Steelcase Inc. Vs. Mr. K.J. Bhuta

Case Title: Steelcase Inc. Vs. Mr. K.J. Bhuta and Others Date of Order: May 28, 2025 Case Number: CS(COMM) 1180/2018 Neutral Citation: 2025:DHC:4521 Court: High Court of Delhi Judge: Hon’ble Mr. Justice Saurabh Banerjee

Facts:

Steelcase Inc. filed a suit for infringement of its registered trademark "STEELCASE" against Mr. K.J. Bhuta, who operates as "M/s. Steel Case India Private Limited." The defendant claimed prior use of the trade name since 1981 and contested the plaintiff’s rights based on abandoned applications and the descriptive nature of the mark.

Decision:

The Court dismissed the defendant's application under Section 124(1)(b)(ii) of the Trade Marks Act to specify that the trademark "STEELCASE" was invalid or descriptive. It found that the defendant failed to demonstrate a prima facie case of invalidity or that the plaintiff's mark was merely descriptive. The Court clarified that the trademark was distinctive due to continuous use by the plaintiff and that mere prior use by defendant did not establish prior rights sufficient to oppose the registration.

Law Settled:

• The Court clarified the scope of Section 124(1)(b)(ii) of the Trade Marks Act regarding prima facie tenability of invalidity claims.
• Registration and ongoing use of a mark over time can establish distinctiveness.
• Abandoned applications or prior use alone do not necessarily invalidate a trademark absent proof of descriptiveness or prior rights.

ITC Limited Vs. The Controller of Patents, Designs and Trademark

Case Title:ITC Limited Vs. The Controller of Patents, Designs and Trademark:Court:High Court at Calcutta:Case No.:IPDPTA/13/2024:Date of Order:20 May 2025:Judge:Hon’ble Mr. Justice Ravi Krishan Kapur

Facts:

ITC Limited filed an appeal against the rejection of its patent application titled “A Heater Assembly to Generate Aerosol”. The Controller of Patents rejected the application under Section 3(b) of the Patents Act, 1970, stating that the invention was prejudicial to human life, health, public order, and morality. The invention involved a heater for aerosol-generating articles, potentially used with or without tobacco.

Legal Issue:

Whether the invention is hit by Section 3(b) of the Patents Act, i.e., whether its primary or intended use or commercial exploitation is contrary to public order or morality or causes serious prejudice to human or environmental health.

Reasoning:

The Court held that the Controller had fundamentally misunderstood the nature of the invention and failed to provide any cogent reasons or scientific evidence to justify the rejection. The invention was not inherently linked to tobacco use and could be applied in other contexts. Moreover, the Controller relied on documents not supplied to the applicant, violating principles of natural justice. The invocation of Article 47 of the Constitution and Section 83 of the Patents Act was held to be irrelevant. The Court emphasized that patent rights are exclusionary and do not confer a right to use or sell an invention, and that moral or public health concerns require evidence-based reasoning.

Final Decision:

The impugned order rejecting the patent was set aside. The matter was remanded back to the Controller for fresh consideration, with a direction to give the appellant a proper hearing and adjudicate the matter within three months.

Issues Discussed: Interpretation and scope of Section 3(b) of the Patents Act. Principles of natural justice.Nature of patent rights as exclusionary.Improper reliance on extraneous documents and constitutional provisions.Misapplication of public order and morality clause without evidence.

Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents

Introduction:This case revolves around a critical interpretation of the jurisdictional scope of Section 72 of the Copyright Act, 1957, as amended by the 2021 legislative changes. The dispute arose regarding whether the High Court of Jharkhand at Ranchi had jurisdiction to hear an appeal against the order of the Deputy Registrar of Copyrights, whose office is located in New Delhi. 

The matter delves into the territorial jurisdiction, the forum of appeal, and the applicable procedure, especially in light of the amended statutory framework post-2021. The ruling provides a reasoned approach to jurisdictional limitations and the legislative intent of decentralizing appellate forums for copyright-related disputes.

Detailed Factual Background: Samriddhi Rice Mill Private Limited, the appellant, is a company engaged in business within the state of Jharkhand. It filed an appeal under Section 72(2) of the Copyright Act, 1957, challenging the order passed by the Deputy Registrar of Copyrights situated in New Delhi. The impugned order adversely affected the copyright-related interests of the appellant, and thus, they approached the High Court of Jharkhand for redressal.

The dispute took a jurisdictional turn when the respondent, particularly Respondent No. 6, raised objections asserting that only the Delhi High Court could entertain such appeals, as the office of the authority passing the order was located there. The appellant, on the other hand, contended that both parties, including Respondent No. 6, carried out business operations within Jharkhand, and thus the Jharkhand High Court had jurisdiction under the amended provisions of Section 72.

Detailed Procedural Background:The appeal was registered as Misc. Appeal No. 316 of 2024 before the High Court of Jharkhand. The matter came before court for hearing on the issue of maintainability, as preliminary objections were raised by the respondents. Extensive arguments were presented concerning the interpretation of Section 72 of the Copyright Act as amended in 2021, particularly the omission of territorial restrictions seen in the earlier version of the law.

The respondents relied on prior judgments and statutory interpretations to assert that jurisdiction solely vests with the Delhi High Court, whereas the appellants referred to their business operations within Jharkhand as sufficient to establish territorial jurisdiction.

Issues Involved in the Case:The case involved two principal legal issues. First, whether the High Court of Jharkhand had the territorial jurisdiction to entertain an appeal under Section 72 of the Copyright Act, 1957, after its 2021 amendment! Second, whether such appeals are mandatorily required to be heard by a Division Bench or whether a Single Judge is competent to hear the matter at the initial stage? 

Detailed Submission of Parties:The  Respondent No. 6 submitted that as the order under challenge was passed by the Deputy Registrar of Copyrights whose office is situated at New Delhi, only the Delhi High Court possessed territorial jurisdiction. He relied upon the case of Ambica Industries Vs. Commissioner of Central Excise, (2007) 6 SCC 769, particularly paragraphs 13 and 38, to argue against forum shopping and the dangers of conflicting jurisdictional interpretations among different High Courts. He further contended that the amendment to Section 72 should not be interpreted to override the requirement of centralised jurisdiction where the authority resides.

Respondent No. 6 further argued that under Jharkhand High Court Rules, 2001, Rule 384 mandates that appeals under Section 72 of the Copyright Act should be heard by a Division Bench, and therefore, the appeal was not maintainable before a Single Judge.

The appellant  rebutted these submissions by asserting that post the 2021 amendment to the Copyright Act, Section 72 allows appeals to the "High Court" without restricting it to the jurisdiction of the Delhi High Court. He cited Sumitra Nandan Gupta v. Copyright Board, 1970 SCC OnLine Del 103, to argue that an appeal can be maintained where the appellant resides or conducts business. 

He also referred to Calcutta Gujarati Education Society v. Regional Provident Fund Commissioner, (2020) 19 SCC 380, to support the proposition that territorial jurisdiction can lie where the cause of action arises and where the affected party resides or operates.

On the issue of Single Judge vs. Division Bench, it was contended that under amended Section 72(2), an appeal is to be heard by a Single Judge, who may refer it to a Bench if deemed appropriate. He distinguished the Jharkhand High Court Rules, 2001, by noting that these rules predate the statutory amendment and therefore cannot override legislative provisions.

Detailed Discussion on Judgments Cited:

The key judgment relied upon by the respondent was Ambica Industries v. Commissioner of Central Excise, (2007) 6 SCC 769. In that case, the Supreme Court addressed the issue of forum shopping and stressed that jurisdiction cannot be extended arbitrarily to High Courts based merely on the location of tribunals or appellate authorities. The judgment emphasized consistency in judicial decisions and the risk of legal uncertainty if multiple High Courts entertain similar matters leading to divergent views.

The appellant countered this reliance by referring to Calcutta Gujarati Education Society v. Regional Provident Fund Commissioner, (2020) 19 SCC 380, where the Supreme Court distinguished Ambica Industries by affirming the territorial jurisdiction of the Calcutta High Court even though the tribunal was based elsewhere. It held that the place of original cause of action remains a relevant consideration for establishing jurisdiction under Articles 226 and 227.

