Star India Private Limited Vs. Stream2Watch.pk

Factual Background:

The plaintiffs, Star India Private Limited and Novi Digital Entertainment Pvt. Ltd., are leading media and entertainment companies. Star India operates over 70 channels under the brand "STAR," broadcasting a wide range of content including sports events such as the ICC Men’s T20 World Cup 2024. Novi Digital operates the popular streaming platform "Disney+ Hotstar," which also streams these events online. The plaintiffs hold exclusive media rights, including television broadcasting and digital streaming rights, for the ICC events in India for the period 2024-2027, as per the Media Rights Agreement with the International Cricket Council (ICC). The dispute arose when multiple rogue websites operated by the defendants were found to be illegally broadcasting and disseminating the plaintiffs' exclusive content related to the ICC Men’s T20 World Cup 2024. The plaintiffs had previously faced similar infringements during events like the Tata IPL 2024.

Procedural Background:

The plaintiffs filed CS(COMM) 455/2024 before the Delhi High Court seeking a permanent injunction against defendants, including rogue websites, domain name registrars, internet service providers (ISPs), and government authorities. On 28th May 2024, the Court passed an ex-parte ad interim injunction restraining defendants from infringing the plaintiffs' rights by illegally streaming or broadcasting their content. The Court also directed domain registrars to lock and suspend domain names and ISPs to block access to the rogue websites. Subsequently, the plaintiffs identified and impleaded additional rogue websites as defendants. Despite being served, no written statements or affidavits of admission/denial were filed by the defendants, and the time for filing the same expired.

Provisions of Law Referred and Their Context:

Section 37 of the Copyright Act, 1957 was invoked by the plaintiffs, which grants broadcasting organizations exclusive broadcast reproduction rights. The plaintiffs argued that the unauthorized online streaming of the ICC T20 World Cup 2024 by rogue websites infringed their statutory rights under this section. Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC) was relied upon by the Court to decree the suit as uncontested, given the absence of a written statement from the defendants. The plaintiffs also invoked Order I Rule 10 of the CPC to implead additional rogue websites discovered during the proceedings.

Reasoning of Court"

The Court noted that the defendants had not filed any written statements, and in accordance with Order VIII Rule 10 CPC and Rule 3 of the Delhi High Court (Original Side) Rules 2018, the unchallenged averments and documents filed by the plaintiffs stood admitted. The Court held that the rogue websites were knowingly engaged in exploiting the plaintiffs' exclusive rights by making unauthorized broadcasts of the ICC T20 World Cup 2024 content. This illegal dissemination infringed both copyright and broadcast reproduction rights, causing irreparable harm to the plaintiffs by reducing their revenues and diluting the commercial value of their rights. The Court found no defence on record from the defendants and concluded that there was no merit in continuing the suit to trial.

Decision:

The Delhi High Court passed a decree of permanent injunction in favour of the plaintiffs, restraining defendants no.1 to 11 and defendants no.33 to 175 (rogue websites) from further infringing the plaintiffs' rights. The Court accepted that the other reliefs stood satisfied, and the plaintiffs did not press for damages. 

Case Title: Star India Private Limited Vs. Stream2Watch.pk 

Date of Order: 3rd March, 2025

Case Number: CS(COMM) 455/2024

Name of Court: High Court of Delhi at New Delhi

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

DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited

Trademark Infringement and anti dissection Rule

Introduction:

This case revolves around a trademark dispute between DS Drinks and Beverages Private Limited and Hector Beverages Private Limited concerning the use of the mark "SWING" for beverages. Hector Beverages, the plaintiff, claimed infringement of its registered trademark "SWING" by DS Drinks, which intended to use the mark "CATCH SWING ENERGY INVIGORATES & MIND" for its energy drinks. The dispute led to an interim injunction passed by the learned Trial Court, which was later challenged by DS Drinks in the Delhi High Court.

Detailed Factual Background:

Hector Beverages Private Limited has been engaged in the food and beverage industry since 2009 and markets various products under brands such as TZINGA Energy Drink, PAPERBOAT, SWING, and SWING FIZZ. Initially launched as a sub-brand under the main brand PAPERBOAT, "SWING" eventually gained independent recognition and goodwill in the market since 2017. Hector Beverages registered the trademark under No. 3691925 for "PAPER BOAT SWING JUICIER DRINK" under Class 32, registered on December 1, 2017, and under No. 5280472 under Class 32, registered on January 11, 2022.

DS Drinks and Beverages Private Limited filed an application for registration of the mark "CATCH SWING ENERGY INVIGORATES & MIND" under Class 32 on a 'proposed to be used' basis. Hector Beverages filed a suit asserting that the defendant's mark was deceptively similar to its own, leading to the present proceedings.

Detailed Procedural Background:

Hector Beverages filed CS (Comm.) No. 350/2024 before the learned District Judge (Commercial Courts-06), Central District, Tis Hazari Courts, Delhi, seeking an injunction against DS Drinks from using the mark "SWING." The learned Trial Court, after hearing both parties, granted an interim injunction under Order XXXIX Rules 1 and 2 CPC restraining DS Drinks from using "SWING" for its energy drinks. DS Drinks appealed against this order by filing FAO (COMM) 61/2025 before the Delhi High Court.

Issues Involved in the Case:

Whether the mark "SWING" forms a dominant and distinctive part of Hector Beverages' trademark and whether DS Drinks' mark "CATCH SWING ENERGY INVIGORATES & MIND" is deceptively similar to it. Whether the learned Trial Court erred in granting the injunction by dissecting Hector Beverages’ composite mark "PAPERBOAT SWING." Whether the goods offered by the parties (juices and energy drinks) are allied products, giving rise to confusion among consumers.

Detailed Submission of Parties:

The appellant, DS Drinks, argued that its mark "CATCH SWING ENERGY INVIGORATES & MIND" is distinct from Hector Beverages’ mark "PAPERBOAT SWING." The products are different as Hector Beverages uses "SWING" for juices and "TZINGA" for energy drinks, while DS Drinks' product is an energy drink. The learned Trial Court erred in separating "SWING" from the composite mark "PAPERBOAT SWING" to grant exclusivity. The doctrine of anti-dissection applies, requiring the mark to be evaluated as a whole. They relied on Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370, and Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635.

The respondent, Hector Beverages, contended that "SWING" is the dominant part of both marks. The appellant’s mark has been applied for on a "proposed to be used" basis, and thus the respondent is the prior user and registered proprietor. Confusion is likely due to the visual and phonetic similarities. The appellate court should not substitute its discretion for that of the learned Trial Court unless grave errors are demonstrated. They cited Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490.

Detailed Discussion on Judgments Cited by Parties and Their Context: Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490 was referred to by the respondent to emphasize that appellate courts should interfere with discretionary orders of lower courts only when they are arbitrary or contrary to settled principles.  Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370 was relied upon by DS Drinks to support the anti-dissection rule, arguing that composite marks like "PAPERBOAT SWING" must be evaluated as a whole.  Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635 was cited by DS Drinks to assert that trademark infringement claims must relate to the entire mark unless a specific dominant portion has been exclusively copied.  M/s South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953 was relied upon by the Court to explain that while marks should be evaluated as a whole, the dominant portion may still be protected if confusion arises due to its similarity.  M/s P.K. Overseas Pvt. Ltd. & Anr. v. M/s Bhagwati Lecto Vegetarians Exports Pvt. Ltd. & Anr., 2016 SCC OnLine Del 5420 was cited by the Court to reinforce the principle that even where products or marks appear composite, infringement can be based on the dominant feature.

Detailed Reasoning and Analysis of Judge:The Court emphasized its limited appellate jurisdiction, relying on Wander Ltd. It noted that no grave error in law or perversity existed in the Trial Court’s order. The Court held that the predominant part of both marks is the word "SWING", clearly visible on the product packaging. While acknowledging the anti-dissection rule, the Court clarified that the dominant feature test is an established exception when determining deceptive similarity.The Court opined that "PAPERBOAT" functions as a family mark, while "SWING" identifies the specific product variant. The presence of "CATCH SWING" in the appellant's mark creates a likelihood of confusion under the test of imperfect recollection.On the issue of whether juices and energy drinks are distinct, the Court found them to be allied products since both fall under the same trade channels and consumer groups. The Court rejected the argument that the respondent’s use of "TZINGA" for energy drinks precluded it from seeking protection for "SWING" in the same category.

Final Decision: The appeal was dismissed, and the injunction granted by the learned Trial Court was upheld, restraining DS Drinks from using the mark "SWING" for its energy drinks. However, it was clarified that the observations were prima facie and would not affect the final adjudication of the pending suit.

