Godrej Consumer Vs Reckitt Benckiser:DB

Godrej Consumer Products Limited launched a toilet cleaner called "Spic" in October 2025 in a black bottle with a dispenser cap meant to reach under the toilet rim. Reckitt Benckiser India Private Limited, which sells the well-known blue "Harpic" toilet cleaner, felt that Godrej's bottle shape (especially the spout/dispenser part) was too similar to its own and would confuse customers. Reckitt had earlier design protection for its bottle shape, but that had expired, so the shape became open for anyone to use. However, Reckitt later got trademark registration for the overall "Harpic Bottle and Cap" as a device (picture mark).  

Reckitt filed a court case in February 2026 mainly complaining about Godrej's ads that compared and criticised Harpic (called disparaging ads), but also added a smaller claim about trademark infringement and product confusion due to the similar bottle shape. A single judge quickly gave a temporary order on February 25, 2026 stopping Godrej from selling its Spic product. Godrej appealed this order to a higher bench (Division Bench) of the Calcutta High Court.  

The Division Bench looked at everything and felt the single judge's quick ban was not correct. The main fight in the case was about the insulting ads, which Godrej had already promised to stop. The bottle shape complaint came later and seemed added as an afterthought. The two bottles look clearly different overall — Harpic is blue with its name in big letters, while Spic is black with a different label and cap. The only common thing is the basic spout shape needed for the job (to clean under the rim), which is now common/generic after the old design expired. The court also doubted whether Reckitt could use trademark law to bring back protection for a shape whose design right had ended. The judges said there was no strong first-case proof of trademark copying or real confusion, so no temporary ban was needed. They cancelled the February 25 order, told Godrej to file its full reply soon, and asked the lower court to decide the next steps properly after hearing both sides fully. Godrej remains bound by its promise not to run those comparison ads anymore.

Case Details :Godrej Consumer Vs Reckitt Benckiser:27.02.2026, TEMPAPO-IPD/2/2026 in IP.COM/3/2026:CALHC, Hon’ble Justice Rajasekhar Mantha and Hon’ble Justice Md. Shabbar Rashidi

Disclaimer:It is not substitute for legal advise as it may contain subjective human errors.  

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

Mountain Valley Springs India Private Limited Vs Baby Forest Ayurveda Private Limited

Mountain Valley Springs India Private Limited, operating under the brand Forest Essentials, has been selling Ayurvedic products since 2000 with significant sales and registrations for the mark Forest Essentials across various classes, including baby care products under sub-marks like Forest Essentials Baby since 2006. 

In June 2023, they discovered Baby Forest Ayurveda Private Limited using the marks Baby Forest and Baby Forest-Soham of Ayurveda for similar baby Ayurvedic products, alleging deceptive similarity, customer confusion evidenced by social media queries and Google suggestions, and malicious copying including rebranding and store location choices. 

The respondents, formerly Landsmill Healthcare, registered Baby Forest in 2020 on a proposed use basis, started sales in 2022 with notable revenue, and argued no similarity, that Forest is a generic dictionary word with no monopoly, their focus is exclusively on baby products unlike the appellant's adult-targeted range, and trade dress plus logos differ. 

Forest Essentials filed a commercial suit CS(COMM) 523/2023 for trademark infringement and passing off, seeking interim injunction under Order XXXIX Rules 1 and 2 CPC. 

The single judge dismissed the applications on May 15, 2024, reasoning that the appellant failed to prove proprietorship over baby-specific sub-marks which were marketed under the main house mark, Forest is generic and not registered separately under Section 17(2) of the Trade Marks Act 1999, the composite mark Forest Essentials cannot be dissected for monopoly over Forest, no visual phonetic or structural similarity exists between the marks, trade dress packaging and tree logos are dissimilar, the respondents' concession to stop using Saundarya and Baby Essentials was a goodwill gesture not an admission, and evidence like isolated social media posts or Google predictions does not show widespread confusion. 

The appellant appealed this denial in FAO(OS)(COMM) 111/2024. The division bench, after considering arguments, upheld the single judge's findings, emphasizing that without secondary meaning the common word Forest cannot be monopolized, the marks are distinct when viewed as wholes under the anti-dissection rule, no prima facie case for infringement or passing off, balance of convenience favors the registered user respondents, and no irreparable harm, thus refusing interim relief. The court dismissed the appeal, allowing the respondents to continue using the challenged marks pending trial.

Mountain Valley Springs India Pvt.Ltd. Vs. Baby Forest Ayurveda Pvt.Ltd. 27.02.2026, FAO(OS)(COMM) 111/2024, 2026:DHC:1756-DB: DHC, Navin Chawla , Madhu Jain .

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation.

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Reckitt Benckiser Vs Godrej Consumer Products Limited

**Summary**  

Reckitt Benckiser, owner of the famous HARPIC toilet cleaner, sued Godrej Consumer Products for trademark infringement after Godrej launched its “Spic” toilet cleaner in a bottle that looks almost identical in shape and cap to the HARPIC bottle. Reckitt holds trademark registrations covering the distinctive bottle shape. At the urgent hearing before the Calcutta High Court, Reckitt pressed only the infringement claim. The court compared the two bottles side by side and found them strikingly similar, creating a clear risk of confusion among buyers. It held that trademark protection for the bottle shape remains valid even after the earlier design registration expired. Reckitt made out a strong prima facie case, the balance of convenience favoured protection of the registered mark, and deliberate copying left no room for Godrej. The court granted an ad-interim injunction stopping Godrej from selling “Spic” in the similar bottle shape till 23 March 2026 and rejected Godrej’s request to stay the order.

**Points of Law Settled in the Case**  

• Expiry of design registration for a product shape does not cancel trademark protection if the same shape is registered under the Trade Marks Act. (Paras 9 & 11)  

• Trademark registration for the shape of a bottle or cap is permissible and provides prima facie validity and protection against infringement. (Paras 8, 10 & 11, relying on Section 2(1)(m) read with 2(z)(b) of the Trade Marks Act)  

• When two product shapes are virtually identical and likely to confuse the average consumer, an ad-interim injunction must follow as a normal consequence regardless of balance of convenience arguments. (Paras 13 & 14, relying on Gorbadschow Wodka KG vs. John Distilleries 2011(4) M.H.L.J. 842)  

• Deliberate and slavish copying of a registered trademark shape disentitles the defendant from claiming balance of convenience or irreparable injury in its favour. (Para 14, relying on Allergan Inc. vs. Milment Oftho Industries AIR 1998 Cal 261)  

**Case Title:** RECKITT BENCKISER (INDIA) PRIVATE LIMITED VS GODREJ CONSUMER PRODUCTS LIMITED  

**Order Date:** 25 February 2026  

**Case Number:** IP-COM/3/2026 with IA NO. GA-COM/1/2026  

**Neutral Citation:** Not assigned  

**Name of Court:** High Court at Calcutta (Intellectual Property Rights Division), Original Side  

**Name of Judge:** Hon’ble Justice Ravi Krishan Kapur  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Mangrol Oil Mill Vs Vikas Oil Industries

**Suitable Titles for the Article:**  

1. Gujarat High Court Dismisses Appeal in 'GULAB' vs 'ROSE' Edible Oil Trademark Battle: Delay and Lack of Distinctiveness Seal the Fate  

2. When Roses and Gulabs Collide: Gujarat High Court Explains Why Old Knowledge Defeats Fresh Injunction Claims in Trademark Cases  

3. Key Takeaways from Gujarat High Court on Interim Relief in Trademark Disputes: A Simple Guide to Prima Facie Case, Delay, and Good Judgment Writing  

**Suitable Tags:**  

Trademark Infringement, Passing Off Action, Interim Injunction, Delay and Acquiescence, Distinctiveness of Marks, Commercial Court Judgment, Gujarat High Court, Edible Oil Brands, Trade Mark Registry Proceedings, Judgment Writing Guidelines  

### Introduction  

In a clear and practical ruling, the Gujarat High Court has once again reminded businesses and lawyers that trademark protection is not automatic. Even a registered mark does not guarantee an immediate stop order against a rival if the owner has waited too long or failed to show that the mark truly stands out in the minds of ordinary buyers. The dispute between two edible oil makers—one using the word “GULAB” and the other “ROSE”—brought these basic principles back into focus. The court refused to grant any temporary ban on the rival’s mark, stressing honesty, prompt action, and real proof of consumer confusion.

