KRB Enterprises Vs KRBL Limited

Introduction:The case of KRB Enterprises & Ors. Vs KRBL Limited revolves around a trademark dispute adjudicated by the High Court of Delhi. This appeal, filed under Section 13(1A) of the Commercial Courts Act, 2015, challenges an ad-interim injunction order issued by the District Judge, restraining the appellants from using the trademark 'KRB', which was alleged to be deceptively similar to the respondent's registered trademark 'KRBL'. The dispute centers on allegations of trademark infringement and passing off, with the respondent claiming prior use and registration of its mark, while the appellants argued honest adoption and acquiescence by the respondent. 

Factual Background: The appellants, comprising KRB Enterprises (a partnership firm), KRB Rice Mills Private Limited, and Rajesh Kumar Jindal (proprietor of Jindal Traders), are engaged in manufacturing, trading, and marketing goods such as rice, coffee, and sugar, falling under Class 30 of the Trade Marks Act, 1999. The respondent, KRBL Limited, is a well-established company involved in the production, processing, and marketing of food products like rice, quinoa, and chia seeds. Incorporated in 1993 as Khushi Ram Bihari Lal Ltd., it adopted the name KRBL Ltd. in 2000 and has since used the trademark 'KRBL' along with a device of paddy forming a diamond shape, registered under Class 35 (advertising, distribution, marketing, wholesale, and retail services related to rice) and previously under Class 30 (goods like rice). The respondent also holds a copyright registration for the artistic work of its trademark.

The respondent alleged that the appellants’ use of the mark 'KRB' infringed its registered trademark 'KRBL' and constituted passing off by creating confusion among consumers. The respondent claimed continuous use of its mark since 2000, supported by substantial sales figures and advertising efforts, establishing significant goodwill. 

It discovered the appellants’ use of 'KRB' in 2016 through trademark applications and opposed them, but found no market use until May 2022, prompting the filing of a suit in July 2022. The appellants countered that they adopted 'KRB' in 2009, derived from the initials of family members, and had been using it openly without objection. They further claimed that the respondent acquiesced to their use, as evidenced by commercial transactions since 2014, and argued that the respondent’s withdrawal of its Class 30 registration indicated abandonment.

Procedural Background: The respondent initiated a suit, CS(COMM) No. 430/2022, before the District Judge (Commercial Courts), South District, Saket Courts, Delhi, seeking an injunction against the appellants for trademark infringement and passing off. On February 21, 2024, the District Judge granted an ad-interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, restraining the appellants from using the 'KRB' mark. Aggrieved, the appellants filed an appeal (FAO(COMM) 69/2024) before the High Court of Delhi, challenging the injunction on grounds including lack of jurisdiction, non-use of the respondent’s mark on goods, absence of deceptive similarity, acquiescence, and abandonment. 

Legal Issue: The primary legal issue in this case is whether the appellants’ use of the trademark 'KRB' infringes the respondent’s registered trademark 'KRBL' under Class 35 and constitutes passing off, warranting an ad-interim injunction?

Subsidiary issues include whether the respondent’s registration in Class 35 extends protection to goods in Class 30, whether the respondent acquiesced to the appellants’ use of the mark, whether the respondent abandoned its mark by withdrawing its Class 30 registration, and whether the District Judge had territorial jurisdiction to entertain the suit? 

Discussion on Judgments: The parties relied on several judicial precedents to support their arguments, each cited in specific contexts to address trademark law principles, acquiescence, abandonment, and jurisdiction.

The appellants cited Edward v. Dennis, (1885) 30 Ch D 454, to argue that trademark protection requires actual use on goods, asserting that the respondent’s non-use of 'KRBL' on its products (which were sold under brands like 'India Gate') precluded infringement claims. 

Similarly, In re Ducker’s Trade Mark, [1929] 1 Ch 113, was referenced to emphasize that trademark rights depend on use, reinforcing their claim of the respondent’s non-use. 

The appellants also relied on Thermax Trade Mark, (1985) RPC 403, and George Key Ld’s TM, (1953) 71 RPC, to support the requirement of actual use for trademark protection. 

Have a Break Trade Mark, 1993 RPC Volume 10, was cited to argue that the respondent’s mark, registered in Class 35 (services), does not extend to Class 30 (goods). 

Sumant Prasad Jain v. Sheojanam Prasad, (1973) 1 SCC 56, was invoked to underline the necessity of use for trademark rights. 

On jurisdiction, the appellants cited Dhodha House v. S.K Maingi, (2006) 9 SCC 41, Jay Engineering Works Ltd. v. Ramesh Aggarwal, 2006 SCC OnLine Del 1356, Indian Performing Rights Society Limited v. Sanjay Dalia, (2015) 10 SCC 161, and Shree Nath Heritage Liquor Pvt. Ltd. v. Octga Green Power & Sugar Co. Ltd., 2017 SCC OnLine Del 9137, arguing that the suit was filed in the wrong territorial jurisdiction. 

For acquiescence, they relied on Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, and M/s KRBL Limited v. Lal Mahal Ltd. & Anr., 2015 SCC OnLine Del 13793, asserting that the respondent’s delay and prior business dealings constituted acquiescence. 

On the anti-dissection principle, the appellants cited Stiefel Laboratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296, Parle Products v. J.P & Co., AIR 1972 SC 1359, and Griffith v. Vick Chemicals, AIR 1956 Cal 654, arguing that the marks must be compared as a whole, not dissected into parts.

The respondent countered with Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, Jaquar Company Pvt Ltd. v. Villeroy Boch Ag & Anr., 2023 SCC OnLine Del 2734, Montari Overseas Ltd. v. Montari Industries Ltd., 1996 16 PTC 142, and Montari Industries Ltd. v. Montari Overseas Ltd., (1995) 15 PTC 399, to argue that a trade name can function as a trademark if it serves as a source identifier, supporting their claim of continuous use of 'KRBL'. 

For deceptive similarity and dishonest adoption, they cited Midas Hygiene Industries (P) Ltd. & Anr. v. Sudhir Bhatia & Ors., (2004) 3 SCC 90, Sterling Agro Industries Limited v. AST Trading Company & Ors., 2024 SCC OnLine Del 1145, T.V Venugopal v. Ushodaya Enterprises Limited & Anr., (2011) 4 SCC 85, M/s Ansul Industries v. M/s Shiva Tobacco Company, ILR (2007) I Delhi 409, and Rolex SA v. Alex Jewellery Pvt Ltd. & Ors., 2009 SCC OnLine Del 753, asserting that the appellants’ mark 'KRB' was likely to cause confusion. 

On abandonment, the respondent relied on McCarthy on Trademarks, Chapter 17, and Hardie Trading Ltd. & Anr. v. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92, arguing that abandonment requires an intent to permanently relinquish rights, which was absent given their immediate reapplication for Class 30 registration. 

For diligence in protecting their mark, they cited N.R Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 16 PTC 476. 

On acquiescence, they referenced Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited, (2019) 80 PTC 491, arguing that low-level business transactions did not imply management knowledge or consent. Finally, on the extension of Class 35 protection to Class 30, they cited FDC Limited v. Docsuggest Healthcare Services Pvt Ltd. & Ors., 2017 (69) PTC 218 (Del), emphasizing the allied nature of goods and services.

Reasoning and Analysis of the Judge:The Division Bench cited Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727, and Ramakant Ambalal Choksi v. Harish Ambalal Choksi & Ors., 2024 SCC OnLine SC 3538, which hold that an appellate court should not interfere with a trial court’s discretionary order unless it is arbitrary, capricious, or perverse. The court emphasized that perversity arises from a complete misreading of evidence or reliance on conjectures, not merely a different interpretation of facts.

On the substantive issues, the court rejected the appellants’ claim that the respondent’s mark 'KRBL', registered in Class 35, did not extend to Class 30 goods. Citing Section 2(2)(c) of the Trade Marks Act, 1999, and Google Llc v. DRS Logistics (P) Limited & Ors., 2023 SCC OnLine Del 4809, the court held that the use of a mark encompasses not only physical application but also any relation to goods or services, such as advertising or marketing. The respondent’s extensive documentation, including invoices and sales figures from 2000 to 2021, demonstrated continuous use of 'KRBL' as a source identifier, satisfying the definition of a trademark under Section 2(1)(zb). The court found that the appellants’ mark 'KRB' was deceptively similar to 'KRBL', as the dominant parts of the marks were nearly identical, likely causing consumer confusion, especially given the identical goods (rice) involved.

Addressing acquiescence, the court relied on Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, and Make My Trip (India) Pvt. Ltd., (2019) 80 PTC 491, holding that acquiescence requires positive acts of encouragement, not mere silence or low-level transactions. 

The respondent’s lack of knowledge about the appellants’ use until 2022, despite earlier trademark oppositions in 2016, negated acquiescence. The court also dismissed the abandonment argument, noting that the respondent’s withdrawal of its Class 30 registration in 2017, followed by an immediate reapplication, was due to erroneous legal advice and did not indicate an intent to abandon, as required by McCarthy on Trademarks and Hardie Trading Ltd., (2003) 11 SCC 92.

On jurisdiction, the court found that the respondent’s pleadings regarding the availability of infringing products online supported the South District’s jurisdiction under Section 134 of the Trade Marks Act, deeming the issue a matter for trial. The court concluded that the respondent established a prima facie case of infringement and passing off, with the balance of convenience and risk of irreparable injury favoring the injunction.

