Godfrey Phillips India Ltd. Vs. Girnar Food & Beverages Pvt. Ltd.

Godfrey Phillips India Ltd. Vs. Girnar Food & Beverages Pvt. Ltd.: Effect of Trademark disclaimer in passing off action: The SUPER CUP Case

Godfrey Phillips India Ltd. Vs. Girnar Food & Beverages Pvt. Ltd.

Case Details Date of Order: 5th December 1997

Case Number: 

Neutral Citation: JT 1998 (8) SC 408, (1999) 122 PLR 135, (1998) 9 SCC 531, AIR 1997 SC 233, (1999) 1 REC CIV R 377

Court: Supreme Court of India

Bench: Justice J.S. Verma and Justice B.N. Kirpal

Introduction: This case revolves around a trademark dispute between Godfrey Phillips India Ltd., a well-known manufacturer and marketer of tea, and Girnar Food & Beverages Pvt. Ltd., regarding the use of the term "Super Cup" in the marketing of tea products. The plaintiff sought an injunction against the defendant for allegedly infringing their trademark and engaging in passing off. The trial court granted an interlocutory injunction in favor of the plaintiff. However, the Division Bench of the High Court stayed this injunction, leading the plaintiff to file an appeal before the Supreme Court.

Facts of the Case: Godfrey Phillips India Ltd., a well-established tea manufacturer, filed a suit against Girnar Food & Beverages Pvt. Ltd., alleging trademark infringement and passing off in relation to the term "Super Cup" used for marketing tea.The trial court granted an interlocutory injunction, preventing the defendant from using "Super Cup" in its branding and marketing.

Girnar Food & Beverages Pvt. Ltd. challenged this order before the High Court:The Division Bench of the High Court admitted the appeal and stayed the interlocutory injunction. Dissatisfied with this decision, the plaintiff (Godfrey Phillips India Ltd.) filed an appeal before the Supreme Court via special leave petition.

Issues Involved: Whether the plaintiff could claim an exclusive right over the term "Super Cup" despite having disclaimed it in its registered trademark?Whether a disclaimer in a registered trademark negates the right to file a passing-off action?Whether the High Court Division Bench’s decision to stay the interlocutory injunction was legally sustainable?

Discussion on Judgments Referred: Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558The Supreme Court had previously held that a disclaimer in a registered trademark does not prevent the trademark owner from initiating a passing-off action.This principle was crucial in the present case because Godfrey Phillips India Ltd. had disclaimed the words "Super Cup" in its trademark registration, but it still sought to prevent Girnar Food & Beverages Pvt. Ltd. from using the term through a passing-off claim.

Submissions of the Parties:Plaintiff (Godfrey Phillips India Ltd.)Argued that the trial court’s order granting an interlocutory injunction was justified as the defendant’s use of "Super Cup" was likely to cause confusion in the market.Contended that even though "Super Cup" was disclaimed in the registration, they had acquired goodwill and reputation over the years, entitling them to protection under common law rights of passing off.Relied on Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. to assert that the disclaimer did not preclude them from enforcing their common law rights.

Defendant (Girnar Food & Beverages Pvt. Ltd.)Argued that since "Super Cup" was expressly disclaimed, the plaintiff could not claim any exclusive right over it.Contended that the High Court was correct in staying the trial court’s injunction since there was no prima facie case of exclusive ownership over the term "Super Cup."

Detailed Reasoning and Analysis of the Judge:Nature of Disclaimer and Its Legal Consequences: The Supreme Court analyzed the effect of a disclaimer in a registered trademark and referred to its earlier ruling in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. It reaffirmed the principle that a disclaimer does not strip a trademark owner of common law rights under passing off.

Error in High Court’s Reasoning:The Division Bench of the High Court reasoned that, since "Super Cup" was disclaimed, the only protectable part of the trademark was "Tea City." The Supreme Court found this reasoning flawed, as the legal position is that a passing-off action is still maintainable despite a disclaimer.

Preservation of Market Reputation: The Supreme Court acknowledged that allowing the defendant to continue using "Super Cup" without considering the plaintiff’s rights would be prejudicial, especially when there was an established reputation associated with the term.

Need for Fresh Examination by the High Court: Since the respondent's counsel had not supported the High Court's reasoning, the Supreme Court found it appropriate to set aside the Division Bench's order and remit the matter back to the High Court for a fresh decision. Decision of the Judge.The Supreme Court set aside the Division Bench’s order staying the interlocutory injunction. It remitted the matter back to the Division Bench for a fresh decision, directing it to reconsider the case in light of Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.It directed that the High Court should preferably dispose of the appeal within three months. It maintained the status quo regarding the use of "Super Cup" until the High Court’s final decision. 

Significance of the Judgment.This case reinforces the principle that disclaiming a portion of a registered trademark does not eliminate common law rights under passing off. It establishes that passing-off actions remain valid even where certain words in a trademark have been disclaimed. The ruling upholds the importance of protecting market reputation and preventing consumer confusion. It ensures that High Courts properly apply legal precedents when dealing with interlocutory injunctions in trademark disputes.

Conclusion:The Supreme Court’s decision in Godfrey Phillips India Ltd. vs. Girnar Food & Beverages Pvt. Ltd. is a landmark ruling in trademark law. It clarifies that a disclaimer in a registered trademark does not preclude a party from asserting passing-off rights. The ruling ensured that the plaintiff’s reputation in the market was protected while allowing the High Court to re-evaluate the matter based on settled legal principles.

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

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

Boehringer Ingelheim Pharma GmbH Vs. Vee Excel Drugs and Pharmaceuticals Pvt. Ltd.

Genus and Species Patent and Ever greening 

Case Details: Boehringer Ingelheim Pharma GmbH Vs. Vee Excel Drugs and Pharmaceuticals Pvt. Ltd.

Case Number: CS(COMM) 239/2019 & connected matters

Neutral Citation: 2023:DHC:2272

Court: Delhi High Court

Judge: Hon’ble Mr. Justice Amit Bansal

Judgment Reserved: 27th January 2023

Judgment Delivered: 29th March 2023

Boehringer Ingelheim Pharma GmbH & Co. KG & Anr. filed multiple suits before the Delhi High Court against various Indian pharmaceutical companies, including Vee Excel Drugs and Pharmaceuticals Pvt. Ltd., seeking a permanent injunction to restrain the defendants from infringing Indian Patent No. IN 243301. The case, CS(COMM) 239/2019 and connected matters, was adjudicated by Hon’ble Mr. Justice Amit Bansal, with the judgment reserved on 27th January 2023 and delivered on 29th March 2023. The neutral citation for the judgment is 2023:DHC:2272. The plaintiffs contended that the defendants were manufacturing and selling Linagliptin-based pharmaceutical products, thereby infringing their patent covering "8-(3-AMINOPIPERIDIN–1–YL)-XANTHINE COMPOUNDS." They argued that the patent was validly granted and that their rights under Section 48 of the Patents Act, 1970, entitled them to an exclusive monopoly over Linagliptin formulations in India. The plaintiffs had previously obtained an interim injunction restraining the defendants from manufacturing and selling Linagliptin tablets.

The defendants countered that the plaintiffs' patent IN 243301 was an attempt at "evergreening," as Linagliptin had already been claimed in an earlier genus patent, IN 227719, which expired on 21st February 2022. They asserted that the plaintiffs were attempting to extend their monopoly beyond the permissible twenty-year patent term by obtaining a species patent that covered the same invention as the genus patent. The defendants also challenged the validity of the plaintiffs' patent under multiple provisions of the Patents Act, including Section 64(1)(a) (prior claiming), Section 64(1)(f) (lack of inventive step), and Section 3(d) (mere discovery of a new form of a known substance). They argued that Linagliptin, as a Markush structure, was already disclosed and protected under the earlier patent, and thus, any attempt to extend its exclusivity was impermissible.

The plaintiffs, in response, submitted that Linagliptin was specifically claimed only in the species patent IN 243301 and was distinct from the broader genus patent IN 227719. They contended that the suit patent had been successfully enforced in multiple jurisdictions, including China, and that no pre-grant or post-grant oppositions had been filed against it. They further argued that once a patent was granted, the onus was on the defendants to demonstrate its invalidity with cogent evidence. The plaintiffs relied on the judgment in FMC Corporation & Anr. v. Best Crop Science LLP & Anr., (2021) 87 PTC 217, to argue that merely raising a challenge was insufficient to deny an injunction unless the challenge was credible. They also cited National Research Development Corp. of India v. Delhi Cloth & General Mills, (1979 SCC OnLine Del 206), to claim that old patents with established commercial success should be presumed valid for interim relief purposes.

