Cipla Limited Vs Union of India

Introduction:

The procedural mechanics governing trademark restoration and renewal often present intricate questions regarding the locus standi of third parties. When a registered trademark is removed from the register due to non-renewal and subsequently restored by the Trade Marks Registry following judicial intervention, third parties operating in the same domain frequently seek to intervene. The High Court of Delhi examined these principles in a dispute involving the trademark NO DARAR in Class 5. The court addressed whether a third party alleging prejudice has a legal right to be impleaded in a writ petition concerning the administrative restoration and renewal of a trademark between the registered proprietor and the Trade Marks Registry.

Factual and Procedural Background:

The petitioner, Cipla Limited, filed a writ petition seeking a writ of mandamus or certiorari directing the respondents, including the Union of India and the Trade Marks Registry, to restore its trademark registration bearing application number 1694972 for the mark NO DARAR in Class 5, which had been registered on February 7, 2011. The petitioner further sought permission to file an application for the renewal of the said trademark.

During the initial proceedings, the Central Government Standing Counsel appearing for the Registrar of Trade Marks submitted that although the statutory O-3 Notice dated March 19, 2018, was uploaded on the official website, its dispatch tracking report was untraceable. Consequently, without adjudicating the dispute on merits, the High Court disposed of the writ petition on May 14, 2025, permitting the petitioner to submit an application for restoration and renewal along with the prescribed fees within two weeks, directing the Registrar to proceed in accordance with law.

The petitioner subsequently filed an application seeking modification of the order dated May 14, 2025, pointing out that the Trade Marks Registry had updated the status of the trademark application on its official website from Removed to Registered. Taking note of the Registry's compliance, the High Court disposed of the modification application on May 30, 2025, as withdrawn, observing that no further directions were necessary since the mark was reflected as registered.

Thereafter, an applicant third party challenged the order dated May 14, 2025, before the Supreme Court of India via Special Leave Petition SLP(C) No. 24856/2025. The Supreme Court disposed of the SLP on August 29, 2025, observing that the applicant was not a party before the High Court and granting liberty to the applicant to file an appropriate application before the High Court to demonstrate how the order caused grave prejudice. Pursuant to this liberty, the applicant filed two interlocutory applications before the High Court: CM 298/2025 under Order I Rule 10 of the Code of Civil Procedure, 1908, seeking impleadment as a party, and CM 299/2025 under Section 151 of the Code of Civil Procedure, 1908, seeking recall of the order dated May 14, 2025. Arguments on these applications were heard, leading to the judgment dated July 27, 2026.

Dispute Before the Court:

rights of a third party to intervene in writ proceedings dealing strictly with administrative renewal and restoration of a trademark between the proprietor and the Registry.

The applicant argued that the Supreme Court’s order dated August 29, 2025, conferred an absolute right to be heard on the merits of the dispute rather than merely seeking leave to demonstrate locus standi. Relying on Rule 60 of the Trade Marks Rules, 2017, the applicant contended that the restoration and renewal of the petitioner’s mark were carried out without following statutory due process. The applicant asserted that it was a necessary and proper party because the restoration perpetuated the petitioner's trademark to the severe prejudice of the applicant’s commercial interests.

Conversely, the petitioner and the Trade Marks Registry contended that the core issue in the writ petition pertained strictly to the administrative bilateral relationship between the registered proprietor and the Registry regarding non-service of the mandatory O-3 notice. They submitted that the petition involved a right in personam. They asserted that a third party is a rank outsider to renewal proceedings and has no locus standi to seek impleadment in a disposed-of writ petition. The proper statutory remedy for any aggrieved third party, they argued, was to file an independent rectification application under the Trade Marks Act rather than intervening in administrative renewal matters.

Reasoning and Analysis of the Court:

The High Court undertook an analysis of the statutory framework governing party impleadment under Order I Rule 10(2) of the Code of Civil Procedure, 1908. The Court emphasized that for a party to be added to a proceeding, its presence must be necessary to enable the court to effectually and completely adjudicate upon and settle all questions involved in the suit. Reaffirming settled procedural jurisprudence, the Court noted that a necessary party is one without whom no effective order can be made, whereas a proper party is one whose presence is indispensable for a complete and final decision.

In evaluating the facts, the Court observed that the writ petition was confined to the administrative non-action or procedural lapses of the Trade Marks Registry regarding the restoration of Application No. 1694972 in Class 5. The petitioner had raised no assertions, grounds, or prayers against any third party. Consequently, the matter pertained exclusively to a right in personam between the trademark owner and the statutory authority. The Court held that the applicant was a rank outsider with no direct connection to the subject matter of the writ petition.