In Sumitra Nandan Gupta v. Copyright Board, 1970 SCC OnLine Del 103, the Delhi High Court acknowledged that multiple High Courts can have jurisdiction based on the residence and business of the parties, and that the existence of jurisdiction in one court does not negate it in another, provided statutory conditions are met.

Detailed Reasoning and Analysis of Judge:Justice Sanjay Kumar Dwivedi began by analyzing both the unamended and amended texts of Section 72 of the Copyright Act. The earlier provision explicitly granted jurisdiction to the High Court within whose jurisdiction the appellant resided or carried on business. The 2021 amendment simplified this provision, stating that an appeal may lie to “the High Court,” without incorporating any restrictive territorial clause.

The judge observed that this change signaled a legislative intention to decentralize the appeal process, enabling High Courts to hear cases where parties reside or operate, thereby reducing dependency on the Delhi High Court. The Judge reasoned that if the legislature intended exclusive jurisdiction for the Delhi High Court, such language would have been expressly provided in the amended statute.

He further held that the presence of both parties in Jharkhand, along with their business operations within the State, clearly vested jurisdiction with the Jharkhand High Court. The judge emphasized that jurisdiction is determined not just by the location of the authority passing the order but also by where the cause of action arises and where the parties reside or carry on business.

Regarding the question of whether a Single Judge could hear the matter, the Court interpreted Section 72(2) to mean that the appeal is to be heard by a Single Judge unless he deems it appropriate to refer the matter to a Division Bench. The Judge clarified that the High Court Rules cannot override a statutory provision, and the discretion vested in the Single Judge under the proviso of Section 72(2) remains paramount.

The Court also cited Rajnish Kumar Rai v. Union of India, (2023) 14 SCC 782, to affirm that a High Court need not await decisions in pending references before other benches and must decide based on the law existing at the time of hearing.

Final Decision:The High Court of Jharkhand held that it has territorial jurisdiction to hear the appeal under Section 72 of the Copyright Act, 1957. The preliminary objection regarding jurisdiction raised by Respondent No. 6 was rejected. The appeal was held to be maintainable before the Single Judge, with the option of reference to Division Bench if the judge so decides during the course of hearing on merits.

Law Settled in this Case:This case establishes that post the 2021 amendment of Section 72 of the Copyright Act, High Courts , other than Delhi can exercise jurisdiction over appeals, provided the parties conduct business or reside within their territorial limits. It also affirms that such appeals are maintainable before a Single Judge, who retains discretion to refer the matter to a Division Bench. The ruling further clarifies that procedural High Court Rules cannot override substantive statutory amendments and that the law in force at the time of hearing governs the court's adjudicatory authority.

Case Title: Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents

Date of Order: 30th April 2025

Case No.: Misc. Appeal No. 316 of 2024

Court: High Court of Jharkhand, Ranchi

Judge: Hon’ble Mr. Justice Sanjay Kumar Dwivedi

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

Hals Foods Kitchen Private Limited VS. Pithiya Jitendrakumar

Introduction:This case arose from an appeal filed under Order 43 of the Code of Civil Procedure, challenging the grant of an interim injunction by the learned 10th Additional District and Sessions Judge, Ahmedabad (Rural). The original suit involved allegations of infringement of trademark and copyright concerning the mark and artistic label "TAAM JHAAM". The legal conflict centered on competing claims of prior use, authorship of artwork, and an alleged attempt to misappropriate an artistic and brand identity. The High Court of Gujarat was called upon to decide whether the interim injunction granted to the plaintiff/respondent was proper and justified in law.

Factual Background:The respondent-plaintiff filed Trade Mark Civil Suit No. 17 of 2022 asserting his rights over the mark "TAAM JHAAM", which was described as a unique artwork/label used in connection with restaurant services. The plaintiff claimed to be the creator and prior adopter of the said mark, and supported his claim with documents such as a deed of assignment from an artist, invoices related to logo design, menu card printing, and T-shirts bearing the mark—all allegedly created in mid-2022.

The defendant-appellant was the proprietor of a company that operated restaurants under various brand names including "Ghee Gud", "Octant Pizza", and allegedly, "TAAM JHAAM". The plaintiff alleged that despite knowing the plaintiff's prior use, the defendant was attempting to commercially exploit the "TAAM JHAAM" label and had even begun using it in various locations. This led the plaintiff to file the suit seeking permanent injunction, damages, and other reliefs.

Procedural Background:Upon institution of the suit, the plaintiff filed an injunction application under Exh. 5 seeking to restrain the defendant from using the disputed label/artwork. In response, the defendant filed a counterclaim along with a separate injunction application under Exh. 20, asserting his own prior rights and challenging the plaintiff’s assertions.

The learned District Court heard both applications together and passed an order dated 29.05.2024 granting interim injunction in favour of the plaintiff (allowing Exh. 5) while rejecting the defendant’s counterclaim for injunction (under Exh. 20). Aggrieved by this, the defendant filed an appeal before the High Court of Gujarat limited to challenging the grant of interim injunction.

Issues Involved in the Case:The central issue was whether the District Court was justified in granting interim relief in favour of the plaintiff based on a prima facie case of copyright infringement and the likelihood of passing off?The corollary issues included whether the plaintiff was indeed the prior user of the mark, whether the assignment deed was genuine, whether the label/artwork qualified for protection under the Copyright Act, and whether the defendant’s documents supporting its claim were credible?

Submissions of the Parties: The defendant  contended that the plaintiff was a former franchisee of the defendant's brand "Octant Pizza" and had instituted the suit as a retaliatory measure after the franchise agreement was terminated. It was argued that the plaintiff’s claims were fabricated and that the artwork being asserted as copyright was in fact a label mark defined under Section 2(m) of the Trade Marks Act. The defendant challenged the authenticity of the assignment deed and other supporting documents such as invoices and claimed that the plaintiff had falsely backdated his user. It was further submitted that the suit was barred since the plaintiff had declared the mark in his trademark application as “proposed to be used,” thereby contradicting his claim of prior use.To support these submissions, the defendant relied upon the following decisions:

Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 – laying down the principles for grant of interim injunction and emphasizing the need for a prima facie case, balance of convenience, and irreparable harm.

Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 – concerning protection against passing off and requirement of goodwill.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 – emphasizing deceptive similarity and comparable strength of trademarks.

K. Narayanan v. S. Murali, (2008) 10 SCC 479 – on the accrual of right to sue post-registration.

Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577 – concerning proof of goodwill and misrepresentation in passing off cases.

The plaintiff  defended the injunction, arguing that the suit was primarily based on copyright infringement, and registration was not necessary under the Copyright Act. It was emphasized that copyright subsists in both published and unpublished works, and under Section 14(c), the exclusive right to reproduce an artistic work in material form rests with the owner. Plaintiff asserted that it  had a valid assignment deed dated 28.05.2022 from the artist and had begun using the artwork on menus and T-shirts by June and August 2022 respectively. The defendant, he submitted, had not established any credible use of the mark prior to the plaintiff, and the documents relied upon by the defendant—including suspicious invoices and contradictory addresses—were manipulated. He also highlighted that the defendant had previously been injuncted in a related case involving another mark "DHAAM DHOOM" and that similar injunctions had been granted against his alleged associates.

Discussion on Judgments and Contextual Application:The Gujarat High Court considered the principles laid down in Neon Laboratories Ltd. v. Medical Technologies Ltd. and reiterated that appellate interference with interim orders should be minimal if the trial court’s exercise of discretion is based on reasonable and judicially considered grounds.

The Court examined the relevance of Wander Ltd. and Cadila Healthcare, distinguishing them to the extent that those cases pertained primarily to trademark disputes. Here, the interim injunction had been granted for copyright infringement as well, and the standard of proving goodwill in a passing off claim was not a prerequisite at this stage.

The Court accepted the application of Laxmikant V. Patel to the extent that it supported protection against unfair commercial exploitation, but found that even without satisfying the classical trinity test (prior use, goodwill, misrepresentation), the plaintiff was entitled to protection due to the strong prima facie case of authorship and ownership of the artwork.