The defendants, on the other hand, relied on AstraZeneca AB & Anr. v. Intas Pharmaceuticals Ltd., (2021) 87 PTC 374 (DB), to argue that the suit patent was vulnerable to revocation due to prior claiming and evergreening. They contended that the plaintiffs had admitted in multiple proceedings worldwide that Linagliptin was covered under IN 227719. They emphasized that Linagliptin was the only commercial embodiment of both patents, as evidenced by the plaintiffs' identical Form 27 working statements for IN 227719 and IN 243301.

The court analyzed whether an older patent should be presumed valid for granting an interim injunction. Referring to Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444, the court reaffirmed that Section 13(4) of the Patents Act does not warrant the validity of a patent merely because it has been granted. The court also rejected the six-year rule discussed in National Research Development Corp. (supra), stating that in India, the presumption of validity does not arise merely due to a patent's age or commercial success. The judgment in F. Hoffmann-La Roche & Anr. v. Cipla Ltd., ILR(2009)Supp.(2)Delhi 551, was cited to emphasize that even patents that survive pre-grant and post-grant oppositions can still be challenged on new grounds in revocation proceedings.

The court then examined the issue of prior claiming under Section 64(1)(a). It noted that a species patent could be invalidated if the genus patent had already claimed the same subject matter. A comparative analysis of the claims of IN 227719 and IN 243301 showed substantial structural similarity, leading to the conclusion that Linagliptin was indeed covered by the genus patent. The court also referred to the International Search Report (ISR) of the PCT application for IN 243301, which categorized the genus patent as an ‘X’ reference, indicating that Linagliptin lacked novelty and inventive step. The court found this persuasive evidence that the plaintiffs’ claim of Linagliptin being separately patentable was untenable.

On the issue of evergreening under Section 3(d), the court analyzed whether the plaintiffs had demonstrated any enhanced efficacy of Linagliptin over the broader genus patent. The court cited Novartis AG v. Union of India, (2013) 6 SCC 1, where the Supreme Court held that mere discovery of a new form of a known substance without improved therapeutic efficacy is not patentable. The plaintiffs failed to show any significant enhancement in efficacy, leading the court to conclude that the suit patent was vulnerable under Section 3(d).

The court held that the defendants had established a credible challenge to the validity of the suit patent. Following the standard laid down in F. Hoffmann-La Roche v. Cipla (supra), it ruled that a credible challenge at the interim stage is sufficient to deny an injunction. The court found that the balance of convenience lay in favor of the defendants, as the plaintiffs had already enjoyed a twenty-year monopoly under IN 227719. Additionally, the defendants' Linagliptin-based products were significantly cheaper than the plaintiffs' imported versions, making affordability and public interest key considerations. The court also noted that monetary damages would be an adequate remedy if the plaintiffs ultimately succeeded at trial.

Consequently, the Delhi High Court denied the plaintiffs’ application for an interim injunction, allowing the defendants to continue manufacturing and selling Linagliptin products.

Svamaan Financial Services Vs Samman Capital Services

The case Svamaan Financial Services Pvt. Ltd. vs. Sammaan Capital Ltd. revolves around a trademark dispute regarding the alleged deceptive similarity between the plaintiff's registered trademark “SVAMAAN” and the defendant’s newly adopted corporate name “SAMMAAN”. The plaintiff, Svamaan Financial Services, is a Non-Banking Finance Company - Microfinance Institution (NBFC-MFI) operating since 2017, offering microfinance loans and other financial services. The defendants, previously operating under the Indiabulls brand, rebranded their financial entities under the Sammaan name in 2024. The plaintiff claimed that the defendants' use of the “SAMMAAN” mark in financial services infringes upon its established trademark, leading to market confusion. The defendants argued that Sammaan is a common Hindi word meaning "respect" and that their business model differs significantly from the plaintiff’s.

The key legal issue was whether the defendant’s adoption of the “SAMMAAN” name constituted trademark infringement and passing off under the Trade Marks Act, 1999. The plaintiff contended that "SVAMAAN" and "SAMMAAN" were phonetically, visually, and conceptually similar, making them likely to mislead consumers. The defendant countered that regulatory approvals from the RBI and RoC validated its use of "Sammaan", and that its clientele, being financially literate, would not be confused between the two brands.

The court analyzed several judicial precedents regarding deceptive similarity, including Corn Products Refining Co. v. Shangrila Food Products Ltd. (which held that phonetic similarity could lead to confusion), Ruston & Hornsby Ltd. v. Zamindara Engineering Co. (which ruled that minor spelling changes do not eliminate deceptive similarity), and Hindustan Pencils v. India Stationery Products (which emphasized that delay in filing suit does not negate a strong infringement claim). The defendants relied on PhonePe vs. BharatPe and Living Media India vs. Alpha Dealcom, arguing that common Hindi words cannot be monopolized; however, the court distinguished these cases by noting that both parties in the present case operate in the same financial domain, increasing the likelihood of confusion.

The Court ruled in favor of the plaintiff, finding that the competing marks were structurally, phonetically, and conceptually similar, with only minor spelling differences that did not negate the possibility of consumer confusion. The court rejected the defendant's reliance on regulatory approvals, stating that trademark disputes fall under civil jurisdiction, not regulatory bodies like the RBI or RoC. It also found that the defendant had prior knowledge of the plaintiff's mark and proceeded with its rebranding despite receiving a cease-and-desist notice, indicating bad faith adoption. The court granted an interim injunction restraining the defendants from using “SAMMAAN” in their corporate names, advertisements, branding, or domain names, thereby preventing potential consumer confusion. 

The judgment reinforced that minor spelling differences do not eliminate trademark infringement, regulatory approvals do not determine trademark validity, and prior use and goodwill are crucial factors in infringement cases. The ruling upholds the importance of protecting well-established trademarks from deceptive similarities that can mislead consumers.

Case Title: Svamaan Financial Services Vs Samman Capital Services

Date of Order: 10th February 2025

Case No.: CS(COMM) 871/2024

Neutral Citation: 2025:DHC:794

Court: Delhi High Court

Judge: Hon’ble Justice Amit Bansal

Aditya Birla Fashion & Retail Ltd. Vs Friends Inc

Criteria for declaring Trademark to be well known Known Trademark

Introduction: The case of Aditya Birla Fashion And Retail Limited vs Friends Inc & Anr. revolves around trademark infringement concerning the reputed brand "PETER ENGLAND." The plaintiff, Aditya Birla Fashion And Retail Limited (ABFRL), sought a permanent injunction against the defendants, restraining them from unauthorized use of the "PETER ENGLAND" trademark. The High Court of Delhi adjudicated on whether the defendants’ actions constituted trademark infringement, passing off, and unfair competition. Additionally, the plaintiff sought a declaration recognizing "PETER ENGLAND" as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

Plaintiff’s Claim: Aditya Birla Fashion And Retail Limited (ABFRL) is the registered proprietor of the “PETER ENGLAND” trademark, originally conceived in 1889 and introduced in India in 1997. The brand was acquired by the plaintiff group in 2000 and has since expanded to 382 stores across 180 cities in India. The plaintiff alleged that the defendants, Friends Inc & Anr., were unauthorizedly using the mark “PETER ENGLAND” on their signboard, invoices, and business papers, causing confusion among consumers.

Interim Orders & Compliance: On July 12, 2024, the court granted an ex parte interim injunction, restraining the defendants from using the infringing mark. On September 5, 2024, the defendants removed the signboard and ceased using the mark on invoices. On September 13, 2024, the defendants submitted a compliance affidavit, confirming their cessation of infringing activities.

Final Hearing: The plaintiff sought an official declaration of “PETER ENGLAND” as a well-known trademark, supported by evidence of extensive sales, advertisements, and brand recognition. The defendants did not object to the plaintiff’s claims.

The plaintiff contended that: The “PETER ENGLAND” trademark is extensively used, advertised, and recognized globally. The defendants’ unauthorized use of the trademark was diluting the brand’s goodwill and causing confusion among consumers. The Trade Marks Act, 1999 protects registered trademarks from such unauthorized usage. The plaintiff satisfied all criteria for “well-known” trademark status under Section 2(1)(zg) of the Trade Marks Act, 1999. The defendants had no right or legitimate interest in using the mark, and their conduct amounted to passing off and unfair competition.

The defendants initially denied infringement but later complied with the interim injunction by:Removing the signboard with the “PETER ENGLAND” mark.Ceasing the use of the mark on invoices and business materials..The defendants did not contest the plaintiff’s claim for well-known trademark status. 

The court considered precedents on well-known trademarks and brand protection, including:

Tata Sons Ltd. vs Manoj Dodia & Ors. (2011 SCC OnLine Del 1520):Defined “well-known” trademarks as those widely recognized by consumers due to extensive use, advertisement, and reputation.Factors determining well-known status include: Consumer recognition,Duration and extent of use,Geographical reach,Advertising and promotion expenses,Sales figures

The court applied these principles to conclude that "PETER ENGLAND" meets all the criteria for a well-known trademark.