### Factual Background  

The plaintiffs belong to the same family group and have been selling groundnut and other edible oils under the mark “GULAB” for many years. They hold registrations for the word and some label versions that include a rose-flower picture. They claim huge sales and heavy advertising have built strong goodwill around “GULAB”.  

The defendants sell similar oils under the mark “ROSE”, also with a flower device. The plaintiffs argued that “Gulab” and “Rose” mean the same thing in Hindi and English, so ordinary shoppers would mix up the two products and think they come from the same source. They said the defendants copied the idea deliberately to ride on their reputation.  

The defendants replied that they had been using “ROSE” openly since the early 1990s (at least since 2008 when they applied for registration). They pointed out that the plaintiffs knew about their mark for more than fourteen years because they had opposed the registration application back in 2008. Yet the plaintiffs stayed silent until 2022. The defendants also said “GULAB” is a common dictionary word for rose flower and cannot be monopolised.

### Procedural Background  

The plaintiffs filed a commercial suit in 2022 seeking permanent injunction, damages, and accounts for both trademark infringement and passing off. They immediately asked for a temporary injunction. The trial court first granted it in 2023, but the High Court sent the matter back for fresh hearing after considering all objections raised by the defendants.  

On fresh consideration in November 2024, the Commercial Court at Morbi rejected the temporary injunction application. It found no strong prima facie case, noted the long delay, and held that the balance of convenience did not favour the plaintiffs. The plaintiffs then filed the present appeal before the Gujarat High Court, arguing that the trial court had ignored the similarity of the marks and wrongly relied only on delay.

### Reasoning and Decision of Court  

The High Court carefully examined the pleadings, the labels, and the evidence placed before the trial court. It applied well-settled tests: whether the marks are deceptively similar, whether ordinary buyers with imperfect memory are likely to be confused, and whether the plaintiffs had shown real goodwill attached to their specific device mark.  

The court found that the plaintiffs could not prove on a prima facie basis that “GULAB with rose flower” had become so distinctive that buyers immediately connect it only to their goods. The word “GULAB” itself is descriptive and laudatory. Long use alone does not turn a common word into an exclusive brand unless buyers stop thinking of it as “rose flower” and start thinking only of the plaintiffs’ oil. The plaintiffs had not shown such secondary meaning.  

On delay, the court noted that the plaintiffs had known about the defendants’ mark since at least 2008 when they filed an opposition at the Trade Marks Registry. Waiting fourteen years before rushing to court for an urgent injunction was fatal. Such long silence amounts to acquiescence and disentitles the plaintiffs from equitable relief like temporary injunction.  

The court also clarified an important practical point. Even though the defendants’ registration application is still pending before the Trade Marks Registry, the civil court cannot avoid deciding the temporary injunction question on the ground that “the issue is pending elsewhere”. The trial court must form its own prima facie view on similarity, likelihood of confusion, and the three ingredients for injunction—prima facie case, balance of convenience, and irreparable injury. Leaving everything to the Registry is not correct.  

After weighing everything, the High Court found no reason to interfere with the trial court’s order. The appeal was dismissed. The suit will now proceed to full trial without any interim restraint on the defendants. The court also gently advised Commercial Courts across the state to write clearer, more structured judgments that focus on issues rather than long unnecessary narration.

### Point of Law Settled in the Case  

This judgment settles three straightforward but vital points for everyday trademark practice.  

First, registration gives a right, but at the interim stage the owner must still show a strong prima facie case that the mark has acquired distinctiveness and that confusion is likely. A common word like “GULAB” (rose) needs extra proof that buyers see it only as the plaintiffs’ brand.  

Second, long delay and silence after knowing about a rival’s use will almost always defeat a claim for urgent temporary injunction. Acquiescence is a complete bar to equitable relief.  

Third, a civil court hearing an injunction application cannot pass the buck to the Trade Marks Registry on core questions of similarity and confusion. It must decide these issues on a prima facie basis, keeping in mind that it is not conducting a full trial.  

The ruling also serves as a gentle reminder to judges about the art of clear judgment writing—structure, brevity, and focus on real issues make justice more accessible.

**Case Detail**  

**Title:** M/S. MANGROL OIL MILL & ORS. Versus VIKAS OIL INDUSTRIES & ANR.  

**Date of Order:** 20 February 2026  

**Case Number:** R/APPEAL FROM ORDER NO. 192 of 2025 with CIVIL APPLICATION (FOR STAY) NO. 1 of 2025  

**Neutral Citation:** Not assigned  

**Name of Court:** High Court of Gujarat at Ahmedabad  

**Name of Hon'ble Judges:** Hon’ble Chief Justice Mrs. Justice Sunita Agarwal and Hon’ble Mr. Justice Sanjeev J. Thaker  

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

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

**Headnote of the Article**  

Gujarat High Court dismisses appeal against rejection of ad-interim injunction in “GULAB” vs “ROSE” edible oil trademark suit. Court holds that descriptive mark failed to show prima facie distinctiveness, long delay and acquiescence bar equitable relief, and civil courts must independently assess similarity at interim stage rather than deferring to Trade Marks Registry. Clear guidelines issued on structured judgment writing for Commercial Courts. Appeal dismissed; suit to proceed to trial.

====

**Summary**  

Plaintiffs from one family sell edible oils under the registered mark “GULAB” with a rose-flower device and claim long use and goodwill. Defendants sell similar oils under the mark “ROSE” with a flower device. Plaintiffs filed a commercial suit for trademark infringement and passing off and sought an interim injunction. The trial court rejected the injunction after finding that plaintiffs had known about defendants’ mark since 2008 when they opposed its registration, yet waited till 2022 to sue, amounting to delay and acquiescence. After the High Court remanded the matter for fresh hearing, the trial court again refused relief. On appeal, the Gujarat High Court dismissed the appeal, holding that “GULAB” is a common descriptive word, plaintiffs failed to show any strong prima facie case of distinctiveness or confusion, long silence disentitled them from equitable relief, and the Commercial Court must itself decide similarity and confusion on prima facie basis instead of deferring everything to the Trade Marks Registry.

**Points of Law Settled in the Case**  

• A registered but descriptive mark like “GULAB” (meaning rose) requires clear prima facie proof of acquired distinctiveness and secondary meaning to claim interim injunction; mere registration is not enough. (Para 24 of the Judgment)  

• Inordinate delay and acquiescence after actual knowledge of rival use (here since 2008) completely bars grant of ad-interim injunction as it is discretionary equitable relief. (Paras 14, 28, 39 & 54 of the Judgment)  

• At interim injunction stage, the Commercial Court must independently examine deceptive similarity, likelihood of confusion and prima facie case; it cannot defer or leave these core issues to pending proceedings before the Trade Marks Registry. (Paras 18-21 & 37 of the Judgment)  

• Appellate Court interferes with trial court’s discretionary order refusing interim injunction only if it is arbitrary, capricious or perverse; it does not re-appreciate evidence or substitute its own view. (Para 53 of the Judgment, relying on Wander Ltd. v. Antox India (P) Ltd.)  

**Case Title:** M/S. MANGROL OIL MILL & ORS. Versus VIKAS OIL INDUSTRIES & ANR.  

**Order Date:** 20 February 2026  

**Case Number:** R/APPEAL FROM ORDER NO. 192 of 2025 with CIVIL APPLICATION (FOR STAY) NO. 1 of 2025  

**Neutral Citation:** Not assigned  

**Name of Court:** High Court of Gujarat at Ahmedabad  

**Name of Judges:** Hon’ble the Chief Justice Mrs. Justice Sunita Agarwal and Hon’ble Mr. Justice Sanjeev J. Thaker  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Landmark Crafts Limited Vs. Romil Gupta

Introduction

In a significant ruling that balances procedural fairness with practical realities of trademark registration, the Division Bench of the Delhi High Court has upheld the validity of a minor stylistic amendment to a device mark. The case involved a dispute over whether changing the placement of two small letters in a four-letter device mark amounted to a "substantial alteration" that would invalidate the registration. The Court not only affirmed the Single Judge’s decision to restore the trademark but also laid down clear guidance on how such amendments should be viewed under the Trade Marks Act, 1999. This judgment is particularly important for businesses and trademark practitioners because it shows that not every visual tweak to a mark requires restarting the entire registration process.