Reasoning and Analysis of the Judge: The court observed that the plaintiff had sufficiently established a prima facie case of copyright ownership through a valid assignment deed, timely issuance of invoices, and documentary proof of usage of the label/artwork prior to the defendant’s alleged adoption.

The judge noted discrepancies in the defendant’s documents, including invoices issued before rental agreements for the same address and failure to credibly establish a prior creation of the logo. The High Court emphasized that these inconsistencies raised doubts about the genuineness of the defendant’s claims.

The judge further held that the plaintiff's act of filing the trademark as "proposed to be used" did not defeat the claim under copyright law, which operates independently of trademark registration. The existence of a similar mark, possibility of confusion, and the earlier artistic creation being used by the plaintiff tilted the balance in his favour.

Court underscored that once a prima facie case for copyright infringement was made, the requirement to prove the trinity test for passing off could be bypassed at the interim stage, particularly when the defendant’s materials lacked reliability.

Final Decision :The High Court dismissed the appeal and upheld the interim injunction granted by the District Court. It held that the order was based on cogent reasoning and did not warrant interference. The Court emphasized that the trial court had considered all relevant factors and that the plaintiff had demonstrated a prima facie case, balance of convenience, and potential irreparable harm if the injunction were denied.

Law Settled in this Case: The case reaffirms that in suits involving both copyright infringement and passing off, interim injunction may be granted solely on the basis of a prima facie case of copyright infringement, without necessarily establishing all elements of a passing off claim. It also reiterates that ownership of copyright in an artistic label can be established through an assignment deed, and registration is not mandatory. The judgment cautions against entertaining suspicious documents produced to undermine prior artistic ownership and upholds the broader objective of protecting genuine creative work from unfair exploitation.

Case Title: Hals Foods Kitchen Private Limited VS. Pithiya Jitendrakumar :Date of Order: 25th April, 2025:Case No.: Appeal From Order No. 104 of 2024:Name of Court: High Court of Gujarat at Ahmedabad:Name of Judge: Hon’ble Mr. Justice Nikhil S. Kariel

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

Exclusive Capital Ltd. v. Silver & C.Z. International

Exclusive Capital Ltd. Vs. Silver and C.Z. International: May 2, 2025: RFA (COMM) 257/2025:2025:DHC:3212-DB:High Court of Delhi: Hon’ble Mr. Justice Navin Chawla, Hon’ble Ms. Justice Renu Bhatnagar

Facts:

Exclusive Capital Ltd. (the appellant) extended a Rs. 2 crore loan to Silver & C.Z. International (the respondent) under a Loan Agreement dated April 29, 2022. The respondent defaulted on multiple monthly installments starting from July 2022, despite making some payments. The appellant claimed that the respondent owed over Rs. 42 lakh, including penalties and interest, and initiated a suit for recovery, asserting the respondent's breach and seeking security and injunctions to prevent asset alienation.

Procedural Details:

The appellant filed a civil suit in the District Court of Delhi seeking recovery of dues along with interim relief. It also moved an application under Section 12A of the Commercial Courts Act, seeking to bypass the statutory pre-litigation mediation requirement, alleging urgency due to risk of asset disposal by the respondent. The trial court dismissed the application and rejected the plaint, holding that there was no justification for bypassing mediation, and that the suit did not demonstrate the urgency needed to exempt from mediation.

Issue:

Whether the appellant's suit and application for exemption from pre-institution mediation under Section 12A of the Commercial Courts Act should be entertained, considering the alleged urgency and nature of relief sought.

Decision:

The High Court upheld the decision of the trial court. It dismissed the appeal, affirming that the suit did not meet the conditions for exemption from mediation, as there was no sufficient urgency or circumstance justifying bypassing the statutory process. The court emphasized that prayers for interim relief cannot be used as a mask to circumvent Section 12A’s mandate.

Western Digital Technologies, Inc. Vs. Hansraj Dugar

Western Digital Technologies, Inc. Vs. Hansraj Dugar: May 16, 2025: CS(COMM) 586/2019: 2025:DHC:3844: High Court of Delhi: Amit Bansal

Facts
The plaintiffs, Western Digital Technologies Inc. and its subsidiary Western Digital UK Ltd., are among the world’s largest manufacturers of hard disk drives (HDDs), using the trademarks “WESTERN DIGITAL” and “WD” since 1997 and 1999, respectively. They alleged that the defendant, Hansraj Dugar, operating through his proprietorship M/s Supreme Enterprise, had imported large quantities of infringing HDDs bearing their registered trademarks. The Customs Authorities alerted the plaintiffs about three consignments imported via Kolkata Port in September 2019. Upon inspection, some drives were found to be damaged or second-hand, though claimed to be new. The plaintiffs filed a suit for permanent injunction and related reliefs under the Trade Marks Act, 1999.

Procedural History
The Delhi High Court granted an ex parte ad interim injunction on 21 October 2019, restraining the defendant from dealing in the infringing products and appointed a Local Commissioner to seize the goods. Around 7500 HDDs were seized and held in customs custody. The matter was referred to mediation, which failed. The defendant filed an application in 2024 to vacate the injunction, relying on a recent judgment in Seagate Technology LLC v. Daichi International (2024:DHC:4193), which dealt with import and sale of refurbished HDDs. Plaintiffs opposed, distinguishing their case from Daichi, citing non-compliance with Indian laws and impairment of product quality.

Issue
The core issue was whether importation of second-hand genuine goods bearing the plaintiffs’ trademarks constituted trademark infringement under Section 29(6) of the Trade Marks Act, 1999, or was protected under Section 30(3) and (4), particularly in light of the principle of international exhaustion of rights.

Decision
The Court held that the principle of international exhaustion under Section 30(3) of the Trade Marks Act permits lawful importation and resale of genuine goods, including second-hand ones, as long as full disclosure is made regarding their refurbished nature, lack of original manufacturer warranty, and condition. Relying on Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2012:DHC:6136:DB) and Seagate Technology LLC v. Daichi International, the Court ruled that the defendant had a right to import second-hand goods and that there was no misrepresentation, as the goods had not yet entered the market. It ordered release of the seized goods, subject to their sale as scrap after removing the plaintiffs’ trademarks. For future imports, the defendant must follow full disclosure norms as outlined in Xerox Corporation v. Shailesh Patel and Daichi.

National Fire Protection Association Vs Swets Information Services

Introduction: This case before the Delhi High Court delves into the consequences of procedural non-compliance in the context of commercial litigation, especially with regard to filing of a written statement without the requisite affidavit of admission/denial of documents under the Delhi High Court (Original Side) Rules, 2018 and the Commercial Courts Act, 2015. The matter specifically concerns the striking off of the written statement of a defendant for failure to cure a defect in filing over a period of several years, despite being on notice.

Detailed Factual Background: The plaintiff, National Fire Protection Association, Inc., a reputed international entity in the domain of fire safety standards and publications, filed a commercial suit for permanent injunction and related reliefs against Swets Information Services Pvt. Ltd. and several other defendants, including defendant no.11, later renumbered as defendant no.8. The suit was filed under CS(COMM) 987/2018, with the primary allegation being unauthorized commercial use and distribution of its protected content.

Defendant no.11, now defendant no.8, filed its written statement on 08.08.2018 via Diary No.199399/2018. However, the said filing was defective as it lacked the affidavit of admission/denial of documents, a mandatory requirement under the Original Side Rules. The parties were thereafter referred to the Delhi High Court Mediation and Conciliation Centre for potential settlement.

Detailed Procedural Background: After initial filing, the case proceeded to mediation in 2018 and continued until early 2024 without any significant litigation activity before the Court. During this time, no steps were taken by defendant no.11 to rectify the defect in its written statement.

On 13.08.2024, the suit came up for hearing again and was listed before the learned Joint Registrar for further proceedings. On 02.09.2024, the learned Joint Registrar passed an order striking off the written statement of defendant no.11 due to the persisting defect, i.e., non-filing of the mandatory affidavit, and the inordinate delay in curing it.