ITC Ltd. vs Britannia Industries Ltd. (2016 SCC OnLine Del 3834):Highlighted that unauthorized use of a trademark constitutes infringement even if the defendant does not contest the claim.Affirmed that mere compliance with an injunction does not absolve the infringer of liability.

Daimler Benz Aktiegesellschaft vs Hybo Hindustan (1994 PTC 287):Stressed that well-known marks enjoy broader protection against unauthorized use, even in unrelated goods or services.

Application of Precedents in the Present Case:Applying these principles, the court found that the plaintiff had provided substantial evidence of consumer recognition, extensive sales, and promotional activities. The defendants’ use of “PETER ENGLAND” was deemed misleading, even though they eventually ceased usage. The plaintiff’s trademark was recognized as well-known, thereby securing enhanced legal protection against future misuse.

Court’s Reasoning & Analysis:

Trademark Infringement Established:The Trade Marks Act, 1999 (Section 29) prohibits unauthorized use of a registered trademark. The defendants used “PETER ENGLAND” without authorization, fulfilling the criteria for infringement.

Well-Known Trademark Recognition:The court reviewed sales turnover (₹1289 Crores in 2023-24), advertisement expenses (₹31 Crores in 2023-24), and extensive brand promotions.

Considering these factors, the court declared “PETER ENGLAND” a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999.

Passing Off & Consumer Confusion:The defendants’ usage misled consumers into believing a connection with the plaintiff. The plaintiff’s reputation and goodwill were at risk, justifying injunctive relief.

Equitable Considerations:Since the defendants complied with the injunction and ceased infringement, the court refrained from imposing additional penalties. However, the court affirmed the plaintiff’s exclusive rights over the mark.

Decision: The defendants were permanently restrained from using “PETER ENGLAND” in any manner.The court declared “PETER ENGLAND” a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999.The suit was decreed in terms of the plaintiff’s prayers (a) to (e).

Concluding Note:This judgment strengthens brand protection laws in India by reaffirming the importance of well-known trademarks. It underscores that unauthorized use of reputed marks, even if later withdrawn, constitutes infringement. The case also highlights the significance of extensive brand recognition in obtaining legal protection. By recognizing “PETER ENGLAND” as a well-known trademark, the court ensured enhanced protection against future infringement.

Case Title: Aditya Birla Fashion & Retail Ltd. Vs Friends Inc

Date of Order: 7 February 2025

Case No.: CS(COMM) 566/2024

Neutral Citation: 2025:DHC:776

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Mini Pushkarna

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

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

IMS Learning Resources Pvt. Ltd. Vs. Young Achievers

Termination of Trademark Licensing and its Effect

Introduction:The case of IMS Learning Resources Pvt. Ltd. vs. Young Achievers primarily revolves around trademark infringement, passing off, and the unauthorized usage of a registered mark after the termination of a license agreement. The dispute concerns the alleged wrongful use of the trademark "IMS" by the defendant, even after the franchise agreement was terminated. The court examined whether the defendant’s continued use of "IMS" constituted trademark infringement, passing off, and unfair competition.

Factual Background:Plaintiff's Business and Trademark Rights IMS Learning Resources Pvt. Ltd. (Plaintiff) is engaged in the field of coaching and educational services, with a well-established reputation under the trademark "IMS." The plaintiff granted a franchise/license to the defendant, Young Achievers, to use the mark "IMS" from 2007 to 2010 under a license agreement.

Termination of License Agreement:After the expiration of the agreement in 2010, the plaintiff decided not to renew the license. An Exit Paper dated February 1, 2011, was signed by the defendant, acknowledging that they would cease using the "IMS" brand.

Defendant's Continued Use of IMS:Despite the termination, the defendant continued to use "IMS" in the name "IMS Young Achievers."The defendant also published advertisements claiming that "IMS Young Achievers" was a continuation of the plaintiff’s business. The plaintiff filed a suit alleging trademark infringement, passing off, and unfair trade practices.

Plaintiff's Arguments:The plaintiff argued that they held prior and exclusive rights over the "IMS" trademark, and its use by the defendant after the termination of the agreement amounted to infringement.The defendant's use of "IMS Young Achievers" was deceptively similar to the plaintiff's mark and caused confusion in the minds of students and parents.The plaintiff relied on precedents that held that an ex-licensee cannot claim rights over a mark after the license has been revoked. The defendant's actions amounted to passing off, as students and the general public would mistakenly believe the defendant’s institute was associated with IMS.

Defendant's Arguments:The defendant argued that "IMS" is a commonly used acronym and not exclusive to the plaintiff.The composite mark "IMS Young Achievers" was sufficiently distinct and not deceptively similar to "IMS."The defendant claimed that they had an independent reputation in Meerut and that there was no likelihood of confusion. The defendant also contended that the plaintiff failed to establish significant reputation and goodwill in Meerut.

Discussion on Judgments & Citations Referred:

Infringement of Trademark & Passing Off:The court relied on the Supreme Court's decision in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1959 SCC OnLine SC 11), which held that the likelihood of confusion must be judged from the perspective of an ordinary customer of average intelligence.

In Amritdhara Pharmacy v. Satya Deo Gupta, (1962 SCC OnLine SC 13), the Supreme Court held that deceptive similarity must be determined based on the overall impression rather than minor differences.

The court cited Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, (1964 SCC OnLine SC 14), to reaffirm that in cases of infringement, the similarity of the dominant feature of the mark is sufficient to establish infringement.

Effect of License Termination:The court relied on Morgardshammar India Ltd. v. Morgardshammar AB, (2012 SCC OnLine Del 4945), which held that once a license is revoked, any continued use of the trademark by the licensee amounts to infringement.

Similarly, in Rob Mathys India Pvt. Ltd. v. Synthes AG Chur (1997 PTC 669), the Delhi High Court ruled that a licensee cannot use the trademark post-termination.

Degree of Malafide Conduct & Damages:The court cited Koninlijke Philips N.V. v. Amazestore (2019 SCC OnLine Del 8198), where it was held that the degree of misconduct affects the quantum of damages awarded.

Court’s Reasoning & Findings:

Trademark Infringement Established:The court held that the defendant’s use of "IMS Young Achievers" amounted to infringement, as the dominant part of the mark remained "IMS," which was identical to the plaintiff’s registered trademark.The court rejected the defendant’s argument that "IMS" was generic, as no substantial evidence was provided to support this claim.

Passing Off Established:The court found that the defendant was riding on the goodwill of the plaintiff and misleading students into believing they were affiliated with IMS.

Effect of License Termination:Since the defendant initially used "IMS" under a valid license agreement, their continued use after termination was deemed dishonest and in bad faith.

Defendant’s Malafide Conduct:The court noted that the defendant attempted to file a trademark application for "IMS" despite knowing the existence of the plaintiff’s registered trademark, further proving bad faith.The defendant also refused to cooperate with court-appointed commissioners during investigations.

Decision of the Court:Permanent Injunction

The court issued a permanent injunction restraining the defendant from using the mark "IMS" or any deceptively similar variation. Award of Damages:The court awarded ₹30 lakhs in damages and costs to the plaintiff for loss of goodwill and legal expenses incurred.Other Reliefs:The court ordered the defendant to cease all use of IMS-branded material and return any proprietary content belonging to the plaintiff.

Conclusion:This case reaffirms the principle that an ex-licensee cannot claim rights over a trademark post-termination and that unauthorized use constitutes infringement and passing off. The judgment strengthens the protection of trademark owners against former franchisees attempting to misuse an established brand’s goodwill.

Case Title: IMS Learning Resources Pvt. Ltd. Vs. Young Achievers

Date of Order: January 20, 2025

Case No.: CS Comm 602 of 2018

Neutral Citation: 2025:DHC:282

Court: Delhi High Court

Judge: Hon’ble 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.

Sahil Parvez Vs. Union of India

Assialing Release of movie during pendency of CBFC Approval is premature

Introduction:The case involves multiple writ petitions challenging the release of a film titled "2020 Delhi", which depicts the 2020 North-East Delhi riots. The petitioners alleged that the movie presents a distorted narrative, prejudices ongoing criminal trials, incites communal discord, and influences electoral processes.

The petitioners sought: A stay on the movie’s release until criminal cases related to the riots conclude.Revocation of CBFC certification (if granted) for violating constitutional and statutory provisions.

Removal of the movie trailer from online platforms. The Court had to determine whether the film’s release should be halted or regulated under the Cinematograph Act, 1952, considering the freedom of expression (Article 19(1)(a)) and reasonable restrictions (Article 19(2)).