Final Decision:The High Court dismissed the appeal, upholding the District Judge’s ad-interim injunction against the appellants. 

Law Settled in This Case: This case reinforces several key principles of trademark law in India. First, it clarifies that a trade name can function as a trademark if it serves as a source identifier, even if not physically affixed to goods, as per Sections 2(1)(m), 2(1)(zb), and 2(2)(c) of the Trade Marks Act, 1999. 

Second, it establishes that trademark protection under Class 35 (services) can extend to Class 30 (goods) if the goods and services are allied, focusing on the likelihood of confusion rather than strict class boundaries. Third, it reiterates that acquiescence requires positive acts of encouragement, not mere silence or low-level transactions, and that abandonment necessitates a clear intent to relinquish rights. Finally, the case underscores the limited scope of appellate interference in discretionary injunction orders, requiring a demonstration of perversity or arbitrariness.

KRB Enterprises Vs KRBL Limited :May 26, 2025 : FAO(COMM) 69/2024 :2025:DHC:4364-DB :High Court of Delhi:Hon'ble Judge: Justice Navin Chawla and Justice Shalinder Kaur  

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

Introduction: The case of Zeria Pharmaceutical Co. Ltd. v. The Controller of Patents is a pivotal judgment from the Delhi High Court that reinforces the interpretative approach toward patentability criteria under the Indian Patents Act, 1970, particularly concerning the tests laid out under Section 2(1)(ja) and Section 3(d). The Court’s analysis offers essential guidance on what constitutes an “inventive step” and how the “therapeutic efficacy” of pharmaceutical compounds must be substantiated to satisfy the stringent demands of patent law in India.

Factual Background: Zeria Pharmaceutical Co. Ltd., a Japanese pharmaceutical company, filed Indian Patent Application No. 3630/DELNP/2011 on May 13, 2011. This application was a divisional application from an earlier application numbered 1090/DELNP/2007 and claimed a novel intermediate compound described as 2-[(2-hydroxy-4,5-dimethoxybenzoyl) amino]-1,3-thiazole-4-carboxylic acid methyl ester. The company claimed the invention involved a methyl ester functional group on a thiazole ring system and was an essential intermediate for the synthesis of an active pharmaceutical ingredient. The compound was distinguished from the prior art primarily by the substitution of a methoxycarbonyl group instead of an ethoxycarbonyl group.

Procedural Background: The Indian Patent Office issued the First Examination Report (FER) on February 24, 2015, raising objections under Section 2(1)(ja) on lack of inventive step and Section 3(d) for being a mere derivative of a known compound without enhanced efficacy. Following a written response by the applicant and a hearing on June 12, 2016, the Assistant Controller of Patents refused the application via an order dated October 20, 2016. Aggrieved, Zeria Pharmaceutical appealed under Section 117A of the Patents Act before the Delhi High Court. The appeal was heard and reserved on April 23, 2025, and the judgment was pronounced on May 27, 2025.

Legal Issue: The central legal issue before the Court was whether the subject invention satisfied the dual statutory requirements of inventive step under Section 2(1)(ja) and non-attractiveness of Section 3(d) of the Patents Act, 1970? Specifically, the Court was called upon to decide whether the claimed compound, being a structural variation of a compound disclosed in prior art, constituted a patentable invention or fell within the exclusion of Section 3(d) for lacking therapeutic efficacy?

Discussion on Judgments: The appellant relied on the judgment of the Delhi High Court in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd., 2015 SCC OnLine Del 13619, to argue that an invention must be assessed on whether a person skilled in the art (PSITA) would be motivated to modify the teachings of prior art to arrive at the claimed invention. The appellant also cited Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940, to contend that the Controller must provide cogent reasoning on how the invention would be obvious to a PSITA, rather than relying on broad conclusions.

In response, the Controller relied on the landmark decision of the Supreme Court in Novartis AG v. Union of India, (2013) 6 SCC 1, where it was categorically held that the test of efficacy under Section 3(d) in the context of pharmaceutical products means “therapeutic efficacy.” The Court held that mere improvements in physical properties like solubility or stability, unless linked to therapeutic benefit, are not relevant under Section 3(d). The Controller also cited Novozymes v. Assistant Controller of Patents & Designs, T. CMA (PT) No. 33 of 2023 (Madras High Court), which clarified that Section 3(d) operates as a statutory exclusion and may independently bar patentability even if Section 2(1)(j) or (ja) is satisfied. Additionally, the decision in Astrazeneca AB and Another v. Torrent Pharmaceuticals Ltd., 2020 SCC OnLine Del 1446, was invoked to rebut the appellant’s “teaches away” argument, emphasizing that mere absence of direction toward an invention does not imply discouragement or negation by prior art.

Reasoning and Analysis of the Judge:  The Court observed that while the invention might satisfy the criteria for novelty, it failed to pass the filter of Section 3(d) due to lack of evidence demonstrating therapeutic efficacy. The claimed compound and the compound in the prior art differed only in the substitution of a methoxy group for an ethoxy group, which, in the Court’s view, was a minor and obvious variation for any person skilled in the art.

The Court critically examined the experimental data submitted by the appellant and noted that it failed to demonstrate any enhancement in therapeutic efficacy. Even the appellant had conceded in submissions that therapeutic efficacy could not be measured as the compound was merely an intermediate. The Court emphasized that the burden lay on the applicant to establish significant difference in efficacy, and this burden had not been discharged.

On the issue of inventive step under Section 2(1)(ja), the Court held that the invention was obvious in light of the teachings of prior art documents D1 (EP 0994108 A1) and D2 (US 5981557 A). Both prior arts disclosed compounds structurally similar to the claimed compound and described alkoxy substitutions including methoxy and ethoxy. The Court found the claimed invention to be a predictable variant within the realm of routine experimentation, not amounting to a technical advancement or economic significance.

Further, the Court rejected the appellant’s argument that prior art D1 “taught away” from the claimed invention. It held that the absence of specific guidance toward the invention does not imply discouragement, and thus does not negate obviousness if the path to invention is reasonably discernible to a skilled artisan.

Final Decision: The Delhi High Court upheld the decision of the Controller of Patents, dismissing the appeal filed by Zeria Pharmaceutical Co. Ltd. The Court concluded that the subject application failed both the inventive step requirement under Section 2(1)(ja) and the efficacy bar under Section 3(d) of the Patents Act. It found no merit in the applicant’s claim that the compound was patentable and accordingly affirmed the rejection of the patent application.

Law Settled in This Case: Firstly, Section 3(d) is an independent and absolute bar to patentability and may exclude a claim even if novelty or inventive step is satisfied under Section 2(1)(j) or (ja). Secondly, therapeutic efficacy under Section 3(d) must be demonstrated through specific data and cannot be presumed from structural variations or physico-chemical improvements. Thirdly, routine substitutions or modifications known to a skilled artisan cannot constitute inventive step unless they result in unexpected advantages or substantial technical advancements. Lastly, the Zeria Pharmaceutical, which was absent in the present case.

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

GSP Crop Science Pvt. Ltd. Vs. BR Agrotech Limited

Admission under Order 12 Rule 6 CPC as a Tool for Swift Decision in Patent Litigation

Introduction: The case of GSP Crop Science Pvt. Ltd. v. BR Agrotech Limited and Anr represents a significant judicial pronouncement in the realm of Indian patent law, particularly concerning the enforcement of patent rights against secondary actors in the supply chain, such as marketers or sellers. The plaintiff, GSP Crop Science Pvt. Ltd., a prominent agrochemical company, initiated legal action against BR Agrotech Limited (Defendant No.1) and another entity (Defendant No.2) for infringing its Indian Patent No. 394568, which pertains to a synergistic suspo-emulsion formulation comprising Pyriproxyfen and Diafenthiuron. The case, adjudicated by the High Court of Delhi, culminated in a judgment on admission under Order XII Rule 6 of the Code of Civil Procedure, 1908, highlighting the court's approach to patent infringement claims based on clear admissions by the defendant. 

Factual Background: GSP Crop Science Pvt. Ltd., a company registered under the Companies Act, 1956, with its office in Ahmedabad, Gujarat, is engaged in the manufacture and sale of agrochemicals. The company has invested significantly in research and development to create affordable products for Indian farmers, resulting in over 70 patents and patent applications, including Indian Patent No. 394568 (hereinafter referred to as IN'568). This patent, granted in 2022, covers a synergistic suspo-emulsion formulation comprising Pyriproxyfen (in the range of 1 to 15%) and Diafenthiuron (25 to 55%), along with specific excipients. The patent's application, filed in 2014, survived seven pre-grant oppositions under Section 25(1) of the Patents Act, 1970, and was upheld by the Indian Patent Office. 

The plaintiff commercialized this invention as an insecticide named SLR 525, containing 5% Pyriproxyfen and 25% Diafenthiuron, which received approval under Section 9(3) of the Insecticides Act, 1968, in August 2018. In 2022-23, the plaintiff discovered that Defendant No.2 was selling a product named Roxyfin, a suspo-emulsion with the identical composition of 5% Pyriproxyfen and 25% Diafenthiuron, manufactured by Defendant No.1 under a Central Insecticides Board and Registration Committee (CIBRC) license (CIR-172356-2020) obtained under Section 9(4) of the Insecticides Act, 1968. The plaintiff alleged that Roxyfin infringed IN'568, as its composition fell squarely within the patent's claims, causing irreparable harm by undermining the plaintiff's exclusive rights.

