Saregama India Limited Vs Vels Film International Limited & Ors.

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

Date of Order: 30.01.2025

Case No.: CS(COMM) 38/2025

Neutral Citation: 2025:DHC:567

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Mini Pushkarna

Facts of the Case:Saregama India Limited filed a suit against Vels Film International Limited, alleging copyright infringement over the use of the song "En Iniya Pon Nilave" from the Tamil film "Moodu Pani" (1980). The plaintiff claimed ownership of the sound recording and the underlying musical and literary works, acquired via a 1980 assignment agreement with the film's producer. The defendants had used the song in their upcoming film "Aghathiyaa" without the plaintiff’s authorization, asserting that they had obtained rights from the music composer.

Legal Issues:

1. Does Saregama India Limited own the copyright to the song through the producer’s assignment?

2. Does the music composer retain rights under Sections 13(4) and 14 of the Copyright Act, 1957?

3. Is the 2012 amendment to the Copyright Act, enhancing authors' rights, applicable to pre-existing agreements?

Reasoning and Analysis by the Judge:The Court analyzed the Copyright Act's provisions and relevant case law, including Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Association (1977) and International Confederation of Societies of Authors and Composers (2016).Under Section 17, the producer of the cinematograph film, not the music composer, was the first owner of the sound recording, including the musical and literary works.The assignment of rights to Saregama India Limited was valid and covered the disputed song.The music composer had exhausted their rights regarding the song's use in cinematograph films upon the producer’s assignment.The 2012 amendment to Section 17, protecting authors' rights in cinematograph works, was held to be prospective and inapplicable to the 1980 agreement.

Decision of the Court:The Court ruled in favor of Saregama India Limited, holding that the defendants had infringed the plaintiff's copyright. However, given the upcoming release of "Aghathiyaa" and the defendant's financial investment, the Court permitted the film's release with the song if the defendants deposited ₹30 lakhs with the Registrar General within two days. Failure to do so would result in an injunction against using the song.This judgment reaffirms the producer’s copyright primacy over underlying works in cinematograph films and underscores the non-retrospective application of the 2012 Copyright Act amendments.

Advocate Ajay Amitabh Suman,IP Adjutor [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.

Strix Limited Vs. Maharaja Appliances Limited

Under Section 27 of the General Clauses Act, 1897, service of a letter is presumed to be effective if sent to the correct address

Case Name: Strix Limited Vs. Maharaja Appliances Limited

Court: High Court of Delhi at New Delhi

Case Number: CS(COMM) 403/2018

Neutral Citation: 2025:DHC:828

Date of Judgment: February 11, 2025

Judge: Hon'ble Ms. Justice Mini Pushkarna

Introduction:The case revolves around an intellectual property dispute, where Strix Limited, the plaintiff, secured an ex-parte decree against Maharaja Appliances Limited. The defendant later moved applications seeking to set aside the decree and stay execution proceedings, citing lack of notice and procedural lapses. The Delhi High Court examined the legitimacy of these claims, applying principles of due diligence, procedural compliance, and delay condonation in commercial litigation.

Factual Background: 

Nature of Suit: Strix Limited had filed a commercial suit against Maharaja Appliances Limited, which was decreed ex-parte on October 20, 2023. The court awarded damages of Rs. 50,00,000 and costs of Rs. 31,44,925 against the defendant, payable within three months, failing which interest at 7% simple interest would accrue from the judgment date.

Defendant’s Claims: The defendant claimed it was unaware of the ex-parte judgment until November 30, 2023, when it received a legal notice from the plaintiff’s counsel. The defendant attributed its lack of participation in the case to a change in company management, miscommunication, and procedural irregularities.Organizational Changes: The defendant's business division, Maharaja Whiteline Industries Pvt. Ltd., was sold to M/s SEB Internationale SAS (France), which allegedly led to disruption in legal oversight.

Procedural Background:The plaintiff secured an interim injunction on September 10, 2009, restraining the defendant from certain actions.The defendant's right to lead evidence was closed on May 21, 2014, as its witness failed to appear.The defendant’s counsel sought discharge on August 12, 2014, citing lack of instructions.Notices were issued to the defendant on March 22, 2022, but the defendant did not appear.The matter was listed for final hearing on July 27, 2023, noting that the defendant had ceased participation.The court delivered an ex-parte decree on October 20, 2023.The defendant filed applications under Order IX Rule 13 CPC, seeking to set aside the decree, along with condonation of delay applications.