Petitioners’ Allegations:Distorted Narrative: The trailer portrays a biased version of the riots, implicating specific individuals in a negative light. Petitioner in W.P.(C) 1211/2025 (Sharjeel Imam) claimed he was "demonized" and prejudged in the film, affecting his ongoing trial under FIR 59/2020.Interference with Judicial Proceedings: The film allegedly prejudices ongoing criminal trials, potentially violating the Contempt of Courts Act, 1971.Communal Discord & Public Order: W.P.(C) 1263/2025 alleged that the film incites religious sentiments, violating Article 25 (Freedom of Religion) and Article 19(2) (reasonable restrictions on free speech). Electoral Influence:W.P.(C) 1275/2025 claimed the movie could impact elections in Delhi and manipulate voter behavior.

Respondents’ Defense:Producers' Stand (Movie Creators):

Producers assured that: The Central Board of Film Certification (CBFC) approval is pending. No public screening will occur without CBFC clearance. The film is a fictional and dramatized account, not a factual recreation. A disclaimer will be added to clarify this.

Union of India’s Argument: The CBFC is the statutory authority for deciding a film’s suitability for public screening. Premature to challenge the film before certification.

Petitioners’ Arguments (Challenging the Movie):Film Prejudices Ongoing Criminal Trials The movie acts as a parallel trial, violating Article 21 (Right to Fair Trial). Cites Mushtaq Moosa Tarani v. Government of India (2005 SCC OnLine Bom 385), where a movie was stayed due to potential prejudice to an ongoing trial. Incites Communal Tension & Public Disorder:The movie allegedly vilifies one community, violating: Section 5B(1) of the Cinematograph Act, 1952 (restrictions on content inciting public disorder). Articles 19(2) & 25 of the Constitution (public order, morality, and religious freedom). Influences Elections Complaint filed with the Election Commission of India (ECI) to block the movie’s release before elections.

Respondents’ Arguments (Defending the Movie):No Grounds for Premature Censorship

Hiten Dhirajlal Mehta v. Bhansali Production (2022 SCC OnLine Bom 372):Once CBFC certifies a film, courts should not interfere without strong justification.The CBFC is yet to certify the movie, making the petition premature.Freedom of Expression (Article 19(1)(a))Supreme Court in Viacom 18 Media v. Union of India (2018 1 SCC 761) held: Creative freedom is protected unless it violates public order or morality.Online Content Not Covered Under the Cinematograph ActPadmanabh Shankar v. Union of India (ILR 2019 KAR 4630):

The Act regulates cinematographic films, not internet-based content.Disclaimers Ensure No Misrepresentation:The film’s disclaimer, as approved in Lt. Col. Prasad Purohit v. National Investigating Agency (2024 BHC-OS 18519-DB), clarifies that: The movie is fictional and not an accurate representation of real events.

Court’s Discussion on Judgments and Citations:Contempt of Court & Fair Trial:Court rejected Contempt of Court arguments stating:Prejudice to trials is speculative until the movie is screened. Adarsh Cooperative Housing Society v. Union of India (2018 17 SCC 516): CBFC certification implies compliance with legal guidelines. Cinematographic Regulation vs. Online Content:Court cited Karnataka HC in Padmanabh Shankar (2019): The Cinematograph Act does not regulate online movie trailers, limiting the Court’s power to intervene.Election Influence Concerns:Election Commission of India (ECI) assured examination of the complaint.

Reasoning of the Judge:CBFC Approval is Mandatory for Release:Since CBFC certification is pending, the petition is premature. No Basis for Prior Restraint:Citing Viacom 18 (2018) and Hiten Dhirajlal Mehta (2022): Courts should not preemptively block movies before CBFC review.

Disclaimers Mitigate Any Misrepresentation:Court accepted the producers’ commitment to display a disclaimer. Election Commission Will Decide Electoral Influence:Court left the election-related concerns to the ECI.

Decision:Petitions Dismissed as Premature.No preemptive ban on the movie..CBFC will decide certification.Disclaimers Must Be Displayed. The movie must include a disclaimer stating it is fictional.Election Commission Will Review ComplaintsThe ECI will assess whether the movie violates election laws.

Conclusion:The Court upheld freedom of artistic expression while ensuring procedural compliance. CBFC remains the primary authority for certification, and unless it certifies the movie, the Court will not intervene.

This case reaffirms that: Films are protected under Article 19(1)(a) unless they explicitly violate public order/morality.CBFC certification is a prerequisite before seeking judicial intervention.Disclaimers are a sufficient safeguard against misinterpretation.

Case Title: Sahil Parvez Vs. Union of India

Date of Order: January 31, 2025

Case No.: W.P.(C) 1192/2025 (Lead Petition)

Neutral Citation: 2025:DHC:613

Court: High Court of Delhi

Judge: Hon'ble Justice Sachin Datta

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.

Bharat Singh Vs. Karan Singh

Mediation Period is excluded from computing limitation for condoning delay in filing Written Statement

Introduction:The case Bharat Singh v. Karan Singh & Others revolves around a partition suit regarding two properties located in New Delhi and Chandigarh. The key issue pertains to the delay in filing the written statements by Defendant No.1 and Defendant No.4, and whether the time spent in mediation should be excluded from the 120-day limitation period for filing the written statement.The case is significant as it examines the applicability of procedural laws, particularly the Delhi High Court (Original Side) Rules, 2018, and the impact of mediation on litigation timelines.

Facts of the case:Bharat Singh (Plaintiff) filed a partition suit seeking division of two properties:House No. H-21, Green Park Extension, New Delhi (463 sq. yards).House No. 11, Sector 4, Chandigarh (3813 sq. yards).The Plaintiff sought a division by metes and bounds for separate possession of his share.

Summons and Initial Orders:Summons were issued on July 26, 2022, and the suit was registered. On September 28, 2022, Defendants requested legible copies of the plaint and documents, which were provided on October 3, 2022.Mediation Referral:On November 2, 2022, the Plaintiff suggested mediation, which the Defendants did not oppose.The Court referred the matter to the Delhi High Court Mediation and Conciliation Centre. The Court also allowed Defendants to file their written statements after mediation. Failure of Mediation and Delay in Filing Written Statements:Mediation failed on January 24, 2023. Defendant No.1 filed his written statement on April 9, 2023. Defendant No.4 filed her written statement on April 12, 2023. Both Defendants filed applications seeking condonation of delay (74 & 77 days respectively) under Order VIII Rule 1 of the CPC.

Rejection of Delay Condonation Application:On May 31, 2024, the Joint Registrar dismissed the applications, stating that the written statements were filed beyond the 120-day limit under the Delhi High Court (Original Side) Rules, 2018. The Defendants' written statements were taken off record, and Plaintiff’s documents were deemed admitted.

Appeals Against the Registrar’s Order:Defendants No.1 and 4 filed appeals challenging the rejection of their written statements.

Defendants’ Arguments (Seeking Condonation of Delay):the Defendants argued:Time Limit Should Exclude Mediation Period:The 120-day limit should exclude the period from November 2, 2022 (referral to mediation) to January 24, 2023 (failure of mediation). The clock for filing written statements should resume from January 25, 2023. Defendants Filed Within 120 Days (Excluding Mediation Period) If mediation time is excluded, their written statements were filed within the permissible period. Precedents Support Excluding Mediation Time:Telefonaktiebolaget L.M. Ericsson v. Lava International Ltd. (2015 SCC OnLine Del 13903):

Courts should exclude time spent in settlement talks while computing procedural deadlines.

Greaves Cotton Ltd. v. Newage Generators (P) Ltd. (2019 SCC OnLine Del 6556): Encouraged mediation as a mechanism to settle disputes, and held that filing pleadings during mediation may hamper the process.

Plaintiff’s Arguments (Opposing Delay Condonation):Time for Filing Started on October 3, 2022 The 120-day clock started when legible copies were served (October 3, 2022) and expired on February 1, 2023. Defendants filed their written statements in April 2023, beyond the deadline. No Power to Extend Beyond 120 Days:Delhi High Court (Original Side) Rules, 2018, Chapter VII, Rule 4 states: Written statement must be filed within 30 days (extendable up to 120 days but no further). Precedent: Ram Sarup Lugani v. Nirmal Lugani (2020 SCC OnLine Del 1353): No power to condone delay beyond 120 days. Mediation Does Not Stop Limitation Clock Charu Aggarwal v. Ashok Kalia (2023 SCC OnLine Del 1238):Time limits in procedural laws are mandatory, and mediation does not pause limitation.

Court’s Discussion on Judgments and Citations: Court Considered the Spirit of Mediation:Vikram Bakshi v. Sonia Khosla (2014) 15 SCC 80 emphasized that: Mediation ensures win-win solutions and avoids prolonged litigation. Parties should not be burdened with procedural formalities during mediation.

