Novateur Electrical & Digital Systems Pvt Ltd Vs. V-Guard Industries Ltd

Introduction: This case involves a dispute between Novateur Electrical & Digital Systems Pvt Ltd (Plaintiff) and V-Guard Industries Ltd (Defendant) regarding the alleged infringement of registered designs of switch plates. The plaintiff sought a permanent injunction restraining the defendant from using its “MATTEO” range of switch plates, claiming infringement of its registered designs (Nos. 296178, 296179, and 296180).The case also discusses the defendant's counter-claim for cancellation of the plaintiff’s designs on the grounds of prior registration, prior publication, and lack of novelty. The dispute primarily concerns intellectual property law, particularly design rights under the Designs Act, 2000.

Plaintiff’s Claim:The plaintiff claimed that its switch plate designs were novel and original, giving them a distinct aesthetic appeal.It alleged that the defendant’s “MATTEO” switch plates were a clear imitation of its registered designs.Reliefs sought included injunction, damages, and delivery up of infringing materials.

Defendant’s Counter-Claim:The defendant filed a counter-claim (CC No. 2/2022), seeking cancellation of the plaintiff’s designs.It argued that the plaintiff’s designs lacked novelty and originality, citing prior registrations and prior publications.It further claimed that the plaintiff’s own group entities had obtained earlier foreign design registrations, proving that the designs were not new.

Procedural Developments:The defendant amended its written statement based on additional facts introduced by the plaintiff in its replication and counter-claim response.The defendant filed an application under Order XI Rule 1(4) CPC to introduce additional documents regarding a prior design known as “Concept 6.”This application was allowed on 27th January 2023.The defendant filed another application under Order XI Rule 1(10) CPC (the subject of this order) to place additional documents on record, claiming they were discovered after an internal investigation.

Defendant’s (V-Guard Industries Ltd) Submissions:Newly Discovered Evidence:The additional documents were not in the defendant’s power or control at the time of filing the written statement or amended counter-claim.The defendant discovered these documents during an ongoing internal investigation.Prior Registrations and Publications:The plaintiff’s group entities had earlier foreign design registrations, proving that the plaintiff’s designs were not new.The plaintiff had allegedly failed to disclose these prior registrations.Designs Not Novel: The defendant conducted a comparative analysis and found that the plaintiff’s designs were substantially similar to previously published designs by: Plaintiff’s group company (Legrand) Third parties (Elley’s E-Square, Wipro’s Venia switch plates, etc.).Plaintiff’s Concealment:The plaintiff allegedly withheld material facts to monopolize the market with non-novel designs.

Plaintiff’s (Novateur Electrical & Digital Systems Pvt Ltd) Submissions:Defendant’s Application Not Maintainable:The documents were in public domain and should have been filed earlier with the written statement or counter-claim.The defendant had ample opportunity to research and collect materials before filing earlier pleadings.Repeated Filings:The defendant had already filed four sets of additional documents between November 2021 and January 2023.The present application was an afterthought and lacked bona fide intent.No Justification for Late Filing:The defendant provided no reasonable explanation for why these documents were not filed earlier.Irrelevance of Additional Documents:The new documents had no bearing on the subject matter and could not challenge the validity of the injunction order.

Discussion on Judgments & Cited Precedents: Sudhir Kumar Alias S. Baliyan Vs. Vinay Kumar G. B. (2021) 13 SCC 71: Held that newly discovered documents can be introduced without the need to establish a reasonable cause for prior non-disclosure if they were genuinely not in the party’s possession at the time of original filing.Agva Healthcare Pvt. Ltd. Vs. Agfa-Gevaert NV (2023 SCC OnLine Del 7914). Allowed additional documents to be introduced before trial begins if they do not alter the core issues or set up a new case. K. Mallesh Vs. K. Narender & Others (2015 SCC OnLine SC 1184) Stated that admissibility and relevance of additional documents should be decided during the final hearing, not at the stage of filing.Sun Pharmaceutical Industries Ltd. Vs. State Bank of India (2024 SCC OnLine Cal 4046). Merely because documents are in public domain does not mean they were in the defendant’s possession. 

Reasoning of the Judge:Newly Discovered Documents Can Be Allowed:Since the defendant discovered the documents after internal inquiries, the delay was justified. Defendant’s Challenge to Design Validity Was Consistent: The additional documents did not introduce a new argument but rather supported the existing counter-claim. No Procedural Violation: Issues had not yet been framed, and the trial had not begun—allowing additional documents would not prejudice the plaintiff. Precedents Supported Defendant’s Claim: The Supreme Court had ruled in Sudhir Kumar and Agva Healthcare that newly discovered documents should be allowed if they were genuinely not available earlier. Imposition of Costs: The defendant was allowed to introduce the documents, but a cost of Rs. 50,000 was imposed to compensate the plaintiff for the procedural delay.

Decision: Defendant’s application was allowed, and the additional documents were taken on record. Costs of Rs. 50,000 were imposed on the defendant, payable to the plaintiff within four weeks.

Concluding Note: This judgment reinforces the principle of procedural flexibility in commercial litigation. The court acknowledged that newly discovered evidence may be introduced even at a later stage, provided it does not introduce a new claim or prejudice the opposing party. The case also emphasizes the importance of design law in protecting original industrial designs while preventing monopoly over non-novel elements.

Case Title: Novateur Electrical & Digital Systems Pvt Ltd Vs. V-Guard Industries Ltd

Date of Order: 3rd February 2025

Case No.: CS(COMM) 567/2021 & CC(COMM) 2/2022

Neutral Citation: 2025:DHC:650

Name of Court: Delhi High Court

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

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Unilin Beheer B.V. Vs. Balaji Action Buildwell

Non Filing of Admission Denial Affidavit and its consequences

Introduction:This case pertains to the failure of the defendant to file an affidavit of admission and denial of documents as per procedural requirements. The main legal question before the Delhi High Court was whether such a failure should be treated as a situation under Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC) or if it merely results in the documents being deemed admitted while the written statement is still considered.

Filing of Suit: The plaintiff, Unilin Beheer B.V., filed CS(COMM) No. 1683/2016 seeking a permanent injunction restraining infringement of Patent No. 193247 and related reliefs. However, the patent validity lapsed during the proceedings, rendering the permanent injunction moot. The suit was then pursued only for damages.

Counter Claim & Revocation Proceedings:The defendant, Balaji Action Buildwell, contested the suit and was granted liberty (order dated 29th January 2018) to file a Counter Claim for revocation of the subject patent if it withdrew the pending rectification proceedings under Section 64 of the Patents Act, 1970 before the Intellectual Property Appellate Board (IPAB).The defendant filed the Counter Claim with an advance copy to the plaintiff’s counsel on 23rd February 2018 and re-filed on 30th July 2018.

Procedural Delays & Non-compliance:The plaintiff filed the written statement to the Counter Claim on 19th April 2018, but the acknowledgment of receipt by the defendant’s counsel was on 2nd May 2018.The written statement was re-filed after objections on 2nd May 2018 and 10th October 2018.The defendant filed IA No. 10200/2018 under Order VIII Rule 10 CPC, seeking:Rejection of the plaintiff’s written statement to the Counter Claim.Deeming all documents filed by the defendant as admitted.Allowing the Counter Claim forthwith.

Plaintiff’s Submissions (Unilin Beheer B.V.):The delay in filing the written statement and affidavit of admission/denial of documents should be excused under Rule 14 of Chapter I of Delhi High Court (Original Side) Rules, 2018, which allows courts to dispense with compliance in exceptional cases.The affidavit requirement (Rule 3 of Chapter VII) was introduced only on 1st March 2018, and the plaintiff was not fully aware of the consequences of non-filing. Since the defendant filed a replication to the written statement, it had implicitly condoned the delay. The plaintiff had, in its written statement, dealt with the defendant’s documents, so an affidavit was not strictly necessary.

Defendant’s Submissions (Balaji Action Buildwell):The written statement was not filed within 30 days and was beyond the maximum 120-day period, making it inadmissible as per SCG Contracts India Pvt. Ltd. vs. K.S. Chamankar Infrastructure Pvt. Ltd. (2019 SC). Without an affidavit of admission/denial, the written statement cannot be taken on record as per Rule 3 of Chapter VII. The plaintiff’s reliance on Rule 14 (power to dispense with compliance) was misplaced, as it cannot override a mandatory rule.

Key Legal Provisions Considered:Order VIII Rule 10 CPC – Deals with consequences of non-filing of a written statement.Order XI Rule 4 CPC (as applicable to Commercial Courts Act, 2015) – Mandates an affidavit of admission/denial of documents. Delhi High Court (Original Side) Rules, 2018: Rule 3 of Chapter VII – Requires an affidavit of admission/denial to accompany the written statement.Rule 4 of Chapter VII – States that failure to file such an affidavit results in the documents being deemed admitted.Rule 14 of Chapter I – Grants discretion to the court to dispense with procedural requirements in certain cases.

Citations & Their Context: SCG Contracts India Pvt. Ltd. vs. K.S. Chamankar Infrastructure Pvt. Ltd. (2019 SC)Established that strict timelines for filing pleadings in commercial suits must be adhered to.

Defendant relied on this case to argue that time limits could not be extended beyond the statutory period.Xerox Corporation vs. P.K. Khansaheb (2018 Del HC)Affirmed the mandatory nature of procedural rules in commercial suits.Used to counter the plaintiff’s request for exemption under Rule 14 of Chapter I.