Aggrieved, the defendant filed a chamber appeal (O.A. 166/2024) under Chapter IV Rule 3(d) of the Original Side Rules, 2018 challenging the said order of the Joint Registrar.

Issues Involved in the Case: Whether the omission to file the affidavit of admission/denial along with the written statement renders the filing non-est under the Original Side Rules and the Commercial Courts Act? Whether the delay of nearly six years in curing the defect, despite registry notice, can be condoned in the interest of justice?Whether mediation proceedings can be used as a ground to seek enlargement of time for curing defects or for re-filing defective pleadings?

Detailed Submission of Parties:The learned counsel for the defendant no.11 argued that the written statement was filed well within the statutory period of 30 days on 08.08.2018, but inadvertently without the affidavit of admission/denial. He contended that neither the Registry nor the website flagged this as a defect till 2022, and the defendant was unaware of the non-compliance. He relied on judicial precedents to argue that such omission does not render the filing non-est unless formally communicated. It was also argued that time spent in mediation proceedings should be excluded from limitation computation, citing Greaves Cotton Ltd. v. Newage Generators Pvt. Ltd. (2019:DHC:172) and Bharat Singh v. Karan Singh & Ors. (2025:DHC:777). He further submitted that procedural law should not be used punitively, especially when no prejudice was caused to the plaintiff.

Conversely, counsel for the plaintiff submitted that the filing was defective ab initio and could not be regularized after six years. She highlighted that an "Urgent Notice" was issued by the Registry on 18.08.2022 specifically alerting parties to collect their defective filings, including the subject written statement, failing which the documents would be weeded out. The failure to act even after that notice, coupled with no application for condonation of delay, showed gross negligence. The plaintiff relied on SCG Contracts India Pvt. Ltd. v. K.S. Chamankar Infrastructure Pvt. Ltd. (2019 SCC OnLine SC 226), ITD Cementation India Ltd. v. Indian Oil Corporation Ltd. (2023 SCC OnLine Del 6263), and Unilin Beheer B.V. v. Balaji Action Buildwell (2019 SCC OnLine Del 8498), all of which established that a written statement not accompanied with the requisite affidavit is non-est and liable to be struck off. They argued that the limitation under the Commercial Courts Act is strict and cannot be extended beyond 120 days.

Detailed Discussion on Judgments Cited:

In SCG Contracts India Pvt. Ltd. v. K.S. Chamankar Infrastructure Pvt. Ltd., (2019) SCC OnLine SC 226, the Supreme Court emphasized that the timelines for filing written statements under the Commercial Courts Act are mandatory and not directory. The ruling clarified that a written statement filed beyond 120 days cannot be taken on record.

In Unilin Beheer B.V. v. Balaji Action Buildwell, 2019 SCC OnLine Del 8498, the Delhi High Court ruled that the absence of the affidavit of admission/denial renders a written statement defective and liable to be struck off under Chapter VII Rule 3 of the Original Side Rules, 2018.

Greaves Cotton Ltd. v. Newage Generators Pvt. Ltd., 2019:DHC:172, and Bharat Singh v. Karan Singh & Ors., 2025:DHC:777 were cited by the defendant to argue for exclusion of time spent in mediation. However, the Court distinguished these decisions on the facts, holding that mediation did not justify a delay in curing known procedural defects.

Friends Motel Pvt. Ltd. v. Shreeved Consultancy LLP, 2020:DHC:271 and 3M Company v. Mr. Vikas Sinha, 2022:DHC:2447 reiterated that strict adherence to procedural timelines in commercial suits is necessary to fulfill the objective of expeditious adjudication.

Detailed Reasoning and Analysis of the Judge: The Court held that the written statement filed by the defendant was defective from inception due to the absence of the mandatory affidavit under Chapter VII Rule 3 of the Original Side Rules, 2018. The defendant was under an obligation to cure the defect within 30 days of being notified. The “Urgent Notice” issued by the Registry in August 2022 was deemed sufficient communication of the defect. The defendant’s failure to act upon the notice and to file any application seeking condonation of delay or extension of time, for nearly two years thereafter, showed complete negligence and disregard for procedural norms.

The Court rejected the defense that mediation justified the delay, especially since mediation had conclusively failed by April 2023. The Court also emphasized that the Commercial Courts Act, 2015 mandates strict timelines to ensure speedy resolution, and indulgence in such delays would defeat the very purpose of the statute.

The Court also found the defendant’s appeal to be frivolous and a clear abuse of process aimed at delaying the adjudication. The striking off of the written statement by the Joint Registrar was found to be legally sound and well-reasoned.

Final Decision: The chamber appeal filed by defendant no.11 was dismissed with costs of ₹25,000 payable to the Army Central Welfare Fund. The order of the Joint Registrar dated 02.09.2024 striking off the written statement was upheld.

Law Settled in this Case: A written statement in a commercial suit that is not accompanied by an affidavit of admission/denial under Chapter VII Rule 3 of the Original Side Rules, 2018 is a defective and non-est filing.Such a defect must be cured within 30 days of notification, failing which the court is entitled to strike off the pleading.Mediation proceedings do not automatically justify non-compliance with statutory procedural requirements unless appropriate applications for extension are filed.Courts are to adopt a strict view on procedural timelines in commercial litigation, in line with the Commercial Courts Act, 2015, which aims for expeditious resolution.Failure to cure defects despite notices by the Registry bars the party from seeking further indulgence and re-entry of pleadings.

Case Title: National Fire Protection Association, Inc. Vs. Swets Information Services Pvt. Ltd. & Ors.:Date of Order: May 15, 2025:Case No.: CS(COMM) 987/2018:Neutral Citation: 2025:DHC:3771:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents

Law Settled in the Case

1. Section 3(d) and Section 2(1)(ja) of the Patents Act are not mutually exclusive: 

A patent application may be novel and still fail the test under Section 3(d) if the claimed compound is a derivative of a known substance without demonstrating enhanced therapeutic efficacy. Even if an invention meets the requirements under Section 2(1)(j) or 2(1)(ja), it can still be rejected under Section 3(d).

2. Enhanced efficacy under Section 3(d) must be “therapeutic efficacy”: 

Relying on Novartis AG v. Union of India, (2013) 6 SCC 1, the Court reiterated that the test of efficacy in pharmaceutical inventions relates strictly to therapeutic efficacy. Physico-chemical improvements like solubility, stability, or reaction yield are not sufficient unless directly linked to enhanced therapeutic effect.

3. Routine experimentation by a person skilled in the art (PSITA) negates inventive step: 

If a claimed invention involves modifications (e.g., substituting ethoxy with methoxy) that are within the realm of routine choices or predictable variations, such invention lacks an inventive step under Section 2(1)(ja).

4. Burden of proof on the applicant to demonstrate inventive step and therapeutic efficacy: 

It is the responsibility of the applicant to provide adequate and specific data supporting therapeutic superiority or inventive technical advancement over the prior art. Unsupported claims or reliance on non-therapeutic advantages are insufficient.

5. “Teaches away” argument requires strong proof: 

The Court clarified that merely because a prior art does not directly teach the invention does not imply it "teaches away" from it. The absence of contrary suggestion is not proof that the prior art discourages the claimed invention.

6. Disclosure in prior art includes generic suggestions: 

Where prior art generically suggests both methoxy and ethoxy substitutions, and the invention merely selects one, it may not suffice to demonstrate inventiveness if no unexpected results or efficacy improvements are shown.

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents:May 27, 2025:C.A. (COMM.IPD-PAT) 452/2022:2025:DHC:4431: High Court of Delhi :Hon’ble Mr. Justice Saurabh Banerjee

Rakesh Kumar Mittal Vs. The Registrar of Trade Marks

Rakesh Kumar Mittal Vs. The Registrar of Trade Marks:May 27, 2025:W.P.(C)-IPD 40/2024:2025:DHC:4432:High Court of Delhi :Hon'ble Mr. Justice Saurabh Banerjee

Law Settled in the Case:

1. Mandatory Issuance of Form O-3 Notice: The Court reaffirmed that under Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of the Trade Marks Rules, 2002, it is mandatory for the Registrar to issue a Form O-3 notice to the registered proprietor of a trademark before its removal from the Register. This notice must be sent at least one month and not more than three months prior to the expiry of the registration.