Court Distinguished Prior Precedents:Charu Aggarwal (2023) and Ram Sarup Lugani (2020) were not applicable because they did not consider whether mediation time should be excluded.Court Followed Telefonaktiebolaget L.M. Ericsson (2015) and Greaves Cotton (2019) Time spent in mediation should be excluded to uphold the spirit of Section 89 CPC.

Reasoning of the Judge:Mediation Period Excluded from Computation:The Court excluded time from November 2, 2022, to January 24, 2023 for written statement filing. Defendants’ Written Statements Were Filed Within 120 Days (Excluding Mediation Time).Defendant No.1 filed on April 9, 2023 (within 120 days). Defendant No.4 filed on April 12, 2023 (within 120 days). Court Allowed Written Statements Subject to Costs

Conclusion:The Delhi High Court set aside the Joint Registrar’s order and held that: Mediation time should be excluded from the 120-day limit.Defendants’ written statements were filed within the permissible period. The written statements were accepted, subject to a penalty cost.This judgment reaffirms that mediation should not be discouraged by procedural rigidity, and courts must adopt a practical approach to procedural timelines.

Case Title: Bharat Singh Vs. Karan Singh & Others

Date of Order: February 3, 2025

Case No.: CS(OS) 427/2022

Neutral Citation: 2025:DHC:777

Court: High Court of Delhi

Judge: Hon’ble Justice Subramonium Prasad

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. 

Pidilite Industries Ltd. Vs. Astra Chemtech Private Ltd.

Suppression of Material Fact and vacation of stay

Introduction:This case involves a dispute between Pidilite Industries Limited (Plaintiff) and Astra Chemtech Private Limited & Ors. (Defendants) concerning allegations of trademark infringement. The plaintiff obtained an ex-parte ad-interim injunction on October 24, 2024, restricting the defendants from using certain marks. The defendants filed an application under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (CPC), seeking vacation of the injunction on the grounds that it was obtained through misrepresentation and suppression of material facts.

Plaintiff's Claims:The plaintiff, Pidilite Industries Ltd., owns a registered trademark consisting of two elephants pulling in opposite directions.The plaintiff alleged that the defendants' trademark featuring rhinos in a similar pose was deceptively similar to its own mark and amounted to trademark infringement.Based on these claims, the plaintiff obtained an ex-parte ad-interim injunction on October 24, 2024 from the Bombay High Court.

Defendants' Contentions:The defendants argued that the plaintiff misrepresented their trademark before the Court. While the defendants’ actual registered trademark consists of six rhinos (three on each side facing each other), the plaintiff misrepresented it as containing only two rhinos to show deceptive similarity.The defendants also alleged that the plaintiff quoted a partial and misleading excerpt from their reply to a cease-and-desist notice, creating a false impression that the defendants had admitted to the likelihood of confusion.The defendants contended that the ex-parte injunction was obtained by suppressing material facts and misleading the Court, thereby violating legal principles governing injunctions.

Defendants’ Arguments (Applicants for Vacation of Injunction):Misrepresentation of the Defendants’ Trademark: The plaintiff knowingly misrepresented the defendants’ registered trademark, depicting it as having only two rhinos, rather than six rhinos facing each other in three pairs. This misrepresentation was repeated in the plaintiff’s pleadings, exhibits, and comparative analysis, misleading the Court into granting the injunction. Suppression of Material Facts: The registration certificate of the defendants' trademark was buried in voluminous exhibits without being highlighted in an objective manner.bThe plaintiff did not disclose that the defendants’ full trademark looked different from what was presented in the comparative table before the Court. Selective Quotation from the Defendants' Reply to Cease-and-Desist Notice: The plaintiff quoted only part of a sentence from the defendants’ reply, creating the impression that the defendants admitted the possibility of confusion.The full sentence actually refuted any likelihood of confusion.

Legal Precedents Cited by the Defendants:S.P. Chengalvaraya Naidu vs. Jagannath (1994) 1 SCC 1 – Fraud vitiates everything. If an order is obtained by misleading the Court, it must be vacated. Ramrameshwari Devi & Ors. vs. Nirmala Devi & Ors. (2011) 8 SCC 249 – Courts should exercise caution before granting ex-parte injunctions, and they should issue short notices wherever possible. Kewal Ashokbhai Vasoya & Anr. vs. Surabhakti Goods Pvt. Ltd. (2022 SCC OnLine Bom 3335) – Courts must assess whether the plaintiff made full and fair disclosures before granting ex-parte relief.

Plaintiff’s Arguments (Opposing Vacation of Injunction):No False Representation:;The plaintiff did not mislead the Court regarding the defendants’ trademark.;The plaintiff’s depiction of the defendants’ mark with only two rhinos was based on the defendants' own statements in their reply to the cease-and-desist notice. Material Facts Were Disclosed: The defendants’ full registered trademark was disclosed in paragraph 46 of the plaint. The registration certificate was attached to the exhibits, proving no suppression.Use of "SH" Mark by the Defendants: The defendants had earlier agreed in their reply to the cease-and-desist notice to stop using "SH", which proves they had no right to continue using it.

Legal Precedents Cited by the Plaintiff: K.L.F. Nirmal Industries Pvt. Ltd. vs. Marico Limited (2023 Bom HC) – Even if there is a minor incorrect statement, ex-parte injunction should not be vacated unless it causes injustice. Farooq Usman Batliwala vs. Hindustan Unilever Limited (2022 Bom HC) – Courts can uphold ex-parte injunctions in the interest of justice even if some details were inadvertently omitted.

Court’s Discussion on the Judgments and Citations:The Court agreed with the defendants' contention that the plaintiff’s misrepresentation of the defendants’ trademark as having only two rhinos instead of six rhinos was misleading.The Court held that the plaintiff should have fairly presented the entire registered trademark of the defendants and not depicted it in a truncated form. The Court also found that quoting only a part of the defendants' reply to the cease-and-desist notice was misleading and created an incorrect impression.  However, regarding the use of "SH" by the defendants, the Court found that the defendants had earlier agreed to stop using the mark. Therefore, the injunction related to "SH" was justified.

Court’s Decision and Reasoning:The ex-parte ad-interim injunction concerning the defendants’ trademark (six rhinos) was vacated as the plaintiff obtained it through misleading representations. The injunction concerning the "SH" mark was upheld, as the defendants had already agreed to stop using it in their prior communications. The goods bearing the six-rhino trademark were ordered to be de-sealed and returned to the defendants.  However, goods bearing the "SH" mark would remain seized until further orders.

Conclusion:The Bombay High Court partly allowed the defendants' application, emphasizing the importance of full and honest disclosure while seeking ex-parte relief. The ruling reinforces the principle that any attempt to mislead the Court, even through selective representation of facts, can lead to vacation of reliefs granted.

Case Title: Pidilite Industries Limited Vs. Astra Chemtech Private Limited & Ors.

Date of Order: February 6, 2025

Case No.: Interim Application (Lodging) No. 37828 of 2024 in Commercial IP Suit (Lodging) No. 32867 of 2024

Neutral Citation: 2025:BHC-OS:1821

Court: High Court of Judicature at Bombay

Judge: Hon'ble Justice Manish Pitale

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.

Tractors and Farm Equip Ltd. Vs. Massey Ferguson Corp.

Naked Licensing of Trademark and its Effect

Introduction:The case of Tractors and Farm Equipment Limited (TAFE) Vs. Massey Ferguson Corp (MFC) revolves around the doctrine of naked licensing—where a trademark owner allegedly fails to exercise quality control over a licensed brand, leading to possible abandonment of trademark rights.TAFE, which has used the Massey Ferguson (MF) brand in India since 1960, argued that MFC did not supervise or enforce quality standards over its products for over 60 years, effectively abandoning its trademark in India. MFC countered that it remained the legal owner and had conducted sporadic quality checks.The Madras High Court found prima facie evidence of naked licensing, noting that MFC’s lack of enforcement may amount to abandonment. To prevent disruption, the Court maintained the status quo, allowing TAFE to continue using the MF brand until the final trial determines ownership and licensing rights. This case is a landmark in Indian trademark law, addressing the consequences of long-term non-supervision in licensing agreements.

Factual Background of Proceedings:TAFE: A prominent Indian manufacturer of tractors and agricultural equipment, which has used the Massey Ferguson (MF) brand in India since 1960 under various agreements with MFC.MFC: A US-based corporation that owns the MF trademarks globally and claims to have only licensed their use to TAFE.