Law Settled in This Case:

The case reinforces that the dominant feature doctrine can apply alongside the anti-dissection rule when assessing trademark infringement involving composite marks. It also affirms that allied goods across similar trade channels can result in consumer confusion, justifying injunctive relief even when the competing products (juice vs. energy drink) differ slightly.

Case Title: DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited

Date of Order: 03.03.2025

Case No.: FAO (COMM) 61/2025

Neutral Citation: DHC:2025:1391-DB

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. 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

Creative Land Advertising Vs. Winzo Games

FACTUAL BACKGROUND:

The case involves a dispute between CreativeLand Advertising Pvt. Ltd. and Winzo Games Pvt. Ltd. over intellectual property rights and confidentiality obligations related to a brand campaign. CreativeLand, a creative agency, claims that it developed a tagline, "Jeeto Har DinZo," exclusively for Winzo Games under a Non-Disclosure Agreement (NDA). The agency argues that Winzo unlawfully used the tagline without proper authorization and sought legal intervention to prevent its use. Winzo maintains that the tagline was a derivative of its internal branding strategy and was never exclusively created by CreativeLand.

PROCEDURAL BACKGROUND:

CreativeLand filed a petition under Section 9 of the Arbitration and Conciliation Act, 1996, seeking an injunction to restrain Winzo from using the tagline. The Delhi High Court directed the matter to arbitration, where the Sole Arbitrator ruled against granting an injunction. The Arbitrator held that no formal agreement for the tagline's use existed and that damages could adequately compensate CreativeLand if its claim was proven. CreativeLand challenged this ruling under Section 37 of the Arbitration Act before the High Court.

PROVISIONS OF LAW REFERRED AND THEIR CONTEXT:

The case primarily revolves around the Arbitration and Conciliation Act, 1996, specifically:

Section 9: Provides for interim relief before arbitration proceedings.

Section 17: Empowers the arbitral tribunal to grant interim measures.

Section 37: Governs appeals against orders under Sections 9 and 17.

The NDA between the parties also played a crucial role, particularly clauses defining confidentiality and restrictions on unauthorized use of shared information.

JUDGMENTS REFERRED WITH CITATION AND CONTEXT:

Indian Oil Corporation v. Amritsar Gas Services (1991 SCC OnLine SC 513): Establishing that in determinable contracts, damages are the appropriate remedy rather than injunctions.

World Window Infrastructure Pvt. Ltd. v. Central Warehousing Corporation (2021 SCC OnLine Del 5099): Highlighting the limited scope of interference in arbitral orders under Section 37.

These judgments reinforced that injunctive relief should be granted only in exceptional cases where monetary compensation would be inadequate.

REASONING OF THE COURT:

The High Court upheld the Arbitrator’s ruling, stating that CreativeLand failed to prove exclusive ownership of the tagline. The court noted that Winzo had contributed to the creative process and that the tagline contained "WinZo," its registered trademark. It further held that the NDA did not explicitly classify the tagline as confidential information. Given the lack of a formal engagement and agreed pricing, the court ruled that damages, rather than an injunction, were the appropriate remedy. The court emphasized that Section 37 limits interference in arbitral decisions unless they are perverse or against public policy.

DECISION:

The High Court dismissed CreativeLand’s appeal, affirming that the Arbitrator’s decision was reasonable. However, as a protective measure, Winzo was directed to furnish a bank guarantee of ₹50 lakhs until the arbitration was resolved. CreativeLand was also given the option to challenge Winzo’s trademark registration of the tagline before the appropriate authority.

CASE DETAILS:

Case Title: Creative Land Advertising Pvt. Ltd. Vs. Winzo Games Pvt. Ltd.

Date of Order: March 18, 2025

Case Number: ARB. A. (COMM.) 15/2025 & 17/2025

Neutral Citation: 2025:DHC:1811

Court Name: High Court of Delhi

Hon'ble Judge: Justice Subramonium Prasad

DHL International GmbH Vs. DLH Express Services Private Ltd.

Factual Background:  

DHL International GmbH, a German logistics giant, sued DLH Express Services Private Ltd. for trademark infringement, passing off, and dilution. DHL, established in 1969, uses the "DHL" mark and a distinctive red-and-yellow logo globally, including India, where it has significant presence and registrations. The defendant adopted "DLH" for courier services, mimicking DHL’s mark and logo, prompting DHL to seek injunctions and a declaration of "DHL" as a well-known mark.

Procedural Background: 

The suit (CS(COMM) 563/2020) was filed with an application (I.A. 16452/2021) for summary judgment. On December 22, 2020, an ex-parte interim injunction restrained the defendant from using "DLH" or similar marks, which continued until the final hearing. The defendant later changed its name to Dogra’s Cargo Express Private Ltd. and ceased using "DLH." The court decided the matter on April 22, 2022.

Provisions of Law Referred and Their Context:  

Section 2(zg) of the Trade Marks Act, 1999 defines a "well-known trade mark" as one recognized by a substantial public segment, indicating a trade connection. 

Section 11(2) protects such marks against unfair use, even for dissimilar goods. Section 11(6) lists factors like public recognition and enforcement for determining well-known status. 

Rule 124 of the Trade Marks Rules, 2017 allows well-known mark applications. 

Order XIIIA of the Commercial Courts Act, 2015, read with Rule 27 of the Delhi High Court IPD Rules, 2022, permits summary judgment without a separate application if the defendant lacks a viable defense.

Judgments Referred with Complete Citation and Context:  

NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300 – A Delhi High Court ruling, affirmed by the Supreme Court, recognized "Whirlpool" as well-known due to extensive use and reputation, even without widespread goods presence. 

Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del) – A Delhi High Court decision elaborating that well-known marks enjoy trans-border reputation and protection against dilution. 

Dharampal Satyapal Sons Pvt. Ltd. v. Akshay Singhal & Ors., CS(COMM) 129/2019, decided on October 17, 2019 – Reaffirmed principles of well-known mark recognition. 

WIPO decisions like DHL Operations B.V. v. Karel Salovsky (Case No. D2006-0520) and DHL International GmbH v. Richard Yaming (Case No. D2012-1081) acknowledged "DHL"’s global notoriety.

Reasoning of Court: 

The court found "DHL" distinctive and globally renowned, supported by extensive evidence of use, registrations, and enforcement. The defendant’s "DLH" mark and logo were nearly identical, violating DHL’s rights, despite the defendant’s name change and cessation of use. 

Summary judgment was warranted under Order XIIIA as the defendant had no real defense. 

For well-known status, the court applied Section 11(6) factors, noting DHL’s widespread recognition, enforcement success, and third-party acclaim, concluding it merited protection across logistics and related fields.

Decision: 

The court granted a permanent injunction against the defendant using "DLH" or similar marks, ordered withdrawal of the defendant’s trademark application (no. 3147906), and declared "DHL" a well-known mark, directing the Trademark Registry to notify it. The suit was decreed, and all applications disposed of.

  

Case Title: DHL International GmbH Vs. DLH Express Services Private Ltd.  

Date of Order: April 22, 2022  

Case Number: CS(COMM) 563/2020   

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Prathiba M. Singh

Kubota Corporation Vs. Kaira Agros & Ors.

Fact of the Case : 

Kubota Corporation, the plaintiff, filed a suit against Kaira Agros and others, alleging infringement of its registered designs (nos. 265708 and 265709). Defendant no. 1 challenged the validity of these designs in its written statement and filed two cancellation petitions (D-9/129/2024-KOL and D-9/130/2024-KOL) before the Controller of Patents and Designs, Kolkata. The defendant sought transfer of these petitions to the Delhi High Court under Section 22(4) of the Designs Act, 2000.

 Procedural Background in Brief:  

The suit (CS(COMM) 273/2024) was filed with multiple applications, including I.A. 47753/2024 by defendant no. 1 for transfer of the cancellation petitions and I.A. 48242/2024 by the plaintiff to file additional documents. Notice for the transfer application was issued on December 10, 2024, and both applications were adjudicated on December 13, 2024.

 Judgments Referred in Case with Complete Citation and Context:

  

S.D. Containers Indore v. M/s Mold Tek Packaging Ltd., Civil Appeal No. 3695/2020 – The Supreme Court clarified that under Section 22(4) of the Designs Act, 2000, if a defendant in an infringement suit seeks design cancellation, the matter must be transferred to the High Court, distinguishing it from standalone cancellation before the Controller.  