2. Non-compliance Makes Removal Illegal: If the Form O-3 notice is not issued in accordance with the statutory mandate, any removal of a trademark from the Register is illegal, unsustainable and without jurisdiction, regardless of whether the renewal application was filed.

3. Judicial Precedent Applied: The Court relied on previous judgments including:

Union of India v. Malhotra Book Depot (2013 SCC OnLine Del 828),

Cipla Ltd. v. Registrar of Trade Marks (2013 SCC OnLine Bom 1270),

Promoshirt SM. (P) Ltd. v. Registrar of Trade Marks (2024 SCC OnLine Del 7722),

Ashok Bhutani v. The Registrar of Trade Marks (W.P.(C)-IPD 22/2024), affirming that the issuance of the notice is a condition precedent for valid removal.

4. Restoration and Renewal Directed: Since Form O-3 notice was not issued in this case, the Court ordered the restoration of the trademark MILTON (Application No. 627446, Class 9) and directed the Registrar to process the renewal applications for the periods 2004–2014, 2014–2024, and 2024–2034 upon completion of formalities by the petitioner.

MS Oxygun Health Pvt Ltd Vs Pneumo Care Health Pvt Ltd.

Case Title: MS Oxygun Health Pvt Ltd Vs Pneumo Care Health Pvt Ltd Case No.: RFA (Comm) 271/2025 Date of Order: 13 May 2025 :2025:DHC:3897-DB: Name of Court: High Court of Delhi Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

Facts:

Pneumo Care, a reputed manufacturer of medical and surgical products, registered trademarks "HOSPIGRIP" and "HOSPICUFF" and a registered design for ankle and wrist restrainers. Oxygun Health Pvt Ltd, along with its directors and former employees, allegedly copied these trademarks and designs to pass off its products as Pneumo Care’s, aiming to divert trade and profiteer from Pneumo Care's goodwill.

Procedural History:

Pneumo Care filed a civil suit in the Commercial Court at Delhi for infringement of trademarks, design, passing off, damages, and injunctions. The Commercial Court, after examining the evidence and comparison of marks and products, decreed the suit in favor of Pneumo Care, issuing a permanent injunction restraining Oxygun from infringing the trademarks and designs. Oxygun appealed against this judgment to the Delhi High Court.

Issues:

Whether Oxygun’s use of identical or deceptively similar trademarks "HOSPIGRIP" and "HOSPICUFF" constituted infringement and passing off?Whether the registered design was infringed by Oxygun's products?The legal validity of issuing a decree under Order VIII Rule 10 CPC in the absence of a written statement from the defendant.

Decision:

The High Court upheld the Commercial Court’s ruling, confirming that Oxygun’s use of the marks and designs was likely to cause confusion and deceive consumers, amounting to infringement and passing off. It granted a permanent injunction restraining Oxygun and related parties from manufacturing, selling, or dealing with products bearing the contested marks or designs.

KRB Enterprises Vs. KRBL Ltd

KRB Enterprises Vs. KRBL Ltd.:26th May, 2025:

FAO (COMM) 69/2024:2025:DHC:4364-DB:High Court of Delhi:Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

Law Settled in the Case:

1. Use of a Corporate Name as a Trademark: 

A corporate name can qualify as a trademark under the Trade Marks Act, 1999 if it is used in such a way as to indicate a connection in the course of trade between the goods or services and the company. The term “mark” under Section 2(1)(m) and “trademark” under Section 2(1)(zb) includes a name that serves as a source identifier.

2. Trademark Use Not Limited to Physical Goods: 

The “use” of a mark in relation to goods under Section 2(2)(c) of the Act includes not just physical affixation but any relation whatsoever to the goods — including advertising, marketing, distribution, etc.

3. Trademark Infringement Not Confined to Registered Class: 

Protection of a registered mark under one class (e.g., Class 35 for services like advertising, distribution, and retail of rice) can extend to other allied and cognate classes (like Class 30 for rice) if the infringing goods or services are similar and likely to cause confusion. Thus, infringement under Section 29 can be attracted even when marks are registered in different classes.

4. Principle Against Dissecting a Mark: 

While assessing deceptive similarity, the mark should be viewed as a whole; however, the dominant part of the mark can be considered. The court held that “KRB” was deceptively similar to “KRBL” considering the dominance of the letters and the nature of goods and services.

5. Scope of Appellate Interference in Interim Orders: 

Following the principle laid down in Wander Ltd. v. Antox India P. Ltd. and reiterated in Ramakant Ambalal Choksi v. Harish Ambalal Choksi, appellate courts will not interfere with discretionary interim orders unless they are shown to be perverse, arbitrary, or contrary to settled principles.

6. No Acquiescence Without Knowledge and Delay with Inaction: 

Mere delay or past transactions without demonstrable knowledge of trademark misuse by the right holders does not amount to acquiescence. A positive act of knowingly allowing infringement is required.

7. Withdrawal of a Trademark Application Does Not Equal Abandonment: 

If the proprietor withdraws a trademark registration based on mistaken legal advice and promptly reapplies for it, this does not amount to abandonment or loss of rights in the trademark.

Darrameks Hotels and Developers Pvt. Ltd. Vs. Brilltech Engineers Pvt.Ltd

Law Settled in the Case:

The judgment clarifies and settles important procedural law concerning the filing of additional documents in commercial suits under Order XI Rule 1(5) of the Civil Procedure Code (CPC), as amended for commercial disputes.

The High Court of Delhi held that:

1. Standard for Late Filing of Documents:

Under Order XI Rule 1(5) CPC, while the rule is strict, it allows for late filing of documents if the plaintiff can show a reasonable cause for non-disclosure at the time of filing the plaint. The term “reasonable cause” is broader and less stringent than “sufficient cause” or “good cause,” making the provision somewhat less rigid in application.

2. Nature and Relevance of Documents:

Documents which are of "impeccable and unquestionable nature," such as email communications already referred to in the pleadings, can be permitted to be filed even at a belated stage, especially when they assist in adjudicating the controversy fairly and cause no prejudice to the other party.

3. Discretion of Trial Court:

The discretion exercised by the trial court to allow additional documents, particularly before the framing of issues and at an early stage of the suit, does not warrant interference under Article 227 of the Constitution unless there is manifest perversity or jurisdictional error.

4. Supervisory Jurisdiction under Article 227:

The High Court reaffirmed that supervisory jurisdiction under Article 227 is limited and should be used sparingly, especially in the context of commercial litigation where the legislative intent is geared towards expeditious disposal.

5. Replication and Procedural Fairness:

The Court emphasized procedural fairness by allowing both parties reciprocal rights—permitting the plaintiff to file a replication and the defendant to file any trailing emails—thus maintaining parity and avoiding prejudice.

Darrameks Hotels and Developers Pvt. Ltd. Vs. Brilltech Engineers Pvt.Ltd.:26 May 2025:CM(M) 2333/2024:2025:DHC:4404:High Court of Delhi:Hon’ble Mr. Justice Manoj Jain

Promoshirt SM SA Vs. Armasuisse

Law Settled in the Case:

The case of Promoshirt SM SA Vs. Armasuisse and Anr. addressed a critical issue regarding the maintainability of Letters Patent Appeals (LPAs) under the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908 (CPC). 