Factual Background

The respondent, Romil Gupta trading as Sohan Lal Gupta, applied for registration of a device mark consisting of the letters S, D, H and P in a specific stylized form for self-tapping metal screws and drilling screws. The application claimed use of the mark since February 2013. During examination, the office raised certain objections. In response, the respondent sought a small correction, asking to adjust the positioning of the letters “S” and “D” from a horizontal to a vertical arrangement while keeping the overall letters, font sizes and general appearance the same. The Registry allowed this correction and the mark was eventually registered.

Later, the appellant, Landmark Crafts Limited, challenged the registration on the ground that the change was substantial and that proper user documents had not been filed for the amended mark. The core dispute was whether this stylistic adjustment was a minor clerical correction or a major change that required fresh examination and fresh proof of use.

Procedural Background

After registration, the appellant filed a complaint before the Trade Marks Registry alleging irregularities in the amendment process. Acting on its own motion under Section 57(4) of the Act, the Deputy Registrar issued a notice and, after hearing the parties, cancelled the registration. The respondent appealed to the Single Judge of the Delhi High Court, who set aside the cancellation order on two main grounds: first, that the Deputy Registrar had not followed the mandatory one-month notice period prescribed under the Rules, and second, that on merits the change was not a substantial alteration. Aggrieved by this, the appellant approached the Division Bench through a Letters Patent Appeal. The Division Bench heard detailed arguments from senior counsel on both sides and delivered its judgment on 25 February 2026.

Reasoning and Decision of Court

The Division Bench carefully examined both procedural and substantive aspects. On the procedural side, the Court held that the one-month notice requirement under Rule 100(1) is mandatory and cannot be waived even if the affected party does not immediately object. The Court emphasized that when the law prescribes a particular manner of doing something, it must be followed strictly. Since the Deputy Registrar had cancelled the registration without giving the full notice period, the order was liable to be set aside on this ground alone.

On the merits, the Bench agreed with the Single Judge that the change in the mark was not substantial. The Court observed that the four letters remained the same, the relative sizes stayed identical, and only the orientation of the two smaller letters was adjusted. Applying the ordinary meaning of “substantial” as something essential or of real importance, the judges found that this was a minor stylistic correction rather than a complete transformation of the mark. Because the alteration was not substantial, there was no need for the applicant to file a fresh user affidavit. The original claim of use continued to apply to the corrected mark.

The Court also noted that the rectification proceedings filed separately by the appellant remain unaffected, so the appellant’s rights to challenge the user claim or other aspects are fully preserved. In the end, the Division Bench dismissed the appeal and restored the registration, while reiterating that its observations would not influence the pending rectification petition.

Point of Law Settled in the Case

This judgment settles two important principles in trademark law. First, the notice period for suo motu rectification by the Registrar is mandatory and its breach renders the order invalid, irrespective of whether prejudice is specifically pleaded. Second, a stylistic or positional change in a device mark that does not alter the essential identity or overall commercial impression of the mark does not amount to a “substantial alteration” under Rule 37. In such cases, no fresh statement of user is required, and the original user claim carries forward. The ruling provides much-needed clarity to applicants and examiners on what kinds of corrections are permissible without triggering a full re-examination, while still protecting the rights of genuine prior users through separate rectification proceedings.

Case Detail

Title: Landmark Crafts Limited Vs. Romil Gupta Trading as Sohan Lal Gupta & Anr.

Date of Order: 25 February 2026

Case Number: LPA 575/2025 (along with connected CM applications)

Neutral Citation: 2026:DHC:1674-DB

Name of Court: High Court of Delhi

Name of Hon’ble Judges: Hon’ble Mr. Justice C. Hari Shankar & Hon’ble Mr. Justice Om Prakash Shukla

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

Suggested Titles for the Article

1. Delhi High Court Holds Minor Stylistic Change in Device Mark is Not Substantial Alteration
2. Landmark Ruling on Trademark Amendments: Clarity on “Substantial Alteration” under Rule 37
3. No Fresh User Affidavit Needed for Minor Correction in Trademark: Delhi HC
4. Procedural Fairness and Trademark Law: Delhi High Court Restores Registration after Cancellation on Technical Grounds

Suitable Tags

Trademark Amendment, Substantial Alteration, Rule 37 Trade Marks Rules, Section 57 Rectification, Delhi High Court Judgment, Device Mark, User Affidavit, Trade Marks Act 1999, Letters Patent Appeal, Trademark Registration Procedure

Headnote of the Article

In a well-reasoned judgment, the Division Bench of the Delhi High Court has clarified that a small positional change in the letters of a stylized device mark does not constitute “substantial alteration” under Rule 37 of the Trade Marks Rules, 2017. The Court also reiterated the mandatory nature of the one-month notice requirement in suo motu rectification proceedings. The ruling restores the trademark registration while preserving the appellant’s rights in parallel rectification proceedings, striking a practical balance between procedural safeguards and commercial realities.

=====

The respondent applied for registration of a stylized device mark for self-tapping screws claiming use since 2013. During examination, he sought a small correction in the positioning of two letters in the mark, which the Trade Marks Registry allowed and the mark was registered. The appellant challenged the registration alleging the change was substantial. Acting on its own motion, the Deputy Registrar cancelled the registration. The Single Judge set aside the cancellation order holding that mandatory notice period was not followed and that the change was not substantial. In Letters Patent Appeal, the Division Bench upheld the Single Judge’s decision, restored the registration and dismissed the appeal, while clarifying that the appellant’s separate rectification petition remains unaffected.

Points of Law Settled

• The one-month notice requirement prescribed under Rule 100(1) of the Trade Marks Rules, 2017 for suo motu rectification under Section 57(4) is mandatory; breach of this requirement renders the cancellation order invalid irrespective of prejudice or waiver. (Landmark Crafts Limited v. Romil Gupta Trading as Sohan Lal Gupta & Anr., LPA 575/2025, Paras 42-44)
• A minor stylistic or positional change in a device mark which does not alter its essential identity or overall commercial impression does not amount to “substantial alteration” under the proviso to Rule 37 of the Trade Marks Rules, 2017. (Landmark Crafts Limited v. Romil Gupta Trading as Sohan Lal Gupta & Anr., LPA 575/2025, Paras 50, 62)
• When an amendment to a trademark is not substantial, no fresh statement of user or affidavit is required; the original user claim continues to apply to the corrected mark. (Landmark Crafts Limited v. Romil Gupta Trading as Sohan Lal Gupta & Anr., LPA 575/2025, Paras 57-61)

Case Title: Landmark Crafts Limited v. Romil Gupta:25.02.2026:LPA 575/2025:2026:DHC:1674-DB:C. Hari Shankar & Om Prakash Shukla

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

=====

Sana Herbals Private Limited Vs Mohsin Dehlvi-DB

**Suitable Titles for the Article:**  

1. Even Sporadic Prior Use Defeats Passing Off Claim: Delhi High Court Clarifies Section 34 Defense  

2. Prior Adoption, Not Continuous Use, Wins Trademark Battle – Landmark Ruling on Honest Prior Rights  

3. Section 34 Triumphs: Delhi HC Holds Limited Early Use Enough to Protect Registered Mark Owner  

**Suitable Tags:**  

#Section34Defense #PriorUseTrademark #PassingOff #DelhiHighCourt #SporadicUse #TrademarkPriorRights #IPLaw #IndianTrademarkAct #HonestConcurrentUse #NOKUFCase  

### Introduction  

The Delhi High Court has delivered a clear and important message on how trademark rights work in India. In a dispute between two companies selling cough syrup under very similar names, the court ruled that the person who starts using a mark first holds a strong legal shield. This decision rests firmly on Section 34 of the Trade Marks Act, 1999, which protects anyone who adopted a mark honestly and used it before others came along. The ruling reminds everyone that trademark law rewards the first mover in the market, not the one who registers later or builds bigger sales. It brings fairness to cases where parties fight over marks that have roots in genuine early adoption, especially in everyday products like medicines.

### Factual Background  

One company, Sana Herbals, made cough syrup and sold it under the name NOKUF SYRUP. It believed it had received full rights to the shorter mark NOKUF through an old agreement with the other side and had been selling the product for many years, creating a strong name for itself in the market. The other side, led by Mohsin Dehlvi and his company Dehlvi Remedies, said they had chosen the name NOKUF much earlier and had been selling products under it since the mid-1990s. They pointed to their registration of the mark and said any use by Sana Herbals happened only because they had allowed it for a short time under a manufacturing deal. Later, when Dehlvi Remedies wanted to sell the syrup again under their old mark, Sana Herbals objected, fearing customers would get confused and think the product came from them. Both sides claimed the mark belonged to them, but the roots of the dispute went back to who started first and what happened in the years that followed.

