing fair use by others in different trade contexts.

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Detailed Factual Background

• Respondent’s Business and Trademark: The respondent, Karnataka Cooperative Milk Producers Federation Ltd., adopted the trademark "NANDINI" in 1985 for its milk and milk products. The mark, registered under Classes 29 and 30 of the Trade Marks Rules, 2002, featured a logo of a cow with the word "NANDINI" in an egg-shaped circle. Over the years, the respondent claimed that "NANDINI" had become a well-known mark and a household name in Karnataka, akin to "Amul" in Gujarat, due to its extensive use and promotion.
• Appellant’s Business and Trademark: The appellant, M/S. Nandhini Deluxe, began using the trademark "NANDHINI" in 1989 for its restaurant business in Bangalore and one location in Tamil Nadu. The mark was stylized as "NANDHINI DELUXE" with a lamp device and the tagline "the real spice of life," applied to foodstuffs like meat, fish, poultry, fruits, vegetables, edible oils, and spices sold in its restaurants. The appellant sought registration of this mark under Classes 29 and 30, among others, but explicitly excluded milk and milk products from its claim.
• Nature of the Marks: Both "NANDINI" and "NANDHINI" are phonetically similar, differing only by one letter ("H"). However, their visual representations, logos, and business contexts were distinct. "NANDINI/NANDHINI" is a generic term in Hindu mythology, referring to a goddess and a cow, and is not an invented word.
• Timeline: The respondent’s use predated the appellant’s by four years (1985 vs. 1989). By the time the appellant applied for registration in the early 2000s, it had used "NANDHINI" for over a decade.

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Detailed Procedural Background

• Initial Application and Opposition: The appellant applied for registration of "NANDHINI DELUXE WITH LOGO (Kannada)" under Class 29 and related marks under Class 30. The respondent opposed these applications, arguing that "NANDHINI" was deceptively similar to its registered mark "NANDINI," likely to cause confusion, and that it had acquired distinctiveness through long use.
• Deputy Registrar’s Decision (August 13, 2007): The Deputy Registrar dismissed the respondent’s objections, finding no likelihood of confusion due to the differences in goods (restaurants vs. dairy products) and the distinct visual styles of the marks. Registration was granted to the appellant, excluding milk and milk products, under Sections 9, 11, and 18 of the Trade Marks Act, 1999.
• IPAB Appeals:
  • Order of April 20, 2010: In one appeal (OA/4/2008/TM/CH), the Intellectual Property Appellate Board (IPAB) upheld the Deputy Registrar’s decision, citing Vishnudas Trading to argue that a trader should not monopolize an entire class of goods if they only deal in specific items (milk vs. restaurant foodstuffs).
  • Order of October 4, 2011: In subsequent appeals, a different IPAB bench reversed the earlier ruling, allowing the respondent’s appeals. It held that "NANDINI" was a well-known mark, and the phonetic similarity with "NANDHINI" would confuse consumers, despite the appellant’s different goods.
• High Court Decision (December 2, 2014): The Karnataka High Court dismissed the appellant’s writ petitions, affirming the IPAB’s October 2011 order. It emphasized the distinctiveness of "NANDINI" and the potential for confusion within the same classes (29 and 30).
• Supreme Court Appeals: The appellant appealed to the Supreme Court (Civil Appeal Nos. 2937-2942 & 2943-2944 of 2018), challenging the High Court and IPAB’s findings.

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Issues Involved in the Case

1. Likelihood of Confusion: Whether the appellant’s use of "NANDHINI" was deceptively similar to "NANDINI," likely to cause confusion or deception among consumers?
2. Distinctiveness and Well-Known Status: Whether "NANDINI" had acquired such distinctiveness or well-known status under Section 11(2) that it precluded registration of "NANDHINI" for different goods in the same classes?
3. Scope of Monopoly: Whether the respondent’s registration under Classes 29 and 30 entitled it to a monopoly over all goods in those classes, or only the specific goods it traded (milk and milk products)?
4. Honest Concurrent Use: Whether the appellant’s long use of "NANDHINI" since 1989 qualified as honest concurrent use under Section 12, overriding the respondent’s objections?
5. Application of Trademark Law: Whether the IPAB and High Court correctly applied Sections 9, 11, and 12 of the Trade Marks Act, 1999?

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Detailed Submission of Parties

• Appellant’s Submissions:
  • No Confusion: The goods (restaurant foodstuffs) and trade channels (restaurants vs. dairy sales) were distinct, negating any likelihood of confusion under Sections 9 and 11. Cited British Sugar Plc v. James Robertson & Sons Ltd. ([1996] RPC 281) to argue that similarity of goods and confusion are separate inquiries.
  • Limited Monopoly: Per Vishnudas Trading v. Vazir Sultan Tobacco Ltd. ([1997] 4 SCC 201), a trademark owner’s rights extend only to goods they trade, not an entire class. The respondent’s business was confined to milk, not the appellant’s goods.
  • Not Well-Known: The respondent failed to prove "NANDINI" met the criteria for a well-known mark under Section 11(2), as laid out in Nestle India Ltd. v. Mood Hospitality Pvt. Ltd. ([2010] 42 PTC 514 (Del)).
  • Honest Use: The appellant’s use since 1989 was honest and concurrent, supported by the Deputy Registrar’s findings and Section 12.
  • Generic Name: "NANDHINI" being a common deity name weakened the respondent’s claim to exclusivity.
  • Concession: The appellant offered to exclude milk and milk products from its registration, addressing any overlap.
• Respondent’s Submissions :
  • Well-Known Mark: "NANDINI" was a household name in Karnataka with distinctiveness, meeting Section 11(2) criteria (Nestle India Ltd. applied). Its use since 1985 predated the appellant’s.
  • Confusion Likely: Phonetic identity ("NANDINI" vs. "NANDHINI") in the same classes (29 and 30) would confuse consumers, per IPAB and High Court findings.
  • Dishonest Use: The appellant knowingly adopted "NANDHINI" despite awareness of the respondent’s mark (evidenced by purchasing "NANDINI" milk), negating honest concurrent use under Section 12.
  • Religious Argument Counter: The appellant’s claim that "NANDHINI" as a deity name cannot be registered undermined its own application, but Section 9(2)(b) did not bar registration unless it hurt religious sentiments, which it did not.
  • Override by Section 11(2): The mandatory nature of Section 11(2) trumped Section 12’s discretionary provisions.