The court established several key legal principles:First, the court clarified that Section 100-A of the CPC, which bars further appeals from judgments of a Single Judge exercising appellate jurisdiction, applies only to decrees or orders as defined under the CPC, specifically those emanating from a civil court. The court emphasized that the terms "decree" and "order" in Section 100-A, as per Sections 2(2) and 2(14) of the CPC, refer to formal adjudications by a civil court, not decisions by tribunals or authorities like the Registrar of Trade Marks, which do not qualify as civil courts. Consequently, Section 100-A does not bar LPAs against decisions of a Single Judge hearing appeals under Section 91 of the 1999 TM Act, as the Registrar’s decisions are not decrees or orders of a civil court.Second, the court held that the Registrar of Trade Marks does not satisfy the "trappings of a court" test, as enunciated in cases like Nahar Industrial Enterprises Ltd. v. Hong Kong & Shanghai Banking Corpn. and Paramjeet Singh Patheja v. ICDS Ltd. The Registrar lacks the attributes of a civil court, such as the ability to conduct a full-fledged trial under the CPC or the Evidence Act, and its decisions do not constitute decrees or orders as defined by the CPC. Thus, an appeal from the Registrar’s decision to a Single Judge under Section 91 of the 1999 TM Act does not attract the bar of Section 100-A.Third, the court distinguished the 1999 TM Act from its predecessors, the Trade Marks Act, 1940, and the Trade and Merchandise Marks Act, 1958, which had provisions (Sections 76(3) and 109(8), respectively) applying CPC rules to appeals. The absence of such a provision in the 1999 TM Act indicates that appeals under Section 91 are not governed by CPC appeal provisions, preserving the right to an LPA under the Letters Patent unless expressly barred by the statute.Fourth, the court reconciled conflicting precedents, such as Avtar Narain Behal and Mahli Devi, by holding that Section 100-A applies to appeals under special statutes only when the statute explicitly subjects the appeal to CPC provisions, as in Section 299 of the Indian Succession Act, 1925. Where the special statute, like the 1999 TM Act, is silent on further appeals and does not adopt CPC rules, an LPA remains maintainable under the Letters Patent, as supported by National Sewing Thread Co. Ltd. v. James Chadwick & Bros.Finally, the court underscored that the non-obstante clause in Section 100-A overrides Letters Patent provisions only for appeals involving civil court decrees or orders or where the special statute incorporates CPC appeal provisions. In the absence of such conditions, the Letters Patent remedy remains intact, ensuring an additional layer of judicial scrutiny for trademark disputes.Case DetailsCase Title: Promoshirt SM SA v. Armasuisse and Anr.Date of Order: September 6, 2023Case Number: LPA 136/2023 & LPA 137/2023Neutral Citation: 2023:DHC:6352-DBName of Court: High Court of Delhi at New DelhiName of Judges: Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

Vinod Infra Developers Ltd. Vs. Mahaveer Lunia

Vinod Infra Developers Ltd. Vs. Mahaveer Lunia:23 May 2025:Civil Appeal No. 7109 of 2025: 2025 INSC 772S:upreme Court of IndiaH:on'ble Mr. Justice J.B. Pardiwala and Hon'ble Mr. Justice R. Mahadevan

Law Settled:

1. Rejection of Plaint under Order VII Rule 11 CPC:
   A plaint can only be rejected at the threshold if it does not disclose a cause of action, is barred by any law, or is deficient in valuation or court fee. The examination must be confined to the plaint itself. Where even one cause of action survives, the plaint cannot be rejected in its entirety. [Central Bank of India v. Prabha Jain, 2025 INSC 95]

2. Unregistered Agreement to Sell & Power of Attorney:
   Unregistered agreements to sell and powers of attorney cannot confer title or interest in immovable property. Such documents are inadmissible for the purpose of transferring property rights under Sections 17, 23, and 49 of the Registration Act, 1908 and Section 54 of the Transfer of Property Act, 1882. [S. Kaladevi v. V.R. Somasundaram, (2010) 5 SCC 401; Suraj Lamp & Industries (P) Ltd. v. State of Haryana, (2012) 1 SCC 656]

3. Revocation of Power of Attorney:
   If a power of attorney is revoked before execution of sale deeds, any subsequent transaction made under that power is void ab initio.

4. Triable Issues & Civil Court Jurisdiction:
   Questions relating to title, validity of sale deeds, and redemption of mortgages are triable issues and must be adjudicated by civil courts, not revenue authorities. Mutation entries do not confer title. [Suraj Bhan v. Financial Commissioner, (2007) 6 SCC 186]

5. Insufficient Court Fee:
   A plaint cannot be rejected solely for deficient court fee without giving the plaintiff an opportunity to rectify the defect. [Tajender Singh Ghambhir v. Gurpreet Singh, (2014) 10 SCC 702]

San Nutrition Vs. Arpit Mangal

Case Title: San Nutrition Vs. Arpit Mangal

Date of Order: April 28, 2025

Case Number: CS(COMM) 420/2024

Neutral Citation: 2025:DHC:2973

Name of Court: High Court (Delhi)

Presiding Judge: Hon’ble Justice Amit Bansal

Fact:

The plaintiff, San Nutrition, a company engaged in the sale and marketing of nutraceutical and healthcare products, filed a suit against the defendant, Arpit Mangal, alleging that the defendant, a social media influencer, posted videos on platforms like YouTube and Instagram containing defamatory, disparaging, and infringing statements concerning the plaintiff's products. The defendant's statements were backed by scientific reports, and the plaintiff contended that these videos damaged its reputation and business interests.

Procedural Details:

The plaintiff sought an interim injunction to restrain the defendant from further defamatory statements. Summons and notices were issued, but the defendant did not appear or file a written statement. The court heard arguments from the plaintiff and amici curiae appointed to assist in balancing the rights to free speech versus reputation. The matter was reserved for judgment after multiple hearings.

Issue:

Whether the defendant’s social media posts, supported by scientific reports, warrant an injunction restricting their transmission, balancing free speech rights and the plaintiff's right to reputation.

Decision:

The court dismissed the plaintiff’s application for interim injunction. It held that the statements made by the defendant had a scientific basis, and therefore, the court could not restrain such expressions that are protected under the right to free speech. The court emphasized the importance of protecting free expression, especially when statements are backed by objective scientific evidence and not reckless or reckless in nature.

Exclusive Capital Ltd. Vs. Silver and C.Z. International

Introduction

The case of Exclusive Capital Ltd. v. Silver and C.Z. International is a significant commercial dispute adjudicated by the High Court of Delhi, addressing the mandatory requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The appellant, Exclusive Capital Ltd., challenged the dismissal of its suit by the Commercial Court for failing to comply with the pre-litigation mediation mandate, alongside its application for waiver of this requirement. The suit sought recovery of an outstanding loan amount from the respondent, Silver and C.Z. International, under a loan agreement. The High Court’s judgment, delivered on May 2, 2025, by Justices Navin Chawla and Renu Bhatnagar, upheld the Commercial Court’s decision, reinforcing the mandatory nature of Section 12A and clarifying the limited scope for bypassing mediation through claims of urgent interim relief. This case underscores the judiciary’s commitment to promoting alternative dispute resolution in commercial matters and sets a precedent for evaluating the genuineness of urgent relief claims to avoid circumventing statutory mandates.

Detailed Factual Background

Exclusive Capital Ltd., the appellant, extended a loan facility of ₹2 crore to the respondent, Silver and C.Z. International, under a Term Loan Facility Agreement dated April 29, 2022. The loan, spanning four years from April 2022 to May 2026, required repayment in equal monthly installments of ₹5,07,252. The agreement stipulated an interest rate of 10% per annum, with a default interest of 2% per month and an additional penal charge of 2% per month in case of non-payment. The respondent provided an undertaking on the same date, acknowledging compliance with the loan terms. The appellant alleged that the respondent defaulted on multiple installments from July 1, 2022, to January 22, 2023, breaching the agreement. The respondent made partial payments of ₹1 crore on January 23 and 24, 2023, but failed to clear the outstanding balance, including principal, interest, default interest, and penal charges. Citing a long-standing relationship, the appellant granted additional time for repayment, but the respondent did not comply. On June 1, 2024, the appellant issued a demand notice for ₹17,22,372, claimed due as of March 31, 2024. By January 31, 2025, the appellant claimed an outstanding amount of ₹42,00,434.09, including penal charges, as of December 31, 2022.