Issues Involved:Whether the defendant was prevented by sufficient cause from appearing when the suit was called for hearing? Whether the ex-parte decree should be set aside under Order IX Rule 13 CPC? Whether the delay of 156 days in filing and 110 days in re-filing the setting-aside application should be condoned? Whether the execution proceedings should be stayed pending disposal of these applications?

Submissions of the Parties:

Defendant’s Submissions:The defendant was unaware of the suit's progress due to management transfer. No explicit order directing ex-parte proceedings was passed.Notices were sent to an outdated email registered with the MCA, which was no longer in use.The delay in filing the application was due to administrative lapses and counsel’s unavailability.Relief should be granted based on Collector, Land Acquisition, Anantnag & Anr. v. Mst. Katiji & Ors., (1987) 2 SCC 107 and Rani Kusum (Smt) v. Kanchan Devi (Smt) & Ors., (2005) 6 SCC 705.

Plaintiff’s Submissions:The defendant was aware of the proceedings and had willfully neglected to appear.The previous counsel had formally notified the defendant via registered post.Court-issued notices were deemed served, as per Section 27 of the General Clauses Act, 1897.The defendant acted negligently and cannot claim ignorance.The applications should be dismissed under Govt. of Maharashtra (Water Resources Department) v. Borse Brothers Engineers and Contractors Pvt. Ltd., 2021 SCC OnLine SC 233, which mandates strict adherence to procedural timelines in commercial litigation.

Judgments Cited and Their Context in This Case:

Jain Developers & Others Versus Raja R. Chhabria and others, 2018 SCC OnLine Bom 121, Para 29: Under Section 27 of the General Clauses Act, 1897, service of a letter is presumed to be effective if sent to the correct address.

Parimal v. Veena Alias Bharti, 2011 SCC OnLine SC 311: Defined "sufficient cause" in setting aside ex-parte decrees. Applied here to assess the defendant's claims.

Jain Developers & Ors. v. Raja R. Chhabria & Ors., 2018 SCC OnLine Bom 121: Established presumption of service if notice is sent to the correct address. Applied to rebut the defendant’s claim of non-service.

Moddus Media Pvt. Ltd. v. M/s Scone Exhibition Pvt. Ltd., 2017 SCC OnLine Del 8491: Held that corporate litigants must act diligently. Used to counter the defendant's negligence argument.

Dwarika Prasad (D) Thr. LRs v. Prithvi Raj Singh, 2024 SCC OnLine SC 3828: Relied on by the defendant but distinguished as it involved an illiterate party, whereas the defendant here was a corporate entity.

Balu @ Madhavrao Shankarrao Ghorpade v. Radhakkabai Panditrao Ghorpade, 2003 SCC OnLine Bom 739: Established that a decree can be ex-parte even if no formal order is passed. Applied to validate the proceedings.

Court’s Reasoning and Analysis:

Presumption of Service under General Clauses Act: Under Section 27 of the General Clauses Act, 1897, service of a letter is presumed to be effective if sent to the correct address. Once a letter is properly dispatched by registered post, the burden shifts to the party disputing the delivery to provide contrary proof. (See: Jain Developers & Others Versus Raja R. Chhabria and others, 2018 SCC OnLine Bom 121, Para 29). In the present case, the defendant has failed to provide such proof.

Delay in Filing and Re-Filing: The cumulative delay of 266 days was held inexcusable, reflecting gross negligence.

No Sufficient Cause: The defendant’s explanations were deemed inadequate, and its conduct was seen as deliberate delay.

Commercial Courts Act, 2015: The court emphasized strict adherence to timelines in commercial litigation, citing Borse Brothers Engineers (2021 SCC OnLine SC 233).

Final Decision:

Application to Set Aside Ex-Parte Decree (I.A. 39008/2024): Dismissed.

Application for Condonation of Delay in Filing (I.A. 39010/2024): Dismissed.

Application for Condonation of Delay in Re-Filing (I.A. 39009/2024): Dismissed.