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Detailed Discussion on Judgments Cited by Parties

1. Vishnudas Trading v. Vazir Sultan Tobacco Ltd., [1997] 4 SCC 201:
   • Context: The Supreme Court held that a trademark owner cannot claim monopoly over an entire class if they only trade in specific goods within it.
   • Appellant’s Use: Argued that the respondent’s rights were limited to milk products, not all goods in Classes 29 and 30.
   • Court’s Application: The Supreme Court relied on this to reject the High Court’s broad class-based monopoly reasoning.
2. British Sugar Plc v. James Robertson & Sons Ltd., [1996] RPC 281 (CH):
   • Context: The UK court distinguished between similarity of goods and likelihood of confusion, rejecting the notion that a strong mark automatically protects dissimilar goods.
   • Appellant’s Use: Emphasized that confusion requires both similarity of marks and goods, not just phonetic similarity.
   • Court’s Application: Supported the finding that different goods and trade channels reduced confusion risk.
3. Nestle India Ltd. v. Mood Hospitality Pvt. Ltd., [2010] 42 PTC 514 (Del) (DB):
   • Context: The Delhi High Court outlined criteria for a well-known mark under Section 11(2): reputation, unfair advantage, and detriment.
   • Respondent’s Use: Argued "NANDINI" met these criteria, justifying broader protection.
   • Appellant’s Use: Contended insufficient evidence existed for such status.
   • Court’s Application: Found the respondent failed to prove unfair advantage or detriment by the appellant’s use.
4. Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492 (1961):
   • Context: The US court listed factors for assessing confusion (mark strength, similarity, product proximity, etc.).
   • Appellant’s Use: Applied these to argue no confusion due to different products and visual distinctions.
   • Court’s Application: Adopted this test, finding minimal confusion risk.
5. National Sewing Thread Co. Ltd. v. James Chadwick and Bros., AIR 1953 SC 357:
   • Context: The Supreme Court held that confusion is assessed from an average consumer’s perspective, not just mark comparison.
   • Appellant’s Use: Argued an ordinary person would not confuse restaurant goods with dairy products.
   • Court’s Application: Reinforced that visual and contextual differences negated confusion.
6. London Rubber Co. Ltd. v. Durex Products Inc., (1964) 2 SCR 211:
   • Context: Discussed the burden on an applicant to prove no deception under the Trade Marks Act.
   • Appellant’s Use: Asserted it met this burden with distinct goods and honest use.
   • Court’s Application: Implicitly supported the appellant’s discharge of this burden.

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Detailed Reasoning and Analysis of Judge

• Key Facts Recap: Highlighted the respondent’s prior use (1985) vs. the appellant’s long use (1989), different goods, generic nature of "NANDHINI," and visual distinctions in logos.
• Core Issue: Focused on whether "NANDHINI" infringed "NANDINI" by causing confusion or leveraging goodwill, rather than presuming the respondent’s distinctiveness (though assumed for argument’s sake).
• No Deceptive Similarity: Applying Polaroid and National Sewing Thread, the court found no confusion due to:
  • Different visual marks (lamp vs. cow logo).
  • Distinct goods (restaurant items vs. dairy) and trade channels.
  • An average consumer’s ability to differentiate based on context.
• Class Monopoly Rejected: Citing Vishnudas Trading, the court ruled that trademark rights extend only to goods traded, not entire classes. The respondent’s milk focus did not preclude the appellant’s registration for other Class 29/30 goods.
• Section 11(2) Analysis: Per Nestle India Ltd., the respondent failed to show the appellant’s use was unfair or detrimental to "NANDINI’s" repute, especially given the appellant’s early adoption (1989) before "NANDINI" arguably became well-known.
• Concurrent Use: The appellant’s 12-13 years of use before applying for registration suggested honest concurrent use under Section 12, unchallenged by the respondent via injunction.
• IPAB Inconsistency: Noted the IPAB’s April 2010 order (upholding registration) was ignored in its October 2011 reversal, hinting at issue estoppel, though not decisive given the merits ruling.
• Conclusion: Overturned the IPAB and High Court, restoring the Deputy Registrar’s order with the appellant’s concessions on milk products.

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Final Decision

The Supreme Court allowed the appeals, set aside the High Court (December 2, 2014) and IPAB (October 4, 2011) orders, and restored the Deputy Registrar’s registration grant, excluding milk and milk products as per the appellant’s concessions. No costs were awarded.

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Law Settled in This Case

1. Likelihood of Confusion: Assessed holistically (mark similarity, goods, trade channels), not just phonetically or by class overlap.
2. Class Monopoly: A trademark owner’s rights are limited to goods they trade, not an entire class (Vishnudas Trading affirmed).
3. Well-Known Mark: Section 11(2) requires proof of unfair advantage or detriment, not mere reputation.
4. Honest Concurrent Use: Long, unchallenged use can support registration under Section 12, even with phonetic similarity.

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Case Details

• Case Title: Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.
• Date of Order: July 26, 2018
• Case No.: Civil Appeal Nos. 2937-2942 of 2018 with Civil Appeal Nos. 2943-2944 of 2018
• Neutral Citation: AIR 2018 Supreme Court 3516, (2018) 9 SCC 183
• Name of Court: Supreme Court of India
• Name of Judge: Hon'ble Justices Shri A.K. Sikri and Shri Ashok Bhushan)

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Gufic Ltd. Vs Clinique Laboratories

Vast price differential between the two products, held to be fatal against grant of  interim injunction

Introduction

The case of M/S Gufic Ltd. & Another vs. Clinique Laboratories, LLC & Another is a trademark dispute adjudicated by the High Court of Delhi. This appeal arose from an interim order issued by a Single Judge, which granted an injunction in favor of Clinique Laboratories, LLC (Respondents/Plaintiffs) against Gufic Ltd. (Appellants/Defendants), restraining the use of the trademark "SKINCLINIQ." The Division Bench, in its judgment dated July 9, 2010, overturned the Single Judge's decision, focusing on the principles of trademark infringement under Section 29 of the Trade Marks Act, 1999. This case study examines the factual and procedural background, the issues involved, the parties' submissions, judicial precedents, the court's reasoning, and the legal principles settled.

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Detailed Factual Background

The Respondents, Clinique Laboratories, LLC (Plaintiff No. 1), a U.S.-based company, are globally recognized for their cosmetic and skincare products under the trademark "CLINIQUE," registered in India since July 13, 1981, under Class 3 (cosmetics, creams, lotions, etc.). They also own a series of trademarks incorporating "CLINIQUE," such as "CLINIQUE WATER THERAPY" and "CLINIQUE SKIN SUPPLIES FOR MEN," registered since 1992, and "CLINIQUE & C DEVICE" since 1978. Clinique claimed worldwide use of "CLINIQUE" since 1968 and entry into the Indian market in 2007, asserting it as the distinguishing feature of their brand.

The Appellants, Gufic Ltd., an Indian company, are the registered proprietors of "SKINCLINIQ" and related marks, including "SKINCLINIQ STRETCH NIL," since 1998-1999 under Classes 3 and 5 (cosmetics and medicinal preparations). They market "SKINCLINIQ STRETCH NIL," an Ayurvedic herbal product for stretch mark removal, with sales evidenced since 1999. Clinique became aware of Gufic’s mark in September 2006 and initiated legal action, alleging infringement and deceptive similarity with "CLINIQUE."