Detailed Procedural Background

The appellant filed a suit, CS (COMM) No. 113/2025, before the District Judge (Commercial-01), South District, New Delhi, seeking a decree for ₹42,00,434.09 and pendente lite and future interest at 10% per annum, plus default interest and penal charges from February 1, 2025, until realization. Alongside the suit, the appellant filed two applications: one under Order XXXVIII Rule 5 of the Code of Civil Procedure, 1908 (CPC), seeking the respondent’s deposit of the claimed amount as security and an injunction against alienating assets, and another under Section 12A of the Commercial Courts Act, requesting exemption from pre-institution mediation. The Commercial Court, in its judgment dated March 5, 2025, dismissed the Section 12A application, finding no genuine urgency for interim relief, and consequently rejected the plaint under Order VII Rule 11 CPC for non-compliance with the mandatory mediation requirement. Aggrieved, the appellant filed an appeal, RFA (COMM) 257/2025, before the Delhi High Court, represented by Senior Advocate Siddharth Yadav and others. The respondent did not appear, and the High Court heard the appeal ex parte, delivering its judgment on May 2, 2025.

Issues Involved in the Case

The primary issue was whether the Commercial Court erred in dismissing the appellant’s suit for non-compliance with Section 12A’s pre-institution mediation requirement, given the appellant’s claim for urgent interim relief. Subsidiary issues included whether the Commercial Court could reject the plaint outright rather than directing mediation, whether the appellant’s application for interim relief under Order XXXVIII Rule 5 CPC genuinely contemplated urgent relief to bypass mediation, and whether external factors, such as the suspension of the appellant’s board, justified non-compliance with Section 12A?

Detailed Submission of Parties

The appellantargued that the Commercial Court’s rejection of the plaint was legally flawed. They contended that even if the court found no maintainable urgent relief, it should have dismissed the Section 12A application and referred the matter for mediation, not rejected the plaint. The appellant relied on Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt. Ltd., 2022 SCC OnLine Del 3529, where the Delhi High Court held that the plaintiff’s desire for urgent relief determines the need for mediation, and the court’s refusal to grant such relief does not warrant plaint rejection. They also cited Kaulchand H. Jogani v. Shree Vardhan Investment & Ors., 2022 SCC OnLine Bom 4752, from the Bombay High Court, and Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815, to argue that plaint rejection was disproportionate. The appellant further submitted that the delay in filing the suit was due to the suspension of its board by the National Company Law Tribunal, lifted by the Supreme Court on February 24, 2025, justifying the urgency claimed.

The respondent, Silver and C.Z. International, did not appear or file submissions, leaving the appellant’s claims and evidence uncontested. The High Court noted the respondent’s absence, proceeding ex parte.

Detailed Discussion on Judgments Cited by Parties

The appellant relied on three judgments to support its case. In Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt. Ltd., 2022 SCC OnLine Del 3529, the Delhi High Court held that the plaintiff’s decision to seek urgent interim relief determines whether pre-institution mediation under Section 12A is required. The court ruled that the plaintiff’s choice to include such a prayer exempts the suit from mediation, and the court’s decision on the interim relief’s merits is irrelevant to this determination. The appellant used this to argue that its application for urgent relief under Order XXXVIII Rule 5 CPC should have exempted it from mediation, and the plaint’s rejection was erroneous.

In Kaulchand H. Jogani v. Shree Vardhan Investment & Ors., 2022 SCC OnLine Bom 4752, the Bombay High Court addressed a similar issue, emphasizing that non-compliance with Section 12A should not automatically lead to plaint rejection. The court suggested that the Commercial Court could direct mediation instead, preserving the suit. The appellant cited this to challenge the Commercial Court’s outright dismissal.

The Supreme Court’s judgment in Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815, was pivotal. The Court partially approved Chandra Kishore Chaurasia, agreeing that non-grant of interim relief does not justify plaint rejection under Order VII Rule 11 CPC. However, it rejected the notion that plaintiffs have an absolute right to bypass Section 12A by merely praying for urgent relief. The Court held that such prayers must genuinely contemplate urgency, and courts must scrutinize them to prevent camouflage or guise to evade mediation. The appellant relied on this to argue that the Commercial Court should have evaluated the suit’s merits rather than rejecting it, but the High Court interpreted it to emphasize the need for genuine urgency.

The High Court also referenced Patil Automation (P) Ltd. & Ors. v. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1, where the Supreme Court declared Section 12A mandatory, holding that non-compliance warrants plaint rejection under Order VII Rule 11 CPC. The Court highlighted mediation’s role in reducing court backlogs and promoting expeditious dispute resolution, emphasizing that the provision applies unless urgent interim relief is genuinely contemplated. This precedent guided the High Court’s analysis of the appellant’s claims.

Detailed Reasoning and Analysis of Judge

Court meticulously analyzed the appellant’s claims, affirming the Commercial Court’s decision. The court began by outlining Section 12A’s purpose, as elucidated in Patil Automation, which mandates pre-institution mediation for suits not contemplating urgent interim relief to promote amicable and expeditious dispute resolution. The court noted that Patil Automation explicitly authorizes plaint rejection for non-compliance, exercisable even suo motu, effective from August 20, 2022.

Addressing the appellant’s reliance on Chandra Kishore Chaurasia, the court acknowledged its partial approval in Yamini Manohar. However, it emphasized Yamini Manohar’s clarification that plaintiffs cannot bypass Section 12A through disguised or mala fide claims for urgent relief. The court must examine the suit’s nature, cause of action, and interim relief prayer to ensure genuineness, preventing deception that defeats Section 12A’s legislative intent. The court rejected the appellant’s argument that the Commercial Court should have referred the matter for mediation, citing Patil Automation’s mandate for plaint rejection in cases of non-compliance.

Evaluating the appellant’s interim relief application under Order XXXVIII Rule 5 CPC, the court found it lacked specificity. The appellant’s vague assertions of “credible information” and “reasonable apprehension” that the respondent might dispose of assets were unsupported by evidence. The claimed amount of ₹42,00,434.09, including penal charges, and the suit’s filing nearly two years after the alleged default (July 2022 to January 2023) undermined the urgency claim. The court concluded that the interim application was a camouflage to bypass Section 12A, aligning with Yamini Manohar’s caution against such tactics.

The court also dismissed the appellant’s explanation for the delay, citing the National Company Law Tribunal’s suspension of its board. The Supreme Court’s stay on February 24, 2025, did not justify bypassing mediation, as the default predated this period, and no immediate threat to asset dissipation was substantiated. The court found the Commercial Court’s assessment—that no interim relief was contemplated—correct, as the suit’s facts belied urgency.

Final Decision

The High Court dismissed the appeal and the accompanying application, upholding the Commercial Court’s judgment dated March 5, 2025. The appellant was ordered to pay costs of ₹25,000 to the Delhi High Court Clerk’s Association within two weeks. The court found no merit in the appellant’s challenge, affirming the mandatory nature of Section 12A and the propriety of plaint rejection for non-compliance.

Law Settled in This Case

The judgment reinforces the mandatory nature of pre-institution mediation under Section 12A of the Commercial Courts Act, as established in Patil Automation. It clarifies that non-compliance warrants plaint rejection under Order VII Rule 11 CPC, even suo motu, unless the suit genuinely contemplates urgent interim relief. Courts must scrutinize interim relief prayers to prevent camouflage or guise to bypass mediation, ensuring alignment with the legislative intent of expeditious dispute resolution. Vague or unsubstantiated claims of urgency do not exempt plaintiffs from Section 12A, and external delays, such as corporate governance issues, do not justify non-compliance absent immediate threats.

Exclusive Capital Ltd. Vs. Silver and C.Z. International: May 2, 2025: RFA (COMM) 257/2025:2025:DHC:3212-DB:High Court of Delhi: Hon’ble Mr. Justice Navin Chawla, Hon’ble Ms. Justice Renu Bhatnagar

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

Promoshirt SM SA Vs. Armasuisse

Law Settled in the Case:

The case of Promoshirt SM SA v. Armasuisse and Anr. addressed a critical issue regarding the maintainability of Letters Patent Appeals (LPAs) under the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908 (CPC). The court established several key legal principles:

First, the court clarified that Section 100-A of the CPC, which bars further appeals from judgments of a Single Judge exercising appellate jurisdiction, applies only to decrees or orders as defined under the CPC, specifically those emanating from a civil court.