Reasoning of the Judge: Affidavit of admission/denial is mandatory – The court held that without an affidavit, the written statement cannot be taken on record. Non-filing has serious consequences – The court interpreted Rule 3 and Rule 4 of Chapter VII together, concluding that failure to file an affidavit results in:Written statement not being taken on record.Documents being deemed admitted.The court proceeding under Order VIII Rule 10 CPC, which allows judgment based on admissions.Legislative intent must be upheld – The rules were designed to prevent delays and ensure efficient case management. Allowing a lenient approach would defeat the purpose of the Commercial Courts Act, 2015.

Balancing procedural strictness with fairness: Despite the strict interpretation, the judge considered the facts and held that: Since the written statement was re-filed within the maximum 120-day limit, it could still be taken on record. However, this would be subject to costs of Rs. 3 lacs to be paid to the defendant’s counsel.

Decision: The written statement was allowed to be taken on record, but the plaintiff was directed to pay costs of Rs. 3 lacs. The applications were disposed of with the following orders: Written statement and affidavit of admission/denial to be accepted. Counter Claim to proceed with framing of issues on 13th August 2019.

Concluding Note:This case reinforces the strict procedural requirements in commercial suits under the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018. The judgment strikes a balance between enforcing procedural compliance and preventing undue prejudice to parties due to technical defaults. It serves as a precedent on the consequences of failing to file an affidavit of admission/denial and the judicial discretion available under Rule 14 of Chapter I.

Case Title: Unilin Beheer B.V. Vs. Balaji Action Buildwell

Date of Order: 9th April 2019 

Case No.: CS(COMM) 1683/2016 & CC(COMM) 38/2018

Court: Delhi High Court

Judge: Hon’ble Mr. Justice Rajiv Sahai Endlaw

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Birendra Prasad Sah Vs. Debendra Jalewal

Appointment of Advocate Commissioner Without Notice Under Order 26 Rule 18 CPC is illegal

Introduction: The case involves a commercial dispute relating to trademark infringement, search and seizure, and ex-parte injunction orders passed by the Civil Judge, Senior Division, Nalbari, Assam. The petitioner, engaged in manufacturing food products, challenged the orders appointing an Advocate Commissioner for search and seizure, as well as an ex-parte injunction restraining him from using a similar trademark. The case raises significant legal questions regarding due process in ex-parte injunctions and procedural propriety under the Commercial Courts Act, 2015 and Civil Procedure Code, 1908 (CPC).

Factual Background: The petitioner, Birendra Prasad Sah, manufactures and sells food products, including "Matar Mixture," in Siliguri, West Bengal. On 03.11.2023, officials along with the police entered his factory, seized packaging rolls, and halted production based on an order obtained ex-parte.The respondent, Debendra Jalewal, filed Commercial Suit No. 03/2023 alleging that the petitioner was using a deceptively similar trademark "Krisaan" to his registered trademark "Krishan."The Civil Judge, Nalbari, passed ex-parte orders on 05.10.2023, granting:Misc (J) Case No. 27/2023: Appointment of an Advocate Commissioner for search and seizure under Order 26 Rule 9 CPC.Misc (J) Case No. 28/2023: Ex-parte injunction under Order 39 Rules 1 and 2 CPC, restraining the petitioner from selling products with similar artistic work. The petitioner argued that he was not served any prior notice, violating Order 39 Rule 3 CPC.

Petitioner's Submissions: Violation of due process: The ex-parte orders were obtained without serving notice, depriving him of the opportunity to present his case. Delay in urgency claim: The applications for injunction were filed on 25.08.2023, while the orders were passed on 05.10.2023 (after 42 days), contradicting the claim of urgency. Illegality of search and seizure order: The appointment of an Advocate Commissioner was without notice, violating Order 26 Rule 18 CPC. Improper execution: His son was forced to sign seizure documents without explanation. Lack of prima facie case: The court failed to assess the validity of the defendant’s trademark registration before granting an injunction.Wrong choice of forum: An appeal under Order XLIII Rule 1(r) CPC was available, making the revision petition under Article 227 of the Constitution improper. Cited precedents:Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 3 SCC 1 – Comparative similarity test in trademark cases. Rajbir Kaur vs. S. Chokesiri (1988 AIR SC 1845) – Principles for granting injunctions.

Respondent's Submissions:Prior use and trademark registration: The respondent has used "Krishan" since 2017 and holds a valid trademark under Class 30, registered on 26.05.2019 (valid till 2028).Similarity between marks: The petitioner’s mark "Krisaan" is deceptively similar to "Krishan," differing by only one letter, indicating bad faith. Legality of search and seizure: The Advocate Commissioner acted within authority under Order 26 Rule 9 CPC. Maintainability of revision petition:Section 13 of the Commercial Courts Act, 2015, provides an appeal remedy under Order XLIII Rule 1(r) CPC, making the Article 227 petition improper. Cited Decision: A. Venkatasubbiah Naidu vs. S. Chellappan (2000) 7 SCC 695 and Jagdish Singh vs. Ambalal (2014) 10 SCC 610 – High Courts should not entertain Article 227 petitions when statutory appeals exist.

Judicial Analysis and Citations:Trademark Infringement and Ex-Parte Injunctions.The Delhi High Court in Dabur India Ltd. vs. Emami Ltd. (FAO (OS) (COMM) 171/2023) held that: An injunction against a registered trademark holder is improper unless the court determines the invalidity of the registration. If a defendant is already in the market before suit filing, they must be allowed to oppose an interim injunction. The Supreme Court in Wander Ltd. vs. Antox India (1990 Supp SCC 727) stated that injunctions in IP cases should not be granted ex-parte without proper scrutiny. The Delhi High Court in Silvermaple Healthcare vs. Dr. Ajay Dubey (regarding DHI vs. DFI hair treatment trademarks) refused an ex-parte injunction without allowing the defendant to file a reply. Search and Seizure Without Notice: The Gauhati High Court noted that Order 26 Rule 18 CPC requires notice before execution of a commission.Similar rulings in Mohar Yadav vs. Pramod Yadav (2021 SCC Jhk 544) and Virudhunagar Hindu Nadargal Dharma Paribalana Sabai vs. Tuticorin Educational Society (2019) 9 SCC 538 emphasize that High Courts should not entertain Article 227 petitions where statutory appeals exist.

Court’s Reasoning and Decision:Ex-Parte Orders Were Procedurally Flawed: Order 39 Rule 3 CPC was violated as no notice was served before granting an injunction. The absence of urgency (42-day delay in passing the order) weakened the ex-parte claim. Search and Seizure Order was Irregular.The appointment of an Advocate Commissioner without notice violated Order 26 Rule 18 CPC. The execution of seizure without proper documentation and explanation to the petitioner’s son was irregular.Revision Under Article 227 Was Not Maintainable:An appeal under Order XLIII Rule 1(r) CPC was the correct remedy instead of invoking Article 227.The petition was dismissed on procedural grounds despite the flaws in the original orders.

Conclusion:This case highlights the importance of procedural fairness in ex-parte injunctions and search orders in trademark disputes. While the court recognized the irregularities in the orders, it ultimately dismissed the petition as not maintainable due to the availability of an alternate remedy (appeal under Order XLIII Rule 1(r) CPC). The ruling underscores that ex-parte orders in commercial disputes should only be granted with strict adherence to procedural safeguards.

Case Title: Birendra Prasad Sah Vs. Debendra Jalewal

Case No.: CRP(IO)/68/2024

Date of Order: 24.01.2025

Neutral Citation: GAHC010200732024

Court: Gauhati High Court (High Court of Assam, Nagaland, Mizoram & Arunachal Pradesh)

Judge: Honourable Mrs. Justice Malasri Nandi

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Apex Laboratories Pvt. Ltd. Vs. Macleods Pharmaceuticals Ltd.

Honest concurrent use is not a defense unless the mark is registered

Introduction:This case pertains to a trademark infringement and passing-off dispute between Apex Laboratories Pvt. Ltd. (plaintiff) and Macleods Pharmaceuticals Ltd. (defendant). The dispute arises over the alleged deceptive similarity between the plaintiff’s registered trademark "BILTEN" and the defendant’s mark "BELATIN", both used for antihistamine pharmaceutical preparations containing Bilastine as the main ingredient. The plaintiff sought a permanent injunction restraining the defendant from using the mark "BELATIN" and demanded the surrender of infringing materials, account of profits, and damages.The defendant, however, contended that it was the prior adopter of the mark "BELATIN", having conceived it before the plaintiff’s trademark registration. The court was required to determine whether the defendant’s use of "BELATIN" constituted trademark infringement or passing off and whether prior adoption of a mark could be a defense against infringement.

Factual Background & Procedural History: Plaintiff’s Case (Apex Laboratories Pvt. Ltd.)  Laboratories adopted the trademark "BILTEN" in June 2019 and applied for registration on July 25, 2019, in Class 5 for pharmaceutical products.The trademark was officially registered under No. 4246358 in 2019.The product launch occurred in November 2019, following the grant of a drug license on October 15, 2019.The plaintiff noticed the defendant using the mark "BELATIN" for a Bilastine-based antihistamine in August 2020.Since both marks are phonetically and visually similar, Apex claimed this constituted infringement and passing off.Defendant’s Case (Macleods Pharmaceuticals Ltd.) conceived and adopted the mark "BELATIN" in May 2019 and applied for trademark registration on June 22, 2019 (Application No. 4214272).The defendant obtained a drug license on October 15, 2019, and launched the product in November 2019.It argued that pharmaceutical trademarks are often derived from the active pharmaceutical ingredient (API), and Bilastine-based trademarks are commonly formulated.The defendant claimed to be an honest and concurrent user and contended that the plaintiff's registration was based on a "proposed to be used" application, making Macleods the first actual user.