Addressing the applicant’s reliance on the Supreme Court’s order, the High Court clarified that the Supreme Court had merely granted liberty to the applicant to approach the High Court and establish whether it was a necessary and proper party. The order did not automatically grant impleadment or bypass the threshold requirements of Order I Rule 10 of the Code of Civil Procedure.

Regarding the applicant’s contention that the Registry failed to follow Rule 60 of the Trade Marks Rules, 2017, and that the order dated May 14, 2025, allowed the Registry to perpetuate the mark, the Court held that these submissions pertained to subsequent actions taken by the Registry. Such subsequent administrative steps fell outside the scope and jurisdiction of the disposed-of writ petition. The Court held that the applicant was estopped from challenging subsequent administrative acts through interlocutory applications in a closed writ proceeding.

To reinforce its reasoning, the Court relied on the decisions in M/s. Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors., 2017 SCC OnLine Del 10607 (affirmed by the Division Bench in 2018 SCC OnLine Del 7625) and the Division Bench ruling of the Bombay High Court in Motwane Private Limited v. Registrar of Trade Marks & Anr., 2024 SCC OnLine Bom 661. These precedents established that trademark renewal is strictly a matter between the Trade Marks Registry and the registered proprietor. The question of considering third-party rights at the stage of renewal or restoration does not arise. If a third party is aggrieved by the registration or restoration of a trademark, its remedy lies in initiating independent rectification proceedings as provided under the statute, rather than seeking to participate in the renewal process.

The Court acknowledged the legal principles laid down in precedents cited by the applicant, including M/s. Chopra Hotels Private Limited v. Harbinder Singh Sekhon & Ors., 2026 INSC 335, Prabodh Verma & Ors. v. State of Uttar Pradesh & Ors., (1984) 4 SCC 251, and Times Publishing House Limited v. The Assistant Registrar of Trade Marks & Ors., W.P.(C) No. 23545/2005 (order dated December 14, 2006). However, the Court distinguished them on facts, holding that the applicant failed to show their applicability to a bilateral administrative renewal dispute.

Final Decision of the Court:

The High Court dismissed the application for impleadment under Order I Rule 10 of the Code of Civil Procedure, 1908 (CM 298/2025) and the application for recall under Section 151 of the Code of Civil Procedure, 1908 (CM 299/2025). The Court held that the applicant failed to establish its status as a necessary or proper party.

Consequently, the application seeking a stay of the order dated May 30, 2025 (CM 297/2025) was also dismissed as nothing survived for adjudication. The Court made no order as to costs and clarified that the applicant remained at liberty to pursue appropriate statutory remedies, such as rectification proceedings, in accordance with law.

Point of Law Settled:

This judgment reinforces that trademark restoration and renewal proceedings before the Trade Marks Registry, as well as writ petitions challenging administrative defaults in such processes, constitute matters strictly in personam between the registered proprietor and the Trade Marks Registry. Third parties have no locus standi to intervene or seek impleadment under Order I Rule 10 of the Code of Civil Procedure, 1908, in proceedings concerning trademark renewal or restoration. Any third party aggrieved by the restoration or continued presence of a trademark on the register must exhaust independent statutory remedies, such as filing a rectification application under the Trade Marks Act, rather than interrupting bilateral administrative or judicial proceedings regarding renewal.

Case Details:

Title of the Case: Cipla Limited Vs Union of India & Ors.

Date of Judgment: July 27, 2026

Case Number: W.P.(C)-IPD 23/2025 (CM 298/2025 & CM 299/2025)

Neutral Citation: 2026:DHC:XXXX (as per judgment records)

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Saurabh Banerjee

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

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

Headnote of the Judgment:

Cipla Limited v. Union of India & Ors. (W.P.(C)-IPD 23/2025, High Court of Delhi, Judgment dated July 27, 2026). The petitioner filed a writ petition seeking restoration and renewal of its trademark NO DARAR in Class 5 due to untraceable O-3 notice dispatch records, which was disposed of permitting renewal steps. An applicant third party sought impleadment under Order I Rule 10 CPC and recall of the order, alleging prejudice. The High Court dismissed the applications, holding that trademark renewal is strictly a matter in personam between the proprietor and the Registry. Third parties are neither necessary nor proper parties in renewal writ petitions and must pursue independent statutory rectification remedies.

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N.Ranga Rao & Sons Vs. Sree Annapoorna Agro Foods

Introduction:

The protection of trademarks under intellectual property jurisprudence often faces complex questions when a widely recognized mark used for one class of products is adopted by another trader for completely different, non-competing goods. The dispute between an established manufacturer of incense sticks and a regional producer of edible vegetable oils highlights the delicate statutory balance between actual product similarity, well-known brand reputation, and trademark dilution. The judgment rendered by the Division Bench of the High Court of Judicature at Madras offers a crucial examination of trademark protection under Section 29(4) of the Trade Marks Act, 1999, which extends rights over registered marks against their unauthorized use on dissimilar goods.