Application for Stay on Execution Proceedings (I.A. 43736/2024): Dismissed.

Execution Proceedings to Continue: The executing court was allowed to proceed with execution.

Conclusion: This case underscores the importance of due diligence and procedural compliance in commercial litigation. The court reinforced the principle that a litigant, especially a corporate entity, cannot claim ignorance when multiple notices have been served. The ruling strengthens the jurisprudence on setting aside ex-parte decrees and delay condonation in commercial disputes, setting a high bar for defendants seeking relief under Order IX Rule 13 CPC.

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

Bharat Glass Tube Ltd. Vs. Gopal Glass Works Ltd.

Bharat Glass Tube Ltd. Vs. Gopal Glass Works Ltd. : Burden of proving prior publication of Registered Design is on the Petitioner for rectification

Case Details:Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd.

Case No.: Civil Appeal No. 3185 of 2008 (Arising out of S.L.P. (C) No. 16321 of 2006)

Neutral Citation: MANU/SC/2096/2008

Equivalent Citations: AIR 2008 SC 2520, 2008 (37) PTC 1 (SC)

Court: Supreme Court of India

Bench: Justice A.K. Mathur and Justice Altamas Kabir, H.J.

Date of Judgment: 01.05.2008

Introduction:This case revolves around intellectual property rights in the domain of industrial designs, specifically regarding figured and wired glass sheets. The dispute concerns the validity of a registered design and whether it satisfies the statutory requirements of novelty and originality under Section 4 of the Designs Act, 2000.

The appeal was filed by Bharat Glass Tube Limited against the decision of the Calcutta High Court, which upheld the validity of the registered design of Gopal Glass Works Limited. The key issue was whether the registered design of Gopal Glass was new and original or merely a replication of a pre-existing design.

Factual Background:

Business and Design Registration: Gopal Glass Works Ltd. has been engaged in the manufacture and marketing of figured and wired glass sheets since 1981. They claimed to have originated a new and original industrial design applied to glass sheets using a mechanical process. They procured embossing rollers from a German company, M/s. Dorn Bausch Gravuren GMBH, which were essential for creating the design on glass sheets. Gopal Glass applied for design registration on 29.10.2002 under Class 25-01 of the Designs Act, 2000, and the design was registered on 05.11.2002. They marketed their glass sheets under the name Diamond Square, which gained popularity.

Allegations of Infringement: Gopal Glass discovered that Bharat Glass Tube Ltd. and its associate IAG Co. Ltd. were imitating their registered design. They issued a legal notice on 21.05.2003 warning competitors against infringement. They filed Civil Suit No. 1 of 2004 in the District Court of Mehsana, obtaining a restraint order against IAG Co. Ltd.

Counteraction by Bharat Glass: In response, Bharat Glass Tube Ltd. filed a cancellation petition under Section 19 of the Designs Act, 2000, before the Controller of Patents and Designs, arguing that: The design was not new or original. It had been published previously in India and abroad. The German company had already developed a similar design in 1992.The Assistant Controller ruled in favor of Bharat Glass, canceling the design registration.

Procedural Background:

• Assistant Controller's Decision (2004): Accepted Bharat Glass’s argument and canceled the design registration, citing previous publication in Germany and the UK.
• High Court Appeal (2005):Gopal Glass appealed to the Calcutta High Court. A Single Judge Bench reversed the Assistant Controller’s order, reinstating the design registration.
• Supreme Court Appeal (2008): Bharat Glass appealed against the High Court’s decision.
• The Supreme Court heard the matter and delivered its judgment on 01.05.2008.

Issues Involved:Whether the registered design of Gopal Glass Works Ltd. was new and original under Section 4 of the Designs Act, 2000?Whether the burden of proof to establish prior publication was discharged by Bharat Glass Tube Ltd.?

Submissions of Parties:

Appellant (Bharat Glass Tube Ltd.):The design was not new or original, as it was created in 1992 by a German company (Dorn Bausch Gravuren GMBH). A UK Patent Office document (downloaded from the Internet) showed the design was registered in 1992 in the UK by M/s. Vegla Vereinigte Glaswerke GmbH. The German company had already developed and sold embossing rollers carrying the same pattern.Since Gopal Glass had merely acquired the rollers, it could not claim originality. The Assistant Controller had correctly canceled the registration based on these facts.