Court Proceedings:The case was filed under Sections 27, 28, 29, 134, 135 of the Trademarks Act, 1999, and Sections 51, 55, 62 of the Copyright Act, 1957.The Madras High Court granted an interim injunction restraining Macleods from using "BELATIN".Both parties submitted documentary evidence, including trademark applications, invoices, drug licenses, and promotional expenses.

Plaintiff’s Submissions (Apex Laboratories Pvt. Ltd.):Prior use: Apex argued that it adopted the mark in April 2019 and began actual sales in November 2019.Trademark registration: Apex’s trademark was officially registered, making it the first registered user.Deceptive similarity: "BILTEN" and "BELATIN" are phonetically and visually similar, causing a likelihood of confusion.Reputation and goodwill: Apex had established market presence and sales turnover, and the defendant’s mark diluted its brand identity.Judicial Precedents: The plaintiff relied on: Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) – Held that pharmaceutical trademarks require the highest degree of protection due to the risk of patient confusion.Neon Laboratories Pvt. Ltd. v. Medical Technologies Ltd. (2015) – Established that prior user rights take precedence over registration.

Defendant’s Submissions (Macleods Pharmaceuticals Ltd.): Prior adoption: Macleods conceived "BELATIN" in May 2019 and applied for registration before Apex’s application.Industry practice: Pharmaceutical trademarks often derive from the API (Bilastine), making similarities inevitable.Honest & concurrent use: Macleods had no intention to mislead consumers and had undertaken a trademark search before adoption.Defenses based on case law:Sun Pharmaceuticals v. Cipla (2007) – Held that prior trademark applicants have legitimate rights.Plus Systems v. Plus Computers (IPAB 2008) – Stated that actual use is not necessary to claim rights in a trademark.

Issues :The court examined the following: Whether "BILTEN" was a registered trademark?  Who was the prior user – Apex or Macleods?  Whether the trademarks "BILTEN" and "BELATIN" are deceptively similar?  Whether Macleods could claim "honest concurrent use"?

Prior Use Principle: Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 Cited by: Plaintiff (Apex Laboratories): The Supreme Court held that prior use of a trademark takes precedence over mere registration. Even if a defendant registers a mark earlier, the entity that first uses it in commerce has stronger rights.Relevance to this case:Apex Laboratories proved prior commercial use of "BILTEN" from November 2019, while Macleods only started selling "BELATIN" in February 2020.Thus, prior use rights overruled Macleods' claim of prior adoption.

Deceptive Similarity in Pharmaceutical Trademarks: Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952:Cited by: Plaintiff (Apex Laboratories):The Supreme Court emphasized higher protection standards for pharmaceutical trademarks due to the risk of consumer confusion and potential health hazards.Even minor phonetic or visual similarities can mislead doctors and patients, increasing the likelihood of prescribing errors.Key Observations (Paragraphs 22, 23, 26, and 27 of the Judgment):Courts should strictly assess confusion in pharmaceutical cases.The similarity of the names should be assessed from the perspective of an average consumer, not a highly trained expert.Relevance to this case:The marks "BILTEN" and "BELATIN" are phonetically and visually similar.Both are antihistamines containing Bilastine, increasing the risk of prescription errors.Following Cadila’s ruling, the court held that such similarity justified granting an injunction.

Strength of API-Based Trademarks: Wockhardt Limited v. Aristo Pharmaceuticals Ltd., (1999) 5 CTCOL 921 (Madras HC)Cited by: Plaintiff (Apex Laboratories):The Madras High Court ruled that even if a trademark is derived from an active pharmaceutical ingredient (API), it can still be protected if another mark deceptively resembles it.The defendant's use of SPASMO-FLEXON was found deceptively similar to the plaintiff’s SPASMO-PROXYVON, even though both derived from the word "Spasmo".Relevance to this case:Macleods argued that "BELATIN" was coined from the API "Bilastine", making it generic and non-protectable.The court rejected this defense, holding that API-based names can be protected if another mark is deceptively similar.

Honest Concurrent Use as a Defense: Abdul Rasul Nurullah v. Regal Footwear, 2023 SCC OnLine Bom 10:Cited by: Plaintiff (Apex Laboratories):The Bombay High Court ruled that "honest concurrent use" is a defense available only in trademark registration cases, not in infringement suits.If a mark is not registered, the defendant cannot claim concurrent use as a defense in an infringement case.Relevance to this case:Macleods had not obtained registration for "BELATIN", making its "honest concurrent use" defense invalid.The court ruled in favor of Apex, stating that concurrent use does not justify infringement.

No Defense of Honest and Concurrent Use in Infringement Cases: D. Adinarayana Setty v. Brook Bond Tea of India Ltd., 1959 SCC OnLine Kar 79 Cited by: Plaintiff (Apex Laboratories) & Considered by the Court:The Mysore High Court ruled that an "honest and concurrent user" can only be a valid argument if the defendant has successfully registered its trademark.A defendant who has not obtained trademark registration cannot claim this defense in an infringement lawsuit.Relevance to this case:Macleods was still awaiting registration for "BELATIN".Since Macleods' trademark was not yet registered, its defense under "honest concurrent use" was invalid.The court reaffirmed that only a registered concurrent user can claim protection under Section 12 of the Trade Marks Act, 1999.

Delay and Acquiescence: Dhariwal Industries Ltd. v. M.S.S. Food Products, AIR 2005 SC 1999 Cited by: Plaintiff (Apex Laboratories):The Supreme Court ruled that mere delay in filing a lawsuit does not amount to acquiescence unless the plaintiff actively permits or tolerates the defendant’s use.Relevance to this case:Macleods argued that Apex delayed filing the suit (filed in August 2020 while BELATIN was in use since February 2020).The court rejected this argument, stating that Apex filed the lawsuit soon after discovering Macleods' use.Since Apex opposed Macleods' trademark application, it could not be said to have acquiesced.

Court’s Final Conclusion Based on These Judgments:Apex Laboratories was the prior user, giving it stronger trademark rights (Syed Mohideen case). BILTEN and BELATIN were deceptively similar, justifying an injunction (Cadila Healthcare case). API-based trademarks can still be protected if confusion exists (Wockhardt case). Macleods could not claim honest concurrent use since its mark was unregistered (Regal Footwear and Adinarayana Setty cases). Delay did not amount to acquiescence, as Apex opposed Macleods' trademark application (Dhariwal Industries case).

Court’s Reasoning:Trademark Registration: Apex proved that it held the first registered trademark for "BILTEN".Prior Use vs. Prior Adoption: The court found that Macleods applied for registration first but used the mark commercially only in February 2020. Since Apex’s commercial use began in November 2019, Apex was the prior user.Deceptive Similarity: The court held that "BELATIN" was deceptively similar to "BILTEN", increasing the risk of consumer confusion.Honest Concurrent Use: The court ruled that honest concurrent use is not a valid defense in an infringement suit unless the mark is registered. Macleods had not obtained trademark registration, so the defense was invalid.Acquiescence: The court rejected Macleods’ claim that Apex acquiesced to its use of "BELATIN".

Final Decision:Injunction Granted: The court permanently restrained Macleods from using the mark "BELATIN".Liquidation Period: Macleods was given four months to sell existing inventory of "BELATIN".Damages Rejected: The court ruled that Apex had not proven financial loss, so no damages were awarded.Counterclaim Dismissed: Macleods' claim for ₹50,00,000 in damages was dismissed.

Concluding Note:This case reinforces the principle of prior use in trademark law. Key takeaways include: Trademark registration provides stronger protection, but prior use can override it. Pharmaceutical trademarks require a higher standard to prevent consumer confusion. Honest concurrent use is not a defense unless the mark is registered. Prior adoption does not automatically confer rights unless commercial use is established first.

Case Title: Apex Laboratories Pvt. Ltd. Vs. Macleods Pharmaceuticals Ltd.

Date of Order: January 23, 2025

Case No.: C.S. (Comm. Div.) No. 232 of 2020

Neutral Citation: 2025:MHC:211

Court: Madras High Court

Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Saregama India Limited Vs. Vels Film International Limited

The 2012 Copyright Act amendment does not apply retrospectively

Introduction:This case revolves around the alleged copyright infringement of the song "En Iniya Pon Nilave" from the 1980 Tamil film "Moodu Pani" by Saregama India Ltd. (the plaintiff) against Vels Film International Ltd. (defendant no. 1). The plaintiff claims to hold exclusive rights to the sound recording, musical composition, and literary work (lyrics) of the song, while the defendant contends that the music composer (defendant no. 3) retains rights to adapt and recreate the composition under the Copyright Act, 1957. The suit primarily concerns whether the producer of a cinematograph film or the original music composer holds the copyright to a song used in the film.

