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

Saint Gobain TM K K Vs Assistant Controller of Patents and Designs

Saint Gobain TM K K Vs Assistant Controller of Patents and Designs:C.A. (COMM.IPD-PAT) 16/2021

High Court of Delhi:10th July 2025:Hon’ble Mr. Justice Saurabh Banerjee

Saint Gobain TM K K filed an appeal before the Delhi High Court challenging the order dated 30.07.2021 passed by the Assistant Controller of Patents and Designs, rejecting its Indian Patent Application No. 201717018424. The appellant argued that the impugned order lacked independent reasoning and was essentially a verbatim reproduction of an order dated 04.05.2021 issued by the European Patent Office (EPO) in a separate proceeding concerning Application No. 15881134.9-1108, where the appellant was also the applicant.

The procedural background reveals that the appellant’s patent application before the Indian Patent Office was rejected primarily on the basis of prior art references D1: US 2009/0176642 A and D2: JPH092870 A. The appellant contended that these prior arts were entirely different from those considered by the EPO, which were WO 2015/025901 A1 and WO 2016/056146 A1. Further, it was highlighted that despite the objections raised, the same appellant was ultimately granted the patent by the EPO for the corresponding invention, demonstrating that the claims were indeed patentable after due consideration abroad.

The core dispute was whether the Controller’s rejection of the Indian patent application was lawful and appropriately reasoned, especially when the grounds cited closely mirrored those in the EPO's order without adequately addressing the specific prior arts involved in India. The appellant alleged that the rejection was mechanical, failed to consider the distinct prior art references, and did not analyze the unique technical features of the invention.

Upon examining both the EPO’s decision and the Controller’s order, the High Court noted significant textual similarities between them. The Court further observed that the prior arts examined by the EPO differed materially from those considered by the Indian Controller, yet the reasoning in both orders appeared substantially identical.

In its decision, the Delhi High Court held that the Controller's order suffered from non-application of mind and did not reflect due consideration of the Indian prior art documents. The Court set aside the impugned order dated 30.07.2021 and restored the appellant’s Patent Application No. 201717018424 to its original status. The matter was remanded back to the Assistant Controller of Patents and Designs for a de novo hearing. The Controller was directed to list the matter for hearing within two weeks and dispose of the application on or before 30.08.2025 by passing a reasoned order after considering all arguments and without granting unnecessary adjournments.

N.R. Dongre and Ors. Vs. Whirlpool Corporation

Introduction: In the realm of intellectual property law, few cases have shaped the landscape of passing-off actions in India as decisively as the Supreme Court’s ruling in N.R. Dongre and Ors. v. Whirlpool Corporation and Anr. on August 30, 1996. This dispute, pitting a global giant against local traders over the coveted "WHIRLPOOL" trademark, transcends a mere commercial tussle to illuminate the power of trans-border reputation and prior use in safeguarding goodwill. At its core, the case addresses the tension between statutory trademark registration and common law rights, culminating in a temporary injunction that reverberated through legal corridors.

Detailed Factual Background: The saga revolves around Whirlpool Corporation, a U.S.-based multinational (plaintiff No. 1), and its Indian licensee, TVS Whirlpool Ltd. (plaintiff No. 2), a majority-owned subsidiary incorporated in India. Whirlpool Corporation boasted a storied history with the "WHIRLPOOL" trademark, claiming use since 1937, achieving prominence in the U.S. and Canada by 1957, and securing registrations in over 65 jurisdictions by 1986 for washing machines and appliances. In India, it held registrations from 1956-57 for various goods, renewed periodically until lapsing in 1977 due to import restrictions and communication lapses with its trademark attorney. In 1987, it partnered with TVS Whirlpool Ltd., and by July 15, 1988, applied anew for registration in India, marketing washing machines under the TVS brand with the tagline "in collaboration with Whirlpool Corporation." The plaintiffs asserted prior use and a trans-border reputation, evidenced by sales to the U.S. Embassy and USAID in India, and advertisements in international magazines circulating in India’s affluent strata.

The defendants: N.R. Dongre and others, trustees of Chinar Trust and Mansarovar Trust, trading as USHA-SHRIRAM (India), alongside Usha International Ltd. On August 6, 1986, they applied to register "WHIRLPOOL," claiming proposed use, a move advertised in the trademark journal on October 16, 1988. Whirlpool Corporation opposed this on January 16, 1989, but the Registrar dismissed the opposition on August 12, 1992, granting registration to the defendants retroactive to August 6, 1987. In July 1994, the plaintiffs discovered the defendants advertising "WHIRLPOOL" washing machines, prompting a passing-off suit to halt this use, alleging deception and damage to their reputation.

Detailed Procedural Background:The dispute began on August 4, 1994, when Whirlpool Corporation and TVS Whirlpool Ltd. filed an original suit in the Delhi High Court, seeking to restrain the defendants from using "WHIRLPOOL" in manufacturing, selling, or advertising washing machines. Alongside, they sought a temporary injunction, granted by the learned Single Judge on October 31, 1994, barring the defendants from such use pending trial, with a caveat for the plaintiffs to indemnify potential losses. The defendants appealed to the Division Bench, which, on April 21, 1995, upheld the injunction, finding no basis to disturb the Single Judge’s discretion. Aggrieved, the defendants escalated the matter to the Supreme Court via special leave petition, culminating in Civil Appeal No. 10703 of 1996. Concurrently, Whirlpool Corporation pursued an appeal against the Registrar’s 1992 order and a rectification petition under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, filed on August 4, 1993, both pending in the Delhi High Court. The Supreme Court’s judgment on August 30, 1996, addressed solely the propriety of the temporary injunction, leaving the suit’s final adjudication and ancillary proceedings unresolved.

Issues Involved in the Case: The central issue was whether the Delhi High Court’s grant of a temporary injunction against the defendants, despite their registered trademark, was legally sound? This distilled into assessing whether Whirlpool Corporation established a prima facie case of passing off based on prior use and trans-border reputation, whether the balance of convenience favored the injunction, and whether irreparable injury justified restraining the defendants pending trial, overriding their statutory registration?

Detailed Submission of Parties:The defendants conceded that a passing-off action could lie against a registered trademark owner but argued that their 1992 registration (effective from 1987) weighed heavily in their favor at the interlocutory stage. Sibal highlighted the plaintiffs’ opposition failure before the Registrar, their pending rectification petition, the lapse of their Indian registration in 1977, and their delayed suit filing in 1994 after a 1988 reapplication, suggesting acquiescence or abandonment. The Defendant posited that their cheaper washing machines (one-third the plaintiffs’ price) and clear labeling negated confusion, and the plaintiffs’ limited Indian sales undermined their claim.

Plaintiffs emphasized Whirlpool Corporation’s prior use since 1937 and trans-border reputation, evidenced by global sales and Indian advertising, against the defendants’ unexplained adoption of "WHIRLPOOL" in 1986 from established USHA brands. Plaintiff argued that actual Indian sales were unnecessary for passing off, only reputation sufficed, and the defendants’ registration rested on proposed, not actual, use. Plaintiff stressed the plaintiffs’ prompt opposition and legal actions, negating delay or acquiescence, and urged that the trial court’s discretion, affirmed on appeal, warranted deference.

Detailed Discussion on Judgments Cited by Parties and Their Context: The Supreme Court leaned heavily on Wander Ltd. & Anr. v. Antox India P. Ltd., [1990] Supp. SCC 727, cited implicitly by both parties via the High Court’s reasoning. This case delineated the scope of appellate interference in interlocutory injunctions, holding that discretion must be exercised judicially, not arbitrarily, and appellate courts should not substitute their view unless the trial court’s decision is perverse or ignores settled law (pages 733-734). It clarified passing off as deceit-based, protecting reputation against misrepresentation, a principle central to this case. The Division Bench referenced Faulder & Co. Ltd. v. O & G Rushton, (1903) 20 RPC 477, asserting that trademark association need not be universal but sufficient in known areas, supporting the plaintiffs’ limited but impactful Indian presence. The court also drew from Printers (Mysore) Private Ltd. v. Pothan Joseph, [1960] 3 SCR 713 at 721, cited in Wander, reinforcing that appellate reversal hinges on misapplication of principles, not mere disagreement. Charles Osenton & Co. v. Jhanaton, referenced therein, underscored this settled law’s application to individual facts. These precedents framed the court’s restraint in reassessing evidence, focusing instead on the trial court’s reasonableness.