Novateur Electrical & Digital Systems Pvt. Ltd. v. V-Guard Industries Ltd., 2023/DHC/000960 – A Delhi High Court ruling following S.D. Containers, affirming that Section 22(4) mandates transfer of cancellation proceedings to the High Court when raised as a defense in a suit.

Reasoning of Court:  

The court relied on Section 22(4) of the Designs Act, 2000, and precedents to determine that since defendant no. 1 raised the invalidity of the plaintiff’s designs in its defense and filed cancellation petitions, these petitions must be transferred to the High Court hearing the infringement suit. The undisputed defense of invalidity triggered the statutory requirement for transfer, as clarified in S.D. Containers and Novateur Electrical.

 Decision:  

The court allowed I.A. 47753/2024, directing the Controller of Patents and Designs, Kolkata, to transfer cancellation petitions D-9/129/2024-KOL and D-9/130/2024-KOL to the Delhi High Court within six weeks.

 

Case Title: Kubota Corporation Vs. Kaira Agros  

Date of Order: December 13, 2024  

Case Number: CS(COMM) 273/2024 

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal

Raj Vardhan Patodia (HUF) vs. Registrar of Trade Marks

Fact of the Case:

The case involves an appeal by Raj Vardhan Patodia (HUF) against the Registrar of Trade Marks and another respondent. The appellant opposed trade mark application no. 3353986, but the opposition was deemed abandoned by the Registrar under Rule 45(2) of the Trade Marks Rules, 2017, for allegedly not filing evidence within two months of receiving the counter statement. The appellant claimed it had sent the evidence affidavit on time, supported by courier receipts, while the respondents argued non-delivery.

Procedural Background in Brief: 

The appellant filed opposition no. 1024552 against trade mark application no. 3353986. The Registrar served the counter statement on December 15, 2021, and later, on September 12, 2023, deemed the opposition abandoned for non-submission of evidence, despite a hearing on September 5, 2023. The appellant appealed under Section 91 of the Trade Marks Act, 1999, challenging this order, asserting the evidence was dispatched within the statutory period.

Provisions of law Referred in Case:

The court relied on statutory provisions: Rule 45 of the Trade Marks Rules, 2017, which mandates filing evidence within two months of receiving the counter statement, and Rule 14, which deems a document served if properly addressed and posted, requiring only proof of dispatch, not delivery.

Reasoning of Court:

The court found the Registrar’s order flawed, as it misinterpreted the appellant’s stance as denying service of the counter statement, whereas the appellant admitted receipt and claimed timely dispatch of evidence on February 1, 2022, within the two-month limit. Supported by a notarized affidavit, cover letter, and courier receipts, the court held that Rule 14 only requires proof of posting, not receipt, and the appellant met this standard. Principles of natural justice further supported considering the opposition on merits, as the evidence was sent during the COVID era, possibly lost in transit.

Decision:  

The court set aside the Registrar’s order of September 12, 2023, restored the opposition, directed the appellant to refile the evidence within one week, allowed the respondent to file its evidence, and cancelled the trade mark registration granted to respondent no. 2. The appeal was disposed of accordingly.

 

Case Title: Raj Vardhan Patodia Vs. Registrar of Trade Marks

Date of Order: March 18, 2025  

Case Number: C.A.(COMM.IPD-TM) 3/2024   

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal

Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt Ltd

 Facts of the Case

The case involves a dispute between Unique Entrepreneurs and Finance Limited (plaintiffs) and Really Agritech Pvt Ltd. and another (defendants) over alleged trademark infringement and passing off. The plaintiffs, registered proprietors of the marks "Ralli," "Ralli Engine," "Ralli Sprayer," and "Ralli Agricultural Machines" under classes 7 and 8, claimed that the defendants’ use of a deceptively similar mark "Really" (device) in class 7 infringed their rights. The plaintiffs alleged they became aware of the defendants’ use of the "Really" mark in May 2024, prompting them to file a suit seeking urgent interim reliefs, including an injunction, without pursuing pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The defendants contested this, arguing that the plaintiffs had knowledge of the "Really" mark as early as December 2018 (via an exhibition) and March 2022 (via WhatsApp messages), accusing them of suppressing material facts to bypass mediation.

 Procedural Background in Brief

The plaintiffs filed the suit (IP-COM/31/2024) in the High Court at Calcutta, Original Side, and obtained dispensation from pre-institution mediation under Section 12A on 30 September 2024, citing the need for urgent relief. The defendants filed applications (GA-COM/2/2024 and GA-COM/3/2024) seeking revocation of this dispensation and rejection of the plaint, arguing misrepresentation by the plaintiffs. The court heard arguments from both sides, with the plaintiffs defending their urgency claim and the defendants relying on evidence of prior knowledge to challenge it.

Judgments Referred in Case with Complete Citation and Context:Yamini Manohar vs. T.K.D. Keerthi, (2024) 5 SCC 815  Context: Emphasized that courts must scrutinize claims of urgency under Section 12A to prevent circumvention of mandatory mediation, balancing plaintiffs’ rights with statutory intent.  Patil Automation (P) Ltd. vs. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1 Context: Established Section 12A as mandatory, requiring rejection of suits filed without mediation unless urgent relief is genuinely contemplated.  Dr. Reddy’s Laboratories Ltd. vs. Smart Laboratories Pvt. Ltd., (2023) SCC OnLine Del 7276  Context: Held that urgency must be pleaded with supporting evidence, free of deception or suppression.  S.J.S. Business Enterprises (P) Ltd. vs. State of Bihar & Ors., (2004) 7 SCC 166  Context: Stressed that suppression of material facts disqualifies a litigant from relief, as it amounts to deceiving the court.  Mayar (H.K.) Ltd. & Ors. vs. Owners & Parties, Vessel M.V. Fortune Express & Ors., (2006) 3 SCC 100 Context: Reinforced that litigants must approach courts with clean hands, disclosing all material facts.  S.P. Chengalvaraya Naidu vs. Jagannath, (1994) 1 SCC 1  Context: Established that fraud unravels all, allowing courts to examine suppressed facts to detect fraud.  Chemco Plastic Industries Pvt. Ltd. vs. Chemco Plast, (2024) SCC OnLine Bom 1607  Context: Clarified that urgency must be assessed holistically, not solely based on time gaps.  Apollo Tyres Ltd. vs. Pioneer Trading Corporation & Anr., 2017 SCC OnLine Del 9825  Context: Distinguished by the court; held that non-disclosure of trivial facts does not equate to material suppression.

Reasoning of the Court:

Justice Ravi Krishan Kapur held that Section 12A mandates pre-institution mediation unless urgent interim relief is genuinely required, as per Patil Automation. The court found that the plaintiffs’ claim of discovering the "Really" mark in May 2024 was false, given evidence of their participation in the 2018 Kisan Mela exhibition (where rival goods were displayed) and WhatsApp messages from 2022 showing employee awareness of the defendants’ products. The court rejected the plaintiffs’ argument that employee knowledge was not attributable to them, deeming it unsubstantiated. It concluded that the plaintiffs suppressed material facts to fabricate urgency and bypass mediation, violating the principle of approaching the court with clean hands (S.J.S. Business Enterprises). While acknowledging that intellectual property suits often require urgent relief, the court emphasized that this does not exempt compliance with Section 12A when facts are misrepresented (Yamini Manohar). The five-month delay between alleged knowledge and filing was not decisive, but the suppression of prior knowledge was, leading to a finding of fraud on the court.

Decision:

The court revoked the dispensation granted on 30 September 2024, rejected the plaint in IP-COM/31/2024, vacated all interim orders, and allowed the defendants’ applications (GA-COM/2/2024 and GA-COM/3/2024). The plaintiffs’ suit and application for interim relief (GA-COM/1/2024) were dismissed. A subsequent request for a stay was denied.

Case Title: Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt Ltd. and Anr  

Date of Order: 20 March 2025  

Case Number: IP-COM/31/2024; 

Name of Court: High Court at Calcutta, 

Name of Hon’ble Judge: Justice Ravi Krishan Kapur

Interdigital Technology Corporation Vs Xiaomi Corporation

Patent Infringement and Anti Injunction Suit 

Introduction:

This case pertains to a patent infringement dispute involving Standard Essential Patents (SEPs) between InterDigital Technology Corporation and Xiaomi Corporation. The dispute centers on Xiaomi’s alleged unauthorized use of InterDigital’s SEPs related to 3G and 4G technologies in its cellular devices. The matter raises important legal issues concerning anti-suit and anti-enforcement injunctions, the global framework for FRAND (Fair, Reasonable, and Non-Discriminatory) licensing, and the enforcement of patent rights in India.