Procedural Background: The plaintiff instituted the suit, CS(COMM) 82/2023, seeking a permanent injunction to restrain both defendants from infringing IN'568, along with ancillary reliefs. On February 16, 2023, the High Court of Delhi granted an ad interim injunction in favor of the plaintiff against both defendants. Subsequently, on March 3, 2023, the suit was decreed against Defendant No.1 based on a settlement, wherein Defendant No.1 acknowledged the plaintiff's exclusive rights and admitted to manufacturing and supplying Roxyfin to various entities, including Defendant No.2. The interim injunction against Defendant No.2 was made absolute on July 4, 2024. The plaintiff then filed an application under Order XII Rule 6 of the Code of Civil Procedure, 1908, seeking a judgment on admission against Defendant No.2, relying on affidavits and statements where Defendant No.2 admitted to selling Roxyfin. Defendant No.2 contested the application, arguing it was merely a marketer acting under Defendant No.1’s license, lacked intent to infringe, and that the settlement with Defendant No.1 extinguished any claims against it. The court reserved its judgment on July 11, 2025, and pronounced it on July 25, 2025.

Core Dispute: The central issue in this case was whether Defendant No.2’s act of selling Roxyfin, a product with the same chemical composition as the plaintiff’s patented SLR 525, constituted infringement of IN'568 under Section 48 of the Patents Act, 1970, and whether the admissions made by Defendant No.2 in its affidavits warranted a judgment on admission under Order XII Rule 6 of the Code of Civil Procedure, 1908. The plaintiff argued that Defendant No.2’s sale of Roxyfin, which matched the patented formulation, violated its exclusive rights, and the admissions in Defendant No.2’s affidavits were clear, unequivocal, and sufficient to decree the suit without a trial. Defendant No.2 countered that it was only a marketer, not the manufacturer, and relied on Defendant No.1’s CIBRC license, claiming no intent to infringe and asserting that the settlement with Defendant No.1 absolved it of liability. The dispute thus hinged on the interpretation of Section 48, the scope of patent infringement liability for sellers, and the applicability of Order XII Rule 6 based on Defendant No.2’s admissions.

Discussion on Judgments: The court and the parties relied on several judicial precedents to support their positions. The plaintiff cited Uttam Singh Duggal & Co. Ltd. v. United Bank of India, reported as (2000) 7 SCC 120, to argue that Order XII Rule 6 enables courts to pass judgments on clear admissions when a party’s defense is untenable, and no plausible explanation is provided to counter the admissions. This precedent was invoked to emphasize that Defendant No.2’s admissions regarding the sale of Roxyfin justified a decree without trial. The plaintiff also relied on Delhi Jal Board v. Surendranath, reported as (2000) 7 SCC 120, to reinforce that courts can expedite justice under Order XII Rule 6 when admissions render further trial unnecessary. Additionally, the plaintiff referred to National Textile Corporation Ltd. v. Ashval Vadera, reported as 91 (2001) DLT 386, to argue that admissions, even if not explicit, can be inferred from vague denials or documents, and courts must prevent misuse of judicial processes by decreeing suits based on such admissions. The court found these precedents persuasive, noting that Defendant No.2’s affidavits dated May 2, 2023, and April 13, 2023, unequivocally admitted sales of Roxyfin, aligning with the principles in these cases. The court also cited Merck Sharp & Dohme Corp. v. Sanjeev Gupta, reported as unreported by the Delhi High Court, to interpret Section 48 of the Patents Act, 1970. In Merck, a coordinate bench rejected the argument that infringement under Section 48 requires all activities (making, using, selling, importing) to occur in India, emphasizing the disjunctive “or” in the provision, which holds any single act, such as selling, as sufficient for infringement liability. This was critical in dismissing Defendant No.2’s defense that it was merely a marketer, as the court held that selling alone triggered liability under Section 48.

Reasoning and Analysis of the Judge: The judge first addressed the scope of IN'568, noting that the patent’s claims covered a suspo-emulsion with 1-15% Pyriproxyfen and 25-55% Diafenthiuron, and Roxyfin’s composition (5% Pyriproxyfen and 25% Diafenthiuron) fell squarely within this scope, as confirmed by the infringement analysis in the plaint. The court emphasized that Section 48 of the Patents Act, 1970, grants the patentee exclusive rights to prevent third parties from making, using, offering for sale, selling, or importing the patented product without consent. The use of the disjunctive “or” in the provision meant that Defendant No.2’s act of selling Roxyfin was sufficient to constitute infringement, irrespective of its role as a marketer rather than a manufacturer. The court rejected Defendant No.2’s defense that it relied on Defendant No.1’s CIBRC license under Section 9(4) of the Insecticides Act, 1968, holding that such a license does not override patent rights under the Patents Act, 1970, and allowing such a defense would undermine the patentee’s monopoly. 

The judge further analyzed Defendant No.2’s affidavits, particularly those dated May 2, 2023, and April 13, 2023, where it admitted to purchasing and selling significant quantities of Roxyfin, generating substantial revenue. These admissions were deemed clear, unequivocal, and unambiguous, satisfying the requirements for a judgment on admission under Order XII Rule 6 of the Code of Civil Procedure, 1908. The court dismissed Defendant No.2’s argument that the settlement with Defendant No.1 extinguished its liability, noting that the settlement did not cover Defendant No.2’s independent acts of infringement. Drawing on the principles from Uttam Singh Duggal and National Textile Corporation, the court underscored its duty to prevent prolonged litigation and misuse of judicial processes, particularly when admissions rendered the defense untenable. The judge also addressed Defendant No.2’s claim of bona fide marketing, finding it irrelevant under Section 48, which imposes strict liability for infringement without exceptions for intent or reliance on a third party’s license.

Final Decision :The High Court of Delhi allowed the plaintiff’s application under Order XII Rule 6 and decreed the suit in favor of GSP Crop Science Pvt. Ltd. against Defendant No.2 on July 25, 2025. The court issued a permanent injunction restraining Defendant No.2 from making, using, selling, offering for sale, or importing any product infringing IN'568. Defendant No.2 was directed to pay damages of Rs. 50,00,000 to the plaintiff within six weeks, with an interest rate of 6% per annum on the sum if unpaid within the stipulated period. Additionally, the court imposed costs and special costs of Rs. 2,00,000, payable to the Delhi High Court Bar Association Lawyers Social Security and Welfare Fund within six weeks. All pending applications were disposed of, and a decree sheet was ordered to be drawn up accordingly.

Law Settled in This Case :This case reinforces several key principles in Indian patent law and civil procedure. It clarifies that under Section 48 of the Patents Act, 1970, any act of selling a patented product without the patentee’s consent constitutes infringement, regardless of the actor’s role in the supply chain (e.g., marketer or seller) or their reliance on a third party’s regulatory license, such as one under the Insecticides Act, 1968. The use of the disjunctive “or” in Section 48 establishes that each enumerated act (making, using, selling, offering for sale, importing) independently triggers liability, without requiring territorial nexus for all activities. The case also underscores the potency of Order XII Rule 6 of the Code of Civil Procedure, 1908, as an enabling provision to expedite justice when clear, unequivocal admissions are made, eliminating the need for a trial. Furthermore, it emphasizes the court’s duty to prevent misuse of judicial processes by decreeing suits based on admissions, particularly to protect patentees from prolonged litigation that undermines their exclusive rights. The decision highlights that defenses based on bona fide intent or third-party licenses are untenable against patent infringement claims, reinforcing the strict liability nature of Section 48.

Case Title: GSP Crop Science Pvt. Ltd. v. BR Agrotech Limited and Anr
Date of Order: July 25, 2025
Case Number: CS(COMM) 82/2023
Neutral Citation: 2025:DHC:6055:
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

Exide Industries Limited Vs. Amara Raja Energy

Trade Dress Infringement in the Indian Battery Industry

Introduction: The case of Exide Industries Limited versus Amara Raja Energy and Mobility Limited represents a significant adjudication in the realm of intellectual property law, specifically concerning trademark infringement and passing off. Heard in the Intellectual Property Rights Division of the High Court at Calcutta, this dispute encapsulates the tension between established brand identity and alleged imitation by a trade rival. Exide, a long-standing leader in the lead-acid battery industry, accused Amara Raja, a key competitor, of adopting a deceptively similar trade dress and trademark elements, threatening its century-long goodwill. This case study delves into the factual matrix, procedural journey, core issues, judicial reasoning, and the legal principles solidified through the judgment, offering insights into the evolving jurisprudence of passing off in India.

Factual Background: Exide Industries Limited, originally incorporated as Associated Battery Makers (Eastern) Coal Ltd., has been a pioneer in manufacturing and marketing lead-acid batteries since 1920 under the trademark "EXIDE." Over time, Exide has grown into one of South-East Asia’s largest power storage solutions companies, operating manufacturing units across India and maintaining an extensive network of dealers and distributors. The company’s flagship brand, "EXIDE," is closely associated with a distinctive red and white trade dress, prominently featuring the color red across its products, packaging, advertisements, and promotional materials. Exide also holds registered trademarks for "EL" (adopted in 1987) and a "shattered O device," used extensively in its product line, including automotive and industrial batteries. The consistent and prolonged use of these elements has established a strong connection between the red color scheme and Exide’s brand identity in the public mind.