### Procedural Background  

Sana Herbals approached the commercial court with a suit asking to stop Dehlvi Remedies from using the NOKUF name at all. They filed an urgent application for an order to prevent any launch until the full case could be heard, worried that even a small entry into the market would harm their reputation. The commercial court listened to both sides carefully and refused the urgent order. It found that Sana Herbals had not shown enough reason to stop the other party at this early stage. Feeling this was wrong, Sana Herbals filed an appeal before the Division Bench of the Delhi High Court. The bench heard detailed arguments from senior lawyers on both sides over several hearings and then gave its final view on the matter.

### Reasoning and Decision of Court  

The Division Bench first made one thing very clear: when a party already holds a valid registration for a mark, no claim of infringement can be made against them. The real fight here was about passing off, where Sana Herbals said customers would be misled. The court looked closely at the timeline of events. It found that Dehlvi Remedies had picked the name NOKUF and started using it well before Sana Herbals even existed as a company. Even though the use may not have been heavy every single year, especially during tough times like a factory fire and company troubles, it was real and honest from the beginning. The court explained that Section 34 of the Trade Marks Act protects exactly this kind of early adopter. It does not demand perfect, unbroken use – even sporadic or occasional use from the start is enough to create a defense. The old agreement that Sana Herbals relied on to claim full ownership was disputed and had never been properly completed under the law that applied at the time. The court also noted that Sana Herbals could not prove it had built its own reputation before Dehlvi Remedies had already started. In the end, the bench saw no strong reason to stop Dehlvi Remedies from using their mark. Allowing the order would have unfairly wiped out their early rights. The appeal was dismissed, and no restriction was placed on Dehlvi Remedies.

### Point of Law Settled in the Case  

This judgment settles a very practical point in trademark law. Even sporadic prior use of a mark is enough to claim full protection under Section 34 of the Trade Marks Act, 1999. A party who honestly adopts and uses a name first can defend itself against a passing off suit by a later user, no matter how much reputation the later user builds later. The court made it plain that the law does not require continuous or massive sales from day one – genuine early use, even if limited at times, creates rights that later claimants cannot take away. This ruling protects honest traders who start small and ensures that passing off claims cannot be used to erase prior honest adoption. It brings clarity for businesses in traditional sectors where use may grow slowly over the years.

**Case Detail**  

**Title:** Sana Herbals Private Limited Vs Mohsin Dehlvi and another 

**Date of Order:** 5 January 2026  

**Case Number:** FAO (COMM) 77/2025

**Neutral Citation:** 2026:DHC:7-DB  

**Name of Court:** High Court of Delhi  

**Name of Hon'ble Judges:** Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla (Judgment delivered by Hon’ble Mr. Justice C. Hari Shankar)  

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

**Headnote of Article:**  

Delhi High Court holds that even sporadic prior use of a trademark is sufficient to invoke the complete defense under Section 34 of the Trade Marks Act, 1999, defeating a passing off claim by a later user and registrant in the NOKUF cough syrup dispute.

AR Rahman Vs Ustad Faiyaz Wasifuddin Sagar

**Suitable Titles for the Article:**  

Copyright Comes from Creation and not from registration 

1. Delhi High Court Holds Copyright Arises from Creation, Not Performance or Family Claim – A.R. Rahman Wins Appeal  

2. Creation, Not Registration Vests Copyright: Landmark Ruling in Dhrupad-Film Song Dispute  

3. No Proof of Original Creation Means No Copyright – Delhi High Court Sets Aside Interim Relief Against A.R. Rahman  

**Suitable Tags:**  

#CopyrightFromCreation #IndianClassicalMusic #AR Rahman #Dhrupad #MoralRights #DelhiHighCourt #CopyrightLaw #TraditionalMusic #IPJudgment #NoRegistrationRequired  

### Introduction  

In a ruling that powerfully reaffirms a core principle of Indian copyright law, the Division Bench of the Delhi High Court has clarified that ownership of copyright flows directly from the act of creation itself and not from any formal registration, family arrangement, or mere performance of a work. The judgment arose in a high-profile dispute where a celebrated Dhrupad vocalist claimed rights over a traditional-style composition used in a popular film song by music composer A.R. Rahman. By setting aside the single judge’s interim directions for credit and monetary deposit, the court emphasised that in the realm of Indian classical music – passed down orally through generations – a claimant must prove actual original creation with clear evidence. Performance records or family assertions alone are not enough to establish authorship and ownership. This decision protects the public domain nature of traditional musical elements while underscoring that copyright protection rewards genuine creative contribution, not inherited legacy or rendition.  

### Factual Background  

A Padma Shri awardee and exponent of the Dagarvani Dhrupad style claimed that his late father and uncle, known as the Junior Dagar Brothers, had originally created a musical composition called “Shiva Stuti” in the 1970s. He asserted that through an oral family settlement after their passing, the rights in this composition had come to him exclusively. According to him, the composition was a distinct original work within the broader Dhrupad tradition.  

The composer A.R. Rahman, while creating music for the Tamil film Ponniyin Selvan II, incorporated melodic elements inspired by Dhrupad traditions into the song “Veera Raja Veera”. The film credits acknowledged inspiration from the “Dagarvani Tradition Dhrupad” but did not name the Junior Dagar Brothers or the plaintiff as creators. The plaintiff alleged that substantial parts of his claimed composition had been used without permission or proper attribution, violating both economic copyright and the moral rights of the original creators. He sought injunctions to stop further use and to compel credit in all releases and platforms.  

### Procedural Background  

The plaintiff filed a commercial suit seeking permanent injunction, damages, and accounts, along with an urgent interim application for directions to give credit to the Junior Dagar Brothers whenever the song was played or streamed. After hearing both sides, the single judge partly allowed the interim plea. The order directed updated credits in the song identifying the Junior Dagar Brothers as the source, required the composer and producers to deposit a substantial sum in court as security, and imposed costs on them.  

Feeling aggrieved by this interim relief granted after the film’s theatrical and OTT release, the composer and associated parties filed an appeal before the Division Bench. The appeal challenged the findings on authorship, originality, and the grant of what was perceived as final relief at the interlocutory stage. The Division Bench heard detailed arguments over multiple days, examined the evidence placed on record, and reserved judgment.  

### Reasoning and Decision of Court  

The Division Bench began by reiterating the fundamental tenet that copyright ownership springs from the moment of creation of an original work. Registration under the Copyright Act is merely declaratory and not a precondition for protection. In the context of Indian classical music, which thrives on oral transmission and guru-shishya tradition, the court stressed that a claimant cannot rely solely on performances or family arrangements to prove they (or their predecessors) created the work. Actual evidence of original creative contribution – beyond following the rules of a raga – is essential.  

The court carefully analysed the materials produced by the plaintiff, including old performance recordings, inlay cards of albums, and a later family letter. It found that these documents showed the Junior Dagar Brothers had performed and popularised a rendition of “Shiva Stuti” in Raga Adana, but did not establish that they had originally composed the underlying musical work. Performances demonstrate rendition and skill, not authorship of the composition itself. The court noted that similar renditions existed in the public domain, performed by other artists and disciples across Dagar lineages, long before or independently of the Junior Dagar Brothers.  

On originality, the Division Bench explained that while a composer may enjoy copyright in a specific, creative selection and arrangement of notes within a raga, mere adherence to traditional structures, swaras, or taal patterns common to the raga does not qualify as original creation. Elements dictated by the raga’s grammar remain in the public domain and cannot be monopolised. The court found that the plaintiff had not shown, even prima facie, any unique creative expression beyond standard raga elements that could be attributed exclusively to the Junior Dagar Brothers.  

The Division Bench further held that moral rights of attribution, while important, arise only after authorship is established. Since the plaintiff failed to prove creation by the claimed authors, the question of moral rights violation did not arise at the interim stage. Granting credit or security deposit would amount to final relief without full trial, which is impermissible when the foundational claim of ownership remains unproven.  

Ultimately, the Division Bench allowed the appeal, set aside the single judge’s directions for credit changes, monetary deposit, and costs, and vacated the interim injunction. It clarified that all issues of authorship, originality, and infringement remain open for determination at the final trial on the basis of complete evidence. The court balanced the interests by noting that traditional music elements belong to the cultural commons, and copyright cannot be used to restrict genuine creative inspiration drawn from public domain traditions.  