Longstanding Business Relationship:A Joint Venture (JV) Agreement was signed in 1960, followed by multiple licensing agreements.Over six decades, TAFE used and built the MF brand in India, developing infrastructure, dealer networks, and technological know-how.Termination of Agreements & Legal Dispute:A Standstill Agreement (2014–2019, renewed in 2019) restricted TAFE from increasing its shareholding in AGCO (MFC’s parent company).In April 2024, MFC unilaterally terminated the trademark licensing agreements, asserting its ownership rights.TAFE challenged the termination, arguing that MFC had abandoned its trademark in India by failing to exercise quality control over the brand.TAFE sought an interim injunction to prevent MFC from interfering with its continued use of the MF trademarks​

.

TAFE’s Argument: MFC Has Abandoned the MF Trademark in India:TAFE claimed that MFC’s failure to exercise quality control over its MF-branded products for over 60 years resulted in abandonment of trademark rights. The key points raised were:MFC did not enforce any quality control over TAFE’s tractors and agricultural equipment in India. TAFE has independently built the MF brand’s reputation in India through innovation, manufacturing, and customer service without any direct involvement from MFC. Public Perception: Farmers, distributors, and consumers associate MF-branded tractors solely with TAFE, proving that MFC’s role has diminished. MFC never directly manufactured or sold MF-branded tractors in India, further weakening its claim to active ownership​.

MFC’s Counterarguments: No Abandonment, Quality Control Was Exercised:MFC countered TAFE’s naked licensing claim by arguing that:MFC is the registered proprietor of the MF trademark in India, and TAFE was only a permitted user under various licensing agreements.Periodic quality control checks were conducted, including:Inspections at TAFE’s manufacturing plants.Correspondence regarding product modifications.Opposition filings against third-party trademark applications to protect MF brand integrity.TAFE cannot claim abandonment while simultaneously relying on the licensing agreements. Under the doctrine of election, TAFE cannot challenge MFC’s ownership while enjoying benefits under the trademark license​.

Court’s Analysis and Findings on Naked Licensing:The Court conducted a detailed examination of whether MFC exercised sufficient quality control and made the following observations: Prima Facie Case for Naked Licensing.The Court acknowledged that MFC failed to demonstrate continuous and effective quality control over MF-branded products in India. Only sporadic instances of quality control efforts were presented by MFC, which the Court found insufficient to disprove abandonment​.TAFE used the MF brand continuously since 1960 without any interference from MFC, indicating an implicit acquiescence to TAFE’s control over brand quality.Acquiescence & Abandonment:The Court noted that MFC had:Never directly manufactured MF-branded tractors in India. Allowed TAFE to use the mark without active supervision. Failed to specify quality control measures in termination notices—suggesting that quality was never a genuine concern​.Public Interest Consideration:The Court emphasized the importance of public reliance on TAFE’s MF-branded tractors:TAFE employs over 5,600 workers and indirectly supports 1.6 million livelihoods. Millions of Indian farmers use MF-branded tractors sold by TAFE, and disrupting their service would have severe economic consequences.

Final Decision: Status Quo in Favor of TAFE.The Court did not conclusively rule that MFC abandoned the trademark but found strong prima facie evidence that it failed to exercise quality control.It maintained the status quo, allowing TAFE to continue using the MF brand in India until the full trial determines ownership and licensing rights.The Court rejected MFC’s request for an immediate injunction, stating that the issue required full trial consideration with oral and documentary evidence.

Key Takeaways from the Judgment on Naked Licensing:Sporadic quality checks are insufficient—trademark owners must consistently enforce quality control to maintain ownership.Long-term non-enforcement can be construed as abandonment, especially when the licensee builds brand goodwill independently.Public interest considerations played a significant role in favoring TAFE.Indian trademark law does not explicitly recognize naked licensing as abandonment, but courts may interpret prolonged non-supervision as a ground for loss of rights.

Conclusion:Trademark abandonment through non-use is a significant issue in long-term licensing relationships.Public perception & reliance on a brand’s Indian user may override foreign ownership claims.Preliminary injunctions favoring longstanding users may be granted to prevent irreparable harm.

The outcome of the final trial will determine whether TAFE secures ownership over MF trademarks in India or MFC reclaims its exclusive rights.

Case Title: Tractors and Farm Equipment Limited Vs Massey Ferguson Corp

Date of Order: February 5, 2025

Case Number: C.S.(Comm.Div.) No.190 of 2024

Neutral Citation: 2025:MHC:319

Court: High Court of Judicature at Madras

Judge: Hon'ble Justice Abdul Quddhose

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

Anshul Vaish Vs Hari Om and Co.

Hindi translations of the Trademark written in English constitute trademark infringement

Introduction:This case pertains to a trademark rectification dispute before the Delhi High Court, wherein the petitioner, Anshul Vaish, sought the removal of the respondent’s registered trademark "ROHIT" from the Register of Trade Marks. The matter involves competing claims over prior use, deceptive similarity, and alleged bad faith registration.

Petitioner’s Business & Trademark Use: The petitioner, Anshul Vaish, is a partner in M/s Rohit Wrapers, a firm incorporated on April 13, 2000, engaged in the manufacturing and trading of PVC pipes. The petitioner has used various trademarks, including "Rohit Wrapers," "Rohit Tubes," "Rohit Varadan," "Rohit Gold," and "Rohit Durable", with the name “Rohit” as the dominant feature. The petitioner filed Trademark Application No. 1989126 on July 5, 2010, which was registered in February 2016.

Respondent’s Trademark Registration: The respondent, Hari Om & Co., applied for trademark "ROHIT" under Application No. 2408221 on October 9, 2012, claiming use since January 1, 2005. The mark was registered on August 14, 2014 in Class 17 for PVC pipes.

Dispute Between Parties: The petitioner alleged that the respondent's mark was deceptively similar and was adopted in bad faith. The respondent issued a legal notice in 2015 to the petitioner, claiming trademark infringement. In response, the petitioner filed for rectification of the respondent's trademark registration, asserting prior and continuous use since 2000.

Arguments by the Petitioner (Anshul Vaish & Rohit Wrapers): Prior Use & Continuous Business Activity: The petitioner had been using "Rohit" as a trademark and trade name since April 2000, predating the respondent's claimed use of 2005. Documentary evidence included TIN Registration (2000), Central Excise Certificate (2002), Sale Invoices (2004-2016), and a Bureau of Indian Standards (BIS) Certificate (2003). Trademark Similarity & Deceptive Use: The respondent adopted "Rohit" in Hindi, which is phonetically and visually identical to the petitioner’s mark in English. The respondent misled consumers, causing confusion and associating its goods with the petitioner’s established brand.Bad Faith Adoption & Fraudulent Claims: The respondent's invoices for 2005-2006 contained a Taxpayer Identification Number (TIN) that was only granted in 2007, exposing document falsification. The respondent’s Partnership Deed was modified in 2007 to include PVC pipes, contradicting their claim of use since 2005. Violation of Trademark Law & Paris Convention: Under Sections 9(1)(a), 9(2)(a), 11(1), and 11(3)(a) of the Trade Marks Act, 1999, the registration of deceptively similar marks is prohibited. Article 8 of the Paris Convention mandates that trade names are protected even without registration.

Arguments by the Respondent (Hari Om & Co.):Legitimate Registration & Prior Use Claim: The respondent argued that it had been using the mark since 2005, predating the petitioner’s trademark application. The trademark was registered in 2012 without any opposition. Business Growth & Market Presence: The respondent submitted invoices and sales data to show extensive business activity under the disputed trademark since 2005. Defensive Argument Against Fraud Allegations: The respondent denied any fraudulent intent and stated that its adoption of the mark was coincidental and not in bad faith.

Discussion on Judgments & Cited Cases:The Court referred to several landmark decisions while evaluating deceptive similarity and prior use claims:  Delhi High Court in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr. (2014 SCC OnLine Del 1953): Held that dominant features of trademarks are crucial for assessing infringement. The respondent’s adoption of “Rohit” in Hindi was identical in sound and meaning to the petitioner’s mark, leading to confusion. Delhi High Court in Bhatia Plastics v. Peacock Industries Ltd. (1994 SCC OnLine Del 387):Held that English and Hindi translations of the same word can constitute trademark infringement (e.g., "MAYUR" vs. "PEACOCK"). Bombay High Court in Indian Express Ltd. v. Chadra Prakash Shivhare (2015 SCC OnLine Bom 5541):Ruled that a registered mark cannot be used in another language if it creates confusion (e.g., “Indian Express” in Devanagari script).

Reasoning of the Judge:Hon'ble Court ruled in favor of the petitioner based on the following findings: Petitioner’s Prior Use Proven: The petitioner had been using "Rohit" since 2000, whereas the respondent's claimed use from 2005 was unsupported by credible evidence. Respondent’s False User Claim & Forged Documents: The TIN number in the respondent's invoices for 2005-2006 was issued only in 2007, proving falsification. The respondent’s Partnership Deed was modified in 2007 to include PVC pipes, disproving its claim of business since 2005. Deceptive Similarity Between the Trademarks: The Court found that the respondent’s Hindi trademark was phonetically, visually, and conceptually identical to the petitioner’s English mark. Such usage was likely to cause consumer confusion and deception. Bad Faith Intent of the Respondent: The respondent deliberately copied the petitioner’s mark to benefit from its established goodwill.