Detailed Factual Background:

InterDigital Technology Corporation holds SEPs necessary for the implementation of standardized 3G and 4G telecommunications technologies. These SEPs are patents that must be used to comply with international standards for mobile communication and are thus indispensable for manufacturers like Xiaomi that produce standard-compliant devices. The plaintiff alleged that Xiaomi, without obtaining a FRAND license, used these SEPs in its products sold globally, including in India. InterDigital initiated a suit for infringement before the Delhi High Court seeking injunctive relief against Xiaomi. In response, Xiaomi initiated proceedings in Wuhan, China, seeking determination of a global FRAND royalty rate and obtained an anti-suit injunction restraining InterDigital from pursuing its Indian suit.

Detailed Procedural Background:

InterDigital filed CS(COMM) 295/2020 before the Delhi High Court, alleging infringement of its SEPs and sought interim relief. On 23rd September 2020, Xiaomi obtained an anti-suit injunction from the Wuhan Intermediate People’s Court, restraining InterDigital from prosecuting its infringement suit in India. In turn, InterDigital approached the Delhi High Court seeking an anti-enforcement injunction to restrain Xiaomi from enforcing the Wuhan Court’s order in India. The Delhi High Court passed an interim order on 9th October 2020, and after hearing the parties, delivered its final ruling on 3rd May 2021.

Issues Involved in the Case:

Whether Xiaomi could enforce the anti-suit injunction granted by the Wuhan Court in India to restrain the ongoing Indian patent infringement proceedings?Whether InterDigital was entitled to an anti-enforcement injunction against Xiaomi to prevent enforcement of the Wuhan Court’s order?

Detailed Submission of Parties:

InterDigital argued that Xiaomi’s attempt to restrain Indian proceedings by invoking the Wuhan anti-suit injunction violated its fundamental right to legal redress in India and interfered with the Indian court’s jurisdiction over Indian patents. InterDigital emphasized that patent rights are territorial and that Indian courts alone have the authority to decide issues involving Indian patents. The Wuhan Court’s order, if enforced in India, would infringe Indian public policy and constitutional rights. Xiaomi contended that the matter was global and involved determination of FRAND royalty rates, which justified a centralized determination in the Wuhan proceedings. Xiaomi claimed that the anti-suit injunction was aimed at avoiding multiplicity of litigation and conflicting decisions across jurisdictions.

Discussion on SEP, FRAND, and Anti-Suit Injunction:

A Standard Essential Patent (SEP) is a patent that claims an invention which is necessary to comply with a technical standard, such as those for mobile communication protocols like 3G or 4G. Because of their essential nature, SEPs must be licensed to all implementers under FRAND terms to ensure fair access to the standardized technology while compensating patent holders.

FRAND refers to the obligation imposed on SEP holders to license their patents on Fair, Reasonable, and Non-Discriminatory terms. This ensures that SEP holders cannot abuse their market position by demanding exorbitant royalties or engaging in discriminatory licensing.

An anti-suit injunction is a judicial order that restrains a party from initiating or continuing legal proceedings in another jurisdiction. Conversely, an anti-enforcement injunction restrains the enforcement of such an anti-suit injunction in the domestic jurisdiction. These remedies are contentious as they touch upon the sovereignty of courts and the principle of comity, i.e., mutual respect between courts of different jurisdictions.

Detailed Discussion on Judgments along with Complete Citation and Context:

The Court referred to IPCom GmbH & Co KG v. Lenovo Technology (UK) Ltd. [2019] EWCA Civ 38, which highlighted the exceptional nature of anti-enforcement injunctions and their impact on foreign judicial orders. The Court also relied on Huawei v. Conversant Wireless Licensing S.A.R.L. [2020] UKSC 37, where the UK Supreme Court upheld jurisdiction to determine global FRAND royalty terms and emphasized that courts could proceed with FRAND cases despite parallel foreign proceedings. In Modi Entertainment Network v. WSG Cricket Pte Ltd., (2003) 4 SCC 341, the Supreme Court of India held that anti-suit injunctions can be granted when foreign proceedings are oppressive, vexatious, or interfere with the domestic forum’s jurisdiction. The Court cited Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803), to affirm the right of litigants to seek redress under Indian law and the importance of judicial review.

Detailed Reasoning and Analysis of Judge:

The Delhi High Court reasoned that patent rights are inherently territorial, and Indian courts have exclusive jurisdiction over the enforcement of Indian patents. The Court held that the enforcement of the Wuhan Court’s anti-suit injunction in India would infringe InterDigital’s constitutional rights under Articles 14 and 21 and undermine India’s public policy. The Court concluded that comity of courts cannot override a litigant’s right to access Indian courts, particularly in patent disputes governed by Indian law. The Court further reasoned that granting an anti-enforcement injunction was necessary to protect Indian sovereignty and judicial autonomy.

Final Decision:

The Delhi High Court granted an anti-enforcement injunction, restraining Xiaomi from enforcing the Wuhan Court’s anti-suit injunction in India. The Court held that Indian courts are competent to adjudicate disputes concerning Indian patents and no foreign court could restrict access to Indian legal remedies.

Law Settled in this Case:

The judgment establishes that Indian courts have exclusive jurisdiction over Indian patent disputes and that foreign anti-suit injunctions cannot restrict access to Indian courts. The case also affirms the enforceability of anti-enforcement injunctions to uphold Indian public policy and constitutional rights. Further, the judgment clarified that the principles of comity cannot override the territorial jurisdiction of Indian courts in patent matters.

Case Title: Interdigital Technology Corporation & Anr. vs Xiaomi Corporation & Ors.

Date of Order: 3rd May 2021

Case No.: CS(COMM) 295/2020

Neutral Citation: 2021 SCC OnLine Del 4671

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

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

Raj Vardhan Patodia (HUF) vs Registrar of Trade Marks

Fact of the Case:

Raj Vardhan Patodia (HUF) filed an appeal under Section 91 of the Trade Marks Act, 1999 challenging the order dated 12th September 2023 passed by the Registrar of Trade Marks, whereby their opposition to the trade mark application no. 3353986 was deemed abandoned under Rule 45(2) of the Trade Marks Rules, 2017. The Registrar held that the opponent failed to file its evidence affidavit in support of opposition within two months from receipt of the counter statement. The appellant argued that the affidavit was duly sent within time but was misplaced during transit.

Procedural Background (in brief):

The appellant had filed an opposition against the respondent’s trademark application. The Registrar recorded that despite a hearing, the appellant did not justify why it failed to file evidence on time. Consequently, the opposition was treated as abandoned under Rule 45(2). The appellant filed this appeal claiming that the affidavit in support of opposition had indeed been sent on 1st and 2nd February 2022, along with courier receipts, but was lost in transit. The appellant also filed an affidavit before the Registrar explaining these circumstances, but the Registrar still passed the abandonment order.

Provision of law referred in case and context:

The Court relied on Rule 14 of the Trade Marks Rules, 2017, which specifies that service is deemed completed when documents are properly addressed and put into post, and that proving dispatch is sufficient. The Court did not rely on external case law but applied this statutory principle in favor of the appellant.

Reasoning of Court:

The Court noted that under Rule 14(3) of the Trade Marks Rules, it is sufficient to prove that the document was addressed correctly and dispatched. The appellant furnished courier receipts and an affidavit showing that the affidavit in support of opposition was sent on time to both the Trade Marks Registry and the respondent. The Court observed that the loss of the documents in transit was not attributable to the appellant. Further, the Court stressed that principles of natural justice required that the opposition be considered on merits, as the appellant had complied with the procedural requirements. Therefore, the abandonment order was unsustainable.

Decision:

The Court set aside the order dated 12th September 2023 passed by the Registrar of Trade Marks. The appellant's opposition was restored, and the Trade Marks Registry was directed to take the appellant's evidence affidavit on record. The respondent was directed to file its evidence in reply as per rules. The Court also ordered cancellation of the trademark registration granted to the respondent in application no. 3353986.

Case Title: Raj Vardhan Patodia (HUF) vs Registrar of Trade Marks & Anr.

Date of Order: 18th March 2025

Case Number: C.A.(COMM.IPD-TM) 3/2024

Neutral Citation: Not specified in the document

Name of Court: High Court of Delhi at New Delhi

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

Tapesh Pal Vs The State of West Bengal

Fact of the Case:

The petitioner, Mr. Tapesh Pal, filed a criminal revision petition seeking to quash criminal proceedings against him, including the charge sheet arising out of Amherst Street Police Station Case No. 311 dated 11.11.2019. The case was registered under Sections 420/120B of the IPC and Section 63 of the Copyright Act, 1957. The case stemmed from a complaint by Aman Preet, who alleged that counterfeit and infringing sports goods under the brands "SG" and "Nivia" were being sold by unauthorized dealers. During a raid, counterfeit products were recovered from a shop where Mr. Tapesh Pal was present.