The dispute centered on whether "SKINCLINIQ" infringed "CLINIQUE," given their use in overlapping product categories (cosmetics/skincare) and the alleged phonetic and structural similarity.

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Detailed Procedural Background

The Respondents filed a suit (CS(OS) 2581/2008) before the Delhi High Court, seeking a permanent injunction against the Appellants for trademark infringement and passing off, along with damages. On December 16, 2008, the Single Judge granted an ex parte interim injunction (IA No. 15425/2008 under Order 39 Rules 1 and 2, CPC), restraining Gufic from using "SKINCLINIQ" or related marks.

The Appellants responded with IA No. 217/2009 (under Order 39 Rule 4, CPC) to vacate the injunction, while the Respondents filed IA No. 2769/2009 (under Section 124(1)(ii), Trade Marks Act, 1999) to stay the suit pending rectification proceedings against Gufic’s "SKINCLINIQ" registration. On April 9, 2009, the Single Judge disposed of all applications: the injunction was made absolute, Gufic’s application was dismissed, and the suit was stayed pending rectification, subject to no interference with those proceedings.Gufic appealed (FAO(OS) 251/2009) to the Division Bench, challenging the injunction and initially the Section 124 stay, though the latter issue was later dropped during arguments. The Division Bench, comprising Justices Badar Durrez Ahmed and Veena Birbal, delivered its judgment on July 9, 2010.

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Issues Involved in the Case

The primary issue before the Division Bench was:

1. Whether the Respondents made out a prima facie case for an interim injunction under Section 29(1) of the Trade Marks Act, 1999, based on the alleged deceptive similarity between "CLINIQUE" and "SKINCLINIQ."

• Sub-issues included:
  • Are "CLINIQUE" and "SKINCLINIQ" deceptively similar in structure, phonetics, or idea?
  • Does the use of "SKINCLINIQ" by the Appellants render it likely to be mistaken as "CLINIQUE"?

The court explicitly excluded considerations under Section 124 (stay) and Sections 28(3) and 30(2)(e) (registered mark defenses), focusing solely on infringement.

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Detailed Submission of Parties

Appellants’ Submissions (Gufic Ltd.)

• dissimilarity of Marks: The Appellant argued that "SKINCLINIQ" and "CLINIQUE" are neither identical nor deceptively similar. "SKINCLINIQ" includes the prefix "SKIN," distinguishing it structurally and visually.
• Product Differences: "SKINCLINIQ STRETCH NIL" is an Ayurvedic herbal product for stretch marks, priced at Rs. 245 for 100 ml, while "CLINIQUE" products are non-Ayurvedic cosmetics, priced significantly higher (e.g., Rs. 1,200 for 15 ml). This price differential and product nature eliminate confusion.
• Trade Dress and Consumer Base: The style, color scheme, and packaging of "SKINCLINIQ" differ from "CLINIQUE," targeting distinct consumer classes.
• Established Use: Gufic has used "SKINCLINIQ" since 1999, evidenced by advertisements, negating mala fide intent.
• Test for Similarity: Since the marks are not identical, the infringement test mirrors passing off, requiring a likelihood of confusion, which Gufic argued was absent.

Respondents’ Submissions (Clinique Laboratories, LLC)

• Focus on Marks Alone: The Respondent contended that infringement under Section 29(1) hinges solely on comparing the marks, not price, trade dress, or product specifics.
• Deceptive Similarity: "SKINCLINIQ" is phonetically and structurally similar to "CLINIQUE," especially as "CLINIQ" mimics "CLINIQUE" (pronounced "KLINECK"). Viewed holistically, from a consumer’s perspective (average intelligence, imperfect recollection), confusion is likely.
• Common Idea: Both marks suggest treatment or skincare, reinforcing similarity.
• Established Reputation: Clinique’s long-standing global and Indian use of "CLINIQUE" supports its claim to exclusivity.

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Detailed Discussion on Judgments Cited by Parties

1. Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727
   • Context: Compared "RUSTON" with "RUSTAM" and "RUSTAM INDIA."
   • Relevance: The Supreme Court held "RUSTAM INDIA" infringed "RUSTON," rejecting the suffix "INDIA" as a differentiator. Gufic distinguished this, arguing "SKIN" in "SKINCLINIQ" is integral, not a mere suffix.
2. Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449
   • Context: "AMRITDHARA" vs. "LAXMANDHARA."
   • Relevance: The Supreme Court emphasized overall phonetic and structural similarity from a consumer’s perspective. Clinique relied on this for holistic comparison; Gufic countered that "SKIN" alters the overall impression.
3. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980
   • Context: Distinguished infringement (statutory) from passing off (common law).
   • Relevance: Clinique cited it to argue that close similarity negates the need for further evidence. Gufic used it to assert that broader context (e.g., trade dress) matters in non-identical mark cases.
4. Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142
   • Context: "GLUCOVITA" vs. "GLUVITA."
   • Relevance: The Supreme Court found similarity due to a common idea (glucose/vitamins) and minimal phonetic difference ("CO"). Clinique likened "CLINIQ" to "CLINIQUE"; Gufic argued "SKIN" creates a substantial distinction.
5. Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, (2009) 159 DLT 267
   • Context: "LAL QUILLA" vs. "HARA QUILLA."
   • Relevance: The Delhi High Court protected "QUILLA" as the essential feature. Clinique argued "CLINIQUE" is its core; Gufic countered that "SKINCLINIQ" is a unified mark, not just "CLINIQ."
6. Metropol India (P) Ltd. v. Praveen Industries India (Regd), 1997 PTC (17) 779 (DB)
   • Context: "CLEANZO" vs. "CLEANJO."
   • Relevance: The Delhi High Court found "CLEANJO" infringing due to confusion potential. Clinique cited this for phonetic similarity; Gufic distinguished it, noting "SKIN" alters the mark’s identity.
7. Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618
   • Context: Compared biscuit wrappers with similar designs.
   • Relevance: The Supreme Court emphasized overall similarity over minute differences. Clinique applied this to trade dress; Gufic argued their packaging and pricing differentiate the products.