Detailed Reasoning and Analysis of Judge: The confined analysis to undisputed facts, affirming Whirlpool Corporation’s prior use since 1937 and trans-border reputation extending to India via advertisements and limited sales, against the defendants’ 1986 claim based on proposed use. The lapsed 1977 registration did not signify abandonment, given ongoing global use and policy-related explanations, while the defendants’ registration, under challenge, held no decisive weight in a passing-off action—a point Sibal conceded. Verma found the High Court’s findings—prior use, reputation, and likelihood of confusion—reasonable, noting the defendants’ lack of evidence of significant prior sales and their unexplained adoption of "WHIRLPOOL." Applying Wander Ltd., he assessed the trinity test: a prima facie case existed due to Whirlpool’s established mark and the defendants’ deceptive use; the balance of convenience favored the plaintiffs, as the defendants could revert to USHA brands with minimal disruption, while the plaintiffs faced reputational harm; and irreparable injury loomed for Whirlpool, given quality disparities, outweighing the defendants’ manageable loss. The absence of delay or acquiescence, evidenced by the plaintiffs’ persistent legal challenges, bolstered their equity. Court declined to reassess additional material, preserving the trial court’s latitude under Order 39 Rule 4 CPC, and upheld the injunction as equitable and legally sound, reinforced by the Division Bench’s affirmance.

Final Decision: The Supreme Court dismissed the defendants’ appeal, upholding the Delhi High Court’s temporary injunction restraining N.R. Dongre and others from using "WHIRLPOOL" in manufacturing, selling, or advertising washing machines.

Law Settled in This Case: The ruling entrenched that a passing-off action can succeed against a registered trademark owner based on prior use and trans-border reputation, independent of statutory rights. It established that goodwill, even without extensive local sales, suffices if supported by advertising and recognition, and courts may grant interlocutory injunctions to protect such reputation against deception, prioritizing equity over registration status.

N.R. Dongre and Ors. Vs. Whirlpool Corporation and Anr.:August 30, 1996:Civil Appeal No. 10703 of 1996:1996 SCR (5) Supp 369:Supreme Court of India: Hon’ble Mr. Justice J.S. Verma & Hon’ble Mr. Justice K. Venkataswami

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

Subhash Chandra Agrawal Vs. Central Public Information Officer

Disclosure and its Limits under RTI Act

Introduction:In the landmark decision pronounced on 10 July 2025 in Subhash Chandra Agrawal v. Central Public Information Officer, the High Court of Judicature at Bombay considered the delicate balance between transparency mandated by the Right to Information Act, 2005 and the competing rights of privacy, fiduciary obligations, and third-party interests. The case involved a series of writ petitions challenging and defending the Central Information Commission’s order dated 27 December 2022, which partly allowed disclosure of regulatory information held by the Securities and Exchange Board of India. The judgment revisited important questions on the procedural safeguards under Section 11 of the RTI Act and the scope of qualified exemptions under Section 8, while examining leading precedents from the Supreme Court.

Factual Background:The matter arose from an RTI application filed on 18 June 2021 by Mr. Subhash Chandra Agrawal, a noted transparency activist. Mr. Agrawal sought extensive information from the Securities and Exchange Board of India (SEBI) on nine specific queries. These included details of SEBI’s role and policy in appointing Public Interest Directors (PIDs) to the boards of major stock exchanges such as the Bombay Stock Exchange (BSE), National Stock Exchange (NSE), and Multi Commodity Exchange (MCX), as well as annual inspection reports of these exchanges and related documents. The underlying public interest, as claimed by Mr. Agrawal, was to ensure transparency in the functioning of financial regulators and the stock market, affecting large numbers of investors.

Procedural Background:Following SEBI’s partial denial of the requested information, the matter proceeded before the Central Information Commission. In its order dated 27 December 2022, the CIC partly allowed the application by directing SEBI to provide certain information like lists of selected and rejected candidates for PID appointments and concluding comments from annual inspection reports, but upheld SEBI’s denial of full inspection reports and internal correspondence, citing exemptions under Section 8(1) of the RTI Act.

Aggrieved by the CIC’s directions, SEBI filed Writ Petition Nos. 10909 and 10910 of 2023, arguing that disclosure of the information would compromise its fiduciary obligations and harm sensitive economic interests. On the other hand, Mr. Agrawal filed Writ Petition Nos. 10887 and 10888 of 2023, challenging the CIC’s refusal to order broader disclosure. Recognizing the intertwined nature of these petitions, the High Court heard them together, reserving judgment on 25 June 2025 and delivering its decision on 10 July 2025.

Core Dispute:The central question before the High Court was whether the disclosure of SEBI’s internal documents, file notings, correspondence, and detailed inspection reports regarding stock exchanges should be permitted under the RTI Act, despite claims of fiduciary confidentiality, potential harm to competitive positions, and the need to protect third-party privacy. The Court had to examine whether the CIC correctly applied exemptions under Section 8(1)(d), (e), and (j) and whether it failed to comply with the mandatory third-party consultation procedure under Section 11 of the RTI Act before ordering disclosure.

Discussion on Judgments:The petitioners and respondents extensively cited landmark judgments to support their respective positions. Mr. Agrawal’s counsel relied heavily on Reserve Bank of India v. Jayantilal N. Mistry (2016) 3 SCC 525, where the Supreme Court directed the RBI to disclose similar inspection reports and rejected claims of fiduciary capacity, holding that transparency outweighed confidentiality in regulatory matters affecting public interest. The judgment was further affirmed by a larger Bench in Central Public Information Officer, Supreme Court of India v. Subhash Chandra Agarwal (2020) 5 SCC 481, which recognized the RTI Act as an instrument to promote accountability and transparency of public authorities.

SEBI, supported by stock exchanges, distinguished these precedents by referring to the Supreme Court’s order in HDFC Bank Ltd. v. Union of India 2022 SCC OnLine SC 1337, where the Court expressed prima facie reservations about the sweeping disclosure mandated in Jayantilal N. Mistry, emphasizing the need to balance transparency with privacy rights and economic security. SEBI argued that disclosure of inspection reports and internal documents would risk misuse of sensitive financial data and destabilize market regulation.

Additionally, SEBI and the stock exchanges cited the Constitution Bench’s observations in Central Public Information Officer, Supreme Court of India v. Subhash Chandra Agarwal (2020) 5 SCC 481, which clarified that while the RTI Act promotes transparency, it also includes qualified exemptions to protect sensitive information, and mandates procedural safeguards such as third-party consultation under Section 11 before disclosing information relating to third parties.

Reasoning and Analysis of the Judge:The High Court conducted a detailed analysis of the RTI Act’s scheme, focusing on the balance between transparency and protection of privacy and fiduciary interests. The Court accepted that the information sought under Queries Nos. 2, 3, 4, and 5 involved data provided by third parties such as stock exchanges and individuals applying as PIDs, which was held by SEBI in a fiduciary capacity or constituted personal information.

For Query No. 2, the Court upheld the CIC’s finding that file notings and correspondence related to the framing of policy on PIDs was exempt under Section 8(1)(e) because it was information held in fiduciary capacity. Regarding Query No. 3, which sought lists of selected and rejected PID candidates and related documents, the Court emphasized that even though the names of selected candidates are in the public domain, rejected candidates are entitled to privacy. Thus, under Section 8(1)(j) read with Section 11, SEBI was required to consult these third parties before deciding on disclosure.

The judges further observed that inspection reports requested under Queries Nos. 4 and 5 contained sensitive economic data about stock exchanges, and therefore, disclosure should only occur after following Section 11 to allow the exchanges to object if necessary. The Court also noted that broad, vague queries like those under Queries Nos. 6, 7, 8, and 9 were not sufficiently specific, making compliance impractical.

By remanding certain queries for fresh consideration, the Court reconciled the public’s right to information with the statutory duty to protect third-party interests, as mandated by the Constitution Bench in Subhash Chandra Agarwal.