Procedural Background (in brief):

Following the complaint, an FIR was registered against unknown accused persons. After investigation, a charge sheet was filed against Mr. Tapesh Pal under Section 63 of the Copyright Act. The Magistrate took cognizance and issued process against him. The petitioner moved the High Court under Section 482 CrPC to quash the proceedings, arguing that he was not the shop owner and that the complaint was procedurally defective as it was filed in the complainant's individual capacity instead of by the authorized company.

Judgments referred in case with complete citation and context:

The petitioner relied on Mehmood Ul Rehman and Ors. v. Khazir Mohammad Tunda and Ors., (2015) 12 SCC 420, to argue that cognizance should not be taken mechanically and should be based on the Magistrate's application of mind to the complaint and material on record. The petitioner also cited Shankar Finance and Investments v. State of Andhra Pradesh and Ors., (2008) 8 SCC 536, to assert that delegation of power to lodge a complaint must follow legal formalities and cannot be loosely interpreted. Another case referred to was A.R. Antulay v. Ramdas Sriniwas Nayak and Ors., AIR 1984 SC 718, where the Court emphasized that statutory requirements must be strictly followed. The petitioner also relied on The State of Haryana v. Bhajan Lal, AIR 1992 SC 604, to argue that criminal proceedings can be quashed if they amount to an abuse of process. Further, Parbatbhai Aahir alias Parbatbhai Bhimsinhbhai Karmur and Ors. v. State of Gujarat and Anr., (2017) 9 SCC 641, was cited regarding the limited and cautious application of inherent powers under Section 482 CrPC. In response, the opposite party referred to Mita India Pvt. Ltd. v. Mahendra Jain, 2023 (3) SCALE 18, to submit that sub-delegation by a power of attorney holder is valid if permitted by specific authorization.

Reasoning of Court:

The Court found that counterfeit goods bearing "SG" and "Nivia" marks were recovered from the shop where the petitioner was present. The petitioner had failed to provide valid documentation or explanation regarding the possession of the counterfeit goods, nor could he establish through evidence that he was not responsible for managing the shop. The Court also noted that authorizations and documents regarding the delegation of power raised disputed facts that could only be determined during trial. The Court held that the petitioner’s contentions regarding the lack of proper complaint procedure and lack of his liability required factual adjudication through evidence, which could not be resolved at this stage. Further, the Investigating Officer’s findings and the seizure of infringing goods established a prima facie case under Section 63 of the Copyright Act against the petitioner.

Decision:

The High Court dismissed the Criminal Revisional application, holding that there was no abuse of process and that the matter should proceed to trial. The Court emphasized that the petitioner's innocence or involvement should be determined after evidence is led during trial.

Case Title: Mr. Tapesh Pal vs The State of West Bengal & Another

Date of Order: 12th March 2025

Case Number: CRR 2057 of 2021

Neutral Citation: Not specified in the document

Name of Court: High Court at Calcutta, Appellate Side

Name of Hon'ble Judge: Hon'ble Mr. Justice Ajay Kumar Gupta

Mannat Group of Hotels Private Limited Vs Mannat Dhaba

Fact of the Case:

Mannat Group of Hotels Private Limited and its managing director, Mr. Virender Singh Kadyan (plaintiffs), filed a suit seeking a permanent injunction against M/s Mannat Dhaba and others (defendants) for trademark infringement and passing off. The plaintiffs, who have been using the brand "MANNAT" since 2008 for their hotel and restaurant business, alleged that the defendants were operating restaurants under deceptively similar names such as "MANAT DHABA," "MANNATT DHABA," and others on the Delhi-Dehradun highway. The plaintiffs contended that the defendants were deliberately copying their marks and goodwill to mislead consumers into believing that their establishments were associated with the plaintiffs.

Procedural Background (in brief):

The suit was filed in December 2023, and the Court granted an ex-parte ad-interim injunction in favor of the plaintiffs on 4th January 2024. Despite service, the defendants did not file any written statement, leading to the closure of their right to file the same on 21st August 2024. The plaintiffs later submitted that defendants no. 2 and 3 had changed their branding, so no reliefs were pressed against them, and they were removed from the array of parties. Defendants no. 1 and 4 were proceeded ex-parte.

Judgments referred in case with complete citation and context:

The Court referred to Foodlink F and B Holdings India Private Limited v. Wow Momo Foods Private Limited, 2023 SCC OnLine Del 4719. In that judgment, the Court highlighted that the test for consumer confusion is based on the perspective of a customer of average intelligence and imperfect recollection. If such a consumer, after encountering both marks at different times, wonders whether they are connected, then "initial interest confusion" is established. This principle was applied here to show that the defendants’ use of deceptively similar marks was likely to mislead the public.

Reasoning of Court:

The Court noted that since defendants no. 1 and 4 did not file any written statement or affidavit of admission/denial, the plaintiffs' averments and documents were deemed admitted as per Rule 3 of the Delhi High Court (Original Side) Rules, 2018. The Court observed that the defendants had slavishly imitated the plaintiffs’ "MANNAT" marks and branding for identical services (restaurant operations), leading to a likelihood of confusion and misrepresentation to the public. The Court concluded that the defendants' actions amounted to clear trademark infringement and passing off, with mala fide intent to ride on the plaintiffs’ goodwill and reputation.

Decision:

The Court decreed a permanent injunction in favor of the plaintiffs and against defendants no. 1 and 4, restraining them from using the infringing marks or any deceptively similar branding. The plaintiffs did not press for other reliefs, and the pending applications were disposed of.

Case Title: Mannat Group of Hotels Private Limited Vs Mannat Dhaba 

Date of Order: 12th March 2025

Case Number: CS(COMM) 859/2023

Neutral Citation: Not specified in the document

Name of Court: High Court of Delhi at New Delhi

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

The Indian Hotels Company Limited Vs Gaurav Roy Bhatt & Anr.

Fact of the Case:

The Indian Hotels Company Limited (plaintiff), part of the Tata Group and owner of the renowned TAJ brand, filed a suit against Gaurav Roy Bhatt & Anr. (defendants) for infringement of their TAJ trademarks, copyright, and passing off. The plaintiff has been operating under the TAJ marks since 1903, with its first hotel being The Taj Mahal Palace, Mumbai. The plaintiff has expanded its hospitality services across 13 countries and more than 130 locations globally. The plaintiff alleged that the defendants' activities were unauthorized and detrimental to the goodwill and reputation of the TAJ marks.

Procedural Background (in brief):

The suit was filed in 2023, and summons were issued on 10th October 2023. On the same date, the Court granted an ex-parte ad-interim injunction and appointed a Local Commissioner. The defendants appeared on 21st November 2023 and filed a written statement. On 24th January 2025, the defendants conceded and agreed to a decree of permanent injunction. Subsequently, the plaintiff pressed for a declaration of its TAJ marks as well-known trademarks under Section 2(1)(zg) of the Trade Marks Act, 1999, which was not opposed by the defendants. The plaintiff filed supporting affidavits and led evidence, following which the Court proceeded to decide the issue.

Provision of law referred in case  and context:

The Court referred to and relied upon the statutory framework under Section 11(6) and 11(7) of the Trade Marks Act, 1999, which lists the factors to be considered in determining whether a mark qualifies as a well-known trademark. These provisions highlight the importance of a mark’s recognition among the public, its duration and geographical extent of use and promotion, its registrations, and its enforcement history. The Court also cited its previous judgment in The Indian Hotels Company Limited v. Grand Vivanta Vacations Private Limited, CS(COMM) 560/2022, where the plaintiff’s "VIVANTA" mark was declared a well-known trademark in relation to hotels.

Reasoning of Court:

The Court observed that the plaintiff had satisfied all the statutory factors outlined under Sections 11(6) and 11(7) of the Trade Marks Act. The Court noted that the TAJ marks had been in continuous and extensive use since 1903 and were widely recognized in India and internationally. The Court also relied on the plaintiff’s substantial presence in the hospitality industry with over 350 hotels globally, widespread advertising and promotions, significant revenue and brand recognition. The Court accepted the evidence showing that the TAJ marks had been awarded and recognized across multiple platforms, had a large social media following, and were associated with India’s heritage and culture. Additionally, the plaintiff had a successful record of enforcing its trademark rights against third parties in previous suits. On this basis, the Court concluded that the TAJ marks enjoy immense goodwill and reputation, thereby fulfilling the criteria for being declared as well-known marks under Indian trademark law.