Amara Raja Energy and Mobility Limited, a major competitor, markets its batteries under the "AMARON" brand, traditionally associated with a green trade dress. For three decades, Amara Raja has built its reputation around this green color, evident in its products, advertising campaigns, and publicity materials. However, the dispute arose when Amara Raja launched a new product, "ELITO," initially in a blue trade dress for international markets in 2020. Subsequently, in India, Amara Raja shifted to a red trade dress for "ELITO," incorporating a red and white color combination and a shattered "O" device, which Exide alleged mirrored its own branding. Exide claimed that this shift was a deliberate attempt to capitalize on its goodwill, citing the visual and structural similarities between the products, including the use of the letters "EL" and the shattered "O" device.

Procedural Background:The matter was brought before the High Court at Calcutta, Intellectual Property Rights Division, Original Side, as a suit for infringement and passing off, registered as IP-COM/18/2025, with an interlocutory application (IA NO. GA-COM/1/2025) seeking an injunction to restrain Amara Raja from using the disputed trade dress and mark. Exide sought to protect its trademark and trade dress rights, arguing that Amara Raja’s actions constituted passing off by creating confusion among consumers. Amara Raja countered that the color red was not distinctive to Exide, was commonly used in the industry, and that no confusion arose from their product.

Core Dispute:The central issue in this case was whether Amara Raja’s adoption of a red trade dress for its "ELITO" product, along with the use of the letters "EL" and a shattered "O" device, constituted passing off by misrepresenting its goods as those of Exide. Exide argued that its long-standing use of the red and white trade dress, combined with its registered trademarks "EL" and the shattered "O" device, had created a strong association with its brand, making Amara Raja’s similar trade dress deceptively similar and likely to confuse consumers. Amara Raja contended that the color red lacked distinctiveness in the battery industry, citing its use by other brands, and argued that no monopoly could be claimed over a single color. Additionally, they claimed that their product’s branding was sufficiently distinct and that consumer purchasing decisions were not solely based on color, negating any likelihood of confusion.

Discussion on Judgments:Both parties relied on a range of judicial precedents to support their arguments, reflecting the complex interplay of trademark and passing off principles. Exide cited several cases to establish the protectability of its trade dress and goodwill. In Jones vs Hallworth, Reports of Patent, Design and Trademark, Vol XIV, No.8, Exide highlighted the recognition of cumulative deceptive elements leading to passing off. Cadbury-Schweppes Pty. Ltd. vs The Pub Squash Co Ltd, [1981] RPC 429, was referenced to underscore the importance of reputation and misrepresentation, though the court distinguished it due to the absence of significant deception in that case. Cadilla Health Care Ltd. vs Cadilla Pharmaceuticals Ltd., [2001] 5 SCC 73, was cited to emphasize the relevance of Indian consumer perspectives, including those of less literate buyers, in assessing confusion. Colgate Palmolive Company & Another vs Anchor Health and Beauty Care Pvt Ltd, 2003 SCC Online Del 1005, supported Exide’s claim that a distinctive color combination could acquire secondary meaning. Satyam Infoway Ltd. vs Siffynet Solutions Pvt Ltd, [2004] 6 SCC 145, was used to argue that reputation and misrepresentation do not require long usage if significant goodwill is established. Euro Solo Energy Systems Limited vs Everready Industries Limited, 2009 SCC Online Cal 1991, reinforced the applicability of passing off principles in Indian contexts. Squet International Private Limited vs Sanwal Chand Babulal and Another, 2016 SCC Online Bom 7712, was cited to highlight deceptive similarity in trade dress. Societe des Produits Nestle SA vs Cadbury UK Ltd, [2017] EWCA Civ 358, and Sanjay Soya Private Limited vs Narayani Trading Company, 2021 SCC Online Bom 407, supported the protectability of distinctive trade dress elements. Qualitex Co vs Jacobson Prods Co, 514 U.S. 159, was referenced to argue that colors could acquire secondary meaning under certain conditions. Finally, Emami Limited vs Hindustan Unilever Limited, 2024 SCC Online Cal 3579, was cited to underscore the impermissibility of adopting a competitor’s prominent trade dress elements.

Amara Raja, in defense, cited Kellogg Company vs Pravin Kumar, ILR (1996) II Delhi 11, to argue that Exide’s trade dress lacked distinctiveness due to common industry usage. Dr. Martens Australia Pty Ltd. vs Figgins Holdings Pty Ltd., [1999] FCA 461, supported their contention that a single color could not be monopolized. Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd., [2001] 5 SCC 73, was referenced to emphasize the need for clear evidence of confusion. Colgate Palmolive Company Limited & Anr. vs Patel & Anr., [2005] SCC Online Del 1439, was cited to argue that Exide’s claim over red was untenable without secondary meaning. Wal-Mart Stores vs Samara Bros, 529 U.S. 205, supported the argument that trade dress must be inherently distinctive or have acquired secondary meaning. Cipla Ltd. vs MK Pharmaceuticals, [2007] SCC Online Del 2012, was used to challenge the protectability of colors in trade dress. Star Bazaar Pvt. Ltd. vs Trent Ltd., [2010] SCC Online Del 4764, highlighted honest concurrent use as a defense. Specsavers International Healthcare Ltd. & Ors. vs Asda Stores Ltd., [2012] EWCA Civ 24, was cited to argue that Exide’s trade dress was not exclusively associated with its brand. Britannia Industries Ltd. vs ITC Ltd., [2017] SCC Online Del 7919, supported the argument that short-term use of a color does not establish goodwill. Godfrey Phillips India Ltd. vs P.T.I Pvt Ltd., [2017] SCC Online 12509, and Khadi and Village Industries Commission vs Girdhar Industries and Another, [2023] SCC Online Del 8446, were referenced to emphasize the need for distinctiveness and evidence of confusion. Brihan Karan Sugar Syndicate Pvt. Ltd. vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, [2024] 2 SCC 577, was cited to argue that passing off requires clear misrepresentation. Additional cases, such as Reckitt & Colman Products Ltd. vs Borden, [1990] 1 WLR 491, and R. Johnston & Co. vs Archibald Orr Ewing & Co., [1882] 7 App. Cas. 219, were referenced by the court to elucidate the principles of passing off, focusing on reputation, misrepresentation, and damage.

Reasoning and Analysis of the Judge: The court recognized Exide’s century-long use of the red and white trade dress, which had become a prominent and integral feature of its brand identity in the automotive battery industry. The judge noted that Exide’s goodwill was not merely tied to the color red but to the overall trade dress, including the registered "EL" mark and the shattered "O" device, which collectively acted as source identifiers. The court found Amara Raja’s shift from a blue to a red trade dress for "ELITO" in India, without a credible explanation, to be a deliberate attempt to approximate Exide’s branding. The respondent’s affidavit, claiming feedback from an overseas distributor about the blue color’s lack of vibrancy, was deemed self-serving and contradictory, especially given Amara Raja’s continued use of blue batteries internationally. The court emphasized that Amara Raja’s choice of red, identical to Exide’s shade, alongside the use of "EL" and a similar shattered "O" device, indicated bad faith and intent to deceive.

The judge rejected Amara Raja’s argument that the color red was common in the industry, distinguishing cases like Britannia Industries Ltd. vs ITC Ltd., where the plaintiff’s use of the color was brief and lacked distinctiveness. The court highlighted that Exide’s consistent and prolonged use had created a strong association with its brand, distinguishable from smaller competitors’ use of red. The judge also considered the Indian market’s diverse consumer base, including less literate buyers, who might be confused by the visual similarities. Citing Satyam Infoway Ltd. vs Siffynet Solutions Pvt Ltd., the court inferred that Amara Raja’s actions were calculated to capitalize on Exide’s reputation, supported by actions such as removing incriminating online evidence during the hearing. The court clarified that while no monopoly over a single color was claimed, the cumulative effect of the trade dress similarities warranted protection to prevent consumer confusion and dilution of Exide’s brand equity.

Final Decision: The court granted an injunction in favor of Exide Industries Limited, restraining Amara Raja Energy and Mobility Limited from using the red trade dress, the "EL" mark, and the shattered "O" device for its "ELITO" product. The decision was based on the prima facie findings of deceptive similarity, bad faith, and likelihood of confusion. Amara Raja was initially given one month to comply with the order, but upon request, the court extended this period to two months. The interlocutory application was disposed of, with directions for an early hearing of the main suit to resolve the matter comprehensively.

Law Settled in This Case: This case reinforces the principles of passing off under Indian trademark law, particularly the application of the classic trinity test of reputation, misrepresentation, and damage. It clarifies that while a single color cannot be monopolized, a distinctive trade dress comprising a color scheme, specific marks, and design elements can acquire secondary meaning through long and consistent use, meriting protection. The judgment underscores the importance of intent in passing off cases, where a competitor’s deliberate adoption of a rival’s branding elements can tilt the scales in favor of finding deception. The decision aligns with Section 27 of the Trade Marks Act, 1999, affirming the common law remedy of passing off for unregistered marks and trade dress, emphasizing fairness in competition and the prevention of parasitic practices.

