Khadi and Village Industries Commission v. The Registrar of Trade Marks

Case Title:Khadi and Village Industries Commission v. The Registrar of Trade Marks

Date of Order:January 29, 2025

Case Number:COMMERCIAL MISCELLANEOUS PETITION (LODGING) NO. 31636 OF 2023

Neutral Citation:2025:BHC-OS:1308

Court Name:High Court of Judicature at Bombay

Judge:Justice Manish Pitale, H.J.

Facts of the Case:

Khadi and Village Industries Commission (KVIC), a statutory body under the Ministry of MSME, has been using the trademark "KHADI" for various products.

KVIC launched "Vedic Paint", an anti-fungal and anti-bacterial paint made from cow dung, in December 2020 and later rebranded it as "Khadi Prakritik Paint" in January 2021.

KVIC applied for trademark registration of its device mark in Class 2 (paints, varnishes, etc.) on March 4, 2021.

The Registrar of Trade Marks refused the registration on August 17, 2023, under Section 9(1)(b) of the Trade Marks Act, 1999, stating that the mark consisted of words that described the nature and purpose of the product.

KVIC challenged this refusal in the Bombay High Court.

Issues Raised:

1. Whether the Registrar was justified in refusing registration under Section 9(1)(b) of the Trade Marks Act, 1999?

2. Whether a composite device mark should be assessed as a whole rather than breaking it into individual words?

3. Whether KVIC’s prior use and recognition of "KHADI" should influence the trademark registration?

Reasoning & Analysis by the Court:

Device Mark Must Be Considered as a Whole: The court ruled that a device mark should be assessed in its entirety, rather than evaluating individual words within it.

Misinterpretation of Section 9(1)(b): The court found that the Registrar wrongly applied Section 9(1)(b), which applies only when a mark exclusively describes a product. Since KVIC’s mark had a distinct logo, stylization, and branding, it did not fall under this category.

Established Trademark Rights: KVIC had already secured registration for "KHADI PRAKRITIK PAINT", and similar registrations were granted in the past, making this refusal inconsistent.

Recognition of KHADI as a Well-Known Trademark: The Delhi High Court had previously declared "KHADI" as a well-known trademark, strengthening KVIC’s case.

Failure to Consider Prior Rulings: The Registrar ignored Delhi High Court’s order in KVIC v. JBMR Enterprises (2021) and a World Intellectual Property Organization (WIPO) ruling (2022), both favoring KVIC.

Decision of the Judge:

The Bombay High Court set aside the Registrar’s order and directed that KVIC’s application for trademark registration be allowed to proceed.

The court ruled that the Registrar’s reasoning was flawed, and KVIC’s device mark should be registered.

The Registrar was instructed to take further steps toward registration, including advertisement and formal approval.

Floral Colors India Pvt. Ltd. Vs. De Martini Hitkari Fine Products Pvt. Ltd.

Case Title:Floral Colors India Pvt. Ltd. & Ors. v. De Martini Hitkari Fine Products Pvt. Ltd.

Date of Order:January 21, 2025

Case Number:WRIT PETITION NO. 1982 OF 2024

Neutral Citation:2025:BHC-AS:2864

Court Name:High Court of Judicature at Bombay

Judge:Justice Amit Borkar

Facts of the Case:

The petitioners (defendants) had filed a notice of motion before the Trial Court, seeking to convert a summary suit into a commercial suit and transfer it to the Commercial Court under the Commercial Courts Act, 2015.

The plaintiff (respondent) opposed this request, asserting that it had the right to choose the appropriate jurisdiction for its suit.

The Trial Court rejected the petitioners’ request, leading them to file this writ petition before the Bombay High Court.

Issues Raised:

1. Can defendants force a plaintiff to convert a summary suit into a commercial suit?

2. Does the Commercial Courts Act, 2015, mandate the transfer of all commercial disputes to the Commercial Court?

3. What are the limitations of the court’s supervisory jurisdiction under Article 227 of the Constitution?

Reasoning & Analysis by the Court:

Plaintiff’s Right as Dominus Litis: The court reaffirmed the well-established principle that the plaintiff is dominus litis (master of the suit) and has the right to choose the forum and nature of the suit.

No Statutory Mandate for Forced: Conversion: The court clarified that unless a specific law mandates a particular forum, the plaintiff’s choice must be respected. Defendants cannot compel the plaintiff to change the suit’s nature.

Limited Power of the Court: Courts have the power to reject relief or dismiss a suit if it is found to be not maintainable, but they cannot force a plaintiff to change the nature of the suit.

Jurisdiction Under Article 227: The High Court’s supervisory powers are limited to ensuring procedural compliance and do not allow intervention in the plaintiff’s choice of litigation strategy.

Decision of the Judge

The High Court upheld the Trial Court’s decision, confirming that there was no error of jurisdiction in rejecting the petitioners’ request.

The writ petition was dismissed with no order as to costs.

The court reiterated that the plaintiff retains the right to decide the forum and nature of the suit, and the defendants have no authority to alter it.

La Roche Ltd. & Others Vs. Drugs Controller General of India

La Roche Ltd. Vs. Drugs Controller General of India: Patent expiration does not eliminate a company’s right to challenge biosimilar regulatory compliance.

Case Title:F. Hoffmann-La Roche Ltd. & Others Vs. Drugs Controller General of India & Ors.

Date of Order:February 18, 2025

Case No.:CS(COMM) 540/2016 

Neutral Citation:2025:DHC:997

High Court of Delhi

Judge:Hon’ble Mr. Justice Amit Bansal

Introduction: This case revolves around biosimilar drug approvals and allegations of regulatory non-compliance in granting approvals to biosimilar versions of Roche’s patented cancer drugs. The plaintiffs, including F. Hoffmann-La Roche Ltd., challenged the approvals granted by the Drugs Controller General of India (DCGI) to Hetero Drugs Limited and Cadila Healthcare Limited, alleging that these approvals were obtained through inadequate testing and a lack of compliance with the Biosimilar Guidelines, 2012.The case raises significant issues regarding data exclusivity, regulatory oversight, and the role of the judiciary in pharmaceutical patent disputes after the expiration of a patent.

Factual Background:The Plaintiffs and Their Patented Drugs:Roche, along with its subsidiaries, developed two key biological cancer drugs:Bevacizumab (marketed as AVASTIN®) – Used for treating colorectal cancer.Trastuzumab (marketed as HERCEPTIN®, HERCLON™, and BICELTIS®) – Used for breast and gastric cancers.These drugs underwent extensive clinical trials since the late 1990s and received regulatory approvals in India between 2005-2010.

2. The Defendants and Their Biosimilar Approvals:Defendant No. 1: Drugs Controller General of India (DCGI) – The regulatory body that granted approvals for biosimilar versions of Roche’s drugs.Defendant No. 3: Hetero Drugs Limited – Obtained DCGI approval on May 13, 2016, for biosimilar Bevacizumab.Defendant No. 2: Cadila Healthcare Limited – Obtained DCGI approval on October 28, 2015, for biosimilar Trastuzumab.Both defendants launched their drugs in India shortly after approval.

Procedural Background:Roche’s Opposition to Biosimilar Approvals:Roche filed two separate suits in 2016 challenging the approvals granted to Hetero and Cadila.Sought injunctions to stop the marketing of biosimilar versions of its drugs.Alleged non-compliance with clinical trial protocols required under the Drugs and Cosmetics Act, 1940, and the Biosimilar Guidelines, 2012.Interim Injunction and Regulatory Review:The court initially granted temporary relief but allowed Cadila and Hetero to market their drugs with conditions.The DCGI and expert committees reviewed the approvals but upheld their decisions, claiming proper testing procedures were followed.Discovery Applications Filed by Roche (2022):Roche sought disclosure of regulatory documents from DCGI, Cadila, and Hetero under Order XI Rules 12 and 14 CPC.Argued that key documents regarding bioequivalence and safety testing were not provided.