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Detailed Reasoning and Analysis of Judge

The Division Bench, led by Justice Badar Durrez Ahmed, analyzed the case under Section 29(1), assuming "SKINCLINIQ" as unregistered to focus solely on deceptive similarity:

• Legal Framework: Under Section 29(1), infringement occurs if a mark is identical or deceptively similar to a registered mark, used in a manner likely to be taken as a trademark. Since "CLINIQUE" and "SKINCLINIQ" are not identical, the court assessed deceptive similarity.
• Principles Applied: Drawing from precedents:
  • Marks must be compared holistically, not split into parts (Amritdhara, Corn Products).
  • The perspective is that of a consumer with average intelligence and imperfect recollection (Parle Products).
  • Similarity includes structure, phonetics, and conveyed idea (Corn Products).
• Comparison of Marks:
  • Phonetic Similarity: "CLINIQUE" (KLINECK) and "SKINCLINIQ" (SKIN-KLINIK) differ due to the prefix "SKIN," altering the pronunciation and sound.
  • Structural Similarity: "SKINCLINIQ" is a single word with "SKIN" as an integral part, unlike "CLINIQUE." Splitting "SKINCLINIQ" into "SKIN" and "CLINIQ" (as the Single Judge did) was erroneous; the mark must be viewed as a whole.
  • Visual Similarity: The addition of "SKIN" and distinct trade dress (color, style) differentiate the marks visually.
  • Common Idea: Both suggest treatment/skincare, but this alone does not suffice without structural/phonetic similarity.
• Consumer Perception: A consumer would not confuse "SKINCLINIQ" with "CLINIQUE" due to the prefix "SKIN" and vast price differential (Rs. 245 vs. Rs. 1,200+), targeting different market segments.
• Single Judge’s Error: The Single Judge wrongly dissected "SKINCLINIQ" and compared "CLINIQ" with "CLINIQUE," ignoring the holistic test. The Bench found no prima facie infringement.
• Scope Limitation: The court avoided registration validity (pending rectification) and focused solely on injunction merits, per the parties’ agreement.

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Final Decision

The Division Bench allowed the appeal on July 9, 2010, setting aside the Single Judge’s order granting the injunction (IA No. 15425/2008) and dismissing Gufic’s vacation application (IA No. 217/2009). The injunction was vacated, and parties bore their own costs.

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Law Settled in This Case

1. Holistic Comparison: In assessing deceptive similarity under Section 29(1), trademarks must be compared as a whole, not dissected into components, reinforcing Amritdhara and Corn Products.
2. Consumer Perspective: The test hinges on a consumer of average intelligence and imperfect recollection, not expert analysis (Parle Products).
3. Contextual Factors: While infringement focuses on marks, practical differences (e.g., price, trade dress) can inform the likelihood of confusion, though not decisive alone.
4. Non-Identical Marks: Where marks differ, the infringement test aligns with passing off, requiring a clear likelihood of deception (Ruston & Hornsby).
5. Price Difference Material:The price differential between the two products is so vast that no consumer of products of either the appellant or the respondent would confuse one for the other

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Case Details

• Case Title: Gufic Ltd. Vs Clinique Laboratories
• Date of Order: July 9, 2010
• Case No.: FAO(OS) 251/2009
• Citation:2010 SCC OnLine Del 2322 :(2010) 43 PTC 788
• Name of Court: High Court of Delhi at New Delhi
• Name of Judges: Justice Badar Durrez Ahmed and Justice Veena Birbal

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Kirloskar Diesel Recon Pvt. Ltd. Vs. Kirloskar Proprietary Ltd.

Common field of activity isn’t essential for passing off when a name carries secondary meaning

Introduction:

In the intricate landscape of intellectual property law, few cases encapsulate the tension between heritage and innovation as vividly as Kirloskar Diesel Recon Pvt. Ltd. and Others vs. Kirloskar Proprietary Ltd. and Others. Decided on October 10, 1995, by the Bombay High Court, this dispute pits a venerable industrial dynasty—the Kirloskar Group—against a trio of upstart companies helmed by a former insider, all vying for the right to wield the iconic "Kirloskar" name. This legal showdown, rooted in a passing-off action, explores the boundaries of trademark protection, the relevance of business similarity, and the equitable limits of delay, weaving a narrative that balances corporate identity with public perception. With its blend of historical legacy and modern legal principles, the case stands as a cornerstone in India’s jurisprudence on trade names and goodwill.

Detailed Factual Background:

The story begins in 1888, when Laxmanrao Kashinath Kirloskar and his brother Ramuanna launched a bicycle repair business in Belgaum. By 1910, their operations had relocated to Kundal, later rechristened Kirloskarwadi, a testament to their growing influence. In 1920, the brothers transformed their enterprise into a public limited company, birthing the "Kirloskar Group of Companies." Over decades, this group evolved into a sprawling conglomerate, its name synonymous with quality across diverse sectors—from pumps and engines to financial services. The respondents in this case—Kirloskar Proprietary Ltd., Kirloskar Brothers Ltd., Kirloskar Cummins Ltd., Kirloskar Electric Co. Ltd., Kirloskar Pneumatic Co. Ltd., Kirloskar Leasing and Finance Ltd., and Kirloskar Investments and Finance Ltd.—embodied this legacy. Kirloskar Proprietary Ltd., the first respondent, held registered trademarks and copyrights for "Kirloskar" under the Trade and Merchandise Marks Act, 1958, and the Copyright Act, 1957, licensing these to respondents 2 to 5 and permitting use by respondents 6 and 7. By 1992, the group boasted a turnover of Rs. 625 crores, assets of Rs. 325 crores, and a global reputation reinforced by a 1988 centenary celebration marked by a commemorative postal stamp.

The appellants entered this narrative in 1991. Kirloskar Diesel Recon Pvt. Ltd. (incorporated March 12, 1991), Kirloskar Transport Pvt. Ltd. (January 22, 1991), and Kirloskar Holdings Pvt. Ltd. (April 3, 1991) were promoted by the second appellant, a former president of Kirloskar Cummins Ltd. from 1983 to 1985. Each adopted "Kirloskar" as part of its corporate name, ostensibly to capitalize on the name’s cachet. The respondents caught wind of this on May 28, 1992, via a letter from patent agents about Kirloskar Holdings’ logo registration attempt, prompting further investigation. On August 3, 1992, they issued a cease-and-desist letter, alleging passing off and deception. The appellants rebuffed this, claiming a right to the name, setting the stage for litigation.

Detailed Procedural Background

The respondents filed three civil suits—Nos. 3, 4, and 5 of 1993—in the District Court of Pune, seeking a permanent injunction to bar the appellants from using "Kirloskar" in their corporate names or trading styles to pass off their goods or businesses as those of the respondents. Concurrently, they sought interim injunctions under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908. On June 14, 1994, the III Additional District Judge, Pune, granted these interim reliefs, restraining the appellants pending the suits’ final resolution.The appellants appealed to the Bombay High Court, filing Appeals from Order Nos. 1152, 1153, and 1154 of 1994, each corresponding to one of the suits. Given their shared factual and legal core—differing only in the first appellant per case—the High Court consolidated them for a unified judgment. On October 10, 1995, after extensive arguments, the court delivered its verdict, affirming the lower court’s order.