Case Title: Exide Industries Limited vs Amara Raja Energy and Mobility Limited

Date of Order: 24 July 2025

Case Number: IP-COM/18/2025

Name of Court: High Court at Calcutta

Name of Judge: Hon'ble Justice Ravi Krishan Kapur

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

Vijay Vs. Havells India Limited

Vijay Vs. Havells India Limited:July 14, 2025:CM(M)-IPD 29/2025 :2025:DHC:5771:Hon'ble Justice Shri Amit Bansal

Havells India Limited, the respondent/plaintiff, filed a commercial suit (CS(COMM) 294/2024) against Vijay, the petitioner/defendant, alleging trademark infringement through the unauthorized use of the "HAVVELS" trademark/trade name. On May 27, 2024, the Commercial Court issued an ex parte ad interim injunction restraining Vijay from using the trademark and appointed Local Commissioners, Mr. Chitra Gupt Dugar and Mr. Kunal Kumar, to inspect and seize infringing goods from Vijay’s premises at House No. 4/1888, Rama Block, Gali No. 3, Shahdara, Delhi-110032. The court authorized the Commissioners to visit additional premises if infringing goods were found, seize materials like packaging boxes and printing plates, and videograph the proceedings. Raids were conducted on June 1, 2024, and June 17, 2024, including at another property, House No. 4/1877, Rama Block, Gali No. 3, Shahdara, Delhi-110032, where infringing items were seized. The Commissioners filed their reports, and Vijay raised objections, alleging the raids were illegal and exceeded the court’s mandate.

Procedurally, Vijay filed an application under Order XVI Rule 1 and 6 of the CPC to summon Mr. Kunal Kumar, which was dismissed on May 31, 2025. A subsequent application under Order XXVI Rule 10 to examine both Commissioners was dismissed on June 5, 2025, prompting Vijay to file the present petition challenging the dismissal. The Commercial Court had framed an issue on March 7, 2025, questioning the legality of the raids conducted on June 1 and June 17, 2024.

The core dispute centered on Vijay’s claim that the Local Commissioners exceeded their authority by raiding unauthorized premises and that Mr. Kunal Kumar’s participation in the June 17 raid was improper, rendering it illegal. Vijay argued that examining the Commissioners was necessary to prove these violations, while Havells contended the raids were within the court’s mandate and Vijay’s applications were delay tactics.

The High Court reviewed the objections and found them meritless. The May 27, 2024, order explicitly allowed the Commissioners to inspect additional premises where infringing goods were suspected, justifying the raid on House No. 4/1877. The court clarified that Mr. Kunal Kumar accompanied Mr. Dugar at the latter’s request, negating claims of illegality. The court noted that procedural compliance, such as videography, was the plaintiff’s responsibility, not the Commissioners’. Citing Order XXVI Rule 10 of the CPC, the court emphasized that summoning Commissioners is discretionary and requires justification, which Vijay failed to provide, as his objections were already addressed by the Commercial Court on May 31, 2025.

The High Court dismissed Vijay’s petition, finding no grounds to justify examining the Commissioners, and disposed of the pending application.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Veerji Restaurant Pvt. Ltd. Vs. Yash Rai

Veerji Restaurant Pvt. Ltd. Vs. Yash Rai:July 8, 2025:CS(COMM) 662/2023:2025:DHC:5834: Hon'ble Mr. Justice Amit Bansal

The plaintiff, Veerji Restaurant Pvt. Ltd., a company incorporated on November 9, 2020, operates a leading restaurant chain under the trademark VEERJI MALAI CHAAP WALE, adopted in 2016 by its predecessor proprietorship. The mark, incorporating the Punjabi word "VEERJI" meaning brother, is used for food and restaurant services. 

The plaintiff runs approximately 70 branches across India, achieving significant sales, including Rs. 3,61,39,58,690/- in 2022-23, and promotes its business through its website, food delivery platforms like Zomato and Swiggy, and social media such as YouTube, Instagram, and Facebook. The plaintiff has invested heavily in advertising, spending Rs. 4,00,99,86,340/- in 2022-23, and engaged actor Vindu Dara Singh as its brand ambassador. The plaintiff holds multiple trademark registrations for VEERJI-formative marks and a copyright in the label's artistic work. 

In September 2023, the plaintiff discovered that defendants Yash Rai and others were using identical or deceptively similar marks, such as VEER JI MALAI CHAAP WALE and THE VEER JI MALAI CHAAP WALE, for their restaurant and food delivery businesses in locations including Bhopal, Delhi, Raipur, Haridwar, and Moradabad. Defendant no.1 also maintained an Instagram profile under VEERJI_LALGHATI, and defendants no.2 to 6 were listed on food delivery platforms.

Procedurally, the suit was filed seeking a permanent injunction against trademark and copyright infringement and passing off, along with damages and costs. On April 25, 2024, the plaintiff and defendants no.1 and 4 were referred for mediation, resulting in a settlement with defendant no.1 on July 22, 2024. Defendants no.2, 3, and 6 did not appear, and defendant no.4 ceased appearing after the mediation referral. None of these defendants filed a written statement or contested the plaintiff's allegations, despite an interim injunction against them. The plaintiff sought a summary judgment under Order XIIIA of the Code of Civil Procedure due to the defendants' non-participation.

The core dispute involved the defendants' unauthorized use of marks identical or deceptively similar to the plaintiff's VEERJI MALAI CHAAP WALE trademark in identical restaurant and food delivery services. The plaintiff argued that this use infringed its registered trademarks and copyright and constituted passing off by exploiting its goodwill and reputation, deceiving consumers.

The court found that the plaintiff established continuous use of its mark since 2016, supported by significant sales, extensive promotion, and trademark and copyright registrations, creating substantial goodwill. A comparison of the plaintiff's and defendants' marks showed the defendants' marks were identical or similar, used for identical services, and likely to deceive consumers. The defendants' failure to contest the suit or provide a defense indicated mala fide intent and no real prospect of successfully defending the claims. Citing Su-Kam Power Systems Ltd. v. Kunwer Sachdev, the court noted that summary judgment is appropriate in commercial disputes where defendants lack a realistic defense, and no compelling reason exists for a trial. The court also referenced M/s Inter Ikea Systems BV v. Imtiaz Ahamed to justify imposing damages and costs when defendants evade proceedings.

The court decreed the suit in favor of the plaintiff against defendants no.2 to 6, granting the injunctions sought in prayer clauses 73(a) to 73(i) of the plaint. Each of these defendants was ordered to pay Rs. 1,00,000/- in damages and costs, totaling Rs. 5,00,000/-. The plaintiff did not press for additional reliefs, and the court directed the preparation of a decree sheet, disposing of all pending applications.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

PUMA SE Vs. Himanshu Sharma

PUMA SE Vs. Himanshu Sharma:July 9, 2025:CS(COMM) 383/2021:2025:DHC:5585:Hon'ble Mr. Justice Saurabh Banerjee

The plaintiff, PUMA SE, a globally reputed company engaged in manufacturing and selling sports apparel and accessories, sought a permanent injunction, damages, and other reliefs against the defendant, Himanshu Sharma, for trademark infringement and passing off. PUMA SE has used its trademarks, including the word "PUMA" and its logo, since 1948, with registrations in India since 1983 under Classes 18 and 25 of the Trade Marks Act, 1999. 

The plaintiff's trademarks were declared well-known by the Trade Mark Registry in India on February 19, 2024. The defendant was involved in selling counterfeit shoes bearing PUMA's trademarks through the website "www.thesheskart.com." In July 2021, PUMA received customer complaints about substandard shoes purchased from the defendant's website, and investigations confirmed the products were counterfeit, infringing PUMA's intellectual property rights.

The court issued an interim order on August 18, 2021, restraining the defendant from using PUMA's trademarks and directing the suspension of the defendant's domain name and associated URLs. The defendant failed to appear or file a written statement despite being served summons by publication on January 7, 2024, leading to the closure of their right to file a written statement on February 6, 2025. PUMA moved an application under Order XIIIA read with Order VIII Rule 10 of the Code of Civil Procedure for a summary judgment due to the defendant's non-participation.

The core dispute centered on the defendant's unauthorized use of PUMA's registered and well-known trademarks on counterfeit products, sold through the same trade channels and targeting the same customers as PUMA. The plaintiff provided evidence, including an Analysis Report dated August 12, 2021, from its Brand Protection Manager, confirming the counterfeit nature of the defendant's products. The defendant's products were found to be blatant copies of PUMA's, replicating essential trademark elements without variation.

The court found that the defendant's failure to appear or contest PUMA's claims resulted in the plaintiff's averments and documents being deemed admitted. The court noted the defendant's mala fide intent to exploit PUMA's goodwill, as evidenced by their adoption of identical trademarks and operation in the same market. Citing precedents like Koninklijke Philips N.V. v. Amazestore and Jawed Ansari v. Louis Vuitton Malleiter, the court emphasized that counterfeiting is a serious commercial malpractice that deceives consumers and undermines established brands. The defendant's willful evasion of proceedings further supported a stringent approach to damages.