High Court’s Decision on Discovery Applications (2025):The court allowed Roche’s discovery applications, directing the defendants to submit all regulatory documents for judicial scrutiny.

Issues Involved:Whether the approvals granted by DCGI to biosimilar versions of Bevacizumab and Trastuzumab complied with the regulatory framework?Whether Roche had a right to access regulatory documents under discovery proceedings?Whether the defendants’ biosimilars were sufficiently tested to establish bioequivalence with Roche’s drugs?Whether granting approvals without complete clinical trials constituted regulatory misconduct?Whether Roche could claim exclusivity over the test data used to approve biosimilars?

Plaintiffs (Roche’s Arguments):Non-Compliance with Biosimilar Guidelines:Argued that the defendants’ drugs were not properly tested to establish bioequivalence with Roche’s products.The clinical trial phases were incomplete and approval was granted prematurely.Data Exclusivity & Regulatory Secrecy:The defendants failed to submit independent test data and instead relied on Roche’s publicly available data without due process.Regulatory Irregularities in DCGI Approvals:Alleged that the approval process violated Section 122E of the Drugs and Cosmetics Rules, 1945, which mandates stringent testing for new drugs.Judicial Precedents Supporting Document Disclosure:Cited Genentech v. Drugs Controller General of India, 2016 SCC OnLine Del 2572, where the court allowed disclosure of biosimilar approval documents.Cited Roche India v. Drugs Controller General of India, 2016 SCC OnLine Del 2358, where the court found irregularities in biosimilar approvals.

Defendants’ (DCGI, Cadila, Hetero) Arguments:Regulatory Compliance Ensured:The approvals were granted after following due process, including:Preclinical studies.Comparative clinical trials with Roche’s drugs.Expert committee approvals.Data is Confidential and Proprietary:Argued that disclosing regulatory dossiers would give Roche unfair access to competitors’ business secrets.Patent Expiry Eliminates Monopoly:Roche’s patents for these drugs expired in 2013, and it cannot block biosimilars based on regulatory concerns.Judicial Review Not Required for Regulatory Decisions:Courts should not interfere in regulatory approvals unless there is gross violation of law.

Judgment and Analysis:Discovery of Regulatory Documents Permitted:The court relied on M.L. Sethi v. R.P. Kapoor (1972) 2 SCC 427, holding that discovery should be allowed if documents are relevant to the case.Held that Roche had a right to examine all documents used to approve biosimilars.No Prima Facie Finding of Misconduct by DCGIThe court did not find immediate regulatory misconduct but allowed Roche to scrutinize documents to prove its claims.Balance Between Public Interest and Regulatory ComplianceWhile acknowledging public access to cheaper biosimilars, the court emphasized the importance of strict regulatory adherence in the pharmaceutical sector.

Final Decision:DCGI, Cadila, and Hetero were directed to submit all regulatory documents in a sealed cover.Confidentiality Club formed: Only legal representatives and experts could access sensitive data.Court upheld the validity of Roche’s discovery application but did not stay biosimilar approvals.Matter to proceed for trial on regulatory violations and unfair competition claims.

Key Legal Takeaways from the Case:Pharmaceutical companies have a right to scrutinize regulatory approvals through discovery proceedings.Patent expiration does not eliminate a company’s right to challenge biosimilar regulatory compliance.

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

Mr. Abhishek Sharma Vs. Assistant Controller of Patents and Designs:

Mr. Abhishek Sharma Vs. Assistant Controller of Patents and Designs: Foreign Grant of Patent Irrelevant

Case Title: Mr. Abhishek Sharma & Anr. Vs. Assistant Controller of Patents and Designs

Date of Order: February 13, 2025

Case No.: C.A.(COMM.IPD-PAT) 4/2025

Neutral Citation: 2025:DHC:1002

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Introduction:

This case concerns an appeal filed under Section 117A of the Patents Act, 1970, challenging the rejection of a patent application by the Assistant Controller of Patents and Designs. The primary issues in the case revolved around the lack of novelty, lack of an inventive step, and non-patentability under Sections 2(1)(j) and 3 of the Patents Act. Additionally, the appellant sought condonation of a 701-day delay in filing the appeal, which the court refused.

Factual Background:

The appellant, Mr. Abhishek Sharma, filed a patent application (No. 202111053480) on November 21, 2021, titled:"Innovative Change To Solve Any Dispute, Unexpected Business Loss, Closures, Financial Loss, Unexpected Accidents."The subject matter related to the impact of black-colored clothing and accessories on the human brain and external environment.The request for examination (RQ) was converted into an expedited examination under Rule 24C of the Patent Rules on June 7, 2022.The First Examination Report (FER) was issued on June 10, 2022, questioning the novelty, technical merit, and inventive step.A hearing was conducted on September 5, 2022, after which the application was rejected via an order dated November 10, 2022.

Procedural Background: 

The appellants, instead of filing an appeal within the statutory period, engaged in discussions with the Patent Office through its online helpdesk.The first ticket regarding the issue was raised only on August 21, 2024, much beyond the prescribed limitation period.On January 6, 2025, the Patent Office informed the appellants that no further reconsideration was possible, and they should seek legal remedies.The appeal was finally filed before the Delhi High Court with an application for condonation of a 701-day delay in filing.

Issues Involved:Whether the delay of 701 days in filing the appeal should be condoned?

Whether the rejection of the patent application was justified under Section 2(1)(j) and Section 3 of the Patents Act, 1970?

Whether the subject matter of the patent was novel and involved an inventive step?

Whether the rejection was in line with established judicial precedents?

Submissions by the Parties

Appellant's Submissions: Condonation of Delay: The appellant argued that the delay in filing the appeal was due to continuous engagement with the Patent Office via the Open House Helpdesk portal.Patentability:The invention had been granted a patent in Germany, implying its novelty and inventive step.The invention provided a technical solution related to human cognition and the effect of colors on decision-making.The rejection was based on an incorrect interpretation of Section 2(1)(j).Inventive Step & Novelty:The black-colored wearing items proposed had a specific scientific effect.

The Examiner’s conclusion was incorrect as it did not consider the application in its entirety.

Respondent's Submissions:Delay in Filing:The appellant failed to provide a valid justification for the inordinate delay of 701 days.Raising a ticket on an online portal does not extend the statutory limitation for filing an appeal.Lack of Novelty & Inventive Step:The black-colored wearing items claimed were already in public use and lacked novelty.The invention was not a technical advancement but merely a psychological theory.No scientific data or experimental results supported the claims.Non-Patentability under Section 3:The alleged invention was an abstract theory and fell within the prohibitions under Section 3(a) and Section 3(c) of the Patents Act.The claim lacked technical features, making it ineligible for a patent under Section 10 of the Act.

The Court examined both the procedural delay and merits of the patent rejection separately.

1. Delay in Filing Appeal:

The period of limitation for filing an appeal against a decision of the Patent Office is three months, with an additional discretionary extension of one month. The Court rejected the appellant's argument that online communication with the Patent Office justified the delay.Reliance was placed on precedents where engagement with administrative authorities did not constitute sufficient grounds for condonation of delay.

2. Merits of the Patent RejectionNon-Patentability under Section 2(1)(j): The Court agreed with the Controller that the subject matter was merely a color-based concept without technical merit.Failure under Section 3(a) & 3(c):The claim was a formulation of an abstract theory, making it unpatentable.It lacked technical structure or industrial applicability.

3.Lack of Novelty and Inventive Step:

The appellant failed to provide any scientific basis or experimental validation for the claimed effects of black-colored wearing items.The invention did not solve a technical problem, a key requirement under patent law.