### Point of Law Settled in the Case  

This judgment firmly settles that under Indian copyright law, ownership vests in the person who actually creates an original work, and registration plays no role in conferring or proving that ownership. In oral and traditional art forms like Dhrupad, performances or recordings establish only rendition, not authorship of the composition. A claimant must produce positive evidence of original creative contribution beyond raga grammar and common structures. Moral rights and injunctions for attribution cannot be granted at the interim stage without prima facie proof of creation and ownership. The decision protects the public domain character of traditional musical motifs while reinforcing that copyright rewards genuine authorship arising from creation itself.  

**Case Detail**  

**Title:**  AR Rahman Vs Ustad Faiyaz Wasifuddin  Sagar  

**Date of Order:** 24 September 2025  

**Case Number:** FAO(OS) (COMM) 86/2025  

**Neutral Citation:** 2025:DHC:8522-DB 

**Name of Court:** High Court of Delhi  

**Name of Hon'ble Judges:** Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla 

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

**Headnote of Article:**  

Delhi High Court Division Bench holds that copyright ownership arises solely from the act of creation of an original work and not from registration, performance history, or family claims; in the absence of prima facie proof that the Junior Dagar Brothers originally created “Shiva Stuti” beyond traditional Dhrupad elements, no interim relief for credit or deposit can be granted against A.R. Rahman’s use in “Veera Raja Veera”.

Harshad Chiman Lal Modi Vs DLF Universal Limited

**Suitable Titles for the Article:**  

1. Supreme Court Rules Property Location Alone Decides Jurisdiction in Specific Performance Suits  

2. Landmark Ruling: Agreement Cannot Override Statutory Forum for Immovable Property Disputes  

3. Delhi Court Has No Say in Gurgaon Plot Suit – Supreme Court Settles Jurisdiction Debate  

**Suitable Tags:**  

#SupremeCourt #CPCSection16 #TerritorialJurisdiction #SpecificPerformance #ImmovableProperty #ContractClause #JurisdictionAgreement #IndianCivilProcedure #PropertyLaw #HarshadModiCase  

### Introduction  

In a clear and authoritative pronouncement, the Supreme Court of India settled a vital question of civil procedure that affects countless property disputes across the country. The Court explained when and how a suit seeking specific performance of an agreement to sell immovable property, along with delivery of possession, must be filed. It firmly held that the location of the property is the decisive factor for deciding which court has jurisdiction, and no private agreement between the parties can change this statutory rule. This judgment continues to guide lawyers and courts on the limits of party autonomy in choosing a forum for property-related suits.  

### Factual Background  

A buyer entered into a standard plot-buyer agreement with a real estate company for purchase of a residential plot located in Gurgaon, Haryana. The agreement was signed in Delhi, payments were made in Delhi, and the company’s head office was also in Delhi. The agreement contained a clause stating that only Delhi courts would have jurisdiction over any dispute arising from the transaction. Later, the company cancelled the agreement citing non-payment of certain dues. The buyer, feeling aggrieved, filed a civil suit in the Delhi High Court seeking declaration that the agreement was valid, specific performance directing the company to execute the sale deed, delivery of possession of the plot, and permanent injunction against any third-party sale.  

### Procedural Background  

The defendants initially filed a written statement in which they expressly admitted that the Delhi court had jurisdiction. The suit proceeded for several years, issues were framed, and evidence was being recorded. More than eight years after filing the written statement, the defendants suddenly moved an application to amend their pleading and raise an objection that the Delhi court had no jurisdiction because the plot was situated in Gurgaon. The trial court allowed the amendment, heard the parties on the jurisdiction issue, and held that the suit fell under Section 16 of the Code of Civil Procedure and could only be filed where the property is located. Accordingly, the plaint was ordered to be returned for presentation to the proper court. The buyer challenged this order in revision before the Delhi High Court, which upheld the trial court’s decision. Aggrieved, the buyer approached the Supreme Court by way of special leave petition.  

### Reasoning and Decision of Court  

The Supreme Court examined the scheme of Sections 15 to 20 of the Code of Civil Procedure in detail. It observed that suits involving rights or interests in immovable property must be filed in the court within whose territorial limits the property is situated. The Court clarified that the proviso to Section 16, which allows a suit to be filed where the defendant resides if the relief can be obtained through personal obedience, does not apply to cases where the plaintiff also seeks actual delivery of possession of the property. In such matters, the relief is not purely personal but directly concerns the immovable property itself.  

The Court further held that Section 20, the residuary provision for suits based on residence or cause of action, cannot override the specific mandate of Section 16. Even though the agreement conferred exclusive jurisdiction on Delhi courts, such a clause is valid only when two or more courts otherwise have jurisdiction under the Code and the parties agree to restrict the forum to one of them. Where a court has no jurisdiction at all under the statute, no agreement can confer or create jurisdiction. The Court also ruled that objection to jurisdiction over the subject-matter of the suit (as opposed to territorial or pecuniary jurisdiction) can be raised at any stage, even belatedly, because it goes to the root of the court’s authority. Neither consent, waiver, nor long delay can validate proceedings before a court that lacks statutory jurisdiction.  

Applying these principles, the Supreme Court held that the Delhi court had no jurisdiction to entertain the suit. It accordingly dismissed the appeal and upheld the order returning the plaint for presentation to the court at Gurgaon.  

### Point of Law Settled in the Case  

This judgment firmly establishes that in suits for specific performance of an agreement relating to immovable property coupled with a prayer for possession, the court where the property is situated alone has jurisdiction under Section 16(d) of the Code of Civil Procedure. A private agreement between the parties purporting to confer jurisdiction on another court is of no avail and is void to that extent. The proviso to Section 16 has no application when the relief sought includes delivery of possession. Objection to lack of subject-matter jurisdiction can be raised at any time and is not waived by delay, consent, or admission in the written statement. Section 20 of the Code cannot be invoked to bypass the specific provisions of Section 16.  

**Case Detail**  

**Title:** Harshad Chiman Lal Modi Vs DLF Universal Limited    

**Date of Order:** 26 September 2005  

**Case Number:** Civil Appeal No. 2726 of 2000  

**Neutral Citation:** (2005) 7 Supreme Court Cases 791  

**Name of Court:** Supreme Court of India  

**Name of Hon'ble Judges:** Hon’ble Mr. Justice Arijit Pasayat and Hon’ble Mr. Justice C.K. Thakker (Judgment delivered by Hon’ble Mr. Justice C.K. Thakker)  

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

**Headnote of Article:**  

Supreme Court holds that suits seeking specific performance of agreement for sale of immovable property together with delivery of possession must be instituted only in the court within whose territorial jurisdiction the property is situate; any clause in the agreement conferring jurisdiction on another court is void and cannot override the statutory mandate of Section 16 CPC.

=====

**Summary**  

A buyer filed a suit in the Delhi court seeking specific performance of an agreement to purchase a residential plot situated in Gurgaon, Haryana, along with delivery of possession and injunction. The agreement was signed in Delhi, payments were made in Delhi, and it contained a clause giving exclusive jurisdiction to Delhi courts. The seller initially admitted Delhi court’s jurisdiction in its written statement. After more than eight years, the seller challenged the jurisdiction. The trial court allowed the objection, held that the suit related to immovable property and could only be filed where the property was located, and ordered return of the plaint. The Delhi High Court upheld the order. The Supreme Court dismissed the buyer’s appeal.