Final Decision:The Bombay High Court partly upheld the CIC’s order and partly set it aside. It dismissed Mr. Agrawal’s petitions seeking broader disclosure and allowed SEBI’s petitions in part. The Court directed that information sought under Queries Nos. 3, 4, and 5 be reconsidered by the Central Public Information Officer after strictly following the procedure under Section 11 of the RTI Act. The CIC’s order on Queries Nos. 1, 2, 6, 7, 8, and 9 was left undisturbed. No order as to costs was made.

Law Settled in This Case:This decision reinforces that under the RTI Act, the right to information is balanced by qualified exemptions protecting privacy, commercial confidence, and fiduciary obligations. Importantly, when disclosure involves third-party information, compliance with Section 11 is mandatory, and authorities must invite objections from affected parties before deciding. The judgment also clarifies that even in matters involving regulatory bodies, courts must carefully assess the competing claims of transparency and confidentiality rather than apply precedents mechanically.

Case Title: Subhash Chandra Agrawal v. Central Public Information Officer

Date of Order: 10 July 2025

Case Number: Writ Petition No. 10887 of 2023

Neutral Citation: 2025:BHC-AS:28136-DB

Name of Court: High Court of Judicature at Bombay

Name of Judge: Hon’ble Mr. Justice M.S. Sonak and Hon’ble Mr. Justice Jitendra Jain

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

Kamal Raheja Vs Hahnemann Pure Drug Co

Trademark Infringement Action Sustained Despite Suspension of Drug Licence

Introduction:The case of Kamal Raheja v. Hahnemann Pure Drug Co. decided by the Division Bench of the High Court of Delhi on 8 July 2025, presented a significant question in trademark law: whether the suspension of a plaintiff’s drug licence precludes them from seeking an injunction to protect a registered trademark under the Trade Marks Act, 1999? The appeal arose from an order of the Commercial Court that had made an ex parte ad interim injunction absolute, restraining the appellant from using the mark ‘MARKS GO’, which was identical to the respondent’s registered trademark. The judgment explored the scope and interpretation of Sections 28, 29, 31 and 47 of the Trade Marks Act, reaffirming core principles regarding statutory rights of registered proprietors and the irrelevance of current commercial exploitation at the stage of an infringement action.

Factual Background:The respondent, Hahnemann Pure Drug Co., is the registered proprietor of the trademark ‘MARKS GO’, registered under Class 5 of the NICE Classification with effect from 14 September 2010. The registration covered skincare cream and related products, and was valid and subsisting on the date of the dispute. Alleging that the appellant, Kamal Raheja, was manufacturing and selling similar products under the identical trademark ‘MARKS GO’, the respondent approached the Commercial Court seeking protection of its statutory rights. Importantly, during the pendency of the dispute, the respondent’s licence to manufacture products under the Drugs and Cosmetics Act, 1940 was suspended following a show cause notice issued on 13 May 2024. The appellant relied heavily on this suspension to argue that the respondent could not lawfully exploit the mark and was therefore disentitled to seek an injunction.

Procedural Background:The respondent filed CS (Comm) 346/2023 before the District Judge (Commercial Court-02), Rohini, seeking a decree of permanent injunction restraining the appellant from using the infringing mark ‘MARKS GO’. Alongside, an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 was filed to obtain an interim injunction pending the suit. On 8 June 2023, the Commercial Court passed an ex parte ad interim injunction restraining the appellant and others from manufacturing, selling, or dealing in skincare creams under the mark ‘MARKS GO’ or any deceptively similar mark. The appellant, in response, filed an application under Order XXXIX Rule 4 CPC seeking vacation of this interim order. On 7 March 2025, the Commercial Court dismissed the appellant’s application and made the interim injunction absolute. Aggrieved, the appellant preferred FAO (COMM) 105/2025 before the High Court of Delhi.

Core Dispute:The principal question before the High Court was whether the respondent’s inability to commercially exploit the registered mark ‘MARKS GO’—due to suspension of its drug licence—deprived it of the right to seek relief against trademark infringement under Sections 28 and 135 of the Trade Marks Act, 1999? The appellant contended that without the ability to manufacture and sell, the respondent suffered no irreparable injury, making the grant of injunction unjustified. The respondent argued that registration alone was sufficient to entitle a proprietor to seek protection under the Act, and actual commercial use was neither required nor relevant to an infringement action.

Discussion on Judgments:During arguments, the appellant heavily relied on the regulatory action under the Drugs and Cosmetics Act, 1940 and contended that without an active licence, the respondent could neither use nor defend the mark. However, the Court noted that such reliance was misplaced, as the Trade Marks Act operates independently of the licensing regime under the Drugs and Cosmetics Act.

The Court discussed Section 28(1) of the Trade Marks Act, 1999, which explicitly provides that the registration of a trademark gives the registered proprietor the exclusive right to its use and to seek relief in respect of infringement. The judges also referred to Section 31(1) of the Trade Marks Act, which treats registration as prima facie evidence of validity in all legal proceedings relating to the registered trademark.

Additionally, the Court elaborated on Section 47(1) of the Act, explaining that non-use of a registered trademark may be a ground for removal from the register, but only through a separate application filed by an aggrieved person. The judges made clear that there was no evidence of any such application having been filed by the appellant. Therefore, the respondent's rights under the Trade Marks Act remained intact.

The discussion was firmly anchored in these statutory provisions: Section 28 (Rights conferred by registration), Section 29 (Infringement of registered trademarks), Section 31 (Registration to be prima facie evidence of validity), and Section 47 (Removal from register on ground of non-use).

Reasoning and Analysis of the Judge:The Court reasoned that the statutory right to seek relief for infringement is not contingent on the proprietor’s actual commercial use of the mark at the time of litigation. Registration itself confers the right to sue for infringement, irrespective of present capacity to manufacture or sell. The judges observed that the Trade Marks Act provides only two circumstances where a defendant may avoid the consequences of infringement: when the mark has been removed from the register on grounds of non-use under Section 47(1), or where statutory defences under Sections 30, 33, 34 or 35 apply. None of these circumstances were pleaded or proved by the appellant.

The Court clarified that the suspension of the respondent’s drug licence was under the Drugs and Cosmetics Act and could not diminish the respondent’s statutory rights under the Trade Marks Act. Moreover, mere non-use does not automatically extinguish the right; it must be followed by a formal cancellation process, which had not been initiated.

The Court also addressed the argument that the respondent had started using a new mark ‘MARKS OUT’, stating that this fact did not affect the respondent’s right to restrain infringement of the existing registered mark ‘MARKS GO’.

Final Decision: The High Court dismissed the appeal, upheld the Commercial Court’s order dated 7 March 2025 making the interim injunction absolute, and reaffirmed that the respondent was entitled to an injunction against the appellant’s infringing use of the mark ‘MARKS GO’. The Court held that the statutory rights of a registered proprietor under Section 28(1) could not be defeated solely because the mark was not in present commercial use, absent an order for removal under Section 47(1).

Law Settled in This Case: This case reiterates that the statutory right to seek relief for infringement under Section 28(1) of the Trade Marks Act, 1999 arises purely from the subsistence of registration and is not contingent on active commercial exploitation of the mark. Suspension of a manufacturing licence under the Drugs and Cosmetics Act or adoption of a new mark does not divest the proprietor of the registered mark from the right to seek an injunction. To challenge such rights, an aggrieved party must move for cancellation of the mark on grounds of non-use under Section 47(1); mere allegations of non-use are insufficient. 

Case Title: Kamal Raheja Vs. Hahnemann Pure Drug Co.

Date of Order: 08.07.2025

Case Number: FAO (COMM) 105/2025

Neutral Citation: 2025:DHC:5613-DB

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

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

Johnson & Johnson Pte. Ltd. Vs. Mr. Abbireddi Satish Kumar

Trade Dress and Deceptive Similarity

Introduction:The High Court of Delhi, in the recent case of Johnson & Johnson Pte. Ltd. v. Mr. Abbireddi Satish Kumar & Ors., addressed significant questions surrounding trade mark infringement and passing off within the highly competitive market of consumer healthcare and energy drinks. This dispute involved allegations of deliberate copying of trade dress and marks associated with the plaintiff’s well-known ORSL brand. 

The judgment, delivered by Hon’ble Ms. Justice Mini Pushkarna on 15 July 2025, demonstrates the application of the Commercial Courts Act’s strict timelines and the consequences of procedural default by defendants. It also illustrates the approach taken by the Court in determining deceptive similarity and infringement, even in the context of defendants attempting to circumvent injunction orders through variant marks.