4.Foreign Grant of Patent Irrelevant: 

The Court noted that the appellant did not file any documentary proof of the German patent, nor was there any evidence that it met the standards of Indian patent law.

5.Final Decision:

The delay of 701 days in filing the appeal was not condoned.

The patent rejection was upheld, affirming the Assistant Controller’s order.

The appeal was dismissed both on procedural grounds and on merits.

Legal Principles Settled in this Case:

Engagement with administrative bodies does not extend the limitation period for appeals.

Abstract theories or psychological effects without technical features are non-patentable under Section 3(a) and Section 3(c) of the Patents Act, 1970.

A mere grant of a foreign patent (e.g., in Germany) does not automatically imply patentability in India unless compliance with Indian patent law is demonstrated.

Lack of scientific evidence and experimental data to support claims can lead to rejection under Section 2(1)(j) for lack of novelty and inventive step.

The scope of an invention must be clearly defined in claims; vague assertions without technical details will not be allowed under Section 10.

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

Corn Products Refining Co. Vs. Shangrila Food Products Ltd., [1960] 1 S.C.R. 968:

Corn Products Refining Co. Vs Shangrila Food Products Ltd: Trade Connection and Trademark Confusion

Case Title:Corn Products Refining Co. Vs Shangrila Food Products Ltd.

Date of Order:October 8, 1959

Citation:AIR 1960 SC 142

Name of Court:Supreme Court of India

Name of Judges:Justice A.K. Sarkar, Justice J.L. Kapur, and Justice S.K. Das, H.J.

Introduction:This case revolves around a trademark dispute under the Trade Marks Act, 1940, where Corn Products Refining Co., a U.S.-based company, opposed the trademark registration of "Gluvita" by Shangrila Food Products Ltd. The core issue was the phonetic and visual similarity of "Gluvita" to the already registered mark "Glucovita," leading to concerns about deception or confusion among consumers. The Supreme Court of India ultimately ruled in favor of Corn Products Refining Co., emphasizing the importance of trade reputation and the likelihood of consumer confusion.

Factual Background:Parties Involved:Appellant (Corn Products Refining Co.): A U.S. corporation that had registered the mark "Glucovita" in India under Class 30 for glucose powder mixed with vitamins and under Class 5 for infant and invalid foods.Respondent (Shangrila Food Products Ltd.): An Indian manufacturer of biscuits that applied for the registration of "Gluvita" under Class 30.

Trademark Dispute:Shangrila Food Products Ltd. applied for the registration of "Gluvita" on November 5, 1949, under Class 30.Corn Products Refining Co. opposed this application, arguing that:The name "Gluvita" was deceptively similar to "Glucovita."The public might be misled into believing that "Gluvita" biscuits were associated with or manufactured by Corn Products Refining Co.

Registrar’s Decision:The Registrar found that:"Gluvita" and "Glucovita" were not phonetically or visually similar.The goods (glucose powder vs. biscuits) were not of the same description.There was no likelihood of confusion or deception.Consequently, the Registrar allowed the registration of "Gluvita."

Procedural Background:

Appeal to Bombay High Court (Single Judge - Desai, J.):Corn Products Refining Co. challenged the Registrar’s decision before the Bombay High Court.Justice Desai ruled in favor of Corn Products Refining Co., holding that:The marks were deceptively similar.The appellant had acquired significant goodwill and reputation in the Indian market.The registration of "Gluvita" should be denied under Section 8(a) of the Trade Marks Act, 1940.

Division Bench Appeal in Bombay High Court (Chagla, C.J. & Shah, J.):Shangrila Food Products Ltd. appealed against Desai, J.’s decision.The appellate bench ruled in favor of Shangrila Food Products Ltd., reasoning that:The reputation of "Glucovita" was limited to trade circles and not to the general public.The common elements "Gluco" and "Vita" were used in various trade marks and thus did not necessarily indicate an association with Corn Products Refining Co.The registration of "Gluvita" was restored.

Appeal to the Supreme Court:Corn Products Refining Co. then appealed to the Supreme Court of India.The Supreme Court reversed the decision of the Division Bench and restored the order of Desai, J., ruling in favor of Corn Products Refining Co.

Issues Involved:

1. Whether "Glucovita" and "Gluvita" were deceptively similar?

2. Whether the reputation of the "Glucovita" trademark extended beyond trade circles to the general public?

3. Whether the presence of other trademarks with common prefixes or suffixes ("Gluco" and "Vita") affected the likelihood of deception or confusion?

4. Whether the trade connection between glucose and biscuits was sufficient to cause confusion among consumers?

Submissions of the Parties:

Appellant (Corn Products Refining Co.):"Glucovita" had gained substantial reputation and goodwill in India, not just in trade circles but also among the general public.The marks were phonetically and visually similar, and their usage could deceive or confuse consumers.Glucose was used in biscuit manufacturing, thereby establishing a trade connection between the two products.The appellate court erred in holding that reputation must be confined to knowledge of the manufacturer rather than the product.

Respondent (Shangrila Food Products Ltd.):"Glucovita" was known only within trade circles, not to the general public.The market contained many trademarks with "Gluco" and "Vita," reducing the distinctiveness of "Glucovita."The Registrar correctly held that glucose powder and biscuits were different products and did not belong to the same class.

Discussion on Cited Judgments:The Court referred to several landmark cases on trademark similarity and consumer confusion, including:

In re: Smith Hayden & Coy. Ltd. [(1945) 63 R.P.C. 97]:Applied to test phonetic and visual similarity between trademarks.The Court rejected the Registrar's reliance on this case, holding that mere omission of "co" was insufficient to avoid confusion.

Edward Hack’s "Black Magic" Case [(1958) R.P.C. 91]:Related to trade connection between different goods.The Court drew parallels to show that biscuits and glucose had a similar trade connection, increasing the likelihood of confusion.

Ladislas Jellinek’s "Panda" Case [(1963) R.P.C. 59]:Shoe polishes and shoes were held to be trade-connected.The Court extended this reasoning to glucose and biscuits.

Reasoning and Analysis:

Similarity of Marks:The Supreme Court found that "Glucovita" and "Gluvita" were phonetically and visually similar.The minor difference of "co" was insufficient to distinguish them.

Reputation Among General Public:Contrary to the appellate bench’s view, the Supreme Court held that "Glucovita" was widely known among the Indian public, supported by advertising and sales in small retail packs.

Trade Connection Between Products:Since glucose is an ingredient in biscuits, a consumer might assume that "Gluvita" biscuits were manufactured by the makers of "Glucovita" glucose.

Impact of Other Trademarks:The Court held that mere registration of similar trademarks with "Gluco" or "Vita" did not prove their use in the market or their reputation.The onus was on Shangrila Food Products Ltd. to prove market usage of such marks, which they failed to do.

Final Decision:

The Supreme Court ruled in favor of Corn Products Refining Co.

The appellate judgment was set aside, and the decision of Desai, J. was restored.

"Gluvita" was not allowed to be registered as a trademark due to its deceptive similarity to "Glucovita."

Key Legal Principles Established:

• Phonetic and visual similarity is a critical factor in determining deceptive similarity in trademarks.Reputation of a trademark is not confined to trade circles but extends to the general public through advertising and sales.
• A trade connection between products can contribute to consumer confusion even if the goods are not identical.
• The presence of similar marks on the register does not prove their market usage or impact on consumer perception.The burden of proving the market reputation of similar marks lies on the party relying on them.
• This judgment remains a significant precedent in Indian trademark law concerning the assessment of likelihood of confusion and deceptive similarity in trademark disputes.