The court decreed the suit in favor of PUMA SE, granting the reliefs sought in prayer paragraphs (a), (b), (c), (d), and (g) of the plaint. The defendant was directed to pay actual costs of Rs. 5,90,000 and damages of Rs. 2,10,000, totaling Rs. 8,00,000, within ninety days, with an interest of 6% per annum if unpaid within that period. The suit was disposed of, and a decree sheet was ordered to be drawn up.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Products and Ideas (India) Pvt. Ltd. Vs Nilkamal Limited

Prior Use and Global Trademark Strategy

Introduction:  The case of Products and Ideas (India) Pvt. Ltd. Vs. Nilkamal Limited represents a significant legal battle in the realm of intellectual property law, specifically concerning trademark infringement and the principle of international exhaustion under the Trade Marks Act, 1999. The dispute centers around the use of the trademark "STELLADEXIN" and related marks, involving a plaintiff seeking to protect its registered trademark rights in India and defendants asserting prior use and authorization from the original trademark owner. This case study delves into the factual matrix, procedural developments, core legal issues, judicial reasoning, and the law settled by the High Court of New Delhi, offering insights into the complexities of trademark law in the context of international trade and agency agreements.

Factual Background:  The plaintiff, Products and Ideas (India) Pvt. Ltd., is an Indian company engaged in the sale of commercial kitchen and bakery equipment, including commercial induction cooktops marketed under the brand name "STELLADEXIN." The trademark "STELLADEXIN" was originally adopted by Stella Industrial Co. Ltd., a Chinese company established in 1983, specializing in electromagnetic household appliances. The plaintiff began its business relationship with Stella Industrial in 2015, entering into an Exclusive Agency Agreement on April 1, 2017, which appointed the plaintiff as the exclusive agent for distributing, selling, and promoting induction cookers under the "STELLA" brand in India. This agreement was renewed in 2018 for three years and again in 2022 for a five-year term ending March 31, 2027. The plaintiff successfully registered the "STELLADEXIN" trademark in India as a word mark in classes 7, 9, and 11, and also applied for registration of the "STELLA" mark, which faced objections from the Trade Marks Registry. Additionally, the plaintiff obtained copyright registration for the artistic representation of the mark.

The defendant, Nilkamal Limited, along with other parties including Stella Industrial (defendant no. 5), contested the plaintiff’s claims. Stella Industrial, as the original equipment manufacturer (OEM), had been supplying products to the plaintiff under the agency agreements. However, it was also selling products bearing the "STELLA" marks in India through other entities, including M/s Mittal International since 2013, predating the plaintiff’s use and registration. Defendant no. 2, another importer of Stella Industrial’s products, was authorized to distribute these products in India through a verified arrangement facilitated by Ningbo Asgun Electronics Co., Ltd., supported by letters dated March 5, 2024, and June 5, 2024. The plaintiff alleged that the defendants’ use of the "STELLA" mark, which it claimed was deceptively similar to "STELLADEXIN," constituted trademark infringement.

Procedural Background: The case, filed as CS(COMM) 715/2024, was brought before the High Court of New Delhi, with several interim applications (I.A. 37339/2024, I.A. 41504/2024, I.A. 49076/2024) under Order XXXIX of the Code of Civil Procedure, 1908. The plaintiff sought interim injunctions under Rules 1 and 2 to restrain the defendants from using the "STELLA" marks, while defendant no. 2 sought to vacate an ex parte ad interim injunction order dated August 27, 2024, under Rule 4. Hearings were conducted on October 25, 2024, October 28, 2024, March 25, 2025, April 15, 2025, and May 13, 2025, with the judgment reserved on the last date. The plaintiff’s counsel, led by Mr. J. Sai Deepak, argued for the protection of its registered trademark rights, while the defendants, represented by Mr. Arvind Nigam and others, defended their use based on prior adoption and authorization by Stella Industrial.

Core Dispute: The central issue in this case was whether the defendants’ use of the "STELLA" marks constituted trademark infringement under the Trade Marks Act, 1999, given the plaintiff’s registered trademark "STELLADEXIN" and its claim of exclusive rights in India. The plaintiff argued that it had been authorized by Stella Industrial to use and register the "STELLADEXIN" mark, and that the defendants’ use of similar marks infringed its rights. Conversely, the defendants contended that Stella Industrial, as the original owner and prior user of the "STELLA" marks since 2002 in China and 2013 in India, held superior rights under Section 34 of the Act, which protects prior users. Additionally, defendant no. 2 asserted that it was an authorized reseller of Stella Industrial’s genuine products, and thus its actions did not amount to infringement, invoking the principle of international exhaustion under Section 30(3).

Discussion on Judgments:The court’s analysis referenced two significant judgments cited by the defendants to support their position on international exhaustion and prior use. The first was Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2012:DHC:616:DBB), decided by a Division Bench of the Delhi High Court. In this case, the court recognized the principle of international exhaustion under Section 30(3) of the Trade Marks Act, holding that the import and resale of genuine goods bearing a trademark by an authorized reseller does not constitute infringement, as the trademark rights are exhausted once the goods are lawfully placed in the market anywhere in the world. This precedent was directly relevant to the defendants’ argument that their importation and sale of Stella Industrial’s genuine products in India, with proper authorization, did not infringe the plaintiff’s trademark rights.

The second judgment cited was Seagate Technology LLC v. Daiichi International (2024:DHC:4193), decided by a Coordinate Bench of the Delhi High Court. This case reaffirmed the principles laid down in Kapil Wadhwa, emphasizing that the resale of genuine products by an authorized importer does not violate the trademark owner’s rights under the principle of exhaustion. The defendants relied on this judgment to argue that defendant no. 2’s activities as an authorized reseller of Stella Industrial’s products were protected under the law. These judgments provided a robust legal foundation for the defendants’ defense, highlighting the significance of prior use and the legitimacy of importing genuine goods in trademark disputes.

Reasoning and Analysis of the Judge: The court noted that Stella Industrial (defendant no. 5) was the prior adopter and user of the "STELLA" marks in China since 2002 and in India since 2013 through M/s Mittal International, as evidenced by invoices. This predated the plaintiff’s use of the mark in 2015 and its trademark registrations in India. Under Section 34 of the Trade Marks Act, a prior continuous user of a trademark is protected against infringement claims, even by a subsequent registered proprietor. The court found that Stella Industrial’s prior use in India established its rights over the "STELLA" marks, rendering the plaintiff’s infringement claim untenable.

Furthermore, the court examined the relationship between the parties. The plaintiff and defendant no. 2 were both resellers of Stella Industrial’s products, importing and selling them in India. The court observed that defendant no. 2’s activities were authorized by Stella Industrial through documented arrangements, as evidenced by letters dated March 5, 2024, and June 5, 2024. The termination of the plaintiff’s Exclusive Agency Agreement on November 13, 2024, further weakened its claim to exclusivity. Applying the principle of international exhaustion under Section 30(3), the court held that the import and sale of genuine products by an authorized reseller, such as defendant no. 2, did not constitute infringement, as the goods were original and sourced from Stella Industrial.

The court also considered the balance of convenience, concluding that granting an interim injunction would unfairly restrict the defendants’ lawful use of the "STELLA" marks, which had been in use since 2013, while creating a monopoly for the plaintiff, who was merely an importer. The plaintiff failed to establish a prima facie case for an injunction, as its rights were subordinate to those of Stella Industrial, the prior user and original proprietor.

Final Decision: The High Court of New Delhi, in its judgment reserved on May 13, 2025, vacated the ex parte ad interim injunction order dated August 27, 2024. The court allowed I.A. 41504/2024, filed by defendant no. 2 to vacate the injunction, and dismissed I.A. 37339/2024 and I.A. 49076/2024, filed by the plaintiff for interim relief. The defendants were permitted to sell goods under the marks "STELLA," "STELLADEXIN," and related marks in India. The court clarified that its observations were limited to the adjudication of the interim applications and would not influence the final outcome of the suit. The matter was listed for further proceedings before the Joint Registrar on August 11, 2025.

Law Settled in This Case:  This case reinforces the principle of prior use under Section 34 of the Trade Marks Act, 1999, affirming that a continuous prior user of a trademark holds superior rights over a subsequent registered proprietor. It also underscores the application of international exhaustion under Section 30(3), which protects the import and resale of genuine goods bearing a trademark by authorized resellers, provided the goods are lawfully placed in the market. The judgment clarifies that trademark infringement claims cannot succeed against authorized resellers dealing in original products, particularly when the original proprietor has prior use. This decision aligns with established precedents and strengthens the legal framework governing trademark rights in the context of international trade and agency agreements.

Case Title: Products and Ideas (India) Pvt. Ltd. Vs. Nilkamal Limited and Ors

Date of Order: May 13, 2025

Case Number: CS(COMM) 715/2024

Neutral Citation: 2025:DHC:5052

Name of Court: High Court of New Delhi

Name of Judge: Hon'ble Justice Shri Amit Bansal

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

Mohsin Dehlvi Vs Sh. Masood Umar

Mohsin Dehlvi Vs Sh. Masood Umar :July 11, 2025:C.O. (COMM.IPD-TM) 10/2021:2025:DHC:5672: Hon'ble Mr. Justice Saurabh Banerjee

The case involves a trademark dispute where the petitioner, Mohsin Dehlvi, sought removal or rectification of the trademark "DELVI" registered by respondent no.1, Sh. Masood Umar, under Class 30 for food products. The petitioner, operating as M/s. Dehlvi Remedies Pvt. Ltd., has used the trademark "DEHLVI" since 1994 for Unani and Ayurvedic medicines under Classes 3 and 5, with valid registrations from 1995 and a copyrighted artistic logo from 1997. 