Plaintiff’s Business & Copyright Claim:Saregama India Ltd. (formerly Gramophone Company of India Ltd., known as His Master’s Voice - HMV) is engaged in acquiring, distributing, and exploiting copyrights in sound recordings, musical compositions, and lyrics across various media.The plaintiff owns an extensive catalog of Indian film music, including Tamil music, and licenses these works to third parties.The producer of the 1980 film "Moodu Pani," Raja Cine Arts, assigned all copyright in its songs, including "En Iniya Pon Nilave," to Saregama via an agreement dated February 25, 1980.This agreement granted Saregama exclusive ownership of the sound recording, musical composition, and literary work (lyrics) in perpetuity.

Alleged Infringement by the Defendants:On January 9, 2025, the plaintiff discovered that Vels Film International was promoting a song titled "recreation" of "En Iniya Pon Nilave" in its upcoming film "Aghathiyaa."The defendants (Vels Film International & music composer, defendant no. 3) created a new recording of the song, using the same lyrics and composition.Despite receiving a cease-and-desist notice on January 10, 2025, the defendants continued releasing and streaming the song.Defendant no. 1 argued that it had legally obtained a license from the original composer (defendant no. 3) to use and adapt the song.

Interim Injunction & Court Proceedings:On January 16, 2025, the Delhi High Court granted an interim injunction restraining the defendants from publishing, releasing, or distributing the song on any platform.On January 27, 2025, defendant no. 2 (the distributor) was removed from the case after it complied with the court’s order to take down the song.Defendant no. 1 (Vels Film) continued its defense, arguing that it had legitimately licensed rights from the original composer, making the lawsuit unwarranted.

Plaintiff’s Submissions (Saregama India Ltd.):Section 17 of the Copyright Act, 1957 states that the producer of a cinematograph film is the first owner of all copyrights in the sound recording, lyrics, and composition.Since the film producer (Raja Cine Arts) assigned the rights to Saregama, the music composer (defendant no. 3) does not hold any rights to issue licenses for adaptation.Defendant no. 3 is not the author of the lyrics and cannot grant rights over them.The adaptation claim is false because the defendants copied the original composition and lyrics without any substantial modifications.The 2012 Copyright Act amendment does not apply retrospectively, meaning any claim of rights by defendant no. 3 post-2012 is invalid.

Defendant No. 1’s (Vels Film International) Submissions:Defendant no. 3 (composer) is the original author of the musical composition and retains the right to adapt it under Section 14(1)(a)(vi) of the Copyright Act.The plaintiff’s reliance on Section 17 is flawed, as Section 13(4) ensures that composers retain copyright even if their work is used in a film.The Delhi High Court’s ruling in RDB & Co. HUF v. Harper Collins held that screenplay authors retain rights, implying that music composers also retain their rights.Defendant no. 1 paid ₹5,40,000 to defendant no. 3 for adaptation rights, making the claim of infringement unfounded.Plaintiff’s request for an injunction would cause irreparable harm to the defendant since the film was scheduled for release on January 31, 2025.

Defendant No. 3’s (Composer) Submissions:As the composer, he owns the "musical work" and retains the right to adapt, reproduce, and license it.Section 14(1)(a)(vi) explicitly grants composers the right to create adaptations, which he legally exercised.The 2012 Copyright Act amendment reinforces composers’ rights, and Saregama’s claim contradicts legislative intent.The plaintiff cannot claim a blanket copyright over all aspects of the song without proving a specific assignment of adaptation rights.

Issues: Does the plaintiff (Saregama) hold exclusive copyright over the song, including its adaptation rights? Can a music composer (defendant no. 3) grant adaptation rights if the song was originally assigned to a third party (Saregama)?Does the 2012 Copyright Amendment impact rights in a song composed in 1980? Does creating a "recreation" using the same lyrics and composition amount to infringement?

Key Findings & Reasoning of the Judge:The original agreement (1980) assigned all rights to Saregama, meaning the composer cannot license adaptation rights independently.The defendants' version was not an adaptation but an unauthorized reproduction, making it a clear infringement.The 2012 amendment is prospective, meaning it does not affect prior assignments, invalidating the composer’s claim.Vels Film’s monetary investment does not justify copyright infringement; however, the court considered an alternative remedy.

Decision & Relief Granted: Injunction granted: Vels Film cannot use the song without Saregama’s license.Monetary relief granted: Defendant no. 1 must pay ₹30 lakh to the court registry within two days to use the song in its film.Failure to pay would result in a complete ban on using the song.

Concluding Note:This judgment reinforces that:Film producers hold the first copyright in a film’s music unless expressly stated otherwise. Composers do not retain adaptation rights after assigning their work to film producers.The 2012 Copyright Amendment does not apply retrospectively. Unauthorized recreation of music using the same lyrics and composition is infringement, not adaptation.The decision balances copyright protection and commercial interests by allowing the defendant to use the song only upon payment of a fair license fee.

Case Title: Saregama India Limited Vs. Vels Film International Limited & Ors.

Date of Order: January 30, 2025

Case No.: CS(COMM) 38/2025

Neutral Citation: 2025:DHC:647

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

PhonePe Pvt. Ltd. vs. BundlePe Innovations Pvt. Ltd.

Common industry terms cannot be monopolized

Introduction:This case revolves around a trademark infringement and passing-off dispute between PhonePe Pvt. Ltd., a leading digital payment company, and BundlePe Innovations Pvt. Ltd., which operates a similar platform. The plaintiff alleges that the defendant’s use of the marks “BundlePe” and “LatePe” violates its intellectual property rights over “PhonePe” and misleads consumers into associating the services. The suit seeks a declaration of PhonePe as a well-known trademark, a permanent injunction against the defendants from using similar marks, and damages of ₹10,00,000 for the alleged trademark violation.

Plaintiff’s Business & Trademark Rights: PhonePe, a digital payments platform, was incorporated as FX Mart Pvt. Ltd. before rebranding. It operates under licenses from the Reserve Bank of India (RBI) and has over 450 million users.It claims ownership of the "PhonePe" mark, registered under multiple classes under the Trade Marks Act, 1999.The plaintiff has spent heavily on marketing, including celebrity endorsements (Aamir Khan & Alia Bhatt), and dominates 48% of all UPI transactions in India.

Defendant’s Business & Alleged Infringement: BundlePe Innovations Pvt. Ltd. was incorporated in 2022 and provides similar payment services under the marks “BundlePe” and “LatePe”.PhonePe alleges that the phonetic and visual similarity between these marks creates consumer confusion.The plaintiff issued a cease-and-desist notice in March 2023, but the defendants refused to comply, leading to the lawsuit.

Jurisdiction & Procedural Challenges:The defendants argued that since PhonePe’s registered office is in Mumbai and BundlePe’s in Kolkata, the case should not be heard in Chennai.However, the Madras High Court retained jurisdiction, citing Section 134(2) of the Trade Marks Act, 1999, which allows suits where the plaintiff carries out business (PhonePe has a branch in Chennai).

Plaintiff’s Submissions: The "Pe" suffix is a distinct identifier of PhonePe and is not a generic word in English. The defendants’ marks closely resemble “PhonePe” and create confusion in the digital payments sector. The use of capital "P" in "Pe" is an attempt to copy the plaintiff’s branding. The Delhi and Bombay High Courts have previously ruled against similar claims, which the plaintiff argues should not affect this case.

Defendants’ Submissions:The words "Phone" and "Pe" are generic and widely used in the payments industry (e.g., Paytm, Google Pay). The prefixes “Bundle” and “Late” make their marks sufficiently distinct. The Delhi High Court previously rejected PhonePe’s claim over the exclusivity of the word "Pe" in BharatPe's case (CS (Comm) 292 of 2019). The plaintiff is trying to monopolize common industry terms, which is against trademark law. No evidence was provided of actual consumer confusion or financial harm to PhonePe.

Issues Framed by the Court:The court examined ten key issues, including whether:"BundlePe" & "LatePe" are deceptively similar to "PhonePe".  The plaintiff is entitled to a permanent injunction for infringement. "PhonePe" qualifies as a well-known trademark under Section 2(zg) & Section 11 of the Trade Marks Act.

Key Findings & Reasoning of the Judge: No Deceptive Similarity: The court ruled that “BundlePe” and “LatePe” were not deceptively similar to “PhonePe”, as the term "Pe" is commonly used in the digital payment industry.No Infringement or Passing Off: Since PhonePe failed to prove consumer confusion, no injunction was granted.No Damages: PhonePe did not provide financial proof of harm, making the damages claim speculative.Not a Well-Known Trademark: While PhonePe is a popular brand, it does not qualify as a "well-known trademark" under Section 11, as “Pe” is widely used.Domain Name Dispute: The plaintiff sought an injunction against bundlepe.com & latepe.in, but the court ruled that domain names were not deceptively similar.

Decision:Plaintiff’s claims were dismissed, with all issues decided against PhonePe.No injunction, damages, or trademark recognition was granted.

Concluding Note:This case highlights the limits of trademark protection for generic terms in India. The ruling underscores that: Common industry terms cannot be monopolized (e.g., "Pe" in the payments sector).Consumer confusion must be proven with market evidence.

Case Title: PhonePe Pvt. Ltd. vs. BundlePe Innovations Pvt. Ltd.

Date of Order: January 21, 2025

Case No.: Civil Suit (COMM DIV) No. 119 of 2023

Court: High Court of Judicature at Madras

Judge: The Hon’ble Mr. Justice P. Velmurugan

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Pfizer Inc. vs. Softgel Healthcare Pvt. Ltd.