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

Pianotist Co.'s Application, (1906) 23 R.P.C. 774

Pianotist Co.'s Application:Test of deceptive Similarity and consumer intelligence

Case Title:Pianotist Co.'s Application

Date of Order:9th November 1906

Neutral Citation:(1906)23 R.P.C. 774

Court:High Court of Justice, Chancery Division (United Kingdom)

Judge:Justice Parker, H. J. 

Introduction:The case of Pianotist Company Ltd. (1906) is a landmark ruling in trademark law, establishing key principles for assessing deceptive similarity in trademarks. The dispute arose when Pianotist Company Ltd. applied for the registration of the trademark "Neola" for a piano-playing musical instrument. The Orchestrelle Company, proprietors of the registered trademark "Pianola," opposed the registration on the grounds of deceptive similarity. The case laid down the famous "Pianotist Test" for determining the likelihood of confusion between two trademarks.

Factual Background:

• 1. Initial Application: Pianotist Company Ltd. applied for the registration of "Neola" as a trademark in 1905.
• 2. Opposition: Orchestrelle Company opposed the registration, arguing that "Neola" closely resembled "Pianola," leading to potential consumer confusion.
• 3. Decision by Comptroller of Trade Marks: The Comptroller ruled against the opposition and permitted the registration of "Neola."
• 4. Appeal to High Court: Orchestrelle Company appealed the decision before Justice Parker, leading to a detailed examination of the likelihood of confusion between the two marks.

Issues Involved in the Case:

• 1. Whether "Neola" was deceptively similar to "Pianola" and likely to cause confusion among consumers.
• 2. Whether the nature of goods and the class of customers influenced the likelihood of confusion.
• 3. Whether the trade mark "Neola" was chosen with the intent to exploit the goodwill associated with "Pianola.

Submissions of the Parties:

Arguments by Orchestrelle Company (Opponents of Registration):

• 1. "Neola" bore a strong phonetic resemblance to "Pianola," particularly due to the common "ola" suffix.
• 2. Consumers could be misled into believing "Neola" was a variant or product extension of "Pianola."
• 3. The large-scale success of "Pianola" had created an association of the "ola" suffix with their products.
• 4. Given the growing market for mechanical pianos, allowing "Neola" to be registered would unfairly benefit Pianotist Company by capitalizing on the reputation of "Pianola."

Arguments by Pianotist Company Ltd. (Applicants for Registration):

• 1. "Neola" and "Pianola" were distinct words in terms of both pronunciation and spelling.
• 2. The suffix "ola" was common in musical instruments, and no monopoly over it should be granted.
• 3. The consumers of mechanical pianos were literate, knowledgeable, and unlikely to be confused.
• 4. The design and function of "Neola" were sufficiently different from "Pianola," reducing the risk of mistaken identity.

Discussion on Precedents and Citations in the Judgment:

1. Field Ltd. v. Wagel Syndicate, 17 R.P.C. 266:In this case, "Savoline" was found to infringe "Savonol," establishing that minor phonetic differences do not eliminate the likelihood of confusion.The argument was used by Orchestrelle Company to support their claim that "Neola" and "Pianola" were deceptively similar.

2. Kutnow’s Trade Mark, 10 R.P.C. 401:This case established that a trademark should be refused registration if it was "reasonably calculated to deceive."The respondents argued that their trademark was not intended to deceive, distinguishing it from the Kutnow case.

3. Re Farrow’s Trade Mark, 7 R.P.C. 260:This precedent established that trademarks should be compared in their entirety rather than in isolated components.The Court applied this principle to evaluate "Neola" and "Pianola" as whole words.

Reasoning and Analysis by Justice Parker:

1. The "Pianotist Test" for Trademark Similarity:Justice Parker laid down a structured approach to determine the likelihood of confusion:Compare the visual and phonetic similarity of the marks.Consider the nature of the goods to which the trademarks apply.Evaluate the type of customers likely to buy the goods.Assess the surrounding circumstances, including market conditions and purchasing habits.

2. Application of the Test in This Case:The Court acknowledged some phonetic similarity between "Neola" and "Pianola."However, the class of customers for these musical instruments were educated and discerning, reducing the likelihood of confusion.The difference in product functionality (Pianola being an attachment, Neola being an integrated instrument) further minimized confusion.

3. Intent Behind the Choice of "Neola":The Court found no evidence that "Neola" was chosen to exploit the reputation of "Pianola."It was acknowledged that "ola" was a common suffix in musical instrument trademarks.

4. Final Conclusion:Since confusion was unlikely among the relevant consumer base, "Neola" was allowed to be registered as a trademark.The appeal by Orchestrelle Company was dismissed. 

Final Decision:The High Court upheld the decision of the Trade Marks Comptroller and dismissed the appeal."Neola" was permitted to proceed with registration as a trademark.Costs were awarded against the Orchestrelle Company.

Law Settled in this Case:

The Pianotist Test for Deceptive Similarity:Trademarks should be assessed based on visual, phonetic, and conceptual similarity.The nature of goods and the intended customers should be considered.Surrounding market conditions influence the likelihood of confusion.

Trademark Protection Is Not Absolute:Common word components cannot be monopolized unless they have acquired distinctiveness.The suffix "ola" was deemed too generic to be exclusively owned by Orchestrelle Company.

Consumer Intelligence Matters:When dealing with high-value, specialized products, courts assume customers exercise caution before purchasing.This differs from fast-moving consumer goods, where brand confusion is more likely.

Honest Concurrent Use:If a trademark is created and used in good faith, mere phonetic resemblance does not justify refusal of registration.

Conclusion:The Pianotist Case remains a cornerstone in trademark law, particularly in assessing deceptive similarity and consumer perception. The "Pianotist Test" continues to guide courts worldwide in evaluating trademark disputes, ensuring a balanced approach between brand protection and fair competition.

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

Amritdhara Pharmacy Vs. Satya Deo Gupta

Amritdhara Pharmacy Vs. Satya Deo Gupta:The test of an "average man with imperfect recollection

Case Title:Amritdhara Pharmacy Vs. Satya Deo Gupta

Date of Judgment:27th April 1962

Case No.:Civil Appeal No. 22 of 1960

Citation: AIR 1963 SC 449

Court:Supreme Court of India

Judges:Justice S.K. Das, Justice M. Hidayatullah, Justice J.C. Shah, H. J. 

Introduction:The case of Amritdhara Pharmacy vs. Satya Deo Gupta is a landmark judgment in Indian trademark law, particularly concerning the principles of deceptive similarity and acquiescence under the Trade Marks Act, 1940. The central issue revolved around the registration of the trademark "Lakshmandhara" and whether it bore a deceptive resemblance to the pre-existing registered mark "Amritdhara." The Supreme Court’s judgment provided crucial guidance on determining the likelihood of confusion in trademarks and the effect of acquiescence on a claim of exclusivity.

Factual Background:Amritdhara Pharmacy had been using the trade name "Amritdhara" for a medicinal preparation since 1901, formally registering it as a trademark.Satya Deo Gupta, the respondent, applied for the registration of "Lakshmandhara" as a trademark for a similar medicinal preparation in 1950.The appellant, Amritdhara Pharmacy, opposed the registration on the ground that "Lakshmandhara" was deceptively similar to "Amritdhara" and could cause confusion among consumers.The respondent contended that:"Lakshmandhara" had been in use since 1923.The words "Amrit" and "Dhara" were common in Hindi and could not be monopolized.The term "Lakshmandhara" had gained distinctiveness through long usage.

Procedural Background:The Registrar of Trade Marks ruled that "Lakshmandhara" was deceptively similar to "Amritdhara" but permitted its registration in Uttar Pradesh due to the acquiescence of Amritdhara Pharmacy. Both parties appealed to the Allahabad High Court:The High Court ruled in favor of the respondent, holding that there was no likelihood of confusion and allowing the registration for the entire country.Aggrieved by the High Court’s decision, Amritdhara Pharmacy appealed to the Supreme Court of India.

Issues Involved in the Case:Whether "Lakshmandhara" was deceptively similar to "Amritdhara" under Sections 8 and 10(1) of the Trade Marks Act, 1940?

Submissions of the Parties:

Petitioner (Amritdhara Pharmacy):"Lakshmandhara" was phonetically and visually similar to "Amritdhara," likely to deceive the public. The common use of "dhara" in both trademarks led to consumer confusion.3. The Registrar rightly limited the respondent’s trademark to Uttar Pradesh due to acquiescence, but the High Court erred in permitting nationwide registration.

Respondent (Satya Deo Gupta):"Amritdhara" and "Lakshmandhara" were different in meaning and pronunciation. The word "Dhara" was a common term and could not be monopolized. "Lakshmandhara" had been in use since 1923, showing honest concurrent use.There was no evidence of actual deception or confusion.

Discussion on Judgments and Precedents Cited:

Pianotist Co.'s Application, (1906) 23 R.P.C. 774:Established the test for deceptive similarity:Consider the look and sound of the words. Consider the nature of goods they represent.Consider the class of customers purchasing them.The Supreme Court applied this test and found that an "unwary purchaser" with "imperfect recollection" might be deceived by the similarities.

Corn Products Refining Co. Vs. Shangrila Food Products Ltd., [1960] 1 S.C.R. 968:Held that trademark similarity must be assessed from the perspective of an average consumer with an "imperfect recollection."Applied by the Supreme Court to determine that "Lakshmandhara" could confuse consumers.

William Bailey (Birmingham) Ltd.’s Application, (1935) 52 R.P.C. 137:Stated that trademarks should be considered in their entirety, not just by comparing individual components.The Supreme Court emphasized that the words "Amritdhara" and "Lakshmandhara" should be compared as wholes.

Reasoning and Analysis of the Supreme Court:

Deceptive Similarity:The Court found phonetic and visual similarities between "Amritdhara" and "Lakshmandhara."The products were of the same type (medicinal preparations).The test of an "average man with imperfect recollection" indicated a likelihood of confusion.The High Court erred in splitting the words and analyzing their etymological meanings.

Acquiescence:The Supreme Court upheld the Registrar’s finding that Amritdhara Pharmacy had acquiesced to the use of "Lakshmandhara" in Uttar Pradesh since 1923.However, this did not justify national registration.The limitation to Uttar Pradesh was a reasonable condition imposed by the Registrar.

Final Decision:The Supreme Court set aside the High Court’s judgment and restored the order of the Registrar of Trade Marks."Lakshmandhara" could only be registered for sale in Uttar Pradesh and not the entire country.

Law Settled by the Case:

Test for Deceptive Similarity: The likelihood of deception must be assessed from the perspective of an ordinary purchaser with imperfect recollection.

Comparison of Trademarks: Words in a trademark should be considered as a whole, not merely by their individual components.

Acquiescence in Trademark Law: Long-standing inaction by a trademark owner may limit their ability to challenge a later trademark but does not automatically justify national registration.

Honest Concurrent Use: Even long usage of a trademark does not override the principle of deceptive similarity if confusion is likely.

Conclusion:The Supreme Court’s decision in Amritdhara Pharmacy vs. Satya Deo Gupta reaffirmed fundamental principles of trademark law, particularly deceptive similarity and the role of acquiescence. The judgment is significant in shaping Indian jurisprudence on trademarks, balancing the rights of prior trademark owners with the interests of subsequent users.

This case continues to serve as a reference point in intellectual property law, guiding courts in assessing deceptive similarity and determining when acquiescence bars relief in trademark disputes.

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

American Home Products Corporation Vs Mac Laboratories Private Limited

American Home Products Corporation Vs Mac Laboratories Private Limited:Permitted use by a registered user and Trademark Trafficking 

Case Title:American Home Products Corporation Vs Mac Laboratories Private Limited & Anr.

Date of Order:30 September 1985

Case No.:Civil Appeal No. 2159 of 1969

Citation:1986 AIR 137, 1986 (1) SCC 465

Name of Court:Supreme Court of India

Name of Judge(s):Justice D.P. Madon and Justice Amarendra Nath Sen, H. J. 

Introduction:The case of American Home Products Corporation vs Mac Laboratories Private Limited & Anr. is a landmark judgment in Indian Trademark law, addressing critical questions regarding the registration and usage of trademarks by foreign proprietors through registered users. It deals with whether a foreign proprietor of a trademark can register a mark with the sole intent of using it through a registered user, a crucial issue affecting multinational corporations operating in India.

The case also explores the doctrine of "trafficking in trademarks", analyzing whether permitting a trademark to be used by a registered user without the proprietor's own use constitutes trafficking, which is against the policy of the Indian trademark system.

Factual Background:American Home Products Corporation (AHP), a US-based company, was engaged in the manufacture and marketing of pharmaceutical products through its division Whitehall Laboratories.

AHP had a subsidiary relationship with an Indian company, Geoffrey Manners & Co. Ltd., in which it held 40% shareholding.

In 1956, AHP introduced an anti-histamine drug named ‘Dristan’ in the US and later obtained trademark registrations for ‘Dristan’ in various countries.

In 1957, AHP entered into a technical collaboration agreement with Geoffrey Manners, providing manufacturing formulae, technology, and exclusive licensing rights to produce and sell its pharmaceutical products, including ‘Dristan,’ in India.

On August 18, 1958, AHP filed an application to register ‘Dristan’ in India under the Trade Marks Act, 1940.

The trademark was registered on June 8, 1959.

On October 22, 1961, Geoffrey Manners launched ‘Dristan’ in India.

Meanwhile, Mac Laboratories applied for registration of the trademark ‘Tristine’ in 1960. AHP opposed this application on the grounds that ‘Tristine’ was deceptively similar to ‘Dristan.’ However, the Assistant Registrar ruled in favor of Mac Laboratories.

Procedural Background:

1. Mac Laboratories filed an application for rectification of the trade mark ‘Dristan,’ seeking its removal from the register.

2. The Registrar of Trade Marks dismissed the application.

3. Mac Laboratories appealed to the Calcutta High Court, which ruled in its favor, holding that AHP had no bona fide intention to use ‘Dristan’ itself and had not actually used it.

4. The Division Bench of the High Court affirmed the decision, leading AHP to file an appeal before the Supreme Court.

Issues Involved in the Case:

1. Can a proprietor of a trademark register it with the sole intent of using it through a registered user?

2. Whether the words "proposed to be used by him" under Section 18(1) of the Trade and Merchandise Marks Act, 1958, include a proposed use by a registered user?

3. Whether such a trademark registration amounts to "trafficking in trademarks"?

4. Whether there was a bona fide intention on the part of AHP to use the trademark ‘Dristan’?

5. Whether ‘Dristan’ was deceptively similar to ‘Bistan’ and ‘Tristine’?

Submission of the Parties:

Arguments by American Home Products Corporation (Appellant):

1. Legal Fiction Under Section 48(2) – The company argued that permitted use of a trademark by a registered user should be considered use by the proprietor.

2. Intention to Use – It contended that an intention to use through a registered user is a legitimate intention.

3. No Trafficking in Trademarks – AHP asserted that its agreement with Geoffrey Manners was genuine and not a case of selling trademark rights for profit.

4. Foreign Investment Restrictions – Given India's foreign investment policies, direct manufacturing by AHP was impossible, and collaboration with an Indian entity was the only viable way to use the trademark.

Arguments by Mac Laboratories (Respondent):

1. Proposed Use Must Be by Proprietor – It argued that Section 18(1) only allows registration when the applicant intends to use the mark itself or through agents and servants but not through a registered user.

2. Trafficking in Trademarks – Mac Laboratories claimed that AHP’s registration amounted to trademark trafficking because AHP had no real intention of using the mark itself.

3. Deceptive Similarity – It also contended that ‘Dristan’ was deceptively similar to ‘Bistan’ and ‘Tristine’, causing confusion in the market.

Discussion on Judgments Cited:

1. Pussy Galore Trademark Case (1967) RPC 265 – This English case held that registration of a trademark without an intent to use it constitutes trafficking, but the Supreme Court ruled that the Indian law was different.

2. Re American Greetings Corp.'s Application (1983) 2 All ER 609 – This case defined the requirement for a real trade connection between the registered proprietor and the registered user.

3. Batt’s Case (1898) 2 Ch. D 432 – The Supreme Court relied on this case to conclude that a bona fide intention to use the trademark through a registered user suffices.

Reasoning and Analysis of the Court:

1. Legal Fiction Applies – The Supreme Court held that Section 48(2) creates a legal fiction whereby use by a registered user is deemed to be use by the proprietor.

2. Intention to Use Through Registered User is Valid – The court ruled that the applicant need not personally use the trademark but can use it through a registered user.

3. No Trafficking in Trademarks – Since AHP had a real trade connection with Geoffrey Manners, there was no trafficking in the ‘Dristan’ trademark.

4. No Deceptive Similarity – The court held that ‘Dristan’ was not deceptively similar to ‘Bistan’ or ‘Tristine’.

5. Errors in High Court’s Judgment – The Supreme Court found that the Calcutta High Court misinterpreted Indian law by relying too much on English precedents. 

Final Decision:

The Supreme Court reversed the High Court’s decision.

The trademark ‘Dristan’ was upheld, and Mac Laboratories’ rectification application was dismissed.

AHP’s right to use ‘Dristan’ through a registered user was validated.

Key Legal Principles Settled:

Permitted use by a registered user constitutes use by the proprietor under Indian law.

A proprietor can register a trademark with the intent to use it through a registered user.

"Trafficking in trademarks" applies only when there is no genuine trade connection between the proprietor and the registered user.

A trademark need not be personally used by the proprietor to remain valid.

A registered trademark cannot be removed solely due to non-use for a short duration.

This case remains a landmark ruling in Indian Trademark Law, shaping the legal framework for multinational companies seeking to register and protect trademarks in India.

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

Amar Singh Chawal Wala Vs Shree Vardhman Rice & General Mills:DB

Amar Singh Chawal Wala Vs Shree Vardhman Rice & General Mills:Family of Trademark:Golden Qilla," "Lal Qilla," and "Neela Qilla Vs Hara Qilla 

Case Title:Amar Singh Chawal Wala vs M/S Shree Vardhman Rice & General Mills

Date of Order: May 29, 2009

Case No.: FAO (O) No. 138 of 1996 & C.M. No. 842 of 2001

Court: Delhi High Court

Coram: Chief Justice & Justice S. Muralidhar, H. J. 

Introduction:This case revolves around a trademark infringement and passing-off dispute concerning the use of the term "Qilla" in branding rice. M/S Amar Singh Chawal Wala (plaintiff) claimed that M/S Shree Vardhman Rice & General Mills (defendant) had infringed its registered trademarks by adopting the term "Hara Qilla" for its rice products.

The plaintiff sought an injunction to prevent the defendant from using "Hara Qilla," alleging that it was deceptively similar to its trademarks, including "Golden Qilla," "Lal Qilla," and "Neela Qilla." The Delhi High Court overruled a previous order, which had denied the injunction, and ruled in favor of the plaintiff, emphasizing likelihood of confusion and the plaintiff’s "family of marks."

Plaintiff's Business & Trademarks:

1. Plaintiff’s Operations: Engaged in the rice trade since 1952, focusing on selection, processing, and merchandising.Adopted the word “Qilla” (meaning fort in Hindi/Urdu) as part of its branding.

2. Plaintiff’s Registered Trademarks:

Golden Qilla (Registered: 1962)

Lal Qilla (Registered: 1962)

Neela Qilla (Registered: 1979)

Device of Qilla (Fort image) (Registered: 1960)

3. Use & Recognition:These marks were extensively used and marketed, gaining substantial goodwill and recognition.The public associated "Qilla" with the plaintiff’s rice products.

Defendant’s Business & Trademark

1. Defendant’s Operations:Engaged in rice processing and sales, located in Panipat, Haryana.Adopted the name “Hara Qilla” (Green Fort) in 1978 for its rice brand.

2. Trademark Application & Opposition:

Applied for trademark registration in 1989.

Plaintiff opposed the registration, arguing that it was deceptively similar to its marks.

The Assistant Registrar of Trade Marks ruled in favor of the plaintiff (1993), rejecting the defendant’s application.A review petition by the defendant was dismissed (1994).

3. Plaintiff’s Concerns:The defendant’s mark "Hara Qilla" was confusingly similar to the plaintiff’s trademarks.It misled consumers into believing it was part of the plaintiff’s "Qilla" family of marks.The defendant’s continued usage diluted the plaintiff’s brand value and eroded goodwill.

Procedural Background:

1. 1989 – Plaintiff filed a suit in the Delhi High Court, seeking a permanent injunction against the defendant for infringement and passing off.

2. 1993 – Assistant Registrar of Trade Marks sustained the plaintiff’s opposition, rejecting the defendant’s trademark registration.

3. 1994 – Defendant’s review petition was dismissed.

4. 1996 – A Single Judge of the Delhi High Court denied interim relief, ruling that the trademarks were not deceptively similar.

5. 2009 – Division Bench (Appeal Court) overturned the 1996 ruling and granted an injunction in favor of the plaintiff.

Issues Involved:

1. Does the defendant’s trademark "Hara Qilla" infringe upon the plaintiff’s registered trademarks?

2. Does the defendant’s use of "Qilla" cause confusion among consumers?

3. Is the plaintiff entitled to exclusive rights over the word "Qilla" as part of a "family of marks"?

4. Was there "honest concurrent use" by the defendant?

Submissions of Parties:

Plaintiff’s Arguments:"Qilla" had acquired distinctiveness through long usage and consumer recognition.Defendant’s mark deliberately mimicked its branding to create confusion.Consumers could mistakenly associate "Hara Qilla" with the plaintiff’s range of rice products.The defendant’s use was dishonest and lacked evidence of independent concurrent use.

Defendant’s Arguments:"Hara Qilla" was distinctive, and "Qilla" was not monopolizable.

No evidence showed that consumers confused the brands.Defendant’s use of "Hara Qilla" since 1978 was honest and concurrent.Plaintiff’s delay (1989-1996) amounted to acquiescence.

Discussion on Judgments & Legal Precedents:

1. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980):Distinction between infringement and passing off: Infringement depends on exclusive rights over a registered trademark, whereas passing off requires proof of deception.Held that if a defendant’s mark is "deceptively similar", infringement is established.

2. Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449):Examined phonetic similarity in trademarks.A common consumer does not analyze brand names in depth but relies on overall impression.

3. Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (1989 PTC 61):Acquiescence (delay in action) does not automatically defeat a plaintiff’s claim.Mere delay does not justify continued infringement.

Court’s Reasoning & Analysis

1. Likelihood of Confusion:"Qilla" was an essential part of the plaintiff’s branding."Hara Qilla" sounded similar to "Golden Qilla" and "Lal Qilla," misleading consumers.

2. Family of Marks Doctrine:The plaintiff had established a consistent naming pattern (Golden, Lal, Neela Qilla).Defendant’s use of "Qilla" created a false impression of being part of this series.

3. No Honest Concurrent Use:

Defendant failed to prove pre-1989 commercial usage with supporting invoices.

4. No Acquiescence:Plaintiff acted immediately upon discovery (1986) through legal notices and trademark opposition.

Final Decision:The 2009 ruling overturned the 1996 decision.Interim injunction granted – Defendant restrained from using "Hara Qilla."

Defendant given 3 months to clear existing stock.Trial expedited for final resolution.

Key Legal Principles Settled:

Phonetic similarity is a strong factor in trademark infringement cases.

Family of marks doctrine applies when a brand uses a consistent naming pattern.

Lack of documented commercial use defeats "honest concurrent use" claims.

Delay in filing does not necessarily amount to acquiescence.

A registered trademark holder enjoys statutory protection, even if the word is not inherently unique.

This ruling reinforced strong trademark protection and consumer deception prevention principles in India.

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

Vishnudas Trading As Vishnudas Vs. The Vazir Sultan Tobacco Co. Ltd. & Anr.

Trademark holders cannot monopolize an entire product category without genuine use or intent to use.

Case Title:Vishnudas Trading As Vishnudas Vs. The Vazir Sultan Tobacco Co. Ltd.

Date of Judgment: 9 July 1996

Case No.: Not explicitly mentioned in the document

Neutral Citation: JT 1996 (6) 366, 1996 SCALE (5) 267, AIR 1996 SC 2275, 1997 (4) SCC 201, 1996 AIR SCW 2870, 1996 (2) ARBI LR 222

Court: Supreme Court of India

Judges: Justice G.N. Ray, Justice G.B. Pattanaik

Introduction:

The case of Vishnudas Trading As Vishnudas vs The Vazir Sultan Tobacco Co. Ltd. is a landmark judgment by the Supreme Court of India that deals with the scope of trademark registration under the Trade and Merchandise Marks Act, 1958. The primary issue in this case revolves around the rectification of a registered trademark, the exclusive rights of a registered proprietor over an entire class of goods, and whether registration under a broad classification grants a monopoly over all products within that class.

Detailed Factual Background

The respondent, The Vazir Sultan Tobacco Co. Ltd., has been manufacturing cigarettes under the brand name "Charminar" since 1942. The company obtained trademark registrations for the word "Charminar" in 1942 and 1955 under Class 34 for “manufactured tobacco.” However, despite obtaining this registration, the company has only manufactured cigarettes and has never engaged in the production of other tobacco-related products such as zarda (chewing tobacco) or quiwam.

The appellant, Vishnudas Trading, has been manufacturing quiwam and zarda since 1973 and used the name "Charminar" on its products. The appellant’s trademark for quiwam and zarda had a different logo and depiction from that of the respondent’s cigarette brand. When the appellant applied for registration of its trademark under Class 34, the respondent opposed it, arguing that the mark "Charminar" was already registered in its name.

The appellant, contending that the respondent never manufactured quiwam or zarda, filed applications under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, seeking rectification of the respondent’s trademark registration so that it would be limited to cigarettes only rather than covering all products under "manufactured tobacco."

Detailed Procedural Background

The matter was initially heard before the Assistant Registrar of Trade Marks, Madras. The Assistant Registrar ruled in favor of the appellant on August 31, 1976, holding that the respondent's trademark registration should be rectified to be limited only to cigarettes under Class 34. The Assistant Registrar reasoned that since the respondent never manufactured quiwam or zarda, its registration for "manufactured tobacco" was too broad and prejudicial to other traders.

The respondent then appealed before the Madras High Court under Section 109(2) of the Trade and Merchandise Marks Act, challenging the rectification order. On September 11, 1980, the Single Judge of the Madras High Court overturned the Assistant Registrar’s order, ruling that no sub-classification could be made within Class 34, which covers all manufactured tobacco products. The court held that there was no requirement to prove actual use of the trade mark for all items under the class.

The appellant then challenged the Single Judge’s decision before the Division Bench of the Madras High Court under Section 109(5). On October 11, 1990, the Division Bench upheld the Single Judge's ruling, reaffirming that the registration of "Charminar" for "manufactured tobacco" was valid, as cigarettes fell within this class. The court ruled that the rectification application was not maintainable since the registrar could not sub-classify goods under a single class.

Aggrieved by the High Court’s decision, the appellant approached the Supreme Court of India.

Issues Involved in the Case

The primary issue before the Supreme Court was whether a trademark registered under a broad classification such as "manufactured tobacco" under Class 34 can be limited to specific goods through rectification. Another important question was whether non-use of a registered trademark for some products within a class justifies rectification under Sections 46 and 56 of the Trade and Merchandise Marks Act. The court also examined whether the registration of a trademark for an entire class prevents other traders from using the same or similar trademark for distinct products under that class.

Detailed Submission of Parties

The appellant argued that the respondent’s registration under "manufactured tobacco" was too broad and covered several distinct products such as cigarettes, zarda, quiwam, and snuff. The appellant contended that the respondent had never manufactured anything other than cigarettes and thus should not be allowed a monopoly over all goods in Class 34. It was argued that the Trade Marks Act does not grant absolute rights over an entire class but rather grants rights over specific goods. The appellant also submitted that the High Court erred in holding that rectification was not maintainable, as non-use of a trademark for certain goods warrants rectification. The appellant relied on Edwards v. Dennis (1885) 30 Ch. Div. 454, which held that trademark registration should be limited to goods actually manufactured.

The respondent contended that its registrations in 1942 and 1955 were valid under Class 34, which includes all manufactured tobacco products. It was argued that the law does not require proof of use for all goods within a class. The respondent relied on Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142), which held that confusion arises when similar marks exist in a common trade channel. The respondent submitted that the Madras High Court had rightly held that classification under Class 34 could not be sub-divided.

Discussion on Judgments Cited

In Edwards v. Dennis (1885) 30 Ch. Div. 454, the English court held that trademarks should be limited to specific goods actually used, preventing broad monopolization. The decision emphasized that registration should be restricted to goods in connection with which it is actually being used. This case was used by the appellant to argue that registration should be limited to cigarettes only.

In Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142), the Supreme Court of India ruled that trade connection between goods can create confusion. This case was cited by the respondent to argue that allowing "Charminar" for quiwam and zarda would mislead consumers into thinking that the products originated from the same manufacturer.

In American Home Products Corporation v. Mac Laboratories Pvt. Ltd. (1985 Supp. (3) SCR 264), the Supreme Court of India ruled that a trademark owner cannot claim rights over an entire class if they have no intent to use the mark for all goods. This decision supported the argument for rectification of the respondent’s registration.

The case of Lever Brothers, Port Sunlight, Ltd. v. Sunniwite Products Ltd. (LXVI RPC 84) was also discussed. In this case, the English court held that a manufacturer who has used a trademark on one specific product cannot claim exclusive rights over other products within the same class. The court found that a trademark should be linked to specific goods rather than a broad category.

Detailed Reasoning and Analysis of Judge

The Supreme Court reasoned that the Trade Marks Act aims to prevent monopolization over an entire class when the proprietor has no intention to use the mark for all goods in that class. The court noted that "manufactured tobacco" includes many distinct products, each sold and marketed separately. The respondent had used "Charminar" only for cigarettes and had never used it for quiwam, zarda, or snuff. The court held that rectification is justified to allow fair competition and prevent unwarranted monopolies. The High Court erred in denying rectification, as non-use was evident.

Final Decision

The Supreme Court allowed the appeals, set aside the High Court’s judgment, and restored the order of rectification passed by the Assistant Registrar of Trade Marks, Madras. The court ruled that the respondent’s trademark registration should be limited only to cigarettes and should not cover other tobacco products such as zarda or quiwam.

Key Legal Principles Established:

Trademark registration cannot extend to an entire class if the registrant only manufactures one or some products within that class.Non-use of a mark for certain goods within a class can justify rectification under Section 46 of the Trade and Merchandise Marks Act, 1958.Cigarettes and chewing tobacco (zarda, quiwam) are distinct products, requiring separate trademark consideration.Broad registrations should not be used to create unfair monopolies and stifle fair competition.

This case remains a landmark precedent in Indian trademark law, ensuring that trademark holders cannot monopolize an entire product category without genuine use or intent to use.

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

Pernod Ricard India Private Limited Vs A B Sugars Limited

Pernod Ricard India Private Limited Vs A B Sugars Limited:Anti Dissection Rule and Trade Mark Infringement

Case Detail:Pernod Ricard India Private Limited Vs A B Sugars Limited & Anr., 

Date of Order:31 October 2023, 

Case No:CS(COMM) 371/2019, 

Court:High Court of Delhi at New Delhi Judge:Justice C. Hari Shankar.H. J. 

Introduction: Trademark infringement cases often highlight the balance courts seek to strike between protecting intellectual property rights and allowing fair competition in the market. The present case between Pernod Ricard India Private Limited (hereinafter “Pernod Ricard”) and A B Sugars Limited & Anr. (hereinafter “Defendants”) concerns the use of the marks “ROYAL STAG” and “INDIAN STAG” in the Indian Made Foreign Liquor (IMFL) market. The decision rendered by the Delhi High Court on October 31, 2023, reflects the complexities involved in establishing trademark infringement and passing off, especially when similar marks are used in a competitive industry.

Factual Background: Pernod Ricard, the plaintiff, has been using the mark “ROYAL STAG” for its IMFL products since 1995 and holds registrations for “ROYAL STAG,” “ROYAL STAG BARREL SELECT,” and the associated stag device in Class 33 for alcoholic beverages. Pernod Ricard’s products have gained significant market recognition, supported by extensive marketing and sales efforts.

The defendants manufacture and export IMFL under the mark “INDIAN STAG,” accompanied by their own stag device. Pernod Ricard alleged that the defendants’ use of “INDIAN STAG” constituted trademark infringement and passing off, leading to confusion among consumers.

Procedural Background: The suit was filed by Pernod Ricard under CS(COMM) 371/2019, accompanied by an application for an ex parte ad interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, which was granted on July 25, 2019. The defendants, in turn, filed an application under Order XXXIX Rule 4 for the vacation of the injunction. The present judgment disposed of both applications.

Issues Involved:

1. Whether the defendants’ use of the mark “INDIAN STAG” infringes the plaintiff’s registered trademark “ROYAL STAG.”

2. Whether the defendants’ use of “INDIAN STAG” constitutes passing off of their goods as those of the plaintiff.

3. Whether the defendants could establish honesty in adoption of the mark “INDIAN STAG.”

4. The extent of protection available to the plaintiff given the disclaimer on the “ROYAL” part of its mark.

Submissions of the Parties:

Plaintiff’s Submissions:

The plaintiff contended that “STAG” was the dominant part of its mark, as “ROYAL” had been disclaimed during registration.

It argued that the use of “INDIAN STAG” by the defendants was deceptively similar to “ROYAL STAG,” leading to confusion in the market.

Reliance was placed on the doctrine of initial interest confusion, where even momentary confusion at the point of sale could constitute infringement.

Defendants’ Submissions:

The defendants asserted that “STAG” was common to the trade, particularly in the liquor industry, citing various international whisky brands using the term.

They highlighted that “INDIAN STAG” was solely exported and not sold in the Indian market, thereby negating any likelihood of confusion domestically.

The defendants also argued that the distinct visual appearance of the labels and packaging prevented any confusion or deception.

Judgments Cited and Their Context:

The court relied on several precedents to elucidate the principles governing trademark infringement and passing off, including:

Novartis v. Adarsh Pharma (1999) 19 PTC 294 – Establishing the principle that the mark must be viewed as a whole.

Khoday Distilleries Ltd v. Scotch Whisky Association (2008) 10 SCC 723 – Highlighting the distinction between IMFL and Scotch whisky.

United Breweries Ltd v. Khodays Breweries Ltd (2013 SCC OnLine Kar 2303) – Addressing the global nature of the liquor trade and the necessity of considering international markets in infringement cases.

Reasoning and Analysis of the Judge:

The Delhi High Court, in Pernod Ricard India Private Limited vs A B Sugars Limited & Anr. (2023), rejected the defendants' argument that "STAG" is common to the liquor trade through a multi-faceted reasoning process. The court considered the following points:

Lack of Substantial Use Evidence: The defendants relied on examples of international whisky brands like Glenfiddich and Dalmore that use a stag device. However, the court noted that most of these brands are foreign, and the defendants failed to provide substantial evidence of the widespread use of “STAG” in the Indian IMFL market. Citing Pankaj Goel v. Dabur India Ltd. [(2008) 38 PTC 49 (Del) (DB)], the court emphasized that mere existence of similar marks does not suffice; the defendants needed to demonstrate substantial and continuous use within India.

Territorial Nature of Trademarks:The court reiterated that trademark rights are territorial, relying on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. [(2018) 2 SCC 1]. It held that the use of “STAG” in foreign markets does not establish that it is common to the trade in India.

Distinction Between IMFL and Scotch Whisky: The defendants’ argument that "STAG" is inherently associated with whisky due to Scottish traditions was rejected. The court noted that hunting and related traditions do not hold the same cultural significance in India. Moreover, the plaintiff’s “ROYAL STAG” pertains to IMFL, which is distinct from Scotch whisky, and the use of “STAG” in Scotch whisky cannot be equated with its use in the Indian IMFL market. The court found that the defendants' examples of other “STAG” marks were insufficient to establish that “STAG” was common to the trade in India, particularly in the IMFL market.

Plaintiff’s Established Reputation:The court acknowledged that “ROYAL STAG” had acquired distinctiveness through extensive use and marketing since 1995. It emphasized that even if “STAG” were used by others, the plaintiff’s longstanding use and market presence gave it a unique association with Pernod Ricard’s products, as highlighted in Himalaya Drugs Co. v. S.B.L Ltd [(2010) 44 PTC 293 (Del-DB)].

Anti-Dissection Principle:Applying the anti-dissection rule, the court emphasized that the overall mark “ROYAL STAG” had acquired distinctiveness, and the presence of “STAG” in other brands did not dilute the plaintiff’s rights. The court relied on South India Beverages Pvt Ltd v. General Mills Marketing Inc. [2014 SCC OnLine Del 1953], which permits giving prominence to a dominant part of a composite mark when assessing infringement.

The Court analyzed the competing marks by applying the anti-dissection rule, emphasizing that marks must be compared in their entirety rather than focusing on individual components. The court acknowledged the plaintiff’s prior use and reputation but also noted the defendants’ honest adoption, given the widespread use of “STAG” in the liquor industry.

The court distinguished between infringement and passing off, emphasizing that passing off requires proof of misrepresentation and resultant damage, which was not evident in this case due to the defendants’ exclusive export of their products. However, the similarity in the marks and the potential for confusion in foreign markets warranted the continuation of the interim injunction.

Final Decision: The court confirmed the interim injunction granted on July 25, 2019, restraining the defendants from using the mark “INDIAN STAG” pending the disposal of the suit. The plaintiff’s application (IA 9922/2019) was allowed, and the defendants’ application (IA 11201/2019) seeking vacation of the injunction was dismissed.

Conclusion: This judgment underscores the stringent standards required for proving passing off and the importance of holistic comparison in trademark infringement cases. It also reflects the court’s careful consideration of international trade implications and the nuanced approach needed to balance competing interests in the intellectual property domain.

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