Decision:

The Court passed a decree of permanent injunction against the defendants in terms of the plaintiff’s earlier reliefs and declared the TAJ marks as well-known trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

Case Title: The Indian Hotels Company Limited Vs Gaurav Roy Bhatt

Date of Order: 11th March 2025

Case Number: CS(COMM) 717/2023

Neutral Citation: 2025:DHC:1714

Name of Court: High Court of Delhi at New Delhi

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

FMC Corporation Vs Hindustan Fertilizers

Factual Background:

FMC Corporation and its subsidiaries filed a suit against Hindustan Fertilizers Private Limited and another entity for trademark infringement and passing off concerning their registered trademark "CORAGEN." The plaintiffs, global leaders in agricultural sciences, had been using the mark since 2006 and had built significant goodwill. The defendants were found to be using the deceptively similar mark "CORAGIN" for the same class of products, causing confusion among consumers, particularly farmers. The plaintiffs discovered the infringing products being marketed on e-commerce platforms, leading to the present suit.

Procedural Background:

The suit was filed seeking a permanent injunction, and the court initially granted an ex-parte ad-interim injunction against the defendants. A local commissioner was appointed to seize infringing products, but the defendants' addresses were found incorrect. The court allowed substituted service through publication. As the defendants failed to appear, they were proceeded against ex-parte, and no written statement was filed, leading to the matter being decided based on the plaintiffs’ claims.

Provisions of Law Referred and Their Context:

The court applied provisions of the Trade Marks Act, 1999, to assess infringement and passing off. Order VI Rule 17 CPC was invoked for amendment of the plaint. Order VIII Rule 10 CPC allowed the suit to be decreed in the absence of a written statement. The Delhi High Court (Original Side) Rules, 2018, were referred to deem the plaintiffs' documents admitted due to non-denial by the defendants.

Reasoning of Court:

The court found that the defendants’ mark "CORAGIN" was deceptively similar to "CORAGEN" and that their packaging, color scheme, and design also mimicked the plaintiffs' branding. Given that the products were agricultural pesticides targeted at farmers, who may not carefully distinguish between similar-looking brands, the likelihood of confusion was high. The defendants’ continued unauthorized use of the plaintiffs’ mark without appearing in court indicated a lack of defense. The plaintiffs’ reputation and goodwill were at risk due to misrepresentation by the defendants.

Decision:

The court passed a decree of permanent injunction restraining the defendants from using "CORAGIN" and similar marks. The plaintiffs' claims were upheld under trademark infringement and passing off laws. The court noted that the defendants' failure to appear or contest the case further justified the reliefs sought. A decree sheet was ordered to be drawn up, and all pending applications were disposed of.

Case Title: FMC Corporation Vs. Hindustan Fertilizers Private Limited 

Date of Order: 11th March 2025

Case Number: CS(COMM) 652/2024

Neutral Citation: 2025:DHC:1704

Court: High Court of Delhi

Hon’ble Judge: Justice Amit Bansal

Milliken and Company Vs Controller of Patents and Designs

Fact of the Case:

Milliken and Company, the appellant, challenged the refusal of their Indian patent application (no. 6093/DELNP/2013) for "Additive Compositions and Thermoplastic Polymer Compositions Comprising the Same" by the Assistant Controller of Patents and Designs. The rejection was based on two grounds: lack of inventive step and insufficiency of disclosure. Milliken contended that the Assistant Controller failed to consider a crucial statement by Dr. Nathan A. Mehl, an expert and employee of the company, filed during the post-hearing submissions.

Procedural Background (in brief):

The patent application was filed in India in 2013 and went through various stages, including the issuance of the First Examination Report (FER) and a pre-grant opposition. In 2023, the Assistant Controller refused the patent application under Section 15 of the Patents Act, 1970. The appellant then filed this appeal under Section 117(A) of the Patents Act, arguing that procedural irregularity occurred due to non-consideration of Dr. Mehl’s statement, which addressed key objections. The matter was heard on 13th November 2024 and 11th March 2025.

Reasoning of Court:

The Court held that the appellant had submitted the expert statement of Dr. Nathan A. Mehl within the permissible time frame under Rule 28(7) of the Patent Rules, 2003. The Court rejected the respondent’s argument that Dr. Mehl’s status as an employee invalidated the independence or weight of his statement. The Court emphasized that industry experts, even if employees, are often competent to provide technical clarifications.

Additionally, the Court clarified that decisions of foreign patent offices, such as the European Patent Office’s rejection of Dr. Mehl’s statement, are not binding on Indian authorities. To support this view, the Court referred to the judgment in Communication Components Antenna Inc. v. Ace Technologies Corp. and Ors., 2019 SCC OnLine Del 9123, where it was held that foreign patent grants or rejections have only a persuasive value and cannot dictate the decision-making process of the Indian Patent Office. The Delhi High Court in that case had stated that claims in foreign jurisdictions could be referred to ensure that the invention is broadly the same and to avoid "evergreening" but cannot be treated as determinative for the Indian decision-making process.

Based on this, the Court concluded that the Assistant Controller should have independently evaluated Dr. Mehl’s statement.

Decision:

The Court remanded the matter back to the Assistant Controller of Patents and Designs for a fresh hearing and a de novo consideration of the patent application, specifically directing the Assistant Controller to assess Dr. Nathan A. Mehl’s statement on merits. A fresh speaking order was directed to be passed following the hearing.

Case Title: Milliken and Company vs Controller of Patents and Designs & Anr.

Date of Order: 11th March 2025

Case Number: C.A.(COMM.IPD-PAT) 15/2023

Neutral Citation: Not provided in the document

Name of Court: High Court of Delhi

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

Himalaya Global Holdings Ltd. Vs Rajasthan Aushdhalaya Pvt. Ltd

Factual Background:

Himalaya Global Holdings Ltd. and its subsidiary, leading herbal health product manufacturers, filed a suit against Rajasthan Aushdhalaya Private Limited for trademark infringement. The plaintiffs alleged that the defendants' marks "Liv-333" and its associated logo were deceptively similar to their registered trademarks "Liv.52" and "Himalaya." The plaintiffs' "Liv.52" brand has been in use since 1955 and enjoys significant goodwill in the market. Despite a cease-and-desist notice, the defendants continued using the allegedly infringing marks.

Procedural Background:

The suit was filed seeking a permanent injunction and other reliefs. The court granted an ex-parte ad-interim injunction restraining the defendants from using the disputed marks. The defendants failed to file a written statement within the prescribed period, leading to the closure of their right to do so. The plaintiffs sought judgment under Order VIII Rule 10 of the CPC due to the defendants’ failure to defend the suit.

Provisions of Law Referred and Their Context:

Order VIII Rule 10 of the CPC was invoked to pronounce judgment in the absence of a written statement. Sections of the Trade Marks Act, 1999, concerning trademark infringement and passing off were relied upon to establish the plaintiffs’ exclusive rights over "Liv.52." The court also considered Order XXXIX Rule 2A CPC regarding violation of its injunction order.

Judgments Referred with Citation and Context:

The court relied on Himalaya Drug Company v. S.B.L. Limited, 2012 SCC OnLine Del 5701, which restrained another entity from using "LIV" in a similar context, confirming that even a slight modification does not prevent infringement. Additionally, Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 was cited, emphasizing stricter protection for pharmaceutical trademarks due to public health concerns. The decision in Impresario Entertainment & Hospitality Pvt. Ltd. v. Mocha Blu Coffee Shop, 2018 SCC OnLine Del 12219 was referred to support decreeing cases where defendants fail to file a written statement.

Reasoning of Court:

The court found that "LIV" is the dominant part of the plaintiffs' mark, and the addition of "333" by the defendants did not sufficiently differentiate it. Given the strong consumer association with "Liv.52," the similarity was likely to cause confusion. The court noted that continued use of the infringing mark even after the injunction order demonstrated willful disobedience. It observed that trademark laws must be strictly enforced in cases of medicinal products to prevent confusion that could lead to adverse health consequences.

Decision:

The suit was decreed in favor of the plaintiffs. The defendants were permanently restrained from using "Liv-333" or any other mark deceptively similar to "Liv.52." The court awarded ₹10,91,567 as costs and ₹20 lakhs in damages, citing the need for deterrence. The decree was passed under Order VIII Rule 10 CPC due to the defendants’ failure to file a defense.

Case Title: Himalaya Global Holdings Ltd. Vs Rajasthan Aushdhalaya Private Ltd.