Issues Involved in the Case:

The case crystallized into several pivotal issues: Did the District Court, Pune, have jurisdiction under Section 105(c) of the Trade and Merchandise Marks Act, 1958, to hear the passing-off suits? Did the appellants’ use of "Kirloskar" constitute passing off, despite differing business fields? Did the respondents’ delay in filing the suits amount to acquiescence, barring relief? Could the appellants claim a bona fide right to use "Kirloskar" under Section 34 as a surname? And did the balance of convenience favor granting or denying the interim injunction?

Detailed Submission of Parties:

The appellants, led by Mr. Kane, mounted a multifaceted defense. They challenged the District Court’s jurisdiction, arguing the respondents lacked a unified cause of action, rendering the suits misjoined. They asserted that their distinct business activities—unlike the respondents’—precluded passing off, as no confusion was plausible among discerning customers. They emphasized that their corporate names were legally allotted under the Companies Act, 1956, unchallenged within the one-year statutory window, and invoked Section 34, claiming the second appellant’s surname justified their use. Delay was a key plank: a 1991 notice to Kirloskar Cummins Ltd.’s board, they argued, gave the respondents constructive knowledge, and their inaction until 1993 signaled acquiescence or waiver. Finally, they contended that the balance of convenience favored them, as an injunction would disrupt their nascent businesses, while the respondents’ established status mitigated any harm.

The respondents, represented by Mr. Tulzapurkar, countered robustly. They defended jurisdiction under Section 105(c), asserting that "Kirloskar" as a trade name fell within the Act’s ambit. They argued that their century-long reputation made "Kirloskar" exclusively theirs, and the appellants’ use misrepresented a connection, likely deceiving the public—common fields notwithstanding. Fraudulent intent wasn’t required, only a likelihood of confusion, which their goodwill substantiated. They dismissed the Section 34 defense, noting it didn’t extend to artificial entities, and denied delay or acquiescence, pointing to prompt action post-discovery in 1992. The balance, they claimed, tilted toward them: their entrenched reputation trumped the appellants’ recent ventures, and public interest demanded protection from deception.

The appellants leaned on an array of precedents:

Alkem Laboratories Pvt. Ltd. vs. Alchem (India) Ltd., Notice of Motion No. 3028 of 1988 in Suit No. 3198 of 1988 (Bombay High Court, November 27, 1990, Srikrishna, J.): Dissimilar products (pharmaceuticals vs. ferric alum) and no secondary meaning in "Alkem" denied an injunction, supporting distinct activities.Indian Aluminium Co. Ltd. vs. Indals (Agencies) Pvt. Ltd., Notice of Motion No. 7 of 1990 in Suit No. 3648 of 1989 (Bombay High Court, November 25, 1991, Jhunjhunuwala, J.): Bona fide adoption of "Indals" with no confusion risk prevailed, aligning with the appellants’ intent claim.Aktiebolaget Volvo vs. Volvo Steels Ltd., Notice of Motion No. 950 of 1995 in Suit No. 1055 of 1955 (Bombay High Court, April 28, 1995, Jhunjhunuwala, J.): Distinct fields (cars vs. steel) and minimal plaintiff reputation in India negated passing off, echoing dissimilarity.S.M. Chemicals & Electronics Ltd. vs. Symtronics, Notice of Motion No. 38 of 1975 in Suit No. 25 of 1975 (Bombay High Court, August 7, 1975, Rege, J.): Different goods and no confusion risk denied relief, reinforcing the appellants’ argument.The Pianolist Company Ltd., (1906) 23 RPC 774: UK allowance of surname use absent fraud bolstered Section 34.R.T. Engineering & Electronics Co., AIR 1972 Bombay 157: Literate buyers reduced confusion, per Bombay High Court, aiding customer discernment.Stringfellow vs. McCain Foods (GB) Ltd., (1984) RPC 501: UK ruling on nightclubs vs. fries supported distinct fields.Victory Transport Co. Pvt. Ltd. vs. District Judge, Ghaziabad: Allahabad High Court’s tests of secondary meaning and confusion likelihood favored the appellants.Sony Kabushiki Kaisha vs. Shamrao Maskar: Bombay High Court found electronics vs. nail polish unconfusing, per dissimilarity.John Taylor Peddie, 61 RPC 31: UK surname use upheld, reinforcing Section 34.Parker-Knoll Ltd. vs. Knoll International Britain (Furniture & Textiles) Ltd., 1961 RPC 346: UK confusion alone didn’t suffice, cited for limits.urton vs. Turton, (1889) 42 Ch D 128: Honest surname use permitted, per UK court, for bona fides.Parker-Knoll Ltd. vs. Knoll International Ltd., 1962 RPC 265: House of Lords allowed some confusion, but appellants focused on its constraints.Boswell-Wilkie Circus vs. Brian Boswell Circus, (1986) FSR 479: South African distinct contexts reduced confusion.County Sound Plc vs. Ocean Sound Ltd., (1991) FSR 367: UK radio services lacked confusion, per dissimilarity.Harold Lee (Mantles) Ltd. vs. Harold Harley (Fashions) Ltd., 71 RPC 57: Honest use prevailed, cited for intent.K.G. Khosla Compressors vs. Khosla Extraktions Ltd., AIR 1986 Delhi 181: Delhi’s name protection was distinguished.Poddar Tyres Ltd. vs. Bedrock Sales Corporation: Bombay’s injunction was downplayed for differing facts.Optrex India Ltd. vs. Optrex Ltd., Appeal No. 381 of 1989 (Bombay High Court, November 15-17, 1989, Desai and Kenia, JJ.): Distinct fields denied relief.

The respondents countered with:

Azim Gadighar vs. Abdul Aziz: Bombay High Court upheld jurisdiction for passing off, per Section 105(c).K.G. Khosla Compressors Ltd. vs. Khosla Extraktions Ltd., AIR 1986 Delhi 181: Delhi protected names beyond goods.Albion Motor Car Co. Ltd. vs. Albion Carriage and Motor Body Works Ltd., 34 RPC 257: UK confusion in related fields justified relief.Baume & Co. Ltd. vs. A.H. Moore Ltd., (1958) 2 All ER 113: UK restrained honest use causing deception.Bajaj Electricals Ltd. vs. Metals & Allied Products, Bombay: Bombay relied on Parker-Knoll for injunctions.Sturtevant Engineering Co. Ltd. vs. Sturtevant Mills Co. of USA Ltd., (1936) 3 All ER 137: UK confusion risk sufficed.John Haig & Co. Ltd. vs. John D.D. Haig Ltd., (1957) 16 RPC 381: UK reputation trumped honest use.Fine Cotton Spinners vs. Harwood Cash & Co. Ltd., 24 RPC 533: Pre-Parker-Knoll goodwill transfer was distinguished.Kingston, Miller & Co. Ltd. vs. Thomas Kingston & Co. Ltd., (1912) 1 Ch D 575: UK confusion risk warranted relief.Parker-Knoll Ltd. vs. Knoll International Ltd., 1962 RPC 265: House of Lords prioritized fair trading.Boswell-Wilkie Circus vs. Brian Boswell Circus, (1985) FSR 434: South African alignment with Parker-Knoll. Hindustan Pencils Pvt. Ltd. vs. India Stationery Products Co.: Delhi favored injunctions over delay for public interest.Astra-IDL Ltd. vs. T.T.K. Pharma Ltd.: Bombay upheld relief despite delay if strong prima facie.Schering Corporation vs. Kilitch Co. (Pharma) Pvt. Ltd., 1994 (1) IPLR 1: Bombay ruled time lapse isn’t laches.Daimler Benz Aktiegesellschaft vs. Hybo Hindustan: Delhi protected household names.Bhandari Homeopathic Laboratories vs. L.R. Bhandari, 1976 Tax LR 1382 (Delhi): Companies lacked surname defense.North Cheshire and Manchester Brewery Co. Ltd. vs. Manchester Brewery Co. Ltd., (1899) AC 83: House of Lords restrained deceptive names.Ewing vs. Buttercup Margarine Co. Ltd., (1917) 2 Ch 1: UK confusion risk sufficed.Sarabhai International Ltd. vs. Sara Exports International, AIR 1988 Delhi 134: Delhi extended name protection.Saville Perfumery Ltd. vs. June Perfect Ltd., 58 RPC 147: UK likelihood of confusion sufficed.Wright, Layman & Umney Ltd. vs. Wright, 66 RPC 149: UK reputation protection was key.British Bata Shoe Co. Ltd. vs. Czechoslovak Bata Co. Ltd., 64 RPC 72: UK upheld interlocutory relief.Sheraton Corporation of America vs. Sheraton Motels Ltd., (1964) RPC 202: UK favored early injunctions. Poddar Tyres Ltd. vs. Bedrock Sales Corporation: Bombay reinforced name protection.Power Control Appliances vs. Sumeet Machines Pvt. Ltd., 1994 AIR SCW 2760: Supreme Court required active acquiescence.

Detailed Reasoning and Analysis of Judge:

The Bombay High Court’s  delivered a comprehensive analysis. On jurisdiction, the court affirmed Section 105(c)’s broad scope, interpreting "trade mark" to include trade names like "Kirloskar,".Delay was swiftly dispatched: the 1½-year gap from the 1991 notice to the 1993 suits was deemed inconsequential. Citing Astra-IDL, Hindustan Pencils, Schering, and Power Control Appliances, the judge held that delay didn’t imply acquiescence absent intent to license, especially with a strong prima facie case and public interest at stake. The appellants’ insider knowledge undermined estoppel claims.The passing-off crux saw the judge reject the appellants’ common-field argument. Tracing its evolution from McCulloch (65 RPC 58) to its debunking in Henderson (1969 RPC 218) and Marage Studies (1991 FSR 145), the court emphasized "Kirloskar"’s household status and the respondents’ diverse portfolio—overlapping with appellants’ objects. Cases like Albion and Daimler Benz supported a focus on public confusion, not activity parity. The appellants’ use risked goodwill erosion, per Ewing and North Cheshire.Section 34’s bona fide use defense collapsed: Parker-Knoll (1962 RPC 265), Bhandari, and Sarabhai clarified that artificial entities lack surname rights, and the second appellant’s prior role negated good faith. Confusion likelihood, not intent, drove relief, per Saville Perfumery and Baume.Balance of convenience tilted decisively: the respondents’ 50-year legacy, vast operations, and reputation dwarfed the appellants’ recent, unproven ventures. Injunctions preserved the status quo without halting the appellants’ businesses, only their use of "Kirloskar," aligning with Poddar Tyres and Sheraton.

Final Decision:

The Bombay High Court dismissed the appeals, upheld the interim injunctions with costs, and denied a stay, expediting certified copies.

Law Settled in This Case:

The judgment established that: Section 105(c) governs passing off via trade names; common field of activity isn’t essential for passing off when a name carries secondary meaning; delay doesn’t preclude injunctions if the case is strong and public interest demands protection; Section 34 doesn’t shield artificial entities’ name use without bona fides; and interlocutory relief prioritizes goodwill over mere inconvenience.

Case Title: Kirloskar Diesel Recon Pvt. Ltd. Vs Kirloskar Proprietary Ltd. 

Date of Order: October 10, 1995

Case No.: Appeals from Order Nos. 1152, 1153, and 1154 of 1994

Neutral Citation: AIR 1996 BOM 149; 1996 (2) BOMCR 642; (1996) 98 BOMLR 972

Name of Court: Bombay High Court

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Madhu Food Products Vs. Surya Processed Food Pvt. Ltd.

Minor variations in trade dress or font size do not absolve a party from infringement if the overall commercial impression is deceptive

Introduction:

The case of Madhu Food Products v. Surya Processed Food Pvt. Ltd. revolves around trademark infringement and passing off concerning confectionery products. The dispute involves the respondent, Surya Processed Food Pvt. Ltd., which markets its products under the trademark HUNK, and the appellant, Madhu Food Products, which sells similar products under the mark HUNT. The core issue was whether the appellant’s use of the mark HUNT and its packaging was deceptively similar to the respondent’s trademark HUNK and trade dress, thereby misleading consumers and passing off its products as that of the respondent.

The Respondent’s Case:

Surya Processed Food Pvt. Ltd. (the respondent) is a company incorporated under the Companies Act, 1956, engaged in the manufacturing and marketing of food items such as biscuits, wafers, chocolates, cookies, and cakes. The respondent claims to have coined the trademark HUNK in 2007 and applied for its registration on December 28, 2007, in Class 30 under a "proposed to be used" basis.The respondent commenced commercial usage of the mark HUNK in 2018 and claims continuous use since then.The respondent invested significantly in advertising, amounting to ₹74.71 crores over five years, and achieved a turnover of ₹55.76 crores during the financial year 2022-23.The respondent alleged that the appellant was marketing its chocolate and caramel-coated wafer bars under the deceptively similar mark HUNT with a packaging that closely resembled the trade dress of HUNK.

The Appellant’s Case:Madhu Food Products (the appellant), a registered partnership firm, claimed to be engaged in producing world-class confectionery.The appellant stated that it adopted the mark CHOCO HUNT in 2018 for chocolates, confectionaries, and wafers.The mark CHOCO HUNT was registered under Class 30 with a proposed-to-be-used claim filed on October 27, 2018.The appellant argued that it used its mark honestly and denied copying the respondent’s packaging or trade dress.It claimed that its house brand was NEO, while the respondent used the brand PRIYA GOLD, thus making the products distinguishable.