Respondent (Gopal Glass Works Ltd.):The rollers manufactured in Germany were not used on glass sheets before in India. The design applied to glass sheets had never been registered or published in India or Germany.Previous registration of a pattern does not mean it was applied to the same article (glass sheets). The Assistant Controller did not consider the visual appeal of the finished product, which is a crucial criterion under the Designs Act.

Discussion on Judgments and Citations:

Key Judgments Cited:

Pugh v. Riely Cycle Co Ltd. (1912) 29 R.P.C. 196:Held that a design is an idea applied to an article, and not just a mere concept.

Dover Ltd. v. Nurnberger Celluloidaren Fabrik Gebruder Wolff [1910] 27 R.P.C. 498:Court rejected protection for a trivial or minor variation of a previously known design.

Interlego A.G. v. Tyco Industries Inc. [1988] 16 R.P.C. 343:Explained the eye appeal test: A design must be judged by how it looks on the final product.

Domestic Appliances and Ors. v. Globe Super Parts, 1981 PTC 239:Cancellation upheld where a design was already published in India before registration.

Gammeter v. Controller of Patents and Designs, AIR 1919 Cal 887:Explained that newness may arise from a new application of an old design to a new product.

Supreme Court’s Reasoning and Analysis:The burden of proof was on Bharat Glass to establish prior publication. The German company only manufactured rollers but never used them to produce glass sheets. No evidence was provided that the same pattern was ever used on glass sheets before registration. The UK Patent document was merely a design registration and not proof of its application on glass. The Assistant Controller failed to assess the visual appeal of the finished product, which is a statutory requirement under Section 4 of the Designs Act, 2000.

Final Decision:The Supreme Court dismissed the appeal with costs of Rs. 50,000, affirming the validity of Gopal Glass Works Ltd.'s registered design.

Key Takeaways from the Judgment:

• Burden of proving A registered Design to be prior published is on the petitioner for rectification.
• A design is judged based on how it looks on the final product, not just its conceptual existence.
• Prior publication must be clearly established with evidence of application to the same article.
• Simply acquiring an older design from a foreign company does not invalidate registration if the design is being applied in a new way.
• Thus, the Supreme Court upheld Gopal Glass Works' exclusive rights over its registered design on glass sheets.

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

Anil Kamath Vs. Vasu Naik N.

Facts:The petitioner, Anil Kamath, had filed a suit to recover money from the respondent, Vasu Naik N. The dispute was referred to the Lok Adalat, where the parties reached an amicable settlement. Following this, a joint memo was filed before the Trial Court, leading to the dismissal of the suit on 28-09-2002. However, the petitioner also sought a refund of court fees, which the Trial Court rejected on the ground that an affidavit had been taken as evidence, indicating some progress in the case. The petitioner challenged this order through a Civil Revision Petition (CRP).

Issue:Whether the petitioner was entitled to a refund of full court fees under Section 16 of the Court Fees Act, 1870, even though the case had made procedural headway before being settled in the Lok Adalat? 

Reasoning of the Judge:

1. Section 16 of the Court Fees Act, 1870, inserted by Act 46 of 1999, states that when a court refers a case to an alternative dispute resolution (ADR) method under Section 89 of the CPC, the plaintiff is entitled to a full refund of court fees.

2. The Trial Court’s rejection of the refund request was based on a misinterpretation—the fact that an affidavit had been filed in evidence did not preclude the refund under Section 16.

3. The legislative intent behind Section 16 was to incentivize settlements through ADR by ensuring that court fees are not a deterrent. The provision applies regardless of the stage of proceedings at which the dispute is settled.

4. Since the dispute was settled before the Lok Adalat, it squarely fell under Section 89 CPC, making the petitioner entitled to a full refund of court fees.

Decision:

The Civil Revision Petition was allowed.

The Trial Court’s order rejecting the refund of court fees was set aside.

The Trial Court was directed to ensure that the original plaintiff (petitioner) receives a full refund of the court fees paid.

No order as to costs.

Case Details:Anil Kamath Vs. Vasu Naik N.