**Points of Law Settled**  

• A suit for specific performance of an agreement relating to immovable property with prayer for possession is governed by Section 16(d) CPC and can be instituted only in the court within whose territorial jurisdiction the property is situate. [(2005) 7 SCC 791, Para 19]  

• The proviso to Section 16 CPC has no application when the relief includes delivery of possession of immovable property. [(2005) 7 SCC 791, Para 19]  

• A clause in an agreement conferring jurisdiction on a court which otherwise has no territorial jurisdiction over the immovable property is void and of no effect. [(2005) 7 SCC 791, Para 27]  

• Objection to lack of subject-matter jurisdiction can be raised at any stage and is not waived by consent, admission in written statement or delay. [(2005) 7 SCC 791, Para 32]  

• A court without jurisdiction cannot entertain the suit and any order passed by it is a nullity. [(2005) 7 SCC 791, Para 32]

**Case Title:** Harshad Chiman Lal Modi Vs DLF Universal Limited   

**Order Date:** 26 September 2005  

**Case Number:** Civil Appeal No. 2726 of 2000  

**Neutral Citation:** (2005) 7 Supreme Court Cases 791  

**Name of Court:** Supreme Court of India  

**Name of Judge:** Hon’ble Mr. Justice C.K. Thakker (for the Bench comprising Hon’ble Mr. Justice Arijit Pasayat and Hon’ble Mr. Justice C.K. Thakker)

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

=====

Boehringer Ingepheim GMBH Vs Controller of Patent-DB

Maintainability of Patent Revocation , post expiry of Patent

Introduction

This judgment, delivered on 24 February 2026 by a Division Bench of the High Court of Delhi in LPA 129/2025 (with CM APPL. 10551/2025), arises from an appeal filed by Boehringer Ingelheim Pharma GMBH and Co KG (“Boehringer”) against the judgment dated 15 January 2025 passed by a learned Single Judge of the same Court in CO (COMM IPD-PAT) 38/2022.

The appeal raises two pure questions of law of far-reaching significance in Indian patent jurisprudence under the Patents Act, 1970 (“the Act”):

(i) Whether a revocation petition under Section 64 of the Act can be instituted or continue to survive once the petitioner (as defendant) has already pleaded invalidity of the same patent as a defence under Section 107(1) in an infringement suit filed by the patentee?

(ii) Whether a revocation petition under Section 64 can be instituted or can continue after the patent whose revocation is sought has expired by efflux of time?

The Division Bench has answered both questions in the affirmative (i.e., revocation petitions remain maintainable in both scenarios), thereby upholding the Single Judge’s order dismissing Boehringer’s applications for dismissal of Macleods Pharmaceuticals Limited’s (“Macleods”) revocation petition. The judgment is noteworthy for its exhaustive statutory interpretation, reliance on international comparative law (particularly UK and European patent principles), detailed contextual analysis of the Ayyangar Committee Report, and clarification of the interplay between revocation (Section 64), invalidity defence (Section 107), and related provisions. It settles important legal concepts regarding the retrospective (ab initio) nature of revocation, the in rem effect of revocation orders, the independent nature of revocation as a standalone remedy, and the distinction between revocation and a mere defensive plea of invalidity.

Factual Background

Indian Patent No. IN 243301 (“IN’301”), granted to Boehringer on 5 October 2022 with a priority date of 21 August 2002, covers the pharmaceutical compound Linagliptin (used in diabetes treatment).

On 17 February 2022 (i.e., even before grant, but after publication), Macleods filed CO (COMM IPD-PAT) 38/2022 in the Delhi High Court under Section 64(1) seeking revocation of IN’301 on various grounds (including lack of novelty, inventive step, etc.).

Two days later, on 19 February 2022, Boehringer instituted COMS 3/2022 before the High Court of Himachal Pradesh (“the Himachal suit”) alleging that Macleods’ products infringed IN’301 and seeking permanent injunction, damages, and other reliefs. In its written statement in the Himachal suit, Macleods raised the defence of invalidity of IN’301 under Section 107(1) of the Act.

IN’301 expired by efflux of time on 18 August 2023 (20-year term from priority date). Boehringer, however, continues to press its claim for damages/account of profits in the Himachal suit for alleged past infringements during the patent’s life. Macleods’ revocation petition remained pending in Delhi.

Procedural Background

Macleods’ revocation petition (CO (COMM IPD-PAT) 38/2022) was filed in Delhi. Boehringer filed two applications in that petition:

• IA 7635/2024: Seeking dismissal on the ground that the patent had expired (Issue (ii)).
• IA 46685/2024: Seeking dismissal on the ground that Macleods had already taken a Section 107 invalidity defence in the Himachal suit (Issue (i)).

The learned Single Judge, by judgment dated 15 January 2025, dismissed both IAs, holding that the revocation petition was maintainable and could continue despite both the expiry of the patent and the raising of the Section 107 defence. Aggrieved, Boehringer preferred the present Letters Patent Appeal (LPA 129/2025). The Division Bench heard detailed arguments from Dr. Abhishek Manu Singhvi and Mr. Prashanto Chandra Sen (for Boehringer), Mr. G. Nataraj (for Macleods), and Ms. Swathi Sukumar, Sr. Adv. (Amicus Curiae). Written submissions were also filed. The appeal was reserved on 26 November 2025 and pronounced on 24 February 2026.

Dispute in Question

The core dispute crystallises into the two pure questions of law extracted in para 1 of the judgment (reproduced above). These questions are fact-agnostic but arose in the specific factual matrix of IN’301. The questions directly engage the statutory scheme of the Patents Act concerning:

• The nature and effect of revocation under Section 64 (standalone petition or counter-claim).
• The distinct character of an invalidity defence under Section 107(1) in an infringement suit.
• The continued legal existence and enforceability of a “patent” even after expiry.
• The concept of “person interested” under Section 2(1)(t) read with Section 64.
• Whether revocation operates retrospectively (ab initio) or only prospectively.

The resolution of these questions has profound implications for patent litigation strategy, multiplicity of proceedings, in rem vs in personam effects, and the survival of causes of action post-expiry (especially damages claims).

Arguments of Parties

Boehringer’s Arguments

• Revocation presupposes a “live” patent; once expired, there is nothing left to revoke (concept of revocation inherently requires the patent to be alive).
• Post-expiry, the petitioner ceases to be a “person interested” under Section 2(1)(t) because no monopoly or threat remains (relied on Dr. Reddys Laboratories Ltd v. Controller of Patents).
• Allowing revocation after expiry would be an academic exercise with no legal consequence (no retrospective effect).
• A Section 107 defence in the Himachal suit bars a parallel revocation petition because both seek the same ultimate relief (invalidity); continuing both would cause conflicting judgments across High Courts and multiplicity (relied on para 26 of Aloys Wobben v. Yogesh Mehra).
• A Section 107 defence is essentially in the nature of a counter-claim; once raised, the defendant must pursue revocation only via counter-claim in the suit (relied on Unilin Beheer B.V. v. Balaji Action Buildwell and Ramesh Chand Ardawatiya v. Anil Panjwani).
• Revocation and invalidity defence are not qualitatively different; both lead to the same practical outcome.

Macleods’ Arguments

• Section 64 uses the word “patent” (defined under Section 2(1)(m) as a patent granted under the Act) and not “patent in force”; expiry does not efface the patent’s character (no casus omissus).
• Revocation operates ab initio (retrospectively from grant date), effacing the patent as if it never existed; hence, a live cause of action survives even post-expiry (especially to defeat the patentee’s damages claim).
• Section 107 defence and revocation are fundamentally different: the former is in personam (defence in suit, at best declaratory, entered only in supplemental record under Section 151(2)), while the latter is in rem (removes patent from register entirely under Section 151(1)).
• A defendant may raise Section 107 defence and pursue revocation (via petition or counter-claim), but not both petition and counter-claim simultaneously (Aloys Wobben correctly read).
• Standalone right under Section 64 is not extinguished by expiry; patentee’s damages claim under Section 108 survives, so defendant’s right to revoke must also survive (relied on Ayyangar Committee Report paras 284–291).
• “Person interested” status continues because Macleods remains a defendant facing damages and has interest in manufacturing/sale.

Amicus Curiae

• Endorsed Macleods’ view; emphasised distinct statutory mechanisms (pre/post-grant opposition, revocation, Section 107, compulsory licensing) and retrospective effect of revocation. Relied on Ayyangar Report, Ajay Industrial Corporation, Girdhari Lal Gupta, and Section 108.

Reasoning of the Judge (Including Different Provisions of Law and Their Context)

The Division Bench’s reasoning is structured, statutory, and comparative. It first addresses the retrospective nature of revocation under Section 64.