The court emphasized that the terms "decree" and "order" in Section 100-A, as per Sections 2(2) and 2(14) of the CPC, refer to formal adjudications by a civil court, not decisions by tribunals or authorities like the Registrar of Trade Marks, which do not qualify as civil courts.

Consequently, Section 100-A does not bar LPAs against decisions of a Single Judge hearing appeals under Section 91 of the 1999 TM Act, as the Registrar’s decisions are not decrees or orders of a civil court.

Second, the court held that the Registrar of Trade Marks does not satisfy the "trappings of a court" test, as enunciated in cases like Nahar Industrial Enterprises Ltd. v. Hong Kong & Shanghai Banking Corpn. and Paramjeet Singh Patheja v. ICDS Ltd.

The Registrar lacks the attributes of a civil court, such as the ability to conduct a full-fledged trial under the CPC or the Evidence Act, and its decisions do not constitute decrees or orders as defined by the CPC. Thus, an appeal from the Registrar’s decision to a Single Judge under Section 91 of the 1999 TM Act does not attract the bar of Section 100-A.

Third, the court distinguished the 1999 TM Act from its predecessors, the Trade Marks Act, 1940, and the Trade and Merchandise Marks Act, 1958, which had provisions (Sections 76(3) and 109(8), respectively) applying CPC rules to appeals. The absence of such a provision in the 1999 TM Act indicates that appeals under Section 91 are not governed by CPC appeal provisions, preserving the right to an LPA under the Letters Patent unless expressly barred by the statute.

Fourth, the court reconciled conflicting precedents, such as Avtar Narain Behal and Mahli Devi, by holding that Section 100-A applies to appeals under special statutes only when the statute explicitly subjects the appeal to CPC provisions, as in Section 299 of the Indian Succession Act, 1925. Where the special statute, like the 1999 TM Act, is silent on further appeals and does not adopt CPC rules, an LPA remains maintainable under the Letters Patent, as supported by National Sewing Thread Co. Ltd. v. James Chadwick & Bros.

Finally, the court underscored that the non-obstante clause in Section 100-A overrides Letters Patent provisions only for appeals involving civil court decrees or orders or where the special statute incorporates CPC appeal provisions. In the absence of such conditions, the Letters Patent remedy remains intact, ensuring an additional layer of judicial scrutiny for trademark disputes.

Case Details

• Case Title: Promoshirt SM SA Vs. Armasuisse and Anr.
• Date of Order: September 6, 2023
• Case Number: LPA 136/2023 & LPA 137/2023
• Neutral Citation: 2023:DHC:6352-DB
• Name of Court: High Court of Delhi at New Delhi
• Name of Judges: Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

Under Armour, Inc. Vs . Anish Agarwal

Case Detail: Under Armour, Inc. Vs . Anish Agarwal: May 23, 2025:FAO(OS) (COMM) 174/2024: 2025:DHC:4243:High Court of Delhi: Hon'ble Mr. Justice Vibhu Bakhru and Hon'ble Mr. Justice Sachin Datta

Law Settled in the Case:

Initial Interest Confusion under Section 29 of the Trade Marks Act, 1999:

The court held that under Section 29(1), (2), and (4) of the Trade Marks Act, 1999, a registered trademark is infringed if a mark used by another party is likely to cause confusion or indicate an association with the registered trademark, even if the confusion is brief or momentary (Paras 102-103, 163).

Likelihood of Confusion:

The court emphasized that the test for trademark infringement is whether a customer of average intelligence and imperfect recollection, upon encountering the impugned mark, is likely to believe it is associated with the registered trademark, even briefly.  (Paras 101, 104).

Dishonest Adoption:

The court reiterated that dishonest adoption of a mark, especially one that is phonetically and visually similar to a well-known registered trademark, warrants an injunction.  (Paras 105, 108-110).

Degree of Protection for Strong Marks:

The court clarified that the degree of protection accorded to a trademark is proportional to its strength and recognition. A new entrant must maintain a greater distance from a strong, well-known mark to avoid infringement. In this case, the respondents’ use of "AERO ARMOUR," which bore phonetic and visual similarity to "UNDER ARMOUR" and was used in a similar manner (e.g., placement on sleeves), was deemed prima facie dishonest (Para 109).

Non-Dissection Rule and Global Appreciation Test:

While the learned Single Judge applied the anti-dissection rule and global appreciation test to assess trademark similarity (Paras 27-28), the appellate court found that the Single Judge erred in concluding no likelihood of confusion. The appellate court held that the phonetic and visual similarity between "AERO ARMOUR" and "UNDER ARMOUR," combined with similar trade channels and product placement, created a real likelihood of confusion, satisfying the infringement criteria (Para 104).

Sophistication of Consumers:

The court clarified that the sophistication or knowledge of consumers does not preclude trademark infringement. Even informed or sophisticated consumers may experience initial confusion, particularly due to modern business trends like trademark licensing or mergers, which may lead them to assume an association between similar marks. This was supported by references to cases like Institute Europeen D. Administration Des Affaires, Insead v. Fullstack Education Pvt. Ltd. [2023 SCC OnLine Del 3016] and Mobil Oil Corp. v. Pegasus Petroleum Corp. (Paras 53-58, 99).

Injunction for Infringement:The court held that where there is prima facie evidence of trademark infringement due to similarity and likelihood of confusion, an injunction is warranted. The respondents were restrained from using "AERO ARMOUR" or any mark deceptively similar to "UNDER ARMOUR" until the suit’s disposal, setting aside the Single Judge’s order that had denied a full injunction (Para 111).

Conclusion: The court allowed the appeal, emphasizing that even transient confusion caused by a deceptively similar mark constitutes infringement under the Trade Marks Act, 1999. The respondents’ use of "AERO ARMOUR" was found to be prima facie dishonest, given its similarity to "UNDER ARMOUR" and the appellant’s established reputation, leading to an injunction against the respondents.

Chafur Bakhsh Vs Jwala Prasad

Infringement of a copyright can extend to the entire work if a substantial part, including the arrangement and sequence, is copied verbatim, and that the copyright rights can extend to the entire book, not just the specific pages copied. 

Chafur Bakhsh Vs Jwala Prasad : 06.01.2021: First Appeal No. 214 of 1919: Allahabad High: Hon'ble Justice: Court:Pramad Charan Banerjee and Gokul Prasad: @Para 415 of SCC

Veekesy Rubber Industries Pvt. Ltd. Vs. Kamal Bansal

Veekesy Rubber Industries Pvt. Ltd. Vs. Kamal Bansal: C.O. (COMM.IPD-TM) 542/2022:27th February, 2025:Hon'ble Mr. Justice Amit Bansal:2025:DHC:1451

Legal Principles and Law Settled:

1. Prior User and Registration Rights: The petitioner established its prior use and registration of the trademark "VKC" since 1985, which is protected under the Trade Marks Act, 1999, particularly referencing Sections 9(1)(a), 11(1)(a), and 18, which safeguard prior users and registered marks.

2. Conflicting Marks and Likelihood of Confusion: The court held that the respondent's mark "VKG" is deceptively similar to the petitioner's "VKC," both visually and phonetically, which is likely to cause confusion among consumers and amount to passing off, violating Sections 9(1)(a) and 11(1)(a) of the Act.

3. Dishonest Adoption and Deceptive Similarity: The court found that the respondent adopted the mark "VKG" dishonestly to trade upon the goodwill of the petitioner’s established mark "VKC," contravening Sections 47 and 57 of the Act, which relate to cancellation and rectification of the Register of Trade Marks for dishonest registration.

4. Invalidity of Registration: The court decreed to cancel the registration of "VKG" based on its similarity with "VKC," and on grounds that the registration was obtained dishonestly, and was in violation of the Act, citing the applicable sections.

5. Ex-parte Proceedings: Due to non-appearance of the respondent despite proper service, the court proceeded ex-parte, reaffirming that a failure to defend does not preclude the court from granting relief.

6. Order to Remove the Trademark: The court directed the Trade Mark Registry to remove the trademark "VKG" from the register, emphasizing the importance of protecting prior rights and preventing deceptive registration.