The petitioner's grandfather adopted "DEHLVI," an Urdu term for Delhi, as a surname to reflect loyalty to the city. The petitioner claimed significant investment in advertising and substantial goodwill for "DEHLVI" in the pharmaceutical sector. 

Respondent no.1, trading as Exotique Concepts, registered "DELVI" in 2016 and was found selling medicinal products like aloe vera gel and essential oils, which fall under Class 5, the same as the petitioner’s goods, despite "DELVI" being registered for Class 30. The petitioner argued that "DELVI" is visually, phonetically, and structurally similar to "DEHLVI," with only the letter "H" omitted, suggesting mala fide adoption to exploit the petitioner’s reputation. 

The respondent no.1 did not file a response or appear consistently in court, leading to their right to reply being closed on December 4, 2023, and the case proceeding ex parte. The court found the marks deceptively similar, noting the respondent’s 2021 application for "DELVI" in Class 5 as evidence of intent to encroach on the petitioner’s goodwill. 

The court highlighted the risk of public confusion, especially in pharmaceuticals, which could harm public health. Consequently, the court ordered the removal of the "DELVI" trademark (registration no. 3153036) from the Register of Trade Marks, allowing the petition and directing the Registrar to comply.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Western Digital Technologies, Inc. Vs. Hansraj Dugar

Introduction: This case revolves around the enforcement of trademark rights under the Trade Marks Act, 1999, in the context of the international exhaustion principle. It concerns the importation of hard disk drives (HDDs) bearing the registered trademarks of Western Digital by the defendant, Hansraj Dugar, who was importing second-hand goods from overseas Original Equipment Manufacturers (OEMs). The plaintiffs sought an injunction against such imports, claiming infringement of their registered trademarks. The Court was called upon to adjudicate whether such imports of second-hand genuine goods violated trademark rights or were protected under the principle of international exhaustion embedded in Section 30 of the Trade Marks Act.

Detailed Factual Background: Western Digital Technologies Inc. and its subsidiary, Western Digital UK Ltd., collectively referred to as the plaintiffs, are globally recognized manufacturers of data storage solutions, including HDDs, solid-state drives (SSDs), routers, software, and other digital storage devices. They have used the trademark “WESTERN DIGITAL” since 1997 and “WD” since 1999. The trademarks are registered in India under Class 9, and the plaintiffs own multiple domain names reflecting these marks.

The plaintiffs discovered that the defendant, Hansraj Dugar, operating through his sole proprietorship M/s Supreme Enterprise, had imported a large quantity of hard disk drives into India bearing the plaintiffs’ trademarks without authorization. The goods were intercepted by the Customs Department in Kolkata in September 2019 under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. Upon investigation and sample testing, it was found that the drives were second-hand, with some being damaged or unreadable. The plaintiffs claimed that such goods, when sold as new or genuine products under their mark, would mislead consumers and tarnish their goodwill.

Detailed Procedural Background: The plaintiffs filed CS(COMM) 586/2019 before the Delhi High Court seeking a permanent injunction, damages, and other reliefs. On 21 October 2019, the Court passed an ex parte ad interim injunction, restraining the defendant from importing or dealing in goods bearing the marks “WESTERN DIGITAL” and “WD.” A Local Commissioner was appointed to inventory the seized goods, which amounted to around 7500 HDDs, and placed them in the notional custody of Customs Authorities.

Subsequently, the matter was referred to mediation but remained unresolved. In 2024, the defendant filed I.A. 38495/2024 seeking vacation of the injunction order, citing a significant change in law based on the judgment of the Delhi High Court in Seagate Technology LLC v. Daichi International, 2024:DHC:4193. This application was heard and decided along with the plaintiffs’ earlier interim application I.A. 14659/2019.

Issues Involved in the Case:The primary issue was whether the import of second-hand genuine goods bearing registered trademarks amounts to infringement under Section 29(6) of the Trade Marks Act, 1999, or is exempt under the principle of international exhaustion provided under Section 30(3) and 30(4) of the Act. Another issue was whether the defendant, having not sold the goods in India, could be held liable for misrepresentation and infringement, and whether the disclosure norms laid down in previous precedents were applicable to such imports.

Detailed Submission of Parties:Counsel for the plaintiffs argued that the HDDs imported by the defendant were used, non-functional, and not authorized for retail sale, having been tailored for specific OEMs abroad. They contended that selling these as “new and unused” would amount to consumer deception and dilute the plaintiffs’ brand reputation. It was submitted that the importation without full disclosure of their second-hand status violated the Trade Marks Act, particularly Sections 29(6) and 30(4), and relied on the judgment in Kapil Wadhwa v. Samsung Electronics Co. Ltd., 2012:DHC:6136:DB, to argue that impairment of goods post-sale negates the protection of international exhaustion. The plaintiffs distinguished Daichi International on the ground that the defendants therein were resellers, not importers.

The defendant’s counsel submitted that the HDDs were genuine products lawfully purchased from OEMs abroad and were never tampered with or rebranded. They relied heavily on the judgment in Seagate Technology LLC v. Daichi International, 2024:DHC:4193, arguing that the principle of international exhaustion protects the right to import and sell genuine goods, including second-hand and refurbished items, provided full disclosure is made. They emphasized that the goods in question never reached the market due to seizure and that no misrepresentation had occurred. The defendant expressed willingness to comply with disclosure norms laid down in Xerox Corporation v. Shailesh Patel, CS(OS) 2349/2006.

Detailed Discussion on Judgments Cited:The Court discussed the landmark judgment in Kapil Wadhwa v. Samsung Electronics Co. Ltd., 2012:DHC:6136:DB, where the Division Bench held that India follows the principle of international exhaustion. It was ruled that import and resale of genuine goods do not amount to trademark infringement unless the condition of the goods is impaired. The Court emphasized that full disclosure by the importer regarding warranty and servicing is critical to prevent consumer confusion.

In Seagate Technology LLC v. Daichi International, 2024:DHC:4193, the Court extended the rationale of Kapil Wadhwa to cases involving refurbished goods. It held that refurbished HDDs can be sold in India if the seller clearly discloses that they are used products, not covered by the original manufacturer’s warranty, and that the refurbishment was done independently. The Court recognized no statutory bar against importing discarded electronic goods.

Further, the Court referred to the consensual directions in Xerox Corporation v. Shailesh Patel, CS(OS) 2349/2006, where the defendant was allowed to sell imported second-hand Xerox machines with proper disclosures regarding their status, warranty, and source. These standards of disclosure were acknowledged as being in harmony with Kapil Wadhwa and relevant to the present case.

Detailed Reasoning and Analysis of Judge:The Court after a detailed examination of the statutory framework and judicial precedents, concluded that the principle of international exhaustion permits the import and sale of genuine trademarked goods, including second-hand or refurbished ones, so long as their condition is not impaired, and full disclosure is made. The Court rejected the plaintiffs’ contention that mere import without consent constitutes infringement under Section 29(6), noting that such a view is counterbalanced by Section 30(3), which allows lawful acquisition and resale. Since the HDDs in question had not been released into the Indian market and no misrepresentation had occurred, the defendant could not be held liable for infringement.

The Court also clarified that the applicability of the Daichi judgment was not limited to resellers alone, as the defendants in that case included importers. Furthermore, in the absence of any law prohibiting the import of second-hand HDDs, the plaintiffs could not assert exclusive control post-exhaustion. The Court acknowledged that the defendant had acted reasonably and showed willingness to comply with disclosure requirements.

Final Decision: The Court permitted the release of the seized HDDs to the defendant, subject to the condition that they be sold only as scrap after removal of the plaintiffs’ marks. For future imports, the defendant was directed to comply with the disclosure norms laid down in Xerox Corporation v. Shailesh Patel if sold without refurbishment, and with the guidelines in paragraph 116 of Daichi if the goods are refurbished. The applications were disposed of accordingly, with the suit listed for further proceedings.

Law Settled in this Case: The judgment reinforces that under Section 30(3) of the Trade Marks Act, import of genuine goods by third parties is permissible in India under the principle of international exhaustion. There is no infringement under Section 29(6) if the goods are lawfully acquired and no impairment or misrepresentation occurs. Disclosure of the product’s refurbished status, lack of manufacturer’s warranty, and independent service responsibility is essential. The ruling harmonizes judicial precedents and aligns domestic trademark law with global exhaustion doctrines, ensuring consumer protection while balancing trademark proprietors' rights.

Case Title: Western Digital Technologies Inc. & Anr. v. Hansraj Dugar:Date of Order: 16 May 2025:Case No.: CS(COMM) 586/2019:Neutral Citation: 2025:DHC:3844:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

F. Hoffmann-La Roche AG & Anr. Vs. Zydus Lifesciences Limited

Section 104A of Patent Act 1970 and Disclosure Challenges in Biologic Patent Litigation

Introduction: The case of F. Hoffmann-La Roche AG & Anr. versus Zydus Lifesciences Limited represents a significant patent infringement dispute in the realm of biological drugs, specifically concerning the monoclonal antibody Pertuzumab, used in treating breast cancer. 