Decision of the Court:The respondent’s trademark registration (No. 2408221 in Class 17) was canceled.The Trade Marks Register was directed to rectify the entry and remove the mark. The Controller General of Patents, Designs, and Trade Marks was notified for compliance.

Concluding Note:This case underscores the importance of prior use in trademark disputes and how courts assess deceptive similarity between marks in different languages. The judgment reaffirms that: Prior continuous use prevails over later registrations. Trademark adoption in bad faith is grounds for cancellation. Translations of marks into different languages can still constitute infringement. This ruling provides strong protection for brand owners against dishonest competitors attempting to ride on their goodwill.

Case Title: Anshul Vaish Vs Hari Om and Co.

Date of Order: February 07, 2025

Case No.: C.O. (COMM.IPD-TM) 86/2021

Neutral Citation: 2025:DHC:733

Name of Court: Delhi High Court

Judge: Hon’ble Ms. Justice Mini Pushkarna

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

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

Natco Pharma Ltd. Vs Kudos Pharma Ltd.

Effect of Expiry of Subject Matter Patent during pendency of Appeal proceeding

Introduction:This case concerns an intellectual property dispute in the pharmaceutical sector. The appeal, filed under Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908, read with Section 13(1) of the Commercial Courts Act, 2015, and Section 10 of the Delhi High Court Act, 1966, challenges the ad interim injunction imposed by a Single Judge of the Delhi High Court on Natco Pharma Limited. The injunction restrains Natco from manufacturing or selling Olaparib under the brand name BRACANAT or any other brand until the final disposal of the suit.

Factual Background of Proceedings:Kudos Pharmaceuticals Limited and other respondents filed a suit (CS (COMM) 29/2023) seeking to restrain Natco Pharma from manufacturing and selling Olaparib, alleging infringement of its patent rights. The Single Judge granted an ad interim injunction on 01.03.2024 in favor of Kudos Pharmaceuticals. Natco Pharma Limited challenged this order before the Division Bench of the Delhi High Court via FAO(OS) (COMM) 43/2024.

During the pendency of the appeal, the patent for Olaparib expired: The Supreme Court, in SLP (C) 16237/2024 (Novartis AG & Anr. vs. Natco Pharma Limited), had held that once a patent expires, an injunction based on patent rights ceases to have practical relevance. Similarly, in another case, Indoco Remedies Ltd. v. Bristol Myers Squibb Holdings Ireland Unlimited Company & Ors., the Delhi High Court Division Bench had also observed that an injunction loses relevance post-expiry of the patent. Given these precedents, Natco Pharma argued that the injunction should be vacated.

Arguments of the Appellant (Natco Pharma Limited):Patent Expiry: The appellant contended that since the patent had expired, the injunction was meaningless and should be vacated. Potential Prejudice: Natco argued that the injunction, if not set aside, could be misused in future litigations or create confusion in ongoing commercial dealings. Supreme Court's Precedents: The appellant relied on the Supreme Court’s ruling in Novartis AG & Anr. vs. Natco Pharma Limited, asserting that the Division Bench should not entertain the appeal since the patent had expired.No Continuing Infringement: Natco argued that patent-based injunctions serve no purpose once the patent term ends, as exclusivity ceases to exist.

Arguments of the Respondents (Kudos Pharmaceuticals Limited & Others):Single Judge’s Order Valid at the Time of Issuance: The respondents maintained that the order was passed when the patent was still in force, making the injunction valid at that time. Relevance of Injunction in Trial Proceedings: Kudos Pharmaceuticals contended that the injunction order might influence future proceedings and should not be dismissed outright. Reliance on Precedents: The respondents referenced the Single Judge’s reasoning and attempted to distinguish their case from past judgments where injunctions had been lifted after patent expiration.

Discussion on Judgments & Cited Cases: Supreme Court’s Order dated 02.08.2024, passed  in SLP (C) 16237/2024 titled Novartis AG & Anr. vs. Natco Pharma Limited, and the Order dated 15.10.2024, passed in the Review Petition (Civil) (D No. 43943/2024): The Supreme Court ruled that once a patent expires, an injunction based on patent rights ceases to have any practical significance. The Court criticized lower courts for continuing to entertain disputes over expired patents. This case was directly applicable to Natco Pharma’s appeal, reinforcing the appellant’s argument.Delhi High Court’s Division Bench Order dated 06.10.2022, passed in FAO(OS) (COMM) 3/2020, titled Indoco Remedies Ltd. v. Bristol Myers Squibb Holdings Ireland Unlimited Company & Ors, The Division Bench held that injunctions should not extend beyond the life of a patent.The case clarified that post-expiry commercial rights return to the public domain, rendering injunctions meaningless.These two key precedents strongly supported Natco Pharma's position and influenced the Division Bench’s decision.

Reasoning of the Division Bench: Reaffirming Supreme Court's Position: The Bench agreed with the Supreme Court’s observation that a patent’s expiry renders injunctions meaningless. Ensuring No Prejudice in Trial Proceedings: To address Natco’s concerns, the Bench clarified that the Single Judge’s order would not be treated as binding in the trial stage. Avoiding Unnecessary Litigation: The Bench emphasized that no further time should be spent litigating expired patents, dismissing the appeal while leaving legal questions open for trial.

Decision of the Court:The Delhi High Court disposed of the appeal in favor of Natco Pharma Limited.

The Bench did not affirm the Single Judge’s injunction but left the legal questions open for further consideration at trial. It ruled that the injunction should not prejudice Natco in future proceedings or be considered binding in other cases.

Concluding Note:This case is significant for patent litigation in India, particularly in the pharmaceutical sector. It reinforces the principle that injunctions lose relevance once a patent expires. The ruling aligns with global intellectual property norms, where expired patents return products to the public domain, fostering competition and access to medicines.

Case Title: Natco Pharma Ltd. Vs Kudos Pharma Ltd.

Date of Order: 31.01.2025

Case No.: FAO(OS) (COMM) 43/2024

Neutral Citation: 2025:DHC:611-DB

Name of Court: Delhi High Court

Coram: Hon’ble Mr. Justice Navin Chawla, Hon’ble Ms. Justice Shalinder Kaur

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

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

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

Jurisdiction of Court and Defendant's product available on third party interactive website

Introduction: The present case concerns a trademark infringement and passing off suit filed by Johnson & Johnson PTE Ltd. against Mr. Abbireddi Satish Kumar and others before the Delhi High Court. The plaintiff alleged that the defendants were selling electrolyte drinks under the deceptively similar mark "ORSI" and using a trade dress similar to its well-known brand, "ORS-L" / "ORSL". The main issue before the Court was whether the Delhi High Court had territorial jurisdiction to entertain the suit, as the defendants contested the jurisdiction, arguing that they do not conduct business in Delhi. The suit was filed under:Section 134(1) of the Trade Marks Act, 1999. Sections 27 and 29 of the Trade Marks Act, 1999. Section 20(c) of the Civil Procedure Code (CPC), 1908.

Factual Background of the Proceedings: Plaintiff’s Business & Trademark Usage: Johnson & Johnson PTE Ltd. (plaintiff) is a Singapore-based company that manufactures healthcare products. It acquired the brand ORS-L and ORSL from Jagdale Industries Limited via an Assignment Deed dated November 7, 2014. The ORS-L brand has been in use in India since 2003, with multiple flavors (Lemon, Orange, and Apple). The plaintiff is the registered proprietor of various ORS-L and ORSL formative trademarks in Classes 30, 31, 32, and 33. Defendant’s Alleged InfringementThe defendants were marketing and selling electrolyte drinks under the brand "ORSI", which the plaintiff claimed was deceptively similar to "ORSL." Defendant No. 1 (Mr. Abbireddi Satish Kumar) was the marketer of the impugned products under "ORSI." Pure Tropic (Defendants 2-5) was the manufacturer of these products. Defendant No. 1 had obtained trademark registration (No. 5323696, dated February 10, 2022) for the mark ORSI and had applied for additional trademarks under Class 32.

Plaintiff’s Cease-and-Desist Actions & Discovery of Infringement: In September 2022, the plaintiff discovered the impugned ORSI products in India. A Cease-and-Desist notice (dated September 5, 2022) was sent to Defendant No. 1 and M/s Pure Tropic, but it remained undelivered. The plaintiff later found that Defendant No. 1 had filed another trademark application (No. 5525855, dated July 12, 2022) for ORSI. In September 2023, the plaintiff discovered that the defendants were selling their products on the website www.dhanalakshmiagency.in, which allegedly delivers products across India, including Delhi.