Third parties can be compelled to provide evidence if it aids justice.

Introduction: This case concerns an international patent dispute between Pfizer Inc. and Softgel Healthcare Pvt. Ltd., arising from litigation pending before the United States District Court, Delaware. The petitioners sought to execute Letters Rogatory under the Hague Evidence Convention, 1970, requesting judicial assistance from the Madras High Court for collecting evidence and recording testimony related to alleged patent infringement concerning the pharmaceutical drug VYNDAMAX® (Tafamidis 61 mg capsules), used in the treatment of Transthyretin Amyloid Cardiomyopathy.The main issue before the Madras High Court was whether it could execute the Letters Rogatory and direct the appointment of a Local Commissioner to collect evidence from Softgel Healthcare, an entity based in India but not a party to the U.S. litigation.

Petitioner's submission: Petitioner alleged that Indian pharmaceutical companies, including CIPLA and Zenara (now Hikma), had filed Abbreviated New Drug Applications (ANDAs) seeking FDA approval to market generic versions of VYNDAMAX® before the expiry of Pfizer’s U.S. Patent No. 441.

Respondents Submission: Respondent Claimed to be an independent entity not involved in the U.S. litigation.Allegedly possessed documents and information related to Zenara and CIPLA’s ANDA products, which Pfizer sought for use in the U.S. litigation.

Proceedings in the U.S.:Pfizer filed lawsuits against Zenara, CIPLA, Aurobindo Pharma Ltd., and Dexcel Pharma Technologies Ltd. in the U.S. District Court, Delaware.The U.S. Court issued Letters Rogatory on May 13, 2024, requesting the Madras High Court’s assistance in collecting testimonies and documentary evidence from Softgel Healthcare. Reliefs Sought by Pfizer in India:Appointment of a Local Commissioner to collect evidence/documents.Formation of a Confidentiality Club to safeguard sensitive information.Conducting in-camera proceedings to protect confidential data.Forwarding the collected evidence to the U.S. Court in a sealed cover.

Petitioners (Pfizer Inc. and Others): The Hague Evidence Convention, 1970, allows international judicial assistance in civil and commercial matters.Softgel Healthcare possessed relevant documents and information concerning Zenara and CIPLA’s generic versions of VYNDAMAX®.The Madras High Court had jurisdiction under Order XXVI Rules 19-22 of CPC and Sections 75-78 CPC to execute the Letters Rogatory.There was no violation of India’s sovereignty or security, as required under Article 12 of the Hague Convention for denying a request.The petition did not violate Indian patent laws, as the evidence was sought only for U.S. litigation and not for enforcing Pfizer’s patent in India.Past precedents support executing Letters Rogatory, including: Aventis Pharmaceuticals Inc. vs. Dr. Reddy’s Laboratories Inc. (AP High Court),Pfizer Inc. vs. Unimark Remedies Ltd. (Bombay High Court),Wooster Products Inc. vs. Magna Tek Inc. (Delhi High Court)

Respondent (Softgel Healthcare Pvt. Ltd.):Softgel was not a party to the U.S. litigation, making the request unjustified. Confidentiality concerns: Disclosing sensitive pharmaceutical R&D data could harm commercial interests. Article 39 of the TRIPS Agreement protects confidential business data. Pfizer’s Indian patent application for VYNDAMAX® was rejected under Section 3(d) of the Patents Act, 1970 (for being a modification of a known substance).The Hague Convention cannot override Indian laws if disclosure violates domestic regulations.The request amounted to a fishing expedition, violating Article 23 of the Hague Convention.Gujarat High Court precedents (Leighton International Ltd. and Fenix Diamonds LLC) held that Indian courts are not bound to execute Letters Rogatory against third parties.

Key Legal Precedents Considered:Societe Nationale Industrielle Aerospatiale vs. U.S. District Court, 482 U.S. 522 (1987) (U.S. Supreme Court)Clarified that international judicial assistance should be granted unless it disrupts national interests.Norwich Pharmacal Co. vs. Customs and Excise Commissioners (House of Lords) Held that third parties can be compelled to provide evidence if it aids justice. Aventis Pharmaceuticals Inc. vs. Dr. Reddy’s Laboratories Inc. (AP High Court)Allowed execution of Letters Rogatory in a similar pharmaceutical patent case. Pfizer Inc. vs. Unimark Remedies Ltd. (Bombay High Court)Ruled that both oral and documentary evidence can be obtained under Order XXVI Rule 19 CPC. Leighton International Ltd. vs. Gavin John Hodge (Gujarat High Court, 2014)Held that Indian courts cannot compel non-parties to foreign litigation. Fenix Diamonds LLC vs. Carnegie Institute of Washington (Gujarat High Court, 2020)Denied execution of Letters Rogatory, citing confidentiality concerns.

Reasoning of the Court:Jurisdiction & Applicability of Hague Convention:Since India is a signatory to the Hague Evidence Convention, the Madras High Court had the authority to execute Letters Rogatory. Balancing Confidentiality & Evidence Collection: A Confidentiality Club was ordered to protect sensitive data. Only specific persons could access confidential documents. Non-Party Argument Rejected: The Norwich Pharmacal doctrine allows non-parties to be compelled if they possess crucial evidence. Softgel’s involvement with Zenara and CIPLA made it relevant to the U.S. case. Article 23 of the Hague Convention Not Violated:India’s reservation under Article 23 applies to pre-trial discovery. Here, specific documents were sought, not general discovery.

Decision of the Court: Petitions Allowed: The Madras High Court permitted execution of the Letters Rogatory. Local Commissioner Appointed: Mr. Adarsh Ramanujam was appointed to collect evidence. Confidentiality Club Established: Only designated members could access the evidence. In-Camera Proceedings Ordered: Hearings would be conducted privately. Evidence to be Sent to the U.S. Court in a Sealed Cover.

Concluding Note:This ruling reinforces India’s commitment to international judicial cooperation under the Hague Evidence Convention. The judgment carefully balanced intellectual property rights, confidentiality, and legal obligations, setting a precedent for handling cross-border patent disputes in India.

Case Title: Pfizer Inc. vs. Softgel Healthcare Pvt. Ltd.

Date of Order: January 28, 2025

Case No.: O.P. (PT) Nos. 5 & 6 of 2024

Neutral Citation: 2025:MHC:241

Court: Madras High Court

Judge: Hon’ble Mr. Justice Abdul Quddhose

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Los Gatos Production Services India LLP Vs. Wunderbar Films Pvt. Ltd. & Ors.

Doctrine of Election and Jurisdiction of Court

Introduction:The case Los Gatos Production Services India LLP vs. Wunderbar Films Pvt. Ltd. & Ors. revolves around copyright infringement allegations concerning behind-the-scenes footage from the Tamil film "Naanum Rowdy Dhaan". The Plaintiff, Los Gatos Production Services India LLP (a Netflix unit), filed a suit against Wunderbar Films Pvt. Ltd. and others, alleging that a Netflix documentary titled "Nayanthara: Beyond the Fairytale" incorporated unauthorized footage from the film.

Two key applications were filed by the fifth Defendant, Vignesh Shivan: Application No. 6748 of 2024 – Seeking rejection of the plaint under Order VII Rule 11 of CPC.Application No. 6750 of 2024 – Seeking revocation of leave to sue granted by the Madras High Court under Clause 12 of the Letters Patent.

Key Allegations by Plaintiff: Unauthorized Use of Footage:The Netflix documentary "Nayanthara: Beyond the Fairytale" allegedly used behind-the-scenes (BTS) clips from "Naanum Rowdy Dhaan" without permission. Plaintiff claims copyright over the footage. Plaintiff’s Actions Prior to Filing Suit:Discovered the alleged infringement on November 9, 2024 via YouTube.Sent a legal notice on November 9, 2024 to Netflix.Netflix responded on November 11, 2024, denying infringement.The documentary was released on Netflix on November 18, 2024.Plaintiff filed the suit on November 24, 2024, seeking urgent interim reliefs. Jurisdiction and Cause of Action:Plaintiff claimed major parts of the cause of action arose in Chennai:The film "Naanum Rowdy Dhaan" was produced and released in Chennai.The Artist Agreement between the Plaintiff and the Defendants was executed in Chennai.The disputed footage was filmed in Chennai.Plaintiff sought leave to sue under Clause 12 of the Letters Patent.

Defendant’s Arguments:The fifth Defendant, Vignesh Shivan, sought rejection of the plaint and revocation of leave to sue, raising the following objections: Lack of Jurisdiction:Argued that Netflix (Plaintiff) has no office in Chennai, so the Madras High Court lacks territorial jurisdiction.Claimed that no part of the cause of action arose in Chennai since Netflix operates from Mumbai. Doctrine of Election:Since the Plaintiff invoked Section 62 of the Copyright Act, which allows a suit to be filed where the Plaintiff resides or carries on business, they could not also invoke Clause 12 of the Letters Patent.Non-Compliance with Pre-Suit Mediation (Section 12A of the Commercial Courts Act, 2015):The Defendant claimed that the Plaintiff should have first attempted mediation before filing a suit.The cause of action allegedly arose in 2020, yet the suit was filed only in 2024. No Copyright Violation:Defendant argued that the Plaintiff did not produce the footage, so they could not claim copyright.Invoked Section 16 of the Copyright Act, 1957, which bars infringement suits unless copyright is legally registered.