Date of Order: 25.02.2025 

Case Number: CS(COMM) 433/2024

Neutral Citation:2025:DHC:1670

Hon’ble Judge: Justice Mini Pushkarna

Indo Asahi Glass Co. Ltd. Vs Jai Mala Roller Glass Ltd

One Registered Proprietor of Design against another registered Proprietor of Design

Introduction:

This case concerns a design infringement dispute where Indo Asahi Glass Co. Ltd., the plaintiff, alleged that Jai Mala Roller Glass Ltd., the defendant, infringed its registered design titled "KONOHA" under the Designs Act, 1911. Indo Asahi sought interim relief by way of injunction and other remedies to restrain the defendant from using the allegedly infringing design "DHOOP CHAON" on its glass sheets.

Detailed Factual Background:

Indo Asahi Glass Co. Ltd. is engaged in manufacturing, selling, and dealing with various glass products, including figured glass. The plaintiff is the registered proprietor of a design called "KONOHA" under Registration No. 158266 in Class IV from April 24, 1987. The registration was renewed for a further period from October 31, 1991. Indo Asahi has been using this design extensively since 1987 and claimed substantial goodwill and reputation in the market.

In December 1992, Indo Asahi discovered that Jai Mala Roller Glass Ltd. had allegedly started manufacturing glass sheets with a design similar or deceptively similar to "KONOHA," which the defendant marketed under the name "DHOOP CHAON." Indo Asahi contended that the defendant’s design was visually similar and amounted to an infringement of its registered design, causing business losses. Indo Asahi sought damages of Rs. 6,00,000 along with an injunction.

Detailed Procedural Background:

The plaintiff filed the suit for injunction and damages. During the pendency of the suit, Indo Asahi moved an interlocutory application seeking an interim injunction to restrain the defendant from further using the allegedly infringing design. The defendant opposed the application and also filed a petition (CO 2 of 1993) under Section 51-A of the Designs Act, 1911 for cancellation of the plaintiff’s registered design, arguing that the design lacked originality.

Issues Involved in the Case:

The primary issue was whether the plaintiff was entitled to interim relief despite the pending cancellation petition filed by the defendant challenging the validity of the plaintiff’s registered design? The case also addressed whether the defendant’s use of "DHOOP CHAON" infringed Indo Asahi's registered "KONOHA" design.

Detailed Submission of Parties:

The plaintiff asserted that it was the lawful registered proprietor of the "KONOHA" design and that the defendant’s "DHOOP CHAON" design was deceptively similar, causing confusion and loss to its business. Indo Asahi contended that the registration was valid and enforceable and that the defendant started using the impugned design after 1993, well after the plaintiff’s registration.

The defendant argued that the plaintiff suppressed material facts by not disclosing that the design originated from a Tokyo-based company. It further submitted that the design was neither new nor original, as similar designs had been previously published and used internationally, including by German company Dornbusch GMBH, from whom the defendant allegedly sourced its design.The defendant also claimed that a cancellation petition under Section 51-A had been filed, and until the cancellation was adjudicated, the plaintiff should not be granted interim relief.

Detailed Discussion on Judgments along with their Complete Citation and Context:

The defendant relied on M/s. Nikitasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., AIR 1985 Delhi 136, to argue that an injunction should not be granted where the design's validity is disputed and a cancellation petition is pending.The plaintiff cited M/s. Western Engineering Co. v. M/s. America Lock Co., (1973) II Delhi 177, where it was held that infringement must be judged by the eye alone, and minor variations in design do not negate infringement if the two designs are visually similar under normal usage.The court also referred to V.D. Ltd. v. Boston Deep Sea Fishing & Ice Co. Ltd., 52 RPC 303, which discussed what constitutes prior publication and held that private communication or circulation of catalogues does not amount to public disclosure unless there is effective publication accessible to the public.The defendant invoked M/s. Tobu Enterprises Pvt. Ltd. v. M/s. Megha Enterprises, 1983 PTC 359, where it was held that when both parties have registered designs, no injunction should be granted merely based on prior registration.

Detailed Reasoning and Analysis of Judge:

Justice P. K. Bahri analyzed the evidence and arguments, noting that Indo Asahi's design had been registered since 1987, was renewed, and had been used continuously, giving it market recognition. The defendant had only recently started using the allegedly infringing design in 1993.While acknowledging that the defendant's cancellation petition under Section 51-A raised valid issues about prior publication, the court noted that no conclusive evidence was provided to prove that the design had been published or used in India prior to the plaintiff's registration. The court emphasized that mere receipt of a catalogue from a German company did not establish public availability of the design in India.The judge observed that although the two designs appeared substantially similar, given that both parties held registered designs and relying on the precedent from Tobu Enterprises (1983), Indo Asahi was not entitled to interim injunctive relief until the dispute over validity was resolved.The judge, however, directed the defendant to maintain proper accounts of sales made under the impugned design and to file quarterly reports with the court to safeguard the plaintiff’s potential right to claim damages if successful at trial.

Final Decision:

The court declined to grant the temporary injunction sought by Indo Asahi. However, it directed Jai Mala Roller Glass Ltd. to maintain accurate records of sales involving the impugned design and to file quarterly statements in court until the suit’s final disposal.

Law Settled in this Case:

The judgment reaffirmed that where both parties hold registered designs, interim injunctions may not be granted solely on the basis of prior registration. The court also emphasized that alleged prior publication must be substantiated with clear evidence of public disclosure in India. The ruling balances protection of registered rights with the need to prevent unjustified restraints on business activities pending final adjudication.

Case Title: Indo Asahi Glass Co. Ltd. Vs Jai Mala Roller Glass Ltd. and Another

Date of Order: 19 December 1994

Citation: 1995(33)DRJ317

Name of Court: High Court of Delhi

Name of Judge: Justice P. K. Bahri

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

Hindustan Lever Limited Vs Lalit Wadhwa

A patentee can sue another patentee for Patent infringement

Introduction:

The present case concerns a patent infringement dispute between Hindustan Lever Limited (HLL) and the defendants Mr. Lalit Wadhwa and Eureka Forbes Ltd. (Defendant No. 2). The plaintiff alleged that the defendants infringed its patent concerning a gravity-fed water purification system and sought remedies including permanent injunction, rendition of accounts, and damages. The case also involved the question of whether one patentee can sue another patentee for infringement, jurisdictional challenges, and whether a company officer could be impleaded in the suit.

Detailed Factual Background:

HLL claimed to be engaged in manufacturing various consumer products and had developed a gravity-fed water purification system in 2002, which ensured high microbiological purity in drinking water. HLL filed an Indian patent application No. 539/MUM/2003 in June 2002, leading to the grant of patent No. 198316 on January 9, 2006. The plaintiff alleged that Defendant No. 2, Eureka Forbes Ltd., launched a competing water purification system under the brand name "Forbes Aquasure" around September 2004, which allegedly infringed the substance of HLL’s patent.

The plaintiff also alleged that Defendant No. 3 (non-party to this application) had filed for its patent on March 29, 2004, which was subsequently granted. However, HLL argued that the defendant's product still infringed its earlier patented invention.

Detailed Procedural Background:

The plaintiff filed a suit for patent infringement before the Delhi High Court seeking reliefs under Sections 48 and 108 of the Patents Act, 1970. The defendants responded by filing two interlocutory applications: one under Order 7 Rule 11 CPC for rejection of the plaint on the grounds of lack of cause of action, territorial jurisdiction, and absence of proper authorization; and another under Order 1 Rule 10 CPC seeking deletion of Defendant No. 1, Mr. Lalit Wadhwa, on the ground that he was neither a necessary nor a proper party.

Issues Involved in the Case

The key issues were whether a patentee can sue another patentee for patent infringement?

Detailed Submission of Parties:

The defendants contended that the suit should be dismissed for non-disclosure of a cause of action since one patentee cannot sue another for infringement. They also argued that the plaintiff had no sales in Delhi, thereby ousting the territorial jurisdiction of the Delhi High Court. Further, they submitted that Defendant No. 1, Mr. Lalit Wadhwa, was impleaded only to create jurisdiction and to obtain an interim injunction without proper notice to the defendants.

The plaintiff argued that a patentee's right is exclusionary, enabling it to prevent even another patentee from infringing its patent. It contended that Section 48 of the Patents Act grants a right to stop others from making, using, or selling the patented product regardless of their patent status. The plaintiff further asserted that infringement occurred in Delhi as the impugned product was sold there, giving the Court territorial jurisdiction. As to Defendant No. 1, the plaintiff invoked Section 124 of the Patents Act, which imposes liability on persons in charge of the company at the time of infringement.