Defendant No. 1’s Arguments (Application under Order VII Rule 11 CPC - Rejection of Suit): The defendant filed an application under Order VII Rule 11 of CPC, seeking rejection of the plaint on the grounds of lack of territorial jurisdiction. Key arguments:The suit was filed to harass and eliminate a competitor. No cause of action arose in Delhi as Defendant No. 1’s business was concentrated in Andhra Pradesh (85%), with small portions in Odisha, Tamil Nadu, and Telangana. The plaintiff failed to provide sufficient evidence to establish that the impugned products were sold in Delhi. The third-party website (www.dhanalakshmiagency.in) was allegedly operated by a trader in Vijayawada (Mr. Sagar), who previously worked for the plaintiff. The defendant had no connection with the website. The website’s jurisdiction clause mentioned Delhi courts, but this did not prove actual sales in Delhi.

Plaintiff’s Arguments in Reply: The plaintiff opposed the application under Order VII Rule 11 CPC, asserting that:The defendant’s arguments did not satisfy the threshold for rejection under Order VII Rule 11 CPC. The website (www.dhanalakshmiagency.in) offered delivery to Delhi, which was sufficient to invoke jurisdiction. The website was modified and later shut down only after the filing of the suit—indicating an attempt to evade legal action. The defendants' product was listed on IndiaMart, which offered nationwide delivery, including Delhi.

Court’s Reasoning on Territorial Jurisdiction: The Delhi High Court rejected the defendant's application, ruling that it had territorial jurisdiction based on the following findings: Presence of an interactive website: The website www.dhanalakshmiagency.in was accessible from Delhi and accepted orders from Delhi. The website delivered across India, including Delhi, which constitutes "use in the course of trade" under Section 2(2)(c) of the Trade Marks Act, 1999.  Legal Precedents Supporting Territorial Jurisdiction: Shakti Fashion & Another v. Burberry Limited, 2022 SCC OnLine Del 1636Held that territorial jurisdiction exists if the defendant offers goods for sale through an interactive web portal. Burger King Corporation v. Techchand Shewakramani, 2018 SCC OnLine Del 10881Held that advertising and promoting goods online constitutes ‘use of a mark’ under the Trade Marks Act.Plaintiff's Cause of Action Was Valid:The order placed by the plaintiff from Delhi was accepted, even if the delivery had not been completed. Use of a mark includes advertising and offering goods for sale, even if no actual sale occurs in the jurisdiction.  No Merits in Defendant’s Arguments: The defendant’s plea that it had no connection to the website was not supported by evidence. The website was modified and later deactivated after the filing of the suit, showing attempted evasion.

Decision of the Court: The Delhi High Court dismissed Defendant No. 1’s application under Order VII Rule 11 CPC, ruling that:The suit could proceed in Delhi since the impugned products were advertised and available for order in Delhi. Territorial jurisdiction was established based on online accessibility and intent to sell in Delhi. The Court held that:The plaintiff had raised triable issues regarding infringement and passing off. The defendants’ arguments lacked merit and were an attempt to avoid accountability.

Concluding Note:This case reinforces the principle that in trademark infringement cases, territorial jurisdiction extends to locations where the impugned products are advertised and available for sale, even if no actual sales occur. The judgment upholds Delhi’s jurisdiction in online trademark disputes, protecting brand owners from deceptive business practices.

Case Title: Johnson & Johnson PTE Ltd. Vs. Mr. Abbireddi Satish Kumar

Date of Order: February 4, 2025

Case No.: CS(COMM) 801/2023

Neutral Citation: 2025:DHC:662

Court: High Court of Delhi

Presiding Judge: Hon’ble Ms. Justice Mini Pushkarna

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

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

Godai Global Inc. Vs. Shahnawaz Siddiqui

Bad Faith Adoption and Trademark Rectification

Introduction:This case pertains to a rectification petition filed by Godai Global Inc., a South Korean company, under Section 57 of the Trade Marks Act, 1999 before the High Court of Delhi. The petition sought the removal of a device mark registered under application number 5635163 in Class 3 by the respondent, Shahnawaz Siddiqui. The primary contention of the petitioner was that the respondent had dishonestly registered an identical or deceptively similar mark to the petitioner’s well-established trademark, “Beauty of Joseon,” which is widely recognized in the global skincare market.

Factual Background of the Proceedings:Petitioner’s Business & Trademark UsageGodai Global Inc. is a South Korean entity engaged in the manufacture of Korean beauty and personal care products across 54 countries under the brand name "Beauty of Joseon."Since 2010, the company has been distributing skincare products such as serums, cleansing oils, sunscreens, and pore masks, inspired by traditional Korean beauty treatments. The petitioner registered its website (https://beautyofjoseon.com/) on March 2, 2017, making its products globally available, including in India via e-commerce platforms. Entry into the Indian Market & Opposition to Respondent’s MarkIn August 2022, the petitioner officially commenced exports to India. The petitioner applied for international trademark protection for its device mark in India, but in December 2023, the Trade Mark Registry issued a provisional refusal, citing lack of distinctiveness. During this process, the petitioner discovered that Respondent No. 1 (Shahnawaz Siddiqui) had registered an identical mark under application number 5635163 on October 3, 2022, on a ‘proposed to be used’ basis. Additionally, Respondent No. 1 also applied for registration of the word mark “Beauty of Joseon” under application no. 6236043. The petitioner opposed this application on March 7, 2024.

Proceedings in the Present Petition: The petition was filed under Section 57 of the Trade Marks Act, 1999, seeking removal of the registered device mark. The High Court issued notice on July 4, 2024, granting four weeks for Respondent No. 1 to file a reply. Despite service, the respondent did not file a reply or make an appearance. Consequently, the right to reply was closed on October 8, 2024, and the respondent was proceeded ex-parte on October 21, 2024 with an interim injunction granted in favor of the petitioner.

Petitioner’s Arguments (Godai Global Inc.): Bad Faith Registration: The respondent obtained the trademark dishonestly and in bad faith, intending to unlawfully benefit from the goodwill of the petitioner.Prior Use & Global ReputationThe petitioner’s device mark has been registered in approximately 30 countries and has been in use since 2010.Various international magazines have recognized and endorsed the petitioner’s products.Likelihood of ConfusionThe impugned mark is identical to the petitioner’s mark and is registered for similar goods (skincare products), creating a high likelihood of consumer confusion.

Legal Precedents Supporting Cancellation of the Mark: Kia Wang v. Registrar of Trademarks & Anr. (2023 SCC OnLine Del 5844)Held that where a mark is identical to a globally recognized brand, the registration must be canceled due to bad faith adoption.BPI Sports LLC v. Saurabh Gulati & Anr. (2023 3 HCC (Del) 164)Ruled that bad faith registrations made after a brand’s entry into the market warrant cancellation.Respondent’s Arguments (Shahnawaz Siddiqui & Anr.)No defense was presented, as the respondent did not appear before the Court.

Court’s Analysis & Findings: Failure of Respondent to Contest the CaseAs no reply was filed by Respondent No. 1, the Court deemed the averments made by the petitioner to be admitted in law. Comparison of the MarksA side-by-side comparison revealed that the impugned mark was nearly identical to the petitioner’s device mark.The Korean characters in the petitioner’s mark had no relevance to India, reinforcing that the respondent had copied the mark.Application of the ‘Bad Faith’ PrincipleFollowing the rulings in Kia Wang (supra) and BPI Sports (supra), the Court found that bad faith adoption was evident.The respondent’s actions constituted ‘trademark squatting’, which is prohibited under Section 11(10)(ii) of the Trade Marks Act, 1999.  Consumer Deception & Unfair AdvantageThe identical nature of the marks and their application in the same class of goods made consumer confusion inevitable. The Court emphasized that unauthorized registration of well-known international trademarks in bad faith is not permissible.

Decision: The Court allowed the rectification petition, directing the Trade Mark Registry to remove the impugned registered trade mark (No. 5635163) from the Register of Trade Marks.A copy of the order was sent to the Trade Mark Registry for compliance.

Concluding Note: This judgment reinforces the principle of bad faith adoption in trademark disputes. The ruling underscores that Indian courts will not tolerate ‘trademark squatting’ and will protect international brand owners from unfair advantage-seeking registrations.

Case Title: Godai Global Inc. Vs. Shahnawaz Siddiqui & Anr.

Date of Order: January 28, 2025

Case No.: C.O. (COMM.IPD-TM) 81/2024 

Neutral Citation: 2025:DHC:649

Name of Court: High Court of Delhi

Presiding 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.