Plaintiff’s Arguments:The Plaintiff opposed both applications, stating:Jurisdiction is Proper:The major cause of action arose in Chennai.The film "Naanum Rowdy Dhaan" was produced, filmed, and released in Chennai.The Artist Agreement with the Defendants was executed in Chennai.Doctrine of Election Does Not Apply:Plaintiff argued that Clause 12 of the Letters Patent provides an additional remedy beyond Section 62 of the Copyright Act.The Court had discretion to allow jurisdiction.Urgency Justified Pre-Suit Mediation Exemption:The infringement became known only on November 9, 2024.The documentary was released on November 18, 2024, forcing an urgent legal response.

Discussion on Judgments & Cited Cases:The Court analyzed several precedents:Indian Performing Rights Society Ltd. v. Sanjay Dalia & Another:(2015) 10 SCC 161:Established that Section 62 of the Copyright Act does not override Section 20 of CPC.Plaintiff can file suits in multiple jurisdictions if cause of action arises in multiple places.Applied here to validate Plaintiff’s jurisdiction claim.Nagubai Ammal & Others v. B. Shama Rao & Others:AIR 1956 SC 593:Discussed Doctrine of Election, holding that if a party chooses one remedy, they cannot later switch to another.The Court held Doctrine of Election did not apply since the Plaintiff had invoked both remedies in a single suit.T. Arivandandam v. T.V. Satyapal & Another (1977) 4 SCC 467: Court ruled that plaintiffs cannot file suits based on frivolous or illusory causes of action.Defendant argued the Plaintiff was forum shopping, but the Court rejected this claim.Yamini Manohar v. T.K.D. Keerthi 2024 (5) SCC 815 Pre-suit mediation is not mandatory in urgent cases. Applied to reject the Defendant’s argument about non-compliance with Section 12A of the Commercial Courts Act.

Reasoning of the Judge: Justice Abdul Quddhose rejected both applications, reasoning:Jurisdiction Is Proper:Major cause of action occurred in Chennai.The film, agreement, and alleged infringement were all linked to Chennai.Clause 12 of the Letters Patent is an Additional Remedy:The Doctrine of Election does not bar the Plaintiff from invoking both Section 62 and Clause 12. Pre-Suit Mediation Was Not Required:The urgency of the case justified bypassing mediation.No Ground to Reject the Plaint:The Defendant failed to prove the suit was frivolous.

Decision:Application No. 6748 of 2024 (Rejection of Plaint) – Dismissed.2. Application No. 6750 of 2024 (Revocation of Leave to Sue) – Dismissed. Suit will proceed in the Madras High Court.

Concluding Note:This ruling reinforces copyright protection in the Indian film industry and clarifies jurisdiction principles in IP disputes. The Madras High Court reaffirmed its territorial authority in cases where a substantial part of the cause of action occurs within its jurisdiction.

Case Title: Los Gatos Production Services India LLP vs. Wunderbar Films Pvt. Ltd. & Ors.

Date of Order: January 28, 2025

Case Number: C.S. (Comm. Div.) No. 251 of 2024 

Neutral Citation: 2025:MHC:240

Court Name: High Court of Madras

Judge: Hon’ble Mr. Justice Abdul Quddhose

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

ITC Limited Vs. Raj Kumar Mittal

Civil Contempt of Court and Obstruction during the course of Local Commission.

Introduction:The case of ITC Limited vs. Raj Kumar Mittal & Ors. concerns trademark infringement, trade dress infringement, and copyright violations by the Defendants, who allegedly copied the packaging of ITC’s ‘AASHIRVAAD’ Atta. The Plaintiff sought a permanent injunction to prevent the Defendants from using deceptively similar trade dress and branding. The Court had earlier issued an ad interim injunction on November 28, 2019 to prevent the Defendants from continuing the infringement.Additionally, the Plaintiffs filed a contempt petition under Sections 11 and 12 of the Contempt of Courts Act, 1971, alleging that the Defendants deliberately disobeyed the injunction order and engaged in obstructive and contemptuous conduct during the enforcement of the Court’s directives.

Plaintiff: ITC Limited is a leading Indian conglomerate engaged in multiple sectors, including Fast Moving Consumer Goods (FMCG), hotels, paperboards, and packaging. Manufacturer of ‘AASHIRVAAD’ branded wheat flour (atta), which has distinctive packaging.Defendants:Raj Kumar Mittal (Defendant No.1) Aand rem Chand Mittal (Defendant No.2) Both Defendants were running a business under Mittal Sales/Mittal Trading Company and were accused of selling wheat flour in deceptively similar packaging.

Key Allegations:The Defendants were selling wheat flour using packaging identical to ‘AASHIRVAAD’ Atta, thereby infringing ITC’s trademark and trade dress.The Delhi High Court granted an ex-parte ad interim injunction on November 28, 2019, prohibiting the Defendants from continuing the infringement. Local Commissioners were appointed to visit the Defendants’ premises and execute the order.

Execution of Injunction Order: On December 7, 2019, a Local Commissioner, Ms. Latika Malhotra, Advocate, visited the Gurugram premises of Raj Kumar Mittal to seize infringing materials.Prem Chand Mittal obstructed the execution of the order by: Refusing to accept service of the Court’s order and the plaint.Directing workers to shut down the premises and lock the doors.Physically obstructing and misbehaving with the Local Commissioner.Engaging in altercations and assaulting the legal team.Tampering with evidence and preventing access to infringing materials.

Initiation of Contempt Proceedings:ITC Limited filed a contempt petition on February 28, 2020, against the Defendants for: Wilful disobedience of the injunction order. Obstructing the Local Commissioner and tampering with evidence.Court repeatedly directed the Defendants to clarify discrepancies in their statements and explain missing infringing goods.Bailable warrants were issued against Raj Kumar Mittal due to his non-appearance.Both Defendants gave inconsistent statements, shifting blame to a third brother, Radhey Shyam Mittal, who was not a party to the suit.

Plaintiff’s Submissions:Deliberate Disobedience of Court Orders: The Defendants knowingly violated the injunction order and continued their infringing activities. They misbehaved with Court-appointed officers and obstructed the enforcement process.Tampering with Seized Evidence: Despite the seizure of infringing goods, large quantities went missing. The Defendants failed to provide a satisfactory explanation.Obstruction and Assault on Local Commissioner: The Defendants engaged in physical fights, manhandling, and intimidation of the Local Commissioner and ITC representatives. Inconsistent & Misleading Statements: The Defendants repeatedly changed their stance on the missing infringing materials.

Defendants’ Submissions:The Defendants offered an unconditional apology for any misconduct.Claimed that any missing infringing materials were taken by their brother, Radhey Shyam Mittal. Denial of Tampering Allegations:Claimed they never obstructed the proceedings. Alleged bias by the Local Commissioner.Allegations of Misconduct Against Local Commissioner: Prem Chand Mittal accused the Local Commissioner of conniving with ITC, but later retracted these allegations.

Discussion on Judgments & Cited Cases:The Court referred to Balwantbhai Somabhai Bhandari v. Hiralal Somabhai Contractor, (2023) SCC OnLine SC 1139, which held:Contempt is meant to protect the administration of justice, not the dignity of a judge. Any deliberate interference with the judicial process is punishable.Civil contempt requires wilful disobedience to a court’s order.The case also cited Patel Rajnikant Dhulabhai v. Patel Chandrakant Dhulabhai, (2008) 14 SCC 561, which outlined conditions for contempt:There must be a court order. There must be wilful disobedience of that order.The disobedience must be deliberate.

Balwantbhai Somabhai Bhandari v. Hiralal Somabhai Contractor (Deceased) Represented by LRs. & Others Citation: 2023 SCC OnLine SC 1139: Key Legal Principles from the Judgment: Objective of Contempt Law: The purpose of contempt proceedings is to ensure compliance with court orders and prevent interference with the administration of justice, not to protect the dignity of the judge. Interference with Judicial Process: Any act that obstructs judicial proceedings or pre-empts court decisions constitutes contempt.Elements of Civil Contempt: To establish contempt, three conditions must be met: A judgment, decree, order, or writ must exist.There must be disobedience of the said order. The disobedience must be wilful. Standard of Proof in Contempt Cases: The court must establish a clear case of contumacious conduct before holding a person guilty of contempt. The proceedings are quasi-criminal in nature, requiring the same standard of proof as in criminal cases.Application in ITC Limited Case:The Court relied on this judgment to assess whether the Defendants' actions amounted to wilful disobedience of the injunction order dated November 28, 2019. The Court found that the Defendants obstructed the execution of the order, misled the Court, and tampered with evidence, thus meeting the criteria for civil contempt.

Reliance Petrochemicals Ltd. v. Proprietors of Indian Express Newspapers Bombay Pvt. Ltd.Citation: (1988) 4 SCC 592: Key Legal Principles from the Judgment:Public Interest and Contempt: Judicial decisions should not be pre-empted or circumvented by external actions.Protection of Court’s Authority: Any action that interferes with the fair dispensation of justice constitutes contempt.Balance Between Free Speech and Judicial Integrity: While free speech is fundamental, it must not obstruct court proceedings.Application in ITC Limited Case:The Court cited this judgment to emphasize that the Defendants' obstruction of the Local Commissioner and destruction of evidence was a direct interference with the judicial process, justifying contempt action.