Procedural Background:

The respondent filed CS(COMM) 195/2023 against the appellant in the Commercial Court, alleging trademark infringement, copyright infringement, and passing off.The respondent also filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking an interim injunction to restrain the appellant from using the trademark HUNT or any deceptively similar mark.The Commercial Court passed an interim order in favor of the respondent, granting the injunction and appointing a Local Commissioner to seize and prepare an inventory of the infringing goods.The appellant, aggrieved by the decision, filed an appeal (FAO (COMM) 157/2024) before the Delhi High Court, challenging the Commercial Court's order dated June 5, 2024.

Issues Involved:

Whether the appellant’s use of the mark HUNT was deceptively similar to the respondent’s mark HUNK and likely to cause confusion among consumers?

Appellant’s Submissions:

The appellant argued that it was the legitimate owner of the registered trademark CHOCO HUNT and that its mark was visually and phonetically different from HUNK.It contended that the Commercial Court erred in not considering that the respondent had suppressed material facts, such as the existence of the registered mark CHOCO HUNT.The appellant claimed that the similarity in packaging was merely due to the use of the color brown, which was common in the confectionery industry and could not be monopolized.It further argued that its use of the word CHOCO in small font was irrelevant and did not amount to infringement.

Respondent’s Submissions:

The respondent contended that it was the prior user of the mark HUNK and had extensively advertised and promoted the same.It argued that the appellant intentionally reduced the visibility of the word CHOCO in CHOCO HUNT, making HUNT the prominent mark, which created a likelihood of confusion.The respondent presented material, including advertisements featuring celebrities, to demonstrate the goodwill associated with HUNK.The respondent also submitted physical samples of both products, highlighting the similarity in packaging, trade dress, and overall commercial impression.

Discussion on Judgments Cited:

Wander Ltd. & Anr. v. Antox India (P) Ltd.: 1990 Supp SCC 727:The High Court referred to the principles laid down in this case to assess whether the interim injunction should be interfered with.The Supreme Court in Wander Ltd. held that appellate courts should not lightly interfere with discretionary orders passed by lower courts unless they are perverse or arbitrary.Applying this principle, the Delhi High Court held that the Commercial Court had correctly applied the law, and there was no reason to interfere with its discretion.

Reasoning and Analysis of the Judges:

Prima Facie Similarity:The Delhi High Court observed that the competing products' packaging, trade dress, and color scheme were strikingly similar.The word CHOCO in the appellant’s mark was displayed in an insignificant font, while HUNT was prominently featured, creating an overall impression of similarity with the respondent’s HUNK.Prior User Advantage:The court noted that the respondent was the prior user of the mark HUNK since July 2018, supported by invoices, while the appellant filed for its mark CHOCO HUNT in October 2018, indicating subsequent use.Misleading Trade Dress:The court held that the similarity in trade dress, including packaging color and design, created a likelihood of confusion, strengthening the case of passing off.No Suppression of Facts:The court rejected the appellant’s claim of suppression of facts, stating that the respondent's failure to search for CHOCO HUNT was not misleading or fraudulent. The court found no reason to disbelieve the respondent’s claim of conducting a trademark search.

Final Decision:The Delhi High Court dismissed the appellant's appeal, upholding the Commercial Court's injunction order. The appellant was ordered to pay ₹50,000 in costs.

Law Settled in the Case: The judgment reinforces the principle that prior use of a trademark holds significant weight in determining infringement disputes.It clarifies that minor variations in trade dress or font size do not absolve a party from infringement if the overall commercial impression is deceptive.It reiterates that appellate courts should not interfere with the discretion of lower courts unless the orders are arbitrary or capricious.

Case Title: Madhu Food Products Vs. Surya Processed Food Pvt. Ltd.

Date of Order: August 8, 2024

Case No.: FAO (COMM) 157/2024

Neutral Citation: 2024:DHC:6118-DB

Court: Delhi High Court

Judges: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Sachin Datta

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

OFB Tech Private Limited & Ors. v. Slowform Media Pvt. Ltd. & Ors.

Hyperlinked Harm: Navigating Defamation in the Digital Age"

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Factual Background

The plaintiffs, comprising individuals and companies (OFB Tech Private Limited and Oxyzo Financial Services Ltd.), filed a defamation suit against Slowform Media Pvt. Ltd. and its associates over an article published on 17.05.2023 titled "the work culture of OfBusiness does not like to talk about." This article, alleging a toxic work culture at OFB, was hyperlinked in subsequent articles, including one on 07.10.2024. The plaintiffs sought its removal, claiming reputational damage, while the defendants defended it as truthful journalism.

Procedural Background

The suit (CS(OS) 944/2024) was filed after an earlier suit (CS(OS) 825/2024) addressed the 07.10.2024 article, which was injuncted on 15.10.2024. In the present case, summons were issued on 29.11.2024, followed by applications: I.A. 2506/2025 (Order VII Rule 11 CPC) by defendants to reject the plaint, and I.A. 46557/2024 (Order XXXIX Rule 1 & 2 CPC) by plaintiffs for an injunction. Judgment was reserved on 20.02.2025 and pronounced on 24.03.2025.

Provisions of Law Referred and Their Context

• Order VII Rule 11 CPC: Defendants sought plaint rejection, arguing the suit was barred by limitation (filed beyond one year from 17.05.2023) and Order II Rule 2 (failure to raise in earlier suit).
• Order XXXIX Rule 1 & 2 CPC: Plaintiffs sought an interim injunction to restrain publication, citing irreparable harm.
• Order II Rule 2 CPC: Examined whether the current suit was barred due to overlap with the earlier suit.
• Article 19, Constitution of India: Defendants invoked freedom of speech to protect source anonymity and journalistic rights.