Factual Background:The plaintiff, Johnson & Johnson Pte. Ltd., a Singapore-incorporated entity established in 1974, had acquired the ORS-L and ORSL trademarks and associated goodwill from Jagdale Industries Limited through an assignment deed dated 7 November 2014. These marks had been used in India since 2003 for flavoured electrolyte drinks. Following acquisition, the plaintiff invested heavily in marketing and brand promotion, resulting in significant goodwill attached to these marks and distinctive trade dress, including a red and white colour scheme and stylised script.

The defendants were engaged in manufacturing and marketing fruit drinks under marks such as ORSI and ERSI, which the plaintiff discovered in September 2022. The plaintiff alleged that the defendants’ marks and packaging were deceptively similar to its own, intended to mislead consumers and ride on its reputation.

Procedural Background:Following discovery of the allegedly infringing marks, the plaintiff issued a cease-and-desist notice to defendant no. 1 and M/s Pure Tropic, the manufacturing entity associated with defendant nos. 2 to 5. The plaintiff filed the suit under Section 134(1) read with Sections 27 and 29 of the Trade Marks Act, 1999, seeking permanent injunction and damages.

On 7 December 2023, the Court granted an interim injunction restraining the defendants from using the impugned marks or deceptively similar variants. Local Commissioners were appointed on 9 February 2024 to investigate compliance, leading to the discovery of large stocks of infringing goods manufactured and distributed even after the injunction. 

Defendants failed to file written statements within the mandatory 120-day period prescribed by the CPC as amended by the Commercial Courts Act, 2015, despite service of summons and notices. Their right to file written statements was closed by order dated 27 May 2024. Defendant no. 1's application under Order VII Rule 11 CPC challenging territorial jurisdiction was dismissed by judgment dated 4 February 2025. Subsequently, the plaintiff filed an application under Order VIII Rules 1 and 10 CPC seeking judgment based on admissions.

Core Dispute:The central dispute was whether the defendants' use of the marks ORSI, ERSI, and similar trade dress constituted infringement and passing off of the plaintiff’s well-known ORSL marks and packaging? Additionally, the Court examined whether minor alterations by defendants, such as changing letters or adopting new variants like ElectroORS, were sufficient to avoid confusion among consumers and whether the defendants had violated the interim injunction? 

Discussion on Judgments:The plaintiff relied upon Christian Broadcasting Network Inc. v. CBN News Pvt. Ltd., 2018 SCC OnLine Del 11666, to support the proposition that under Order VIII Rule 10 CPC, when defendants fail to file written statements, the Court may proceed to pronounce judgment if the plaintiff's claim is unimpeachable. The Court referred to Nirog Pharma Pvt. Ltd. v. Umesh Gupta, (2016) 235 DLT 354, which emphasised the legislative intent to expedite commercial disputes and discourage dilatory tactics.

In assessing likelihood of confusion, the Court applied the principles laid down in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953, which highlighted that when products are identical, even a lower degree of similarity in marks can cause confusion among consumers of average intelligence with imperfect recollection. The Court also invoked the “triple identity” test as reiterated in Heifer Project International v. Heifer Project India Trust, 2024 SCC OnLine Del 2847, where similarity of marks, business area, and consumer base creates an overwhelming likelihood of deception.

On the procedural aspect, the Court noted its earlier judgment dated 4 February 2025 dismissing the defendants’ challenge to jurisdiction, following Koninklijke Philips N.V. and Another v. Amazestore and Others, 2019 SCC OnLine Del 8198, which endorsed the rule of thumb approach to award damages where infringement is established and defendants have acted wilfully.

Reasoning and Analysis of the Judge:The Court observed that the defendants’ marks, though differing superficially by letters such as E instead of O, were presented in fonts and colour schemes closely resembling the plaintiff's well-established trade dress. The deliberate similarity, including the round shape of ‘E’ to mimic ‘O’ and positioning of product elements, evidenced malafide intent to cause confusion.

The Court dismissed defendants' arguments that they were only service providers or distributors without control over the mark, finding that defendant nos. 2 to 5 had continued manufacturing infringing goods even after being served notices and despite the injunction order. Local Commissioner reports corroborated this, showing products with manufacturing dates after the injunction. The Court concluded that such conduct demonstrated clear knowledge and participation in the infringing activity.

The Court held that when defendants fail to file written statements within the statutory limit and evidence shows an unimpeachable case of infringement, it is proper to pass judgment under Order VIII Rule 10 CPC without further trial. The repeated attempts by defendants to modify marks marginally or create new variants like ElectroORS did not alter the likelihood of confusion.

Final Decision:The Court decreed the suit in favour of the plaintiff, permanently restraining the defendants from using the infringing marks and trade dress, or any deceptively similar variants. It awarded actual litigation costs and damages against the defendants, noting the wilful violation of the injunction and continued infringement. The defendants’ plea regarding jurisdiction and procedural lapses was rejected, affirming the plaintiff’s rights over its well-known marks and trade dress.

Law Settled in This Case:The judgment reinforces that in commercial suits under the Commercial Courts Act, failure to file written statements within the statutory 120-day period leads to forfeiture of the right to defend, and the Court may decree the suit under Order VIII Rule 10 CPC if the plaintiff’s case is prima facie unimpeachable. It further affirms that even minor modifications of marks or trade dress by defendants do not negate infringement if the overall impression remains confusingly similar. The decision also clarifies that entities involved in manufacturing or distribution can be held liable if they knowingly aid the principal infringer, especially after notice and injunction orders.

Case Title: Johnson & Johnson Pte. Ltd. v. Mr. Abbireddi Satish Kumar & Ors.

Date of Order: 15 July 2025

Case Number: CS(COMM) 801/2023

Neutral Citation: 2025:DHC:5622

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

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

GS Marbles Vs Shree Granites

GS Marbles Vs Shree Granites, Judgment dated 15.07.2025, RFA(COMM) 83/2023: Neutral Citation:2025:DHC:5597-DB, High Court of Delhi, Coram: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Tejas Karia

The appeal arose from the judgment and decree dated 02.03.2023 passed by the District Judge (Commercial Court)-02, Tis Hazari, Delhi in CS (COMM) No. 496/2021, whereby the suit filed by M/s Shree Granites for recovery of ₹6,26,617/- with interest was decreed against M/s GS Marbles. The core dispute centred around a purchase order dated 15.06.2018 issued by the respondent for supply of granite slabs, for which an advance payment had been made. The respondent alleged non-supply of material and sought refund of the advance along with interest. The appellant, through its proprietor Mr. Manoj Saini, denied knowledge of the transaction and claimed that the business and accounts were controlled by Mr. Rajaram Agarwal, who allegedly committed GST fraud.

Procedurally, the appellant was served with summons but failed to file a written statement within the statutory period of 120 days, despite entering appearance. The trial court first proceeded ex parte but later set aside that order while closing the right to file the written statement. On an application under Order VIII Rule 10 CPC, the trial court decreed the suit in favour of the respondent, relying on the documents including the purchase order signed by Mr. Saini, bank statements showing receipt of advance, and the appellant’s reply letter which did not deny non-supply.

In appeal, the appellant contended that it was itself a victim of fraud committed by Mr. Agarwal and had no knowledge of the transaction. The respondent opposed this, arguing that the appellant had accepted the purchase order and failed to file a written statement even after repeated opportunities. The High Court noted that under Order VIII Rule 1 CPC, the outer limit for filing a written statement is 120 days from service of summons, beyond which the right stands forfeited. It also analysed whether in such a situation the suit must automatically be decreed or if the court must examine the merits.

Discussing legal precedents, the court held that a decree under Order VIII Rule 10 CPC is permissible where the plaintiff’s case is unimpeachable and there are no disputed questions of fact requiring evidence. On facts, it was found that the appellant had received the advance, failed to supply goods, and failed to place any credible material on record to substantiate its defence of fraud by Mr. Agarwal. The trial court had rightly held that the documents filed by the respondent were of unimpeachable character and the appellant’s plea was an afterthought.