This case, adjudicated by the High Court of Delhi, centers on the plaintiffs’ attempt to protect two Indian patents related to Pertuzumab’s formulation and manufacturing process against alleged infringement by the defendant’s similar biologic product. The core issue revolves around the plaintiffs’ application for the constitution of a confidentiality club to access the defendant’s manufacturing process, invoking provisions of the Patents Act, 1970, and the Commercial Courts Act, 2015. 

Factual Background: The plaintiffs, F. Hoffmann-La Roche AG and its affiliate, hold two Indian patents relevant to this dispute. The first, Indian Patent No. IN 268632, titled “Pharmaceutical Formulation Comprising HER2 Antibody,” is a product patent covering an aqueous pharmaceutical formulation of Pertuzumab with specific excipients, including sucrose and a histidine acetate buffer, maintaining a pH between 5.5 and 6.5. The second, Indian Patent No. IN 464646, titled “Pertuzumab Variants and Evaluation Thereof,” is a process patent detailing a method for producing a composition comprising Pertuzumab and its variants, such as unpaired cysteine variants and low- or high-molecular-weight species. These patents underpin the plaintiffs’ commercial product, Perjeta, a prescription medicine approved in the United States in 2012 and India in 2014 for treating early-stage and metastatic breast cancer by inhibiting HER2 receptor dimerization. 

The defendant, Zydus Lifesciences Limited, an Indian pharmaceutical company, sought regulatory approval from the Central Drugs Standard Control Organization (CDSCO) to manufacture and sell a similar biologic, ZRC-3277, using the plaintiffs’ Perjeta as the reference biologic in its clinical trial application filed on September 9, 2021. 

The plaintiffs, upon discovering this through CDSCO’s Subject Expert Committee recommendations in January 2024 and a Clinical Trial Registry of India document, filed a quia timet suit, apprehending that the defendant’s product would infringe their patents. The defendant countered that Pertuzumab itself is not patented, as it was disclosed in prior art (WO/2001/00245) and that their product, using an arginine citrate buffer, differs from the plaintiffs’ formulation and process.

Procedural Background: The suit, filed as CS(COMM) 159/2024, was accompanied by multiple interlocutory applications, including I.A. 4196/2024 and I.A. 33509/2024 for interim injunctions, and I.A. 5827/2024, the focus of this case study, seeking the constitution of a confidentiality club to access the defendant’s manufacturing process. Summons and notice were issued on February 23, 2024, when the court directed the plaintiffs to conduct claim mapping for the product patent (IN 632) against the defendant’s patent application. 

The defendant filed its manufacturing process under a sealed cover on March 22, 2024. The plaintiffs’ application for interim injunction (I.A. 33509/2024) was dismissed on October 9, 2024, but this was overturned by a division bench on October 16, 2024, remanding the matter back to the single judge. The defendant challenged this via a Special Leave Petition before the Supreme Court, leading to the lapse of an ad interim injunction on November 21, 2024. The plaintiffs subsequently chose not to press the interim injunction applications, focusing instead on I.A. 5827/2024. 

Core Dispute:The central issue in this case was whether the plaintiffs were entitled to access the defendant’s manufacturing process for their similar biologic, ZRC-3277, through a confidentiality club to determine if it infringed the plaintiffs’ process patent (IN 646)? The plaintiffs argued that the defendant’s designation of Perjeta as the reference biologic in its CDSCO application implied that their product and process were substantially similar, necessitating disclosure to map the claims of IN 646. They contended that Section 104A of the Patents Act, which shifts the burden of proof in process patent infringement cases, was inapplicable at this stage and that discovery provisions under the Commercial Courts Act, 2015, should govern. 

The defendant countered that Section 104A’s prerequisites—proving that the products are identical and that the patented process likely produces the defendant’s product—must be met before disclosure could be ordered. They argued that their product, a similar biologic, was not identical to the plaintiffs’ product (Pertuzumab plus variants) and that their process, using a different buffer, did not infringe IN 646. The dispute thus hinged on the interpretation of Section 104A, the nature of biologics, and the balance between discovery rights and proprietary protections.

Discussion on Judgments: Several judgments were cited by the parties to support their positions, each contextualized within the arguments over disclosure and Section 104A’s applicability. 

The plaintiffs relied on F. Hoffmann-La Roche v. Drugs Controller General of India (2025 SCC OnLine Del 934), where a coordinate bench allowed discovery under the Commercial Courts Act, 2015, noting that Section 104A was irrelevant because the patents in that case had expired. The court in the present case distinguished this, emphasizing that IN 646 was valid, making Section 104A applicable. The plaintiffs also referenced Roche Products v. Drugs Controller General of India (2016 SCC OnLine Del 2358), which clarified that biologics cannot be identical due to their synthesis by living organisms, arguing that Section 104A’s “identical product” requirement was impractical for biologics. The court rejected this, noting that the 2016 case did not address Section 104A directly. 

The defendant cited Natural Remedies Pvt. Ltd. v. Indian Herbs Research and Supply Co. Ltd. (O.S. No. 1 of 2004, Karnataka High Court, dated December 9, 2011), where the court held that Section 104A requires proof of identical products before compelling disclosure, and disclosure is not warranted at the pleading or evidence stage unless the patent’s validity and product identity are established. The court in the present case endorsed this, applying it to deny premature disclosure. The defendant also relied on Bristol-Myers (unspecified citation, referenced in the context of an interim injunction appeal), which supported the application of Section 104A at interlocutory stages, reinforcing the need for plaintiffs to meet statutory thresholds. Additionally, the defendant cited Telefoniaktiebolaget LM Ericsson (PUBL) v. Competition Commission of India , which established that the Patents Act, as a special statute, prevails over general laws like the Commercial Courts Act, supporting the primacy of Section 104A. Finally, the defendant referenced Pfizer Ireland Pharmaceuticals v. Samsung Bioepis (MANU/AUF/0847/2017, Federal Court of Australia), which held that similarity in biologics does not imply identical processes, bolstering their argument that their similar biologic did not necessarily infringe IN 646.

Reasoning and Analysis of the Judge : Court focused on the applicability and scope of Section 104A of the Patents Act, which allows courts to shift the burden of proof to the defendant in process patent infringement suits if the plaintiff proves that the defendant’s product is identical to the product of the patented process and that the process is either novel or substantially likely to have been used. The court emphasized that Section 104A is a statutory exception to the general evidentiary principle that the plaintiff bears the burden of proof, but it is not automatic and requires fulfilling specific conditions. 

The court rejected the plaintiffs’ argument that Section 104A applies only at the final adjudication stage, citing Natural Remedies and Bristol-Myers to affirm its relevance at interlocutory stages. The court further held that disclosure of the defendant’s process is integral to Section 104A, as sub-section (2) explicitly protects against unreasonable disclosure of trade secrets, indicating that disclosure requests fall within its ambit. 

The plaintiffs’ reliance on the Commercial Courts Act’s discovery provisions (Order XI Rules 1(7), 1(12), and 5) was dismissed, as the court, citing Ericsson, ruled that the Patents Act, as a special statute, prevails over general laws. Regarding biologics, the court acknowledged the plaintiffs’ argument, supported by Roche Products, that biologics cannot be identical due to their complex synthesis, but held that Section 104A’s “identical product” requirement is a deliberate legislative choice that cannot be diluted. The court analyzed the Guidelines on Similar Biologics, 2016, noting that a similar biologic requires only comparable safety, efficacy, and quality, not identical processes, and cited Pfizer to reinforce that similarity does not imply process infringement. 

The court found that the plaintiffs failed to prove that the defendant’s product, ZRC-3277, was identical to the product of IN 646 (Pertuzumab plus variants), as the defendant’s CDSCO application referenced Perjeta, which the plaintiffs admitted was prior art, not the patented composition. The plaintiffs’ claim mapping for IN 632 showed differences (arginine citrate vs. histidine acetate buffer), further undermining their case. Thus, the court concluded that the plaintiffs did not meet Section 104A’s prerequisites, precluding disclosure.

Final Decision: The court dismissed the plaintiffs’ application (I.A. 5827/2024) for the constitution of a confidentiality club and disclosure of the defendant’s manufacturing process, finding no merit in the request. The court clarified that its observations were limited to the application and would not affect the suit’s final adjudication. 

Law Settled in This Case:This case clarifies several aspects of patent law in India, particularly for process patents involving biologics. It establishes that Section 104A of the Patents Act governs disclosure requests in process patent infringement suits, requiring plaintiffs to prove that the defendant’s product is identical to the product of the patented process before compelling disclosure. The court affirmed that this requirement applies at both interlocutory and final stages, rejecting arguments that it is limited to final adjudication. The decision underscores that the Patents Act, as a special statute, prevails over general discovery provisions under the Commercial Courts Act, 2015. For biologics, the court held that the statutory threshold of “identical product” under Section 104A cannot be relaxed to “similar” despite the scientific variability of biologics, preserving the legislature’s intent. The case also highlights that regulatory filings citing a reference biologic do not automatically indicate process infringement, as similar biologics may employ different manufacturing processes.

Case Title: F. Hoffmann-La Roche AG & Anr. versus Zydus Lifesciences Limited 

Date of Order: July 23, 2025 

Case Number: CS(COMM) 159/2024 

Neutral Citation: 2025:DHC:5927: 

Name of Court: High Court of Delhi at New Delhi 

Name of Judge: Honourable Mr. Justice Amit Bansal

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