Detailed Discussion on Judgments along with their Citations and Context:

The plaintiff cited "Patents for Chemicals, Pharmaceuticals, and Biotechnology" by Philip W. Grubb, where it is explained that patents grant exclusionary rights, i.e., they do not allow patentees to practice the invention if doing so would infringe another patent.The plaintiff relied on Alert India v. Naveen Plastics & Anr., 1997 PTC (17) 15, which held that a prior proprietor of a design copyright has a preferential right over a subsequent registrant.The defendants relied on Tobu Enterprises Pvt. Ltd. v. Megha Enterprises, 1983 PTC 359, Indo Asahi Glass Co. Ltd. v. Jai Mata Rolled Glass Ltd. and Anr., 1995 (33) DRJ 317 (Del), and S.S. Products of India v. Star Plast, 2001 (21) PTC 835 (Del), to argue that courts have refused interim injunctions where the defendant also holds a design registration.The plaintiff countered these citations by distinguishing that those decisions were under the Designs Act, 1911 and not under the Patents Act, 1970, and relied on Pfizer Products Inc. v. Rajesh Chopra, (2006) 32 PTC 301 (Del), L.G. Corporation v. Intermarket Electroplasters Pvt. Ltd., (2006) 32 PTC 429 (Del), and S. Oliver Bernd Freier GmbH & Co. K.G. v. Karni Enterprises, (2006) 33 PTC 574 (Del), to argue that sale within Delhi constituted part of the cause of action.

Detailed Reasoning and Analysis of Judge:

The Court held that a patentee’s right is indeed exclusionary, as clarified by Philip W. Grubb. Section 48 grants a right to prevent third parties from infringing the patented product irrespective of the defendant’s patent status. The Court rejected the argument that a suit for patent infringement is not maintainable against another patentee, clarifying that Section 107 allows the defendant to raise any grounds for revocation under Section 64 as a defense, but this does not bar the suit itself.On jurisdiction, the Court held that the cause of action arose in Delhi as the impugned product was admittedly being sold there, satisfying the requirement under Section 20(c) of the CPC. As for impleadment of Defendant No. 1, the Court found that Section 124, which imposes penal liability on persons in charge of a company, did not apply in civil infringement cases. Since no specific role was attributed to Mr. Wadhwa in the alleged infringement, the Court held that he was neither a necessary nor a proper party.

Final Decision:

The Court dismissed the defendant’s application under Order 7 Rule 11 CPC and held that the suit disclosed a valid cause of action, was maintainable, and the Delhi High Court had territorial jurisdiction. However, the Court allowed the application under Order 1 Rule 10 CPC and deleted Defendant No. 1, Mr. Lalit Wadhwa, from the array of parties.

Law Settled in this Case:

The Court affirmed that a patentee can sue another patentee for infringement, as patents confer exclusionary rights. The judgment clarified that the existence of a defendant’s patent does not immunize it from infringement actions. Further, it held that sales in a jurisdiction provide sufficient cause of action for territorial jurisdiction.

Case Title: Hindustan Lever Limited Vs Mr. Lalit Wadhwa and Another

Date of Order: 10 August 2007

Case No.: CS(OS) No. 1707/2006

Neutral Citation: (2007) 35 PTC 377

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Justice Vipin Sanghi

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

Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd

Passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Introduction:

This case relates to a dispute between Havells India Limited and Panasonic Life Solutions India Pvt. Ltd. over allegations of design infringement and passing off. Havells India Limited, the plaintiff, alleged that Panasonic infringed its registered designs for ceiling fans under its ENTICER and ENTICER ART series and simultaneously passed off its goods as those of Havells. The case explores the interplay between statutory design rights and common law remedies of passing off.

Detailed Factual Background:

Havells India Limited is the registered proprietor of several ceiling fan designs, including its ENTICER, ENTICER ART, and ENTICER ART-NS STONE series. These designs feature unique attributes such as minimalistic rectangular ornamentation with metallic borders on the fan blades, chamfered edges, and concave curves towards the motor, among other distinctive features. The plaintiff has invested significantly in the marketing and promotion of these designs, with cumulative sales of approximately Rs. 527.48 Crores and a promotion budget of Rs. 12.91 Crores for 2020-21.

In March 2022, Havells discovered that Panasonic was about to launch its VENICE PRIME series of ceiling fans, which allegedly copied the essential and distinctive features of the ENTICER series. The Plaintiff argued that Panasonic's VENICE PRIME fans were visually similar and likely to confuse customers, leading to an action for both infringement of design rights and passing off.

Detailed Procedural Background

The plaintiff filed CS(COMM) 261/2022 before the Delhi High Court, seeking an injunction against Panasonic from manufacturing, marketing, or selling ceiling fans that were identical or deceptively similar to Havells’ registered designs. The case also involved an application under Order XXXIX Rules 1 and 2 CPC for interim relief. Panasonic challenged the maintainability of the composite suit on the grounds that infringement of registered design and passing off claims could not be pursued together. Panasonic further alleged that Havells’ designs lacked novelty and were liable to be cancelled.

Issues Involved in the Case:Whether a composite suit for infringement of registered design and passing off is maintainable?Whether Havells' claims for statutory design infringement and common law passing off are mutually destructive?

Detailed Submissions of Parties:

The plaintiff contended that the VENICE PRIME fans by Panasonic copied the essential features of the ENTICER and ENTICER ART series, amounting to infringement under the Designs Act, 2000, and passing off. It asserted that under settled law, particularly the decision in Mohan Lal v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980, a registered design owner could simultaneously claim relief for passing off.

Panasonic argued that the plaintiff could not pursue both claims in one suit, relying on Carlsberg Breweries A/S v. Som Distilleries, 2018 SCC OnLine Del 12912, and Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del). Panasonic also argued that Havells' designs lacked novelty, citing prior art and third-party publications to suggest that the registered designs were common in the trade.

Detailed Discussion on Judgments Cited by Parties; Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980: This Full Bench decision held that an action for passing off could be pursued along with a design infringement claim, provided the passing off claim extended beyond the registered design into the overall trade dress. Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 2018 SCC OnLine Del 12912: The Five-Judge Bench ruled that a composite suit for design infringement and passing off is maintainable under Order II Rule 3 CPC. However, it also reaffirmed that a design per se used as a trademark could render the design registration vulnerable.  Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del): This judgment interpreted Carlsberg to suggest that a passing off claim could not coexist with a design infringement action. However, the Single Judge in the present case noted that this view was not binding as it conflicted with Carlsberg's Full Bench decision. RB Health (US) LLC & Ors. v. Dabur India Ltd., 2020 (84) PTC 492 (Del): This case reiterated the "classical trinity" test for passing off – goodwill, misrepresentation, and damage. Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65: The Supreme Court recognized that even in the absence of malice, a likelihood of confusion suffices for a passing off action.Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565: This Bombay High Court judgment held that distinct get-up and trade dress are protectable under common law.

Detailed Reasoning and Analysis of Judge:The Court held that a registered design holder could bring simultaneous claims for design infringement and passing off, provided the passing off action was based on the overall trade dress and not restricted to the registered design per se. The Court observed that both statutory infringement and passing off protect different commercial interests – the former safeguards design novelty, while the latter prevents customer confusion due to misrepresentation.  The Court found that Havells' claims were not mutually destructive but were alternative claims permissible under civil procedure rules. On the issue of novelty, the Court rejected Panasonic’s argument that marble patterns are common and cited estoppel principles because Panasonic itself had applied for a similar design registration. The Court also rejected the claim that Havells suppressed material facts regarding pending cancellation proceedings, noting that no official cancellation notice had been received from the Controller of Designs.  Applying the "classical trinity" test, the Court held that Havells had a strong prima facie case based on its established goodwill and reputation, the likelihood of deception due to Panasonic's VENICE PRIME series, and the potential damage to Havells' business.

Final Decision:

The Court granted an interim injunction restraining Panasonic and its associates from manufacturing, marketing, or selling ceiling fans under the VENICE PRIME series or any other fans that were deceptively similar to Havells' ENTICER ART series during the pendency of the suit.

Law Settled in this Case:

A composite suit for infringement of a registered design and passing off is maintainable, and such claims are not inherently mutually destructive. The decision reaffirmed the legal position laid down by the Full Bench in Carlsberg and Mohan Lal that a passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Case Title: Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd

Date of Order: 31 May 2022

Case No.: CS(COMM) 261/2022

Neutral Citation: 2022 SCC OnLine Del 1863

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Justice Jyoti Singh

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