Dismissing the appeal, the High Court upheld the decree in favour of the respondent along with interest, finding no cause to interfere with the impugned judgment and decree passed by the trial court. Pending applications were also disposed of.

Tata Sons Private Limited Vs John Doe and Ors

Tata Sons Private Limited Vs John Doe and Ors, CS(COMM) 685/2025:July:10, decided on 10th July 2025 by the High Court of Delhi before Hon’ble Mr. Justice Amit Bansal

The plaintiffs, part of the renowned Tata Group of Companies and proprietors of well-known trademarks including TATA, TATA TEA, TATA COFFEE and others, approached the Delhi High Court seeking urgent interim relief against unknown persons (John Doe defendants) who were fraudulently using the plaintiffs’ marks to impersonate Tata’s representatives and lure the public into fake dealership and distributorship schemes. The plaintiffs narrated that the fraudsters were running multiple deceptive websites containing the TATA mark combined with words like “dealership” and “distributorship”, persuading victims to deposit amounts starting from ₹25,000 under various pretexts such as registration fees and product deposits, ultimately defrauding them of lakhs of rupees. On receipt of several complaints in January 2025, the plaintiffs conducted investigations which revealed a systematic misuse of the TATA brand across multiple domains, email IDs, UPI accounts, and phone numbers, all operated with a similar fraudulent modus operandi.

Faced with continued proliferation of such fraudulent domains and the resultant damage to their goodwill and innocent consumers, the plaintiffs filed the suit along with applications under Order XXXIX Rules 1 & 2 CPC seeking a permanent injunction. Exemption from pre-institution mediation was also sought under Section 12A of the Commercial Courts Act, citing urgency, which the Court granted.

Justice Amit Bansal observed that the plaintiffs had established a prima facie case of trademark infringement and fraud, and that the balance of convenience lay in favour of the plaintiffs. The Court acknowledged the irreparable harm to the plaintiffs’ reputation and the need to protect unsuspecting members of the public from fraud. The order restrained the John Doe defendants from using the plaintiffs’ TATA trademarks or any deceptively similar variants across any medium including domain names, email addresses, social media handles, and bank details. The Court also directed domain registrars to suspend and lock the offending domain names, telecom providers to block related phone numbers, banks and payment platforms to freeze related UPI IDs and bank accounts, and the concerned ministries to issue notifications blocking access to the fraudulent websites and phone numbers. Compliance affidavits and KYC details of the perpetrators were directed to be filed by the respective intermediaries.

Dura-Line India Pvt Ltd Vs Jain Irrigation Systems Ltd.

Introduction: The case of Dura-Line India Pvt. Ltd. v. Jain Irrigation Systems Ltd. represents a significant intellectual property dispute adjudicated by the High Court of Delhi. This litigation centers on allegations of patent and design infringement concerning a non-metallic pipe assembly with a co-extruded tracer cable, designed for traceability and leakage detection. The plaintiff, Dura-Line India Pvt. Ltd., accused the defendant, Jain Irrigation Systems Ltd., of infringing its Indian Patent No. IN 199722 and Design Registration No. 192665 through the manufacture and sale of similar products. The defendant countered by challenging the validity of the plaintiff’s patent, alleging lack of novelty, inventive step, and sufficient disclosure. This case study provides a comprehensive analysis of the factual and procedural background, the issues involved, the submissions of the parties, the judicial reasoning, the final decision, and the legal principles established.

Detailed Factual Background : Dura-Line India Pvt. Ltd., a subsidiary of Dura-Line International Inc., is a company specializing in infrastructure solutions for telecommunications, energy, and water sectors, operating ISO 9001-certified manufacturing facilities in India. The plaintiff holds Indian Patent No. IN 199722, granted on August 30, 2007, for a pipe assembly designed to facilitate traceability and leakage detection in non-metallic pipes used for fluid transport. The invention features a non-metallic pipe with a co-extruded tracer cable encased in polymer material, enabling underground location and leak detection without compromising structural integrity. This product, commercially marketed as "Dura Trac," generated significant revenue, with the plaintiff reporting INR 3,00,66,810 in manufacturing value for 2012. Additionally, the plaintiff secured Design Registration No. 192665 for the surface pattern of a "Detectable Pipe," corresponding to the patented invention.

The defendant, Jain Irrigation Systems Ltd., is a leading manufacturer of plastic pipes in India, known for its research and development capabilities and extensive production of polyethylene (PE) and polypropylene (PP) pipes. The dispute arose in the context of a tender for the Omkareshwar Lift Irrigation Scheme, which required HDPE pipes with underground detectability features, including a co-extruded copper wire. The plaintiff, invited to submit a proposal on November 25, 2011, responded with an offer based on its patented technology. However, a news article in the Hindustan Times, Indore edition, dated December 11, 2012, revealed that the defendant had already supplied pipes for the project. The plaintiff alleged that the defendant’s products, "B-Sure Polyethylene (PE) and Polypropylene (PP) Sewerage Pipes" and "Jain Insta Tracer Pipes," infringed its patent and design rights by incorporating the essential features of the patented invention and registered design.

The defendant denied infringement and challenged the validity of the plaintiff’s patent under Section 64 of the Patents Act, 1970, citing lack of novelty, absence of inventive step, and insufficient disclosure. The defendant also contested the design infringement claim, arguing that the registered design pertained only to the surface pattern and not the functional or structural aspects of the pipe assembly.

Detailed Procedural Background: The plaintiff initiated the lawsuit in 2013, originally numbered as CS(OS) 796/2013, which was later renumbered as CS(COMM) 245/2017 under the Commercial Courts Act, 2015. The suit alleged infringement of Patent No. IN 199722 and Design Registration No. 192665, seeking remedies including rendition of accounts. The defendant responded with a written statement and a counter-claim (CC(COMM) 54/2017) seeking revocation of the patent. The plaintiff filed a written statement to the counter-claim, and the defendant submitted a replication.

On October 5, 2016, the court framed issues for the suit and counter-claim, addressing the plaintiff’s proprietorship of the patent and design, the defendant’s alleged infringement, the validity of the patent, and the appropriateness of the requested reliefs. A Local Commissioner was appointed to record evidence, with the plaintiff initially bearing the costs. The plaintiff presented two witnesses, Mr. Davender Kumar Sharma (PW-1) and Dr. Prasanta Kumar Tripathy (PW-2), along with documentary evidence, including the patent certificate and Form 27. The defendant examined Mr. Gautam Ray (DW-1) and Mr. J. Wadhwani (DW-2), relying on prior art documents to challenge the patent’s validity.

The court clarified on October 23, 2019, that the infringement analysis would cover both of the defendant’s products. The plaintiff later withdrew its infringement claim regarding the method claim (Claim 9), focusing solely on the apparatus claims (Claims 1, 6, and 7). The case culminated in a judgment pronounced on May 19, 2025, by Justice Sanjeev Narula.

Issues Involved in the Case: The court framed the following issues for determination: Whether the plaintiff is the proprietor of the invention titled "A Pipe Assembly Having Traceability and Leakage Detection Features" bearing Patent Registration No. 199722? Whether the plaintiff is the proprietor of the Design for a pipe having a co-extruded cylindrical structure bearing Design Registration No. 192665? Whether the defendant’s adoption and use of the products "B-Sure Polyethylene (PE) and Polypropylene (PP) Sewerage Pipes" and "Jain Insta Tracer Pipes" amounts to infringement of the plaintiff’s Patent No. 199722? Whether the defendant’s adoption and use of the products amounts to infringement of the plaintiff’s Design Registration No. 192665?

Plaintiff’s Submissions : The plaintiff asserted proprietorship of Patent No. IN 199722, supported by the patent certificate and Form 27, demonstrating commercial exploitation under the "Dura Trac" trademark. They argued that the patent’s novelty and inventive step lay in the combination of a non-metallic pipe, a co-extruded tracer cable, and its encasement in polymer, enabling traceability and leak detection without compromising pipe strength. The plaintiff claimed that the defendant’s products, "B-Sure PE/PP Sewerage Pipes" and "Jain Insta Tracer Pipes," incorporated all essential elements of Claim 1, as evidenced by product brochures and technical manuals. They provided a claim-to-product comparison, highlighting the presence of a non-metallic pipe (made of HDPE or PP), a co-extruded tracer cable, and its polymer encasement in the defendant’s products.