Judgments Referred with Complete Citation and Context

1. Dalip Singh v. Mehar Singh Rathee, (2004) 7 SCC 650: Cited by plaintiffs to argue distinct causes of action in separate suits.
2. K.A. Paul v. K. Natwar Singh & Ors., 2009 SCC OnLine Del 2382: Supported plaintiffs’ claim against misjoinder of causes.
3. Rathnavathi v. Kavita Ganashamdas, (2015) 5 SCC 223: Reinforced plaintiffs’ stance on separate remedies.
4. Pramod Kumar v. Zalak Singh, (2019) 6 SCC 621: Upheld plaintiffs’ right to file multiple suits.
5. Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co., (1997) 1 SCC 99: Plaintiffs argued continuing cause of action via hyperlinking.
6. Dahiben v. Arvindbhai Kalyanji Bhanusali, (2020) 7 SCC 366: Defined grounds for plaint rejection under Order VII Rule 11.
7. Sopan Sukhdeo Sable v. Asstt. Charity Commr., (2004) 3 SCC 137: Emphasized curbing frivolous litigation.
8. Hardesh Ores (P) Ltd. v. Hede & Co., (2007) 5 SCC 614: Stressed holistic plaint reading.
9. Azhar Hussain v. Rajiv Gandhi, 1986 Supp SCC 315: Highlighted preventing abortive litigation.
10. Saleem Bhai v. State of Maharashtra, (2003) 1 SCC 557: Allowed Order VII Rule 11 exercise at any stage.
11. Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., 2022 SCC OnLine SC 1068: Affirmed suo moto power under Order VII Rule 11.
12. Bloomberg Television v. Zee Entertainment, 2024 SCC OnLine SC 426: Cautioned against pre-trial injunctions in defamation.
13. Bonnard v. Perryman, [1891] 2 Ch 269: Established high threshold for defamation injunctions.
14. Tata Sons Ltd. v. Greenpeace International, 2011 SCC OnLine Del 466: Rejected injunction absent clear falsity.
15. Hazrat Surat Shah Urdu Education Society v. Abdul Saheb, JT 1988 (4) SC 232: Set three-part test for injunctions.
16. Dalpat Kumar v. Prahlad Singh, (1992) 1 SCC 719: Clarified discretionary nature of injunctions.
17. Dr. Rashmi Saluja v. Religare Enterprises, 2025: DHC: 701: Stressed promptness for injunctions.
18. Coulson v. Coulson, 93 E.R. 1074: Highlighted delicacy of defamation injunctions.
19. Church of Scientology v. Readers Digest, [1980] 1 NSWLR 344: Advocated caution in public interest cases.
20. Lodha Developers Ltd. v. Krishnaraj Rao, 2019 SCC OnLine Bom 13120: Emphasized tolerating online opinions.
21. Khushwant Singh v. Maneka Gandhi, 2001 SCC OnLine Del 1030: Upheld press freedom over preemptive restraint.

Reasoning of Court

• Order VII Rule 11 Application: The Court rejected the defendants’ plea, finding the suit not barred by Order II Rule 2 due to distinct causes of action and a fresh cause via hyperlinking on 07.10.2024, within the one-year limitation period.
• Hyperlinking as Republication: The Court held hyperlinking could constitute republication, giving a fresh cause of action, aligning with evolving digital jurisprudence.
• Order XXXIX Rule 1 & 2 Application: The Court denied the injunction, finding the defendants’ defences of truth and fair comment plausible, supported by evidence (e.g., WhatsApp chats, LinkedIn posts). The plaintiffs’ delay (over a year) undermined urgency, and monetary damages were deemed sufficient, balancing free speech and reputation.

Decision

• I.A. 2506/2025 (Order VII Rule 11) dismissed; plaint upheld.
• I.A. 46557/2024 (Order XXXIX Rule 1 & 2) rejected; no injunction granted.
• Case listed for further proceedings on 07.05.2025.

Case Details

• Case Title: OFB Tech Private Limited & Ors. v. Slowform Media Pvt. Ltd. & Ors.
• Date of Order: 24 March 2025
• Case Number: CS(OS) 944/2024
• Name of Court: High Court of Delhi
• Name of Hon’ble Judge: Justice Purushaindra Kumar Kaurav

Bridgestone Corporation Vs. Merlin Rubber

• The plaintiff, Bridgestone Corporation, sought a permanent injunction against M/S. Merlin Rubber for trademark infringement, passing off, and related reliefs.
• The plaintiff's trademark, 'BRIDGESTONE', is registered for rubber tires and tubes in India and over 130 countries.
• The defendant was found to be selling butyl tubes under the mark 'BRIMESTONE', which is deceptively similar to the plaintiff's mark.

Case Set Up by the Plaintiff

• The plaintiff, established in 1931, is a global manufacturer and seller of tires and rubber products under the 'BRIDGESTONE' trademark.
• The plaintiff operates websites providing information about its business and products.
• The 'BRIDGESTONE' trademark is derived from the founder’s surname and has been registered in India and worldwide.

Proceedings in the Suit

• The Court issued an ex parte ad interim injunction against the defendant and appointed a Local Commissioner for search and seizure.
• Mediation between the parties was unsuccessful.
• The defendant's right to file a written statement was closed, and the defendant was proceeded against ex-parte after failing to appear.

Analysis and Findings

• The plaintiff proved ownership of the 'BRIDGESTONE' trademark, and the defendant was found to be using the infringing mark 'BRIMESTONE' for similar goods.
• The defendant’s mark 'BRIMESTONE' is visually and phonetically similar to the plaintiff’s 'BRIDGESTONE'.
• The defendant has taken unfair advantage of the reputation and goodwill of the plaintiff's trademark.

Relief

• A decree of permanent injunction was passed against the defendant.
• A decree of damages of Rs. 34,41,240/- was passed in favor of the plaintiff.
• The plaintiff shall appear before the Taxation Officer to determine the actual costs incurred in the litigation.

Case Title:Bridgestone Corporation Vs. Merlin Rubber

Date of Order: 25th March 2025

Case Number: CS(COMM) 254/2023

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Applause Entertainment Private Limited Vs. WWW.9XMOVIES.COM.TW

Case Overview

• Applause Entertainment Private Limited filed a suit against several websites and ISPs for copyright infringement related to their web series 'UNDEKHI'.
• The plaintiff sought a permanent injunction to restrain the defendants from infringing their copyright.
• The court is considering a summary judgment application by the plaintiff.

Plaintiff's Case

• Applause Entertainment is a producer of audio-visual content, including the web series 'UNDEKHI'.
• They hold the copyright to 'UNDEKHI,' particularly the third season released on SonyLIV.
• The plaintiff granted an exclusive license to SonyLIV to exploit the series.

Defendants

• Defendants 1, 2, and 14-19 are websites/URLs involved in unauthorized broadcasting of copyrighted content.
• Defendants 3-11 are ISPs impleaded to block access to the infringing websites.
• Defendants 12 and 13 are government bodies (DoT and MEITY) impleaded to issue blocking notices to the ISPs.

Proceedings

• The plaintiff discovered unauthorized distribution of 'UNDEKHI' shortly after its release.
• An ex-parte ad interim injunction was previously granted, directing ISPs to block the infringing websites.
• Some defendants were proceeded against ex parte due to non-appearance.

Analysis and Findings

• The court found that the defendants' websites are rogue websites engaged in copyright infringement.
• The defendants are making the plaintiff's series available without authorization.
• The court referenced previous judgments and the concept of 'Dynamic Injunction' to address the emergence of new infringing websites.

Relief

• The suit was decreed in favor of the plaintiff against defendants 1, 2, and 14-19, granting the injunction sought.
• The plaintiff is permitted to implead mirror/redirect websites, subject to the same decree.
• Defendants 12 and 13 (DoT and MEITY) are directed to issue notifications to ISPs to block access to the infringing websites.



Case Title: Applause Entertainment Private Limited Vs. WWW.9XMOVIES.COM.TW 
Date of Order: 19th March 2025
Case Number: CS(COMM) 418/2024
Neutral Citation: 2025:DHC:1994
Name of Court: High Court of Delhi 
Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal