Mahendra & Mahendra Paper Mills Ltd.Vs Mahindra & Mahindra Ltd.

Principles governing the protection of well-known marks against deceptive similarity and potential passing-off

Case Title: Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.

Date of Judgment: 9 November 2001

Case No.: Civil Appeal No. 7805 of 2001

Neutral Citation: AIR 2002 SC 117; 2002 (2) SCC 147; 2001 AIR SCW 4679

Court: Supreme Court of India

Bench: Hon'ble Justice Mr. D.P. Mohapatra and Hon'ble Justice Mr. Shivaraj V. Patil

Introduction:The case of Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd. (2001) is a seminal decision in Indian trademark law, dealing with the principles governing the protection of well-known marks against deceptive similarity and potential passing-off. The dispute revolved around the defendant company’s use of the name "Mahendra & Mahendra," which the plaintiff alleged was deceptively similar to its established and well-known corporate identity, "Mahindra & Mahindra."The crux of the case lay in whether the defendant's use of the trade name would lead to confusion among consumers and thereby result in passing-off. The Supreme Court's judgment reaffirmed the importance of protecting distinctive trade names and provided clarity on the principles to be applied in cases of passing-off.

Factual Background:

Mahindra & Mahindra Ltd., the plaintiff, was incorporated in October 1945 under the name "Mahindra and Mohammed Ltd." and was later renamed "Mahindra and Mahindra Ltd." in January 1948. Over time, it grew into a flagship enterprise encompassing 15 associated companies engaged in various industrial and trading activities, from automobile manufacturing to IT services. The word "Mahindra" had become a distinctive and well-known trade name associated with their products and services.

In 1996, the plaintiff discovered the existence of the defendant company, Mahendra & Mahendra Paper Mills Ltd., which had issued a public prospectus for its business activities. The name closely resembled the plaintiff's established identity, with the only distinction being the substitution of the vowel "i" with "e" in "Mahindra."The plaintiff alleged that this similarity was not coincidental but a deliberate attempt by the defendant to ride on the goodwill and reputation of the Mahindra group. Consequently, they filed a suit seeking a permanent injunction to restrain the defendant from using the trade name "Mahendra & Mahendra."

Procedural Background:

1. Trial Court:The Single Judge of the Bombay High Court granted an interim injunction in favor of the plaintiff, restraining the defendant from using the name "Mahendra & Mahendra." The court found a prima facie case of deceptive similarity and potential confusion among consumers.

2. Appellate Court:The Division Bench of the Bombay High Court summarily dismissed the defendant's appeal, upholding the trial court's decision.

3. Supreme Court:Dissatisfied with the injunction, the defendant approached the Supreme Court of India by way of a special leave petition, leading to the present judgment.

Issues Involved:

1. Whether the name "Mahendra & Mahendra" was deceptively similar to "Mahindra & Mahindra."

2. Whether the similarity in names was likely to cause confusion or deception in the minds of the public.

3. Whether the defendant's adoption of the name "Mahendra & Mahendra" amounted to passing-off.

4. Whether the grant of an interim injunction was justified in the circumstances of the case.

Plaintiff's Arguments (Mahindra & Mahindra Ltd.)

Established Reputation: The plaintiff contended that "Mahindra" had become a distinctive trade name through decades of consistent use, substantial business activities, and significant advertising investments.

Likelihood of Confusion: The name "Mahendra & Mahendra" was phonetically, visually, and structurally similar, likely causing confusion among consumers.

Intent to Deceive: The prominence of the name "Mahendra & Mahendra" in the defendant's prospectus suggested a deliberate attempt to associate with the Mahindra brand.

Public Perception: Given the wide recognition of the Mahindra brand, an average consumer with imperfect recollection might assume a connection between the two companies.

Defendant's Arguments (Mahendra & Mahendra Paper Mills Ltd.):

Family Name Justification: The defendant asserted that "Mahendra" was derived from the family name of its founders, who had used it in various businesses since 1974.

Distinct Nature of Business: The defendant claimed that its business activities, particularly in the paper industry, did not overlap with those of Mahindra & Mahindra.

Absence of Confusion: Since the businesses were distinct, confusion or deception among consumers was unlikely.

No Unfair Advantage: The defendant argued that it did not seek to capitalize on the Mahindra brand's goodwill and that its own name had acquired independent recognition in Gujarat.

Judicial Analysis and Reasoning:The Supreme Court extensively analyzed the principles governing passing-off actions, relying on established precedents.

Key Legal Precedents Cited:

1. Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142:The Court reiterated that the likelihood of confusion must be assessed from the perspective of an average consumer with imperfect recollection.

2. Wander Ltd. v. Antox India (P.) Ltd., 1990 Supp SCC 727:Emphasized the principle of "balance of convenience" in granting interim injunctions.

3. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73:Laid down factors for assessing deceptive similarity, including phonetic similarity, nature of goods, class of consumers, and surrounding circumstances.

4. Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., AIR 1966 Bom 149:Highlighted the importance of protecting well-known marks, even if the businesses are dissimilar.

Court's Analysis:The Court observed that the name "Mahindra" had acquired secondary meaning and distinctiveness over five decades of usage.It held that deceptive similarity does not necessarily require identical goods; what matters is the potential for confusion regarding the origin of the goods or services.The defendant's adoption of the name, with a mere change of one vowel, was insufficient to dispel the risk of confusion.The intent to pass off could be inferred from the defendant's emphasis on the "Mahendra & Mahendra" name in its prospectus.The Court also applied the doctrine of res ipsa loquitur — the similarity was so apparent that it spoke for itself.

Final Decision:The Supreme Court upheld the interim injunction granted by the Bombay High Court.

Key Findings:The plaintiff established a strong prima facie case of passing-off.The balance of convenience favored the plaintiff, given its longstanding reputation and the defendant’s comparatively recent entry into the market.Irreparable harm was likely if the defendant continued to use the disputed name.The appeal was dismissed with costs, and the defendant was restrained from using the name "Mahendra & Mahendra" during the pendency of the suit.

Conclusion:This judgment reaffirmed the protective mantle provided by the law to well-known marks under the doctrine of passing-off. The Supreme Court's meticulous application of established legal principles clarified that even when businesses are dissimilar, deceptive similarity in trade names can cause confusion regarding commercial affiliations, thereby justifying judicial intervention.The case serves as a touchstone for businesses seeking to protect their brand identity, emphasizing the significance of long-term reputation, consumer perception, and the prevention of unfair competitive practices.

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

Ram Chandra Maurya Vs. Intellectual Property Appellate Board

Private entities cannot be compelled by writ jurisdiction unless performing public functions.

Case Title: Ram Chandra Maurya v. Intellectual Property Appellate Board & Ors.

Date of Order: 6th February 2025

Case Number: Writ -C No. 22403 of 2020

Neutral Citation: 2025:AHC:17425-DB

Court: High Court of Judicature at Allahabad

Coram: Hon’ble Mr. Justice Ashwani Kumar Mishra & Hon’ble Mr. Justice Donadi Ramesh

Introduction:The case of Ram Chandra Maurya v. Intellectual Property Appellate Board addresses the interpretational boundaries of Section 6 of the Copyright Act, 1957. The petitioner, who claimed copyright ownership over literary works related to the laws of motion, sought to restrain several private entities from allegedly infringing his copyrighted work by manufacturing engines based on his theories.The Allahabad High Court’s decision underscores the limited jurisdiction of the Intellectual Property Appellate Board (IPAB) in copyright matters and clarifies the appropriate remedies available for copyright infringement. 

Detailed Factual Background:

The petitioner, Ram Chandra Maurya, asserted that he had authored literary works titled:Motion’s Fourth and Fifth Law (registered on 15th May 2017),Motion’s Sixth Law (registered on 1st August 2018).These works were registered with the Registrar of Copyrights and claimed to have scientific applications relevant to engine manufacturing. The petitioner alleged that several private companies were manufacturing engines using his copyrighted literary work without authorization, thereby violating his intellectual property rights.The petitioner initially filed a complaint with the IPAB on 14th June 2018, seeking an order to stop the manufacturing activities allegedly based on his copyrighted material. When the complaint was not acted upon promptly, he approached the Allahabad High Court twice through writ petitions to expedite the process.

Detailed Procedural Background:

1. First Writ Petition (Writ-C No. 33023 of 2018):Filed to compel the IPAB to decide the petitioner’s complaint. The High Court dismissed the petition, stating that the petitioner had approached the Court prematurely without allowing reasonable time for the Board to act.

2. Second Writ Petition (Writ-C No. 1976 of 2019):Filed to seek a direction for the Copyright Board to consider the complaint. The Court disposed of the petition, directing the petitioner to submit a fresh representation, which the Board was to decide within three weeks.

3. IPAB’s Decision (Order dated 14th September 2020):The IPAB examined the complaint and dismissed it, holding that the dispute did not fall under the purview of Section 6 of the Copyright Act, 1957.

4. Third Writ Petition (Writ-C No. 22403 of 2020):Filed to challenge the IPAB’s decision and seek injunctive relief against the alleged infringers. This petition was dismissed on 6th February 2025.

Issues Involved in the Case:

1. Whether the complaint filed under Section 6 of the Copyright Act was maintainable.

2. Whether the IPAB had correctly applied the statutory provisions while dismissing the complaint.

3. Whether the petitioner was entitled to a writ of mandamus directing private entities to cease alleged infringing activities.

Petitioner’s Submissions (Ram Chandra Maurya):The petitioner argued that his literary works, registered as Motion’s Fourth, Fifth, and Sixth Laws, were being exploited without consent.The alleged infringing activities involved manufacturing engines based on his copyrighted theories.The petitioner asserted that the IPAB erred in dismissing his complaint, as the matter pertained to the misuse of copyrighted material.He contended that the writ jurisdiction of the High Court should be invoked to prevent ongoing infringement by private entities.

Legal Provision Cited:Section 6 of the Copyright Act, 1957 – The petitioner claimed that the IPAB had jurisdiction under this section to adjudicate the alleged infringement.

Respondents' Submissions (Intellectual Property Appellate Board & Private Entities):The respondents argued that Section 6 was inapplicable to the petitioner's grievance.They emphasized that the provision only deals with disputes about the date of publication or the term of copyright concerning foreign works.The respondents further submitted that the petitioner’s claim related to alleged infringement, which falls under infringement proceedings in civil courts, not IPAB proceedings under Section 6.Regarding the petitioner’s request for a writ of mandamus, the respondents highlighted that private entities cannot be compelled by writ jurisdiction unless performing public functions.

Legal Provisions Cited:Section 6 of the Copyright Act, 1957 – To argue the limited jurisdiction of the IPAB.Article 226 of the Constitution of India – To assert the non-maintainability of the writ petition against private parties.

Detailed Discussion on Relevant Judgments:

1. Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd., (2008) 13 SCC 30

Context: Clarified the jurisdictional boundaries of copyright adjudication.

Relevance: Reinforced the IPAB’s limited jurisdiction under the Copyright Act.

2. Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1

Context: Addressed the scope of copyright protection for literary works.

Relevance: Demonstrated that originality is essential but does not automatically confer enforcement jurisdiction under Section 6.

3. Binny Ltd. v. V. Sadasivan, (2005) 6 SCC 657

Context: Examined the applicability of writ jurisdiction to private entities.

Relevance: The Court applied the principle that writs do not lie against private parties absent public functions.

Detailed Reasoning and Analysis of the Judges

1. Interpretation of Section 6 of the Copyright Act:

The Court undertook a textual and purposive interpretation of Section 6, which states:

 “If any question arises as to whether a work has been published or as to the date on which a work was published for the purposes of Chapter V, or whether the term of copyright for any work is shorter in any other country than that provided in respect of that work under this Act, it shall be referred to the Commercial Court.”

The judges found that the petitioner’s claim did not raise questions regarding publication dates or foreign copyright terms. Instead, it related to alleged unauthorized use of copyrighted material, which falls outside the section’s scope.

2. Jurisdictional Scope of the IPAB:The Court highlighted that the IPAB’s powers are limited to matters specifically enumerated in the Copyright Act. Since the petitioner sought enforcement of rights rather than determination of publication or duration, the Board’s dismissal was upheld.

3. Misapplication of Writ Jurisdiction:The Court emphasized that writ jurisdiction under Article 226 is generally not available against private entities unless public functions are implicated. The petitioner's attempt to restrain private manufacturers via writ proceedings was deemed procedurally improper.

4. Availability of Alternative Remedies:The Court noted that the petitioner failed to pursue available civil remedies for copyright infringement. Civil courts possess jurisdiction over infringement claims and could provide the appropriate relief.

Final Decision of the Court:

The Allahabad High Court dismissed the writ petition with the following conclusions:

1. IPAB’s Order Affirmed: The Board's decision to dismiss the complaint was legally sound, as the case did not pertain to issues under Section 6.

2. No Writ Against Private Parties: The petitioner’s request for a writ of mandamus against private companies was rejected.

3. Alternative Remedy Available: The petitioner was advised to seek redress in a civil court if copyright infringement persisted.

Conclusion:The judgment clarifies the jurisdictional limitations of the Intellectual Property Appellate Board (IPAB), particularly concerning Section 6 of the Copyright Act, 1957. It serves as a guiding precedent for copyright owners to direct infringement claims through civil litigation rather than misconceived applications before the IPAB. The decision also reinforces the principle that Article 226 cannot be indiscriminately invoked against private entities unless they perform public functions.

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

C. Prakash Vs. Ayngaran International Media Pvt. Ltd.

Case Title: C. Prakash Vs. Ayngaran International Media Pvt. Ltd. 

Date of Order:27th January 2025

Case Number:C.S. (Comm. Div.) No. 132 of 2024

Court:High Court of Judicature at Madras

Presiding Judge:Hon’ble Mr. Justice Abdul Quddhose

Brief Facts of the Case:

The plaintiff, C. Prakash, proprietor of Sri Kumaran CD Collections & Electronics, filed a suit seeking declaratory relief and permanent injunction against Ayngaran International Media Pvt. Ltd. and others. The dispute centered on unauthorized uploads of copyrighted cinematographic works—"Vasuki", "Shenbaga Kottai", and "Dubai Rani"—on the defendants' YouTube channel, "Ayangaran Channel".

The plaintiff claimed ownership of the internet rights to these films, acquired via assignment agreements, and alleged that the defendants' actions amounted to copyright infringement under the Copyright Act, 1957. Despite legal notices, the defendants continued uploading the infringing content, causing revenue loss to the plaintiff.

Key Issues for Determination:

1. Whether the plaintiff had valid copyright ownership of the internet rights for the films in question.

2. Whether the defendants' actions constituted copyright infringement under Sections 51 and 55 of the Copyright Act, 1957.

3. Whether the plaintiff was entitled to damages for the alleged infringement.

Judicial Reasoning and Analysis:

1. Copyright Ownership:

The Court examined the assignment agreements (Exhibits P3 and P6), which granted the plaintiff exclusive internet rights for a 99-year period. The plaintiff also provided evidence of regular uploads on their YouTube channel, "Real Cinemas", demonstrating the exercise of these rights.

Court's Finding: The plaintiff was the lawful copyright owner.

2. Infringement by the Defendants:

The Court found that the defendants had uploaded scenes from the three films on the "Ayangaran Channel" without authorization. The infringing content was verified through screenshots (Exhibit P11) and corroborated by email correspondence (Exhibits P7, P9, P10).

Court's Finding: The defendants committed copyright infringement under Section 51 of the Copyright Act.

3. Damages:

While the plaintiff claimed damages of ₹5,00,000, the Court noted the absence of concrete proof of financial loss. Considering the plaintiff's investment of ₹1,40,000 in acquiring the rights, the Court awarded nominal damages of ₹25,000.Court's Finding: Damages should be limited to ₹25,000.

Decision of the Court:

The Madras High Court granted the following reliefs:

1. Declaration: The plaintiff was declared the sole and absolute copyright owner of the internet rights to the films "Vasuki", "Shenbaga Kottai", and "Dubai Rani" for a period of 99 years.

2. Permanent Injunction: The defendants were restrained from further uploading or exploiting the internet rights to the films in any online format, including YouTube.

3. Mandatory Injunction: The defendants were directed to remove the infringing content from the "Ayangaran Channel" on YouTube.

Cedar Properties & Trading LLP Vs . Maskon Life Sciences Pvt. Ltd.

Case Title:Cedar Properties & Trading LLP Vs . Maskon Life Sciences Pvt. Ltd.

Date of Order:6th February 2025

Case Number:CS(COMM) 223/2022

Neutral Citation:2025:DHC:904

Court:High Court of Delhi

Presiding Judge:Hon’ble Mr. Justice Amit Bansal

Brief Facts of the Case:

The plaintiffs, Cedar Properties & Trading LLP & Ors., filed a suit seeking a permanent injunction to restrain the defendants from using the trade mark "DROTOWIN" for medicinal preparations, alleging infringement and passing off of their registered trade mark "DROTIN".

The plaintiffs, involved in the manufacture, sale, and marketing of pharmaceutical products, had introduced the "DROTIN" trade mark in 1997 for drugs treating abdominal pain, particularly in cases of Irritable Bowel Syndrome (IBS). The mark was registered in Class 5 under Trade Mark No. 732349, and substantial goodwill and reputation were claimed through extensive sales and advertisements.

In December 2021, the plaintiffs discovered the defendants' use of the mark "DROTOWIN" for similar products, with confusingly similar visual and phonetic characteristics.

Key Issues for Determination:

1. Was the defendants' mark "DROTOWIN" deceptively similar to the plaintiffs' registered mark "DROTIN"?

2. Did the defendants' adoption of the "DROTOWIN" mark constitute trade mark infringement under Section 29 of the Trade Marks Act, 1999?

3. Did the defendants engage in passing off by misrepresenting their goods as those of the plaintiffs?

4. Was the case suitable for summary judgment under Order XIII-A of the Code of Civil Procedure, 1908 (CPC)?

Judicial Reasoning and Analysis:

1. Deceptive Similarity and Infringement:

The Court observed a high degree of similarity between "DROTIN" and "DROTOWIN", both phonetically and visually. The defendants’ mark replicated the prefix "DROT" and suffix "IN", differing only by inserting "OW" in the middle. Given the identical goods and shared target consumers, the Court concluded that the similarity was likely to cause confusion.

Legal Reference:

Section 29(2)(b) of the Trade Marks Act, 1999 – Prohibits use of marks that are deceptively similar to registered marks, particularly when used for similar goods.

2. Passing Off:

The Court noted that the defendants sought to capitalize on the plaintiffs' goodwill. The similar trade dress, product function, and branding indicated an intent to mislead consumers into associating the defendant’s products with the plaintiffs'.

Key Finding:

The defendants' adoption of the mark was found to be dishonest and calculated to exploit the plaintiffs’ established reputation.

3. Absence of Defence:

Despite being served with notices, the defendants did not file any substantive defence or appear in court after 12th October 2023. The Court inferred that the defendants had no valid grounds to contest the claims.

4. Applicability of Summary Judgment:

The Court applied the principles from Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, which emphasized that commercial disputes could be disposed of summarily if the defendant had no realistic prospect of success and no compelling reason warranted a full trial.

Given the clear evidence of infringement and the defendants' lack of participation, the Court deemed summary judgment appropriate.

Decision of the Court:

The Delhi High Court granted a decree of permanent injunction, restraining the defendants from using the marks "DROTOWIN" or "DROTOWIN DS" or any mark deceptively similar to "DROTIN" in relation to pharmaceutical goods.

The Court found the defendants' actions constituted both trade mark infringement and passing off, and dismissed the need for further evidence due to the lack of any plausible defence. The remaining reliefs sought were not pressed by the plaintiffs, and pending applications were disposed of accordingly.

Jupeng Bio (HK) Limited Vs. The Controller of Patents and Designs

Case Title:Jupeng Bio (HK) Limited v. The Controller of Patents and Designs

Date of Order:4th February 2025

Case Number:CMA(PT)/9/2023

Court:igh Court of Judicature at Madras

Presiding Judge:Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Brief Facts of the Case:Jupeng Bio (HK) Limited filed Civil Miscellaneous Appeal (Patents) under Section 117A of the Patents Act, 1970, challenging the order dated 6th February 2023, which rejected its patent application (No. 201647000108) for an invention titled "Control of Conductivity in Anaerobic Fermentation".

The Controller of Patents rejected the application citing:

1. Lack of novelty based on prior art documents (D1–D7).

2. Non-patentability under Section 3(d) of the Patents Act.

3. Lack of clarity and conciseness in the claims.

The appellant contested the findings, arguing that the Patent Office failed to provide adequate reasoning for its conclusions.

Key Issues for Determination:

1. Did the claimed invention lack novelty due to disclosure in prior art document D7?

2. Was the rejection under Section 3(d) justified in the absence of specific reasoning?

3. Did the Controller of Patents overlook the appellant’s contention regarding ethanol yield on the first day of the process?

4. Was the rejection order legally sustainable without clear, reasoned findings?

Judicial Reasoning and Analysis:

1. Novelty and Disclosure in D7:The Controller of Patents concluded that Example 1B of prior art document D7 inherently disclosed the parameters of conductivity and the relationship between Specific Carbon Uptake (SCU) and conductivity. However, the Court observed that conductivity was not explicitly mentioned in the tables cited from D7. The inference of inherent disclosure required clear reasoning, which was absent.

Court’s Finding: The rejection on grounds of lack of novelty was unsustainable without adequate justification.

2. Non-Patentability under Section 3(d):The Patent Office cited Section 3(d) of the Patents Act, 1970, which excludes mere discoveries of new properties or uses of known substances from patentability unless they result in enhanced efficacy. However, the impugned order provided no clarity regarding which limb of Section 3(d) was applicable or why the claimed invention was considered "well-known."

Court’s Finding: The conclusion was unreasoned and therefore unsustainable.

3. Inventive Step and Ethanol Yield:The appellant asserted that the claimed process consistently yielded at least 10 grams of ethanol per liter per day from the first day of fermentation, distinguishing it from prior art. The Patent Office, however, focused solely on the yield observed on the second day in D7 and did not address the appellant's first-day yield argument.

Court’s Finding: The omission of this key contention reflected an incomplete evaluation of the inventive step.

Decision of the Court:The Madras High Court set aside the impugned order and remanded the matter for reconsideration with the following directions: Fresh Consideration: The patent application was to be re-evaluated afresh.

Naidu Hall Family Store Vs. Moham Retail Pvt. Ltd.

The unauthorized adoption of legacy trade marks under the guise of intra-family agreements.

Case Title: Naidu Hall Family Store Vs. Moham Retail Pvt. Ltd.

Date of Order: 6th January 2025

Case Number: C.S (Comm. Div.) No. 325 of 2020

Court: High Court of Judicature at Madras

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

Introduction: The case of Naidu Hall Family Store v. Moham Retail Pvt. Ltd. represents a compelling intersection of family legacy, trade mark law, and the commercial exploitation of well-established brand identities. The dispute revolves around the use of the trade mark "NAIDU HALL", a name with deep-rooted goodwill in Tamil Nadu’s retail clothing market, and raises crucial questions about ownership rights, alleged infringement, passing off, and the implications of intra-family agreements. The judgment delivered by the Madras High Court provides critical insights into how courts navigate familial trade mark rights and unauthorized commercial usage.

Detailed Factual Background: The trade mark "NAIDU HALL" was founded in 1939 by late Mr. M.G. Naidu, who initially started a blouse-tailoring unit in Chennai. Over decades, the brand evolved into a renowned retail outlet offering a wide range of women's undergarments, clothing, and accessories. The business was later managed by his sons, particularly Mr. G. Venugopal (the plaintiff’s partner) and Mr. Ramaswamy.A family arrangement occurred following Mr. Ramaswamy’s demise in 2001, culminating in a Memorandum of Understanding (MoU) in 2005. The MoU permitted both family branches to use the trade mark while outlining certain restrictions, including a clause prohibiting the transfer of trade mark rights to external entities without mutual consent.The dispute arose when the plaintiff discovered that the defendant, Moham Retail Pvt. Ltd., was using the mark "NAIDUHALL 1939 – A Moham Venture" for selling similar goods—primarily women's intimate apparel—under the purported authority of a business transfer agreement (BTA) with Mr. Arvind Ramaswamy, a family member and legal heir of the original proprietor. Alleging infringement, passing off, and unauthorized use, the plaintiff initiated this legal action.

Detailed Procedural Background:

The plaintiff filed the suit and sought Permanent injunction to restrain the defendant from using the mark "NAIDU HALL" or deceptively similar variations. An order for destruction of infringing materials.The defendant contested the claim, asserting its right to use the mark through a valid BTA with Mr. Arvind Ramaswamy.

Issues Involved in the Case:

1. Was the defendant's use of "NAIDUHALL 1939" an act of trade mark infringement?

2. Was the plaintiff the sole and exclusive proprietor of the "NAIDU HALL" trade mark?

3. Did the plaintiff acquiesce to the defendant's use of the mark?

4. Did the addition of "A Moham Venture" sufficiently distinguish the defendant's mark?

5. Was the suit defective due to non-joinder of a necessary party (Mr. Arvind Ramaswamy)?

6. Was the plaintiff entitled to retail sales under the family MoU?

7. Did the defendant possess legitimate rights through the business transfer agreement?

Detailed Submissions of the Parties:

Plaintiff's Submissions (Naidu Hall Family Store)

1. Longstanding Reputation and Goodwill:The plaintiff asserted that "NAIDU HALL" had been in continuous use since 1939 and had acquired distinctiveness and goodwill across Tamil Nadu. They presented evidence of registered trade marks across multiple classes, including registrations dating back to the 1990s.

2. Unauthorized and Confusing Use:The defendant's mark "NAIDUHALL 1939 – A Moham Venture" was nearly identical to the plaintiff's mark, with minor additions designed to confuse consumers into believing an affiliation existed.

3. Violation of Family MoU:The MoU explicitly prohibited either party from transferring trade mark rights to a third party. The defendant, however, claimed rights through a BTA with Mr. Arvind Ramaswamy, which the plaintiff argued was invalid under the MoU.

4. Absence of Bona Fide Use:The defendant failed to substantiate its claim of substantial investment or present documentary evidence of commercial use predating the plaintiff's objection.

5. Legal Citations:

K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., Madras (1970 AIR 146) – Highlighting the importance of avoiding confusion in trade mark disputes.

Milmet Oftho Industries v. Allergan Inc. (2004) 12 SCC 624 – Emphasizing that global recognition can establish goodwill in a jurisdiction without physical presence.

Defendant's Submissions (Moham Retail Pvt. Ltd.)

1. Legitimate Acquisition of Rights:The defendant claimed that it acquired the rights to the trade mark through a valid business transfer agreement with Mr. Arvind Ramaswamy, a legal heir with historical rights to the trade mark.

2. Distinctive Marking:The addition of the suffix "A Moham Venture" and the "1939" figure sufficiently differentiated the defendant’s mark from the plaintiff’s.

3. Acquiescence and Delay:The plaintiff knew of the defendant’s use in 2019 but delayed filing suit until 2020, allegedly implying consent through inaction.

4. Shared Family Legacy:The defendant argued that the "NAIDU HALL" trade mark was a family asset rather than the exclusive property of the plaintiff, as evidenced by historical documents and the family MoU.

5. Legal Citations: Power Control Appliances v. Sumeet Machines Pvt. Ltd. (1994 Supp (2) SCC 448) – Arguing that acquiescence could defeat a claim of infringement.

Parle Products (P) Ltd. v. J.P. & Co. (AIR 1972 SC 1359) – Citing principles related to trade mark similarity and confusion.

Detailed Judicial Reasoning and Analysis

1. Trade Mark Infringement:The Court emphasized that the core element of both marks was "NAIDU HALL", with the defendant's additions being insufficient to distinguish its goods. Applying Section 29(3) of the Trade Marks Act, 1999, the Court presumed confusion due to the identical nature of the marks and goods involved.

Precedent Cited:Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449) – Even slight variations do not prevent confusion if the dominant mark remains recognizable.

2. Exclusive Proprietorship of the Trade Mark:The Court acknowledged the plaintiff's valid registrations and extensive historical use of the mark. The defendant's reliance on the business transfer agreement was deemed invalid as it contravened the MoU's prohibition on third-party transfers.

Precedent Cited:Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 – Stating that established reputation takes precedence in cases of trade mark similarity.

3. Acquiescence:The Court dismissed the defense of acquiescence, noting that the plaintiff had promptly sent a cease-and-desist notice in 2019 and filed the suit soon after pandemic restrictions were lifted. Delay alone, without conduct implying consent, was insufficient.

Precedent Cited:M/S Hindustan Pencils Pvt. Ltd. v. M/S India Stationery Products Co. (AIR 1990 Del 19) – Holding that acquiescence requires more than mere delay.

4. Addition of "A Moham Venture":The Court reiterated that minor additions do not negate the likelihood of confusion when the dominant element remains identical.

5. Non-Joinder of a Necessary Party:The Court held that the presence of Mr. Arvind Ramaswamy was not necessary, as the suit was grounded in trade mark infringement rather than family ownership disputes.

6. Right to Retail Sales:The Court found no evidence that the family MoU restricted the plaintiff’s retail sales activities.

Final Decision:

1. Permanent Injunction:The Court restrained the defendant from using "NAIDUHALL 1939 – A Moham Venture" or any deceptively similar mark.

2. Destruction of Infringing Materials:The defendant was directed to surrender and destroy all goods, packaging, promotional materials, and digital content bearing the infringing mark.

Conclusion:This case reaffirms the legal principle that family arrangements do not supersede statutory trade mark rights, especially when marks are subsequently exploited for commercial gain. It highlights the importance of distinguishing familial goodwill from commercial use and upholds the integrity of trade mark law by preventing misleading uses that could dilute well-established brands. The Madras High Court's decision stands as a clear warning against the unauthorized adoption of legacy trade marks under the guise of intra-family agreements.

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

Oracle America, Inc. Vs. Sandeep Khandelwal

Case Title:Oracle America, Inc. v. Sandeep Khandelwal & Anr.

Date of Order:3rd February 2025

Case Number:C.O. (COMM.IPD-TM) 121/2024

Neutral Citation:2025:DHC:838

Court:High Court of Delhi at New Delhi

Coram:Hon'ble Mr. Justice Amit Bansal

Brief Facts of the Case:

Oracle America, Inc., a U.S.-based corporation and part of the globally recognized Oracle Corporation group, filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999. The petition sought the cancellation of the trade mark "JAVATPOINT," registered in Class 41 in the name of respondent Sandeep Khandelwal. The petitioner alleged that the impugned mark infringed on its long-established trade mark "JAVA," which has been in commercial use since the 1990s, both in India and globally.

The respondent registered the mark on 10th July 2023, despite Oracle’s prior registrations and the global reputation of its JAVA-branded software, training, and certification services. Despite being granted time to respond, the respondent failed to file a reply or appear during the hearings.

Key Issues for Determination:

1. Whether the trade mark "JAVATPOINT" is deceptively similar to Oracle's "JAVA" mark, thereby violating Sections 9, 11, and 18 of the Trade Marks Act, 1999.

2. Whether the registration of the impugned mark should be cancelled under Sections 47 and 57 of the Act due to mala fide intent and the likelihood of consumer confusion.

Arguments Advanced:

By the Petitioner (Oracle America, Inc.):

Oracle has been using the JAVA mark since the 1990s and owns registrations in India and internationally.

The impugned mark "JAVATPOINT" entirely incorporates the well-known "JAVA" mark, causing confusion among consumers.

The respondent adopted the mark dishonestly to ride on Oracle's goodwill and reputation.

The Trade Marks Registry failed to properly examine the application, overlooking Oracle's earlier registrations.

The respondent had not demonstrated bona fide usage of the mark within the requisite statutory period.

By the Respondent (Sandeep Khandelwal):

No reply was filed, and there was no appearance during proceedings.

Judicial Reasoning and Analysis:

The Court examined the statutory provisions and relied on the following key principles:

1. Section 11(1) of the Trade Marks Act, 1999: Prohibits registration of marks that cause confusion or deception due to similarity with earlier marks.

2. Section 57 of the Act: Allows cancellation of trade mark registration if granted without due cause or in contravention of statutory provisions.

Precedents Cited:

1. Enagic HK v. Enagic International (IPAB 2021) – Emphasized the duty of the Trade Marks Registry to conduct thorough searches for similar marks.

2. Greaves Cotton Limited v. Mohammad Rafi (2011 SCC OnLine Del 2596) – Held that minor variations do not prevent a finding of similarity if the dominant element is replicated.

3. Oracle America, Inc. v. Sonoo Jaiswal (CS(COMM) 2/2024) – Found the mark "JAVA TPOINT" deceptively similar to Oracle's "JAVA" mark.

Key Observations:

The impugned mark incorporated the "JAVA" element entirely, making it deceptively similar.

The respondent's adoption appeared dishonest, seeking to associate with Oracle’s established reputation.

The respondent's failure to defend the mark suggested an absence of a legitimate claim.

The Trade Marks Registry erred in not citing Oracle's earlier registrations during the examination process.

Decision of the Court:

The Delhi High Court found the registration of "JAVATPOINT" violative of Sections 9, 11, and 18 of the Trade Marks Act. It held that the respondent dishonestly adopted the mark, intending to mislead consumers and exploit Oracle's goodwill.

Order:

1. The trade mark "JAVATPOINT," bearing registration number 5420304 in Class 41, was cancelled under Section 57 of the Act.

Sir Ratan Tata Trust Vs. Dr. Rajat Shrivastava

Case Title: Sir Ratan Tata Trust Vs. Dr. Rajat Shrivastava 

Date of Order: 7th February 2025

Case No.: CS(COMM) 104/2025 

Neutral Citation: 2025:DHC:793

Court: High Court of Delhi at New Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Facts of the Case:

The plaintiffs, Sir Ratan Tata Trust and Tata Sons Private Limited, sought a permanent injunction against the defendants for unauthorized use of their trademarks, including TATA, TATA TRUSTS, and the personal name and image of Late Shri Ratan Tata. The defendants, led by Dr. Rajat Shrivastava, allegedly organized a fraudulent event titled “The Ratan Tata National Icon Award 2024”, misrepresenting it as being associated with the Tata Group.

The defendants solicited nominations for the event by charging ₹3,000 for Indian applicants and USD 100 for international applicants. The event was promoted using misleading posts on social media, creating an impression of Tata Group’s endorsement. Despite a takedown notice issued in December 2024, the defendants persisted with similar promotions for a 2025 iteration of the event.

Issues:

1. Trademark Infringement: Whether the unauthorized use of the marks TATA and TATA TRUSTS constituted trademark infringement under the Trade Marks Act, 1999.

2. Copyright Infringement: Whether the use of the Tata logo and the image of Late Shri Ratan Tata violated the plaintiffs’ copyright under the Copyright Act, 1957.

3. Passing Off: Whether the defendants' activities amounted to passing off by misleading the public into believing the event was affiliated with the Tata Group.

4. Personal Rights Posthumously: Whether the defendants' use of Shri Ratan Tata's name and image infringed on the personality rights of a deceased individual.

Reasoning and Analysis by the Court:

1. Trademark and Copyright Infringement:

The court found that Tata Sons was the registered proprietor of the marks TATA and TATA TRUSTS, which had acquired substantial goodwill over decades. The unauthorized use of these marks to promote a spurious event clearly constituted infringement.

2. Misappropriation of Personality Rights:

Referring to the case Mr. Arun Jaitley v. Network Solutions Pvt. Ltd. (2011 SCC OnLine Del 2660), the court reiterated that a well-known personal name enjoys protection akin to a trademark. It further cited the U.S. judgment Martin Luther King Jr. Center for Social Change v. American Heritage Products, Inc. (694 F.2d 674, 11th Cir. 1983), which recognized the survivability of personality rights beyond the individual's death.

3. Passing Off and Deceptive Practices:

The defendants' activities were found to be a calculated attempt to deceive the public by capitalizing on the Tata Group's goodwill. Public comments thanking Tata Trusts for the award underscored the confusion caused by these misleading promotions.

4. Defendants' Conduct:

Despite receiving a takedown notice, the defendants continued their activities, indicating bad faith. The court noted the absence of any legitimate explanation for using the Tata brand and Late Shri Ratan Tata’s name and image.

Decision:

The High Court granted a permanent injunction against the defendants, directing as follows:

1. Prohibition of Unauthorized Use:

The defendants were permanently restrained from using the marks TATA, TATA TRUSTS, and the name, image, or likeness of Late Shri Ratan Tata.

2. Cancellation of Event:

The event titled “Ratan Tata National Icon Award 2025” was prohibited from proceeding.

3. Affidavit of Undertaking:

The defendants were ordered to file an affidavit within two days, affirming that they would not use the Tata trademarks or the name/image of Late Shri Ratan Tata in the future.

4. Waiver of Damages:

The plaintiffs, satisfied with the court's protection, chose not to pursue claims for costs and damages.

Star India Pvt. Ltd. Vs. Ashar Nisar

Case Title: Star India Pvt. Ltd. & Anr. v. Ashar Nisar & Ors.

Date of Order: 6th February 2025

Case No.: CS(COMM) 214/2022

Neutral Citation: 2025:DHC:, 840

Court: High Court of Delhi at New Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

Star India Pvt. Ltd. (plaintiff no. 1) and its affiliate (plaintiff no. 2) filed a suit seeking a permanent injunction against multiple defendants involved in the unauthorized dissemination and broadcasting of the plaintiffs' copyrighted content via rogue websites and mobile applications.

The plaintiffs operate over 70 television channels and own the streaming platform Disney+ Hotstar, which has exclusive broadcast rights for various entertainment and sports events, including ICC cricket matches. The defendants allegedly used illicit mobile applications such as Ninja TV, RTS TV, and Stream India to stream Star India's content without authorization, resulting in substantial revenue losses and dilution of intellectual property rights.

Issues:

1. Copyright Infringement: Whether the defendants' activities amounted to infringement under the Copyright Act, 1957.

2. Broadcast Reproduction Rights: Whether the defendants violated the plaintiffs’ exclusive broadcast reproduction rights under Section 37 of the Copyright Act.

3. Piracy and Revenue Loss: Whether the defendants’ conduct resulted in irreparable financial harm and dilution of goodwill.

4. Ex-Parte Proceedings: Whether the court should pass a summary judgment in the absence of any defence from the defendants.

Reasoning and Analysis by the Court:

1. Admitted Facts:

Since no written statement or affidavit of admission/denial was filed by the defendants, all allegations in the plaint were deemed admitted under Rule 3 of the Delhi High Court (Original Side) Rules 2018.

2. Copyright and Broadcast Infringement:

The court found that the defendants created, distributed, and promoted rogue applications and websites that streamed Star India’s content without authorization. This conduct infringed both the plaintiffs' copyrighted content and their broadcast reproduction rights under Section 37 of the Copyright Act, 1957.

3. Irreparable Harm:

The unauthorized streaming activities significantly reduced the value of the plaintiffs' intellectual property and diverted potential revenue. The court acknowledged the broader impact of digital piracy on the media industry, highlighting the erosion of trust and revenue streams for legitimate content providers.

4. Ex-Parte Proceedings and Summary Judgment:

The court applied Order VIII Rule 10 of the CPC, observing that the defendants' failure to appear despite service indicated an absence of any genuine defence. The court determined that conducting a full trial would be unnecessary and counterproductive under the given circumstances.

Decision:

The Delhi High Court passed a decree of permanent injunction with the following key directions:

1. Injunction Against Mobile Applications:

Defendants operating infringing apps like Ninja TV, RTS TV, and Stream India were permanently restrained from communicating, streaming, or distributing the plaintiffs’ content through any platform without authorization.

2. Injunction Against Rogue Websites:

Websites facilitating the distribution of these illicit applications were similarly restrained from hosting or linking to the infringing apps.

3. Enforcement Measures:

Internet service providers (ISPs) were directed to block access to the identified rogue websites and apps, and relevant government bodies, including the Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY), were instructed to assist in the enforcement process.

4. Relief Not Pressed:

The plaintiffs chose not to pursue certain ancillary reliefs initially sought, focusing solely on the injunction and enforcement actions.

Wildcraft India Limited Vs. Ahmed Ali

Case Title: Wildcraft India Limited v. Ahmed Ali

Date of Order: 30th January 2025

Case No.: CS(COMM) 26/2023 & I.A. 41666/2024

Neutral Citation: 2025:DHC:705

Court: High Court of Delhi at New Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:Wildcraft India Limited (plaintiff), a well-established manufacturer and distributor of adventure and outdoor equipment, filed a suit seeking a permanent injunction against Ahmed Ali (defendant) for allegedly infringing its trademarks and copyright. The plaintiff, operating since 1998 and converted into a public company in 2022, has an extensive trademark portfolio, including marks such as ‘WILDCRAFT’, ‘W95’, ‘HYPA’, and ‘HYPASHIELD’.

The defendant was accused of selling counterfeit products like bags, masks, and accessories through various e-commerce platforms, including Amazon and Flipkart, using deceptively similar marks. The defendant neither appeared in court nor filed a written statement despite being duly served, leading to an ex-parte proceeding.

Issues:

1. Whether the defendant’s use of the marks ‘W95’, ‘HYPA’, ‘HYPASHIELD’, and Wildcraft’s logo constituted trademark infringement.

2. Whether the defendant’s conduct amounted to passing off its goods as those of the plaintiff.

3. Whether a summary judgment under Order XIII-A of the CPC was justified in the absence of any defence from the defendant.

Reasoning and Analysis by the Court:

1. Trademark Infringement:

The court found substantial visual and phonetic similarity between the plaintiff’s registered marks and the defendant’s products. The marks used by the defendant were identical or deceptively similar, causing confusion among consumers.

2. Passing Off:

The plaintiff’s longstanding reputation, supported by significant turnover and promotional expenses, was being exploited by the defendant for unfair commercial gain, thereby misleading consumers.

3. Summary Judgment:

Citing Su-Kam Power Systems Ltd. v. Kunwer Sachdev (2019 SCC OnLine Del 10764), the court observed that a summary judgment is appropriate when the defendant has no real prospect of defending the case and no compelling reason exists for a trial. Given the defendant's complete inaction, the court concluded that proceeding to trial would serve no purpose.

Decision:

The High Court decreed the suit in favour of Wildcraft India Limited and passed the following orders:

Permanent Injunction: The defendant was restrained from using the marks ‘W95’, ‘HYPA’, ‘HYPASHIELD’, and the Wildcraft logo on any products.

Online Listings: The defendant was directed to remove all infringing listings from e-commerce and social media platforms.

Damages and Costs: The court awarded damages and costs of ₹5,00,000 to the plaintiff, noting the defendant’s wilful infringement and failure to participate in the proceedings.

Astellas Pharma Inc. vs. Astellaz Pharmaceuticals

Astellas Pharma Inc. Vs. Astellaz Pharmaceuticals

Date of Order: 3rd February 2025

Case No.: CS(COMM) 426/2024 with I.A. 2878/2025

Neutral Citation: 2025:DHC:793

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts:

• The plaintiff, Astellas Pharma Inc., a multinational pharmaceutical corporation, is the registered proprietor of the trademark "ASTELLAS" under Class 5.
• The defendant, Astellaz Pharmaceuticals, applied for the trademark "ASTELLAZ" under Class 35 for “trading of medicine.”
• The defendant also registered the domain name www.astellaz.com and was found selling infringing products on e-commerce platforms like IndiaMart and JustDial.
• The plaintiff opposed the defendant's trademark application and issued cease-and-desist letters, but the defendant did not respond.
• The plaintiff filed a suit seeking a permanent injunction against the defendant for trademark infringement and passing off.

Issues:

1. Whether the defendant's use of "ASTELLAZ" constitutes trademark infringement of the plaintiff's mark "ASTELLAS".
2. Whether the defendant’s actions amount to passing off.
3. Whether the defendant should be restrained from using the infringing mark.

Reasoning and Analysis of the Judge:

• The defendant did not file a written statement or enter an appearance despite being served.
• The court, relying on Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd., held that the case does not require trial as the defendant failed to contest the suit.
• The marks "ASTELLAS" and "ASTELLAZ" are structurally, phonetically, and visually similar, which enhances the likelihood of confusion among consumers.
• The defendant's substitution of 'S' with 'Z' was a mere attempt to imitate the plaintiff’s mark.
• The defendant was using a deceptively similar trademark for identical purposes, constituting trademark infringement and passing off.
• The defendant's lack of response to the injunction order indicated that they had no defense.

Decision of the Judge:

• A decree of permanent injunction was granted against the defendant, restraining them from using "ASTELLAZ" or any similar mark.
• The court directed the plaintiff to file a bill of costs to determine litigation expenses.
• The next hearing on 21st March 2025 was canceled, and the case was concluded with an injunction order in favor of the plaintiff.

This ruling reaffirms the importance of trademark protection and sets a precedent against deceptively similar marks in the pharmaceutical sector.

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

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

Date of Order: 03 February 2025

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

Neutral Citation:2025:DHC:650

Court: High Court of Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Facts of the Case:The plaintiff, Novateur Electrical & Digital Systems Pvt. Ltd., sought a permanent injunction to restrain the defendant, V-Guard Industries Ltd., from using the 'MATTEO' range of switch plates. The plaintiff alleged that the defendant’s products infringed upon its registered designs (Design Nos. 296178, 296179, and 296180) by closely imitating them. The defendant filed a counterclaim seeking cancellation of the plaintiff’s designs, citing prior registrations, lack of novelty, and prior publication.

Issues for Determination:1. Whether the defendant should be permitted to place additional documents on record under Order XI Rule 1(10) of the CPC.2. Whether the plaintiff’s designs lacked novelty due to prior publication and existing foreign design registrations by its group entities.

Reasoning and Analysis by the Court:

1. Admissibility of Additional Documents:The defendant argued that the additional documents were discovered after filing the written statement and were not initially in its possession.These documents included foreign design registrations of the plaintiff’s sister companies, photographs of prior publications, comparative analysis reports, and stock details.

2. Relevance of Discovering Documents Post-Filing:The Court referred to Sudhir Kumar v. Vinay Kumar G. B., (2021) 13 SCC 71, emphasizing that the requirement to show a reasonable cause for non-disclosure does not apply when documents are discovered after the filing of the written statement.The defendant demonstrated that these documents were discovered through ongoing internal inquiries and were not part of its initial records.

3. Stage of Proceedings and Prejudice to Plaintiff:The Court noted that the suit was still in a nascent stage, and issues had not yet been framed.Citing Agva Healthcare Pvt. Ltd. v. Agfa-Gevaert NV (2023 SCC OnLine Del 7914), the Court observed that allowing these documents would not cause prejudice to the plaintiff, as they did not introduce a new case but were consistent with the defendant’s existing claims of prior publication.

4. Public Domain Argument:The plaintiff contended that the documents were in the public domain and should have been discovered earlier.The Court rejected this argument, relying on Sun Pharmaceutical Industries Ltd. v. State Bank of India (2024 SCC OnLine Cal 4046), which held that public domain availability does not automatically imply possession or knowledge by a party.

Decision of the Court:The Court allowed the defendant’s application to place the additional documents on record, recognizing the continuous inquiry conducted by the defendant and the documents' relevance to the case. However, a cost of ₹50,000/- was imposed on the defendant, payable to the plaintiff within four weeks.

Order: Application allowed with costs.

Key Takeaway:This case reaffirms the principle that additional documents discovered after filing a written statement can be admitted under Order XI Rule 1(10) of CPC, provided they are relevant and do not change the fundamental nature of the case. The Court's pragmatic approach ensures that procedural technicalities do not hinder the pursuit of substantive justice.

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