Regarding the design, the plaintiff contended that Design Registration No. 192665 protected the surface pattern of the "Detectable Pipe," which the defendant’s products imitated, infringing their rights under the Designs Act, 2000. They argued that the defendant’s products visually resembled the registered design, constituting fraudulent or obvious imitation.

The plaintiff refuted the defendant’s counter-claim, asserting that the patent was validly granted after scrutiny by the Patent Office, with no pre-grant or post-grant opposition filed. They argued that the cited prior art did not disclose the specific combination of features claimed, and the specification adequately described the invention for a person skilled in the art (PSA). The plaintiff denied any fraud or misrepresentation during patent prosecution, emphasizing compliance with Section 8 of the Patents Act.

Defendant’s Submissions: The defendant denied infringement, arguing that their products used conventional technology predating the plaintiff’s patent. They claimed that their manufacturing process involved a two-step method—extruding the pipe first and then affixing the tracer cable—distinct from the simultaneous co-extrusion claimed in the patent. The defendant relied on the testimony of DW-2, who described this process, asserting it did not fall within the patent’s scope. They argued that the plaintiff failed to provide technical evidence proving simultaneous extrusion in their products.

The defendant challenged the patent’s validity under Section 64 of the Patents Act, citing lack of novelty (Section 64(1)(e)), absence of inventive step (Section 64(1)(f)), insufficient disclosure (Section 64(1)(h)), and unclear claims (Section 64(1)(i)). They submitted 20 prior art documents, including US patents and technical manuals, to demonstrate that the claimed invention was publicly known or obvious before the priority date of July 25, 2003. The defendant contended that the plaintiff’s product mirrored prior art, particularly US Patent No. 5,918,267, implying that the patent lacked novelty or that their products, if infringing, would also infringe prior art.

On the design infringement claim, the defendant argued that the registered design protected only the surface pattern, not functional features like the tracer cable or pipe structure. They asserted that their products’ visual appearance differed significantly, lacking deceptive similarity to the plaintiff’s design.

Detailed Discussion on Judgments and Citations: The court referenced several judicial precedents to guide its analysis, each cited in a specific context: Burger King Corporation v. Techchand Shewakramani & Ors., 2018 SCC OnLine Del 10881: Cited to address the plaintiff’s objections to the admissibility of the defendant’s prior art documents. The court held that publicly available documents, such as patents and technical manuals, should not be denied admission, as they fall under Section 74 of the Indian Evidence Act. This ruling supported the court’s decision to admit the defendant’s prior art for evaluating patent validity. Maj. (Retd.) Sukesh Behl v. Koninklijke Philips Electronics, 2014 SCC OnLine Del 2313: Referenced in the context of the defendant’s claim under Section 64(1)(m) for fraud or misrepresentation. The court noted that non-compliance with Section 8 (disclosure of foreign applications) does not automatically warrant revocation, as the provision is discretionary. This precedent underscored the high threshold for proving deliberate deception, which the defendant failed to meet. Versalis SPA v. Assistant Controller of Patents, 2024 SCC OnLine Mad 4277: Cited to clarify that a patent specification need not address every possible variation or application, as long as the core invention is sufficiently disclosed. This supported the court’s finding that the plaintiff’s specification met the requirements of Sections 64(1)(h) and 64(1)(i). Cryogas Equipment Private Limited v. Inox India Limited and Others, (2025) SCC OnLine SC 780: Applied to the design infringement analysis, emphasizing that design protection covers only visual appeal (shape, configuration, pattern, or ornamentation) and excludes functional features. The court relied on this precedent to reject the plaintiff’s design infringement claim, as the claimed features were functional rather than ornamental. Raj Parkash v. Mangat Ram Chowdhry, 1977 SCC OnLine Del 33: Used to articulate the doctrine of “pith and marrow” in patent infringement, focusing on whether the defendant’s product embodies the essential features of the patented invention, regardless of manufacturing method. This supported the court’s finding of infringement, as the defendant’s products matched the structural and functional elements of Claim 1. Rodi & Weinberger A.G. v. Henry Showell Ltd., (1966) RPC 441: Cited to reinforce that infringement cannot be avoided by minor variations in manufacturing methods if the final product embodies the patented features. This precedent bolstered the court’s rejection of the defendant’s two-step process defense. Castrol India Ltd. v. Tide Water Oil Co. Ltd., 1996 (16) PTC 202 (Cal): Applied to the design infringement analysis, establishing that the test for design infringement is visual similarity judged by the average consumer’s eye, not technical or structural identity. The court used this to conclude that the defendant’s products were visually distinct from the plaintiff’s registered design. Uflex Limited v. Government of Tamil Nadu and Others, (2022) 1 SCC 165: Referenced for principles on awarding costs in commercial litigation, emphasizing that costs should follow the event, be realistic, and curb frivolous litigation. The court applied these principles to award full commercial costs to the plaintiff.

Detailed Reasoning and Analysis of Judge: The court first addressed the plaintiff’s proprietorship of the patent and design, finding that the certified patent certificate and design registration, supported by witness testimony, established the plaintiff as the rightful proprietor. The defendant’s failure to adduce contrary evidence upheld the statutory presumption under Section 67 of the Patents Act and the Designs Act.

On the validity of the patent, the court examined the defendant’s challenges under Sections 64(1)(e), (f), (h), (i), and (m). For lack of novelty (Section 64(1)(e)), the court found that none of the 20 prior art documents disclosed the precise combination of a non-metallic pipe, co-extruded tracer cable, and polymer encasement, preserving the patent’s novelty. Regarding inventive step (Section 64(1)(f)), the court determined that the invention involved technical advancements over prior art, such as improved structural integrity and reliable leak detection, which were not obvious to a PSA. The objections under Sections 64(1)(h) and (i) for insufficient disclosure and unclear claims were rejected, as the specification adequately described the invention and its claims were clearly drafted. The fraud allegation under Section 64(1)(m) was dismissed due to the absence of evidence showing deliberate misrepresentation during patent prosecution.

For patent infringement, the court focused on Claim 1, which described a non-metallic pipe with a co-extruded tracer cable encased in polymer. The plaintiff’s claim-to-product comparison, supported by the defendant’s brochures and admissions, confirmed that the defendant’s products incorporated these elements. The court rejected the defendant’s defense of a two-step manufacturing process, citing the “pith and marrow” doctrine and emphasizing that infringement depends on the product’s features, not the method of manufacture. The court also dismissed the defendant’s argument that their products mirrored prior art, as it conflated infringement with validity.

On design infringement, the court found that the plaintiff’s claim relied on functional features (e.g., the tracer cable), which are not protectable under the Designs Act. The visual comparison revealed distinct differences in surface pattern and contour, negating any deceptive similarity. The plaintiff’s failure to provide comparative visual analysis or consumer impression studies further weakened their case.

Final Decision: The court decreed the suit in favor of the plaintiff for patent infringement, finding that the defendant’s products infringed Patent No. IN 199722. The counter-claim for revocation was dismissed, and the patent’s validity was upheld, with a certificate of validity issued under Section 113 of the Patents Act. The design infringement claim was rejected due to the functional nature of the claimed features and lack of visual similarity. As the patent had expired on July 23, 2023, injunctive relief was unavailable, but the plaintiff was entitled to rendition of accounts for profits earned by the defendant from April 20, 2010, to July 23, 2023. A Local Commissioner was appointed to oversee this process, with the defendant ordered to submit accounts within six weeks. The plaintiff was awarded full commercial costs, to be computed by the Taxing Officer.

Law Settled in This Case: The case reinforces several key principles in Indian intellectual property law: Patent Validity: The grant of a patent by the Controller of Patents under the Patents Act constitutes prima facie evidence of proprietorship of Patent. Infringement Analysis: Patent infringement is assessed based on the “pith and marrow” doctrine, focusing on whether the defendant’s product embodies the essential features of the patented claims, irrespective of manufacturing methods. Design Protection: Design registration under the Designs Act protects only visual features (shape, configuration, pattern, or ornamentation), excluding functional or technical aspects. Remedies for Expired Patents: While injunctive relief is unavailable post-patent expiry, remedies like rendition of accounts remain viable for infringements during the patent term.

Case Title: Dura-Line India Pvt. Ltd. v. Jain Irrigation Systems Ltd.: Date of Order: May 19, 2025: Case No.: CS(COMM) 245/2017 : Neutral Citation: 2025:DHC:4036: Name of Court: High Court of Delhi: Name of Hon'ble Judge: Sanjeev Narula, J

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

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

Asian Paints Limited Vs Ram Babu

Corporate Victimhood and the Right to Appeal under Section 372 CrPC

Introduction:The case of Asian Paints Limited Vs Ram Babu & Anr., decided by the Supreme Court of India on 14 July 2025, examined the scope of the right of a “victim” under the proviso to Section 372 of the Code of Criminal Procedure, 1973 (CrPC). At the heart of the matter was whether a corporate entity, as the holder of intellectual property rights harmed by counterfeiting, could maintain an appeal against an acquittal passed by the First Appellate Court, and whether such appeal was procedurally permissible in light of Section 378 CrPC. The decision offers clarity on the victim’s statutory right to appeal and harmonizes earlier judicial interpretations, reaffirming the participatory rights of victims in criminal proceedings.

Factual Background:Asian Paints Limited, a public limited company and a well-known manufacturer of paint products, discovered counterfeit products being sold under its brand at Ganpati Traders, a shop owned by Ram Babu in Rajasthan. Acting through its authorized IPR consultancy firm, M/s Solution, and its field investigator, Mr. Pankaj Kumar Singh, the company initiated a complaint with the police on 6 February 2016. A raid led to the seizure of twelve buckets of allegedly counterfeit paint, bearing marks similar to those of Asian Paints but lacking the company's distinctive bottom mark. To verify authenticity, the complainant provided two buckets of genuine Asian Paints products for comparison.

Procedural Background:An FIR bearing No.30/2016 was registered under Sections 420 and 120B of the Indian Penal Code, 1860 and Sections 63 and 65 of the Copyright Act, 1957. The matter was investigated, and a chargesheet was filed against Ram Babu. 

The Trial Court, by order dated 3 October 2019, convicted him under the aforementioned provisions, sentencing him to terms of imprisonment ranging from one to three years, along with fines. Ram Babu challenged the conviction before the First Appellate Court, which on 16 February 2022 acquitted him of all charges. Aggrieved, Asian Paints Limited filed S.B. Criminal Appeal (SB) No.2354/2022 before the High Court of Rajasthan under the proviso to Section 372 CrPC. 

The High Court dismissed the appeal on the ground that the company lacked locus standi as a “victim,” observing that only the complainant or the State could maintain such an appeal. The company then approached the Supreme Court through Special Leave Petition (Criminal) No.9888 of 2024.

Core Dispute:The dispute before the Supreme Court was whether Asian Paints Limited, as the aggrieved intellectual property right holder, qualified as a “victim” under Section 2(wa) CrPC and thus could invoke the right to appeal under the proviso to Section 372 CrPC against the order of acquittal by the First Appellate Court. The case further raised whether such an appeal was procedurally barred under Section 378 CrPC, which traditionally governs appeals against acquittals and requires leave of the High Court.

Discussion on Judgments :The appellant relied on Jagjeet Singh v. Ashish Mishra alias Monu, (2022) 9 SCC 321, where the Supreme Court clarified that a “victim” under Section 2(wa) CrPC includes persons who have suffered loss or injury due to the crime, and that being the complainant is not a prerequisite to claim victim status. This case was cited to assert that Asian Paints, as the party directly harmed by counterfeiting, qualified as a victim irrespective of whether the formal complaint was filed by its investigator.

Further reliance was placed on Mallikarjun Kodagali v. State of Karnataka, (2019) 2 SCC 752, where the Court interpreted the proviso to Section 372 CrPC liberally, holding that victims have an unqualified right to appeal against acquittals and that this right is independent of other provisions of the CrPC.

The appellant also cited Mahabir v. State of Haryana, 2025 SCC OnLine SC 184, where the Supreme Court reiterated that the proviso to Section 372 creates an independent and substantive right for victims to prefer appeals against acquittals, convictions for lesser offences, or inadequate compensation, and that this right is not curtailed by other sections, including Section 378 CrPC.

In contrast, the respondent relied on the language of Section 378 CrPC to argue that appeals against appellate acquittals require State intervention and the leave of the High Court, contending that the appeal by Asian Paints was thus procedurally impermissible.

Reasoning and Analysis of the Judge:The Supreme Court, speaking through Hon’ble Mr. Justice Ahsanuddin Amanullah and Hon’ble Mr. Justice Prashant Kumar Mishra, examined the statutory text of Sections 2(wa), 372, and 378 CrPC. The Court found that Asian Paints suffered direct reputational and financial injury from the counterfeiting, and that its role was more than that of a mere informant; it was the right holder whose intellectual property had been infringed. This brought the company within the definition of “victim” under Section 2(wa) CrPC.

The Court emphasized that the proviso to Section 372 CrPC was introduced as a standalone, substantive right, meant to enhance victims' access to justice. Citing Jagjeet Singh and Mallikarjun Kodagali, the Court rejected the view that the right was limited to complainants or to appeals against trial court acquittals only. It held that the right extends to challenging an acquittal by the First Appellate Court, and such an appeal would lie to the next higher forum in the judicial hierarchy, namely the High Court.

Importantly, the Court observed that the High Court had wrongly interpreted the company’s lack of formal status as complainant to exclude it from victim status and had also erred in treating the proviso to Section 372 as being limited by Section 378. The Court reaffirmed that the proviso operates independently, giving victims the right to appeal without the constraints of Section 378, which applies to State appeals and private complainant appeals in complaint cases.

Final Decision:The Supreme Court allowed the appeal, set aside the impugned judgment of the Rajasthan High Court, and held that the appeal filed by Asian Paints Limited under the proviso to Section 372 CrPC was maintainable. It restored the appeal to the file of the High Court for fresh adjudication on merits and directed the High Court to expedite the matter. The Court clarified that it had only addressed the question of law and left all factual defences open for determination.

Law Settled in This Case:The decision settles that a company harmed by offences like counterfeiting is a “victim” under Section 2(wa) CrPC, entitled to file an appeal under the proviso to Section 372 CrPC, even against an acquittal by the First Appellate Court. It affirms that the victim’s right of appeal is independent and standalone, and is not limited by the provisions of Section 378 CrPC. The judgment advances a liberal and purposive interpretation to protect victims’ participatory rights in criminal proceedings involving harm to property and reputation.

Case Title: Asian Paints Limited Vs. Ram Babu

Date of Order: 14 July 2025

Case Number:SLP (Crl.) No.9888 of 2024

Neutral Citation: 2025 INSC 828

Name of Court: Supreme Court of India

Name of Judge: Hon’ble Mr. Justice Ahsanuddin Amanullah and Hon’ble Mr. Justice Prashant Kumar Mishra

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

Pragati Construction Vs Union of India

Introduction: The case of Pragati Construction Consultants v. Union of India and Bharat Broadband Network Limited v. Sterlite Technologies Limited, adjudicated by a Full Bench of the Delhi High Court, addresses a critical procedural issue in the context of applications filed under Section 34 of the Arbitration and Conciliation Act, 1996 (A&C Act). Specifically, the court was tasked with determining whether the non-filing or defective filing of a Statement of Truth, as mandated under Order VI Rule 15A of the Code of Civil Procedure, 1908 (CPC), as amended by the Commercial Courts Act, 2015 (CC Act), renders an application under Section 34 of the A&C Act "non-est" (non-existent in the eyes of law). This issue is significant due to the strict limitation period prescribed under Section 34(3) of the A&C Act, which allows only three months, extendable by an additional thirty days with sufficient cause, for filing an application to set aside an arbitral award. 

Factual Background: The case arose from two separate matters referred to the Full Bench of the Delhi High Court. In the first matter, OMP(COMM) 20/2024 (Bharat Broadband Network Limited v. Sterlite Technologies Limited), the petitioner filed an application under Section 34 of the A&C Act on October 27, 2023, to challenge an arbitral award but failed to include a Statement of Truth as required under Order VI Rule 15A of the CPC, applicable to commercial disputes under the CC Act. This omission led to a dispute regarding the validity of the initial filing. 