Factual and Procedural Background:

The plaintiff, originally founded in 1948 as a proprietary concern, was subsequently converted into a partnership firm and ultimately incorporated as a private limited company in 2014. The business initially adopted the trademark CYCLE in the year 1954 primarily in relation to agarbathies and incense sticks. Over several decades of continuous, extensive commercial use, nationwide advertising, and substantial sales turnover, the brand expanded globally to export markets spanning over forty countries. Additionally, the plaintiff obtained registrations for the trademark CYCLE and its corresponding cycle device under various classes, including Classes 29 and 30 in respect of food products, on a proposed-to-be-used basis.

The defendant, a business operating under the trade name Sree Annapurna Agro Foods in Erode, commenced manufacturing and marketing edible vegetable oils under the identical trademark CYCLE and a cycle device in the year 2009. Upon learning of the defendant's commercial use of the mark in Class 29, the plaintiff instituted a commercial suit, C.S. No. 259 of 2017, before the Single Judge of the High Court of Judicature at Madras. The suit prayed for permanent injunctions to restrain trademark infringement and passing off, rendition of accounts of profits, surrender and destruction of offending labels and dies, and costs.

On August 17, 2021, the learned Single Judge dismissed the suit with costs. The trial Court observed that the distinctiveness built by the plaintiff pertained specifically to Cycle Brand Agarbathies rather than the standalone word CYCLE. It further reasoned that CYCLE, being a common dictionary word, could not confer a broad monopoly over all product classes; that incense sticks and edible oils were neither allied nor cognate goods; that the plaintiff failed to show actual commercial use in Classes 29 and 30; and that the defendant was the prior user of the mark specifically in the domain of edible oils. Aggrieved by this dismissal, the plaintiff preferred an appeal, O.S.A.(CAD) No. 3 of 2022, under Order 13 Rule 1 of the Commercial Courts Act read with Clause 15 of the Letters Patent. The appeal was heard and reserved on June 24, 2026, and judgment was pronounced on July 28, 2026.

Dispute Before the Court:

The primary legal and factual questions presented before the High Court revolved around whether a proprietor of a renowned mark for a specific category of goods can restrain another entity from using the identical mark on completely different, non-allied products.

The plaintiff contended that its trademark CYCLE had been continuously used since 1954 and had attained secondary meaning and distinctiveness, elevating it to the status of a well-known mark. It argued that under Section 29(4) of the Trade Marks Act, 1999, protection extends to dissimilar goods if the registered mark enjoys reputation in India and the unauthorized use takes unfair advantage of or dilutes its distinctive character without due cause. The plaintiff asserted that the defendant offered no plausible or honest explanation for adopting the identical word mark and cycle device, meaning the adoption was dishonest and aimed at piggybacking on the plaintiff's reputation.

Conversely, the defendant argued that the plaintiff had only ever utilized the mark for incense sticks and agarbathies, whereas its registrations under Classes 29 and 30 were merely on a proposed-to-be-used basis and vulnerable to cancellation for non-use. The defendant asserted that CYCLE is a generic dictionary word incapable of monopolization across all consumer categories. Furthermore, because edible oils and agarbathies appeal to different senses, namely taste versus smell, and are completely non-cognate, the defendant claimed there was no possibility of public confusion. The defendant maintained that it was the prior commercial user of the mark in the edible oil category, having used it continuously since 2009.

Reasoning and Analysis of the Court:

The Division Bench undertook a thorough evaluation of the statutory framework, evidentiary records, and established legal precedents to assess whether the trial Court erred in dismissing the suit.

Addressing the defendant's contention regarding the word CYCLE being a generic dictionary term, the Bench reaffirmed the settled position of law that common or descriptive words can, through long, continuous, and extensive commercial use, acquire a strong secondary significance. Once a mark transcends its primary ordinary meaning and becomes exclusively associated in the public mind with a specific business, it earns full statutory protection against unauthorized adoption. To reinforce this legal proposition, the Court analyzed the decision of the Supreme Court of India in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147, where the word Mahindra was protected due to decades of acquired distinctiveness despite competing claims. It also referred to T.V. Venugopal v. Ushodaya Enterprises Ltd. and Another, (2011) 4 SCC 85, where the Supreme Court held that even a descriptive term like Eenadu was entitled to strong protection against a third party attempting to ride on its goodwill, even in non-identical product categories.