Patel Rajnikant Dhulabhai v. Patel Chandrakant Dhulabhai Citation: (2008) 14 SCC 561:Key Legal Principles from the Judgment:Conditions for Holding a Person Guilty of Civil Contempt:There must be an order, judgment, or decree of the Court.The person must have knowledge of the order.There must be wilful disobedience of the order.Application in ITC Limited Case:The Court applied these conditions to determine whether the Defendants knowingly and intentionally violated the Court's order. It found that the Defendants had full knowledge of the injunction order and wilfully disobeyed it by continuing the infringement and obstructing enforcement proceedings.

Kanwar Singh Saini v. High Court of Delhi Citation: (2012) 4 SCC 307:Key Legal Principles from the Judgment: High Standard of Proof in Contempt Cases: Since contempt proceedings are quasi-criminal, courts should act with caution and ensure strong evidence before holding someone guilty.Benefit of Doubt: If there is any ambiguity regarding the conduct of the alleged contemnor, the court should provide them with the benefit of the doubt.Application in ITC Limited Case:The Court took cognizance of the Defendants' apologies and expressions of remorse and, instead of imposing civil imprisonment, opted for monetary penalties. This aligns with the principle of leniency in contempt cases where the contemnor expresses regret.Reasoning of the Judge:Hon’ble Justice Amit Bansal found the Defendants guilty of contempt for:Repeatedly defying Court orders and engaging in deceptive practices.Misbehaving with Court officers and obstructing the enforcement of the injunction.Providing contradictory explanations regarding the missing infringing materials.Failing to show remorse until later in the proceedings.However, considering the Defendants’ eventual unconditional apology, the Court opted for monetary penalties instead of imprisonment.

Decision:Defendants found guilty of contempt under Section 2(b) of the Contempt of Courts Act, 1971.No civil imprisonment was imposed.Monetary penalties imposed: ₹5,00,000 fine on Prem Chand Mittal (to be deposited with the Delhi High Court Legal Services Committee).₹3,00,000 fine on Raj Kumar Mittal (to be deposited with the Delhi High Court Legal Services Authority). Mandatory affidavits of compliance & apology to be filed by Defendants. No impact on the ongoing suit regarding trademark infringement.

Concluding Note:The case highlights strict judicial enforcement of intellectual property rights and contempt proceedings for defiance of Court orders. While the Defendants engaged in blatant misconduct, the Court exercised judicial discretion by imposing heavy fines rather than imprisonment.This decision reinforces the importance of compliance with injunctions and protects the integrity of court proceedings in IP disputes.

Case Title: ITC Limited vs. Raj Kumar Mittal & Ors.

Date of Order: January 22, 2025

Case Number: CS(COMM) 647/2019 | CCP(O) 9/2020

Neutral Citation: 2025:DHC:447

Court Name: High Court of Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Bajaj Resources Limited Vs Goyal Herbals Pvt. Ltd.

Amendment of Plaint: Passing off to Infringement Action

Introduction:The present case pertains to a trademark dispute between Bajaj Resources Limited ("Plaintiffs") and Goyal Herbals Pvt. Ltd. ("Defendants"). The Plaintiffs filed a suit seeking a permanent injunction to restrain the Defendants from using the mark ‘ALMOND DROPS’, alleging trademark infringement, passing off, and copyright infringement. During the pendency of the suit, the Plaintiffs sought to amend their plaint under Order VI Rule 17 of the Code of Civil Procedure, 1908 (CPC) to include newly obtained trademark registrations and other relevant facts.

Factual Background of the Proceedings:Institution of Suit (2016):The suit was filed by the Plaintiffs in November 2016 for infringement of trademark, trade dress, and copyright, as well as for passing off.The Plaintiffs did not have trademark registration for ‘ALMOND DROPS’ at the time of filing.

Defendants’ Defense:The Defendants argued that the Plaintiffs could not claim statutory rights over the descriptive words ‘ALMOND DROPS’, the picture of almonds, and the golden-brown color combination. The Plaintiffs were denied an ex-parte ad-interim injunction due to the lack of trademark registration.

Proceedings Prior to the Amendment Application:2018: Issues framed. 2019-2022: Plaintiffs' witness cross-examined. 2023: Mediation attempt failed. 2024: Plaintiffs filed the present application to amend the plaint.

Amendments Sought by the Plaintiffs:Inclusion of three trademark registrations obtained after filing the suit.Details of an interim order and decree in a related case involving the Plaintiffs and the bottle manufacturer of the Defendants.Updated sales and advertising figures for Bajaj Almond Drops Hair Oil.Changes in the Plaintiffs’ corporate structure.

Plaintiffs’ Arguments: The amendments relate to events that occurred after the trial commenced. The Plaintiffs could not have introduced these facts earlier despite due diligence.The new trademark registrations grant statutory rights, allowing the Plaintiffs to sue for trademark infringement. If the amendments are not allowed, the Plaintiffs would have to file a separate suit. The amendments do not change the nature or character of the suit. No Prejudice to Defendants: No interim injunction is in place, meaning Defendants will not be prejudiced by a delay. Legal Precedents Cited:Life Insurance Corporation of India v. Sanjeev Builders Private Limited & Anr. [(2022) 16 SCC 1]: Courts should allow amendments that help determine the real controversy. Pravesh Narula v. Raj Kumar Jain [2024 SCC OnLine Del 7537]: Allowed amendment even after the closure of the plaintiff’s evidence.

Defendants’ Arguments: Plaintiffs waited until 2021 to apply for trademark registration despite the Court's earlier observations. During cross-examination, the Plaintiffs’ witness was unaware of any trademark applications. Plaintiffs had earlier filed for additional documents in 2022 but did not submit trademark registration details. Amendments Would Change the Nature of the Suit: Originally, the case was based on passing off. Now, it seeks to introduce statutory trademark infringement claims. Bad Faith Attempt to Strengthen the Case.  The amendments were sought to bolster a weak case. The delay in proceedings would prejudice the Defendants.

The Court analyzed various legal precedents on amendments of pleadings. Life Insurance Corporation (2022):Established that amendments should be allowed if necessary for determining the real controversy.Amendments should be denied only if:They introduce a time-barred claim.They change the nature of the suit.They are sought in bad faith.Pravesh Narula (2024):Allowed amendment after trial commencement to include a supervening event (trademark registration).The amendment did not introduce a new cause of action, only strengthened the existing one. Rajesh Kumar Aggarwal v. K.K. Modi [(2006) 4 SCC 385]:Reaffirmed that courts should permit amendments that clarify the real dispute.Courts should avoid a hyper-technical approach.

Reasoning of the Judge: Hon’ble Court considered the Plaintiffs’ right to bring a fresh suit on the basis of new trademark registrations. The Court reasoned:No Change in Suit’s Nature:The original suit involved trademark infringement and passing off.The new trademark registrations only add statutory protection to the Plaintiffs’ claims.Avoidance of Multiplicity of Proceedings:If denied, the Plaintiffs would file a fresh suit.Allowing the amendment saves judicial time.Defendants Not Prejudiced:There was no interim injunction, meaning Defendants were not restricted from continuing business.

Past Precedents Supported Plaintiffs:Prior cases permitted post-trial amendments for supervening events.The present amendment met the legal threshold for allowing changes.

Decision:The Court allowed the amendment of the plaint.Plaintiffs were permitted to file the amended 

Concluding Note:The judgment reinforces that amendments that help determine the real controversy should be allowed, provided they do not unfairly prejudice the other party. The principle of avoiding multiplicity of litigation played a crucial role in the Court’s decision. By permitting the Plaintiffs to update their pleadings, the Court ensured that all relevant issues would be adjudicated in a single proceeding, thereby promoting judicial efficiency.

Case Title: Bajaj Resources Limited & Anr. Vs. Goyal Herbals Pvt. Ltd. & Ors.

Date of Order: January 22, 2025

Case Number: CS(COMM) 1564/2016

Neutral Citation: 2025:DHC:442

Court Name: High Court of Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

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

Patel Field Marshal Agencies Vs P.M. Diesels Ltd.

Patel Field Marshal Agencies Vs P.M. Diesels Ltd.-Trademark Rectification and Section 124 of Trademarks Act 1999

Case Title: Patel Field Marshal Agencies & Anr. Vs. P.M. Diesels Ltd. & Ors.

Date of Order: November 29, 2017

Case Nos.: Civil Appeals Nos. 4767-4769/2001

Neutral Citation: N/A

Court: Supreme Court of India

Judges: Justice Ranjan Gogoi and Justice Navin Sinha, H.J.

Introduction: The case of Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors. decided by the Supreme Court of India on November 29, 2017, is a landmark judgment in the domain of trademark law. The dispute centered around the use of the trademark "Field Marshal," with the respondent claiming infringement by the appellants, who sought to register the mark "Marshal." The primary issue revolved around the interplay of rights under Sections 46, 56, 107, and 111 of the Trade and Merchandise Marks Act, 1958. This judgment provides clarity on procedural aspects related to rectification proceedings and the implications of deemed abandonment of invalidity claims in trademark infringement suits.

Detailed Factual Background of the Case:

Respondent’s Business and Trademark Registration: P.M. Diesels Ltd., the respondent, is the registered owner of the following trademarks:Trademark No. 224879: "Field Marshal" (registered on October 16, 1964).Trademark No. 252070: "Field Marshal" in a specific lettering style (registered on October 4, 1968).Trademark No. 252071-B: "FM Field Marshal" (registered on October 4, 1968).These trademarks were registered for use in relation to diesel engines and machinery, and the respondent had been using these marks extensively in its business, gaining goodwill and recognition in the market.