In the second matter, FAO(OS)(COMM) 70/2024 (Pragati Construction Consultants v. Union of India), the issue of non-filing of the arbitral award itself was referred to the Full Bench, but the present case study focuses solely on the issue of the Statement of Truth as raised in OMP(COMM) 20/2024. The core contention was whether the absence or defect in the Statement of Truth rendered the application non-est, thereby failing to stop the limitation period under Section 34(3) of the A&C Act.

Procedural Background: The procedural journey of this case began with a reference made by a learned Single Judge of the Delhi High Court on March 21, 2024, in OMP(COMM) 20/2024, due to conflicting views expressed by two Division Bench judgments of the same court. The first judgment, Oil and Natural Gas Corporation Ltd. v. Joint Venture of Sai Rama Engineering Enterprises (Sree) & Megha Engineering & Infrastructure Ltd. (Meil) (2023 SCC OnLine Del 63), held that the non-filing of a Statement of Truth is a procedural defect that is curable and does not render an application under Section 34 non-est. In contrast, the second judgment, Oil and Natural Gas Corporation Ltd. v. Planetcast Technologies Ltd. (2023 SCC OnLine Del 8490), concluded that the absence of a Statement of Truth is a fatal defect, rendering the application non-est and incapable of stopping the limitation period. Recognizing this conflict, the Single Judge referred the matter to a larger bench for authoritative clarification. The Full Bench, comprising Justices Rekha Palli, Navin Chawla, and Saurabh Banerjee, was constituted to resolve this issue, with the judgment delivered on February 7, 2025.

Legal Issue: The primary legal issue before the Full Bench was whether the non-filing of a Statement of Truth, or a defect in its filing, such as blanks or lack of attestation, renders an application under Section 34 of the A&C Act non-est? This question is critical because a non-est filing does not stop the limitation period under Section 34(3) of the A&C Act, potentially barring the application if refiled beyond the prescribed period of three months plus thirty days. The court also considered whether Order VI Rule 15A of the CPC, which mandates a Statement of Truth for pleadings in commercial disputes, applies to applications under Section 34 of the A&C Act, given that such applications may not strictly qualify as "pleadings" under Order VI Rule 1 of the CPC.

Discussion on Judgments: The parties cited several judgments to support their arguments, which the Full Bench meticulously analyzed in the context of the non-filing of the Statement of Truth. The petitioner in OMP(COMM) 20/2024 relied on Oil and Natural Gas Corporation Ltd. v. Joint Venture of Sai Rama Engineering Enterprises (Sree) & Megha Engineering & Infrastructure Ltd. (Meil) (2023 SCC OnLine Del 63), where the Division Bench held that the absence of a Statement of Truth is a procedural defect, not rendering the application non-est. The court emphasized that Section 34 of the A&C Act does not specify procedural requirements beyond setting out grounds for challenge and including the arbitral award, and thus, procedural omissions like the Statement of Truth are curable.

In contrast, the respondent relied on Oil and Natural Gas Corporation Ltd. v. Planetcast Technologies Ltd. (2023 SCC OnLine Del 8490), which took a stricter view, holding that the absence of a Statement of Truth, as mandated under Order VI Rule 15A of the CPC, renders the application non-est. The court in Planetcast emphasized the mandatory nature of the Statement of Truth under the CC Act, citing its role in ensuring the veracity of pleadings and preventing frivolous filings.

The Full Bench also considered Vidyawati Gupta v. Bhakti Hari Nayak (2006) 2 SCC 777, where the Supreme Court held that the absence of an affidavit under Order VI Rule 15(4) of the CPC in a civil suit does not render the plaint non-est, as such procedural requirements are directory and curable. This precedent was pivotal in shaping the court’s view that procedural defects do not automatically invalidate a filing.

Other judgments cited included Jay Polychem (India) Ltd. v. S.E. Investment Ltd. (2018 SCC OnLine Del 8848) and Director-cum-Secretary, Department of Social Welfare v. Saresh Security Services Pvt. Ltd. (2019 SCC OnLine Del 8503), both of which involved multiple defects, including the absence of signatures, affidavits, and vakalatnamas, leading to a non-est finding due to cumulative deficiencies. Similarly, Indira Gandhi National Open University v. Sharat Das & Associates (P) Ltd. (2023 SCC OnLine Del 7915) and Three C Universal Developers (P) Ltd. v. Horizon Crest India Real Estate & Ors. (2020 SCC OnLine Del 2798) involved applications with multiple defects, such as missing signatures, vakalatnamas, and arbitral awards, reinforcing that non-est findings were based on cumulative flaws rather than the sole absence of a Statement of Truth.

The court also reviewed Bajaj Electricals Ltd. v. E-One Infotech Pvt. Ltd. (2023 SCC OnLine Del 5154) and KNR Constructions Ltd. v. BHEL (2023 SCC OnLine Del 4910), where a Single Judge held that a Statement of Truth, along with other requirements like signatures on each page, is mandatory for a proper filing. However, the Full Bench disagreed with this strict interpretation, finding it overly pedantic. In A V Industries v. Neo Neon Electrical (P) Ltd. (2023 SCC OnLine Del 5397), the Division Bench’s finding that a plaint without a Statement of Truth was non-est was distinguished, as it involved a complete failure to file the Statement of Truth even later, unlike the curable defect scenario in arbitration applications.

Reasoning and Analysis of the Judge: The Full Bench’s reasoning was grounded in a balanced approach to procedural compliance and substantive justice. The court first addressed the applicability of Order VI Rule 15A of the CPC to Section 34 applications. The petitioner argued that Order VI Rule 15A applies only to "pleadings" (plaint or written statement) as defined under Order VI Rule 1 of the CPC, and thus, an application under Section 34, being distinct, is exempt. The court rejected this argument, relying on Section 10 of the CC Act, which vests jurisdiction in Commercial Divisions for arbitration matters and applies the CPC’s procedural framework, including Order VI Rule 15A, to such applications. The court reasoned that the CC Act’s intent to streamline commercial disputes extends to arbitration applications, making the Statement of Truth requirement applicable.

However, the court held that the non-filing or defective filing of a Statement of Truth is a procedural defect, not a fundamental one that renders the application non-est. Drawing from Vidyawati Gupta, the court emphasized that procedural requirements under the CPC are directory, aimed at expediting justice rather than obstructing it. The court distinguished cases like Planetcast, where non-est findings were based on cumulative defects, such as missing signatures, vakalatnamas, and arbitral awards, rather than the sole absence of a Statement of Truth. The court clarified that a non-est filing requires a finding of mala fide intent to stall limitation, such as filing a mere "bunch of papers" without substantive content.

The court further noted that while the Statement of Truth is essential, its absence or defects (e.g., blanks or lack of attestation) can be cured, and the court must consider the totality of defects and the applicant’s intent when determining whether a filing is non-est. This approach ensures that procedural technicalities do not unduly deprive parties of their substantive right to challenge an arbitral award under Section 34.

Final Decision: The Full Bench answered the reference in OMP(COMM) 20/2024 by holding that the non-filing of a Statement of Truth or a defect therein does not, by itself, render an application under Section 34 of the A&C Act non-est. However, if accompanied by other defects that collectively indicate a mala fide intent to merely stop the limitation period without a genuine intention to pursue the application, the court may declare the filing non-est. 

Law Settled in This Case: The judgment settles the law that the non-filing or defective filing of a Statement of Truth under Order VI Rule 15A of the CPC, as applicable to commercial disputes, does not automatically render an application under Section 34 of the A&C Act non-est. The court must assess the cumulative effect of all defects and the applicant’s intent. A procedural defect like the absence of a Statement of Truth is curable, and the court retains discretion to condone delays in rectifying such defects, provided the initial filing is within the limitation period under Section 34(3) of the A&C Act. This ruling balances the strict limitation regime of the A&C Act with the need to preserve substantive rights, ensuring that procedural lapses do not unduly bar legitimate challenges to arbitral awards.

Case Title: Pragati Construction Consultants Vs. Union of India : Date of Order: February 7, 2025:Case Number: FAO(OS) (COMM) 70/2024 :Neutral Citation: 2025 :DHC:717-FB:Name of Court: High Court of Delhi at New Delhi:Name of Hon'ble  Judge: Justice Rekha Palli, Justice Navin Chawla, Justice Saurabh Banerjee

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