The Court scrutinised the trial Court's reliance on the argument that incense sticks and edible oils are not cognate or allied goods. The Bench explained that while product similarity is a critical consideration in classical infringement and passing off actions, Section 29(4) of the Trade Marks Act, 1999, specifically caters to situations involving dissimilar goods or services. Under Section 29(4), infringement occurs if three conditions are satisfied: first, the rival mark is identical or similar to the registered mark; second, the mark is used for dissimilar goods or services; and third, the registered mark holds a reputation in India such that the unauthorized use without due cause takes unfair advantage of, or is detrimental to, its distinctive character or repute.

To clarify the evolving cross-product scope of passing off and trademark protection, the Court relied on the Full Bench judgment of the High Court of Calcutta in Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills, 2009 SCC OnLine Cal 531. The Full Bench had overruled older rigid authorities, holding that in modern commerce, consumers often assume that a reputed brand expanding into different product categories originates from the same source. Thus, absolute dissimilarity of goods does not automatically defeat a protection claim if the mark carries substantial reputation and its unauthorized use causes dilution or consumer association.

Evaluating the evidence, the Bench noted that the plaintiff had established continuous adoption since 1954, backed by registered certificates, widespread nationwide advertising, international exports, and prior court rulings recognizing the mark's extensive goodwill. Consequently, the distinctiveness belonged to the mark CYCLE itself and was not strictly limited to agarbathies.

On the question of whether the defendant had due cause under Section 29(4), the Bench evaluated the testimony of the defendant's sole witness. During cross-examination, the witness admitted that the defendant operated under various brand names over time but failed to produce any documentary evidence or state in the written statement any specific reason why the mark CYCLE was adopted in 2009 for edible oils. There was no connection between the word CYCLE and the defendant's name, family background, or geographic origin. In the absence of a bona fide explanation, the adoption of an identical mark with a similar cycle device was deemed to be without due cause, intended to take unfair advantage of the plaintiff's established reputation.

However, the Court distinguished between statutory infringement under Section 29(4) and the common law remedy of passing off. It observed that passing off requires misrepresentation in the course of trade leading to actual deceit or confusion regarding the origin of goods. Given the complete absence of proof of actual consumer deceit and the disparate nature of the trade channels, the claim for passing off was not made out. Similarly, the claim for rendition of accounts of profits was rejected due to lack of evidence quantifying any financial gains derived by the defendant.

Final Decision of the Court:

The Division Bench partly allowed the appeal, setting aside the judgment and decree dated August 17, 2021, passed in C.S. No. 259 of 2017. The Court granted a permanent injunction restraining the defendant, its agents, dealers, distributors, or any person acting on its behalf from manufacturing, marketing, advertising, selling, or dealing in edible oils or any other goods under the trademark CYCLE, the cycle device, or any other mark identical or deceptively similar to the plaintiff's registered mark.

The Court further directed the defendant to surrender to the plaintiff, within eight weeks from the date of receipt of the judgment copy, all unused offending labels, packaging materials, blocks, dies, and related items bearing the impugned mark or device for destruction. The claims for passing off and rendition of accounts were rejected, and the Court made no order as to costs.

Point of Law Settled:

This judgment reaffirms that under Section 29(4) of the Trade Marks Act, 1999, a registered trademark possessing a established reputation in India is protected against unauthorized adoption even on completely dissimilar or non-cognate goods. The ruling establishes that when an identical mark is adopted by a subsequent user for different products, the burden rests squarely on the defendant to prove honest, bona fide adoption supported by due cause. A mere claim of arbitrary choice or prior use within an unrelated product class, without a plausible explanation connecting the choice to the user's business, does not constitute due cause and cannot override the statutory rights of a reputed mark against trademark dilution and unfair advantage.

Case Details:

Title of the Case: N.Ranga Rao & Sons Private Ltd. Vs. Sree Annapoorna Agro Foods

Date of Judgment: 28/07/2026

Case Number: O.S.A.(CAD) No. 3 of 2022

Neutral Citation: 2026:MHC:XXXX (as per judgment records)

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon'ble Mr. Justice P. Velmurugan and Hon'ble Mrs. Justice K. Govindarajan Thilakavadi

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

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

Headnote of the Judgment:

N.Ranga Rao & Sons Private Ltd. v. Sree Annapoorna Agro Foods (O.S.A.(CAD) No. 3 of 2022, High Court of Judicature at Madras, Judgment dated 28/07/2026). The appellant, a long-standing manufacturer of incense sticks under the registered trademark CYCLE since 1954, challenged the trial Court's dismissal of its suit against the respondent for using the identical mark and device for edible oils since 2009. The High Court held that under Section 29(4) of the Trade Marks Act, 1999, protection extends to dissimilar goods when a mark enjoys reputation and the adoption lacks due cause. Because the respondent failed to offer a bona fide explanation for adopting the identical mark, the adoption was deemed to unfairly exploit the appellant's reputation. The appeal was partly allowed, granting a permanent injunction and destruction of offending materials while rejecting passing off and monetary claims.

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