Appellants’ Business and Trademark Application:The appellants, Patel Field Marshal Agencies & Anr., were engaged in a similar business of manufacturing and trading diesel engines and related machinery. In 1982, the appellants applied to register the trademark "Marshal" for their products. The respondent opposed this application, claiming that "Marshal" was deceptively similar to "Field Marshal," which could lead to consumer confusion and dilute the distinctiveness of its trademarks. 

Respondent’s Infringement Suit (1989):In 1989, the respondent filed Suit No. 1612 of 1989 before the Delhi High Court seeking the following reliefs: Injunction: Restraining the appellants from using the trademarks "Marshal" or "Patel Field Marshal Agencies/Industries." Rendition of Accounts: Seeking damages or profits earned by the appellants through the use of the disputed trademark. Declaration of Infringement: Asserting exclusive rights over its registered trademarks.

The appellants, in their defense, raised the following: Jurisdictional Objections: Challenged the pecuniary and territorial jurisdiction of the Delhi High Court. Validity of Respondent’s Trademarks: Claimed the trademarks were invalid and sought their rectification from the register. Rectification Proceedings by Appellants (1997) While the infringement suit was pending, the appellants filed three rectification applications in 1997 before the Gujarat High Court under Sections 46 and 56 of the 1958 Act, challenging the validity of the respondent’s trademarks.

The grounds for rectification included: Non-Use: Alleging the trademarks had not been used continuously as required by law. Improper Registration: Claiming the marks were descriptive and lacked distinctiveness at the time of registration. The Gujarat High Court dismissed the rectification applications in 1998, and this dismissal was upheld by its Division Bench.

Developments in the Infringement Suit: Interim Injunctions: The respondent sought temporary injunctions in the Delhi High Court, which were initially denied by a Single Judge on grounds of lack of jurisdiction. Appeals and Transfers: The matter was transferred to the Rajkot District Court in 2009 after the Delhi High Court ruled that jurisdiction lay in Gujarat.

Key Issue Before the Supreme Court: The Supreme Court had to address whether, in cases where an infringement suit is pending and the issue of trademark validity has been raised, parties can pursue independent rectification proceedings under Sections 46 and 56, or whether Section 111 restricts such actions to rectification proceedings initiated following the trial court's prima facie findings.

Cases Referred and Discussed:The Supreme Court relied on several precedents and interpretations to resolve the central issue in this case. Below is a detailed analysis of the cases referred to and discussed in the judgment, along with their relevance to the matter at hand.

National Bell Co. v. Metal Goods Mfg. Co. (1971 AIR 898):Context: This case defined the term "person aggrieved" under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. Court’s Discussion in the Present Case: The appellants relied on this case to assert that they, as parties aggrieved by the registration of "Field Marshal," had an independent statutory right to file rectification applications.The Supreme Court acknowledged this interpretation but clarified that when a suit for infringement is pending, the procedural scheme under Sections 107 and 111 restricts the independent exercise of rights under Sections 46 and 56.

Cotton Corporation of India Ltd. v. United Industrial Bank Ltd. (1983 4 SCC 625):Context: This case discussed the inability of lower courts to restrain parties from pursuing statutory remedies in higher forums.Court’s Discussion in the Present Case: The appellants argued that requiring trial court permission to file rectification applications violated this principle. The Court distinguished the procedural requirement under Section 111, emphasizing that it was not a matter of granting permission but ensuring prima facie tenability before invoking rectification.

Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. (2006 (32) PTC 733):Context: This decision of the Delhi High Court dealt with Section 124(1) of the Trade Marks Act, 1999 (similar to Section 111 of the 1958 Act), focusing on the stay of infringement suits pending rectification proceedings.Court’s Discussion in the Present Case:The Supreme Court noted the Delhi High Court’s view that when a trial court does not find a prima facie case of invalidity, the party can only challenge this finding on appeal.However, the Supreme Court rejected any interpretation allowing parallel rectification proceedings, stating that the procedural scheme must avoid inconsistent outcomes.

Data Infosys Ltd. v. Infosys Technologies Ltd. (2016 (65) PTC 209):Context: This Full Bench decision of the Delhi High Court clarified the abandonment of invalidity pleas under Section 124(3) of the 1999 Act (analogous to Section 111(3) of the 1958 Act).Court’s Discussion in the Present Case:The Supreme Court endorsed this case, holding that the abandonment of invalidity claims in an infringement suit extends beyond the suit and bars subsequent rectification applications.It rejected the argument that abandonment is limited to the context of the suit alone.

B. Mohamed Yousuff v. Prabha Singh Jaswant Singh (2008 (38) PTC 576): Context: This Madras High Court case argued that the right to file rectification under Sections 47 and 57 of the 1999 Act is not contingent on obtaining permission from a trial court under Section 124(1)(ii).Court’s Discussion in the Present Case:The Supreme Court disagreed with this view, reiterating that the legislative intent under Sections 111 and 124 was to channel rectification claims through a controlled process to avoid duplicity and conflicts.

York Products Ltd. v. York International Corp. (AIR 2001 SC 1491):Context: This case addressed the concept of deceptive similarity and the rights of registered trademark owners under the Trade and Merchandise Marks Act, 1958. Court’s Discussion in the Present Case: Although not directly linked to rectification, this case was referenced to reaffirm the exclusive rights granted to registered trademark owners and the procedural safeguards for protecting those rights. 

Key Takeaways from Court’s Use of These Cases: The Court distinguished between the substantive rights of aggrieved parties and the procedural mechanisms controlling their exercise. It emphasized the legislative intent to prevent conflicting outcomes by channeling rectification claims through the trial court's prima facie assessment during infringement suits.

The Reasoning and Discussion by the Court:

Exclusive Jurisdiction of Statutory Authorities on Trademark Validity Principle Established:The Court reaffirmed that the validity of a registered trademark must exclusively be decided by statutory authorities—the Registrar of Trademarks, the High Court, or the Intellectual Property Appellate Board (IPAB)—and not by civil courts.Rationale:Sections 46 and 56 of the 1958 Act confer jurisdiction on statutory authorities to entertain applications for rectification of the trademark register.Sections 107 and 111 further specify that once the validity of a trademark is raised in an infringement suit, the civil court is required to stay the suit and direct the concerned party to approach the statutory authorities for rectification.Key Observation:"The Act mandates that decisions rendered by the prescribed statutory authority will bind the civil court, which is not empowered to decide the question of validity."

Interplay Between Sections 46, 56, and 111 (Rectification and Stay of Proceedings)Principle Established: Section 111 creates a procedural regime that governs rectification claims when an infringement suit is pending. If a party raises the issue of trademark validity, they must follow the process outlined in Section 111. This overrides independent rights under Sections 46 and 56. Key Points: Prima Facie Tenability: The civil court must first assess whether the claim of invalidity is prima facie tenable. Only if the court finds merit in the claim can it frame an issue and grant time for the concerned party to file a rectification application. Stay of Suit: Once rectification proceedings are initiated, the infringement suit remains stayed until a decision is rendered on the validity of the trademark.

Deemed Abandonment (Section 111(3)): If the concerned party fails to initiate rectification proceedings within the prescribed time (three months or as extended), the plea of invalidity is deemed abandoned, not just in the suit but for all future rectification claims.Key Observation:"The legislative scheme under Section 111 ensures that issues relating to invalidity are decided comprehensively in one forum, avoiding multiple proceedings and conflicting decisions."

Parallel Proceedings and Avoidance of Conflicts:Principle Established: Parallel rectification proceedings under Sections 46/56 and 111 are prohibited when an infringement suit is pending. Once the issue of validity is raised in a suit, all rectification claims must adhere to the procedural mechanism of Section 111. Rationale: Allowing parallel proceedings could result in conflicting decisions, one by the civil court and another by the statutory authority. The Supreme Court clarified that the legislature intended rectification issues in pending suits to be governed solely by Section 111 to maintain procedural consistency. Key Observation: "Once a civil court is approached, the rights under Sections 46 and 56 must be exercised through the procedural safeguards under Section 111."

Dismissal of Appeals and Final Decision:Outcome: The Supreme Court dismissed the appellants' appeals, upholding the Gujarat High Court's decision. It affirmed that the appellants had abandoned their plea of invalidity under Section 111(3) by failing to initiate rectification proceedings within the prescribed time.  Implications of the Law Laid Down: Streamlined Litigation: Ensures that trademark validity issues are dealt with comprehensively by statutory authorities, reducing the burden on civil courts. Judicial Finality: Deemed abandonment provisions under Section 111(3) provide certainty to trademark disputes, preventing indefinite challenges to registration. Safeguard Against Abuse:The prima facie assessment ensures only legitimate challenges proceed, protecting trademark owners from frivolous claims.Consistency Across Forums:Prohibits parallel rectification proceedings to avoid conflicting decisions, maintaining the integrity of trademark law.

Conclusion:The judgment in Patel Field Marshal Agencies lays down a clear procedural framework for handling trademark validity challenges in the context of infringement suits. By emphasizing the exclusivity of statutory authorities and the finality of deemed abandonment, the Court has strengthened the integrity of trademark litigation, ensuring efficient and consistent outcomes.

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

Written by: Advocate Ajay Amitabh Suman:[Patent and Trademark Attorney]: High Court of Delhi