Date of Order: 04-05-2003

Case No.: Civil Revision Petition No. 1240 of 2003

Neutral Citation: (2006) 39 AIC 419 : (2006) 2 ICC 409 : (2006) ILR(Karnataka) 295

Court: Karnataka High Court (Single Bench)

Judge: Hon’ble Justice M.F. Saldanha

Star India Pvt. Ltd. v. IPTV Smarters Pro

Facts: Star India Pvt. Ltd., a leading entertainment and media company, alleged that IPTV Smarters Pro and other defendants were infringing its copyrights and broadcast reproduction rights by unauthorized streaming of its content. The plaintiff, which owns channels such as Star Movies, Star Plus, Disney+ Hotstar, and JioCinema, claimed that the defendants' rogue applications and websites provided illegal access to its copyrighted content, including live sports events, movies, and TV shows.

Issue: Whether the defendants, by hosting and making available the plaintiff’s copyrighted content through unauthorized streaming, were infringing Star India's intellectual property rights and whether an injunction should be granted to restrain such activities.

Reasoning of the Judge:

1. The plaintiff demonstrated a prima facie case for copyright infringement, showing that its content was being illegally streamed.

2. The balance of convenience lay in favor of the plaintiff, as the continued operation of the infringing platforms would cause irreparable harm and monetary loss.

3. Defendant No. 1 claimed to be a mere video player and not responsible for hosting the content. However, the court noted that even if the defendant is a video player, the content streamed on its platform infringes the plaintiff’s copyright.

4. Given the large-scale piracy and economic damage, an ex-parte ad-interim injunction was warranted.

Decision:

1. An interim injunction was granted, directing defendant nos. 5 and 6 (internet service providers) to block access to the infringing websites, including:

starshare.live

xtv.ooo

opplex.live

smart4k.cc

2. Defendant nos. 9 to 16 (various internet intermediaries) were also directed to block access to these domains.

3. Defendant nos. 17 and 18 (Department of Telecommunication and Ministry of Electronics & IT) were ordered to issue notifications to internet service providers to restrict access.

4. If additional infringing domains are discovered during proceedings, the plaintiff may notify the Joint Registrar (Judicial), who may extend the injunction accordingly.

5. The defendants were ordered to file their reply within four weeks, disclosing compliance with the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.

Case Details:Star India Pvt. Ltd. v. IPTV Smarters Pro 

Date of Order: February 10, 2025

Case No.: CS(COMM) 108/2025

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Mini Pushkarna

Mac Laboratories Private Ltd. Vs. American Home Products Corporation

The bona fide intention to use a trade mark at the time of registration

Mac Laboratories Private Ltd. Vs. American Home Products Corporation & Anr.

Case DetailsDate of Order: 14th May 1968

Neutral Citation: AIR 1969 Cal 342

Court: Calcutta High Court

Judge: Justice P.B. Mukharji

Introduction: This case involves a trade mark dispute concerning the removal of the registered trade mark Dristan, owned by American Home Products Corporation, on grounds of non-use and lack of bona fide intention to use. The appellant, Mac Laboratories Private Ltd., filed an application for rectification, arguing that the respondent had not used the trade mark in India and had no genuine intention to use it.The case raises significant legal issues, including:The bona fide intention to use a trade mark at the time of registration. The concept of trafficking in trade marks. The eligibility of an aggrieved person to seek rectification.Whether the use of the mark by a third-party company (Geoffrey Manners & Co. Ltd.) constitutes use by the registered proprietor.

Detailed Factual Background:The respondent, American Home Products Corporation, a U.S.-based company, registered the trade mark Dristan in India under Class 5 (medicinal preparations for respiratory ailments) on 18th August 1958.The appellant, Mac Laboratories Private Ltd., later applied for the registration of its own trade mark Tristine for similar products.

The respondent opposed Mac Laboratories' Tristine mark on the ground that it was deceptively similar to Dristan.In response, Mac Laboratories filed an application for the removal of Dristan under Section 56 of the Trade and Merchandise Marks Act, 1958, arguing that the respondent never had a bona fide intention to use the mark in India and had not used it for an extended period.American Home Products Corporation contended that they had introduced Dristan in India through their associate company, Geoffrey Manners & Co. Ltd., and that the agreement with this company constituted valid use of the trade mark.