Key Provisions and Their Contextual Interpretation

• Section 64(1): “Subject to the provisions contained in this Act, a patent … may be revoked on a petition of any person interested or of the Central Government or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds…”
  • Context: “Patent” is not qualified by “in force”. The disjunctive “or” treats revocation petition and counter-claim at par. Grounds (lack of novelty, obviousness, insufficiency, etc.) go to the root of the grant itself → revocation must operate ab initio.
• Section 2(1)(m): Defines “patent” as “a patent for any invention granted under this Act”. Once granted, it remains a “patent” even after expiry; expiry only renders it unenforceable prospectively.
• Section 2(1)(t): “Person interested” includes a person engaged in/promoting research in the same field. Macleods, being a defendant facing damages, retains interest post-expiry.
• Section 107(1): Provides that in an infringement suit, every ground on which revocation may be sought under Section 64 is available as a defence.
  • Context: Purely defensive, in personam, operates only between parties; does not remove patent from register.
• Section 151: Mandates transmission of High Court orders. Sub-section (1) (revocation) → entry in Register (effaces patent). Sub-section (2) (Section 107 finding) → entry only in supplemental record (declaratory). Clear statutory distinction.
• Section 53(4): On expiry, subject-matter not entitled to protection (affects patentee’s right to sue, not third-party right to revoke).
• Section 71: Rectification of register (separate remedy).
• Section 58 & 114: Amendment and relief for partially valid specification (available in revocation but limited in Section 107 suits).
• Ayyangar Committee Report (paras 284–291): Explains legislative intent — revocation is in rem, affects register; Section 107 is inter partes only. Supplemental record for infringement findings to inform public without effacing patent.

Core Legal Concepts Cleared

1. Retrospective effect of revocation: Revocation under Section 64 operates ab initio (from date of grant), rendering the patent void as if never granted. This is not expressly stated but flows from: (a) grounds attacking the grant itself; (b) equivalence of petition and counter-claim; (c) in rem nature; (d) international alignment.
2. “Patent” vs “patent in force”: Statutory definition controls; expiry does not denude the patent of its character.
3. Distinction between revocation and Section 107 defence: Revocation effaces the patent entirely (in rem); Section 107 is defensive and in personam. They can co-exist.
4. Survival post-expiry: Patentee’s damages claim (Section 108) survives; symmetrically, defendant’s revocation right survives to defeat that claim.

Judgements Including Their Citation and Context Relied by Judge in Reasoning

• Aloys Wobben v. Yogesh Mehra (2014) 15 SCC 360: Heavily relied upon by both sides. The Court reads it contextually — para 26 does not lay down an absolute bar on revocation petitions after suit filing; it applies only where a counter-claim has already been filed (res judicata). Where only Section 107 defence is raised (as here), revocation petition remains maintainable. Paras 25, 26, 27.2 clarify the harmonious reading of Section 64.
• Virgin Atlantic Airways Ltd v. Zodiac Seats UK Ltd [2013] UKSC 46 (UK Supreme Court): Landmark comparative authority. Held that revocation of a patent (under UKPA/EPC) operates retrospectively from grant date; patent treated as never having existed. Applied because Indian statutory scheme (Section 64 + definition of patent) mirrors UK/EPC position. Key passages (Lord Sumption & Lord Neuberger) on in rem effect and policy of Patents Act.
• Ajay Industrial Corporation v. Shiro Kanao of Ibaraki City AIR 1983 Del 496 (DB): Relied on for post-expiry revocation being permissible; transmission to Controller not futile.
• Star Textile Engineering Works Ltd v. James Mackie Holding Ltd 1977 SCC OnLine Cal 280: Cited for proposition that expiry does not bar revocation.
• Dr. Reddys Laboratories Ltd v. Controller of Patents (Single Judge): Distinguished; does not hold that “person interested” ceases post-expiry when damages claim survives.
• Unilin Beheer B.V. v. Balaji Action Buildwell (2018) 76 PTC 194: Distinguished on facts; does not equate Section 107 defence to counter-claim.
• Ramesh Chand Ardawatiya v. Anil Panjwani (2003) 7 SCC 350: Distinguished; not applicable to patent-specific statutory scheme.
• Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 511: On limited nature of grant (used in rejoinder).

Final Decision

The Division Bench dismissed Boehringer’s LPA 129/2025 with no order as to costs. It fully agreed with the Single Judge. Both issues were answered in favour of maintainability of the revocation petition. The revocation petition filed by Macleods can proceed and be adjudicated on merits even after (a) raising Section 107 defence in the Himachal suit, and (b) expiry of IN’301.

Concluding Note

The judgment is a masterclass in statutory interpretation that harmonises the Patents Act’s provisions with legislative intent (Ayyangar Report), practical realities of patent litigation, and international best practices. It rejects hyper-technical attempts to extinguish revocation rights post-expiry or after a defensive plea, emphasising that revocation is a powerful in rem remedy that operates retrospectively to clear the register of invalid grants. By doing so, it safeguards public interest in invalid patents not being used to extract damages or restrain legitimate competition even after expiry.

Legal Points Settled in This Case (Key Takeaways for Patent Law)

1. Revocation under Section 64 operates retrospectively (ab initio): If successful, the patent is deemed never to have been granted. It effaces the patent from the register as if the grant was void from inception.
2. A “patent” continues to exist for Section 64 purposes even after expiry: The statutory definition (Section 2(1)(m)) is not limited to “patent in force”. Expiry only affects prospective enforceability.
3. “Person interested” status survives patent expiry: So long as the petitioner has a real interest (e.g., facing a damages claim), it remains entitled to maintain revocation.
4. Section 107 invalidity defence and Section 64 revocation are independent and co-exist: A defendant may raise both; Section 107 is merely defensive (in personam), while revocation is in rem and removes the patent entirely. Only a counter-claim and revocation petition cannot be pursued simultaneously (per Aloys Wobben).
5. No multiplicity or conflict issue: The two proceedings operate in different legal spheres; a Section 107 finding does not bar revocation (different consequences under Section 151).
6. Damages claim survival is symmetrical: Patentee’s right to past damages (Section 108) survives expiry; defendant’s right to revoke (to defeat that claim) also survives.
7. Indian law aligns with UK/EPC on retrospective revocation: Virgin Atlantic principles are persuasive and applicable.

 

Case Title:Boehringer Ingepheim GMBH Vs Controller of Patent

Date of Order:24 February 2026  

Case Number:LPA 129/2025  

Neutral Citation:2026:DHC:1609-DB  

Name of Court:High Court of Delhi  

Name of Hon'ble Judges:Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla  

Disclaimer:Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation.  

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

**Headnote of Article:**  

Delhi High Court Division Bench holds that patent revocation petitions under Section 64 of the Patents Act remain maintainable and continue to survive even after the patent expires by efflux of time and even after the petitioner has raised an invalidity defence under Section 107 in a parallel infringement suit, as revocation operates retrospectively from the date of grant and serves a distinct purpose from a mere defence in the suit.

=====

**Summary**  

A German pharmaceutical company’s patent for a diabetes drug was challenged by an Indian generic manufacturer through a revocation petition filed in the Delhi High Court. Just two days later the patent holder filed an infringement suit in the Himachal Pradesh High Court, in which the generic company raised invalidity as a defence. The patent expired in the ordinary course thereafter. The patent holder moved applications to dismiss the revocation petition on two grounds – that the invalidity defence in the suit barred a separate revocation petition and that revocation could not survive after the patent had expired. The Single Judge rejected both applications and allowed the revocation petition to proceed. In appeal, the Division Bench upheld the Single Judge’s order, holding that revocation operates retrospectively from the date of grant and wipes out the patent as if it never existed, so expiry does not end the proceedings. The court also ruled that raising an invalidity defence in the suit is qualitatively different from seeking full revocation and does not prevent the challenger from pursuing the revocation petition. The appeal was dismissed and the revocation proceedings were directed to continue on merits.

**Points of Law Settled**  

• A revocation petition under Section 64 of the Patents Act, 1970 remains maintainable and can continue even after the patent expires by efflux of time. (Paras 54-56, 20.1-20.2)  

• Raising an invalidity defence under Section 107 in an infringement suit does not bar the defendant from independently pursuing a revocation petition under Section 64. (Paras 19.2, 57)  

• Revocation of a patent operates retrospectively from the date of grant and effaces the patent ab initio as if it had never been granted. (Paras 54-56, 61-64)  

• The remedy of revocation under Section 64 and a mere invalidity defence under Section 107 are distinct in scope and legal consequences. (Paras 19.1, 31, 40)

**Case Title:** Boehringer  Ingepheim GMBH Vs Controller of Patent:24.02.2026:LPA 129/2025:2026:DHC:1609-DB,C. Hari Shankar &  Om Prakash Shukla  

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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Fertin Pharma Vs Assistant Controller of Patent

The appellant filed an appeal against the Assistant Controller of Patents and Designs for rejecting its patent application. The rejection order referred to prior art documents but remained unclear on the exact ground of objection and failed to explain with proper comparison why the invention was not patentable. The court found the order cryptic, lacking clarity and detailed reasoning, and set aside the rejection while directing fresh de novo consideration by a different Assistant Controller after hearing the appellant.