Detailed Procedural Background:The appellant (Mac Laboratories) filed an application before the Registrar of Trade Marks under Section 56 for removal of Dristan from the register.The Registrar dismissed the application, ruling that:The respondent had a bona fide intention to use the mark through Geoffrey Manners & Co. Ltd.The use of Dristan by Geoffrey Manners qualified as use by the registered proprietor.Aggrieved by this order, Mac Laboratories filed an appeal before the Calcutta High Court under Section 109 of the Trade and Merchandise Marks Act, 1958.

Issues Involved:Whether the respondent had a bona fide intention to use the trade mark Dristan at the time of registration.Whether the use of Dristan by Geoffrey Manners & Co. Ltd. constituted use by the registered proprietor, American Home Products Corporation.Whether the non-use of Dristan warranted its removal under Section 56 of the Act.Whether the appellant, Mac Laboratories, was an "aggrieved person" eligible to seek rectification.

Detailed Submission of the Parties:Appellant (Mac Laboratories Private Ltd.) Lack of Bona Fide Intention:The appellant argued that American Home Products Corporation had no real intention to use Dristan in India at the time of registration. The respondent merely registered the mark as a defensive mechanism to block other traders.Non-Use of Trade Mark:The appellant contended that the respondent had not used Dristan in India since its registration in 1958.The agreement with Geoffrey Manners & Co. Ltd. was a post-registration arrangement that did not establish original intent to use.Geoffrey Manners Not a Valid User:The appellant argued that Geoffrey Manners & Co. Ltd. was an independent legal entity and not a registered user under the Act.The use of the mark by an independent company does not qualify as use by the registered proprietor.

Respondent (American Home Products Corporation)Intention to Use and Use by Geoffrey Manners:The respondent argued that they had a genuine intention to introduce Dristan in India through Geoffrey Manners & Co. Ltd.The association with Geoffrey Manners was a valid mechanism for market entry.Legal Use by Geoffrey Manners:The respondent contended that since Geoffrey Manners & Co. Ltd. was manufacturing and distributing Dristan under their supervision, the trade mark was in legitimate use.

Detailed Discussion on Judgments Referred:In re Batt (John) and Co.’s Registered Trade Marks, 1898-2 Ch 432 Held that a trade mark must be registered with a definite and present intention to use.Ducker’s Trade Mark Case, (1928) 1 Ch 405 Ruled that an intention to assign or license a trade mark in the future does not constitute a bona fide intention to use.Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558 Established that non-use of a mark could lead to rectification under trade mark law.Pussy Galore’s Trade Mark Case, (1967) RPC 265 Clarified that a trade mark must be used by the registered proprietor or an authorized agent recognized under the law.Bostitch Trade Mark Case, (1963) RPC 183 Distinguished in this case; the High Court noted that the Bostitch case dealt with a distribution arrangement, whereas the present case concerned the original intent to use.

Detailed Reasoning and Analysis of the Judge:Bona Fide Intention to Use:The Court held that a bona fide intention to use must exist at the time of registration.The respondent failed to show any direct use or intent to use the mark in India before entering into an agreement with Geoffrey Manners. Use of Mark by Geoffrey Manners & Co. Ltd.The Court ruled that Geoffrey Manners was not a registered user under the Act.Use by an independent company does not qualify as use by the proprietor. Principle Against Trafficking in Trade Marks.The Court emphasized that trade marks should not be held as mere commodities to block market access for competitors. Eligibility of "Aggrieved Person"Since the respondent had opposed Mac Laboratories' Tristine mark, the appellant had a genuine grievance and qualified as an aggrieved person.Final Decision.The appeal was allowed, and the trade mark Dristan was removed from the register.The Court ruled that the respondent did not have a bona fide intention to use the mark at the time of registration.The Court held that use by Geoffrey Manners & Co. Ltd. did not qualify as use by the registered proprietor.The decision reaffirmed India’s strict stance against trafficking in trade marks.

Conclusion:This judgment set a precedent by reinforcing the requirement of bona fide intention to use at the time of registration and ensuring that trade marks are not misused to restrict competition. The ruling safeguards the integrity of the trade mark register by ensuring that only actively used trade marks remain protected.

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

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