• Controller’s rejection order must clearly specify the objection and provide sufficient reasoning by juxtaposing claims against prior art: FERTIN PHARMA A/S v ASSISTANT CONTROLLER OF PATENTS AND DESIGNS, C.A.(COMM.IPD-PAT) 25/2023, Paras 6-8

• Reasons are the bedrock of all quasi-judicial orders under the Patents Act and the applicant is entitled to know specific grounds of rejection to file effective appeal: Ibid, Para 10

• Where rejection order suffers from lack of clarity and reasoning, the same is liable to be set aside and matter remitted for de novo consideration by another Assistant Controller: Ibid, Para 11

Case Title: Fertin Pharma Vs Assistant Controller of Patent 

Order date: 18th February, 2026

Case Number: C.A.(COMM.IPD-PAT) 25/2023

Neutral Citation: 2026:DHC:1498

Name of court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Tushar Rao Gedela

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Life Insurance Corporation of India Vs Sanjeev Builders

Introduction

The Supreme Court of India has once again emphasised that courts must adopt a liberal and justice-oriented approach while dealing with applications for amendment of pleadings. In this landmark ruling, the Court permitted the plaintiffs in a suit for specific performance to enhance the amount claimed as damages in the alternative relief, even after decades of litigation. The judgment clarifies that technical objections like delay or limitation should not defeat genuine claims when no real prejudice is caused to the other side and the amendment helps in deciding the real dispute between the parties.

Factual Background

Sanjeev Builders Private Limited entered into an agreement with Life Insurance Corporation of India for purchase of certain property. When LIC failed to perform its part, the builders filed a suit seeking specific performance of the agreement and, in the alternative, claimed damages. After the suit had been pending for many years, the builders realised that the value of the property had increased substantially due to passage of time and delay in the case. They therefore sought to amend the plaint to claim a much higher amount as damages in the alternative to specific performance.

Procedural Background

The suit was filed in 1986 before the Bombay High Court. In 2017, the plaintiffs moved an application seeking amendment of the plaint to enhance the damages claim. The Single Judge allowed the amendment while keeping the question of limitation open for decision at the time of trial and also permitted LIC to file an additional written statement. LIC challenged this order before the Division Bench, which dismissed the appeal. Aggrieved, LIC approached the Supreme Court contending that the amendment was highly belated, barred by limitation, hit by Order 2 Rule 2 CPC, and amounted to constructive res judicata.

Reasoning and Decision of Court

The Supreme Court carefully examined all the objections raised by LIC and rejected them one by one. The Court held that amendments in pleadings should be granted liberally if they are necessary to determine the real controversy and do not cause injustice or prejudice to the opposite party. Mere delay in filing the application for amendment is not a sufficient ground to reject it, especially when the suit is still at the pre-trial stage.

The Court clarified that Order 2 Rule 2 CPC, which bars a subsequent suit for a relief that could have been claimed earlier, has no application to an amendment sought in an already pending suit. It also held that the principle of constructive res judicata was not attracted because there was no earlier adjudication on merits.

Referring to the Specific Relief Act, the Court noted that the law itself contemplates amendment of the plaint at any stage to include a claim for compensation. The previous judgment of the Supreme Court between the same parties (on impleadment of an assignee) was distinguished on facts and held not applicable to the present case.

The Supreme Court ultimately dismissed LIC’s appeal, upheld the orders of the High Court permitting the amendment, and directed that the issue of limitation shall be decided during the trial on merits. The amendment was allowed so that the plaintiffs could claim enhanced damages without forcing them to file a fresh suit, thereby avoiding multiplicity of litigation.

Point of Law Settled in the Case

This judgment settles several important principles governing amendment of pleadings in civil suits, particularly in suits for specific performance:

• Courts must be extremely liberal in allowing amendments if they help in deciding the real dispute and no irreparable prejudice is caused to the other side.
• Delay by itself is not a ground to reject an amendment application, especially when the suit has not yet reached the stage of trial.
• Order 2 Rule 2 CPC does not apply to amendments sought in an existing suit.
• The provisos to Sections 21(5) and 22(2) of the Specific Relief Act expressly permit amendment of the plaint at any stage to include or enhance a claim for compensation.
• Even where a fresh suit on the amended claim might appear barred by limitation, the court can still allow the amendment if it serves the ends of justice, leaving the limitation issue to be decided at trial.
• An amendment relating only to the quantum of relief based on facts already pleaded in the plaint does not change the nature of the suit and should ordinarily be allowed.
• Where the amendment is sought before commencement of trial, the court should be more liberal because the opposite party will have full opportunity to meet the amended case.
• The court may direct that the amendment shall not relate back to the date of the original suit if it is necessary to protect any right accrued to the defendant by lapse of time.

Case Detail

Title: Life Insurance Corporation of India Vs Sanjeev Builders Private Limited and Another

Date of Order: 01 September 2022

Case Number: Civil Appeal No. 5909 of 2022 (arising out of SLP (C) No. 22443 of 2019)

Neutral Citation: (2022) 16 SCC 1

Name of Court: Supreme Court of India

Name of Hon'ble Judges: Hon'ble Mr. Justice Aniruddha Bose and Hon'ble Mr. Justice J.B. Pardiwala

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

Suggested Titles for the Article

1. Supreme Court Allows Enhancement of Damages Claim in Specific Performance Suit After 31 Years
2. Liberal Amendment of Pleadings: Key Principles Laid Down by Supreme Court in LIC Case
3. Delay No Bar to Amendment: Supreme Court Permits Higher Damages Claim in Pending Suit
4. Order 2 Rule 2 CPC Does Not Apply to Amendments – Landmark Supreme Court Ruling

Suitable Tags

#SupremeCourtJudgment #AmendmentOfPleadings #Order6Rule17 #SpecificPerformance #DamagesClaim #CivilProcedureCode #LimitationInAmendment #AvoidMultiplicityOfSuits #IndianLaw #ContractLaw

Headnote of Article

Supreme Court permits amendment of plaint in a 1986 suit for specific performance to enhance the alternative claim for damages even after 31 years, holding that Order 2 Rule 2 CPC has no application to amendments in existing suits, pre-trial amendments must be granted liberally, and limitation is a matter to be decided at trial, thereby reaffirming the principle that technicalities should not defeat substantive justice.

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Sanjeev Builders filed a 1986 suit against LIC seeking specific performance of an agreement to sell property and claimed alternative damages. After many years of pendency, they applied to amend the plaint to substantially increase the damages amount citing rise in property value and delay in the case. The Single Judge allowed the amendment keeping the question of limitation open for trial and permitted LIC to file additional written statement. The Division Bench of the Bombay High Court affirmed the order. LIC challenged it before the Supreme Court on grounds of delay, limitation, Order 2 Rule 2 CPC and constructive res judicata. The Supreme Court dismissed the appeal and upheld the amendment.

Points of Law Settled

• Amendments to pleadings must be allowed liberally if necessary for determining the real controversy and no injustice or prejudice is caused to the opposite party, especially before commencement of trial. (Para 71, Life Insurance Corporation of India v. Sanjeev Builders Private Limited, (2022) 16 SCC 1)

• Order 2 Rule 2 CPC has no application to an amendment sought in an already pending suit. (Paras 51 & 71.1)

• Mere delay in filing amendment application is not a ground for rejection; the court may allow it and frame limitation as a separate issue for trial. (Paras 71.9 & 32)

• In a suit for specific performance, amendment to enhance the claim for compensation in addition to or in substitution of specific performance is permissible at any stage under the provisos to Sections 21(5) and 22(2) of the Specific Relief Act, 1963. (Paras 65-67)

• Amendment relating only to the quantum of relief based on facts already pleaded in the plaint does not change the nature of the suit and is ordinarily allowed. (Para 71.10)

Case Detail

Case Title: Life Insurance Corporation of India Vs Sanjeev Builders Private Limited and Another

Order Date: 01 September 2022

Case Number: Civil Appeal No. 5909 of 2022 (arising out of SLP (C) No. 22443 of 2019)

Neutral Citation: (2022) 16 SCC 1

Name of Court: Supreme Court of India

Name of Judges: Hon'ble Mr. Justice Aniruddha Bose and Hon'ble Mr. Justice J.B. Pardiwala

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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